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Republic of the Philippines


SUPREME COURT
Manila
THIRD DIVISION
G.R. No. 148222

August 15, 2003

PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,


vs.
SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, Respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner Pearl & Dean (Phil.) Inc. (P & D)
assails the May 22, 2001 decision1 of the Court of Appeals reversing the October 31, 1996 decision 2 of the Regional Trial Court of
Makati, Branch 133, in Civil Case No. 92-516 which declared private respondents Shoemart Inc. (SMI) and North Edsa Marketing
Inc. (NEMI) liable for infringement of trademark and copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals3 contained a summary of this dispute:
"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply
referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with
back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January 20, 1981 over these
illuminated display units. The advertising light boxes were marketed under the trademark "Poster Ads". The application for
registration of the trademark was filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983, but
was approved only on September 12, 1988, per Registration No. 41165. From 1981 to about 1988, Pearl and Dean employed the
services of Metro Industrial Services to manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and installation of the
light boxes in SM City North Edsa. Since SM City North Edsa was under construction at that time, SMI offered as an alternative,
SM Makati and SM Cubao, to which Pearl and Dean agreed. On September 11, 1985, Pearl and Deans General Manager,
Rodolfo Vergara, submitted for signature the contracts covering SM Cubao and SM Makati to SMIs Advertising Promotions and
Publicity Division Manager, Ramonlito Abano. Only the contract for SM Makati, however, was returned signed. On October 4,
1985, Vergara wrote Abano inquiring about the other contract and reminding him that their agreement for installation of light
boxes was not only for its SM Makati branch, but also for SM Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs house counsel informed Pearl and Dean that it was rescinding the contract for
SM Makati due to non-performance of the terms thereof. In his reply dated February 17, 1986, Vergara protested the unilateral

action of SMI, saying it was without basis. In the same letter, he pushed for the signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricate its display units,
offered to construct light boxes for Shoemarts chain of stores. SMI approved the proposal and ten (10) light boxes were
subsequently fabricated by Metro Industrial for SMI. After its contract with Metro Industrial was terminated, SMI engaged the
services of EYD Rainbow Advertising Corporation to make the light boxes. Some 300 units were fabricated in 1991. These were
delivered on a staggered basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM City and in the
fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that aside from the two (2) reported SM branches,
light boxes similar to those it manufactures were also installed in two (2) other SM stores. It further discovered that defendantappellant North Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up primarily to
sell advertising space in lighted display units located in SMIs different branches. Pearl and Dean noted that NEMI is a sister
company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI enjoining them to
cease using the subject light boxes and to remove the same from SMIs establishments. It also demanded the discontinued use
of the trademark "Poster Ads," and the payment to Pearl and Dean of compensatory damages in the amount of Twenty Million
Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light boxes and NEMI took down
its advertisements for "Poster Ads" from the lighted display units in SMIs stores. Claiming that both SMI and NEMI failed to meet
all its demands, Pearl and Dean filed this instant case for infringement of trademark and copyright, unfair competition and
damages.
In denying the charges hurled against it, SMI maintained that it independently developed its poster panels using commonly
known techniques and available technology, without notice of or reference to Pearl and Deans copyright. SMI noted that the
registration of the mark "Poster Ads" was only for stationeries such as letterheads, envelopes, and the like. Besides, according to
SMI, the word "Poster Ads" is a generic term which cannot be appropriated as a trademark, and, as such, registration of such
mark is invalid. It also stressed that Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its advertising
display units contained no copyright notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl and Dean had no cause
of action against it and that the suit was purely intended to malign SMIs good name. On this basis, SMI, aside from praying for
the dismissal of the case, also counterclaimed for moral, actual and exemplary damages and for the cancellation of Pearl and
Deans Certification of Copyright Registration No. PD-R-2558 dated January 20, 1981 and Certificate of Trademark Registration
No. 4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed or used any advertising display units, nor having engaged in the
business of advertising. It repleaded SMIs averments, admissions and denials and prayed for similar reliefs and counterclaims
as SMI."
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of copyright under Section 2 of PD
49, as amended, and infringement of trademark under Section 22 of RA No. 166, as amended, and are hereby penalized under
Section 28 of PD 49, as amended, and Sections 23 and 24 of RA 166, as amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - P16,600,000.00,
representing profits

derived by defendants
as a result of infringement of plaintiffs copyright
from 1991 to 1992
(b) moral damages - P1,000.000.00
(c) exemplary damages - P1,000,000.00
(d) attorneys fees - P1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the National Library, all light boxes of SMI which were fabricated by
Metro Industrial Services and EYD Rainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library, all filler-posters using the trademark "Poster Ads", for
destruction; and
(4) to permanently refrain from infringing the copyright on plaintiffs light boxes and its trademark "Poster Ads".
Defendants counterclaims are hereby ordered dismissed for lack of merit.
SO ORDERED.4
On appeal, however, the Court of Appeals reversed the trial court:
Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising
copies, labels, tags or box wraps, to be properly classified as a copyrightable class "O" work, we have to agree with SMI when it
posited that what was copyrighted were the technical drawings only, and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over the drawings like plaintiff-appellants will not
extend to the actual object. It has so been held under jurisprudence, of which the leading case is Baker vs. Selden (101 U.S. 841
(1879). In that case, Selden had obtained a copyright protection for a book entitled "Seldens Condensed Ledger or Bookkeeping
Simplified" which purported to explain a new system of bookkeeping. Included as part of the book were blank forms and
illustrations consisting of ruled lines and headings, specially designed for use in connection with the system explained in the
work. These forms showed the entire operation of a day or a week or a month on a single page, or on two pages following each
other. The defendant Baker then produced forms which were similar to the forms illustrated in Seldens copyrighted books. The
Court held that exclusivity to the actual forms is not extended by a copyright. The reason was that "to grant a monopoly in the
underlying art when no examination of its novelty has ever been made would be a surprise and a fraud upon the public; that is
the province of letters patent, not of copyright." And that is precisely the point. No doubt aware that its alleged original design
would never pass the rigorous examination of a patent application, plaintiff-appellant fought to foist a fraudulent monopoly on the
public by conveniently resorting to a copyright registration which merely employs a recordal system without the benefit of an indepth examination of novelty.
The principle in Baker vs. Selden was likewise applied in Muller vs. Triborough Bridge Authority [43 F. Supp. 298 (S.D.N.Y.
1942)]. In this case, Muller had obtained a copyright over an unpublished drawing entitled "Bridge Approach the drawing
showed a novel bridge approach to unsnarl traffic congestion". The defendant constructed a bridge approach which was alleged

to be an infringement of the new design illustrated in plaintiffs drawings. In this case it was held that protection of the drawing
does not extend to the unauthorized duplication of the object drawn because copyright extends only to the description or
expression of the object and not to the object itself. It does not prevent one from using the drawings to construct the object
portrayed in the drawing.
In two other cases, Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379 F. 2d 84, it was held
that there is no copyright infringement when one who, without being authorized, uses a copyrighted architectural plan to
construct a structure. This is because the copyright does not extend to the structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and Deans copyright over the technical drawings of the latters advertising
display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge, Incorporated vs. Intermediate Appellate Court that the protective mantle of the
Trademark Law extends only to the goods used by the first user as specified in the certificate of registration, following the clear
mandate conveyed by Section 20 of Republic Act 166, as amended, otherwise known as the Trademark Law, which reads:
SEC. 20. Certification of registration prima facie evidence of validity.- A certificate of registration of a mark or trade-name shall be
prima facie evidence of the validity of the registration, the registrants ownership of the mark or trade-name, and of the
registrants exclusive right to use the same in connection with the goods, business or services specified in the certificate, subject
to any conditions and limitations stated therein." (underscoring supplied)
The records show that on June 20, 1983, Pearl and Dean applied for the registration of the trademark "Poster Ads" with the
Bureau of Patents, Trademarks, and Technology Transfer. Said trademark was recorded in the Principal Register on September
12, 1988 under Registration No. 41165 covering the following products: stationeries such as letterheads, envelopes and calling
cards and newsletters.
With this as factual backdrop, we see no legal basis to the finding of liability on the part of the defendants-appellants for their use
of the words "Poster Ads", in the advertising display units in suit. Jurisprudence has interpreted Section 20 of the Trademark Law
as "an implicit permission to a manufacturer to venture into the production of goods and allow that producer to appropriate the
brand name of the senior registrant on goods other than those stated in the certificate of registration." The Supreme Court further
emphasized the restrictive meaning of Section 20 when it stated, through Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be deemed as including goods not specified therein, then a situation may arise
whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had
never intended to use the trademark for the said goods. We believe that such omnibus registration is not contemplated by our
Trademark Law.
While we do not discount the striking similarity between Pearl and Deans registered trademark and defendants-appellants
"Poster Ads" design, as well as the parallel use by which said words were used in the parties respective advertising copies, we
cannot find defendants-appellants liable for infringement of trademark. "Poster Ads" was registered by Pearl and Dean for
specific use in its stationeries, in contrast to defendants-appellants who used the same words in their advertising display units.
Why Pearl and Dean limited the use of its trademark to stationeries is simply beyond us. But, having already done so, it must
stand by the consequence of the registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-appellants that the words "Poster Ads" are a simple contraction of the
generic term poster advertising. In the absence of any convincing proof that "Poster Ads" has acquired a secondary meaning in

this jurisdiction, we find that Pearl and Deans exclusive right to the use of "Poster Ads" is limited to what is written in its
certificate of registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for infringement of the trademark "Poster Ads".
There being no finding of either copyright or trademark infringement on the part of SMI and NEMI, the monetary award granted
by the lower court to Pearl and Dean has no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed decision is REVERSED and SET ASIDE, and another is rendered
DISMISSING the complaint and counterclaims in the above-entitled case for lack of merit. 5
Dissatisfied with the above decision, petitioner P & D filed the instant petition assigning the following errors for the Courts
consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT INFRINGEMENT WAS
COMMITTED BY RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT OF PEARL &
DEANS TRADEMARK "POSTER ADS" WAS COMMITTED BY RESPONDENTS SM AND NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THE TRIAL COURT,
DESPITE THE LATTERS FINDING, NOT DISPUTED BY THE HONORABLE COURT OF APPEALS, THAT SM
WAS GUILTY OF BAD FAITH IN ITS NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL & DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM AND NEMI
LIABLE TO PEARL & DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES, ATTORNEYS FEES AND
COSTS OF SUIT.6
ISSUES
In resolving this very interesting case, we are challenged once again to put into proper perspective four main concerns of
intellectual property law patents, copyrights, trademarks and unfair competition arising from infringement of any of the first
three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising display unit (light box) are granted copyright
protection (copyright certificate of registration) by the National Library, is the light box depicted in such
engineering drawings ipso facto also protected by such copyright?
(2) or should the light box be registered separately and protected by a patent issued by the Bureau of Patents
Trademarks and Technology Transfer (now Intellectual Property Office) in addition to the copyright of the
engineering drawings?
(3) can the owner of a registered trademark legally prevent others from using such trademark if it is a mere
abbreviation of a term descriptive of his goods, services or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT

Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes when SMI had the units manufactured by
Metro and EYD Rainbow Advertising for its own account. Obviously, petitioners position was premised on its belief that its
copyright over the engineering drawings extended ipso facto to the light boxes depicted or illustrated in said drawings. In ruling
that there was no copyright infringement, the Court of Appeals held that the copyright was limited to the drawings alone and not
to the light box itself. We agree with the appellate court.
First, petitioners application for a copyright certificate as well as Copyright Certificate No. PD-R2588 issued by the National
Library on January 20, 1981 clearly stated that it was for a class "O" work under Section 2 (O) of PD 49 (The Intellectual
Property Decree) which was the statute then prevailing. Said Section 2 expressly enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following works:
xxx

xxx

xxx

(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxx

xxx

xxx

Although petitioners copyright certificate was entitled "Advertising Display Units" (which depicted the box-type electrical devices),
its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are limited to what the
statute confers. It may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and
conditions specified in the statute.7 Accordingly, it can cover only the works falling within the statutory enumeration or
description.8
P & D secured its copyright under the classification class "O" work. This being so, petitioners copyright protection extended only
to the technical drawings and not to the light box itself because the latter was not at all in the category of "prints, pictorial
illustrations, advertising copies, labels, tags and box wraps." Stated otherwise, even as we find that P & D indeed owned a valid
copyright, the same could have referred only to the technical drawings within the category of "pictorial illustrations." It could not
have possibly stretched out to include the underlying light box. The strict application 9 of the laws enumeration in Section 2
prevents us from giving petitioner even a little leeway, that is, even if its copyright certificate was entitled "Advertising Display
Units." What the law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which
could be copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to make the light
box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as
"Advertising Display Units."
In fine, if SMI and NEMI reprinted P & Ds technical drawings for sale to the public without license from P & D, then no doubt they
would have been guilty of copyright infringement. But this was not the case. SMIs and NEMIs acts complained of by P & D were
to have units similar or identical to the light box illustrated in the technical drawings manufactured by Metro and EYD Rainbow
Advertising, for leasing out to different advertisers. Was this an infringement of petitioners copyright over the technical drawings?
We do not think so.
During the trial, the president of P & D himself admitted that the light box was neither a literary not an artistic work but an
"engineering or marketing invention."10 Obviously, there appeared to be some confusion regarding what ought or ought not to be
the proper subjects of copyrights, patents and trademarks. In the leading case of Kho vs. Court of Appeals,11 we ruled that these
three legal rights are completely distinct and separate from one another, and the protection afforded by one cannot be used
interchangeably to cover items or works that exclusively pertain to the others:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A

trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of the light boxes without license from petitioner,
private respondents cannot be held legally liable for infringement of P & Ds copyright over its technical drawings of the said light
boxes, should they be liable instead for infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which
could have protected its invention, if in fact it really was. And because it had no patent, petitioner could not legally prevent
anyone from manufacturing or commercially using the contraption. In Creser Precision Systems, Inc. vs. Court of Appeals,12 we
held that "there can be no infringement of a patent until a patent has been issued, since whatever right one has to the invention
covered by the patent arises alone from the grant of patent. x x x (A)n inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his invention, but if he voluntarily discloses it, such as by offering it for sale,
the world is free to copy and use it with impunity. A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, selling or using the invention. 13 On the assumption that petitioners advertising
units were patentable inventions, petitioner revealed them fully to the public by submitting the engineering drawings thereof to the
National Library.
To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a primordial
requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs and technologies into the
public domain through disclosure.14 Ideas, once disclosed to the public without the protection of a valid patent, are subject to
appropriation without significant restraint.15
On one side of the coin is the public which will benefit from new ideas; on the other are the inventors who must be protected. As
held in Bauer & Cie vs. ODonnel,16 "The act secured to the inventor the exclusive right to make use, and vend the thing patented,
and consequently to prevent others from exercising like privileges without the consent of the patentee. It was passed for the
purpose of encouraging useful invention and promoting new and useful inventions by the protection and stimulation given to
inventive genius, and was intended to secure to the public, after the lapse of the exclusive privileges granted the benefit of such
inventions and improvements."
The law attempts to strike an ideal balance between the two interests:
"(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new useful and
non-obvious advances in technology and design, in return for the exclusive right to practice the invention for a number of years.
The inventor may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent
benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for 17 years, but upon the expiration of
that period, the knowledge of the invention inures to the people, who are thus enabled to practice it and profit by its use." 17
The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention; second, it promotes disclosures
of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the
stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the
public."18
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-depth investigation is required

because "in rewarding a useful invention, the rights and welfare of the community must be fairly dealt with and effectively
guarded. To that end, the prerequisites to obtaining a patent are strictly observed and when a patent is issued, the limitations on
its exercise are equally strictly enforced. To begin with, a genuine invention or discovery must be demonstrated lest in the
constant demand for new appliances, the heavy hand of tribute be laid on each slight technological advance in art." 19
There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effect that a person is claiming
the creation of a work. The law confers the copyright from the moment of creation 20 and the copyright certificate is issued upon
registration with the National Library of a sworn ex-parte claim of creation.
Therefore, not having gone through the arduous examination for patents, the petitioner cannot exclude others from the
manufacture, sale or commercial use of the light boxes on the sole basis of its copyright certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the patent office (IPO) to scrutinize the light
boxs eligibility as a patentable invention. The irony here is that, had petitioner secured a patent instead, its exclusivity would
have been for 17 years only. But through the simplified procedure of copyright-registration with the National Library without
undergoing the rigor of defending the patentability of its invention before the IPO and the public the petitioner would be
protected for 50 years. This situation could not have been the intention of the law.
In the oft-cited case of Baker vs. Selden21, the United States Supreme Court held that only the expression of an idea is protected
by copyright, not the idea itself. In that case, the plaintiff held the copyright of a book which expounded on a new accounting
system he had developed. The publication illustrated blank forms of ledgers utilized in such a system. The defendant reproduced
forms similar to those illustrated in the plaintiffs copyrighted book. The US Supreme Court ruled that:
"There is no doubt that a work on the subject of book-keeping, though only explanatory of well known systems, may be the
subject of a copyright; but, then, it is claimed only as a book. x x x. But there is a clear distinction between the books, as such,
and the art, which it is, intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any
argument to support it. The same distinction may be predicated of every other art as well as that of bookkeeping. A treatise on
the composition and use of medicines, be they old or new; on the construction and use of ploughs or watches or churns; or on
the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective,
would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the
art or manufacture described therein. The copyright of the book, if not pirated from other works, would be valid without regard to
the novelty or want of novelty of its subject matter. The novelty of the art or thing described or explained has nothing to do with
the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no
examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the
province of letters patent, not of copyright. The claim to an invention of discovery of an art or manufacture must be
subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and a patent from
the government can only secure it.
The difference between the two things, letters patent and copyright, may be illustrated by reference to the subjects just
enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer
writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the
manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must
obtain a patent for the mixture as a new art, manufacture or composition of matter. He may copyright his book, if he
pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions
or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to
the modes of drawing described, though they may never have been known or used before. By publishing the book without getting
a patent for the art, the latter is given to the public.

xxx
Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction
in the art, any person may practice and use the art itself which he has described and illustrated therein. The use of the art is a
totally different thing from a publication of the book explaining it. The copyright of a book on bookkeeping cannot secure
the exclusive right to make, sell and use account books prepared upon the plan set forth in such book. Whether the art might or
might not have been patented, is a question, which is not before us. It was not patented, and is open and free to the use of the
public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar
nature of the art described in the books, which have been made the subject of copyright. In describing the art, the illustrations
and diagrams employed happened to correspond more closely than usual with the actual work performed by the operator who
uses the art. x x x The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for
an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may
be secured by copyright. The latter can only be secured, if it can be secured at all, by letters patent." (underscoring
supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark "Poster Ads" which petitioners president said was a contraction of
"poster advertising." P & D was able to secure a trademark certificate for it, but one where the goods specified were "stationeries
such as letterheads, envelopes, calling cards and newsletters." 22 Petitioner admitted it did not commercially engage in or market
these goods. On the contrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon,
which, however, were not at all specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs. Intermediate Appellate Court,23 where we,
invoking Section 20 of the old Trademark Law, ruled that "the certificate of registration issued by the Director of Patents can
confer (upon petitioner) the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate x x x. One who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others for products which are of a different description."24 Faberge, Inc.
was correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. Court of Appeals.25
Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of P & D to secure a trademark registration
for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an
essential element thereof.
1wphi1

ON THE ISSUE OF UNFAIR COMPETITION


If at all, the cause of action should have been for unfair competition, a situation which was possible even if P & D had no
registration.26 However, while the petitioners complaint in the RTC also cited unfair competition, the trial court did not find private
respondents liable therefor. Petitioner did not appeal this particular point; hence, it cannot now revive its claim of unfair
competition.
But even disregarding procedural issues, we nevertheless cannot hold respondents guilty of unfair competition.
By the nature of things, there can be no unfair competition under the law on copyrights although it is applicable to disputes over
the use of trademarks. Even a name or phrase incapable of appropriation as a trademark or tradename may, by long and
exclusive use by a business (such that the name or phrase becomes associated with the business or product in the mind of the
purchasing public), be entitled to protection against unfair competition. 27 In this case, there was no evidence that P & Ds use of
"Poster Ads" was distinctive or well-known. As noted by the Court of Appeals, petitioners expert witnesses himself had testified

that " Poster Ads was too generic a name. So it was difficult to identify it with any company, honestly speaking." 28 This crucial
admission by its own expert witness that "Poster Ads" could not be associated with P & D showed that, in the mind of the public,
the goods and services carrying the trademark "Poster Ads" could not be distinguished from the goods and services of other
entities.
This fact also prevented the application of the doctrine of secondary meaning. "Poster Ads" was generic and incapable of being
used as a trademark because it was used in the field of poster advertising, the very business engaged in by petitioner.
"Secondary meaning" means that a word or phrase originally incapable of exclusive appropriation with reference to an article in
the market (because it is geographically or otherwise descriptive) might nevertheless have been used for so long and so
exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or
phrase has come to mean that the article was his property.29 The admission by petitioners own expert witness that he himself
could not associate "Poster Ads" with petitioner P & D because it was "too generic" definitely precluded the application of this
exception.
Having discussed the most important and critical issues, we see no need to belabor the rest.
All told, the Court finds no reversible error committed by the Court of Appeals when it reversed the Regional Trial Court of Makati
City.
WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001 is AFFIRMED in toto.
SO ORDERED.
Puno, (Chairman), Panganiban, Sandoval-Gutierrez, and Carpio-Morales, JJ., concur.

Footnotes
Penned by Associate Justice Salvador J. Valdez, Jr. and concurred in by Associate Justices Wenceslao L. Agnir
and Juan Q. Enriquez Jr.
1

Penned by Judge Napoleon E. Inoturan.

Seventeenth Division; CA G.R. 55303.

Records, pp. 620-621.

Rollo, pp. 17-19, 21-22, 23-24, 26.

Rollo, p. 34.

18 C.J.S. 161.

Joaquin vs. Drilon, 302 SCRA 225 [1999].

Ibid.

10

Pp. 11-13, TSN, February 3, 1993.

11

G.R. No. 115758, March 19, 2002.

12

286 SCRA 13 [1998].

Id., at p. 21, citing Anchor Hocking Glass Corp. vs. White Cap Co., 47 F. Supp. A 451, and Bauer & Cie vs.
ODonnel, 229 US 1.
13

14

Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., 489 US 141 [1989].

15

Id., at p. 156.

16

Ibid., at p. 10.

Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., ibid., p. 150, citing U.S. vs. Dubilier Condenser Corp., 289 U.S.
178.
17

Aronson vs. Quick Point Pencil Co., 440 U.S. 257, 262 [1979], citing Kewanee Oil Co. vs. Bicron Corp., 416
U.S. 470 [1994], cited Amador, patents, p. 496.
18

19

Sears Roebuck vs. Stiffel, 376 US 225, 229 [1964].

20

Section 2, PD 49 (The Intellectual Property Decree).

21

101 US 102-105 [1879].

22

Exhibit "B," Original Records, p. 63.

23

215 SCRA 316 [1992].

24

Id., at p. 326.

25

336 SCRA 266 [2000].

26

Ogura vs. Chua, 59 Phil. 471.

27

Sapalo, The Law on Trademark Infringement and Unfair Competition, 2000 ed., p. 185.

28

Decision, p. 16, citing TSN, December 3, 1992, pp. 19-20.

29

Sapalo, at p. 92.

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Today is Wednesday, September 30, 2015

Republic of the Philippines


SUPREME COURT
Manila
SECOND DIVISION
G.R. L-45101 November 28, 1986
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.
Ambrosio Padilla Law Offices for petitioner.

PARAS, J.:p
Submitted on December 9, 1977 for Our decision is this petition for review on certiorari of the two Resolutions of the
Court of Appeals, the first dated July 6, 1976, setting aside its Decision of February 16, 1976 in CA-G.R. No. SP-04706,
titled "SUSANA LUCHAN v. Hon. HONRADO, et al." wherein it ruled for the dismissal of the petition for lack of merit and
at the same time nullifying the writ of preliminary injunction it had previously issued; and the second, dated November
4, 1976, denying the motion for reconsideration of the first resolution above-mentioned.
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING" while private respondent is
likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING."
It is undisputed that petitioner is a patent holder of powder puff namely:
1. UM-423 (extended and/or renewed under Extension No. UM-109 for a period of 5
years from October 6, 1971)
2. UM-450 (extended and/or renewed under Extension No. UM110 for a period of 5
years from January 26, 1972)
3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp. 6-7).
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private respondent that the powder puffs the
latter is manufacturing and selling to various enterprises particularly those in the cosmetics industry, resemble
Identical or substantially Identical powder puffs of which the former is a patent holder under Registration Certification
Nos. Extension UM-109, Extension UM-110 and Utility Model No. 1184; petitioner explained such production and sale
constitute infringement of said patents and therefore its immediate discontinuance is demanded, otherwise it will be

compelled to take judicial action. (Rollo, pp. 7-8).


Private respondent replied stating that her products are different and countered that petitioner's 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. (Taken from allegations in the Answer,
par. 4, Rollo, p. 93). And on July 25, 1974, private respondent assailed the validity of the patents involved and filed with
the Philippine Patent Office petitions for cancellation of (1) Utility Model Letter Patent Extension No. UM-109 (Inter
Partes Case No. 838, Susana Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case
No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No. UM-110 (Inter Partes Case No.
840, Susana Luchan v. Rosario C. Tan. (Taken from allegations in the Answer, par. 10, Rollo, pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with injunction and preliminary injunction
against private respondent with the then Court of First Instance of Rizal, Pasig Branch, docketed as Civil Case No.
19908, for infringing the aforesaid letters patent, and prayed, among others, that a writ of preliminary injunction be
immediately issued (Complaint, Rollo, p. 90).
In her answer, private respondent alleged that the products she is manufacturing and offering for sale are not Identical,
or even only substantially Identical to the products covered by petitioner's patents and, by way of affirmative defenses,
further alleged that petitioner's patents in question are void on the following grounds:
(1) at the time of filing of application for the patents involved, the utility models
applied for were not new and patentable under Sec. 55 of R.A. 165, as amended by
R.A. 864; and
(2) the person to whom the patents were issued was not the true and actual author
of the utility models applied for, and neither did she derive her rights from any true
and actual author of these utility models.
for the following reasons:
(a) since years prior to the filing of applications for the patents involved, powder
puffs of the kind applied for were then already existing and publicly being sold in
the market; both in the Philippines and abroad; and
(b) applicant's claims in her applications, of "construction" or process of
manufacturing the utility models applied for, with respect to UM-423 and UM-450,
were but a complicated and impractical version of an old, simple one which has
been well known to the cosmetics industry since years previous to her filing of
applications, and which belonged to no one except to the general public; and with
respect to UM1184; her claim in her application of a unitary powder puff, was but an
limitation of a product well known to the cosmetics industry since years previous to
her firing of application, and which belonged to no one except to the general public;
(Answer, Rollo, pp. 93-94).
On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125) granting the preliminary injunction
prayed for by petitioner. Consequently, the corresponding writ was subsequently issued (Annex "K-1", Rollo, p. 131)
enjoining the herein private respondent (then defendant) and all other persons employed by her, her agents, servants
and employees from directly or indirectly manufacturing, making or causing to be made, selling or causing to be sold,
or using or causing to be used in accordance with, or embodying the utility models of the Philippine Patent Office Utility
Model Letters Patent Nos. 423 (Extension No. UM-109), No. 450 (Extension No. UM-110), and Utility Model No. 1184 or

from infringement upon or violating said letters patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).
Private respondent questioned the propriety of the trial court's issuance of the Writ of Preliminary Injunction arguing
that since there is still a pending cancellation proceedings before the Philippine Patent Office concerning petitioner's
patents, such cannot be the basis for preliminary injunction (Motion for Reconsideration, Rollo, p. 132).
In an Order dated September 11, 1975, the trial court denied private respondent's motion for reconsideration (Annex
"N", Rollo, p. 142).
In challenging these Orders private respondent filed a petition for certiorari with the respondent court on September 29,
1975 (Annex "D", Rollo, pp. 148-171) reiterating among other things the invalidity of petitioner's patents and prayed that
the trial court be restrained from enforcing or continuing to enforce the following:
(1) Order dated September 18, 1974, granting the preliminary injunction;
(2) Writ of preliminary injunction dated September 18, 1974; and
(3) Order dated September 11, 1974 denying petitioner's motion petition for
reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent Court of Appeals as follows:
NOW, THEREFORE, you, respondents, and/or any person/persons acting on your stead, are
hereby ENJOINED to RESTRAIN from enforcing or continuing to enforce, the proceedings
complained of in the petition to wit: 1) Order dated September 18, 1974, granting the preliminary
injunction; 2) Writ of Preliminary Injunction dated September 18, 1974; and Order dated September
11, 1975, denying petitioner's motion for reconsideration, all issued in connection with Civil Case
No. 19908, UNTIL FURTHER ORDERS FROM THIS COURT. (Annex "P", Rollo, p. 1.73)
On February 16, 1976, respondent court promulgated a decision the dispositive portion of which reads:
WHEREFORE, finding no merit in the herein petition, the same is hereby dismissed and the
preliminary injunction previously issued by this Court is hereby set aside, with costs.
SO ORDERED. (CA Decision, Rollo, p. 189).
ln said decision respondent court stated that in disposing of the petition it tackled only the issue of whether the court a
quo acted with grave abuse of discretion in issuing the challenged orders. It made clear the question of whether the
patents have been infringed or not was not determined considering the court a quo has yet to decide the case on the
merits (Ibid., p. 186).
Feeling aggrieved, private respondent moved to reconsider the afore-mentioned Decision based on the following
grounds:
I
THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE EXISTENCE
OF A FAIR QUESTION OF INVALIDITY OF PRIVATE RESPONDENT'S PATENTS.
II

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Today is Wednesday, September 30, 2015

Republic of the Philippines


SUPREME COURT
Manila
FIRST DIVISION
G.R. No. L-32160 January 30, 1982
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

FERNANDEZ, J.:
This is a petition for certiorari to review the decision of the Court of Appeals in CA G.R. NO. 37824-R entitled "Conrado G. de
Leon, plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino and Sons, defendants-appellants," the dispositive portion of which
reads:
WHEREFORE, with the modification that plintiff-applee's award of moral damages is hereby redured to
P3,000.00, the appealed judgment is hereby affirmed, in all othe respects, with costs against appellants.

On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for infringement of
patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the original first and sole inventor of certain
new and useful improvements in the process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for
Philippine patent, and having complied in all respects with the statute and the rules of the Philippine Patent Office, Patent No.
658 was lawfully granted and issued to him; that said invention was new, useful, not known or used by others in this country
before his invention thereof, not patented or described in any printed publication anywhere before his invention thereof, or more
than one year prior to his application for patent thereof, not patented in any foreign country by him or his legal representatives on
application filed more than one year prior to his application in this country; that plaintiff has the exclusive license to make, use
and sell throughout the Philippines the improvements set forth in said Patent No. 658; that the invention patented by said Patent
No. 658 is of great utility and of great value to plaintiff and of great benefit to the public who has demanded and purchased tiles
embodying the said invention in very large quantities and in very rapidly increasing quant ies; that he has complied with the
Philippine statues relating to marking patented tiles sold by him; that the public has in general acknowledged the validity of said
Patent No. 658, and has respected plaintiff's right therein and thereunder; that the defendant Domiciano A. Aguas infringed
Letters of Patent No. 658 by making, using and selling tiles embodying said patent invention and that defendant F. H. Aquino &
Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. Aguas the engravings, castings and
devices designed and intended of tiles embodying plaintiff;s patented invention; that he has given direct and personal notice to
the defendants of their said acts of infringement and requested them to desist, but nevertheless, defendants have refused and
neglected to desist and have disregarded such request, and continue to so infringe causing great and irreparable damage to
plaintiff; that if the aforesaid infringement is permitted to continue, further losses and damages and irreparable injury will be
sustained by the plaintiff; that there is an urgent need for the immediate issuance of a preliminary injunction; that as a result of

the defendants' wrongful conduct, plaintiff has suffered and the defendants are liable to pay him, in addition to actual damages
and loss of profits which would be determined upon proper accounting, moral and exemplary or corrective damages in the sum of
P90,000.00; that plaintiff has been compelled to go to court for the protection and enforcement of his and to engage the service
of counsel, thereby incurring attorney's fees and expenses of litigation in the sum of P5,000.00. 2
On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary Injunction was issued.

On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the allegations of the plaintiff and alleging that: the
plaintiff 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 tile-making factories in the Philippines and abroad years before the alleged invention by de Leon;
that Letters Patent No. 658 was unlawfully acquired by making it appear in the application in relation thereto that the process is
new and that the plaintiff is the owner of the process when in truth and in fact the process incorporated in the patent application
has been known and used in the Philippines by almost all tile makers long before the alleged use and registration of patent by
plaintiff Conrado G. de Leon; that the registration of the alleged invention did not confer any right on the plaintiff because the
registration was unlawfully secured and was a result of the gross misrepresentation on the part of the plaintiff that his alleged
invention is a new and inventive process; that the allegation of the plaintiff that Patent No. 658 is of great value to plaintiff and of
great benefit to the public is a mere conclusion of the plaintiff, the truth being that a) the invention of plaintiff is neither inventive
nor new, hence, it is not patentable, b) defendant has been granted valid patents (Patents No. 108, 109, 110 issued on
December 21, 1961) on designs for concrete decorative wall tiles; and c) that he can not be guilty of infringement because his
products are different from those of the plaintiff. 4
The trial court rendered a decision dated December 29, 1965, the dispositive portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their officers, agents, employees, associates,
confederates, and any and all persons acting under their authority from making and/or using and/or
vending tiles embodying said patented invention or adapted to be used in combination embodying the
same, and from making, manufacturing, using or selling, engravings, castings and devises designed and
intended for use in apparatus for the making of tiles embodying plaintiff's patented invention, and from
offering or advertising so to do, and from aiding and abetting or in any way contributing to the
infringement of said patent;
3. Ordering that each and all of the infringing tiles, engravings, castings and devices, which are in the
possession or under the control of defendants be delivered to plaintiff;
4. Ordering the defendants to jointly and severally pay to the plaintiff the following sums of money, to wit:
(a) P10,020.99 by way of actual damages;
(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;
(d) P5,000.00 by way of attorney's fees and
(e) costs of suit. 5
The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the following errors.

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Today is Wednesday, September 30, 2015

Republic of the Philippines


SUPREME COURT
Manila
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.:
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-2Benzimidazole Carbamate." The application bore Serial No. 18989.
On September 24, 1981, Letters Patent No. 145611 for the aforesaid invention was issued to petitioner for a term of seventeen
(17) years.
The letters patent provides in its claims2 that the patented invention consisted of a new compound named methyl 5 propylthio-2benzimidazole 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 gastrointestinal 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. 145614 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 petitioners 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 Answer8 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 attorneys fees.
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, plaintiffs 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 attorneys 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. (Underscoring supplied)
On appeal, the Court of Appeals, by Decision of April 21, 1995,10 upheld the trial courts finding that private respondent was not
liable for any infringement of the patent of petitioner in light of the latters failure to show that Albendazole is the same as the
compound subject of Letters Patent No. 14561. Noting petitioners admission of the issuance by the U.S. of a patent for
Albendazole in the name of Smith Kline and French Laboratories which was petitioners 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 petitioners 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 petitioners 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 Offices 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.

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Today is Wednesday, September 30, 2015

Republic of the Philippines


SUPREME COURT
Manila
THIRD DIVISION

G.R. No. 97343 September 13, 1993


PASCUAL GODINES, petitioner,
vs.
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO ENTERPRISES, INC., respondents.
Jesus S. Anonat for petitioner.
Arturo M. Alinio for private respondent.
ROMERO, J.:
Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court, petitioner
Pascual Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringement of patent and unfair
competition. The dispositive portion of the assailed decision is hereby quoted to wit:
WHEREFORE, with the elimination of the award for attorney's fees, the judgment appealed from is
hereby AFFIRMED, with costs against appellant. 1
The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one Magdalena S.
Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller, the main components of which are the
following: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a
protective water covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an engine foundation on
the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed; (8) a frontal frame
extension above the quarter circularly shaped water covering hold (sic) in place the transmission case; (9) a V-belt connection
to the engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on the engine foundation." 2
The patented hand tractor works in the following manner: "the engine drives the transmission gear thru the V-belt, a driven pulley and a
transmission shaft. The engine drives the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt
drives the pulley attached to the transmission gear which in turn drives the shaft where the paddy wheels are attached. The operator
handles the hand tractor through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a
U-shaped G.I. pipe at the V-shaped end." 3
The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, from Magdalena
Villaruz, its chairman and president, by virtue of a Deed of Assignment executed by the latter in its favor. On October 31, 1979,

SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of general circulation.
In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on
them. In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon
investigation, it discovered that power tillers similar to those patented by private respondent were being manufactured and sold
by petitioner herein. Consequently, private respondent notified Pascual Godines about the existing patent and demanded that the
latter stop selling and manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries
filed before the Regional Trial Court a complaint for infringement of patent and unfair competition.
After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The dispositive portion of the
decision reads as follows:
WHEREFORE, premises considered, JUDGMENT is hereby rendered in favor of the plaintiff SV-Agro
Industries Enterprises, Inc., and against defendant Pascual Godines:
1. Declaring the writ of preliminary injunction issued by this Court against defendant as permanent;
2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50,000.00) as
damages to its business reputation and goodwill, plus the further sum of Eighty Thousand Pesos
(P80,000.00) for unrealized profits during the period defendant was manufacturing and selling copied or
imitation floating power tiller;
3. Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand Pesos (P8,000.00) as
reimbursement of attorney's fees and other expenses of litigation; and to pay the costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit:
that he was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his
customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition; and
that those made by him were different from those being manufactured and sold by private respondent.
We find no merit in his arguments. The question of whether petitioner was manufacturing and selling power tillers is a question of
fact better addressed to the lower courts. In dismissing the first argument of petitioner herein, the Court of Appeals quoted the
findings of the court, to wit:
It is the contention of defendant that he did not manufacture or make imitations or copies of plaintiff's
turtle power tiller as what he merely did was to fabricate his floating power tiller upon specifications and
designs of those who ordered them. However, this contention appears untenable in the light of the
following circumstances: 1) he admits in his Answer that he has been manufacturing power tillers or hand
tractors, selling and distributing them long before plaintiff started selling its turtle power tiller in
Zamboanga del Sur and Misamis Occidental, meaning that defendant is principally a manufacturer of
power tillers, not upon specification and design of buyers, but upon his own specification and design; 2) it
would be unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of
plaintiff upon specifications of buyers without requiring a job order where the specification and designs of
those ordered are specified. No document was (sic) ever been presented showing such job orders, and it
is rather unusual for defendant to manufacture something without the specification and designs,
considering that he is an engineer by profession and proprietor of the Ozamis Engineering shop. On the

other hand, it is also highly unusual for buyers to order the fabrication of a power tiller or hand tractor and
allow defendant to manufacture them merely based on their verbal instructions. This is contrary to the
usual business and manufacturing practice. This is not only time consuming, but costly because it
involves a trial and error method, repeat jobs and material wastage. Defendant judicially admitted two (2)
units of the turtle power tiller sold by him to Policarpio Berondo. 5
Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of the Supreme Court in cases brought
to it from the Court of Appeals in a petition for certiorari under Rule 45 of the Rules of Court is limited to the review of errors of
law, and that said appellate court's findings of fact are conclusive upon this Court." 6
The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been established by the
courts despite petitioner's claims to the contrary.
The question now arises: Did petitioner's product infringe upon the patent of private respondent?
Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 7 In
using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls
within the claim, infringement is made out and that is the end of it." 8 To determine whether the particular item falls within the literal
meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of
the claims and specifications, to determine whether there is exact identity of all material elements. 9
The trial court made the following observation:
Samples of the defendant's floating power tiller have been produced and inspected by the court and
compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and
form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually
the same. Defendant admitted to the Court that two (2) of the power inspected on March 12, 1984, were
manufactured and sold by him (see TSN, March 12, 1984, p. 7). The three power tillers were placed
alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof
were the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the
same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H-28).
Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of
the turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or components
thereof are virtually the same. Both have the circularly-shaped vacuumatic housing float, a paddy in front,
a protective water covering, a transmission box housing the transmission gears, a handle which is Vshaped and inclined upwardly, attached to the side of the vacuumatic housing float and supported by the
upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to which
the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in
similar manner as the turtle power tiller of plaintiff. This was admitted by the defendant himself in court
that they are operating on the same principles. (TSN, August 19, 1987, p. 13) 10
Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued by the Patent
Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the
engine drive is held in place, the operating handle, the harrow housing with its operating handle and the paddy wheel protective
covering." 11 It appears from the foregoing observation of the trial court that these claims of the patent and the features of the patented
utility model were copied by petitioner. We are compelled to arrive at no other conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutching at straws.
Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the
patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention
are sufficient to put the item beyond the scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also

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Republic of the Philippines


SUPREME COURT
Manila
FIRST DIVISION
G.R. No. 121267

October 23, 2001

SMITH KLINE & FRENCH LABORATORIES, LTD. plaintiff-appellee,


vs.
COURT OF APPEALS and DANLEX RESEARCH LABORATORIES, INC., defendant-appellant.
KAPUNAN, J.:
This petition for review on certiorari assails the Decision dated January 27, 1995 of the Court of Appeals in CA-G.R. SP No.
337701 which affirmed the decision of the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) granting a
compulsory license to private respondent Danlex Research Laboratories for the use of the pharmaceutical product Cimetidine.
Likewise assailed is the July 25, 1995 Resolution of the Court of Appeals denying the motion for reconsideration filed by
petitioner Smith Kline and French Laboratories, Ltd.
Petitioner is the assignee of Letters Patent No. 12207 covering the pharmaceutical product Cimetidine, which relates to
derivatives of heterocyclicthio or lower alkoxy or amino lower alkyl thiourea, ureas or guanadines. Said patent was issued by the
BPTTT to Graham John Durant, John Collin Emmett and Robin Genellin on November 29, 1978. 2
On August 21, 1989, private respondent filed with the BPTTT a petition for compulsory license to manufacture and produce its
own brand of medicines using Cimetidine. Private respondent invoked Section 34 (1) (e) of Republic Act No. 165, 3 (the Patent
Law) the law then governing patents, which states that an application for the grant of a compulsory license under a particular
patent may be filed with the BPTTT at any time after the lapse of two (2) years from the date of grant of such patent, if the
patented invention or article relates to food or medicine, or manufactured substances which can be used as food or medicine, or
is necessary for public health or public safety.4 The petition for compulsory license stated that Cimetidine is useful as an
antihistamine and in the treatment of ulcers, and that private respondent is capable of using the patented product in the
manufacture of a useful product.5
Petitioner opposed the petition for compulsory license, arguing that the private respondent had no cause of action and failed to
allege how it intended to work the patented product. Petitioner further stated that its manufacture, use and sales of Cimetidine
satisfied the needs of the Philippine market, hence, there was no need to grant a compulsory license to private respondent to
manufacture, use and sell the same. Finally, petitioner also claimed that the grant of a compulsory license to private respondent
would not promote public safety and that the latter was only motivated by pecuniary gain. 6
After both parties were heard, the BPTTT rendered a decision directing the issuance of a compulsory license to private
respondent to use, manufacture and sell in the Philippines its own brand of pharmaceutical products containing Cimetidine and
ordered the payment by private respondent to petitioner of royalties at the rate of 2.5% of net sales in Philippine currency.7

Petitioner thereafter filed with the Court of Appeals a petition for review of the decision of the BPTTT, raising the following
arguments: (1) the BPTTT's decision is violative of the Paris Convention for the Protection of Industrial Property; (2) said decision
is an invalid exercise of police power; (3) the rate of royalties payable to petitioner as fixed by the BPTTT was rendered without
factual basis and amounts to an expropriation of private property without just compensation; (4) the petition for compulsory
license should have been dismissed by the BPTTT for failure to prove the jurisdictional requirement of publication. 8
On January 27, 1995, the Court of Appeals promulgated its Decision, the dispositive portion of which states:
WHEREFORE, the petition is DENIED, and the decision of the Bureau of Patents, Trademarks and Technology
Transfer is hereby AFFIRMED, with costs against the Petitioner.
SO ORDERED.9
In affirming the decision of the BPTTT, the appellate court held that the grant of a compulsory license to private respondent for
the manufacture and use of Cimetidine is in accord with the Patent Law since the patented product is medicinal in nature, and
therefore necessary for the promotion of public health and safety.10 It explained further that the provisions of the Patent Law
permitting the grant of a compulsory license are intended not only to give a chance to others to supply the public with the quantity
of the patented article but especially to prevent the building up of patent monopolies. 11 Neither did the appellate court find the
royalty rate of 2.5% of net sales fixed by the BPTTT unreasonable, considering that what was granted under the compulsory
license is only the right to manufacture Cimetidine, without any technical assistance from petitioner, and royalty rates identical to
that fixed by the BPTTT have been prescribed for the grant of compulsory license in a good number of patent cases. 12 The Court
of Appeals also ruled that contrary to petitioner's claim, private respondent complied with the requirement of publication under the
Patent Law and had submitted proof of such compliance.13
Not satisfied with the appellate court's decision, petitioner filed a motion for reconsideration thereof as well as a motion for the
issuance of a temporary restraining order against private respondent's sister company, Montreal Pharmaceutical, Inc. to refrain
from marketing a product similar to Cimetidine, but both motions were denied by the Court of Appeals in its Resolution of July 25,
1995.14
Petitioner thus filed the present petition on September 15, 1995, with the following assignment of errors:
I. The respondent Court erred in upholding the validity of the decision of public respondent BPTTT which is an
arbitrary exercise of police power and is violative of international law.
II. The respondent Court erred in holding that compulsory licensing will not create a confusion that the patented
product is the brainchild of private respondent Danlex and not of petitioner.
III.Assuming that the grant of compulsory license is in order, the respondent Court still erred in holding that the
BPTTT decision fixing the royalty at 2.5% of the net wholesale price in peso does not amount to expropriation of
private property without just compensation.
IV.The respondent Court erred in finding that the jurisdictional requirement of publication in a newspaper of
general circulation for three (3) consecutive weeks has been complied with by private respondent Danlex. 15
While petitioner concedes that the State in the exercise of police power may regulate the manufacture and use of medicines
through the enactment and implementation of pertinent laws, it states that such exercise is valid only if the means employed are
reasonably necessary for the accomplishment of the purpose and if not unduly oppressive. 16 According to petitioner, the grant of
a compulsory license to private respondent is an invalid exercise of police power since it was not shown that there is an
overwhelming public necessity for such grant, considering that petitioner is able to provide an adequate supply of i to satisfy the
needs of the Philippine market. Petitioner also claims that the grant of a compulsory license to private respondent unjustly

deprives it of a reasonable return on its investment.17 It argues further that the provisions of the Patent Law on compulsory
licensing contravene the Convention of Paris for the Protection of Industrial Property 18 (Paris Convention), which allegedly
permits the granting of a compulsory license over a patented product only to prevent abuses which might result from the exercise
of the exclusive rights conferred by the patent,19 or on the ground of failure to work or insufficient working of the patented product,
within four years from the date of filing of the patent application or three years from the date of grant of the patent, whichever
expires last.20 Petitioner opines that the inclusion of grounds for the grant of a compulsory license in Section 34 of the Patent Law
other than those provided under the Paris Convention constitutes a violation of the Philippines' obligation to adhere to the
provisions of said treaty.21
It is also contended by petitioner that the grant of a compulsory license to private respondent will allow the latter to liberally
manufacture and sell medicinal products containing Cimetidine without even extending to petitioner due recognition for
pioneering the development and worldwide acceptance of said invention, and will unreasonably dilute petitioner's right over the
patent.22
Petitioner likewise asseverates that the rate of royalty fixed by the BPTTT at 2.5% of net sales is grossly inadequate, taking into
consideration its huge investments of money, time and other resources in the research and development, as well as marketing of
Cimetidine. It is further alleged that such rate has no factual basis since the appellate court and the BPTTT relied solely on
analogous cases and did not explain how such rate was arrived at.23
Lastly, petitioner claims that the appellate court erred in ruling that private respondent had complied with the requirement of
publication of the notice of the filing of the petition for compulsory license because private respondent failed to formally offer in
evidence copies of the notice of filing of the petition and notice of the date of hearing thereof as published and the affidavits of
publication thereof. Thus, it says, the BPTTT did not properly acquire jurisdiction over the petition for compulsory license. 24
In its Comment to the Petition, private respondent adopted the reasoning of the Court of Appeals in the assailed decision and
prayed that the petition be denied for lack of merit. 25
The petition has no merit.
The Court of Appeals did not err in affirming the validity of the grant by the BPTTT of a compulsory license to private respondent
for the use, manufacture and sale of Cimetidine. The said grant is in accord with Section 34 of the Patent Law which provides:
Grounds for Compulsory Licensing. (1) Any person may apply to the Director for the grant of a license
under a particular patent at any time after the expiration of two years from the date of the grant of the
patent, under any of the following circumstances:
(a) If the patented invention is not being worked within the Philippines on a commercial scale, although capable of
being so worked, without satisfactory reason;
(b) If the demand of the patented article in the Philippines is not being met to an adequate extent and on
reasonable terms;
(c) If, by reason of refusal of the patentee to grant a license or licenses on reasonable terms, or by reason of the
conditions attached by the patentee to licensee or to the purchase, lease or use of the patented article or working
of the patented process or machine for production, the establishment of any new trade or industry in the
Philippines is prevented, or the trade or industry therein is unduly restrained;
(d) If the working of the invention within the country is being prevented or hindered by the importation of the
patented article;
(e) If the patented invention or article relates to food or medicine or manufactured substances which can

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Republic of the Philippines


SUPREME COURT
Manila
SECOND DIVISION

G.R. No. 118708 February 2, 1998


CRESER PRECISION SYSTEMS, INC., petitioner,
vs.
COURT OF APPEALS AND FLORO INTERNATIONAL CORP., respondents.

MARTINEZ, J.:
This petition for review on certiorari assails the decision 1 of the Court of Appeals dated November 9, 1994 in C.A.-G.R. SP No.
34425 entitled "Floro International Corp. vs. Hon. Tirso D.C Cruz and Creser Precision System, Inc.", the dispositive portion of which
reads:
WHEREFORE, THE PETITION IS HEREBY GRANTED. THE COMPLAINT FOR INJUNCTION AND
DAMAGES, CIVIL CASE NO. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY ORDERED
DISMISSED AND HIS ORDERS THEREIN OF DECEMBER 29, 1993 AND MAY 11, 1994 ARE
ORDERED SET ASIDE.
Private respondent is a domestic corporation engaged in the manufacture, production, distribution and sale of military
armaments, munitions, airmunitions and other similar materials. 2
On January 23, 1990, private respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT),
a Letters Patent No. UM-6938 3 covering an aerial fuze which was published in the September-October-1990, Vol. III, No. 5 issue of
the Bureau of Patent's Official Gazette. 4
Sometime in November 1993, private respondent, through its president, Mr. Gregory Floro, Jr., discovered that petitioner
submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing. He learned that petitioner
was claiming the aforesaid aerial fuze as its own and planning to bid and manufacture the same commercially without license or
authority from private respondent. To protect its right, private respondent on December 3, 1993, sent a letter 5 to petitioner advising
it of its existing patent and its rights thereunder, warning petitioner of a possible court action and/or application for injunction, should it
proceed with the scheduled testing by the military on December 7, 1993.
In response to private respondent's demand, petitioner filed on December 8, 1993 a complaint 6 for injunction and damages arising
from the alleged infringement before the Regional Trial Court of Quezon City, Branch 88. The complaint alleged, among others: that

petitioner is the first, true and actual inventor of an aerial fuze denominated as "Fuze, PDR 77 CB4" which it developed as early as
December 1981 under the Self-Reliance Defense Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner began
supplying the AFP with the said aerial fuze; that private respondent's aerial fuze is identical in every respect to the petitioner's fuze; and
that the only difference between the two fuzes are miniscule and merely cosmetic in nature. Petitioner prayed that a temporary
restraining order and/or writ of preliminary injunction be issued enjoining private respondent including any and all persons acting on its
behalf from manufacturing, marketing and/or profiting therefrom, and/or from performing any other act in connection therewith or
tending to prejudice and deprive it of any rights, privileges and benefits to which it is duly entitled as the first, true and actual inventor of
the aerial fuze.

On December 10, 1993, the trial court issued a temporary restraining order. Thereafter, hearings were held on the application of
petitioner for the issuance of a writ of preliminary injunction, with both parties presenting their evidence. After the hearings, the
trial court directed the parties to submit their respective memoranda in support of their positions.
On December 27, 1993, private respondent submitted its memorandum 7 alleging that petitioner has no cause of action to file a
complaint for infringement against it since it has no patent for the aerial fuze which it claims to have invented; that petitioner's available
remedy is to file a petition for cancellation of patent before the Bureau of Patents; that private respondent as the patent holder cannot
be stripped of its property right over the patented aerial fuze consisting of the exclusive right to manufacture, use and sell the same and
that it stands to suffer irreparable damage and injury if it is enjoined from the exercise of its property rights over its patent.
On December 29, 1993, the trial court issued an Order 8 granting the issuance of a writ of preliminary injunction against private
respondent the dispositive portion of which reads:
WHEREFORE, plaintiffs application for the issuance of a writ of preliminary injunction is granted and,
upon posting of the corresponding bond by plaintiff in the amount of PHP 200,000.00, let the writ of
preliminary injunction be issued by the branch Clerk of this Court enjoining the defendant and any and all
persons acting on its behalf or by and under its authority, from manufacturing, marketing and/or selling
aerial fuzes identical, to those of plaintiff, and from profiting therefrom, and/or from performing any other
act in connection therewith until further orders from this Court.
Private respondent moved for reconsideration but this was denied by the trial court in its Order 9 of May 11, 1994, pertinent portions
of which read:
For resolution before this Court is the Motion for Reconsideration filed by the defendant and the plaintiff's
Opposition thereto. The Court finds no sufficient cause to reconsider its order dated December 29, 1993.
During the hearing for the issuance of the preliminary injunction, the plaintiff has amply proven its
entitlement to the relief prayed for. It is undisputed that the plaintiff has developed its aerial fuze way back
in 1981 while the defendant began manufacturing the same only in 1987. Thus, it is only logical to
conclude that it was the plaintiff's aerial fuze that was copied or imitated which gives the plaintiff the right
to have the defendant enjoined "from manufacturing, marketing and/or selling aerial fuzes identical to
those of the plaintiff, and from profiting therefrom and/or performing any other act in connection therewith
until further orders from this Court." With regards to the defendant's assertion that an action for
infringement may only be brought by "anyone possessing right, title or interest to the patented invention,"
(Section 42, RA 165) qualified by Sec. 10, RA 165 to include only "the first true and actual inventor, his
heirs, legal representatives or assignees, "this court finds the foregoing to be untenable. Sec. 10 merely
enumerates the persons who may have an invention patented which does not necessarily limit to these
persons the right to institute an action for infringement. Defendant further contends that the order in issue
is disruptive of the status quo. On the contrary, the order issued by the Court in effect maintained the
status quo. The last actual, peaceable uncontested status existing prior to this controversy was the
plaintiff manufacturing and selling its own aerial fuzes PDR 77 CB4 which was ordered stopped through
the defendant's letter. With the issuance of the order, the operations of the plaintiff continue. Lastly, this
court believes that the defendant will not suffer irreparable injury by virtue of said order. The defendant's
claim is primarily hinged on its patent (Letters Patent No. UM-6983) the validity of which is being
questioned in this case.

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SUPREME COURT
Manila
FIRST DIVISION

G.R. No. 113388 September 5, 1997


ANGELITA MANZANO, petitioner,
vs.
COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING
CORPORATION, respondents.

BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. The
function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage
dissemination of information concerning discoveries and inventions. This is a matter which is properly within the competence of
the Patent Office the official action of which has the presumption of correctness and may not be interfered with in the absence of
new evidence carrying thorough conviction that the Office has erred. Since the Patent Office is an expert body preeminently
qualified to determine questions of patentability, its findings must be accepted if they are consistent with the evidence, with
doubts as to patentability resolved in favor of the Patent Office. 1
Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of Letters
Patent No. UM-4609 for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the
letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). Petitioner alleged that (a)
the utility model covered by the letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the
specification of the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c) respondent
Melecia Madolaria was not the original, true and actual inventor nor did she derive her rights from the original, true and actual
inventor of the utility model covered by the letters patent; and, (d) the letters patent was secured by means of fraud or
misrepresentation. In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by the
letters patent of respondent had been known or used by others in the Philippines for more than one (1) year before she filed her
application for letters patent on 9 December 1979; (b) the products which were produced in accordance with the utility model
covered by the letters patent had been in public use or on sale in the Philippines for more than one (1) year before the
application for patent therefor was filed.
Petitioner presented the following documents which she correspondingly marked as exhibits: (a) affidavit of petitioner alleging the
existence of prior art, marked Exh. "A;" (b) a brochure distributed by Manila Gas Corporation disclosing a pictorial representation
of Ransome Burner made by Ransome Torch and Burner Company, USA, marked Exh. "D;" and, (c) a brochure distributed by

Esso Gasul or Esso Standard Eastern, Inc., of the Philippines showing a picture of another similar burner with top elevation view
and another perspective view of the same burner, marked Exh. "E."
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the UNITED FOUNDRY where
respondent Melecia Madolaria used to be affiliated with from 1965 to 1970; that Ong helped in the casting of an LPG burner
which was the same utility model of a burner for which Letters Patent No. UM-4609 was issued, and that after her husband's
separation from the shop she organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners
one of which had the configuration, form and component parts similar to those being manufactured by UNITED FOUNDRY.
Petitioner presented in evidence an alleged model of an LPG burner marked Exh. "K" and covered by the Letters Patent of
respondent, and testified that it was given to her in January 1982 by one of her customers who allegedly acquired it from
UNITED FOUNDRY. Petitioner also presented in evidence her own model of an LPG burner called "Ransome" burner marked
Exh. "L," which was allegedly manufactured in 1974 or 1975 and sold by her in the course of her business operation in the name
of BESCO METAL. Petitioner claimed that this "Ransome" burner (Exh. "L") had the same configuration and mechanism as that
of the model which was patented in favor of private respondent Melecia Madolaria. Also presented by petitioner was a burner cup
of an imported "Ransome" burner marked Exh "M" which was allegedly existing even before the patent application of private
respondent.
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel Francisco. Ong testified that he
worked as a helper in the UNITED FOUNDRY from 1965 to 1970 where he helped in the casting of LPG burners with the same
form, configuration and mechanism as that of the model covered by the Letters Patent issued to private respondent. Francisco
testified that he had been employed with the Manila Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he
retired as supervisor and that Manila Gas Corporation imported "Ransome" burners way back in 1965 which were advertised
through brochures to promote their sale.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who testified, among others, that he was
the General Supervisor of the UNITED FOUNDRY in the foundry, machine and buffing section; that in his early years with the
company, UNITED FOUNDRY was engaged in the manufacture of different kinds of gas stoves as well as burners based on
sketches and specifications furnished by customers; that the company manufactured early models of single-piece types of
burners where the mouth and throat were not detachable; that in the latter part of 1978 respondent Melecia Madolaria confided in
him that complaints were being brought to her attention concerning the early models being manufactured; that he was then
instructed by private respondent to cast several experimental models based on revised sketches and specifications; that private
respondent again made some innovations; that after a few months, private respondent discovered the solution to all the defects
of the earlier models and, based on her latest sketches and specifications, he was able to cast several models incorporating the
additions to the innovations introduced in the models. Various tests were conducted on the latest model in the presence and
under the supervision of Melecia Madolaria and they obtained perfect results. Rolando Madolaria testified that private respondent
decided to file her application for utility model patent in December 1979.
On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56 denying the petition for cancellation and
holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent
was anticipated. Not one of the various pictorial representations of business clearly and convincingly showed that the devices
presented by petitioner was identical or substantially identical with the utility model of the respondent. The decision also stated
that even assuming that the brochures depicted clearly each and every element of the patented gas burner device so that the
prior art and patented device became identical although in truth they were not, they could not serve as anticipatory bars for the
reason that they were undated. The dates when they were distributed to the public were not indicated and, therefore, were
useless prior art references. The records and evidence also do not support the petitioner's contention that Letters Patent No. UM4609 was obtained by means of fraud and/or misrepresentation. No evidence whatsoever was presented by petitioner to show
that the then applicant Melecia Madolaria withheld with intent to deceive material facts which, if disclosed, would have resulted in
the refusal by the Philippine Patent Office to issue the Letters Patent under inquiry.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which on 15 October 1993 affirmed the decision
of the Director of Patents. Hence, this petition for review on certiorari alleging that the Court of Appeals erred (a) in relying on
imaginary differences which in actuality did not exist between the model of private respondent covered by Letters Patent No. UM-

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SUPREME COURT
Manila
THIRD DIVISION

G.R. No. 121867 July 24, 1997


SMITH KLINE & FRENCH LABORATORIES, LTD., petitioner,
vs.
COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and DOCTORS
PHARMACEUTICALS, INC. respondents.

DAVIDE, JR., J.:


This is an appeal under Rule 45 of the Rules of Court from the decision 1 4 November 1994 of the Court of Appeals in CA-G.R. SP
No. 33520, which affirmed the 14 February 1994 decision 2 of the Director of the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) granting a compulsory non-exclusive and non-transferable license to private respondent to manufacture, use and sell
in the Philippines its own brands of pharmaceutical products containing petitioner's patented pharmaceutical product known as
Cimetidine.
Petitioner is a foreign corporation with principal office at Welwyn Garden City, England. It owns Philippine Letters Patent No.
12207 issued by the BPTTT for the patent of the drug Cimetidine.
Private respondent is a domestic corporation engaged in the business of manufacturing and distributing pharmaceutical
products. On 30 March 1987, it filed a petition for compulsory licensing 3 with the BPTTT for authorization to manufacture its own
brand of medicine from the drug Cimetidine and to market the resulting product in the Philippines. The petition was filed pursuant to the
provisions of Section 34 of Republic Act No. 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties, Regulating the
Issuance of Patents, and Appropriating Funds Therefor), which provides for the compulsory licensing of a particular patent after the
expiration of two years from the grant of the latter if the patented invention relates to, inter alia, medicine or that which is necessary for
public health or public safety. Private respondent alleged that the grant of Philippine Letters Patent No. 12207 was issued on 29
November 1978; that the petition was filed beyond the two-year protective period provided in Section 34 of R.A. No. 165; and that it had
the capability to work the patented product or make use of it in its manufacture of medicine.
Petitioner opposed, arguing that private respondent had no cause of action and lacked the capability to work the patented
product; the petition failed to specifically divulge how private respondent would use or improve the patented product; and that
private respondent was motivated by the pecuniary gain attendant to the grant of a compulsory license. Petitioner also
maintained that it was capable of satisfying the demand of the local market in the manufacture and marketing of the medicines
covered by the patented product. Finally, petitioner challenged the constitutionality of Sections 34 and 35 of R.A. No. 165 for

violating the due process and equal protection clauses of the Constitution.
After appropriate proceedings, the BPTTT handed down its decision on 14 February 1994, with the dispositive portion thereof
providing:
NOW, THEREFORE, by virtue of the powers vested in this Office by Republic Act No. 165, as amended by
Presidential Decree No. 1263, there is hereby issued a license in favor of the herein [private respondent], United
Laboratories, Inc., [sic] under Letters Patent No. 12207 issued on November 29, 1978, subject to the following
terms and conditions:
1. That [private respondent] be hereby granted a non-exclusive and non-transferable license to manufacture, use
and sell in the Philippines its own brands of pharmaceutical products containing [petitioner's] patented invention
which is disclosed and claimed in Letters Patent No. 12207;
2. That the license granted herein shall be for the remaining life of said Letters Patent No. 12207 unless this
license is terminated in the manner hereinafter provided and that no right or license is hereby granted to [private
respondent] under any patent to [petitioner] or [sic] other than recited herein;
5. By virtue of this license, [private respondent] shall pay [petitioner] a royalty on all license products containing
the patented substance made and sold by [private respondent] in the amount equivalent to TWO AND ONE HALF
PERCENT (2.5%) of the net sales in Philippine currency. The term "net scale" [sic] means the gross amount billed
for the product pertaining to Letters Patent No. 12207, less
(a) Transportation charges or allowances, if any, included in such amount;
(b) Trade, quantity or cash discounts and broker's or agent's or distributor's commissions, if any, allowed or paid;
(c) Credits or allowances, if any, given or made on account of rejection or return of the patented product
previously delivered; and
(d) Any tax, excise or government charge included in such amount, or measured by the production sale,
transportation, use of delivery of the products.
In case [private respondent's] product containing the patented substance shall contain one or more active
ingredients admixed therewith, said product hereinafter identified as admixed product, the royalty to be paid shall
be determined in accordance with the following formula:
Net Sales on Value of Patented
ROYALTY = Admixed Product x 0.025 x Substance

Value of Patented Value of Other
Substance Active Ingredients
4. The royalties shall be computed after the end of each calendar quarter to all goods containing the patented
substance herein involved, made and sold during the precedent quarter and to be paid by [private respondent] at

its place of business on or before the thirtieth day of the month following the end of each calendar quarter.
Payments should be made to [petitioner's] authorized representative in the Philippines;
5. [Private respondent] shall keep records in sufficient detail to enable [petitioner] to determine the royalties
payable and shall further permit its books and records to be examined from time to time at [private respondent's]
premises during office hours, to the extent necessary to be made at the expense of [petitioner] by a certified
public accountant appointed by [petitioner] and acceptable to [private respondent].
6. [Private respondent] shall adopt and use its own trademark or labels on all its products containing the patented
substance herein involved;
7. [Private respondent] shall comply with the laws on drugs and medicine requiring previous clinical tests and
approval of proper government authorities before selling to the public its own products manufactured under the
license;
8. [Petitioner] shall have the right to terminate the license granted to [private respondent] by giving the latter thirty
(30) days notice in writing to that effect, in the event that [private respondent] default [sic] in the payment of
royalty provided herein or if [private respondent] shall default in the performance of other convenants or
conditions of this agreement which are to be performed by [private respondent]:
(a) [Private respondent] shall have the right provided it is not in default to payment or royalties or
other obligations under this agreement, to terminate the license granted to its, [sic] giving
[petitioner] thirty (30) days-notice in writing to that effect;
(b) Any termination of this license as provided for above shall not in any way operate to deny
[petitioner] its rights or remedies, either at laws [sic] or equity, or relieve [private respondent] of the
payment of royalties or satisfaction of other obligations incurred prior to the effective date of such
termination; and
(c) Notice of termination of this license shall be filed with the Bureau of Patents, Trademarks and
Technology Transfer.
9. In case of dispute as to the enforcement of the provisions of this license, the matter shall be submitted for
arbitration before the Director of Bureau of Patents, Trademarks and Technology Transfer or any ranking official of
the Bureau of Patents, Trademarks and Technology Transfer duly delegated by him.
10. This License shall inure to the benefit of each of the parties herein, to the subsidiaries and assigns of
[petitioner] and to the successors and assigns of [private respondent]; and
11. This license take [sic] effect immediately. 4
Petitioner then appealed to the Court of Appeals by way of a petition for review, which was docketed as CA-G.R. SP No. 33520.
Petitioner claimed that the appealed decision was erroneous because:
I
. . . [IT] VIOLATES INTERNATIONAL LAW AS EMBODIED IN THE PARIS CONVENTION FOR THE
PROTECTION OF INDUSTRIAL PROPERTY AND MUST ACCORDINGLY BE SET ASIDE AND MODIFIED.
II
. . . [IT] IS AN INVALID EXERCISE OF POLICE POWER.

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Today is Wednesday, September 30, 2015

Republic of the Philippines


SUPREME COURT
Manila
FIRST DIVISION

G.R. No. 115106 March 15, 1996


ROBERTO L. DEL ROSARIO, petitioner,
vs.
COURT OF APPEALS AND JANITO CORPORATION, respondents.

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. UM6237 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
miyata 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 mode 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

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Today is Wednesday, September 30, 2015

Republic of the Philippines


SUPREME COURT
Manila
EN BANC
G.R. No. L-20354

July 28, 1969

GERARDO SAMSON, JR., petitioner,


vs.
FELIPE TARROZA and DIRECTOR OF PATENTS, respondents.
Hermenegildo V. Lopez for petitioner.
Isaac S. Puno, Jr. for respondent Felipe Tarroza.
Office of the Solicitor General for respondent Director of Patents.
FERNANDO, J.:
With the statutory recognition of patentability based on the "practical utility" concept 1 thus rendering clear that a patent is not
solely to be earned under the "flash of genius" theory, 2 this petition for the cancellation of a utility model patent for a Side TiltingDumping Wheelbarrow granted to respondent Felipe A. Tarroza was correctly denied by respondent Director of Patents.
Petitioner Gerardo Samson, Jr., himself the grantee of a utility model patent for a Dumping and Detachable Wheelbarrow, lacked
any legal justification for such a plea. So respondent Director ruled. Not satisfied, petitioner elevated the matter to us for review.
There is no reason why a different outcome is to be expected. His appeal must fail.
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 its front end panel being supported by the wheel." 3
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." 4
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.
Moreover, in appeals from a decision of the Director of Patents, only questions of law may be reviewed, findings of facts being
conclusive unless unsupported by substantial evidence. So it was decided in Che v. Philippines Patent Office. 5 As was
emphasized in Bagano v. Director of Patents: "It is almost trite to state here that in cases of the nature as the one at bar, only
questions of law are to be raised in order that this Court could exercise its appellate jurisdiction and review the decision." 6 The
above well-settled doctrines suffice to demonstrate that this petition for review, as noted at the outset, is without merit. It was not
error then, to reiterate, for the respondent Director of Patents to deny the cancellation of the utility patent granted respondent
Tarroza. To borrow from the language of the Che opinion: "Even on the sole issue alone, the petition for review must fail."
Another alleged error was imputed to respondent Director of Patents. It would find fault with his failing to hold that respondent
Tarroza "was not the true and actual" author of the mechanical contrivance for which he was granted a utility model patent. This
is what the appealed decision has to say on this point: "Petitioner's theory with respect to the second ground for cancellation, to
wit: that respondent is not the true and actual inventor or designer of the utility model is premised on the fact that because of the
proximity of the two, the petitioner and the respondent being brothers-in-law, and living in adjoining residential lots, the latter has
had ample time and opportunity to observe and copy the former's wheelbarrow. But the testimonial evidence thus presented is
not clear, satisfactory, and free from doubt, in the face of allegations to the contrary by the respondent." 7 The futility of such an
assignment of error is thus apparent. Again, it is factual in character. It is not for us, as noted above, to review or revise the same,
there being no showing of a lack of substantial evidence in support thereof.
WHEREFORE, the decision of April 13, 1962 of respondent Director of Patents denying the petition for the cancellation of Utility
Model Letters Patent No. 62 in favor of respondent Tarroza is hereby affirmed. With costs against petitioner.
Concepcion, C.J., Reyes, J.B.L., Dizon, Makalintal, Zaldivar, Sanchez, Castro, Capistrano, Teehankee and Barredo, JJ., concur.

1wph1.t

Footnotes
Section 55 of Republic Act No. 165, as amended by Republic Act No. 864, reads thus: "Design patents and
patents for utility models. (a) Any new, original, and ornamental design for an article of manufacture and (b)
any new model of 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 related to
patents for inventions in so far as they are applicable, except as otherwise herein provided." (1953)
1

Cf. "That is to say the new device, however useful it may be, must reveal the flash of creative genius not merely
the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." Cuno
Engineering Corp. v. Automatic Devices Corp., 314 US 84, 91 (1941).
2

Decision of the Director of Patents, Brief for the Petitioner-Appellant, pp. 20-21.

Ibid., p. 21.

L-18337, Jan. 30, 1965.

L-20170, Aug. 10, 1965.

Decision of the Director of Patents, Brief for the Petitioner-Appellant, pp. 32-33.

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