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The Law on Patents

 First to File

 The Intellectual Property Code adopts the first-to-file


system of patent registration in contrast to the Patent Law, which followed the
first-to-invent system.
 First to file is the rule in which patent priority is determined
by which inventor was the first to file a patent application, rather than who was
the first to actually invent.
 The IP Code provides that if two (2) or more persons have
made the invention separately and independently of each other, the right to the
patent shall belong the person who filed an application for such invention, or
where two or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date.

 The first-to-file system may, however, lead to certain fraudulent practices,


which the Intellectual Property Code seeks to minimize.

 If a person, who was deprived of the patent without his


consent or through fraud is declared by final court
 order or decision to be the true and actual inventor, the
court shall order for substitution as patentee, or at the option of the true inventor,
cancel the patent, and award actual and other damages in his favor if warranted by
the circumstances.

 Any prior user, who, in good faith was using the invention
or has undertaken serious preparations to use the invention in his enterprise or
business, before the filing date or priority date of the application on which a
patent is granted, shall have the right to continue the use thereof as envisaged in
such preparations within the territory where the patent produces its effect.

Elements of Patentable Inventions

 Under Section 21, any technical solution of a problem in


any field of human activity which is new, involves an inventive step and is
industrially applicable shall be Patentable. It may be, or may relate to, a product,
or process, or an improvement of any of the foregoing.

 Inventions may be either machines, manufactures, or


compositions of matter.
A machine is "a concrete thing, consisting of parts or of certain devices and
combinations of devices."1.

Case: Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)

A manufacture is "the production of articles for use from raw or prepared


materials by giving to these materials new forms, qualities, properties or
combinations, whether by hand labor or by machinery."2

Case: Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit Growers, Inc.
v. Brogdex Co., 283 U.S. 1, 11 (1931)

A composition of matter is "a composition of two or more substances or a


composite article, whether it be the result of chemical union, or of mechanical
mixture, or whether it be a gas, fluid, powder, or solid."3

Case: id. at 308, 206 USPQ at 197 (quoting Shell Development Co. v. Watson, 149 F. Supp. 279,
280, 113 USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C. Cir.
1958).

 An invention that consists of a new alloy is an example of a product


invention.

 An invention that consists of a new method or process of making a


known or new alloy is a process invention.

 'The corresponding patents are usually referred to as a "product patent for


invention," and a "process patent for invention," respectively.

 Protection for Patentable Inventions

 The protection that a patent for invention confers means


that anyone who wishes to exploit the invention must obtain the authorization
of the person who received the patent-called "the patentee" or "the owner of
the patent"-to exploit the invention.

 If anyone exploits the patented invention without such


authorization, he commits an illegal act.

 One speaks about "protection" since what is involved is


that the patentee is protected against exploitation of the invention which he

1
Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)
2
Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit Growers, Inc. v. Brogdex
Co., 283 U.S. 1, 11 (1931)
3
Id. at 308, 206 USPQ at 197 (quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113
USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C. Cir. 1958)).
has not authorized. Such protection is limited in time. In most countries, it is
about 20 years.

 The rights, usually called "exclusive rights of


exploitation", generally consist of:

 In the case of product patents for invention,


the right to make, use, sell and import the product that includes the invention,
and

 In the case of process patents for invention,


the right to use the process that includes the invention as well as the right to
make, use, sell and import products which were made by the process that
includes the invention

Utility Models

One of these two other means or forms of protection consists in the registration, or the
granting, of a patent for a "utility model." The concept of utility models is known in the
laws of a certain number of countries, among them the People's Republic of China, the
Federal Republic of Germany and Japan.

The expression "utility model" requires clarification. In essence, it is merely a name


given to certain inventions, namely-according to the laws of most countries which
contain provisions on utility models-inventions in the mechanical field. This is why the
objects of utility models are sometimes devices or useful objects.

Utility models differ from inventions for which patents for invention are available mainly
in two respect first, in the case of an invention called "utility model," the technological
progress required is less than the technological progress ("inventive step")

Case: Gerardo Samson, Jr. Vs. Felipe Tarroza, et al. , G.R. No. L-20354, July 28, 1969

Case: Ex Parte Case Jackson Appeal To the Director of Patents From Final Rejection of
Application By Principal Examiner Raymond M. Jackson, Applicant-Appellant, Appln. Serial
No. Um-10473-A, June 15, 1988, Decision No. 91-9 (Pat), August 29, 1991

Conversion of Patent Applications or Applications for Utility Model


Registration

Section 110. 1 states that at any time before the grant or refusal of a patent, an applicant
for a patent may upon payment of the prescribed fee convert his application into an
application for registration of a utility model, which shall be accorded the filling date of
the initial application. An application may be converted only once.

Industrial Designs

Section 112 states that an industrial design is any composition of lines or colors or any
three dimensional form whether or not associated with lines or colors: Provided, That
such composition or form gives a special appearance to and can serve as pattern for an
industrial product or handicraft. Under Section 113.1, only industrial designs that are
new or original shall benefit from protection under this Act.

Section 113.2 provides that industrial designs dictated essentially by technical or


functional considerations to obtain a technical result or those that are contrary to public
order., health or morals shall not be protected.

The appearance of a claimed design must meet the condition of novelty in order to
qualify for a design patent. In other words, a design patent only protects the novel
features of the design patented.

Industrial Designs

Industrial designs belong to the aesthetic field, but are at the same time intended to serve
as patterns for the manufacture of products of industry or handicraft. Generally speaking,
an industrial design is the ornamental or aesthetic aspect of a useful article. The
ornamental aspect may consist of the shape and/or pattern and/or color of the article. The
ornamental or aesthetic aspect must appeal to the sense of sight. The article must be
reproducible by industrial means.

Independence of Patents

This principle is to be understood in its broadest sense. It means that the grant of a patent
for invention in one country for a given invention does not oblige any other member
country to grant a patent for invention for the same invention.

TRIPS AGREEMENT

National Treatment

The first and most basic general requirement of the TRIPS Agreement is the requirement
for national treatment. By virtue of that requirement, each Member of the WTO must
treat the nationals of every other Member as favorably as its own with respect to
intellectual property-i.e., must not discriminate against foreign nationals of Members.

Most-Favored-Nation Treatment

The requirement for most-favored-nation treatment is an innovation with the TRIPS


Agreement. Drawn from the field of international trade generally, this requirement goes
farther than the requirement for national treatment. It requires not only that each Member
give other Members' nationals the same treatment as its own, but that each Member not
prefer any other Member's nationals, or those of any nonmember country, over the
nationals of any Member.

Exhaustion or First-Sale Doctrine

Article 6 of the TRIPS Agreement explicitly disclaims an intent to impose any particular
requirements regarding the issue of the exhaustion of intellectual property rights. As a
result, Members of the WTO are free to implement exhaustion of intellectual property
rights as they please.

The term generally refers to doctrines that extinguish certain exclusive rights of the
holder of intellectual property with respect to a particular physical item embodying the
intellectual property after the item has first been sold under the holder's authority.

Patentable Subject Matter

Product and Process Patents

Article 27(1) says that, subject to the stated exceptions, patents must be available for both
products and processes in all fields of technology. This requirement implicitly repudiates
a practice observed in a number of developing countries, of providing only process
patents in certain fields of technology, thereby encouraging local inventors to develop
other, non-infringing processes to make the same products.

Exclusive Rights

A product patentee must have the right to prevent others, without authorization, from
making, using, offering for sale, selling, or importing [the patented product] for these
purposes.

A process patentee must have the right to prevent others, without authorization, from
using the process and from using, offering for sale, selling, or importing for these
purposes at least the product obtained directly by that process.

Compulsory Licensing

The provisions of the TRIPS Agreement regarding compulsory licensing are probably
second in importance to those specifying the scope of subject matter for which patents
must be available.

Proof of Process Patent Infringement

The final major substantive requirement of the TRIPS Agreement in the field of patent
law relates to enforcement of process patents. Among the required exclusive rights of a
process patent holder are the rights to use the patented process to make products and to
use, import and sell products made at least directly by that process.

A process patent holder as such, however, does not have the right to control the making
or distribution even of identical products if made by another, non-infringing process.

Data Submission to Government

Paragraph 3 of Article 39 provides special protection for a certain kind of undisclosed


information-that submitted to government agencies to secure regulatory approval of
pharmaceuticals and agricultural chemicals. More specifically, it protects undisclosed test
or other data, the origination of which involves considerable effort and which is
submitted as a condition of regulatory approval for pharmaceutical or agricultural
chemical products which utilize new chemical entities.

Major Concepts of the PCT


The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application,
"an international application," in a standardized format in English in the U.S. Receiving
Office (the U.S. Patent and Trademark Office), and have that application acknowledged
as a regular national or regional filing in as many Contracting States to the PCT as the
applicant "designates" or "elects," that is, names, as countries or regions in which patent
protection is desired.

Requirements for Patentability

Section 21 states that any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable shall be patentable.
It may be, or may relate to, a product, or process, or an improvement of any of the
foregoing.

Novelty, Inventive Step and Industrial Application

Section 21 embodies the elements of patentability: novelty, inventive step or non-


obviousness and industrial applicability. The dispositive question is not whether the
claimed device is an ‘invention’; rather, it is whether the invention satisfies the standards
of patentability.

A conception of the mind is not an invention until represented in some physical form, and
unsuccessful experiments or projects, abandoned by the inventor, are equally destitute of
that character.

It is an essential requirement for the validity of a patent that the subject-matter display
"invention," more ingenuity than the work of a mechanic skilled in the art.

The applicant whose invention satisfies the requirements of


[1] novelty, [2] non-obviousness, and [3] utility, and who is [4] willing to reveal to the
public the substance of his discovery and the best mode of carrying out his invention, is
granted the [5] right to exclude others from making, using, or selling the invention
throughout the country, for the statutory period.

Novelty

Under Section 23 of the Intellectual Property Code, an invention shall not be considered
new if it forms part of the prior art.

The repealed Patent Act followed the rule of relative novelty. The IP Code follows the
rule of absolute novelty.

Prior art shall consist of:


(i) everything which has been made available to the public anywhere in the
world, before the filling date or the priority date of the application claiming- the
invention; and
(ii) (ii) the whole contents of an application for a patent, utility model or
industrial design registration, published in accordance with this Act, filed or effective in
the Philippines, with a filing or priority date that is earlier than the filing or priority date
of the application

Non-Prejudicial Disclosure
Under Section 25, certain forms of disclosure cannot prejudice the patent applicant.
These non-prejudicial disclosures include:

() The disclosure of information contained in the application during the twelve (12)
months preceding the filing date or the priority date of the application shall not prejudice
the applicant on the ground of lack of novelty if such disclosure was made by:

() The inventor;

() A patent office and the information was contained (a) in another application filed by
the inventor and should not have been disclosed by the office, or (b) in an application
filed without the knowledge or consent of the inventor by a third party which obtained
the information directly or indirectly from the inventor; or

() A third party which obtained the information directly or indirectly from the inventor.

Inventive Step

The expression "inventive step" conveys the idea that it is not enough that the claimed
invention be new, that is, different from what exists in the state of the art, but that this
difference must have two characteristics: it must be inventive, that is, the result of a
creative idea and it mat be a step, that is, it must be noticeable.

The “inventive step” means that the difference between the claimed invention and the
state of the art must be the result of a creative idea. The notion of inventive step is
explained by words to the effect that the difference between the claimed invention and
the state of the art must be "non-obvious".

Enablement

In addition to requiring a written description of the invention, § 112 requires that


the specification contain "the manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use the
same."
To satisfy the enablement requirement, the specification must enable the full
scope of the claimed invention.

Specific and Substantial Utility

The enablement requirement is different from the utility requirement. The requirement is
that some specific, substantial, and credible use be set forth for the invention. On the
other hand, the enablement requirement must disclose how the invention can be carried
out, i.e., how the invention can be used.

Case: Man-Made Bacteria: Diamond v. Chakrabarty, Supreme Court of The United States,
447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144, June 16, 1980

Improvement Patents

Section 21 recognizes the patentability of improvement patents. It is well established that


an improver can not appropriate the basic patent of another and that the improver without
a license is an infringer and may be sued as such.

Unlicensed Improver

An improver who appropriates, without license, the basic patent of another, is an


infringer and liable as such.

Unpatented Inventions as Part of Public Domain

It is true that 'the discoverer of a new and useful improvement is vested by law with an
inchoate right to its exclusive use, which he may perfect and make absolute by
proceeding in the manner which the law requires'. Failure to file a patent for an invention
consigns it to the public domain.

Exclusions from Patentability

Section 22 excludes the following matter from patent protection:

() Discoveries, scientific theories and mathematical methods;

() Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;

() Methods for treatment of the human or body by surgery or therapy and diagnostic
methods practice on the human or animal body. This provision shall not apply to
products and composition for use in any of these methods;

() Plant varieties or animal breeds or essentially biological process for the production of
plants or animals. This provision shall not apply to micro-organism and non-biological
and micro-biological processes. Provisions under this subsection shall not preclude
Congress to consider the enactment of a law providing sui genesis protection of plant
varieties and breeds and a system of community intellectual rights protection:
() Aesthetic creations; and

() Anything which is contrary to public order or morality.

The subject matter courts have found to be outside the four statutory categories of
invention is limited to abstract ideas, laws of nature and natural phenomena.

While this is easily stated, determining whether an applicant is seeking to patent an


abstract idea, a law of nature or a natural phenomenon has proven to be challenging.
These three exclusions recognize that subject matter that is not a practical application or
use of an idea, a law of nature or a natural phenomenon is not patentable.

An idea of itself is not patentable, but a new device by which it may be made practically
useful is.4 While a scientific truth, or the mathematical expression of it, is not patentable
invention, a novel and useful structure created with the aid of knowledge of scientific
truth may be.

Case: U.S. Supreme Court Decision in LabCorp. v. Metabolite


Laboratory Corporation of America Holdings, dba LabCorp v. Metabolite Laboratories, Inc., No.
04–607, Supreme Court of the United States, On Writ of Certiorari to the United States Court of
Appeals for The Federal Circuit, June 22, 2006

Proving Anticipation

Anticipation by prior art can be found only when a reference discloses exactly what is
claimed. A finding of anticipation requires that the publication describe or disclose all of
the elements of the claims,5 arranged as in the patented device, functioning in
substantially same way to produce substantially same results. Stated alternatively, in
order that an invention may be anticipated by a description contained in a printed
publication, the latter must disclose the complete and operative invention in such full,
clear, and exact terms as to enable any person skilled in the art to which the invention
relates, or is most nearly connected, to practice the invention without the exercise of
inventive skill of his own.

Evidence Required for Anticipation or Lack of Novelty

The facts establishing anticipation or lack of novelty of a method or device for which a
patent has been granted must be proven by clear and convincing evidence, proof
frequently characterized as so sufficiently clear, certain, and precise as to satisfy beyond
reasonable doubt.

Computer Programs

Computer Programs are not patentable. They are protected instead as copyright works
under Section 172.1 (n) of the IP Code.
4
See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874)
5
C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 48 U.S.P.Q.2d (BNA) 1225 (Fed.
Cir. 1998), cert. denied, 526 U.S. 1130, 119 S. Ct. 1804, 143 L. Ed. 2d 1008 (1999)
Case: State Street Bank & Trust Co. V Signature Financial Group, Inc., United States
Court of Appeals, Federal Circuit,149 F.3d 1368, 47 U.S.P.Q.2d 1596, July 23, 1998.

Plant Varieties and Animal Breeds

Protection of Plant Varieties is governed by the Plant Variety Protection Act of 2002,
Republic Act No. 2168.

Section 4 of the Act specifies the conditions for the grant of the plant variety protection:

The Certificate of Plant Variety Protection shall be granted for varieties that are:
()New;

Newness. — A variety shall be deemed new if the propagating or harvested material of


the variety has not been sold, offered for sale or otherwise disposed of to others, by or
with the consent of the breeder, for purposes of exploitation of the variety;
()In the Philippines for more than one (1) year before the date of filing of an application
for plant variety protection; or

()In other countries or territories in which the application has been filed, for more than
four (4) years or, in the case of vines or trees, more than six (6) years before the date of
filing of an application for Plant Variety Protection.
However, the requirement of novelty provided for in this Act shall not apply to varieties
sold, offered for sale or disposed of to others for a period of five (5) years before the
approval of this Act: Provided, That application for PVP shall be filed within one (1) year
from the approval of this Act.

()

Distinct;

Distinctness. — A variety shall be deemed distinct if it is clearly distinguishable from


any commonly known variety. The filing of an application for the granting of a plant
variety protection or for the entering of a new variety in an official register of variety in
the Philippines or in any country, shall render the said variety a matter of public
knowledge from the date of the said application: Provided, That the application leads to
the granting of a Certificate of Plant Variety Protection or the entering of the said other
variety in the official register of variety as the case may be.

()

Uniform; and

Uniformity. — The variety shall be deemed uniform if, subject to the variation that may
be expected from the particular features of its propagation, it is sufficiently uniform in its
relevant characteristics.

() Stable.

Stability. — The variety shall be deemed stable if its relevant characteristics remain
unchanged after repeated propagation or, in the case of a particular cycle of propagation,
at the end of each such cycle.

Under Section 36, in respect of the propagating materials, holders of a Certificate of Plant
Variety Protection shall have the right to authorize any of the following acts:
() Production or reproduction;
() Conditioning for the purpose of propagation;
() Offering for sale;
() Selling or other marketing;
()Exporting;
()Importing; and
()Stocking for any purpose mentioned above.

The holder may make his authorization subject to conditions and limitations.

Doctrine of Equivalents

Under Section 75.2 of the IP Code, for the purpose of determining the extent of
protection confirmed by the patent, due account shall be taken of elements which are
equivalent to the elements expressed in the claims, so that a claim shall be considered to
cover not only an the elements as expressed therein, but also equivalents.

Under the doctrine of equivalents, an accused product that differs from the claim, and
thus does not literally infringe, nonetheless infringes if its difference from that claim is
insubstantial from the perspective of one of ordinary skill in the relevant art.

The essence of the doctrine of equivalents is that one may not practice a fraud on a
patent. In determining whether an accused device or composition infringes a valid
patent, resort must be had in the first instance to the words of the claim. If accused matter
falls clearly within the claim, infringement is made out and that is the end of it.

The doctrine of equivalents is founded on the theory that, if two devices do the same
work in substantially the same way and accomplish substantially the same result, they are
the same, even though they differ in name, form or shape.

Case: Pascual Godines vs. The Honorable Court of Appeals, Special Fourth Division and SV-
Agro Enterprises, Inc., G.R. No. 97343. September 13, 1993

Protection of Patent is measured by the Claims

The claims of a patent are what define the scope of an invention.

As such, claim validity must be determined on the basis of what is claimed since their
purpose is to force a patentee to insert in claims those limitations and relationships
regarded to be in the invention.

While the language of a patent claim must be read in light of the specification and the
file wrapper, the claim alone is the measure of the invention.

Courts Cannot Expand the Claims


Where patent claim language is clear, it controls and may not be limited or distorted by
resort to specifications, title, or drawings to ascertain the invention. Courts may not add
to, or detract from, the claims matter not expressed or necessarily implied, or enlarge the
patent beyond the scope of that which the inventor claimed and the patent office allowed.

Determining Infringement of Claims

Determining whether a patent claim has been infringed requires a two-step analysis: First,
the claim must be properly construed to determine its scope and meaning. Second, the
claim as properly construed must be compared to the accused device or process. Claim
construction is to be determined by the court. In construing the claims, the court looks to
the claims, the specification, the prosecution history, and, if necessary, extrinsic
evidence. Application of the properly construed claim to the accused device is a question
of fact.

Cases

THIRD DIVISION
[G.R. No. 126627. August 14, 2003.]
SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE
HONORABLE COURT OF APPEALS and TRYCO PHARMA
CORPORATION, respondents.
DECISION
CARPIO MORALES, J p:
Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of
the laws of the state of Pennsylvania, United States of America (U.S.) and
licensed to do business in the Philippines, filed on October 8, 1976, as assignee,
before the Philippine Patent Office (now Bureau of Patents, Trademarks and
Technology Transfer) an application for patent over an invention entitled
"Methods and Compositions for Producing Biphasic Parasiticide Activity Using
Methyl 5 Propylthio-2-Benzimidazole Carbamate." The application bore Serial
No. 18989. ISCcAT
On September 24, 1981, Letters Patent No. 14561 1 for the aforesaid invention
was issued to petitioner for a term of seventeen (17) years.
The letters patent provides in its claims 2 that the patented invention consisted of
a new compound named methyl 5 propylthio-2-benzimidazole carbamate and the
methods or compositions utilizing the compound as an active ingredient in
fighting infections caused by gastrointestinal parasites and lungworms in animals
such as swine, sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (private respondent) is a domestic corporation that
manufactures, distributes and sells veterinary products including Impregon, a drug
that has Albendazole for its active ingredient and is claimed to be effective
against gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair
competition before the Caloocan City Regional Trial Court (RTC). 3 It claimed
that its patent covers or includes the substance Albendazole such that private
respondent, by manufacturing, selling, using, and causing to be sold and used the
drug Impregon without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of
Letters Patent No. 14561 4 as well as committed unfair competition under Article
189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No.
166 (The Trademark Law) for advertising and selling as its own the drug
Impregon although the same contained petitioner's patented Albendazole. 5
On motion of petitioner, Branch 125 of the Caloocan RTC issued a temporary
restraining order against private respondent enjoining it from committing acts of
patent infringement and unfair competition. 6 A writ of preliminary injunction
was subsequently issued. 7
Private respondent in its Answer 8 averred that Letters Patent No. 14561 does not
cover the substance Albendazole for nowhere in it does that word appear; that
even if the patent were to include Albendazole, such substance is unpatentable;
that the Bureau of Food and Drugs allowed it to manufacture and market
Impregon with Albendazole as its known ingredient; that there is no proof that it
passed off in any way its veterinary products as those of petitioner; that Letters
Patent No. 14561 is null and void, the application for the issuance thereof having
been filed beyond the one year period from the filing of an application abroad for
the same invention covered thereby, in violation of Section 15 of Republic Act
No. 165 (The Patent Law); and that petitioner is not the registered patent holder.
Private respondent lodged a Counterclaim against petitioner for such amount of
actual damages as may be proven; P1,000,000.00 in moral damages; P300,000.00
in exemplary damages; and P150,000.00 in attorney's fees. DaTICE
Finding for private respondent, the trial court rendered a Decision dated July 23,
1991, 9 the dispositive portion of which reads:
WHEREFORE, in view of the foregoing, plaintiff's complaint should be, as it is
hereby, DISMISSED. The Writ of injunction issued in connection with the case is
hereby ordered DISSOLVED.
The Letters Patent No. 14561 issued by the then Philippine Patents Office is
hereby declared null and void for being in violation of Sections 7, 9 and 15 of the
Patents Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is
hereby directed to cancel Letters Patent No. 14561 issued to the plaintiff and to
publish such cancellation in the Official Gazette.
Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00
actual damages and P100,000.00 attorney's fees as prayed for in its counterclaim
but said amount awarded to defendant is subject to the lien on correct payment of
filing fees.
SO ORDERED. (Emphasis supplied)
On appeal, the Court of Appeals, by Decision of April 21, 1995, 10 upheld the
trial court's finding that private respondent was not liable for any infringement of
the patent of petitioner in light of the latter's failure to show that Albendazole is
the same as the compound subject of Letters Patent No. 14561. Noting petitioner's
admission of the issuance by the U.S. of a patent for Albendazole in the name of
Smith Kline and French Laboratories which was petitioner's former corporate
name, the appellate court considered the U.S. patent as implying that Albendazole
is different from methyl 5 propylthio-2-benzimidazole carbamate. It likewise
found that private respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.
The appellate court, however, declared that Letters Patent No. 14561 was not void
as it sustained petitioner's explanation that Patent Application Serial No. 18989
which was filed on October 8, 1976 was a divisional application of Patent
Application Serial No. 17280 filed on June 17, 1975 with the Philippine Patent
Office, well within one year from petitioner's filing on June 19, 1974 of its
Foreign Application Priority Data No. 480,646 in the U.S. covering the same
compound subject of Patent Application Serial No. 17280.
Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that
Patent Application Serial No. 18989 was deemed filed on June 17, 1995 or still
within one year from the filing of a patent application abroad in compliance with
the one-year rule under Section 15 of the Patent Law. And it rejected the
submission that the compound in Letters Patent No. 14561 was not patentable,
citing the jurisprudentially established presumption that the Patent Office's
determination of patentability is correct. Finally, it ruled that petitioner
established itself to be the one and the same assignee of the patent
notwithstanding changes in its corporate name. Thus the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with the
MODIFICATION that the orders for the nullification of Letters Patent No. 14561
and for its cancellation are deleted therefrom. TDAcCa
SO ORDERED.
Petitioner's motion for reconsideration of the Court of Appeals' decision having
been denied 11 the present petition for review on certiorari 12 was filed, assigning
as errors the following:
I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING
THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCO'S
"IMPREGON" DRUG, IS INCLUDED IN PETITIONER'S LETTERS PATENT
NO. 14561, AND THAT CONSEQUENTLY TRYCO IS ANSWERABLE FOR
PATENT INFRINGEMENT.
II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO
PRIVATE RESPONDENT TRYCO PHARMA CORPORATION P330,000.00
ACTUAL DAMAGES AND P100,000.00 ATTORNEY'S FEES.
Petitioner argues that under the doctrine of equivalents for determining patent
infringement, Albendazole, the active ingredient it alleges was appropriated by
private respondent for its drug Impregon, is substantially the same as methyl 5
propylthio-2-benzimidazole carbamate covered by its patent since both of them
are meant to combat worm or parasite infestation in animals. It cites the
"unrebutted" testimony of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that
the chemical formula in Letters Patent No. 14561 refers to the compound
Albendazole. Petitioner adds that the two substances substantially do the same
function in substantially the same way to achieve the same results, thereby
making them truly identical. Petitioner thus submits that the appellate court
should have gone beyond the literal wordings used in Letters Patent No. 14561,
beyond merely applying the literal infringement test, for in spite of the fact that
the word Albendazole does not appear in petitioner's letters patent, it has ably
shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole
carbamate.
Petitioner likewise points out that its application with the Philippine Patent Office
on account of which it was granted Letters Patent No. 14561 was merely a
divisional application of a prior application in the U.S. which granted a patent for
Albendazole. Hence, petitioner concludes that both methyl 5 propylthio-2-
benzimidazole carbamate and the U.S.-patented Albendazole are dependent on
each other and mutually contribute to produce a single result, thereby making
Albendazole as much a part of Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder 13 that although methyl 5 propylthio-2-
benzimidazole carbamate is not identical with Albendazole, the former is an
improvement or improved version of the latter thereby making both substances
still substantially the same.
With respect to the award of actual damages in favor of private respondent in the
amount of P330,000.00 representing lost profits, petitioner assails the same as
highly, speculative and conjectural, hence, without basis. It assails too the award
of P100,000.00 in attorney's fees as not falling under any of the instances
enumerated by law where recovery of attorney's fees is allowed. ECcDAH
In its Comment, 14 private respondent contends that application of the doctrine of
equivalents would not alter the outcome of the case, Albendazole and methyl 5
propylthio-2-benzimidazole carbamate being two different compounds with
different chemical and physical properties. It stresses that the existence of a
separate U.S. patent for Albendazole indicates that the same and the compound in
Letters Patent No. 14561 are different from each other; and that since it was on
account of a divisional application that the patent for methyl 5 propylthio-2-
benzimidazole carbamate was issued, then, by definition of a divisional
application, such a compound is just one of several independent inventions
alongside Albendazole under petitioner's original patent application.
As has repeatedly been held, only questions of law may be raised in a petition for
review on certiorari before this Court. Unless the factual findings of the appellate
court are mistaken, absurd, speculative, conjectural, conflicting, tainted with
grave abuse of discretion, or contrary to the findings culled by the court of origin,
15 this Court does not review them.
From an examination of the evidence on record, this Court finds nothing infirm in
the appellate court's conclusions with respect to the principal issue of whether
private respondent committed patent infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent infringement rests on the
plaintiff. 16 In the case at bar, petitioner's evidence consists primarily of its
Letters Patent No. 14561, and the testimony of Dr. Orinion, its general manager in
the Philippines for its Animal Health Products Division, by which it sought to
show that its patent for the compound methyl 5 propylthio-2-benzimidazole
carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the compound Albendazole. All that the
claims disclose are: the covered invention, that is, the compound methyl 5
propylthio-2-benzimidazole carbamate; the compound's being anthelmintic but
nontoxic for animals or its ability to destroy parasites without harming the host
animals; and the patented methods, compositions or preparations involving the
compound to maximize its efficacy against certain kinds of parasites infecting
specified animals.
When the language of its claims is clear and distinct, the patentee is bound
thereby and may not claim anything beyond them. 17 And so are the courts bound
which may not add to or detract from the claims matters not expressed or
necessarily implied, nor may they enlarge the patent beyond the scope of that
which the inventor claimed and the patent office allowed, even if the patentee
may have been entitled to something more than the words it had chosen would
include. 18
It bears stressing that the mere absence of the word Albendazole in Letters Patent
No. 14561 is not determinative of Albendazole's non-inclusion in the claims of
the patent. While Albendazole is admittedly a chemical compound that exists by a
name different from that covered in petitioner's letters patent, the language of
Letter Patent No. 14561 fails to yield anything at all regarding Albendazole. And
no extrinsic evidence had been adduced to prove that Albendazole inheres in
petitioner's patent in spite of its omission therefrom or that the meaning of the
claims of the patent embraces the same. cTCADI
While petitioner concedes that the mere literal wordings of its patent cannot
establish private respondent's infringement, it urges this Court to apply the
doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a
device appropriates a prior invention by incorporating its innovative concept and,
although with some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the same result. 19
Yet again, a scrutiny of petitioner's evidence fails to convince this Court of the
substantial sameness of petitioner's patented compound and Albendazole. While
both compounds have the effect of neutralizing parasites in animals, identity of
result does not amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as the patented
compound, even though it performs the same function and achieves the same
result. 20 In other words, the principle or mode of operation must be the same or
substantially the same. 21
The doctrine of equivalents thus requires satisfaction of the function-means-and-
result test, the patentee having the burden to show that all three components of
such equivalency test are met. 22
As stated early on, petitioner's evidence fails to explain how Albendazole is in
every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate.
Apart from the fact that Albendazole is an anthelmintic agent like methyl 5
propylthio-2-benzimidazole carbamate, nothing more is asserted and accordingly
substantiated regarding the method or means by which Albendazole weeds out
parasites in animals, thus giving no information on whether that method is
substantially the same as the manner by which petitioner's compound works. The
testimony of Dr. Orinion lends no support to petitioner's cause, he not having
been presented or qualified as an expert witness who has the knowledge or
expertise on the matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, it comes into
play when two or more inventions are claimed in a single application but are of
such a nature that a single patent may not be issued for them. 23 The applicant
thus is required "to divide," that is, to limit the claims to whichever invention he
may elect, whereas those inventions not elected may be made the subject of
separate applications which are called "divisional applications." 24 What this only
means is that petitioner's methyl 5 propylthio-2-benzimidazole carbamate is an
invention distinct from the other inventions claimed in the original application
divided out, Albendazole being one of those other inventions. Otherwise, methyl
5 propylthio-2-benzimidazole carbamate would not have been the subject of a
divisional application if a single patent could have been issued for it as well as
Albendazole.
The foregoing discussions notwithstanding, this Court does not sustain the award
of actual damages and attorney's fees in favor of private respondent. The claimed
actual damages of P330,000.00 representing lost profits or revenues incurred by
private respondent as a result of the issuance of the injunction against it,
computed at the rate of 30% of its alleged P100,000.00 monthly gross sales for
eleven months, were supported by the testimonies of private respondent's
President 25 and Executive Vice-President that the average monthly sale of
Impregon was P100,000.00 and that sales plummeted to zero after the issuance of
the injunction. 26 While indemnification for actual or compensatory damages
covers not only the loss suffered (damnum emergens) but also profits which the
obligee failed to obtain (lucrum cessans or ganacias frustradas), it is necessary to
prove the actual amount of damages with a reasonable degree of certainty based
on competent proof and on the best evidence obtainable by the injured party. 27
The testimonies of private respondent's officers are not the competent proof or
best evidence obtainable to establish its right to actual or compensatory damages
for such damages also require presentation of documentary evidence to
substantiate a claim therefor. 28
In the same vein, this Court does not sustain the grant by the appellate court of
attorney's fees to private respondent anchored on Article 2208 (2) of the Civil
Code, private respondent having been allegedly forced to litigate as a result of
petitioner's suit. Even if a claimant is compelled to litigate with third persons or to
incur expenses to protect its rights, still attorney's fees may not be awarded where
no sufficient showing of bad faith could be reflected in a party's persistence in a
case other than an erroneous conviction of the righteousness of his cause. 29
There exists no evidence on record indicating that petitioner was moved by malice
in suing private respondent. cCaATD
This Court, however, grants private respondent temperate or moderate damages in
the amount of P20,000.00 which it finds reasonable under the circumstances, it
having suffered some pecuniary loss the amount of which cannot, from the nature
of the case, be established with certainty. 30
WHEREFORE, the assailed decision of the Court of Appeals is hereby
AFFIRMED with MODIFICATION. The award of actual or compensatory
damages and attorney's fees to private respondent, Tryco Pharma Corporation, is
DELETED; instead, it is hereby awarded the amount of P20,000.00 as temperate
or moderate damages.
SO ORDERED.
Puno, Panganiban, Sandoval-Gutierrez and Corona, JJ ., concur.

[Philippine Patent Office Decision No. 247. June 22, 1981.]


BASILIO C. PRESTO, petitioner, vs. RENATO C. ANGEL and REYNALDO C.
ANGEL, respondents-patentees.
Inter Partes Case No. 1359
Petition for Cancellation:

Letters Patent No. UM-2520


Issued: May 26, 1977
Patentee: Renato C. Angel and
Reynaldo C. Angel
For: AN IMPROVED PALAY
THRESHER
DECISION
This is a cancellation proceeding instituted by Basilio C. Presto, a Filipino citizen
and a resident of Poblacion, Matalam, North Cotabato, seeking the cancellation of
Letters Patent No. UM-2250 granted to Renato C. Angel and Reynaldo C. Angel,
both Filipino citizens, the former residing at Poblacion Cabatan, North Cotabato,
and the latter at Milang, North Cotabato. cdasia
The records show that on July 20, 1976, Respondents Renato C. Angel and
Reynaldo C. Angel filed with this Office an application for a grant of letters
patent for an "Improved Palay Thresher", which application ripened into Letters
Patent No. UM-2520 granted by the Philippine Patent Office on May 26, 1977.
Claiming to be damaged by the grant of said Letters Patent No. UM-2520, Basilio
Presto, the herein Petitioner, filed on March 21, 1980 a petition seeking for the
cancellation of said Letters Patent No. UM-2520. The statutory grounds relied
upon by the Petitioner in his petition for cancellation are as follows:
"1. The utility model covered by said Letters Patent No. UM-2520 is not new
or patentable under Sec. 9 and Sec. 55 of Republic Act No. 165, as amended;
2. The persons to whom the above patent was issued were not the true and
actual authors of the utility model in question or did they derive their rights from
the true and actual author thereof."
For failure of the Respondents-Patentees to file their Answer in the above-entitled
case, and upon motion of counsel for the Petitioner, Respondents-Patentees were
declared in default; hence, Petitioner was allowed to present his evidence ex parte
in accordance with the Rules of Court. cdasia
The petitioner has shown that he is a holder of Letters Patent No. UM-1003 issued
by the Philippine Patent Office on July 14, 1972 which was extended under
Certificate of U.M. Extensions No. 287 which the Petitioner claims to protect his
"threshing machine comprising of the essential parts such as pair of threshing
drums and askew rows of twin solid teeth or beaters, arcuate or fixed screen
below the said pair of drums assembly of two parts or sections, one section being
especially and transversely bent steel plate while the other section is a separator,
said thresher having also a grain return through. This thresher also has a hay
shaker disposed behind the threshing chamber which is actuated upon by an
eccentric shaft in order that it will have a tossing and shaking motion, said
thresher having grain gutters underneath said sieve separators and auger disposed
with said grain gutter, a blower which is also disposed underneath said sieve, the
relative position and combination and arrangements of these essential parts, and
also the motion of these parts. cdtai
On the other hand, the Petitioner also alleges that "the specification of Renato and
Reynaldo Angel stated that their utility model could take a threshing chamber of
any construction which insinuates that it may be of any combination whether of
an expired patent utility model or any protected utility model for that matter. It
has also shown that the utility model that they sought to be patented and protected
has a strainer or sieve disposed below the threshing chamber. That they also have
shown a pair of grain gutters which catches the falling grain from the separator of
the said sieve; that it has also straw shakers which even if it has been stated that it
is in pair but the relative position and the function of which is the same as in
Petitioner's patented utility model so that in the actual manufacture of said utility
model the Respondents have adopted the entire essential parts of Petitioner's
utility model together with their relative position and their motion. Petitioner
claims that although Respondent's patent specification is differently worded, the
essential parts of Respondents' utility model are also present in Petitioner's utility
model. cdasia
Petitioner also further alleges that Respondents Renato C. Angel and Reynaldo C.
Angel are brothers known to him; that he was granted patent Utility Model No.
1003 as early as July 14, 1972 with certificate of extension No. 287 for a five-year
period up to July 14, 1982. Petitioner claims that Respondent Renato Angel
signed a promissory document that he will desist from doing an unlawful act of
copying Petitioner's utility model. cdtai
Petitioner also alleges that he tried on fine wire similar to that mentioned in the
specification and drawings of the Respondent and that he was unable to make this
successfully finding that the wire mesh has no practical utility. According to his
experience with the Respondent-Patentee's utility model, when a mass of grain
coming from the directly dressed palay mixed with shaff, broken stalks and
broken leaves, the wire mesh will catch those foreign matters and eventually clog
the opening of this wire mesh so only a few cavans of clean palay gathered from
said mixed grain, the opening shall have been fully clogged up and this whole
mass of mixed grain will now fall to the rear of the threshing machine without
allowing the grains to fall therefrom so that this particular material has no
practical utility as far as this portion of Respondents-Patentees' thresher is
concerned. aisadc
Petitioner also claims that in Respondents' specification and drawings (Figure 3),
this particular material again used by the Respondents as the carriage for the
platform is again of no practical utility; that when Petitioner experimented on this
particular portion also using the same materials, he found out that there is no way
of protecting this particular portion in order that this machine of Respondents
employ blower in driving or separating the heavy grain from the foreign matters,
those foreign matters and even the heavy grains always could find a way to this
particular portions wherein it will reside on the support of the bearings whereby
they become wedged. Meaning to say that when they are wedged the bearing is
blocked, thus stopping the motion of the primary platform or the screen. For this
reason, Petitioner claims that the Respondents were forced to stop using this
material in supporting the primary platform as stated in their specification,
showing again that their patent has no practical utility.
Referring to drawing (Figure 3) of the Respondents, Petitioner alleges that he has
observed in this particular portion that while the straw of hay shaker has been
installed adjacent to each other, they have to rub against each other on the center
during the operation and that when this space has been filled up with foreign
matters, it will clog up and the machine will stop operation. cdasia
I have carefully gone over the records of this case particularly the specifications
and drawings submitted by both parties and I am convinced that the allegations
made by the Petitioner in his petition for cancellation are well-taken.
WHEREFORE, Letters Patent No. UM-2520 issued on May 26, 1977 in favor of
Respondents-Patentees Renato C. Angel and Reynaldo C. Angel for an "Improved
Palay Thresher" is hereby ordered CANCELLED.
SO ORDERED.
(SGD.) DEMETRIO T. WENDAM
Director

[IPO Decision No. 082. June 28, 2007.]


MICHIGAN ENTERPRISES CORP., petitioner, vs. INCA PLASTICS
PHILIPPINES, INC., respondent-patentee.
IPC No. 13-2005-00115
Petition for Cancellation
Registration No. 3-2003-000535
(Industrial Design)
Date Issued: May 19, 2005
Title: "PLASTIC TRASH CONTAINER"
DECISION
For decision is a Petition for Cancellation filed by Michigan Enterprises
Corporation, a corporation duly organized and existing under Philippine laws,
with place of business at Bagong Filipino Industrial Compound, M. Gregorio
Street, Canumay, Valenzuela City against Industrial Design Registration No. 3-
2003-000535, for a Plastic Trash Container, issued on May 19, 2005 to Inca
Plastic Philippines, Inc., with address at 23 West Service Road, Cupang,
Muntinlupa City, Metro Manila. HTCDcS
The petitioner relied on the following grounds for cancellation:
a) The industrial design for a PLASTIC TRASH CONTAINER registered
under Industrial Design Registration No. 3-2003-000535 is not new and/or
original, and therefore, not registrable under Sections 112 and 113 of Republic
Act No. 8293;
b) Industrial Design Registration No. 3-2003-000535 was secured
fraudulently;
c) Ralph A. Cabrera, the alleged designer, is not the first and/or original
designer of the industrial design for a PLASTIC TRASH CONTAINER registered
under Industrial Design Registration No. 3-2003-000535;
d) The issuance and continued existence of Industrial Design Registration
No. 3-2003-000535 has caused and will continue to cause damage and prejudice
to petitioner. CHaDIT
"3.1.5. Respondent on the other hand states the following:
3.1.5.1.1. It has manufactured and sold the Plastic Trash Container earlier
than petitioner Michigan Enterprise Corporation. In fact, the respondent's
employees Norvito Ecat and Romulo Rapas has executed affidavits attesting to
the fact that they worked as Finisher/Grinder in the Mold Department of the
company; that it was sometime in January 1992 that one of the aluminum molds
which was fabricated was the iron trash bin classified as TC60 by the respondent
company; that they were among the two (2) who started and completed the
grinding and finishing of the mold, after which the same TCT60 was
commercially produced. The affidavits are attached hereto and marked as
Annexes "1" and "2".
3.1.5.2. Another employee, Hermiline Laviña, presently Vice President for
Sales and Marketing of the Respondent, states that she joined the respondent
company in April 15, 1993 as product managers, and as such, prepared the
marketing plan for the company trash bins; and that the marketing plan was
supported by advertisements by August 1993. A copy of her affidavit is attached
hereto as Annex "4", and the Affidavit of Publication from Manila Bulletin to
show that the advertisements were published August 16, 1993, and copies of
Manila Bulletin advertisements are marked as Annexes "5" to "5-b". The sales
invoice for the advertisement materials for the environmental bins dated 14
September 1993 are attached hereto as Annex "6". CSHcDT
3.1.5.3 Aside From the foregoing written testimonies and relevant supporting
documents, the respondent submits the following:
a. PEPSICO INC.; Confirmation Order for 130 pieces TC60SDS, dated 29
November 1993.
b. RFC Supermarket Purchase Order No. 4768, dated 16 June 1994;
c. Philippine Seven Corporation Purchase Order No. 21833, dated 7 July
1994;
d. The Exelsior Purchase Order No. 425, dated 20 July 1994;
e. Marymount School Purchase Order No. 01088;
f. INCA Delivery Receipt No. 3740 to Cebu City Hall, dated 18 December
1995; cDCaHA
g. Cebu Midtown Hotel Purchase Order No. 012657, dated 18 December
1995;
h. Delivery Receipt to Sterling Tobacco, dated 4 January 1996;
i. INCA Sales Invoice No. 14611 to Ms. Josephine Isidro (Shell Station
Dealer), dated 27 August 1999;
j. INCA Sales Invoice No. 14728 — Calbayog Shell Station, dated 9
September 1999;
k. INCA Sales Invoice No. 15770 — Kimberly Clark Philippines, Inc., dated
7 April 2000;
l. INCA Sales Invoice No. 15795 — SM Prime Holdings, Inc., Fairview
Storyland, dated 12 April 2000;
m. INCA Sales Invoice No. 15922 — Wet Consultancy, dated 17 May 2000;
cEAIHa
n. INCA Sales Invoice No. 19263 — Ace Hardware Philippines, Inc., dated
26 January 2002;
o. INCA Sales Invoice No. 19144 — JAE Philippines, Inc., dated 09 January
2002;
p. INCA Sales Invoice No. 22317 — Ateneo de Manila University, dated 26
June 2003;
q. INCA Sales Invoice No. 22919 — Our Lady Chartres Diagnostic Center,
dated 25 September 2003;
r. INCA Sales Invoice No. 236000 — General Service Office Panlalawigan,
Capitol Building, Lingayen, Pangasinan, dated 28 January 2004;
s. INCA Sales Invoice No. 25302 — Sojitz Philippines Corporation, dated
16 October 2004;
t. INCA Sales Invoice No. 25874 — Kimberly Clark Philippines, Inc., dated
29 January 2005; and
u. INCA Sales Invoice No. 26320 — St. Joseph's College, dated 21 April
2005. IcTEAD
All the foregoing are hereto attached as Annexes "7" to "7-T". These Annexes
clearly and indubitable shows that respondent has been engaged in the
manufacturing, sales and distribution of the industrial design for Plastic Trash
Container, which is now registered as Industrial Design Registration No. 3-2003-
000535.
3.1.5.4 With regard to the petitioner's claim that Himalaya Manufacturing is its
sister company, respondent put forward the following;
a. There is nothing on record which shows or proves that petitioner is a
"sister company" of Himalaya Manufacturing. What is has presented are the
Articles of Incorporation of both companies, and all it shows that there are
common stockholders of said corporations. But since these are two different
corporate and juridical entities, then the proof of such a relation must be shown.
cADSCT
b. There is likewise no document which shows that petitioner took over the
business of Himalaya Manufacturing, or that the latter sold to any of its business
of manufacturing and selling of products such as the trash bins petitioner claims
to be similar to that registered by respondent. There is no basis then for it to claim
that all prior business transactions and concerns of Himalaya Manufacturing is
owned by petitioner.
c. Further, verification with the Securities and Exchange Commission (SEC)
shows that both companies are still in existence and operating, and have
submitted their respective General Information Sheets (GIS) for the current year.
An examination of the GIS of Michigan and Himalaya shows that it has not
declared or claimed any relationship with each other, or any other company.
Attached are certified true copies of the GIS of petitioner and Himalaya, marked
as Annexes "8" and "9". EAcIST
3.2 2nd ground: Industrial Design Registration No. 3-2003-000535 was
secured fraudulently.
3.2.1 Although petitioner accuses respondent of securing the industrial design
registration fraudulently, it has failed to duly provide the details of the fraud, or to
present clear and indubitable circumstances, arguments of proof which would
support its allegations of fraud. At this juncture, respondent will be merely
speculating as to what the petitioner is referring to with respect to its allegations
of fraud.
3.2.2 And since it is petitioner which has alleged fraud to have been committed
by INCA Philippines, then it has the burden to prove such an allegations; it is not
incumbent on the respondent to come up with any explanation to dispute fraud,
especially when it is not aware what and how the fraud came about or was
committed. This is inconsonance with Rule 131 of the Revised Rules on evidence
which state:
Burden of Proof and Presumptions
Sec. 3 Disputable presumptions. — The following presumptions are satisfactory
if uncontradicted, but may be contradicted and overcome by other evidence:
AECacS
(a) That a person is innocent of crime or wrong;
xxx xxx xxx
3.3 3rd Ground: Ralph A. Cabrera, designer, is not the first and/or original
designer of the industrial design for a PLASTIC TRASH CONTAINER registered
under Industrial design Registration No. 3-2003-000535.
3.3.1 Again, as discussed in the previous paragraph, petitioner makes a bare
allegation or accusation, this time directed at Mr. Cabrera, the designer of the
industrial PLASTIC TRASH CONTAINER. Petitioner claims that the registered
design registered is identical and/or substantially similar to an industrial design
already in existence. This is the substance of its allegation that the industrial
design registered under Industrial Design Registration No. 3-2003-000535 is not
the first and/or original.
3.3.2 The same has been fully discussed in the previous paragraph, with the
showing that it has been the Patentee which has been first one that designed and
used the registered design. The discussion is hereby repleaded and adopted herein.
DEICaA
3.4 4th Ground: The issuance and continued existence of Industrial Design
Registration No. 3-2003-000535 has caused and will continue to cause damage to
petitioner.
Respondent is totally surprise by this ground relied upon by the petitioner, since
this is not a ground for the cancellation of the industrial design. The grounds for
cancellation of design registration are enumerated under Republic Act No. 8293,
which provides that:
Sec. 120. Cancellation of Design Registration. — 120.1. At any time during
the term of industrial design registration, any person upon payment of the
required fee, may petition the Director of Legal Affairs to cancel the industrial
design on any of the following grounds:
(a) If the subject matter of the industrial design is not registrable within the
terms of Section 112 and 113;
(b) If the subject matter is not new; or
(c) If the subject matter of the industrial design extends beyond the content of
the application as originally filed.
The main issue to be resolved is whether the industrial design registration is new?
Corollary issues are whether registration was obtained fraudulently and whether
Ralph A. Cabrera is the original designer of the subject industrial design.
The pertinent law on the matter, Section 20, Republic 8293 provides:
"Section 20. Cancellation of Design Registration. — 120.1 — At any time
during the term of the industrial design registration, any person upon payment of
the required fee, may petition the Director of Legal Affairs to cancel the industrial
design on any of the following grounds:
(a) if the subject matter of the industrial design is not registrable within terms
of Sections 112 and 113. cSTCDA
(b) If the subject matter is not new, . . ."
An industrial design is not considered new, and is therefore unregistrable if it
forms part of prior art. The law provides:
"Section 24. Prior Art. — Prior art shall consist of:
24.1 Everything which has been made available to the public anywhere in the
world before the filing date or the priority date of the application claiming the
invention; and . . ."
At the outset, this Bureau observes that in its Answer, respondent admits that it
manufactured and sold the plastic trash container subject of the industrial design.
Respondent avers:
"3.1.5. Respondent on the other hand states the following:
3.1.5.1.2. It has manufactured and sold the Plastic Trash Container earlier
than petitioner Michigan Enterprise Corporation. In fact, the respondent's
employees Norvito Ecat and Romulo Rapas has executed affidavits attesting to
the fact that they worked as Finisher/Grinder in the Mold Department of the
company; that it was sometime in January 1992 that one of the aluminum molds
which was fabricated was the iron trash bin classified as TC60 by the respondent
company; that they were among the two (2) who started and completed the
grinding and finishing of the mold, after which the same TCT60 was
commercially produced. The affidavits are attached hereto and marked as
Annexes "1" and "2". HDCAaS
3.1.5.2. Another employee, Hermiline Lavina, presently Vice president for
Sales and Marketing of the respondent, states that she joined the respondent
company in April 15, 1993 as product managers, and as such, prepared the
marketing plan for the company trash bins; and that the marketing plan was
supported by advertisements by August 1993. A copy of her affidavit is attached
hereto as Annex "4", and the Affidavit of Publication from Manila Bulletin to
show that the advertisements were published August 16, 1993, and copies of
Manila Bulletin advertisements are marked as Annexes "5" to "5-b". The sales
invoice for the advertisement materials for the environmental bins dated 14
September 1993 are attached hereto as Annex "6".
3.1.5.3. Aside from the foregoing written testimonies and relevant
supporting documents, the respondent submits the following:
a. PEPSICO INC., Confirmation Order for 130 pieces TC60SDS, dated 29
November 1993;
b. RFC Supermarket Purchase Order No. 4768, dated 16 June 1994;
c. Philippine Seven Corporation Purchase Order No. 21833, dated 7 July
1994;
d. The Exelsior Purchase Order No. 425, dated 20 July 1994;
e. Marymount School Purchase Order No. 01088;
f. INCA Delivery Receipt No. 3740 to Cebu City Hall, dated 18 December
1995;
g. Cebu Midtown Hotel Purchase Order No. 012657, dated 18 December
1995;
h. Delivery Receipt to Sterling Tobacco, dated 4 January 1996;
i. INCA Sales Invoice No. 14611 to Ms. Josephine Isidro (Shell Station
Dealer), dated 27 August 1999;
j. INCA Sales Invoice No. 14728 — Calbayog Shell Station, dated 9
September 1999;
k. INCA Sales Invoice No. 15770 — Kimberly Clark Philippines, Inc., dated
7 April 2000;
l. INCA Sales Invoice No. 15795 — SM Prime Holdings, Inc., Fairview
Storyland, dated 12 April 2000;
m. INCA Sales Invoice No. 15922 — Wet Consultancy, dated 17 May 2000;
n. INCA Sales Invoice No. 19263 — Ace Hardware Philippines, Inc., dated
26 January 2002;
o. INCA Sales Invoice No. 19144 — JAE Philippines, Inc., dated 09 January
2002;
p. INCA Sales Invoice No. 22317 — Ateneo de Manila University, dated 26
June 2003;
This admission is fatal to its defense. The evidence showing that the plastic trash
container has been in existence and sold on a commercial scale years before the
application for registration of that exact industrial design with the Intellectual
Property Office shows that what respondent applied for as an industrial design for
"PLASTIC TRASH CONTAINER" was no longer new at the time Respondent
applied for its registration. Lack of novelty renders an industrial design
unregistrable under the Intellectual Property Code. THCSEA
Respondent's witness Norvito Ecat, in his affidavit (Exhibit "I") stated:
"6. Aside from the TC 60 bin, several variants of the same design were
fabricated from 1993-1995 and these were the TC 15, TC40, TC120 all shaped
and modeled from the original TC 60 design. As before; I was one of the
moldshop personnel assigned to do the grinding and finishing all these molds.
7. That the TC 60 bin and other variants mentioned in the above paragraphs
is the same TC60 bin design now being disputed with the Intellectual Property
Office (I.P.O.)"
Another witness, Romulo D. Rapas similarly testified of the production of the
plastic trash container way back in 1992. He stated in his affidavit (Exhibit "2"):
"5. Upon completion of the grinding and finishing of the mold, I witnessed
the plastic prototyping and actual commercial production of the TC 60 in our
manufacturing plant. I did some minor repair and modification of the mold during
the prototyping and commercial production since 1993 and up to the present.
AICEDc
6. Aside from the TC 60 bin, several variants of the same design were
fabricated from 1993-1995 and these were the TC 15, TC40, TC120 all shaped
and modeled from the original TC 60 design. As before, I was one of the
moldshop personnel assigned to do the grinding and finishing all these molds.
8. That the TC 60 bin and other variants mentioned in the above paragraphs
is the same TC60 bin design now being disputed with the Intellectual Property
Office (I.P.O.)"
Witness Hermiline Lavina, in her affidavit (Exhibit "4") testified as to the
commercial sale of the trash bin referred to as TC 60 and its advertisement as part
of the company's selling strategy. The affidavit of publication in the Manila
Bulletin was submitted as evidence. (Exhibit "5") Exhibit "5"-A is the actual
newspaper advertisement showing an illustration of several waste disposal bins
which include the plastic trash container which looks the same as the plastic trash
container depicted in the industrial design registration of respondent. She
testified:
"4. After the company started with its selling strategy, the same was later
supported with advertisements so by August 1993, I caused the publication of the
advertisement of the TC 60 trash bins together with other trash bins. TEacSA
5. After a while, the strategy was successful since the company started
receiving orders, most noticeable of which came from Pepsi Bottling Company
which was still at their plaint in Aurora Blvd. at that time. Because of the positive
market response of the TC 60 bin design, other variants of the same design such
as TC 15, TC 40, TC 120 were all produced and sold between 1993 to 1995."
In fact, respondent does not deny that the plastic trash container it has been
manufacturing, selling and distributing are the products which depict the
registered industrial design no. 3-2003-000535.
Respondent submitted Sales invoices (Exhibit "&" and sub-markings) which
show the sale of the plastic trash containers. Exhibits "7" to "7"-O are various
sales invoices whose dates bear the year 1993 to June 26, 2003. These all ante-
date the filing date of respondent's application for registration on September 1,
2003.
The relevant inquiry is whether there was a definite sale or offer for sale of the
claimed invention prior to the critical date, defined as one year prior to the U.S.
filing date to which the application was entitled. The foremost purpose of the on-
sale bar is to "prevent inventors from exploiting the commercial value of their
inventions while deferring the beginning of the statutory term." (Wayne K. Pfaff
v. Wells Electronics, Inc. USCA Federal Circuit, September 8, 1997.) aDTSHc
The on-sale bar represents a balance of the policies of allowing the inventor a
reasonable amount of time to ascertain the commercial value of an invention,
while requiring prompt entry into the patent system after sales activity has begun.
Thus the statute limits the period of commercial sale or offers of sale of an
invention to one year before, before the patent application must be filed or forever
barred. (Sed-flex, Inc. v. Athletic Track and Court Construction, USCA Federal
Circuit, October 24, 1996)
It is also respondent's contention that its sales ante-date the sales made by
petitioner's sales of plastic trash containers were only shown through purchase
order dated January 29, 2001. Respondent argues that Michigan and Himalayas
are not the same entities. This supposition belies any claim by petitioner that
advertisements by Himalayas Manufacturing in a telephone directory shows use,
manufacture and distribution as its own. Whether the two corporate entities are
related is immaterial to our finding that what was being sold by these entities are
plastic trash containers bearing an similar if not identical design with the design
belatedly registered by respondent only in September 1, 2003. Petitioner's
brochure printed on April 25, 2001 of Exhibit "D" shows a pictorial
representation of a plastic trash bin; "E"-1 to "E"-8 are advertisements in the
yellow pages of the PLDT Metro Manila Telephone Directories from the years
1995 to 2003 which includes illustrations of the trash bins. Petitioner also
submitted advertisements of Unimagna Phils., Inc. (Exhibit "J" and sub-markings
in the PLDT Metro Manila Telephone Directories from the years 1998 to 2003 of
similarly designed trash bins. Finally, we note the photographs attached to
petitioner's witness' Rosemarie Ong's affidavit (Exhibit "L") which show hooded
plastic trash bins sold by petitioner. All in all, this Bureau notes that when goods
sold and advertised by others entities are compared with the registered design of
respondent, the design look essentially the same if not identical. CHDTEA
We fittingly apply the "ordinary observer test" utilized in the case of Gorham
Mfg. v. White, 81 U.S. 511 (1871) in concluding that the plastic trash bins sold by
Himalaya Manufacturing Corp. or Michigan Enterprises Corp. are identical and
the same the plastic trash container registered by respondent.
"We do not say that in determining whether two designs are substantially the
same, differences in the lines, the configuration, or the modes by which the
aspects they exhibit are not considered; but we think that the controlling
consideration is the resultant effect. . . .
Plainly, it must be the sameness of appearance and the mere differences of lines
and in the drawing or sketch, a greater or smaller number of lines, or slight
variances in configuration, if sufficient to change the effect upon the eye, will not
destroy the substantial identity. . . .
We hold, therefore, that if, in the eye of the ordinary observer, giving such
attention as a purchaser usually gives, two designs are substantially the same, if
the resemblance is such as to deceive such an observer, including him to purchase
one supposing it to be the other, the first one patented is infringed by the other."
aTcIAS
If the two designs are so alike that one may readily be taken as the other by an
ordinary observer, the earlier constitutes an anticipation of the later,
notwithstanding the differences in detail and in non-essential matters. (Sagandorth
v. Huger, 95 FED. 178).
The import of all these earlier sales is that the industrial design registered by
herein Respondent titled "PLASTIC TRASH CONTAINER" is no longer new
because it has become available to the public. Having said this, this Bureau can
only conclude that the design for Plastic Trash Container designed by Ralph
Cabrera subject of Industrial Design Registration No. 3-2003-000535 issued on
May 19, 2005 is no longer novel and therefore, unregistrable under Patent law.
However, there is insufficient evidence to prove that the designer fraudulently
obtained its registration.
The Supreme Court in Angelita Manzano v. Court of Appeals and Melecia
Madolaria, G.R. No. 113388, September 5, 1997, held:
"The element of novelty is an essential requisite of the patentability of an
invention or discovery. If a device or process has been known or used by others
prior to its invention or discovery by the applicant, an application for a patent
therefor should be denied; and if the application has been granted, the court, in a
judicial proceeding in which the validity of the patent is drawn in question, will
hold it void and ineffective. It has been repeatedly held that an invention must
possess the essential elements of novelty, originality and precedence, and for the
patentee to be entitled to the protection the invention must be new to the world."
DaTHAc
WHEREFORE, in view of the foregoing, the Petition for Cancellation filed by
Michigan Enterprises Corporation against Industrial Design Registration No. 3-
2003-000535, for a Plastic Trash Container, is hereby GRANTED. Consequently,
Industrial Design Registration No. 3-2003-000535, for a Plastic Trash Container
issued on May 19, 2005 to Inca Plastic Philippines, Inc. is hereby CANCELLED.
Let the filewrapper of subject: Industrial Design Registration No. 3-2003-000535
together with a copy of this DECISION be forwarded to the Bureau of Patents for
appropriate action. cHaADC
SO ORDERED.
Makati City, June 28, 2007.
[BPTTT Decision No. 01 (PAT). January 6, 1993.]
DR. ANTONIO F. MATEO, petitioner, vs. BEATRIZ CHUA SENG SO,
respondent.
Inter Partes Case No. 3560
Petition for Cancellation:

Letters Patent No. UM-6780


Issued: March 30, 1989
Patentee: Beatriz Chua Seng So
For WATER METER COUPLING DETECTOR
DECISION
This refers to a petition for cancellation of Letters Patent No. UM-6780 issued to
Respondent Beatriz Chua Seng So on 30 March 1989 and entitled Water Meter
Coupling Detector. cdasia
Petitioner, Dr. Antonio F. Mateo, a resident of 9-E Mother Ignacia Avenue,
Diliman, Quezon City filed this Petition on 26 June 1990 and alleged the
following grounds for cancellation, to wit:
"1. That the utility model is not new and is of no practical utility as required
by Section 55 of the Republic Act No. 165 as amended by Republic Act No. 864.
2. That the person whom the patent was issued is not the first, original, true
and actual maker of the utility model (Republic Act No. 165, Section 28, as
amended by Republic Act No. 864)."
Furthermore, Petitioner averred that he shall rely on the following facts to support
his Petition for Cancellation, to wit:
"1. That I am true, original and actual maker of the utility model from whom
Ms. Chua Seng So fraudulently derived her utility model as evidenced by my
Letters Patent No. UM-5258 entitled "WATER METER PROTECTOR" granted
by your Office on May 25, 1983 and extended on may 30, 1988.
2. That Ms. Chua Seng So's utility model is not new since even before the
application of her patent, may device was publicly known.
3. That my utility model, WATER METER PROTECTOR, has been a 1st
Prize Awardee during the 1984 National Inventors Week Contest (see Annex A)
and was given a Presidential and Merit Award in the same year as evidenced by
(Annex B).
4. That my WATER METER PROTECTOR is widely known and used by
Water Districts all over the country since 1984.
In her Answer filed on 30 August 1990, Respondent-Patentee denied the material
allegations of the aforesaid Petition and raised the following special and
affirmative defenses:
"8. The registration and issuance of respondent's questioned Letters Patent
were in accordance with the law, that is, it was properly examined by the Bureau
of Patents, Trademarks and Technology Transfer according to the requirements of
R.A. 165 and of the Rules of Practice in Patent Cases, which examination
includes among others, the citation of references (which in turn included or made
mention of petitioner's letters patent), recommended for allowance after a
thorough and finally, issued the Letters Patent. All these would show that
respondent's products is patentable, notwithstanding petitioner's previously issued
Letters Patent, Because otherwise, the Bureau would not have issued respondent's
Letters Patent;
9. Respondent's utility model is "new", and therefore respondent is the first,
original, true and actual maker of the product, because before the application for
patent, it has not been publicly known or publicly used in the country, nor
described in a printed publication or publications circulated within the country,
nor substantially similar to any other utility model so known, used or described
within the country.
10. As can be seen from comparative pictures of petitioner's and respondent's
patented products, attached hereto as Annexes "1" to "5", petitioner's product is
very different from and not similar with, whether substantially or otherwise,
respondent's product, in the following manner:
Petitioner's Product Respondent's Product

a) made of either polypro- a) made of ABS


oylene/polyethylene (Accrylonitrile
polyethylene or Butadiene Styrene)
polybutylene

b) the external shape is circular b) the external shape is


hexagonal

c) comes in only one (1) c) comes in three (3)


color — black colors — blue, to
indicate that the meter
where it is attached is in
order; yellow to
indicate that the meter
has once been tampered;
and red, to indicate that
the meter has been
tampered more than
once

d) secured by two (2) ordinary d) and e) not secured by


screws screws nor by seals but
by a special crimping
device

e) bound by an alleged tamper


-proof seal
In sum, respondent's product is very different from that of the petitioner in
materials used, design structure, construction, features, color and purpose.
11. Respondent's product is of substantial practical utility because it acts as a
tamper-proof protector for water coupling of various sizes.
The basic question to be resolved is whether or not Letters Patent UM-5258
issued to the herein Petitioner could be considered a "prior art" so as to bar the
issuance of Letters Patent UM-6780? If the answer to this question is in the
affirmative, then Letter Patent UM-6780 should be Cancelled, otherwise not.
Petitioner's Letter Patent UM-5258 is directed to a construction of a water meter
coupling protector. Respondent's Letter Patent No. UM-6780 also relates to the
same subject matter. To show the similarities of the two models, the Petitioner
submitted drawings of the following: 1.) a pair of identical upper and lower
bodies, each provided with a downward directed side flanges, having semi
circular openings, to define therein a chamber; and 2.) a pair of identical
horizontal end flanges adjacently disposed in both ends thereof. The Petitioner
averred that the only difference between the two models is the introduction of the
hollow male projector integrally molded on the upper face of one of the adjacent
end flanges and a hollow female projection on the lower face of the other end
flange. He also introduced actual samples of the two utility models.
Respondent-Patentee, also formally offered in evidence the actual sample of the
products covered by the two utility models to show their alleged differences. In
addition, Respondent-Patentee introduced a copper wire seal and a lead seal
attached to the upper wire (Exhibits "9" and "10") used in the Petitioner's product
to show that the Petitioner's Patented product is sealed by a copper wire which is
not found in Respondent's Patented product.
A drawback was discussed in the Petitioner's specification the petitioner, viz:
"With my utility model of this meter protector 10, these tail pieces 20 can be
totally enclosed by the protector 10, provided thru with a wire-lead seal (not
shown) and the protector positively screwed together as shown in Figure 3 to
totally enclose the connects nut and prevent the removed of the water meter. To
be more positive, the head ends of the screw inside the screw holes can be
plogged with epoxy substance, such that only an intentional unscrewing of the
screw will allow the removal of the protector and also the connector nut 20 to
indicate an illegal act by a person. Even with the seal broken, the protector 10 is
still intact. (Emphasis supplied)"
Consequently, all it takes to tamper with the water meter is the removal of the
screw above-mentioned. To conceal such an act, the consumer would just replace
the screw after the meter has been tampered with so that a water-meter reader
would not notice it. cdasia
A solution to this draw back was presented by the Respondent-Registrant in her
specification, to wit:
Attempts have been made to devise a positive sealing of the meter which is safe
from accidental destruction. As exemplified in Patent Nos. UM-5258 and UM-
6357 issued to Antonio Mateo and Tan Leong Tat, respectively, both patents
employ complemental cylindrical bodies to enclose the coupling nuts of the water
meters and fastened together by means of screws. The following drawbacks of
said devices have been observed:
1. the fastening screws which are used for purposes of re-usability of the
device allow easy tampering of the meter, hence not positive and perfectly seal-
proof.
2. expensive in its manufacture in terms of labor and material.
The present utility model seeks to remedy and overcome the aforementioned
drawbacks.
It is then an object of this utility model to provide a water coupling protector
which is unique, novel and very simple.
An important object of this utility model is to provide a water meter coupling
protector which is seal-proof, reliable and very effective such that when tampered
with it could no longer be reused.
A specific object of this utility model is to provide a water meter coupling
protector wherein the fastener used to secure said protector is in the form of
integrally molded hollow male and female projections to forms rivet-like fasteners
which when tampered with becomes useless, hence a positive indication of a
tampered meter".
During the examination stage of the Respondent's patent, the issue of its similarity
to that of the Petitioner's Patent was raised and squarely passed upon in favor of
the Respondent. There is no reason to alter the conclusion we made then. The
patentable subject matter of the Respondent's utility model lies in the construction
of the male projection and a female projection on the adjacent end flanges of said
upper and lower bodies whereby said male projections snugly fits in the said
female projection when pressed together.
In Section 55 of R.A. 165, it provides that any new model of implements or tools
or of any industrial product, which does not possess the quality of invention but
which is of practical utility by reason of its construction may be protected by the
author thereof by a patent for a utility model. In the case at bar, it cannot be
denied that the construction of a water meter protector made by the respondent
out of a male and female projections to form rivet like fasteners is not described
in the utility model the petitioner or other prior art. Hence, it satisfies the first
requirement of patentability which is novelty.
The next question to be resolved is whether or not Respondent's model possesses
practical utility. A careful analysis of the drawback set forth in petitioner's utility
model and the solution thereof in Respondent's patent an affirmative reply. The
introduction of the aforesaid male and female projections in Respondent's, water
meter reader would facilitate detection of tampering. If the projections are intact,
no tampering has If the same had been destroyed, obviously the meter has been
tampered.
In Samson vs. Tarroza, 28 SCRA 792, the Honorable Supreme Court held that:
"Petitioner was, on May 22, 1958, awarded Utility Model patent No. 27 for the
above type of wheelbarrow which as noted in the decision, "consists of a wheeled
carriage base and an upper pivoted and detachable carrying tray. The carriage
base is comprised of a wheel and two equal lengths of continuous pipes bent to
provide wheel forks at the front and at the rear to support the back portion of the
tray, with the ends of the pipes being adopted as the carrying handles for the
wheelbarrow. The two pipes thus bent are joined together by cross braces in the
front and at the rear. The tray is removably pivoted at its front end through hook
catches at its bottom corners, to the forward cross brace, and its rear end rests
solidly over the rear portion of the legs. To dump the load the user pulls a
dumping handle at the back end to cause the tray to pivot upwardly about the
front brace to a position of about 45 degrees with the horizontal and with and with
its front end panel being supported by the Wheel."
"Respondent's Side Tilting-Dumping Wheelbarrow, on the other hand, consists
"of a wheeled carriage made of tubular frames essentially as in petitioner's.
Welded transversely to the parallel frames are two brackets provided with holes
designed to complement similar holes on brackets provided on the tray. The
brackets on the tray are so placed that with the provision of a bolt through the
openings the tray may be tilted approximately 170 degrees to the left or to the
right of the wheelbarrow with its axis running longitudinally through, the center
of the bottom face of the tray."
"There is an express recognition under the Patent Law, as already noted, that any
new model of implements or tools or of any industrial product even if not
possessed of the quality of invention but which is of "practical utility" is entitled
to a "patent for a utility model". From the above description of the side tilting-
dumping wheelbarrow, the product of respondent's ingenuity and industry, it is
quite apparent that it has a place in the market and possesses what the statute
refers to as "practical utility". The requirement explicitly set forth in the statute
has thus been met. Respondent Tarroza is entitled to its benefits. The grant to him
of a patent for a utility model is in accordance with law. There was no reason,
therefore, for its cancellation. So it was held by the Director of Patents. That
decision as already noted should stand."
WHEREFORE, premises considered, this Petition for Cancellation is hereby
DENIED. Patent No. UM-6780 issued in the name of the Respondent is hereby
declared valid and subsisting.
Let the filewrapper of this case be forwarded to Application, Issuance and
Publication Division for appropriate action in accordance with this Decision.
Likewise, let a copy of this Decision be furnished the Mechanical Examining
Division for information an to update its records.
SO ORDERED.
(SGD.) IGNACIO S. SAPALO

FIRST DIVISION
[G.R. No. 115106. March 15, 1996.]
ROBERTO L. DEL ROSARIO, petitioner, vs. COURT OF APPEALS AND
JANITO CORPORATION, respondents.
Quisumbing, Torres and Evangelista for petitioners.
J.P. Villanueva and Associates for private respondent.
SYLLABUS
1. REMEDIAL LAW; CIVIL PROCEDURE; PROVISIONAL REMEDIES;
INJUNCTION; ITS NATURE. — Injunction is a preservative remedy for the
protection of substantive rights or interests. It is not a cause of action in itself but
merely a provisional remedy, an adjunct to a main suit. The controlling reason for
the existence of the judicial power to issue the writ is that the court may thereby
prevent a threatened or continuous irremediable injury to some of the parties
before their claims can be thoroughly investigated and advisely adjudicated. It is
to be resorted to only when there is a pressing necessity to avoid injurious
consequences which cannot be remedied under any standard of compensation.
The application of the writ rests upon an alleged existence for an emergency or of
a special reason for such an order before the case can be regularly heard, and the
essential conditions for granting such temporary injunctive relief are that the
complaint alleges facts which appear to be sufficient to constitute a cause of
action for injunction and that on the entire showing from both sides, it appears, in
view of all the circumstances, that the inunction is reasonably necessary to protect
the legal rights of plaintiff pending the litigation.
2. ID.; WHEN INJUNCTION MAY BE GRANTED; REQUISITES FOR
ITS ISSUANCE. — A preliminary injunction may be granted at any time after the
commencement of the action and before judgment when it is established that the
defendant is doing, threatens, or is about to do, or is procuring or suffering to be
done, some act probably in violation of the plaintiff's rights. Thus, there are only
two requisites to be satisfied if an injunction is to issue, namely, the existence of
the right to be protected, and that the facts against which the injunction is to be
directed are violative of said right. For the writ to issue the interest of petitioner in
the controversy or the right he seeks to be protected must be a present right, a
legal right which must be shown to be clear and positive.
3. COMMERCIAL LAW; INTELLECTUAL PROPERTY; THE PATENT
LAW; WHEN A UTILITY MODEL IS NOT CONSIDERED "NEW" UNDER
SECTION 55 OF THE PATENT LAW. — Under Sec. 55 of the Patent Law a
utility model shall not be considered "new" if before the application for a patent it
has been publicly known or publicly used in this country or has been described in
a printed publication or publications circulated within the country, or if is
substantially similar to any other utility model so known, used or described within
the country.
4. ID.; WHEN ANY NEW MODEL OF IMPLEMENTS OR TOOLS IS
ENTITLED TO A PATENT FOR UTILITY MODEL. — The Patent Law
expressly acknowledges that any model of implements or tools of any industrial
product even if not possessed of the quality of invention but which is practical
utility is entitled to a patent for utility model.
5. ID.; RIGHTS OF A PATENTEE UNDER SECTION 37 OF THE
PATENT LAW. — The rights of petitioner as a patentee have been sufficiently
established, contrary to the findings and conclusions of respondent Court of
Appeals. Consequently, under Sec. 37 of The Patent law, petitioner as a patentee
shall have the exclusive right to make, use and sell the patented machine, article
or product for the purpose of industry or commerce, throughout the territory of the
Philippines for the term of the patent, and such making, using or selling by any
person without authorization of the patentee constitutes infringement of his
patent.
6. ID.; WHAT CONSTITUTES AN INFRINGEMENT OF A PATENT. —
It is elementary that a patent may be infringed where the essential or substantial
features of the patented invention are taken or appropriated, or the device,
machine or other subject matter alleged to infringe is substantially identical with
the patent invention. In order to infringe a patent, a machine or device must
perform the same function, or accomplish the same result by identical or
substantially identical means and the principle or mode of operation must be
substantially the same.
7. ID.; PETITIONER HAD SUFFICIENTLY ESTABLISHED A PRIMA
FACIE PROOF OF VIOLATION OF HIS RIGHTS AS PATENTEE. — It may
be noted that respondent corporation failed to present before the trial court a clear,
competent and reliable comparison between its own model and that of petitioner,
and disregarded completely petitioner's Utility Model No. 6237 which improved
on his first patented model. Notwithstanding the differences cited by respondent
corporation, it did not refute and disprove the allegations of petitioner before the
trial court that: (a) both are used by a singer to sing and amplify his voice; (b)
both are used to sing with a minus-one or multiplex tapes, or that both are used to
play minus-one or standard cassette tapes for singing or for listening to; (c) both
are used to sing with a minus-one tape and multiplex tape and to record the
singing and the accompaniment; (d) both are used to sing with live
accompaniment and to record the same; (e) both are used to enhance the voice of
the singer using echo effect, treble, bass and other controls; (f) both are equipped
with cassette tape decks which are installed with one being used for playback and
the other, for recording the singer and the accompaniment, and both may also be
used to record a speaker's voice or instrumental playing, like the guitar and other
instruments, (g) both are encased in box-like cabinets; and (h) both can be used
with one or more microphones. Clearly, therefore, both petitioner's and
respondent's models involve substantially the same modes of operation and
produce substantially the same if not identical results when used. In view thereof,
we find that petitioner had established before the trial court prima facie proof of
violation of his rights as patentee to justify the issuance of a writ of preliminary
injunction in his favor during the pendency of the main suit for damages resulting
from the alleged infringement.
DECISION
BELLOSILLO, J p:
Roberto del Rosario petitions this Court to review the decision of the Court of
Appeals 1 which set aside the order of the Regional Trial Court of Makati
granting a writ of preliminary injunction in his favor.
The antecedents: On 18 January 1993 petitioner filed a complaint for patent
infringement against private respondent Janito Corporation. 2 Roberto L. del
Rosario alleged that he was a patentee of an audio equipment and improved audio
equipment commonly known as the sing-along system or karaoke under Letters
Patent No. UM-5269 dated 2 June 1983 as well as Letters Patent No. UM-6237
dated 14 November 1986 issued by the Director of Patents. The effectivity of both
Letters Patents was for five (5) years and was extended for another five (5) years
starting 2 June 1988 and 14 November 1991, respectively. He described his sing-
along system as a handy multi-purpose compact machine which incorporates an
amplifier speaker, one or two tape mechanisms, optional tuner or radio and
microphone mixer with features to enhance one's voice, such as the echo or reverb
to stimulate an opera hall or a studio sound, with the whole system enclosed in
one cabinet casing.
In the early part of 1990 petitioner learned that private respondent was
manufacturing a sing-along system bearing the trademark or miyata karaoke
substantially similar if not identical to the sing-along system covered by the
patents issued in his favor. Thus he sought from the trial court the issuance of a
writ of preliminary injunction to enjoin private respondent, its officers and
everybody elsewhere acting on its behalf, from using, selling and advertising the
miyata or miyata karaoke brand, the injunction to be made permanent after trial,
and praying for damages, attorney's fees and costs of suit.
On 5 February 1993 the trial court temporarily restrained private respondent from
manufacturing, using and/or selling and advertising the miyata sing-along system
or any sing-along system substantially identical to the sing-along system patented
by petitioner until further orders.
On 24 February 1993 the trial court issued a writ of preliminary injunction upon a
bond on the basis of its finding that petitioner was a holder of a utility model
patent for a sing-along system and that without his approval and consent private
respondent was admittedly manufacturing and selling its own sing-along system
under the brand name miyata which was substantially similar to the patented
utility model 3 of petitioner.
Private respondent assailed the order of 24 February 1993 directing the issuance
of the writ by way of a petition for certiorari with prayer for the issuance of a writ
of preliminary injunction and a temporary restraining order before respondent
Court of Appeals.
On 15 November 1993 respondent appellate court granted the writ and set aside
the questioned order of the trial court. It expressed the view that there was no
infringement of the patents of petitioner by the fact alone that private respondent
had manufactured the miyata karaoke or audio system, and that the karaoke
system was a universal product manufactured, advertised and marketed in most
countries of the world long before the patents were issued to petitioner. The
motion to reconsider the grant of the writ was denied; 4 hence, the instant petition
for review.
This petition alleges that: (a) it was improper for the Court of Appeals to consider
questions of fact in a certiorari proceeding; (b) the Court of Appeals erred in
taking judicial notice of private respondent's self-serving presentation of facts; (c)
the Court of Appeals erred in disregarding the findings of fact of the trial court;
and, (d) there was no basis for the Court of Appeals to grant a writ of preliminary
injunction in favor of private respondent. 5
Petitioner argues that in a certiorari proceeding questions of fact are not generally
permitted the inquiry being limited essentially to whether the tribunal has acted
without or in excess of jurisdiction or with grave abuse of discretion; that
respondent court should not have disturbed but respected instead the factual
findings of the trial court; that the movant has a clear legal right to be protected
and that there is a violation of such right by private respondent. Thus, petitioner
herein claims, he has satisfied the legal requisites to justify the order of the trial
court directing the issuance of the writ of injunction. On the other hand, in the
absence of a patent to justify the manufacture and sale by private respondent of
sing-along systems, it is not entitled to the injunctive relief granted by respondent
appellate court.
The crux of the controversy before us hinges on whether respondent Court of
Appeals erred in finding the trial court to have committed grave abuse of
discretion in enjoining private respondent from manufacturing, selling and
advertising the miyata karaoke brand sing-along system for being substantially
similar if not identical to the audio equipment covered by letters patent issued to
petitioner.
Injunction is a preservative remedy for the protection of substantive rights or
interests. It is not a cause of action in itself but merely a provisional remedy, an
adjunct to a main suit. The controlling reason for the existence of the judicial
power to issue the writ is that the court may thereby prevent a threatened or
continuous irremediable injury to some of the parties before their claims can be
thoroughly investigated and advisedly adjudicated. It is to be resorted to only
when there is a pressing necessity to avoid injurious consequences which cannot
be remedied under any standard of compensation. The application of the writ rests
upon an alleged existence of an emergency or of a special reason for such an
order before the case can be regularly heard, and the essential conditions for
granting such temporary injunctive relief are that the complaint alleges facts
which appear to be sufficient to constitute a cause of action for injunction and that
on the entire showing from both sides, it appears, in view of all the circumstances,
that the injunction is reasonably necessary to protect the legal rights of plaintiff
pending the litigation. 6
A preliminary injunction may be granted at any time after the commencement of
the action and before judgment when it is established that the defendant is doing,
threatens, or is about to do, or is procuring or suffering to be done, some act
probably in violation of the plaintiff's rights. Thus, there are only two requisites to
be satisfied if an injunction is to issue, namely, the existence of the right to be
protected, and that the facts against which the injunction is to be directed are
violative of said right. 7
For the writ to issue the interest of petitioner in the controversy or the right he
seeks to be protected must be a present right, a legal right which must be shown to
be clear and positive.
In this regard Sec. 55 of R.A. 165 as amended known as The Patent Law,
provides —
Sec. 55. Design patents and patents for utility models. — (a) Any new,
original, and ornamental design for an article of manufacture and (b) new model
or implements or tools or of any industrial product or of part of the same, which
does not possess the quality of invention but which is of practical utility by reason
of its form, configuration, construction or composition, may be protected by the
author thereof, the former by a patent for a design and the latter by a patent for a
utility model, in the same manner and subject to the same provisions and
requirements as relate to patents for inventions insofar as they are applicable,
except as otherwise herein provide . . .
Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June
1985 issued for a term of five (5) years from the grant of a Utility Model herein
described —
The construction of an audio equipment comprising a substantially cubical casing
having a window at its rear and upper corner fitted with a slightly inclined control
panel, said cubical (casing) having a vertical partition wall therein defining a rear
compartment and a front compartment, and said front compartment serving as a
speaker baffle; a transistorized amplifier circuit having an echo section and
writhed in at least the printed circuit boards placed inside said rear compartment
of said casing and attached to said vertical partition wall, said transistorized
amplifier circuit capable of being operated from outside, through various controls
mounted on said control panel of such casing; a loud speaker fitted inside said
front compartment of said casing and connected to the output of the main audio
amplifier section of said transistorized amplifier circuit and a tape player mounted
on the top wall of said casing and said tape player being connected in
conventional manner to said transistorized amplifier circuit. 8
Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-6237
for a term of five (5) years from the grant of a Utility Model described as —
In an audio equipment consisting of a first cubical casing having an opening at its
rear and upper rear portion and a partition therein forming a rear compartment and
a front compartment serving as a loud speaker baffle, a control panel formed by
vertical and horizontal sections, a transistorized amplifier circuit wired in at least
two printed circuit boards attached at the back of said control panel, a first loud
speaker fitted inside said first compartment of such first casing and connected to
the output of said transistorized amplifier circuit; the improvement wherein said
control panel being removably fitted to said first cubical casing and further
comprises a set of tape recorder and type player mounted on the vertical section of
said control panel and said recorder and player are likewise connected to said
transistorized amplifier circuit; a second cubical casing having an opening at its
rear, said second cubical casing having (being?) provided with a vertical partition
therein defining a rear compartment and a front compartment, said rear
compartment being provided with a door and enclosing therein a set of tape racks
and said front compartment serving as loud speaker baffle, said second cubical
casing being adapted to said first cubical casing so that said first and second
casing are secured together in compact and portable form; compartment of said
casing and connected to the output of said amplifier circuit. 9
The terms of both Letters Patents were extended for another five (5) years each,
the first beginning 2 June 1988 and the second, 14 November 1991.
The Patent Law expressly acknowledges that any new model of implements or
tools of any industrial product even if not possessed of the quality of invention but
which is of practical utility is entitled to a patent for utility model. 10 Here, there
is no dispute that the letters patent issued to petitioner are for utility models of
audio equipment.
In issuing, reissuing or withholding patents and extensions thereof, the Director of
Patents determines whether the patent is new and whether the machine or device
is the proper subject of patent. In passing on an application, the Director decides
not only questions of law but also questions of fact, i.e. whether there has been a
prior public use or sale of the article sought to be patented. 11 Where petitioner
introduces the patent in evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of the Director of
Patents in granting the patent is always presumed to be correct, and the burden
then shifts to respondent to overcome this presumption by competent evidence. 12
Under Sec. 55 of The Patent Law a utility model shall not be considered "new" if
before the application for a patent it has been publicly known or publicly used in
this country or has been described in a printed publication or publications
circulated within the country, or if it is substantially similar to any other utility
model so known, used or described within the country. Respondent corporation
failed to present before the trial court competent evidence that the utility models
covered by the Letters Patents issued to petitioner were not new. This is evident
from the testimony of Janito Cua, President of respondent Janito Corporation,
during the hearing on the issuance of the injunction, to wit —
Q. Mr. Cua, you testified that there are (sic) so many other companies which
already have (sic) the sing-along system even before the patent application of Mr.
del Rosario and as a matter of fact you mentioned Sanyo, Sony and Sharp, is that
right?
A. Musicmate and Asahi.
Q. Now do you recall that your lawyer filed with this Honorable Court an
Urgent Motion to Lift Temporary Restraining Order of this Honorable Court. I am
sure you were the one who provided him with the information about the many
other companies selling the sing-along system, is that right? These 18 which you
enumerated here.
A. More than that because . . .
Q. Now you will agree with me that in your statement Sharp you put the date
as 1985 agreed?
A. No.
Q. You mean lawyer was wrong when he put the word Sharp 1985?
A. Maybe I informed him already
xxx xxx xxx
Q. You men your lawyer was wrong in alleging to this Court that Sharp
manufactured and sold (in) 1985 as found in the Urgent Motion?
A. Since it is urgent it is more or less.
Q. The same also with Sanyo 1985 which you put, more or less?
A. Sanyo is wrong.
Q. It is not 1985?
A. Sanyo is 1979 I think.
Q. So this is also wrong. Panasonic 1986 is also wrong?
A. Panasonic I think.
Q. Soy you don't think this is also correct.
A. The date?
Q. So you don't think also that this allegation here that they manufacture in
1986 is correct?
A. The date?
Q. So you don't think also that this allegation here that they manufactured in
1986 is correct?
A. Wrong. Earlier.
Q. National by Precision Electronic 1986 this is also wrong?
A. I think earlier.
Q. So that means all your allegations here from 2 to 5 are wrong? OK. By
Philipps Philippines 1986, this is also correct or wrong?
A. More or less. We said more or less.
Q. Nakabutshi by Asahi Electronics that is also wrong?
A. No that is 1979.
Q. Electone by DICO 1989 is this correct or wrong?
A. Correct. More or less.
Q. Skylers 1985 is that correct or wrong?
A. It is more or less because it is urgent. We don't have time to exact the date.
Q. Musicmate of G.A. Yupangco 1981 this is more or less? You are not also
sure?
A. 95% sure.
Q. Now you are sure 1981.
A. This one because . . .
Q. Mr. Witness so you are now trying to tell this Honorable Court that all
your allegations here of the dates in this Urgent Motion except for Musicmate
which you are only 95% sure they are all wrong or they are also more or less or
not sure, is that right?
A. More or less.
Q. Now do you have any proof, any advertisement, anything in writing that
would show that all these instruments are in the market, do you have it.
A. No I don't have it because . . .
Q. No I am satisfied with your answer. Now Mr. Witness, you don't also have
a proof that Akai instrument that you said was also in the market before 1982?
You don't have any written proof, any advertisement?
A. I have the product.
Q. But you have not brought the product in (sic) this Honorable Court, right?
A. No 13
As may be gleaned herein, the rights of petitioner as a patentee have been
sufficiently established, contrary to the findings and conclusions of respondent
Court of Appeals. Consequently, under Sec. 37 of the Paten law, petitioner as a
patentee shall have the exclusive right to make, use and sell the patented machine,
article or product for the purpose of industry or commerce, throughout the
territory of the Philippines for the term of the patent, and such making, using or
selling by any person without authorization of the patentee constitutes
infringement of his patent.
Petitioner established before the trial court that respondent Janito Corporation was
manufacturing a similar sing-along system bearing the trademark miyata which
infringed his patented models. He also alleged that both his own patented audio
equipment and respondent's sing-along system were constructed in a casing with a
control panel, the casing having a vertical partition wall defining the rear
compartment from the front compartment, with the front compartment consisting
of a loud speaker baffle, both containing a transistorized amplifier circuit capable
of being operated from outside through various controls mounted on the control
panel, and that both had loud speakers fitted inside the front compartment of the
casing and connected to the output of the main audio amplifier section both
having a tape recorder and a tape player mounted on the control panel with the
tape recorder and tape player being both connected to the transistorized amplifier
circuit. 14
Respondent Janito Corporation denied that there was any violation of petitioner's
patent rights, and cited the differences between its miyata equipment and
petitioner's audio equipment. But, it must be emphasized, respondent only
confined its comparison to the first model, Utility Model No. 5269, and
completely disregarded Utility Model No. 6237 which improved on first. As
described by respondent corporation, 15 these differences are —
First. Under Utility Model 5269, the unit is a substantially cubical casing with a
window at its rear and upper corner fitted with slightly inclined control panel,
while the miyata equipment is a substantially rectangular casing with panel
vertically positioned.
Second. Under Utility Model 5269, the cubical casing has a vertical partition wall
defining a rear compartment and a front compartment serving as a speaker baffle,
while the miyata equipment has no rear compartment and front compartment in its
rectangular casing; it has only a front compartment horizontally divided into 3
compartments like a 3-storey building, the 1st compartment being a kit, the 2nd
also the speaker, and 3rd are kits.
Third. Under Utility Model No. 5269, a transistorized amplifier circuit with an
echo section wired in at least 2 printed circuit boards is placed inside the rear
compartment of the casing and attached to the vertical partition wall, the printed
circuit board having 1 amplifier and 1 echo, while in the miyata equipment the
amplifier is mainly IC (Integrated Circuit) - powered with 8 printed circuit boards
almost all of which are IC controlled, with 1 amplifier with power supply, 1 main
tuner, 1 equalizer (3-band), 1 IC controlled volume control, 1 echo IC, 1 tape
pream, 1 instrument and 1 wireless microphone.
Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the
compartment of its casing attached to the vertical partition wall, while in the
miyata, the 7 printed circuit boards (PCB) are attached to the front panel and 1
attached to the horizontal divider.
Fifth. Under Utility Model 5269, there are various controls mounted on the
control panel of the casing, while in miyata, the various controls are all separated
form the printed circuit boards and the various controls are all attached thereto.
Sixth. Under Utility Model 5269, a loud speaker fitted inside the front
compartment of the casing is connected to the output of the main audio amplifier
section of the transistorized amplifier circuit, while in miyata, there is no other
way but to use 2 loud speakers connected to the amplifier.
Seventh. Under Utility Model 5269, a tape player is mounted on the top wall of
the casing, while in miyata, 2 tape players are used mounted side by side at the
front.
It is elementary that a patent may be infringed where the essential or substantial
features of the patented invention are taken or appropriated, or the device,
machine or other subject matter alleged to infringe is substantially identical with
the patented invention. In order to infringe a patent, a machine or device must
perform the same function, or accomplish the same result by identical or
substantially identical means and the principle or mode of operation must be
substantially the same. 16
It may be noted that respondent corporation failed to present before the trial court
a clear, competent and reliable comparison between its own model and that of
petitioner, and disregarded completely petitioner's Utility Model No. 6237 which
improved on his first patented model. Notwithstanding the differences cited by
respondent corporation, it did not refute and disprove the allegations of petitioner
before the trial court that: (a) both are used by a singer to sing a amplify his voice;
(b) both are used to sing with a minus-one or multiplex tapes, or that both are
used to play minus-one or standard cassette tapes for singing or for listening to;
(c) both are used to sing a minus-one tape and multiplex tape and to record the
singing and the accompaniment; (d) both are used to sing with live
accompaniment; (d) both are used to sing with live accompaniment and to record
the same; (e) both are used to enhance the voice of the singer using echo effect,
treble, bass and other controls; (g) both are equipped with cassette tape decks
which are installed with one being used for playback and the other, for recording
the singer and the accompaniment, and both may also be used to record a
speaker's voice or instrumental playing, like the guitar and other instruments; (h)
both are encased in a box-like cabinets; and (i) both can be used with one or more
microphones. 17
Clearly, therefore, both petitioner's and respondent's models involve substantially
the same modes of operation and produce substantially the same if not identical
results when used.
In view thereof, we find that petitioner had established before the trial court prima
facie proof of violation of his rights as patentee to justify the issuance of a writ of
preliminary injunction in his favor during the pendency of the main suit for
damages resulting from the alleged infringement.
WHEREFORE, the Decision of the Court of Appeals dated 15 November 1993 is
REVERSED and SET ASIDE and the Order of the trial court dated 24 February
1993 granting petitioner the writ of injunction is REINSTATED.
The trial court is directed to continue with the proceedings on the main action
pending before it in order to resolve with dispatch the issues therein presented.
SO ORDERED
Padilla, Vitug, Kapunan and Hermosisima, Jr., JJ., concur.
[BPTTT Decision No. 02 (PAT). January 20, 1988]
RE: APPEAL FROM FINAL REJECTION OF APPLICATION BY PATENT
EXAMINER BENITO C. LAO, applicant-appellant.
Ex Parte Case No. 215

Serial No. UM-6776


Filed : October 30, 1980
Applicant : Benito C. Lao
For : Punched Grip-Hole Plastic Bag, etc.
DECISION
This is an ex-parte appeal from the final rejection of the Patent Examiner of
Application Serial No. UM-6776 filed on October 30, 1980 by herein Appellant-
Applicant, Benito Lao, of 485 Lavezares Street, Manila.
The appeal pertains to an application for a utility model, entitled "Punched Grip-
Hole Plastic Bag, etc." Its main feature as embodied in the specification is the
thicker upper portion of the bag, which part was made stronger without the need
for any add-on reinforcement or patches around the grip.
For lack of novelty, the said application was rejected. The Examiner, in his final
action of rejection, stated thus: cdasia
"According to the third paragraph of Sec. 55 of R.A. 165, a utility model shall not
be considered 'new' if . . . it is substantially similar to any other utility model so
known, used or described within the country . . ." (Emphasis supplied)
The sole reference cited and relied upon by the Examiner in rejecting the
application is Letters Patent No. D-2259, a design patent granted on March 23,
1983 in favor of Benito Lao, the herein Appellant Applicant. Said patent discloses
a plastic bag with a heart-shaped punched grip hole disposed at the upper portion
of the bag. Being a design patent, the specification did not mention the purpose of
the hole but it can be inferred that the said heart-shaped hole is for the fingers of
the hand to pass through when one grips the bag.
Appellant-Applicant's arguments boil down to the resolution of two major issues,
to wit:
(1) Whether or not a design patent can be validly used as a prior art reference
against a utility model application; and
(2) Whether or not varying the thickness of the plastic bag, i.e., making the
upper portion thicker than the other part of the bag is patentable.
Tackling the first issue, a Appellant-Applicant, citing Rule 134 of the Revised
Rules of Practice in Patent Cases (Sec. 55, Republic Act 165), argues that a
design patent cannot be cited as a prior art reference for utility model application.
Appellant-Applicant construed the term utility model as equivalent to the term
utility model patent. This Office begs to disagree. The law uses the term utility
model, not utility model patent. The two terms are different from each other. The
former is generic while the latter is a specific term. Being generic, the term utility
model when used in relation to the field of prior art searching is deemed to
include not only utility model patent but also invention and design patents. Also,
the term utility model as used in the law means any device or article. This is the
gist of the decision in Electro Mfg. Co. v. Yellin, 56 USPQ 290, 292 where it was
held that a design patent may anticipate a mechanical patent, and a design patent
issued before a mechanical patent, or a mechanical patent issued before a design
patent, is a part of prior art and a valid anticipation (Lein v. Myers, 105 F 962,
C.C.A. 2). If a design patent cannot be used as a prior art reference against a
utility model application as alleged by Appellant-Applicant then, conversely, it
follows that a utility model patent cannot also be used as a valid prior art
reference against a design patent. This should not be the case. Thus, the Director
of Patents in the case of Co Su Lin v. Nicholas Tiu (Decision No. 84-39, March
30, 1984) cancelled Patent No. D-1646 on the basis of Patent No. UM-2328.
In this case, the cited design patent as a prior art reference discloses the main
feature that Appellant-Applicant is claiming in his utility model application.
Therefore, the utility model sough to be patented by Appellant-Applicant is
unpatentable pursuant to Section 55 of Republic Act 165, as amended.
With respect to the second issue, Rule 134 of the Rules of Practice in Patent Cases
provides that "a utility model shall not be considered new and patentable for that
reason . . . if it is substantially similar to any other utility model so known, used
and described within the Philippines". (Emphasis supplied)
The phrase "substantially similar" as defined in relation to the "doctrine
equivalents" in the case of Pessumal Tolaram v. Chi Chuan Ko (Decision No.
262, June 7, 1963) means that "in order that one device may be considered
equivalent of another, it must perform the same function in substantially the same
way to obtain same result (Westro Inc. v. Illinois Watch Care Co., 98 USPQ 354),
and "if two devices do the same work in substantially the same result, they are the
same even though they differ in name, form or shape (Machine Co. v. Murphy, 97
U.S. 120, 24 L Ed. 935).
The variation of thickness claimed by Appellant-Applicant in his application is
not apparent and cannot be appreciated using the naked eye alone. Neither such
thickness be appreciated by trying to feel it between the fingers. In effect, the
variation of thickness has very little or no impact in the form or shape of the
plastic bag. Taken in the light of the meaning of the phrase "substantially similar",
as enunciated in the aforecited doctrine, this Office believes and is so convinced
that the subject plastic bag is deemed substantially similar with the cited
reference; hence, unpatentable. cdtai
The claim that material savings can be derived by making the upper portion of the
bag thicker is likewise unmeritorious. The material saving is significant only in
theory but not in actual commercial practice. The proof submitted by Appellant-
Applicant was based only on theoretical mathematical computation without
regard to other factors involved in actual production.
To allow the subject application which is substantially similar to Appellant-
Applicant's patented design (D-225, the reference) is a commercial strategy that
confers no benefit to the public other than an opportunity for Appellant-Applicant
to prolong his monopoly to make, use and sell his design patent beyond the period
prescribed by law.
WHEREFORE, premises considered, this ex-parte appeal is, as it is hereby,
DISMISSED. Accordingly, Appellant-Applicant's Serial No. UM-6776 filed on
October 30, 1980 is, as it is hereby, ordered REJECTED.
Let the records of this case be remanded to the Mechanical, Electrical Division for
appropriate action in accordance with this Decision.
SO ORDERED.
(SGD.) IGNACIO S. SAPALO
Director