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CASE DIGEST: Aguas vs.

De Leon
111 SCRA 238 (1982)
This is a petition for certiorari to review the decision of the Court of Appeals.
On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon
City a complaint for infringement of patent against petitioner Domiciano Aguas and F.H.
Aquino and Sons alleging among others that being the original first and sole inventor of
certain new and useful improvements in the process of making mosaic pre-cast tiles, and
thereafter lawfully acquired from the Philippine Patent Office, Patent No. 658, the latter
infringed the same by making, using and selling tiles embodying said patent invention. A
writ of Preliminary Injuction was subsequently issued.
Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia
that respondent De Leon is neither the original first nor sole inventor of the improvements in
the process of making mosaic pre-cast tiles, the same having been used by several tilemaking factories both here and abroad years before the alleged invention by De Leon;
hence, it is not patentable.
The trial court and the Court of Appeals, upon appeal rendered judgment in favor of
respondent de Leon. Thus, this petition.
Whether or not the alleged invention or discovery of respondent is patentable.
Yea. x x x It should be noted that the private respondent does not claim to be the
discoverer or inventor of the old process of tile-making. He only claims to have introduced
an improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine
Patent Office to the private respondent Conrado G. De Leon, to protect his rights as the
inventor of an alleged new and useful improvement in the process of making pre-cast
tiles. Indeed, section 7, Republic Act No. 165, as amended provides: Any invention of a
new and useful machine, manufactured product or substance, process, or an improvement
of the foregoing, shall be patentable.

Creser Precision Systems Inc. v CA and Floro International Co. GR NO. 118708, February 2,
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner submitted samples of its patented aerial fuze to
the AFP for testing claiming to be his own. To protect its right, respondent sent letter of
warning to petitioner on a possible court action should it proceed its testing by the AFP. In
response the petitioner filed a complaint for injunction and damages arising from alleged
infringement before the RTC asserting that it is the true and actual inventor of the aerial fuze
which it developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It
has been supplying the military of the aerial fuze since then and that the fuze of the
respondent is similar as that of the petitioner. Petitioner prayed for restraining order and
injunction from marketing, manufacturing and profiting from the said invention by the
respondent. The trial court ruled in favor of the petitioner citing the fact that it was the first
to develop the aerial fuze since 1981 thus it concludes that it is the petitioners
aerial fuze that was copied by the respondent. Moreover, the claim of respondent is solely
based on its letter of patent which validity is being questioned. On
appeal, respondent argued that the petitioner has no cause of action since he has no right to
assert there being no patent issued to his aerial fuze. The Court of Appeals reversed the
decision of the trial court dismissing the complaint of the petitioner. It was the contention of
the petitioner that it can file under Section 42 of the Patent Law an action for infringement
not as a patentee but as an entity in possession of a right, title or interest to the patented
invention. It theorizes that while the absence of a patent prevents one from lawfully suing
another for infringement of said patent, such absence does not bar the true and actual
inventor of the patented invention from suing another in the same nature as a civil action for
Whether or not the petitioner has the right to assail the validity of the patented work of the
The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent
(RA 165) provides that only the patentee or his successors-in-interest may file an action
against infringement. What the law contemplates in the phrase anyone possessing any
right, title or interest in and to the patented invention refers only to the patentees
successors-in-interest, assignees or grantees since the action on patent infringement may
be brought only in the name of the person granted with the patent. There can be no
infringement of a patent until a patent has been issued since the right one has over the
invention covered by the patent arises from the grant of the patent alone. Therefore, a
person who has not been granted letter of patent over an invention has not acquired right or
title over the invention and thus has no cause of action for infringement. Petitioner admitted

to have no patent over his invention. Respondents aerial fuze is covered by letter of patent
issued by the Bureau of Patents thus it has in his favor not only the presumption of validity
of its patent but that of a legal and factual first and true inventor of the invention.

Boothe v. Director of Patents GR No. L 24919 January 28, 1980

Facts: Petitioners James Howard Boothe and John Morton II (citizens and residents of the US)
were chemists claiming to be the inventors of a new antibiotic designated as tetracycline,
a new derivative of chlortetrahycycline (popularly known as aureomycin). Petitioners
applied for Letter Patent covering their invention to respondent Director of Patents claiming
the right of priority granted to foreign applicants under Section 15 of the Patent Law (RA
165). Petitioners filed with respondent Director of Patent a legalized copy of their Application
for Letters of Patent in the US for the same invention. Under the provision stated Section 15
of the Patent Law, petitioners would be entitled to the priority date if their application is
considered filed in the Philippines since the letter date would fall within the one-year period.
Petitioners informed Director that in interference proceedings in the US, Letters
Patent for a similar invention as theirs was awarded to Pfizer and Co. which filed its
application ahead and that failed to obtain any US patent for their own invention. Petitioners
observed and requested that their application was good and valid on the basis of the claims
originally filed. It was denied referring to local patent obtained by Pfizer and Co over same
invention and that the specification that was submitted is incomplete for they failed to
meet the deadline for filing their responsive claim.
Petitioners submitted 2 complete copies after and even filed for reconsideration
hereinafter but still Chief Patent rejected and denied such submission, and has decided that
specification admitted but application not to be extended priority rights under Section 15 of
the Patent Law inasmuch as said application was not within the meanings of Rule 47 and 48
as to the said submission were not really a new matter but a mere minor informality.
Respondent Director was alleged that he has no jurisdiction to decide the question for said
application and erred in deciding upon said application.
Issue:WON the scope of the powers of the Director of Patent in the cases appealed to him
and the correctness of his application of Rules 47 and 48, 262 of the Revised Rules of
Practice in Patent cases are valid and tenable.
Ruling:Respondent Director is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal. He need not confined himself
only to issues invoked. It was earlier concluded by the Supervising Patent Examiner that
inasmuch as the submitted pages did not correspond with the certified copy of the US
application, the present application cannot therefore be granted priority date under Section
15 as requested by applicant. What Respondent Director exercised was within his authority
to review the decisions of Patents Examiners.

Similarly petitioners contention is untenable that the respondent Director misapplied

and misconstrued Rules 47 and 48 in Patent Cases. Under the aforecited provisions, it is
imperative that the application be complete in order that it may be accepted. It is essential
to the validity of Letters Patent that the specification be full, definite and specific. The
purpose of said requirement is to apprise the public of that patentee claims as his invention,
to inform Courts as to what they are called to construe, and to convey to competing
manufacturers and dealers information what they are bound to avoid. The defect was one of
substance and not merely one of form. An invention disclosed in a previously filed
application must be described within the instant application such a manner as to enable one
skilled in the art to use the same for a legally adequate utility.

Principle in the case
:A patentee shall have the exclusive right to make, use and sell the patented article or
product and the making, using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose
rights have been infringed upon may bring an action before the proper CFI now (RTC) and to
secure an injunction for the protection of his rights.
Maguan is doing business under the firm name and style of SWAN MANUFACTURING" while
Luchan is likewise doing business under the firm name and style of "SUSANA LUCHAN
Luchan that the powder puffs Luchan is manufacturing and selling to various enterprises
particularly those in the cosmetics industry, resemble Identical or substantially Identical
powder puffs of which she (Maguan) is a patent holderunder Registration Certification Nos.
Extension UM-109, ExtensionUM-110 and Utility Model No. 1184; Maguan explained such
production and sale constitute infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled totake judicial action.Luchan
replied stating that her products are different and countered that Maguans patents are void
because the utility models applied for were not new and patentable and the person to whom
the patents were issued was not the true and actual author nor were her rights derived from
such author. Maguan filed a complaint for damages with injunction and preliminary
injunction against Luchan with the then Court of First Instance of Rizal. The trial court issued
an Order granting the preliminary injunction prayed for. Consequently, the corresponding
writ was subsequently issued.
WON in Maguan has a right to file an action before the CFI for injunction due to infringement
of her patent.

: Yes. Rationale: When a patent is sought to be enforced, the questions of invention, novelty
or prior use, and each of them, are open to judicial examination. Under the present Patent
Law, there is even less reason to doubt that the trial court has jurisdiction to declare the
patents in question invalid. A patentee shall have the exclusive right to make, use and sell
the patented article or product and the making, using, or selling by any person without the
authorization of the patentee constitutes infringement of the patent (Sec. 37, R.A.165).Any
patentee whose rights have been infringed upon may bring an action before the proper CFI
now (RTC) and to secure an injunction for the protection of his rights. The burden of proof to
substantiate a charge of infringement is with the plaintiff. But where the plaintiff 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 Commissioner (now Director)
of Patent in granting the patent is presumed to be correct. The burden of going forward with
the evidence (burden of evidence) then shifts to the defendant to overcome by competent
evidence this legal presumption.

272 SCRA 18, May 2, 1997
Facts :
This is a petition seeking to nullify the Philippine ratification of the World Trade Organization
(WTO) Agreement. Petitioners question the concurrence of herein respondents acting in their
capacities as Senators via signing the said agreement.
The WTO opens access to foreign markets, especially its major trading partners, through the
reduction of tariffs on its exports, particularly agricultural and industrial products. Thus,
provides new opportunities for the service sector cost and uncertainty associated with
exporting and more investment in the country. These are the predicted benefits as reflected
in the agreement and as viewed by the signatory Senators, a free market espoused by
Petitioners on the other hand viewed the WTO agreement as one that limits, restricts and
impair Philippine economic sovereignty and legislative power. That the Filipino First policy of
the Constitution was taken for granted as it gives foreign trading intervention.
Issue : Whether or not there has been a grave abuse of discretion amounting to lack or
excess of jurisdiction on the part of the Senate in giving its concurrence of the said WTO
In its Declaration of Principles and state policies, the Constitution adopts the generally
accepted principles of international law as part of the law of the land, and adheres to the
policy of peace, equality, justice, freedom, cooperation and amity , with all nations. By the

doctrine of incorporation, the country is bound by generally accepted principles of

international law, which are considered automatically part of our own laws. Pacta sunt
servanda international agreements must be performed in good faith. A treaty is not a mere
moral obligation but creates a legally binding obligation on the parties.
Through WTO the sovereignty of the state cannot in fact and reality be considered as
absolute because it is a regulation of commercial relations among nations. Such as when
Philippines joined the United Nations (UN) it consented to restrict its sovereignty right under
the concept of sovereignty as autolimitation. What Senate did was a valid exercise of
authority. As to determine whether such exercise is wise, beneficial or viable is outside the
realm of judicial inquiry and review. The act of signing the said agreement is not a legislative
restriction as WTO allows withdrawal of membership should this be the political desire of a
member. Also, it should not be viewed as a limitation of economic sovereignty. WTO remains
as the only viable structure for multilateral trading and the veritable forum for the
development of international trade law. Its alternative is isolation, stagnation if not economic
self-destruction. Thus, the people be allowed, through their duly elected officers, make their
free choice.
Petition is DISMISSED for lack of merit.


The principal case to which these proceedings are ancillary, was an action to enjoin
infringement of a patented process for manufacture of curved handles for canes, parasols,
and umbrellas. In that case, plaintiff established his title to a valid patent covering the
process in question, and obtained against this defendant a judgment, granting a perpetual
injunction restraining its infringement, which judgment was affirmed by this Court on appeal.
The order was couched in the following terms:
It is ordered that the defendant abstain from manufacturing canes and umbrellas with a
curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which
process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him
transferred to Carlos Gsell.
Thereafter the defendant continued to manufacture curved cane handles for walking
sticks and umbrellas by a process in all respects identical with that used by the plaintiff
under his patent, except only that he substituted for a lamp fed with petroleum or mineral
oil, a lamp fed with alcohol.
The trial court found the defendant not guilty of contempt as charged; and this
court, on appeal, held that The violation, if there has been any, was not of such a character

that it could be made patent by the mere annunciation of the acts performed by the
defendant, which are alleged to constitute the said violation. Consequently, the contempt
with which the accused is charged has not been fully and satisfactorily proved, and the order
appealed from should accordingly be affirmed in so far as it holds that the defendant is not
guilty of contempt.
Substantially, the same question is submitted in these new proceedings as that
submitted in the former case.
Whether the use of a patented process by a third person, without license or authority
therefore, constitutes an infringement when the alleged infringer has substituted in lieu of
some unessential part of the patented process a well-known mechanical equivalent.
Counsel for plaintiff invokes the doctrine of mechanical equivalents in support of
his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine
is founded upon sound rules of reason and logic, and unless restrained or modified by law in
particular jurisdiction, is of universal application, so that it matters not whether a patent be
issued by one sovereignty or another, the doctrine may properly be invoked to protect the
patentee from colorable invasions of his patent under the guise of a substitution of some
part of his invention by some well-known mechanical equivalent.
The use of a process in all respects identical with a process protected by a valid
patent, save only that a well-known mechanical equivalent is substituted in lieu of some
particular part of the patented process is an infringement upon the rights of the owner of the
patent, which will be enjoined in appropriate proceeding, and the use of such process, after
the order enjoining its use has been issued, is a contempt, under the provision of section
172 of the Code of Civil Procedure.