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PATENTS: DIGESTS

t petitioner's patents are void because the utility models


applied for ere not ne and patentable and the person to
hom the patents ere issued as not the true and actual
author nor ere her ri!hts derived from such author"
Petitioner #led a complaint for dama!es ith
in$unction and preliminary in$unction a!ainst private
respondent ith the then %ourt of &irst Instance of 'i(al
The trial court issued an )rder !rantin! the
preliminary in$unction prayed for by petitioner"
%onse*uently+ the correspondin! rit as subse*uently
issued"
In challen!in! these )rders private respondent
#led a petition for certiorari ith the respondent court but
as denied" ,ence this petition"
ISS-E:
./0 1hether or not in an action for infrin!ement the %ourt a
quo had $urisdiction to determine the invalidity of the
patents at issue hich invalidity as still pendin!
consideration in the patent o2ce"
.30 1hether or not the %ourt a quo committed !rave abuse
of discretion in the issuance of a rit of preliminary
in$unction"
.40 1hether or not certiorari is the proper remedy"
,E5D:
/0 The #rst issue has been laid to rest in a number of cases
here the %ourt ruled that 61hen a patent is sou!ht to be
enforced+ the *uestions of invention+ novelty or prior use+
and each of them+ are open to $udicial e7amination"6
-nder the present Patent 5a+ there is even less
reason to doubt that the trial court has $urisdiction to
declare the patents in *uestion invalid" A patentee shall
have the e7clusive ri!ht to ma8e+ use and sell the patented
article or product and the ma8in!+ usin!+ or sellin! by any
person ithout the authori(ation of the patentee constitutes
infrin!ement of the patent .Sec" 49+ '"A" /:;0" Any patentee
hose ri!hts have been infrin!ed upon may brin! an action
before the proper %&I no .'T%0 and to secure an in$unction
for the protection of his ri!hts"
30 The burden of proof to substantiate a char!e of
infrin!ement is ith the plainti<" =ut here the plainti<
introduces the patent in evidence+ and the same is in due
form+ there is created a prima facie presumption of its
correctness and validity" The decision of the %ommissioner
.no Director0 of Patent in !rantin! the patent is presumed
to be correct" The burden of !oin! forard ith the evidence
.burden of evidence0 then shifts to the defendant to
overcome by competent evidence this le!al presumption"
The *uestion then in the instant case is hether or
not the evidence introduced by private respondent herein is
su2cient to overcome said presumption"
After a careful revie of the evidence consistin! of
:> e7hibits and oral testimonies of #ve itnesses presented
by private respondents before the %ourt of &irst Instance
before the )rder of preliminary in$unction as issued as ell
as those presented by the petitioner+ respondent %ourt of
Appeals as satis#ed that there is a prima facie shoin! of
a fair *uestion of invalidity of petitioner's patents on the
!round of lac8 of novelty" As pointed out by said appellate
court said evidence appeared not to have been considered
at all by the court a quo for alle!ed lac8 of $urisdiction+ on
the mista8en notion that such *uestion in ithin the
e7clusive $urisdiction of the patent o2ce"
It has been repeatedly held that an invention must
possess the essential elements of novelty + ori!inality and
precedence and for the patentee to be entitled to
protection+ the invention must be ne to the orld"
Accordin!ly+ a sin!le instance of public use of the invention
by a patentee for more than to years .no for more than
one year only under Sec" ? of the Patent 5a0 before the
date of his application for his patent+ ill be fatal to+ the
validity of the patent hen issued"
It ill be noted that the validity of petitioner's
patents is in *uestion for ant of novelty" Private respondent
contends that poder pu<s Identical in appearance ith
that covered by petitioner's patents e7isted and ere
publicly 8non and used as early as /?:4 lon! before
petitioner as issued the patents in *uestion" .5ist of
E7hibits+ 'ollo+ pp" /?>@/??0" As correctly observed by
respondent %ourt of Appeals+ 6since su2cient proofs have
been introduced in evidence shoin! a fair *uestion of the
invalidity of the patents issued for such models+ it is but
ri!ht that the evidence be loo8ed into+ evaluated and
determined on the merits so that the matter of hether the
patents issued ere in fact valid or not may be resolved"6
.'ollo+ pp" 3A:@3A90"
All these notithstandin!+ the trial court
nonetheless issued the rit of preliminary in$unction hich
under the circumstances should be denied"
&or failure to determine #rst the validity of the
patents before aforesaid issuance of the rit+ the trial court
failed to satisfy the to re*uisites necessary if an in$unction
is to issue+ namely: the e7istence of the ri!ht to be
protected and the violation of said ri!ht" .=uayan %attle %o"+
Inc" v" Buintillan+ /3A S%'A 39:0"
-nder the above established principles+ it appears
obvious that the trial court committed a !rave abuse of
discretion hich ma8es certiorari the appropriate remedy"
As found by respondent %ourt of Appeals+ the
in$unctive order of the trial court is of so !eneral a tenor that
petitioner may be totally barred from the sale of any 8ind of
poder pu<" -nder the circumstances+ respondent appellate
court is of the vie that ordinary appeal is obviously
inade*uate"
VARGAS v YAPTICO & CO
40 PHIL 195
&A%TS:
An!el Car!as+ a farmer ac*uainted ith local
conditions and alive to the commercial possibilities+ too8 it
upon himself to produce+ ith the native plo as the model+
an improved+ ad$ustable plo" ,e made application for a
-nited States patent to cover his so@called invention" The
letters patent ere issued by the -nited States Patent )2ce
in favor of Car!as "Acerti#ed copy of the patent as #led in
the Division of Patents+ %opyri!hts+ and Trademar8s of the
E7ecutive =ureau+ Government of the Philippine Islands" The
patent and its re!istry as also published in the nespaper+
El Tiempo"
Since /?/D+ Car!as has en!a!ed in the
manufacture of these plos in the city of Iloilo+ Philippine
Islands" )n the plos there as #rst stamped the ords
6Patent Applied &or+6 later after the patent had been
!ranted+ chan!ed to 6Patented Ear" /3+ /?/3"6 Ninety per
cent of the plos in use in the Cisayas .Iloilo and vicinity0
are said to be Car!as plos"
Durin! this same period+ the #rm of &" E" Faptico G
%o" .5td"0+ as en!a!ed in the foundry business in the %ity
of Iloilo" It openly held itself out as a manufacturer of plo
parts" It has in fact produced points+ shares+ shoes+ and heel
pieces in a considerable amount adapted to replace orn@
out parts of the Car!as plo"
Such as the e7istin! situation hen+ in the early
part of /?/A+ the oner of the patent+ and thus the proper
party to institute $udicial proceedin!s+ be!an action in the
%ourt of &irst Instance of Iloilo to en$oin the alle!ed
infrin!ement of -"S" Patent No" /D3D343 by the defendant &"
S)TE5)+ ES H /
PATENTS: DIGESTS
E Faptico G %o" .5td"0+ and to recover the dama!es su<ered
by reason of this infrin!ement" The court issued the
preliminary in$unction as prayed for" The defendant+ in
addition to a !eneral denial+ alle!ed+ as special defenses+
that the patent lac8ed novelty or invention+ that there as
no priority of ideas or device in the principle and
construction of the plo+ and that the plo+ hose
manufacture it as sou!ht to have en$oined by the plainti<+
had already been in public use for more than to years
before the application of the plainti< for his patent" The
parties subse*uently entered into a stipulation that the
court should #rst resolve the *uestion of hether or not
there had been an infraction of the patent+ reservin! the
resultant *uestion of dama!es for later decision" After the
ta8in! of evidence+ includin! the presentation of e7hibits+
the trial $ud!e+ the ,onorable Antonio Cillareal+ in a very
e7haustive and learned decision+ rendered $ud!ment in
favor of the defendant and a!ainst the plainti<+ declarin!
null and ithout e<ect the patent in *uestion and dismissin!
the suit ith costs a!ainst the plainti<" The preliminary
in$unction theretofore issued as dissolved"
&rom this $ud!ment the plainti< has appealed"
ISS-E:
./0 The $ud!ment of the trial court in #ndin! the patent
!ranted plainti< void for lac8 of novelty and invention
should be a2rmedI
.30 The patent !ranted plainti< is void from the public use of
his plo for over to years prior to his application for a
patent+ and
.40 If the patent is valid+ there has been no contributory
infrin!ement by defendant"
,E5D:
./0 1hen a patent is sou!ht to be enforced+ 6the *uestion of
invention+ novelty+ or prior use+ and each of them+ are open
to $udicial e7amination"6 The burden of proof to substantiate
a char!e of infrin!ement is ith the plainti<" 1here+
hoever+ the plainti< introduces the patent in evidence+ if it
is in due form+ it a<ords a prima facie presumption of its
correctness and validity" The decision of the %ommissioner
of Patents in !rantin! the patent is alays presumed to be
correct" The burden then shifts to the defendant to
overcome by competent evidence this le!al presumption
"1ith all due respect+ therefore+ for the critical and e7pert
e7amination of the invention by the -nited States Patent
)2ce+ the *uestion of the validity of the patent is one for
$udicial determination+ and since a patent has been
submitted+ the e7act *uestion is hether the defendant has
assumed the burden of proof as to anyone of his defenses
As herein before stated+ the defendant relies on
three special defenses" )ne such defense+ on hich the
$ud!ment of the loer court is principally !rounded+ and to
hich appellant devotes the ma$or portion of his vi!orous
ar!ument+ concerns the element of novelty+ invention+ or
discovery+ that !ives e7istence to the ri!ht to a patent" )n
this point the trial court reached the conclusion that 6the
patented plo of the plainti<+ E7hibit D+ is not di<erent from
the native plo+ E7hibit 3+ e7cept in the material+ in the
form+ in the ei!ht and the !rade of the result+ the said
di<erences !ivin! it neither a ne function nor a ne result
distinct from the function and the result obtained from the
native ploI conse*uently+ its production does not
presuppose the e7ercise of the inventive faculty but merely
of mechanical s8ill+ hich does not !ive a ri!ht to a patent
of an invention under the provisions of the Patent 5a"6 In
thus #ndin!+ the court may have been ri!ht+ since the
Car!as plo does not appear to be such a 6combination6 as
contains a novel assembla!e of parts e7hibitin! invention"
A second line of defense relates to the fact that
defendant has never made a complete Car!as plo+ but only
points+ shares+ shoes+ and heel pieces+ to serve as repairs"
Defendant's contention is+ that in common ith other
foundries+ he has for years cast lar!e numbers of plo
points and shares suitable for use either on the native
ooden plo+ or on the Car!as plo" A di<erence has lon!
been reco!ni(ed beteen repairin! and reconstructin! a
machine" If+ for instance+ partial in$uries+ hether they occur
from accident or from ear and tear+ to a machine for
a!ricultural purposes+ are made this is only re@#ttin! the
machine for use+ and thus permissible" Even under the more
ri!orous doctrine of 5eeds G %atlin %o" vs" Cictor Tal8in!
Eachine %o" .J/?D?K+ 3/4 -"S"+ 43;0+ it may be possible that
all the defendant has done is to manufacture and sell
isolated parts to be used to replace orn@out parts"
The third defense is+ that under the provisions of
the statute+ an inventor's creation must not have been in
public use or on sale in the -nited States .and the Philippine
Islands0 for more than to years prior to his application
"1ithout+ therefore+ committin! ourselves as to the #rst to
defenses+ e propose to base our decision on the one $ust
su!!ested as more easily disposin! of the case" .See 3D '"
%" 5"+ //>D@//>3"0 1e do so ith full consciousness of the
doubt hich arose in the mind of the trial court+ but ith the
belief that since it has been shon that the invention as
used in public at Iloilo by others than Car!as+ the inventor+
more than to years before the application for the patent+
the patent is invalid"
Althou!h e have spent some time in arrivin! at
this point+ yet havin! reached it+ the *uestion in the case is
sin!le and can be brou!ht to a narro compass" -nder the
En!lish Statute of Eonopolies .3/ Lac" %h"+ 40+ and under the
-nited States Patent Act of &ebruary 3/+ /9?4+ later
amended to be as herein *uoted+ it as alays the rule+ as
stated by 5ord %o8e+ Lustice Story and other authorities+ that
to entitle a man to a patent+ the invention must be ne to
the orld" As said by the -nited States Supreme %ourt+ 6it
has been repeatedly held by this court that a single instance
of public use of the invention by a patentee for more than
to years before the date of his application for his patent
will be fatal to the validity of the patent hen issued"6
)n the facts+ e thin8 the testimony shos such a
public use of the Car!as plo as to render the patent invalid
Nicolas 'oces+ a farmer+ testi#ed that he had bou!ht tenty
Car!as plos+ of hich E7hibit ; as one+ in December+
/?D9I and E7hibit ;+ the court found+ as a plo completely
identical ith that for hich the plainti< had received a
patent" The minor e7ception+ and this in itself corroborative
of 'oces' testimony+ is that the handle of plo E7hibit ; is
mar8ed ith the letters 6A C6 and not ith the ords 6Patent
Applied &or6 or 6Patented Ear"/3+ /?/3"6 Salvador 5i(arra!a+
a cler8 in a business house+ testi#ed that he had received
plos similar to E7hibits D+ ;+ and >+ for sale on commission
on Eay+ /?DA+ from =onifacio Araneta+ partner of Car!as in
the plo business" Mo Pao Mo+ a blac8smith+ testi#ed that he
had made #fty plo frames in /?D; for Car!as and Araneta+
of hich E7hibit > is oneI E7hibit >+ the court found+ is a
plo identical ith that patented by Car!as+ but ithout
share and mould@board" Alfred =erin+ an employee in the
o2ce of Attorney Lohn =ordman+ testi#ed that on September
3/+ /?DA+ he had 8noled!e of a transaction herein Car!as
and Araneta desired to obtain money to invest in a plo
factory" Geor!e 'amon Saul+ a mechanic of the 6Taller
Cisayas6 of Strachan and EacEurray+ testi#ed that he had
made Car!as plo points and shares of the present form
upon order of Araneta and Car!as in /?D: and /?D9 "1illiam
S)TE5)+ ES H 3
PATENTS: DIGESTS
EacEurray+ proprietor of the 6Taller Cisayas+6 corroborated
the evidence of the itness Saul by the e7hibition of the
account a!ainst Car!as and Araneta herein+ under date of
December /4+ /?D:+ appears the item 6/3 ne soft steel
plo shares for!ed and bored for rivets as per sample"6
A!ainst all this+ as the testimony of the plainti< An!el
Car!as ho denied that Saul could have been seen the
Car!as plo in /?D9 and /?D9+ ho denied that 'oces
purchased the Car!as plo in /?D9+ ho denied that
5i(arra!a could have acted as an a!ent to sell to plos in
November+ /?DA+ ho denied any remembrance of the loan
mentioned by =erin as havin! been ne!otiated in
September+ /?DA+ ho denied that Mo Pao Mo made #fty
plos one of hich is E7hibit >+ for Araneta and Car!as in
/?D;" Plainti< introduced his boo8s to substantiate his oral
testimony "It is hardly believable that #ve or si7 itnesses
for the defense ould deliberately per$ure themselves under
oath" )ne mi!ht+ but that all to!ether+ of di<erent
nationalities+ ould enter into such a conspiracy+ is to
suppose the improbable"
Tested by the principles hich !o to ma8e the la+
e thin8 a preponderance of the evidence is to the e<ect
that for more than to years before the application for the
ori!inal letters patent+ or before Luly 33+ /?DA+ there as+ by
the consent and alloance of Car!as+ a public use of the
invention covered by them"
To conclude+ e are not certain but that appellee
has proved every one of his defenses" 1e are certain that he
has at least demonstrated the public use of the Car!as plo
over to years prior to the application for a patent" Such
bein! the case+ althou!h on a di<erent !round+ e must
sustain the $ud!ment of the loer court+ ithout pre$udice to
the determination of the dama!es resultin! from the
!rantin! of the in$unction+ ith the costs of this instance
a!ainst the appellant" So ordered"
FRANK v KOSUYAMA
59 PHIL 206
&A%TS:
Patent on improvement in hemp strippin!
machines+ issued by the -nited States Patent )2ce and
re!istered in the =ureau of %ommerce and Industry of the
Philippine+ as the ori!in of this action brou!ht by the
plainti<s herein ho prayed that the $ud!ment be rendered
a!ainst the defendant+ orderin! him thereby to refrain
immediately from the manufacture and sale of machines
similar to the one covered by the patent: to render an
accountin! of the pro#ts reali(ed from the manufacture and
sale of the machines in *uestionI that in case of refusal or
failure to render such accountin!+ the defendants be
ordered to pay the plainti<s the sum of P:D as pro#t on each
machine manufactured or sold by himI that upon approval of
the re*uired bond+ said defendant be restrained from
continuin! the manufacture and sale of the same 8ind of
machinesI that after the trial the preliminary in$unction
issued therein be declared permanent and+ lastly+ that the
said defendant be sentenced to pay the costs and hatever
dama!es the plainti<s mi!ht be able to prove therein" The
action therefore as based upon alle!ed infrin!ement by
the defendant of the ri!hts and privile!es ac*uired by the
plainti<s over the aforesaid patent throu!h the manufacture
and sale by the former of machines similar to that covered
by the aforesaid patent"
The plainti<s appealed from the $ud!ment rendered
by the trial court dismissin! their complaint+ ith cost+ as
ell as the defendant's counterclaim of P/D+DDD" The
defendant did not appeal"
In their amended complaint+ the plainti< alle!ed
that their hemp strippin! machines+ for hich they obtained
a patent+ have the folloin! characteristics: 6A strippin!
head+ a hori(ontal table+ a strippin! 8nife supported upon
such table+ a tapperin! spindle+ a rest holder ad$ustably
secured on the table portion+ a lever and means of
compellin! the 8nife to close upon the table+ a pallet or rest
in the bottom of the table+ a resilient cushion under such
palletor rest"6 In spite of the fact that they #led an amended
complaint from hich the 6spindle6 or conical drum+ hich
as the only characteristic feature of the machine
mentioned in the ori!inal complaint+ as eliminated+ the
plainti<s insisted that the said part constitutes the essential
di<erence beteen the machine in *uestion and other
machines and that it as the principal consideration upon
hich their patent as issued" The said plainti<s sustained
their contention on this point even in their printed brief and
memorandum #led in this appeal"
Durin! the trial+ both parties presented voluminous
evidence from hich the trial court concluded that in
constructin! their machine the plainti<s did nothin! but
improve+ to a certain de!ree+ those that ere already in
vo!ue and in actual us in hemp producin! provinces" It
cannot be said that they have invented the 6spindle6
inasmuch as this as already 8non since the year /?D? or
/?/D" Neither it can be said that they have invented the
strippin! 8nife and the contrivance hich controls the
movement and pressure thereof on the !round that
strippin! 8nives to!ether ith their control sets ere
already in actual use in the di<erent strippin! machines lon!
before their machine appeared"
ISS-E:
1hether there is an infrin!ement on the patents
,E5D:
The trial court did not decree the annulment of the
plainti<s' patent and the herein defendant@appellee insists
that the patent in *uestion should be declared null and void"
1e are of the opinion that it ould be improper and
untimely to render a similar $ud!ment+ in vie of the nature
of the action brou!ht by the plainti<s and in the absence of
a cross@complaint to that e<ect" &or the purposes of this
appeal+ su2ce it to hold that the defendant is not civilly
liable for alle!ed infrin!ement of the patent in *uestion"
In the li!ht of sound lo!ic+ the plainti<s cannot
insist that the 6spindle6 as a patented invention on the
!round that said part of the machine as voluntarily omitted
by them from their application+ as evidenced by the
photo!raphic copy thereof .E7hibit >/0 herein it li8eise
appears that the patent on Improved ,emp Strippin!
Eachines as issued minus the 6spindle6 in *uestion" 1ere
e to stress to this part of the machine+ e ould be !ivin!
the patent obtained by the plainti<s a ider ran!e than it
actually has+ hich is contrary to the principles of
interpretation in matters relatin! to patents"
In support of their claim the plainti<s invo8e the
doctrine laid don by this court in the case of &ran8 and
Gohn vs. =enito .;/ Phil"+ 9/30+ herein it as held that the
therein defendant really infrin!ed upon the patent of the
therein plainti<s" It may be noted that the plainti<s in the
former and those of the latter case are the same and that
the patent then involved is the very same one upon hich
the present action of the plainti<s is based" The above@cited
case+ hoever+ cannot be invo8ed as a precedent to $ustify a
$ud!ment in favor of the plainti<s@appellants on the !round
that the facts in one case entirely di<erent from those in the
other" In the former case the defendant did not set up the
same special defenses as those alle!ed by the herein
defendant in his anser and the plainti<s therein con#ned
themselves to presentin! the patent+ or rather a copy
thereof+ herein the 6spindle6 as mentioned+ and this court
S)TE5)+ ES H 4
PATENTS: DIGESTS
too8 for !ranted their claim that it as one of the essential
characteristics thereof hich as imitated or copied by the
then defendant" Thus it came to pass that the 6spindle6 in
*uestion as insistently mentioned in the decision rendered
on appeal as the essential part of the plainti<s' machine
alle!edly imitated by the then defendant" In the case under
consideration+ it is obvious that the 6spindle6 is not an
inte!ral part of the machine patented by the plainti<s on the
!round that it as eliminated from their patent inasmuch as
it as e7pressly e7cluded in their application+ as evidenced
by the aforesaid E7hibit >/"
1herefore+ reiteratin! that the defendant cannot
be held civilly liable for alle!ed infrin!ement of the patent
upon hich the present action is based on the !round that
there is no essential part of the machine manufactured and
sold by him+ hich as un8non to the public in the
Province of Davao at the time the plainti<s applied for and
obtained their patent for improved hemp strippin!
machines+ the $ud!ment appealed from is hereby a2rmed+
ith the costs a!ainst the plainti<s@appellants" So ordered"
VARGAS v CHUA
57 PHIL 784
&A%TS:
An!el Car!as+ the plainti< herein+ brou!ht this
action to restrain the appellants and the other defendant
entity+ %ham Samco G Sons+ their a!ents and mandatories+
from continuin! the manufacture and sale of plos similar to
his plo described in his patent No" /+;D9+;4D issued by the
-nited States Patent )2ce on September 3+ /?3>I and to
compel all of said defendants+ after renderin! an accountin!
of the pro#ts obtained by them from the sale of said plos
from September 3+ /?3>+ to pay him dama!es e*uivalent to
double the amount of such pro#ts"
The trial court rendered a $ud!ement in favor of
plainti<s and a!ainst the defendant"
It appears from the bill of e7ceptions that %ham
Samco G Sons did not appeal"
ISS-E:
1hether the plo+ E7hibit &+ constitutes a real
invention or an improvement for hich a patent may be
obtained+ or if+ on the contrary+ it is substantially the same
plo represented by E7hibit 4@%hua the patent for hich
as declared null and void in the aforementioned case of
Vargas vs. F. M. Yaptico !o." supra.
,E5D:
The appellee is not entitled to the protection he
see8s for the simple reason that his plo+ E7hibit &+ does not
constitute an invention in the le!al sense+ and because+
accordin! to the evidence+ the same type of plos had been
manufactured in this country and had been in use in many
parts of the Philippine Archipela!o+ especially in the
Province of Iloilo+ lon! before he obtained his last patent"
In the above mentioned case of Vargas vs. F. M.
Yaptico !o." e said:
1hen a patent is sou!ht to be enforced+ 6the
*uestions of invention+ novelty+ or prior use+ and each of
them+ are open to $udicial e7amination"6 The burden of proof
to substantiate a char!e of infrin!ement is ith the plainti<"
1here+ hoever+ the plainti< introduces the patent in
evidence+ if it is the due form+ it a<ords a prima facie
presumption of its correctness and validity" The decision of
the %ommissioner of Patents in !rantin! the patent is
alays presumed to be correct" The burden then shifts to
the defendant to overcome by competent evidence this
le!al presumption" 1ith all due respects+ therefore+ for the
critical and e7pert e7amination of the invention by the
-nited States Patent )2ce+ the *uestion of the validity of
the patent is one for $udicial determination+ and since a
patent has been submitted+ the e7act *uestion is hether
the defendant has assumed the burden of proof as to
anyone of his defenses"
1e repeat that in vie of the evidence presented+
and particularly of the e7amination e have made of the
plos+ e cannot escape the conclusion that the plo upon
hich the appellee's contention is based+ does not
constitute an invention and+ conse*uently+ the privile!e
invo8ed by him is untenable and the patent ac*uired by him
should be declared ine<ective"
The $ud!ment appealed from is hereby reversed
and the appellants are absolved from the complaint+ ith
costs of this instance a!ainst the appellee" So ordered"
AGUAS v D LON
111 SCRA 2!8
&A%TS:
%onrado G" de 5eon #led in the %ourt of &irst
Instance of 'i(al at Bue(on %ity a complaint for
infrin!ement of patent a!ainst Domiciano A" A!uas and &" ,"
A*uino and Sons alle!in! that bein! the ori!inal #rst and
sole inventor of certain ne and useful improvements in the
process of ma8in! mosaic pre@cast tiles+ he lafully #led and
prosecuted an application for Philippine patent+ and havin!
complied in all respects ith the statute and the rules of the
Philippine Patent )2ce+ Patent No" :;A as lafully !ranted
and issued to himI that said invention as ne+ useful+ not
8non or used by others in this country before his invention
thereof"
That the defendant Domiciano A" A!uas infrin!ed
5etters of Patent No" :;A by ma8in!+ usin! and sellin! tiles
embodyin! said patent invention and that defendant &" ,"
A*uino G Sons is !uilty of infrin!ement by ma8in! and
furnishin! to the defendant Domiciano A" A!uas the
en!ravin!s+ castin!s and devices desi!ned and intended of
tiles embodyin! plainti<Is patented inventionI that he has
!iven direct and personal notice to the defendants of their
said acts of infrin!ement and re*uested them to desist+ but
nevertheless+ defendants have refused and ne!lected to
desist and have disre!arded such re*uest+ and continue to
so infrin!e causin! !reat and irreparable dama!e to plainti<I
that if the aforesaid infrin!ement is permitted to continue+
further losses and dama!es and irreparable in$ury ill be
sustained by the plainti<I that there is an ur!ent need for
the immediate issuance of a preliminary in$unction"
The court !ranted the in$unction" And li8eise held
in favor of the plainti< and a!ainst the defendant"
ISS-E:
1hether the process+ sub$ect of said patent+ is not
an invention or discovery+ or an improvement of the old
system of ma8in! tiles"
,E5D:
The validily of the patent issued by the Philippines
Patent )2ce in favor of the private respondent and the
*uestion over the inventiveness+ novelty and usefulness of
the improved process therein speci#ed and described are
matters hich are better determined by the Philippines
Patent )2ce" The technical sta< of the Philippines Patent
)2ce+ composed of e7perts in their #eld+ have+ by the
issuance of the patent in *uestion+ accepted the thinness of
the private respondent's ne tiles as a discovery" There is a
presumption that the Philippines Patent )2ce has correctly
determined the patentability of the improvement by the
private respondent of the process in *uestion"
S)TE5)+ ES H >
PATENTS: DIGESTS
The contention of the petitioner A!uas that the
letters patent of de 5eon as actually a patent for the old
and non@patentable process of ma8in! mosaic pre@cast tiles
is devoid of merit" De 5eon never claimed to have invented
the process of tile@ma8in!" The %laims and Speci#cations of
Patent No" :;A sho that althou!h some of the steps or
parts of the old process of tile ma8in! ere described
therein+ there ere novel and inventive features mentioned
in the process"
In vie of the fore!oin!+ this %ourt #nds that Patent
No" :;A as le!ally issued+ the process andNor improvement
bein! patentable"
PA'ME DACIS G %) v D)%T)'OS P,A'EA
/3> S%'A //;
&A%TS:
Par8e Davis G %ompany+ petitioner herein+ is a
forei!n corporation is the oner of a patent entitled
6Process for the Eanufacturin! of Antibiotics6 .5etters Patent
No" ;D0 The patent relates to a chemical compound
represented by a formula commonly called chloramphenicol"
The patent contains ten claims+ nine of hich are process
claims+ and the other is a product claim to the chemical
substance chloramphenicol"
'espondent Doctors' Pharmaceuticals+ Inc"+ on the
other hand+ is a domestic corporation hich applied for a
petition ith the Director of Patents+ hich as later
amended+ prayin! that it be !ranted a compulsory license
under 5etters Patent No" ;D !ranted to Par8e Davis G
%ompany based on the folloin! !rounds: ./0 the patented
invention relates to medicine and is necessary for public
health and safetyI .30 Par8e Davis G %ompany is unillin! to
!rant petitioner a voluntary license under said patent by
reason of hich the production and manufacture of needed
medicine containin! chloramphenicol has been unduly
restrained to a certain e7tent that it is becomin! a
monopolyI .40 the demand for medicine containin!
chloramphenicol is not bein! met to an ade*uate e7tent and
on reasonable pricesI and .>0 the patented invention is not
bein! or8ed in the Philippines on a commercial scale" In its
petition+ Doctors' Pharmaceuticals+ Inc" prayed that it be
authori(ed to manufacture+ use+ and sell its on products
containin! chloramphenicol as ell as choose its on brand
or trademar8"
Par8e Davis G %ompany #led a ritten opposition
settin! up the folloin! a2rmative defenses: ./0 a
compulsory license may only be issued to one ho ill or8
the patent and respondent does not intend to or8 it itself
but merely to import the patented productI .30 respondent
has not re*uested any license to or8 the patented
invention in the PhilippinesI .40 respondent is not competent
to or8 the patented inventionI .>0 to !rant respondent the
re*uested license ould be a!ainst public interest and
ould only serve its monetary interestI and .:0 the patented
invention is not necessary for public health and safety"
the Director of Patents rendered a decision !rantin!
to respondent the license prayed for ",ence this petition"
ISS-E:
1hether or not the Director of Patents erred $n
orderin! the !rant of compulsory license
,E5D:
Each of the circumstances mentioned in the la as
!rounds stands alone and is independent of the others" And
from them e can see that in order that any person may be
!ranted a license under a particular patented invention
relatin! to medicine under Section 4>.d0+ it is su2cient that
the application be made after the e7piration of three years
from the date of the !rant of the patent and that the
Director should #nd that a case for !rantin! such license has
been made out" Since in the instant case it is admitted by
petitioner that the chemical substance chloramphenicol is a
medicine+ hile 5etters Patent No" ;D coverin! said
substance ere !ranted to Par8e Davis G %ompany on
&ebruary ?+ /?;D+ and the instant application for license
under said patent as only #led in /?:D+ verily the period
that had elapsed then is more than three years+ and so the
conditions for the !rant of the license had been ful#lled" 1e
#nd+ therefore+ no error in the decision of the Director of
Patents on this aspect of the controversy"
S)TE5)+ ES H ;