G.R. No.

L-32160 January 30, 1982 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
DOMICIANO A. AGUAS, petitioner,
inventive nor new, hence, it is not patentable, b) defendant has been granted valid
vs.
patents (Patents No. 108, 109, 110 issued on December 21, 1961) on designs for
CONRADO G. DE LEON and COURT OF APPEALS, respondents.
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
FERNANDEZ, J.:
The trial court rendered a decision dated December 29, 1965, the dispositive portion of
This is a petition for certiorari to review the decision of the Court of Appeals in CA G.R. which reads:
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
WHEREFORE, judgment is hereby rendered in favor of
reads:
plaintiff and against the defendants:

WHEREFORE, with the modification that plintiff-applee's

1. Declaring plaintiff's patent valid and infringed:
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. 1 2. Granting a perpetual injunction restraining defendants, their
officers, agents, employees, associates, confederates, and
any and all persons acting under their authority from making
On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at
and/or using and/or vending tiles embodying said patented
Quezon City a complaint for infringement of patent against Domiciano A. Aguas and F.
invention or adapted to be used in combination embodying
H. Aquino and Sons alleging that being the original first and sole inventor of certain
the same, and from making, manufacturing, using or selling,
new and useful improvements in the process of making mosaic pre-cast tiles, he
engravings, castings and devises designed and intended for
lawfully filed and prosecuted an application for Philippine patent, and having complied
use in apparatus for the making of tiles embodying plaintiff's
in all respects with the statute and the rules of the Philippine Patent Office, Patent No.
patented invention, and from offering or advertising so to do,
658 was lawfully granted and issued to him; that said invention was new, useful, not
and from aiding and abetting or in any way contributing to the
known or used by others in this country before his invention thereof, not patented or
infringement of said patent;
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 3. Ordering that each and all of the infringing tiles,
prior to his application in this country; that plaintiff has the exclusive license to make, engravings, castings and devices, which are in the
use and sell throughout the Philippines the improvements set forth in said Patent No. possession or under the control of defendants be delivered to
658; that the invention patented by said Patent No. 658 is of great utility and of great plaintiff;
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
4. Ordering the defendants to jointly and severally pay to the
increasing quant ies; that he has complied with the Philippine statues relating to
plaintiff the following sums of money, to wit:
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 (a) P10,020.99 by way of actual damages;
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
(b) P50,000.00 by way of moral damages;
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 (c) P5,000.00 by way of exemplary damages;
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 (d) P5,000.00 by way of attorney's fees and
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 (e) costs of suit. 5
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 The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the
corrective damages in the sum of P90,000.00; that plaintiff has been compelled to go following errors. 6
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 I
P5,000.00. 2
THE TRIAL COURT ERRED IN NOT HOLDING THAT
On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING
Injunction was issued. 3 MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the DISCOVERY AS THE SAME HAS ALREADY LONG BEEN
allegations of the plaintiff and alleging that: the plaintiff is neither the original first nor USED BY TILE MANUFACTURERS BOTH ABROAD AND IN
sole inventor of the improvements in the process of making mosaic pre-cast tiles, the THIS COUNTRY.
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 II
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 TRIAL COURT ERRED IN HOLDING THAT THE
the Philippines by almost all tile makers long before the alleged use and registration of PATENT OF PLAINTIFF IS VALID BECAUSE IT IS AN
patent by plaintiff Conrado G. de Leon; that the registration of the alleged invention did IMPROVEMENT OR THE AGE-OLD TILE MAKING
not confer any right on the plaintiff because the registration was unlawfully secured SYSTEM.
and was a result of the gross misrepresentation on the part of the plaintiff that his

1
 III
THE TRIAL COURT ERRED IN NOT ORDERING THE
CANCELLATION OF PLAINTIFF-APPELLEE'S LETTERS
PATENT NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE PATENT LAW,
REPUBLIC ACT 165.
IV
THE TRIAL COURT ERRED IN HOLDING THAT
DEFENDANT DOMICIANO A. AGUAS IS GUILTY OF
INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF'S
PATENT IS NOT A VALID ONE.
V defendant Aguas personally, as a building contractor,
THE TRIAL COURT ERRED IN NOT HOLDING THAT THE
DEFENDANT COULD NEVER BE GUILTY OF
INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE
EVEN IN MATTERS NOT PATENTED BY THE PLAINTIFF -
LIKE THE COMPOSITION AND PROPORTION OF
INGREDIENTS USED AND THE STRUCTURAL DESIGNS
OF THE MOULD AND THE TILE PRODUCED - THAT OF
THE DEFENDANT ARE DIFFERENT.
VI
THE TRIAL COURT ERRED IN NOT DISMISSING THE
COMPLAINT AND IN HOLDING THE DEFENDANT,
INSTEAD OF THE PLAINTIFF, LIABLE FOR DAMAGES,
AND ATTORNEY'S FEES.
On August 5, 1969, the Court of Appeals affirmed the decision of the trial court, with
the modification that plaintiff-appellee's award of moral damages was reduced to
P3,000.00. 7
The petitioner assigns the following errors supposedly committed by the Court of
Appeals:
It is now respectfully submitted that the Court of Appeals
committed the following errors involving questions of law, to
wit:
First error. — When it did not conclude that the letters patent
of the respondent although entitled on the cover page as a
patent for improvements, was in truth and in fact, on the basis
of the body of the same, a patent for the old and non-
patentable process of making mosaic pre-cast tiles;
Second error. — When it did not conclude from the admitted
facts of the case, particularly the contents of the letters
patent, Exh. L and the pieces of physical evidence introduced
consisting of samples of the tiles and catalouges, that the
alleged improvements introduced by the respondent in the
manufacture of mosaic pre-cast tiles are not patentable, the
same being not new, useful and inventive.
Third error. — As a corollary, when it sentenced the herein
petitioner to pay the damages enumerated in the decision of
the lower court (Record on Appeal, pp. 74-75), as confirmed
by it (the Court of Appeals), but with the modification that the
amount of P50,000.00 moral damages was reduced to
P3,000.00. 8
The facts, as found by the Court of Appeals, are:
2
The basic facts borne out by the record are to the effect that
on December 1, 1959 plaintiff-appellee filed a patent
application with the Philippine Patent Office, and on May 5,
1960, said office issued in his favor Letters Patent No. 658 for
a "new and useful improvement in the process of making
mosaic pre-cast tiles" (Exh, "L"); that defendant F.H. Aquino &
Sons engraved the moulds embodying plaintiff's patented
improvement for the manufacture of pre-cast tiles, plaintiff
furnishing said defendant the actual model of the tiles in
escayola and explained to said engraver the plans,
specifications and the details of the engravings as he wanted
them to be made, including an explanation of the lip width,
artistic slope of easement and critical depth of the engraving
that plaintiff wanted for his moulds; that engraver Enrique
Aquino knew that the moulds he was engraving for plaintiff
were the latter's very own, which possession the new features
and characteristics covered by plaintiff's parent; that
purchased from plaintiff, tiles shaped out of these moulds at
the back of which was imprinted plaintiff's patent number
(Exhs., "A" to "E"); that subsequently, through a
representative, Mr. Leonardo, defendant Aguas requested
Aquino to make engravings of the same type and bearing the
characteristics of plaintiff's moulds; that Mr. Aquino knew that
the moulds he was asked to engrave for defendant Aguas
would be used to produce cement tiles similar to plaintiff's;
that the moulds which F.H. Aquino & Sons eventually
engraved for Aguas and for which it charged Aguas double
the rate it charged plaintiff De Leon, contain the very same
characteristic features of plaintiff's mould and that Aguas
used these moulds in the manufacture of his tiles which he
actually put out for sale to the public (Exhs. "1" to "3" and
Exhs. "A" to "E"); that both plaintiff's and defendant Aguas'
tiles are sculptured pre-cast wall tiles intended as a new
feature of construction and wag ornamentation substantially
Identical to each other in size, easement, lip width and critical
depth of the deepest depression; and that the only significant
difference between plaintiff's mould and that engraved by
Aquino for Aguas is that, whereas plaintiff's mould turns out
tiles 4 x 4 inches in size, defendant Aguas' mould is made to
fit a 4-1/4 x 4-1/4 inch tile. 9
The patent right of the private respondent expired on May 5, 1977. 10 The errors will be
discuss only to determine the right of said private respondent to damages.
The petitioner questioned the validity of the patent of the private respondent, Conrado
G. de Leon, on the ground that the process, subject of said patent, is not an invention
or discovery, or an improvement of the old system of making tiles. It should be noted
that the private respondent does not claim to be the discoverer or inventor of the old
process of tile-making. He only claims to have introduced an improvement of said
process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to
the private respondent, Conrado G. de Leon, to protect his rights as the inventor of "an
alleged new and useful improvement in the process of making mosaic pre-cast tiles." 11
Indeed, Section 7, Republic Act No. 165, as amended provides: "Any invention of a
new and useful machine, manufactured product or substance, process, or an
improvement of the foregoing, shall be patentable.
The Court of Appeals found that the private respondent has introduced an
improvement in the process of tile-making because:
... we find that plaintiff-appellee has introduced an
improvement in the process of tile-making, which proceeds
not merely from mechanical skill, said improvement consisting
among other things, in the new critical depth, lip width,
easement and field of designs of the new tiles. The improved
lip width of appellee's tiles ensures the durability of the
finished product preventing the flaking off of the edges. The
easement caused by the inclination of the protrusions of the
patented moulds is for the purpose of facilitating the removal
of the newly processed tile from the female die. Evidently,
appellee's improvement consists in the solution to the old
critical problem by making the protrusions on his moulds
attain an optimum height, so that the engraving thereon would
 be deep enough to produce tiles for sculptured and The petitioner also contends that the improvement of respondent is not patentable
decorative purposes, strong optimum thickness of appellee's because it is not new, useful and inventive. This contention is without merit.
new tiles of only 1/8 of an inch at the deepest easement
(Exhs. "D" and "D-1") is a most critical feature, suggestive of
The records disclose that de Leon's process is an improvement of the old process of
discovery and inventiveness, especially considering that,
tile making. The tiles produced from de Leon's process are suitable for construction
despite said thinness, the freshly formed tile remains strong
and ornamentation, which previously had not been achieved by tiles made out of the
enough for its intended purpose.
old process of tile making. De Leon's invention has therefore brought about a new and
useful kind of tile. The old type of tiles were usually intended for floors although there
While it is true that the matter of easement, lip width, depth, is nothing to prevent one from using them for walling purposes. These tiles are neither
protrusions and depressions are known to some sculptors, artistic nor ornamental. They are heavy and massive.
still, to be able to produce a new and useful wall tile, by using
them all together, amounts to an invention. More so, if the
The respondent's improvement is indeed inventive and goes beyond the exercise of
totality of all these features are viewed in combination with
mechanical skill. He has introduced a new kind of tile for a new purpose. He has
the Ideal composition of cement, sodium silicate and
improved the old method of making tiles and pre-cast articles which were not
screened fine sand.
satisfactory because of an intolerable number of breakages, especially if deep
engravings are made on the tile. He has overcome the problem of producing
By using his improved process, plaintiff has succeeded in decorative tiles with deep engraving, but with sufficient durability. 15 Durability inspite of
producing a new product - a concrete sculptured tile which the thinness and lightness of the tile, is assured, provided that a certain critical depth is
could be utilized for walling and decorative purposes. No maintained in relation to the dimensions of the tile. 16
proof was adduced to show that any tile of the same kind had
been produced by others before appellee. Moreover, it
The petitioner also claims that changing the design from embossed to engraved tiles is
appears that appellee has been deriving considerable profit
neither new nor inventive because the Machuca Tile Factory and the Pomona Tile
from his manufacture and sale of such tiles. This commercial
Manufacturing Company have been manufacturing decorative wall tiles that are
success is evidence of patentability (Walker on Patents,
embossed as well as engraved; 17 that these tiles have also depth, lip width, easement
Dellers Edition, Vol. I, p. 237). 12
and field of designs; 18 and that the private respondent had copied some designs of
Pomona. 19
The validily of the patent issued by the Philippines Patent Office in favor of the private
respondent and the question over the inventiveness, novelty and usefulness of the
The Machuca tiles are different from that of the private respondent. The designs are
improved process therein specified and described are matters which are better
embossed and not engraved as claimed by the petitioner. There may be depressions
determined by the Philippines Patent Office. The technical staff of the Philippines
but these depressions are too shallow to be considered engraved. Besides, the
Patent Office, composed of experts in their field, have, by the issuance of the patent in
Machuca tiles are heavy and massive.
question, accepted the thinness of the private respondent's new tiles as a discovery.
There is a presumption that the Philippines Patent Office has correctly determined the
patentability of the improvement by the private respondent of the process in question. There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona tiles
are made of ceramics. 20 The process involved in making cement tiles is different from
ceramic tiles. Cement tiles are made with the use of water, while in ceramics fire is
Anent this matter, the Court of Appeals said:
used. As regards the allegation of the petitioner that the private respondent copied
some designs of Pomona, suffice it to say that what is in issue here is the process
Appellant has not adduced evidence sufficient to overcome involved in tile making and not the design.
the above established legal presumption of validity or to
warrant reversal of the findings of the lower court relative to
In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the
the validity of the patent in question. In fact, as we have
process and/or improvement being patentable.
already pointed out, the clear preponderance of evidence
bolsters said presumption of validity of appellee's patent.
There is no indication in the records of this case and this Both the trial court and the Court of Appeals found as a fact that the petitioner
Court is unaware of any fact, which would tend to show that Domiciano A. Aguas did infringe de Leon's patent. There is no showing that this case
concrete wall tiles similar to those produced by appellee had falls under one of the exceptions when this Court may overrule the findings of fact of
ever been made by others before he started manufacturing the Court of Appeals. The only issue then to be resolved is the amount of damages
the same. In fact, during the trial, appellant was challenged by that should be paid by Aguas.
appellee to present a tile of the same kind as those produced
by the latter, from any earlier source but, despite the fact that
In its decision the Court of Appeals affirmed the amount of damages awarded by the
appellant had every chance to do so, he could not present
lower court with the modification that the respondent is only entitled to P3,000.00
any. There is, therefore, no concrete proof that the improved
moral damages. 21
process of tile-making described in appellee's patent was
used by, or known to, others previous to his discovery
thereof. 13 The lower court awarded the following damages: 22

The contention of the petitioner Aguas that the letters patent of de Leon was actually a a) P10,020.99 by way of actual damages;
patent for the old and non-patentable process of making mosaic pre-cast tiles is
devoid of merit. De Leon never claimed to have invented the process of tile-making.
The Claims and Specifications of Patent No. 658 show that although some of the steps b) P50,000.00 by way of moral damages;
or parts of the old process of tile making were described therein, there were novel and
inventive features mentioned in the process. Some of the novel features of the private c) P5,000.00 by way of exemplary damages;
respondent's improvements are the following: critical depth, with corresponding
easement and lip width to such degree as leaves the tile as thin as 1/8 of an inch at its
thinnest portion, Ideal composition of cement and fine river sand, among other d) P5,000.00 by way of attomey's fees and
ingredients that makes possible the production of tough and durable wall tiles, though
thin and light; the engraving of deep designs in such a way as to make the tiles e) Costs of suit
decorative, artistic and suitable for wall ornamentation, and the fact that the tiles can
be mass produced in commercial quantities and can be conveniently stock-piled,
handled and packed without any intolerable incidence of breakages. 14 because:

3
 An examination of the books of defendant Aguas made
before a Commissioner reveals that during the period that
Aguas was manufacturing and selling tiles similar to plaintiff's,
he made a gross income of P3,340.33, which can be safely
be considered the amount by which he enriched himself when
he infringed plaintiff's patent. Under Sec. 42 of the Patent
Law any patentee whose rights have been infringed is entitled
to damages which, according to the circumstances of the
case may be in a sum above the amount found as actual
damages sustained provided the award does not exceed
three times the amount of such actual damages. Considering
the wantonness of the infringement committed by the
defendants who knew all the time about the existence of
plaintiff's patent, the Court feels there is reason to grant
plaintiff maximum damages in the sum of P10,020.99. And in
order to discourage patent infringements and to give more
teeth to the provisions of the patent law thus promoting a
stronger public policy committed to afford greater incentives
and protection to inventors, the Court hereby awards plaintiff
exemplary damages in the sum of P5,000.00 to be paid jointly
and severally by defendants. Considering the status of
plaintiff as a reputable businessman, and owner of the
likewise reputed House of Pre-Cast, he is entitled to an award
of moral damages in the sum of P50,000.00. 23
In reducing the amount of moral damages the Court of Appeals said:
As regards the question of moral damages it has been shown
that as a result of the unlawful acts of infringment committed
by defendants, plaintiff was unstandably very sad; he worried
and became nervous and lost concentration on his work in
connection with his tile business (pp. 28, 30, t.s.n., Feb. 28,
1964). In addition, plaintiff's character and reputation have
been unnecessarily put in question because defendants, by
their acts of infringement have created a doubt or suspicion in
the public mind concerning the truth and honesty of plaintiff's
advertisements and public announcements of his valid patent.
Necessarily, said acts of defendants have caused plaintiff
considerable mental suffering, considering especially, the fact
that he staked everything on his pre-cast tile business (p. 36,
t.s.n., Id.) The wantonness and evident bad faith
characterizing defendants' prejudicial acts against plaintiff
justify the assessment of moral damages in plaintiff's favor,
though we do not believe the amount of P50,000.00 awarded
by the lower court is warranted by the circumstances. We feel
that said amount should be reduced to P3,000.00 by way of
compensating appellee for his moral suffering. "Willful injury
to property may be a legal ground for awarding moral
damages if the court should find that, under the
circumstances such damages are justly due" (Art. 2219
NCC).
There is no reason to reduce the amount of damages and attorneys fees awarded by
the trial court as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed
from is hereby affirmed, without pronouncement as to costs.
SO ORDERED.
Makasiar, Guerrero, Melencio-Herrera and Plana, JJ., concur.
Teehankee, J., took no part.
4
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 b. the case being an action for cancellation or invalidation of
of preliminary injunction against private respondent the dispositive portion of which private respondent's Letters Patent over its own aerial fuze,
reads: the proper venue is the Office of the Director of Patents;

WHEREFORE, plaintiffs application for the issuance of a writ c. The trial court acted in grave abuse of discretion and/or in
of preliminary injunction is granted and, upon posting of the excess of jurisdiction in finding that petitioner has fully
corresponding bond by plaintiff in the amount of PHP established its clear title or right to preliminary injunction;
200,000.00, let the writ of preliminary injunction be issued by
the branch Clerk of this Court enjoining the defendant and
d. The trial court acted in grave abuse of discretion and/or in
any and all persons acting on its behalf or by and under its
excess of jurisdiction in granting the preliminary injunction, it
authority, from manufacturing, marketing and/or selling aerial
being disruptive of the status quo; and
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. e. The trial court acted in grave abuse of discretion and/or in
excess of jurisdiction in granting the preliminary injunction
thereby depriving private respondent of its property rights
Private respondent moved for reconsideration but this was denied by the trial court in
over the patented aerial fuze and cause it irreparable
its Order 9 of May 11, 1994, pertinent portions of which read:
damages.

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.
WHEREFORE, premises considered, the Motion for
Reconsideration is hereby denied for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a petition for certiorari,
mandamus and prohibition 10 before respondent Court of Appeals raising as grounds
the following:
On November 9, 1994, the respondent court rendered the now assailed decision
reversing the trial court's Order of December 29, 1993 and dismissing the complaint
filed by petitioner.
The motion for reconsideration was also denied on January 17, 1995. 11 Hence, this
present petition.
It is petitioner's contention that it can file, under Section 42 of the Patent Law (R.A.
165), an action for infringement not as a patentee but as an entity in possession of a
right, title or interest in and to the patented invention. It advances the theory that while
the absence of a patent may prevent one from lawfully suing another for infringement
of said patent, such absence does not bar the first true and actual inventor of the
patented invention from suing another who was granted a patent in a suit for
declaratory or injunctive relief recognized under American patent laws. This remedy,
petitioner points out, may be likened to a civil action for infringement under Section 42
of the Philippine Patent Law.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
Sec. 42. Civil action for infringement. — Any patentee, or
anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may
bring a civil action before the proper Court of First Instance
(now Regional Trial court), to recover from the infringer
damages sustained by reason of the infringement and to
secure an injunction for the protection of his right. . . .
Under the aforequoted law, only the patentee or his successors-in-interest may file an
action for infringement. The phrase "anyone possessing any right, title or interest in
and to the patented invention" upon which petitioner maintains its present suit, refers
only to the patentee's successors-in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name of the person or persons
interested, whether as patentee, assignees, or as grantees, of the exclusive right. 12
Moreover, 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. 13 In short, a person or entity who has not been granted letters
patent over an invention and has not acquired any light or title thereto either as
assignee or as licensee, has no cause of action for infringement because the right to
maintain an infringement suit depends on the existence of the patent. 14

a. Petitioner has no cause of action for infringement against

private respondent, the latter not having any patent for the
aerial fuze which it claims to have invented and developed
and allegedly infringed by private respondent;

5
Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or ROMERO, J.:
cause of action to institute the petition for injunction and damages arising from the
alleged infringement by private respondent. While petitioner claims to be the first
Through this petition for review in certiorari of a decision of the Court of Appeals
inventor of the aerial fuze, still it has no right of property over the same upon which it
affirming the decision of the trial court, petitioner Pascual Godines seeks to reverse
can maintain a suit unless it obtains a patent therefor. Under American jurisprudence,
the adverse decision of the Court a quo that he was liable for infringement of patent
an inventor has no common-law right to a monopoly of his invention. He has the right
and unfair competition. The dispositive portion of the assailed decision is hereby
to make, use and vend his own invention, but if he voluntarily discloses it, such as by
quoted to wit:
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, using or selling the invention. 15 WHEREFORE, with the elimination of the award for attorney's
fees, the judgment appealed from is hereby AFFIRMED, with
costs against appellant. 1
Further, the remedy of declaratory judgment or injunctive suit on patent invalidity relied
upon by petitioner cannot be likened to the civil action for infringement under Section
42 of the Patent Law. The reason for this is that the said remedy is available only to The patent involved in this case is Letters Patent No. UM-2236 issued by the
the patent holder or his successors-in-interest. Thus, anyone who has no patent over Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a
an invention but claims to have a right or interest thereto can not file an action for utility model for a hand tractor or power tiller, the main components of which are the
declaratory judgment or injunctive suit which is not recognized in this jurisdiction. Said following: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle;
person, however, is not left without any remedy. He can, under Section 28 of the (3) a pair of paddy wheels; (4) a protective water covering for the engine main drive;
aforementioned law, file a petition for cancellation of the patent within three (3) years (5) a transmission case; (6) an operating handle; (7) an engine foundation on the top
from the publication of said patent with the Director of Patents and raise as ground midportion of the vacuumatic housing float to which the main engine drive is
therefor that the person to whom the patent was issued is not the true and actual detachedly installed; (8) a frontal frame extension above the quarter — circularly
inventor. Hence, petitioner's remedy is not to file an action for injunction or shaped water covering hold (sic) in place the transmission case; (9) a V-belt
infringement but to file a petition for cancellation of private respondent's patent. connection to the engine main drive with transmission gear through the pulley, and
Petitioner however failed to do so. As such, it can not now assail or impugn the validity (10) an idler pulley installed on the engine foundation." 2 The patented hand tractor
of the private respondent's letters patent by claiming that it is the true and actual works in the following manner: "the engine drives the transmission gear thru the V-belt,
inventor of the aerial fuze. 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
Thus, as correctly ruled by the respondent Court of Appeals in its assailed decision:
wheels are attached. The operator handles the hand tractor through a handle which is
"since the petitioner (private respondent herein) is the patentee of the disputed
inclined upwardly and supported by a pair of substanding pipes and reinforced by a U-
invention embraced by letters of patent UM No. 6938 issued to it on January 23, 1990
shaped G.I. pipe at the V-shaped end." 3
by the Bureau of Patents, it has in its favor not only the presumption of validity of its
patent, but that of a legal and factual first and true inventor of the invention."
The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc.,
herein private respondent, from Magdalena Villaruz, its chairman and president, by
In the case of Aguas vs. De Leon, we stated that:
16
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
The validity of the patent issued by the Philippine Patent newspaper of general circulation.
Office in favor of the private respondent and the question over
the investments, novelty and usefulness of the improved
In accordance with the patent, private respondent manufactured and sold the patented
process therein specified and described are matters which
power tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered a
are better determined by the Philippines Patent Office. The
decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon
technical Staff of the Philippines Patent Office, composed of
investigation, it discovered that power tillers similar to those patented by private
experts in their field, have, by the issuance of the patent in
respondent were being manufactured and sold by petitioner herein. Consequently,
question, accepted the thinness of the private respondent's
private respondent notified Pascual Godines about the existing patent and demanded
new tiles as a discovery. There is a presumption that the
that the latter stop selling and manufacturing similar power tillers. Upon petitioner's
Philippine Patent Office has correctly determined the
failure to comply with the demand, SV-Agro Industries filed before the Regional Trial
patentability of the improvement by the private respondent of
Court a complaint for infringement of patent and unfair competition.
the process in question.

After trial, the court held Pascual Godines liable for infringement of patent and unfair
In fine, in the absence of error or abuse of power or lack of jurisdiction or grave abuse
competition. The dispositive portion of the decision reads as follows:
of discretion, we sustain the assailed decision of the respondent Court of Appeal.

WHEREFORE, premises considered, JUDGMENT is hereby

WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No
rendered in favor of the plaintiff SV-Agro Industries
pronouncement as to costs.
Enterprises, Inc., and against defendant Pascual Godines:

SO ORDERED.
1. Declaring the writ of preliminary injunction issued by this
Court against defendant as permanent;
Regalado, Melo, Puno and Mendoza, JJ., concur.
2. Ordering defendant Pascual Godines to pay plaintiff the
G.R. No. 97343 September 13, 1993 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
PASCUAL GODINES, petitioner,
during the period defendant was manufacturing and selling
vs.
copied or imitation floating power tiller;
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-
AGRO ENTERPRISES, INC., respondents.
3. Ordering the defendant to pay the plaintiff, the further sum
of Eight Thousand Pesos (P8,000.00) as reimbursement of
Jesus S. Anonat for petitioner.
attorney's fees and other expenses of litigation; and to pay
the costs of the suit.
Arturo M. Alinio for private respondent.

6
 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:
7
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 V-shaped 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 occurs when a device appropriates a prior
invention by incorporating its innovative concept and, albeit with some modification
and change, performs substantially the same function in substantially the same way to
achieve substantially the same result." 13 The reason for the doctrine of equivalents is
that to permit the imitation of a patented invention which does not copy any literal
detail would be to convert the protection of the patent grant into a hollow and useless
thing. Such imitation would leave room for — indeed encourage — the unscrupulous
copyist to make unimportant and insubstantial changes and substitutions in the patent
which, though adding nothing, would be enough to take the copied matter outside the
claim, and hence outside the reach of the law. 14
In this case, the trial court observed:
Defendant's witness Eduardo Cañete, employed for 11 years
as welder of the Ozamis Engineering, and therefore actually
involved in the making of the floating power tillers of
defendant tried to explain the difference between the floating
power tillers made by the defendant. But a careful
examination between the two power tillers will show that they
will operate on the same fundamental principles. And,
according to establish jurisprudence, in infringement of
patent, similarities or differences are to be determined, not by
the names of things, but in the light of what elements do, and
substantial, rather than technical, identity in the test. More
specifically, it is necessary and sufficient to constitute
 equivalency that the same function can be performed in Feliciano, J., is on leave.
substantially the same way or manner, or by the same or
substantially the same, principle or mode of operation; but
where these tests are satisfied, mere differences of form or
name are immaterial. . . . 15

It also stated:
G.R. L-45101 November 28, 1986
To establish an infringement, it is not essential to show that
the defendant adopted the device or process in every ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
particular; Proof of an adoption of the substance of the thing vs.
will be sufficient. "In one sense," said Justice Brown, "it may THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.
be said that no device can be adjudged an infringement that
does not substantially correspond with the patent. But another
construction, which would limit these words to exact Ambrosio Padilla Law Offices for petitioner.
mechanism described in the patent, would be so obviously
unjust that no court could be expected to adopt it. . . . PARAS, J.:p

The law will protect a patentee against imitation of his patent
by other forms and proportions. If two devices do the same
work in substantially the same way, and accomplish
substantially the same result, they are the same, even though
they differ in name, form, or shape. 16
We pronounce petitioner liable for infringement in accordance with Section 37 of
Republic Act No. 165, as amended, providing, inter alia:
Sec. 37. Right of Patentees. — A patentee shall have the
exclusive right to make, use and sell the patented machine,
article or product, and to use the patented process for the
purpose of industry or commerce, throughout the territory of
the Philippines for the terms of the patent; and such making,
using, or selling by any person without the authorization of
the Patentee constitutes infringement of the patent.
(Emphasis ours)
As far as the issue regarding unfair competition is concerned, suffice it to say that
Republic Act No. 166, as amended, provides, inter alia:
Sec. 29. Unfair competition, rights and remedies. — . . .
xxx xxx xxx
In particular, and without in any way limiting the scope of
unfair competition, the following shall be deemed guilty of
unfair competition:
(a) Any person, who in selling his goods shall give them the
general appearance of goods of another manufacturer or
dealer, either as to the goods themselves or in the wrapping
of the packages in which they are contained, or the devices or
words thereon, or in any other feature of their appearance,
which would be likely to influence purchasers that the goods
offered are those of a manufacturer or dealer other than the
actual manufacturer or dealer, or who otherwise clothes the
goods with such appearance as shall deceive the public and
defraud another of his legitimate trade. . . .
xxx xxx xxx
Considering the foregoing, we find no reversible error in the decision of the Court of
Appeals affirming with modification the decision of the trial court.
WHEREFORE, premises considered, the decision of the Court of Appeals is hereby
AFFIRMED and this petition DENIED for lack of merit.
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).

Bidin, Melo and Vitug, JJ., concur.

8
In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with In an Order dated September 11, 1975, the trial court denied private respondent's
injunction and preliminary injunction against private respondent with the then Court of motion for reconsideration (Annex "N", Rollo, p. 142).
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
In challenging these Orders private respondent filed a petition for certiorari with the
injunction be immediately issued (Complaint, Rollo, p. 90).
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
In her answer, private respondent alleged that the products she is manufacturing and be restrained from enforcing or continuing to enforce the following:
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
(1) Order dated September 18, 1974,
petitioner's patents in question are void on the following grounds:
granting the preliminary injunction;

(1) at the time of filing of application

(2) Writ of preliminary injunction
for the patents involved, the utility
dated September 18, 1974; and
models applied for were not new and
patentable under Sec. 55 of R.A.
165, as amended by R.A. 864; and (3) Order dated September 11, 1974
denying petitioner's motion petition
for reconsideration.
(2) the person to whom the patents
were issued was not the true and
actual author of the utility models On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent
applied for, and neither did she Court of Appeals as follows:
derive her rights from any true and
actual author of these utility models.
NOW, THEREFORE, you, respondents, and/or any
person/persons acting on your stead, are hereby ENJOINED
for the following reasons: 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
(a) since years prior to the filing of
injunction; 2) Writ of Preliminary Injunction dated September
applications for the patents involved,
18, 1974; and Order dated September 11, 1975, denying
powder puffs of the kind applied for
petitioner's motion for reconsideration, all issued in
were then already existing and
connection with Civil Case No. 19908, UNTIL FURTHER
publicly being sold in the market;
ORDERS FROM THIS COURT. (Annex "P", Rollo, p. 1.73)
both in the Philippines and abroad;
and
On February 16, 1976, respondent court promulgated a decision the dispositive
portion of which reads:
(b) applicant's claims in her
applications, of "construction" or
process of manufacturing the utility WHEREFORE, finding no merit in the herein petition, the
models applied for, with respect to same is hereby dismissed and the preliminary injunction
UM-423 and UM-450, were but a previously issued by this Court is hereby set aside, with costs.
complicated and impractical version
of an old, simple one which has
SO ORDERED. (CA Decision, Rollo, p. 189).
been well known to the cosmetics
industry since years previous to her
filing of applications, and which ln said decision respondent court stated that in disposing of the petition it tackled only
belonged to no one except to the the issue of whether the court a quo acted with grave abuse of discretion in issuing the
general public; and with respect to challenged orders. It made clear the question of whether the patents have been
UM1184; her claim in her application infringed or not was not determined considering the court a quo has yet to decide the
of a unitary powder puff, was but an case on the merits (Ibid., p. 186).
limitation of a product well known to
the cosmetics industry since years
previous to her firing of application, Feeling aggrieved, private respondent moved to reconsider the afore-mentioned
and which belonged to no one Decision based on the following grounds:
except to the general public;
(Answer, Rollo, pp. 93-94). I

On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125) THAT THIS HONORABLE COURT
granting the preliminary injunction prayed for by petitioner. Consequently, the ERRED IN NOT APPRECIATING
corresponding writ was subsequently issued (Annex "K-1", Rollo, p. 131) enjoining the THE EXISTENCE OF A FAIR
herein private respondent (then defendant) and all other persons employed by her, her QUESTION OF INVALIDITY OF
agents, servants and employees from directly or indirectly manufacturing, making or PRIVATE RESPONDENT'S
causing to be made, selling or causing to be sold, or using or causing to be used in PATENTS.
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 II
patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).
THAT THIS HONORABLE COURT
Private respondent questioned the propriety of the trial court's issuance of the Writ of ERRED IN NOT REJECTING THE
Preliminary Injunction arguing that since there is still a pending cancellation THEORY OF RESPONDENT
proceedings before the Philippine Patent Office concerning petitioner's patents, such JUDGE THAT HE HAS NO
cannot be the basis for preliminary injunction (Motion for Reconsideration, Rollo, p. JURISDICTION TO INVALIDATE
132). THE PATENTS UPON GROUND OF

9
 LACK OF NOVELTY OF THE Under the present Patent Law, there is even less reason to doubt that the trial court
PRODUCTS PATENTED. (Motion has jurisdiction to declare the patents in question invalid. A patentee shall have the
for Reconsideration, Rollo, p. 190). exclusive right to make, use and sell the patented article or product and the making,
using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
Reviewing on reconsideration, respondent court gave weight to private respondent's
infringed upon may bring an action before the proper CFI now (RTC) and to secure an
allegation that the latter's products are not identical or even only substantially identical
injunction for the protection of his rights (Sec. 42, R.A. 165). Defenses in an action for
to the products covered by petitioner's patents. Said court noticed that contrary to the
infringement are provided for in Section 45 of the same law which in fact were availed
lower courts position that the court a quo had no jurisdiction to determine the question
of by private respondent in this case. Then, as correctly stated by respondent Court of
of invalidity of the patents, Section 45 and 46 of the Patent Law allow the court to
Appeals, this conclusion is reinforced by Sec. 46 of the same law which provides that if
make a finding on the validity or invalidity of patents and in the event there exists a fair
the Court shall find the patent or any claim thereof invalid, the Director shall on
question of its invalidity, the situation calls for a denial of the writ of preliminary
certification of the final judgment ... issue an order cancelling the patent or the claims
injunction pending the evaluation of the evidence presented (Rollo, pp. 218-226).
found invalid and shall publish a notice thereof in the Official Gazette." Upon such
Thus, finding the lower court's position to have been opposed to Patent Law,
certification, it is ministerial on the part of the patent office to execute the judgment.
respondent court considered it a grave abuse of discretion when the court a quo
(Rollo, pp. 221-222).
issued the writ being questioned without looking into the defenses alleged by herein
private respondent. Further, it considered the remedy of appeal, under the
circumstances, to be inadequate. II.

Thus, on July 6, 1976, respondent court made a complete turnabout from its original
decision and promulgated a Resolution, the dispositive portion of which reads:
WHEREFORE, our decision is hereby set aside. The writ of
certiorari is ordered issued. Accordingly, the challenged
orders, Exhibit H and H-1 and the order denying the motion
for reconsideration (Annex "K", Petition), are hereby set
aside. The writ of preliminary injunction previously ordered by
this Court and ordered lifted by the Decision now being set
aside is hereby reinstated and made permanent. Without
pronouncement as to costs.
SO ORDERED. (CA Resolution, Rollo, p. 226).
In a Resolution dated November 4, 1976, respondent court, not persuaded by the
grounds embodied in the motion for reconsideration filed by herein petitioner (Annex
"V ", Rollo, p. 227), denied the same for lack of merit, thereby maintaining the same
stand it took in its July 6, 1976 Resolution (Rollo, p. 281). Hence, this petition.
The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form,
there is created a prima facie presumption of its correctness and validity. The decision
of the Commissioner (now Director) of Patent in granting the patent is presumed to be
correct. The burden of going forward with the evidence (burden of evidence) then
shifts to the defendant to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced by
private respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of
five witnesses presented by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as well as those presented by
the petitioner, respondent Court of Appeals was satisfied that there is a prima facie
showing of a fair question of invalidity of petitioner's patents on the ground of lack of
novelty. As pointed out by said appellate court said evidence appeared not to have
been considered at all by the court a quo for alleged lack of jurisdiction, on the
mistaken notion that such question in within the exclusive jurisdiction of the patent
office.

On December 3, 1976, without giving due course to the petition, this Court required
It has been repeatedly held that an invention must possess the essential elements of
respondent to file her Comment (Rollo, p. 290) which was filed on December 16, 1976
novelty , originality and precedence and for the patentee to be entitled to protection,
(Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and on May
the invention must be new to the world. Accordingly, a single instance of public use of
30, 1977, the petition was given due course (Rollo, p. 345). Petitioner filed her brief on
the invention by a patentee for more than two years (now for more than one year only
July 14, 1977 (Rollo, p. 351) while private respondent filed her brief on August 25,
under Sec. 9 of the Patent Law) before the date of his application for his patent, will be
1977 (Rollo, p. 359). Thereafter, petitioner having failed to file reply brief, the Court
fatal to, the validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v.
resolved to declare the case submitted for decision on December 9, 1977 (Rollo, p.
F.M. Yaptico & Co. and Vargas v. Chua, et al., supra).
359).

The law provides:

The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16) may be
reduced to three main issues:
(1) Whether or not in an action for
infringement the Court a quo had
jurisdiction to determine the invalidity
of the patents at issue which
invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo
committed grave abuse of discretion
in the issuance of a writ of
preliminary injunction.
(3) Whether or not certiorari is the
proper remedy.
The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior
use, and each of them, are open to judicial examination." (Vargas v. F.M. Yaptico &
Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v.
Kosuyana 59 Phil. 207 [1933]).
SEC. 9. Invention not considered new or patentable. — An
invention shall not be considered new or capable of being
patented if it was known or used by others in the Philippines
before the invention thereof by the inventor named in an
application for patent for the invention; or if it was patented or
described in any printed publication in the Philippines or any
foreign country more than one year before the application for
a patent therefor; or if it had been in public use or on sale in
the Philippines for more than one year before the application
for a patent therefor; or if it is the subject matter of a validity
issued patent in the Philippines granted on an application filed
before the filing of the application for patent therefor.
Thus, more specifically, under American Law from which our Patent Law was derived
(Vargas v. F.M. Yaptico & Co. supra) it is generally held that in patent cases a
preliminary injunction will not issue for patent infringement unless the validity of the
patent is clear and beyond question. The issuance of letters patent, standing alone, is
not sufficient to support such drastic relief (8 Deller's Walker on Patents p. 406). In
cases of infringement of patent no preliminary injunction will be granted unless the
patent is valid and infringed beyond question and the record conclusively proves the
defense is sham. (Ibid., p. 402)

10
In the same manner, under our jurisprudence, as a general rule because of the SO ORDERED.
injurious consequences a writ of injunction may bring, the right to the relief demanded
must be clear and unmistakable. (Sangki v. Comelec, 21 SCRA 1392; December 26,
Feria (Chairman), Fernan, Gutierrez, Jr., and Feliciano, * JJ., concur.
1967) and the dissolution of the writ is proper where applicant has doubtful title to the
disputed property. (Ramos v. C.A., 95 SCRA 359).
Alampay, J., took no part.  
III.
G.R. No. 113388 September 5, 1997
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that ANGELITA MANZANO, petitioner,
covered by petitioner's patents existed and were publicly known and used as early as vs.
1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo, COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED
pp. 194-199). As correctly observed by respondent Court of Appeals, "since sufficient FOUNDRY MANUFACTURING CORPORATION, respondents.
proofs have been introduced in evidence showing a fair question of the invalidity of the
patents issued for such models, it is but right that the evidence be looked into,
BELLOSILLO, J.:
evaluated and determined on the merits so that the matter of whether the patents
issued were in fact valid or not may be resolved." (Rollo, pp. 286-287).
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
All these notwithstanding, the trial court nonetheless issued the writ of preliminary
useful knowledge and one of the purposes of the patent system is to encourage
injunction which under the circumstances should be denied.
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
For failure to determine first the validity of the patents before aforesaid issuance of the has the presumption of correctness and may not be interfered with in the absence of
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to new evidence carrying thorough conviction that the Office has erred. Since the Patent
issue, namely: the existence of the right to be protected and the violation of said right. Office is an expert body preeminently qualified to determine questions of patentability,
(Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276). 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
Under the above established principles, it appears obvious that the trial court
committed a grave abuse of discretion which makes certiorari the appropriate remedy. 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
As found by respondent Court of Appeals, the injunctive order of the trial court is of so
the letters patent to New United Foundry and Manufacturing Corporation (UNITED
general a tenor that petitioner may be totally barred from the sale of any kind of
FOUNDRY, for brevity). Petitioner alleged that (a) the utility model covered by the
powder puff. Under the circumstances, respondent appellate court is of the view that
letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b)
ordinary appeal is obviously inadequate. (Rollo, p. 288). A parallel was drawn from a
the specification of the letters patent did not comply with the requirements of Sec. 14,
decision of the Supreme Court in the case of Sanchez v. Hon. Court of Appeals, 69
RA No. 165, as amended; (c) respondent Melecia Madolaria was not the original, true
SCRA 328 [1976] where the First Division of the Supreme Court ruled that "The
and actual inventor nor did she derive her rights from the original, true and actual
prerogative writ of certiorari may be applied for by proper petition notwithstanding the
inventor of the utility model covered by the letters patent; and, (d) the letters patent
existence of the regular remedy of an appeal in due cause when among other
was secured by means of fraud or misrepresentation. In support of her petition for
reasons, the broader interests of justice so require or an ordinary appeal is not an
cancellation petitioner further alleged that (a) the utility model covered by the letters
adequate remedy."
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
Private respondent maintains the position that the resolutions sought to be appealed 1979; (b) the products which were produced in accordance with the utility model
from had long become final and executory for failure of Hon. Reynaldo P. Honrado, the covered by the letters patent had been in public use or on sale in the Philippines for
trial court judge, to appeal by certiorari from the resolutions of respondent Court of more than one (1) year before the application for patent therefor was filed.
Appeals. (Rollo, pp. 291-292).
Petitioner presented the following documents which she correspondingly marked as
Such contention is untenable. 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,
There is no dispute that petitioner has seasonably petitioned. On the other hand, it is
USA, marked Exh. "D;" and, (c) a brochure distributed by Esso Gasul or Esso
elementary that the trial judge is a mere nominal party as clearly provided in Section 5,
Standard Eastern, Inc., of the Philippines showing a picture of another similar burner
Rule 65 of the Revised Rules of Court where it shall be the duty of such person or
with top elevation view and another perspective view of the same burner, marked Exh.
persons interested in sustaining the proceedings in court, "to appear and defend, both
"E."
in his or their own behalf and in behalf of the court or judge affected by the
proceedings."

Relative thereto "the judge whose order is under attack is merely a nominal party;
wherefore, a judge in his official capacity should not be made to appear as a party
seeking reversal of a decision that is unfavorable to the action taken by him." (Hon.
Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v.
Argel, 70 SCRA 378).

As to petitioner's claim of prescription, private respondent's contention that such refers

to the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent
Law and not to a defense against an action for infringement under Sec. 45 thereof
which may be raised anytime, is evident under aforesaid law.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are

hereby AFFIRMED.

11
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a testimony of private respondent's sole witness Rolando Madolaria; and, (d) in not
helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be cancelling Letters Patent No. UM-4609 in the name of private respondent.
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
Petitioner submits that the differences cited by the Court of Appeals between the utility
was issued, and that after her husband's separation from the shop she organized
model of private respondent and the models of Manila Gas Corporation and Esso
Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG
Standard Eastern, Inc., are more imaginary than real. She alleges that based on Exhs.
burners one of which had the configuration, form and component parts similar to those
"E," "E-1," "F" and "F-1" or the brochures of Manila Gas Corporation and Esso
being manufactured by UNITED FOUNDRY. Petitioner presented in evidence an
Standard Eastern, Inc., presented by petitioner, the cup-shaped burner mouth and
alleged model of an LPG burner marked Exh. "K" and covered by the Letters Patent of
threaded hole on the side are shown to be similar to the utility model of private
respondent, and testified that it was given to her in January 1982 by one of her
respondent. The exhibits also show a detachable burner mouth having a plurality of
customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also
upwardly existing undulations adopted to act as gas passage when the cover is
presented in evidence her own model of an LPG burner called "Ransome" burner
attached to the top of said cup-shaped mouth all of which are the same as those in the
marked Exh. "L," which was allegedly manufactured in 1974 or 1975 and sold by her in
patented model. Petitioner also denies as substantial difference the short cylindrical
the course of her business operation in the name of BESCO METAL. Petitioner
tube of the burner mouth appearing in the brochures of the burners being sold by
claimed that this "Ransome" burner (Exh. "L") had the same configuration and
Manila Gas Corporation and the long cylindered tube of private respondent's model of
mechanism as that of the model which was patented in favor of private respondent
the gas burner.
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 argues that the actual demonstration made during the hearing disclosed the
similarities in form, operation and mechanism and parts between the utility model of
private respondent and those depicted in the brochures. The findings of the Patent
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and
Office and the Court of Appeals that the brochures of Manila Gas Corporation and
Fidel Francisco. Ong testified that he worked as a helper in the UNITED FOUNDRY
Esso Standard Eastern, Inc., are undated cannot overcome the fact of their circulation
from 1965 to 1970 where he helped in the casting of LPG burners with the same form,
before private respondent filed her application for utility model patent. Petitioner thus
configuration and mechanism as that of the model covered by the Letters Patent
asks this Court to take judicial notice of the fact that Esso Standard Eastern, Inc.,
issued to private respondent. Francisco testified that he had been employed with the
disappeared before 1979 and reappeared only during the Martial Law years as
Manila Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he retired
Petrophil Corporation. Petitioner also emphasizes that the brochures indicated the
as supervisor and that Manila Gas Corporation imported "Ransome" burners way back
telephone number of Manila Gas Corporation as 5-79-81 which is a five (5) numbered
in 1965 which were advertised through brochures to promote their sale.
telephone number existing before 1975 because telephones in Metro Manila started to
have six (6) numbers only after that year.
Private respondent, on the other hand, presented only one witness, Rolando
Madolaria, who testified, among others, that he was the General Supervisor of the
Petitioner further contends that the utility model of private respondent is absolutely
UNITED FOUNDRY in the foundry, machine and buffing section; that in his early years
similar to the LPG burner being sold by petitioner in 1975 and 1976, and also to the
with the company, UNITED FOUNDRY was engaged in the manufacture of different
"Ransome" burner depicted in the old brochures of Manila Gas Corporation and Esso
kinds of gas stoves as well as burners based on sketches and specifications furnished
Standard Eastern, Inc., fabricated by Ransome Torch and Burner Company of
by customers; that the company manufactured early models of single-piece types of
Oakland, California, USA, especially when considered through actual physical
burners where the mouth and throat were not detachable; that in the latter part of 1978
examination, assembly and disassembly of the models of petitioner and private
respondent Melecia Madolaria confided in him that complaints were being brought to
respondent. Petitioner faults the Court of Appeals for disregarding the testimonies of
her attention concerning the early models being manufactured; that he was then
Ong Bun Tua and Fidel Francisco for their failure to produce documents on the alleged
instructed by private respondent to cast several experimental models based on revised
importation by Manila Gas Corporation of "Ransome" burners in 1965 which had the
sketches and specifications; that private respondent again made some innovations;
same configuration, form and mechanism as that of the private respondent's patented
that after a few months, private respondent discovered the solution to all the defects of
model.
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 Finally, it is argued that the testimony of private respondent's lone witness Rolando
the supervision of Melecia Madolaria and they obtained perfect results. Rolando Madolaria should not have been given weight by the Patent Office and the Court of
Madolaria testified that private respondent decided to file her application for utility Appeals because it contained mere after-thoughts and pretensions.
model patent in December 1979.
We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is the law
On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56 on patents, expressly provides —
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
Sec. 7. Inventians patentable. Any invention of a new and useful machine,
anticipated. Not one of the various pictorial representations of business clearly and
manufactured product or substance, process or an improvement of any of
convincingly showed that the devices presented by petitioner was identical or
the foregoing, shall be patentable.
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 Further, Sec. 55 of the same law provides —
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 Sec. 55. Design patents and patents for utility models. — (a) Any new,
also do not support the petitioner's contention that Letters Patent No. UM-4609 was original and ornamental design for an article of manufacture and (b) any
obtained by means of fraud and/or misrepresentation. No evidence whatsoever was new model of implements or tools or of any industrial product or of part of
presented by petitioner to show that the then applicant Melecia Madolaria withheld the same, which does not possess the quality of invention, but which is of
with intent to deceive material facts which, if disclosed, would have resulted in the practical utility by reason of its form, configuration, construction or
refusal by the Philippine Patent Office to issue the Letters Patent under inquiry. 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
Petitioner elevated the decision of the Director of Patents to the Court of Appeals relate to patents for inventions insofar as they are applicable except as
which on 15 October 1993 affirmed the decision of the Director of Patents. Hence, this otherwise herein provided.
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-4609 and the previously known model The element of novelty is an essential requisite of the patentability of an invention or
of Esso Standard Eastern, Inc., and Manila Gas Corporation, making such imaginary discovery. If a device or process has been known or used by others prior to its
differences grounded entirely on speculation, surmises and conjectures; (b) in invention or discovery by the applicant, an application for a patent therefor should be
rendering judgment based on misapprehension of facts; (c) in relying mainly on the denied; and if the application has been granted, the court, in a judicial proceeding in

12
which the validity of the patent is drawn in question, will hold it void and ineffective. 2 It anticipation. It observed that there is no date indicated therein as to when
has been repeatedly held that an invention must possess the essential elements of it was manufactured and/or imported before the filing of the application for
novelty, originality and precedence, and for the patentee to be entitled to the protection issuance of patent of the subject utility model. What is more, some
the invention must be new to the world. 3 component parts of Exh. "M" are missing, as only the cup was presented
so that the same could not be compared to the utility model (subject
matter of this case) which consists of several other detachable parts in
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG Burner" on 22
combination to form the complete LPG burner.
July 1981, the Philippine Patent Office found her invention novel and patentable. The
issuance of such patent creates a presumption which yields only to clear and cogent
evidence that the patentee was the original and first inventor. The burden of proving xxx xxx xxx
want of novelty is on him who avers it and the burden is a heavy one which is met only
by clear and satisfactory proof which overcomes every reasonable doubt. 4 Hence, a
It must likewise be pointed out that Ong Bun Tua testified on the
utility model shall not be considered "new" if before the application for a patent it has
brochures allegedly of Manila Gas and of Esso Gasul marked Exhs. "E"
been publicly known or publicly used in this country or has been described in a printed
and "F" and on the alleged fact that Manila Gas Corporation was importing
publication or publications circulated within the country, or if it is substantially similar to
from the United States "Ransome" burners. But the same could not be
any other utility model so known, used or described within the country. 5
given credence since he himself admitted during cross-examination that
he has never been connected with Manila Gas Corporation. He could not
As found by the Director of Patents, the standard of evidence sufficient to overcome even present any importation papers relating to the alleged imported
the presumption of legality of the issuance of UM-4609 to respondent Madolaria was ransome burners. Neither did his wife. 6
not legally met by petitioner in her action for the cancellation of the patent. Thus the
Director of Patents explained his reasons for the denial of the petition to cancel private
The above findings and conclusions of the Director of Patent were reiterated and
respondent's patent —
affirmed by the Court of Appeals. 7

Scrutiny of Exhs. "D" and "E" readily reveals that the utility model (LPG
The validity of the patent issued by the Philippine Patent Office in favor of private
Burner) is not anticipated. Not one of the various pictorial representations
respondent and the question over the inventiveness, novelty and usefulness of the
of burners clearly and convincingly show that the device presented therein
improved model of the LPG burner are matters which are better determined by the
is identical or substantially identical in construction with the aforesaid
Patent Office. The technical staff of the Philippine Patent Office composed of experts
utility model. It is relevant and material to state that in determining whether
in their field has by the issuance of the patent in question accepted private
novelty or newness is negatived by any prior art, only one item of the prior
respondent's model of gas burner as a discovery. There is a presumption that the
art may be used at a time. For anticipation to occur, the prior art must
Office has correctly determined the patentability of the model 8 and such action must
show that each element is found either expressly or described or under
not be interfered with in the absence of competent evidence to the contrary.
principles of inherency in a single prior art reference or that the claimed
invention was probably known in a single prior art device or practice.
(Kalman v. Kimberly Clark, 218 USPQ 781, 789) The rule is settled that the findings of fact of the Director of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported by
substantial evidence. Petitioner has failed to show compelling grounds for a reversal of
Even assuming gratia arguendi that the aforesaid brochures do depict
the findings and conclusions of the Patent Office and the Court of Appeals.
clearly on all fours each and every element of the patented gas burner
device so that the prior art and the said patented device become identical,
although in truth they are not, they cannot serve as anticipatory bars for The alleged failure of the Director of Patents and the Court of Appeals to accord
the reason that they are undated. The dates when they were distributed to evidentiary weight to the testimonies of the witnesses of petitioner showing anticipation
the public were not indicated and, therefore, they are useless prior art is not a justification to grant the petition. Pursuant to the requirement of clear and
references. convincing evidence to overthrow the presumption of validity of a patent, it has been
held that oral testimony to show anticipation is open to suspicion and if uncorroborated
by cogent evidence, as what occurred in this case, it may be held insufficient. 9
xxx xxx xxx

Finally, petitioner would want this Court to review all over again the evidence she
Furthermore, and more significantly, the model marked Exh. "K" does not
presented before the Patent Office. She argues that contrary to the decision of the
show whether or not it was manufactured and/or cast before the
Patent Office and the Court of Appeals, the evidence she presented clearly proves that
application for the issuance of patent for the LPG burner was filed by
the patented model of private respondent is no longer new and, therefore, fraud
Melecia Madolaria.
attended the acquisition of patent by private respondent.

With respect to Exh. "L," petitioner claimed it to be her own model of LPG
It has been held that the question on priority of invention is one of fact. Novelty and
burner allegedly manufactured sometime in 1974 or 1975 and sold by her
utility are likewise questions of fact. The validity of patent is decided on the basis of
in the course of her business operation in the name of Besco Metal
factual inquiries. Whether evidence presented comes within the scope of prior art is a
Manufacturing, which burner was denominated as "Ransome" burner
factual issue to be resolved by the Patent Office. 10 There is question of fact when the
doubt or difference arises as to the truth or falsehood of alleged facts or when the
xxx xxx xxx query necessarily invites calibration of the whole evidence considering mainly the
credibility of witnesses, existence and relevance of specific surrounding
circumstances, their relation to each other and to the whole and the probabilities of the
But a careful examination of Exh. "L" would show that it does not bear the
situation. 11
word "Ransome" which is the burner referred to as the product being sold
by the Petitioner. This is not the way to prove that Exh. "L" anticipates
Letters Patent No. UM-4609 through Exhs. "C" and "D." Another factor Time and again we have held that it is not the function of the Supreme Court to
working against the Petitioner's claims is that an examination of Exh. "L" analyze or weigh all over again the evidence and credibility of witnesses presented
would disclose that there is no indication of the time or date it was before the lower tribunal or office. The Supreme Court is not a trier of facts. Its
manufactured. This Office, thus has no way of determining whether Exh. jurisdiction is limited to reviewing and revising errors of law imputed to the lower court,
"L" was really manufactured before the filing of the aforesaid application its findings of fact being conclusive and not reviewable by this Court.
which matured into Letters Patent No. UM-4609, subject matter of the
cancellation proceeding.
WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals affirming
that of the Philippine Patent Office is AFFIRMED. Costs against petitioner.
At this juncture, it is worthwhile to point out that petitioner also presented
Exh. "M" which is the alleged burner cup of an imported "Ransome"
SO ORDERED.
burner. Again, this Office finds the same as unreliable evidence to show
13
Vitug, Kapunan and Hermosisima, Jr., JJ., concur. (a) and (c), in relation to Section 169 of RA 8293, 5[5] also known as the Intellectual

Property Code.6[6]
Footnotes
After examination of the applicant and his witnesses, namely, Max

Cavalera and David Lee Sealey, Judge Lourdes F. Gatbalite issued Search Warrant
PEOPLE OF THE PHILIPPINES, G.R. No. 152950
HON. LOURDES F. GATBALITE, No. 99-17 dated April 27, 1999 worded as follows:
Presiding Judge, Branch 56,
Regional Trial Court, Angeles
City and ATTY. BENNIE NICDAO, TO ANY PEACE OFFICER:
Special Prosecutor, Special
Operative Group, Economic G r e e t i n g s:
Intelligence & Investigation
Bureau, It appearing to the satisfaction of the
Petitioners, undersigned, after examining under oath in the form of
Present: searching and probing questions, the applicant, MARIO P.
NIETO, Intelligence Operative, Economic Intelligence
-versus- Investigation Bureau, Department of Finance, and his
witnesses Max Cavalera and David Lee Sealey that there
CHRISTOPHER CHOI, are good and sufficient reasons to believe that Christopher
Respondent. Choi of No. 25-13 Columbia Street, Carmenville Subd.,
Angeles City has in his possession, control and custody
Promulgated: [r]eams and packs of fake Marlboro Red Cigarettes, as well
as cardboard cases of fake Marlboro Red Cigarettes (each
August 3, 2006 cardboard case contains two (2) [m]aster [c]ases of Marlboro
x------------------------------------------ x and each [m]aster case contains fifty (50) reams) being
distributed, kept and sold thereat in violation of Section 168,
DECISION par. 2 and 3 (a) and (c) in relation to Section 169 of R.A.
8293;
CORONA, J.:
You are hereby commanded to make an
immediate search at anytime of the day or night of the
above-premises and forthwith seize and take possession of
This petition for review on certiorari1[1] seeks the reversal of the decision2[2] the aforedescribed items found at the residence/warehouse
of Christopher Choi at No. 25-13 Columbia Street,
of the Court of Appeals (CA) dated April 10, 2002 in CA-G.R. SP No. 59587, the Carmenville Subd., Angeles City.

dispositive portion of which read: THEREFORE, seize and bring the said articles
to the undersigned to be dealt with in accordance with law.

WHEREFORE, the petition for certiorari and You are hereby further directed to submit a
prohibition is GRANTED. Search Warrant No. 99-17 is return within ten (10) days from today.
deemed NULL and VOID and SET ASIDE. Respondent
ATTY. BENNY NICDAO is prohibited from using in evidence Given under my hand this 27th day of April, 1999
the articles seized by virtue of Search Warrant No. 99-17 in at Angeles City, Philippines.7[7]
Crim. Case No. I.S. No. 99-8116.

SO ORDERED.3[3] The search was conducted on the same date.8[8]

On May 12, 1999, respondent filed a “motion to quash search warrant” 9[9]
The factual antecedents follow.
and a “supplemental motion to quash”10[10] on June 22, 1999. Both were denied by

On April 27, 1999, Mario P. Nieto, Intelligence Operative of the Economic Judge Gatbalite in an order dated November 29, 1999. 11[11] Reconsideration was

Intelligence and Investigation Bureau, Department of Finance, applied for a search likewise denied.12[12]

warrant with the Regional Trial Court (RTC) of Angeles City, Pampanga, Branch 56, 4[4]

against respondent Christopher Choi for violation of Section 168, paragraphs 2 and 3
5
6
7
8
1 9
2 10
3 11
4 12

14
 On June 19, 2000, respondent filed a petition for certiorari and A Yes, your Honor.

prohibition13[13] before the CA. He alleged that Judge Gatbalite committed grave abuse Court:

of discretion in refusing to quash the search warrant, arguing that probable cause was That’s all.17[17]

not sufficiently established as the examination conducted was not probing and
In addition, the CA ruled that Judge Gatbalite committed grave abuse of
exhaustive and the warrant did not particularly describe the place to be searched.
discretion when she merely relied on the conclusion of Sealey that the cigarettes he
Respondent also prayed that Atty. Bennie Nicdao14[14] be prohibited from using as
received from Nieto were fake. She should have at least required Sealey to present
evidence the articles seized by virtue of the search warrant. This was granted by the
the alleged fake Marlboro cigarettes and the genuine ones for comparison, instead of
CA in a decision dated April 10, 2002.
relying on his testimony alone. The CA reasoned that this was an absolute

According to the CA, in determining whether there was probable cause to requirement under the Supreme Court ruling in 20th Century Fox Film Corporation v.

believe that the cigarettes purchased by Nieto were fake and in violation of RA 8293, 15 Court of Appeals.18[18]
[15]
Judge Gatbalite failed to ask searching and probing questions of witness David Lee
Hence, this petition.
Sealey.16[16] The examination of Sealey went this way:

The People of the Philippines aver that the CA erred in finding that Judge
Court:
Gatbalite committed grave abuse of discretion in issuing the search warrant allegedly
Q There was testimony here given by Mr. Mario
Nieto and Max Cavalera, that fake Marlboro because she failed to determine probable cause pursuant to Sections 4 and 5 of Rule
cigarettes bought by them from Michael Chua,
Christopher Choi and Johnny Chang were 126 of the Rules of Court.19[19] The People assail the finding of the CA that, in issuing
turned over to you for examination, is that
correct? the search warrant, Judge Gatbalite purportedly did not comply strictly with the
A Yes, your Honor.
requirement to determine the existence of probable cause by personally examining the
Q After the same had been turned over to you,
what did you do with the said merchandise, if applicant and his witnesses through searching questions and answers. The People
you did anything?
A I examined the sample of cigarettes and their also assert that the CA erred in applying the doctrine in 20th Century Fox Film
packaging bearing the Marlboro Trade Marks
which were suspected to be produc[ed] and Corporation20[20] since it had already been superseded by Columbia Pictures, Inc. v.
manufactured by La Suerte or [with] the
permission of Philip Morris. Court of Appeals.21[21]

Q What was the result of your examination? We rule for the People of the Philippines.
A Based on the packaging of the packs, the color
of the box and the printing on the front side of
the packs and the cigarettes themselves, I Sections 4 and 5 of Rule 126 state:
concluded that they are counterfeit or
unauthorized product[s].
Sec. 4. Requisites for issuing search
Q Do you have any knowledge of this person warrant. — A search warrant shall not issue except upon
named Christopher Choi? probable cause in connection with one specific offense to be
A None, your Honor. determined personally by the judge after examination under
oath or affirmation of the complainant and the witnesses he
Q There is an affidavit here marked as exhibit, may produce, and particularly describing the place to be
executed by one David Lee Sealey, do you searched and the things to be seized which may be anywhere
know this David Lee Sealey? in the Philippines.
A Yes, your Honor, I am the one.
Sec. 5. Examination of complainant; record.
Q Whose signature is this appearing on the — The judge must, before issuing the warrant, personally
printed name David Lee Sealey? examine in the form of searching questions and answers, in
A This is my signature, your Honor. writing and under oath, the complainant and the witnesses he
may produce on facts personally known to them and attach to
Q Do you affirm and confirm other contents of this
affidavit?
17
13 18
14 19
15 20
16 21

15
 the record their sworn statements, together with the affidavits rule for its determination exists.29[29] Probable cause is determined in the light of
submitted.
conditions obtaining in a given situation. 30[30] The entirety of the questions propounded

According to the foregoing provisions, a search warrant can be issued only upon a by the court and the answers thereto must be considered by the judge. 31[31]

finding of probable cause. Probable cause means such facts and circumstances which
In this case, aside from the testimony of Sealey, petitioner judge also
would lead a reasonably discreet and prudent man to believe that an offense has been
heard the testimony of applicant Nieto:
committed and that the objects sought in connection with the offense are in the place

sought to be searched.22[22] The determination of the existence of probable cause Q: In connection with Search Warrant 99-17, are
you the same Mario Nieto who is the applicant
requires the following: in this application for search warrant filed today
April 27, 1999?
(1) the judge must examine the complainant and his witnesses A: Yes, your Honor.

personally; Q: Do you know this Christopher Choi referred to

herein?
(2) the examination must be under oath and A: Yes, your Honor.

(3) the examination must be reduced in writing in the form of

Q: Why do you know him?
searching questions and answers. 23[23] A: He was introduced to us by Michael Chua, your
Honor.

The searching questions propounded to the applicant and the witnesses Q: As what?
A: As the supplier for the goods.
depend largely on the discretion of the judge. Although there is no hard-and-fast rule
Q: Subject of the application?
governing how a judge should conduct his examination, it is axiomatic that the A: Yes, your Honor, in violation of Section 169 of
R.A. 8293.
examination must be probing and exhaustive, not merely routinary, general,
Q: How did you know him?
peripheral, perfunctory or pro-forma.24[24] The judge must not simply rehash the A: When I was conducting a test-buy operation
against Mr. Michael Chua, Mr. Michael Chua
contents of the affidavit but must make his own inquiry on the intent and justification of told me that the bulk of supply if we need more
supply we can get from the source, a certain
the application.25[25] The questions should not merely be repetitious of the averments Christopher Choi, who lives in the same village
and who is actually the supplier for the entire
stated in the affidavits or depositions of the applicant and the witnesses. 26[26] If the region.

judge fails to determine probable cause by personally examining the applicant and his Q: Where did you see him. This Christopher Choi?
A: I went to his house, your Honor.
witnesses in the form of searching questions before issuing a search warrant, grave
Q: Where?
abuse of discretion is committed.27[27] A: At No. 25-13 Columbia St., Carmenville Subd.,
Angeles City, Pampanga.

The determination of probable cause does not call for the application of Q: Upon arriving at the place what did you do?
A: Upon arriving at the place, your Honor, I
rules and standards of proof that a judgment of conviction requires after trial on the introduced myself as the one who was referred
by a certain Michael Chua who is interested in
merits. As the term implies, probable cause is concerned with probability, not absolute buying the Marlboro cigarettes from him and he
accommodated me and showed me the sample
or even moral certainty.  The standards of judgment are those of a reasonably prudent that he has and I was able to procure the
samples from him, the samples that like what
man, not the exacting calibrations of a judge after a full-blown trial.28[28] No law or rule we did to the others were inspected by certain
Mr. David Lee Sealey, the representative and
states that probable cause requires a specific kind of evidence.  No formula or fixed authority from the Philip Morris.

Q: Did you actually buy those samples?

A: Yes, your Honor, I got the samples form Mr.
Christopher Choi and I submitted them to Mr.
22 David Lee Sealey.
23
Q: How many Marlboro cigarettes did you buy?
24 A: We bought only one ream, P17.00 per pack.
25
26 29
27 30
28 31

16
 Q: Do you know from what particular place the
house of Christopher Choi did he got (sic) those
samples?
A: The volume stocks were found inside the house,
they are almost everywhere in the house of
Christopher Choi.
Q: There is a sketch here attached to your
application, can you point it out here?
A: Yes, your Honor, at the warehouse, in the
storage room as shown in the lay out of the
house, it is adjacent to the residential house as
shown in the sketch.
Q: You went to the warehouse?
A: We were shown [the] entire area by the
supplier, Christopher Choi. As a matter of fact
he was trying to show us how much volume he
has and his capacity to supply.32[32]
Max Cavalera, a witness who accompanied Nieto during the “test-buy”
operation,33[33] also testified:
Q How about this Christopher Choi?
A As I’ve said earlier, he was one of those
identified by the informant storing and selling
counterfeit Marlboro cigarettes, so on April 22,
1999 we conducted a surveillance and we were
able to confirm that the said cigarettes are being
stored at the subject place.
Q At what place?
A At 25-13 Columbia St., Carmenville Subd.,
Angeles City. On April 23, 1999 at about 8:30
p.m., Mario Nieto and I again went to the subject
place to conduct a test-buy operation. [A]fter Mr.
Choi had been convinced of our intention to buy
cigarettes from him, he brought us to his
warehouse where he showed to us several
cardboard cases of Marlboro cigarettes. 34[34]
Given the foregoing testimonies and applying the established standards in
determining probable cause, we cannot say that Judge Gatbalite committed grave
abuse of discretion in issuing the search warrant. Her questions were sufficiently
probing, not at all superficial and perfunctory. The testimonies were consistent with
each other and the narration of facts was credible. The testimonies and other evidence
on record constituted adequate bases to establish probable cause that the alleged
offense had been committed.
Since probable cause is dependent largely on the opinion and findings of
the judge who conducted the examination and who had the opportunity to question the
applicant and his witnesses,35[35] the findings of the judge deserve great weight. The
reviewing court can overturn such findings only upon proof that the judge disregarded
32
33
34
35
17
the facts before him or ignored the clear dictates of reason.36[36] We thus find no
reason to disturb Judge Gatbalite’s findings.
Furthermore, as correctly pointed out by petitioners, 20th Century Fox Film
Corporation, insofar as it required the presentation of the master tapes for comparison
with the pirated copies for a search warrant to issue, had already been superseded by
Columbia Pictures, Inc. v. Court of Appeals:
More to the point, it is felt that the
reasonableness of the added requirement in 20th Century
Fox calling for the production of the master tapes of the
copyrighted films for determination of probable cause in
copyright infringement cases needs revisiting and
clarification.
xxx xxx xxx
In fine, the supposed pronunciamento in said
case regarding the necessity for the presentation of the
master tapes of the copyrighted films for the validity of search
warrants should at most be understood to merely serve as a
guidepost in determining the existence of probable cause in
copyright infringement cases where there is doubt as to the
true nexus between the master tape and the pirated copies.
An objective and careful reading of the decision in said case
could lead to no other conclusion than that said directive was
hardly intended to be a sweeping and inflexible requirement
in all or similar copyright infringement cases. Judicial dicta
should always be construed within the factual matrix of their
parturition, otherwise a careless interpretation thereof could
unfairly fault the writer with the vice of overstatement and the
reader with the fallacy of undue generalization.
xxx xxx xxx
It is evidently incorrect to suggest, as the ruling in
20th Century Fox may appear to do, that in copyright
infringement cases, the presentation of master tapes of the
copyrighted films is always necessary to meet the
requirement of probable cause and that, in the absence
thereof, there can be no finding of probable cause for the
issuance of a search warrant. It is true that such master tapes
are object evidence, with the merit that in this class of
evidence the ascertainment of the controverted fact is made
through demonstrations involving the direct use of the senses
of the presiding magistrate. Such auxiliary procedure,
however, does not rule out the use of testimonial or
documentary evidence, depositions, admissions or other
classes of evidence tending to prove the factum probandum,
especially where the production in court of object evidence
would result in delay, inconvenience or expenses out of
proportion to its evidentiary value.
xxx xxx xxx
Accordingly, to restrict the exercise of discretion
by a judge by adding a particular requirement (the
presentation of master tapes, as intimated by 20th Century
Fox) not provided nor implied in the law for a finding of
probable cause is beyond the realm of judicial competence
or statesmanship. It serves no purpose but to stultify and
constrict the judicious exercise of a court’s prerogatives and
to denigrate the judicial duty of determining the existence of
probable cause to a mere ministerial or mechanical function.
There is, to repeat, no law or rule which requires that the
existence of probable cause is or should be determined
36
 solely by a specific kind of evidence. Surely, this could not (2) Robert Cabi-Akman, Arthur Sprenger 2963040[3]
have been contemplated by the framers of the Constitution, and Remy Simond- Issuance of letters
and we do not believe that the Court intended the statement patent for “Colour Value Measurement”
in 20th Century Fox regarding master tapes as the dictum for
all seasons and reasons in infringement cases.37[37] (3) Heinrich Evbergger- Issuance of letters 2989841[4]
(emphasis supplied) patent for “Tool for Moulding the Top Past
of a Plastic Container”

(4) Mortimer Thompson- Issuance of 3011242[5]

It is obvious that 20th Century Fox Film Corporation should not be applied
letters patent for “Tamper Evident Closures
and Packages”
to the present case since this involves the offense of unfair competition and not
(5) Yoshimi Iwasaki- Issuance of letters 3054843[6]
copyright infringement. More importantly, as pronounced by the Court in Columbia patent for “Method Generation for Hot Gas
by Incinerators”
Pictures, Inc., the judge’s exercise of discretion should not be unduly restricted by
(6 )John Bernard Watkins, Harry Greaves 3081944[7]
adding a requirement that is not sanctioned by law. and Chen Woo Chin- Issuance of letters
patent for “Preservation Composition”

WHEREFORE, the petition is hereby GRANTED. The assailed decision (7) Fabio Carli- Issuance of letters patent 3196845[8]
for “Pharmaceutical Compositions”
of the Court of Appeals dated April 10, 2002 in CA-G.R. SP No. 59587 is REVERSED
(8) Lothar Schuartz, Friedel Verderberg, 3197446[9]
and SET ASIDE. Judgment is hereby rendered declaring Search Warrant No. 99-17 Rudolf Kuehne, and Dieter Fischer- Issuance
of letters patent for “Process for Producing
as VALID. Copper-Laminated Base Material for Printed
Circuit Boards”

(9) Malcolm John Law- Issuance of letters 3205047[10]

SO ORDERED.
patent for “Electrodeposition of Chromium and
Chromium Bearing Alloys.” 48[11]

Petitioners’ patent applications lacked certain requirements and the Bureau

informed the law firm about it, through correspondences called Office Actions. As
petitioners’ law firm did not respond to these office actions within the prescribed time,
[G.R. No. 113407. July 12, 2000] notices of abandonment were sent on the following dates:

Serial Nos. Date of Office Action Date of Abandonment

(1) 23354 March 20, 1987

LOTHAR SCHUARTZ, FRIEDEL VERDERBERG, UDOLF KUEHNE, DIETER July 21, 1987
FISCHER, JOHN BERNARD WATKINS, HARRY GREAVES, CHEN
WOO CHIN, YOSHIMI IWASAKI, FABIO CARLI, MORTIMER (2) 29630 June 18, 1986
THOMPSON, MALCOLM JOHN LAW, MICHIBAZU OCHI, KENJI October 21, 1986
SHIGEMATSU, ENI SHINOZAKI, ROBERT CABI-AKMAN, ARTHUR
(3) 29898 June 11, 1987
SPRENGER, REMY SIMOND and HEINRICH EVBERGGER , petitioners,
June 22, 1987
vs. THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH
DIVISION) and THE BUREAU OF PATENTS, TRADEMARKS AND (4) 30112 June 3, 1987
TECHNOLOGY TRANSFER, respondents. August 6, 1987

(5) 30548 June 10, 1987

RESOLUTION
August 18, 1987
PARDO, J.:
(6) 30819 January 28, 1987 July 28,
1987
Petitioners appeal via certiorari from the decision38[1]of the Court of Appeals dismissing
their appeal from the resolution of the Director of Patents that denied with finality their (7) 31968 January 14, 1987 July 15,
petition for revival of patent applications. 1987

On different dates, petitioners applied to the Bureau of Patents, Trademarks (8) 31974 July 23, 1987
and Technology Transfer for registration of patents. They hired the law firm Siguion September 24, 1987
Reyna, Montecillo and Ongsiako to process their patent applications in the Philippines,
(9) 32050 March 31, 1987 June 1,
respectively identified as follows:
40
Applicant
Serial No. 41
42
(1) Michibazu Ochi, Kenji Shigematsu and 23354 39[2]

Eni Shinozaki- Issuance of letters patent 43

for “Hackling Drum Room or Chamber
44
at the Self-Feeding Equipment for
Threshing of Upper Hackling System” 45
37 46
38 47
39 48

18
198749[12]
On December 7, 1987, two employees of the law firm, George Bangkas and
Rafael Rosas were dismissed from employment. Prior to the dismissal, these
employees worked with the patent group of the law firm and had the duty, among
others, of getting the firm’s letters and correspondence from the Bureau of Patents.
found no cogent reason to justify the reversal or modification of its decision. 54[17]
Aggrieved, petitioners filed the instant petition for review on certiorari.55[18]
At issue is the validity of the Court of Appeals’ dismissal of the consolidated
appeal of petitioners from the Director of Patents’ denial of the revival of their patent
applications.

Immediately after their dismissal, the law firm conducted an inventory of all the Petitioners contend that the Court of Appeals committed grave abuse of
documents entrusted to them. It was then that the firm learned about the notices of discretion when it held that the consolidated appeal was filed out of time. They were
abandonment. appealing from the resolution of the Director of Patents dated January 31, 1991, which
denied the petition for revival of the patent applications. They received a copy of
Thereafter, petitioners, through the law firm, filed with the Bureau of Patents the resolution, through their patent attorneys, on February 7, 1991, and filed the
separate petitions for revival of the patent applications on the following dates: consolidated appeal seven (7) days after, or on February 14, 1991. According to
petitioners, these dates clearly established that their appeal was seasonably filed.
Serial Nos. Date Petition Filed
The contention is not meritorious. If the facts above-mentioned were the sole
(1) 23354 March 3, 1988 basis of determining whether the appeal was filed on time, petitioners’ argument would
(2) 29630 March 3, 1988 be correct. However, petitioners lost sight of the fact that the petition could not be
granted because of laches. Prior to the filing of the petition for revival of the patent
(3) 30122 January 15, 1988/February 29, 1988 application with the Bureau of Patents, an unreasonable period of time had lapsed
due to the negligence of petitioners’ counsel. By such inaction, petitioners were
(4) 30548 January 25, 1988/March 1, 1988 deemed to have forfeited their right to revive their applications for patent.
(5) 30819 May 27, 1988/July 15, 1988 Facts show that the patent attorneys appointed to follow up the applications for patent
registration had been negligent in complying with the rules of practice prescribed by
(6) 31968 January 21, 1988/March 1, 1988 the Bureau of Patents. The firm had been notified about the abandonment as early as
June 1987, but it was only after December 7, 1987, when their employees Bangkas
(7) 31974 March 14, 1988
and Rosas had been dismissed, that they came to know about it. This clearly showed
(8) 32050 March 17, 1988 that petitioners’ counsel had been remiss in the handling of their clients’ applications. 56
[19]

For Serial No. 29898, the applicant abandoned his application, for which reason no
petition for revival was filed.50[13]
On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau of Patents
denied all the petitions for revival because they were filed out of time. The dispositive
portion specifically provides:
“WHEREFORE, in consideration of the foregoing premises, all the petitions for
revival of the above-captioned abandoned applications bearing Serial Nos. 23354,
29630, 29898, 30112, 30548, 30819, 31968, 31974, and 32050, are hereby denied
and no further petitions nor requests for reconsideration hereof shall be entertained
hereafter.
“SO ORDERED.
“Makati, Metro Manila, Philippines, this 31st day of January 1991.
L
UIS M. DUKA, JR.
Director III” 51[14]
On February 14, 1991, petitioners appealed the above resolution of the Bureau of
Patents to the Court of Appeals.52[15]
“A lawyer’s fidelity to the cause of his client requires him to be ever mindful of
the responsibilities that should be expected of him. A lawyer shall not neglect a legal
matter entrusted to him.”57[20] In the instant case, petitioners’ patent attorneys not only
failed to take notice of the notices of abandonment, but they failed to revive the
application within the four-month period, as provided in the rules of practice in patent
cases. These applications are deemed forfeited upon the lapse of such period.58[21]
Hence, we can not grant the present petition. 59[22] The Court of Appeals did not err or
gravely abuse its discretion in dismissing the petition for review.
WHEREFORE, the Court DENIES the petition for lack of merit. The Court
AFFIRMS the decision of the Court of Appeals in CA-G. R. SP No. 24175.
No costs.
SO ORDERED.
Davide, Jr., C.J., (Chairman), Puno, Kapunan, and Ynares-Santiago, JJ.,
concur.

On August 13, 1992, the Court of Appeals dismissed the consolidated appeal
for being filed beyond the 15-day reglementary period to appeal. There was an
unreasonable delay before the petitions to revive applications were filed. Moreover,
petitioners’ patent applications could not be a proper subject of a consolidated appeal
because they covered separate and distinct subjects and had been treated by the
G.R. No. L-4720             January 19, 1909
Bureau of Patents as separate and individual applications. Specifically the decision
provides:
CARLOS GSELL, plaintiff-appellee,
“WHEREFORE, for reasons above stated and in the light of the applicable law vs.
on the matter, this petition for review on appeal from the order/decision of the Director VALERIANO VELOSO YAP-JUE, defendant-appellant.
of Bureau of Patents is hereby DISMISSED with costs against the appellants.

SO ORDERED.” 53[16] Chicote and Miranda, for appellant.

On September 14, 1992, petitioners moved for reconsideration of the Court of Haussermann and Cohn, for appellee.
Appeals’ decision, which the court denied on January 7, 1994. The appellate court
54
49 55
50 56
51 57
52 58
53 59

19
CARSON, J.:
This an appeal from a final order of the Court of First Instance of the city of Manila, in
contempt proceedings prosecuted under the provisions of section 172 of the Code of
Civil Procedure. The principal case to which these proceedings are ancillary, was an
action to enjoin infringement of a patented process for the manufacture of curved
handles for canes, parasols, and umbrellas. In that case plaintiff established his title to
a valid patent covering the process in question, and obtained against this defendant a
judgment, granting a perpetual injunction restraining its infringement, which judgment
was affirmed by this court on appeal (6 Phil. Rep., 143.) The order was couched in the
following terms:
It is ordered that the defendant abstain from manufacturing canes and
umbrellas with a curved handle by means of a lamp or blowpipe fed with
mineral oil or petroleum, which process was protected by patent No.
19228, issued in favor of Henry Gsell, and by him transferred to Carlos
Gsell —
and the process therein mentioned is fully described in the following statement which
accompanied the application for the patent:
After the canes have been cut for cane or umbrella handles, the outsides
are thoroughly cleaned. This operation having been performed, they are
then trimmed and the interior cleaned by means of a gimlet of about 15
centimeters in length operated by a wheel, by means of which the knots
inside are broken. There is then introduced to a depth of about 15
centimeters a piece of very clean bamboo, which completely fills the hole
made by the gimlet, thereby giving to the cane the necessary strength to
resist the heat of the lamp or blowpipe without breaking or cracking.
This operation having been performed, the cane, the end of which is
attached to a fixed point, is given the shape of a hook or some other form
by means of fire and pressure. Once the cane has been shaped as
desired, it is allowed to cool, and is then cleaned, varnished, and
ornamented at will.
This industry requires skillful, handiwork, owing to the great risk
engendered by the treatment of such fragile material as a light cane. On
the other hand, however, it affords large profits to the workman.
NOTE. — The patent applied for shall be for the industrial product "cane
handles for walking sticks and umbrellas, curved by means of a small
lamp or blowpipe, fed by petroleum or mineral fuel."
Thereafter the defendant continued to manufacture curved cane handled for walking
sticks and umbrellas by a process in all respectes identical with that used by the
plaintiff under his patent, except only that he be substituted for a lamp fed with
petroleum or mineral oil, lamp fed with alcohol, as appears from a stipulation entered
into between plaintiff and defendant in the following terms:
The plaintiff and defendant agree upon the fact that the defendant has
used and is still using a process for curving handles of canes and
umbrellas identical with that described in the application for the patent by
the plaintiff with the exception that he has substituted for the lamp fed with
all other lamp fed with alcohol.
Contempt proceedings were instituted against the defendant in the month of February,
1904, the plaintiff in the original action alleging that the —
Defendant in disobediencce of the judgment of the same was and is now
engaged in the unlawful manufacture of umbrella handles by the identical
process described in and protected said patent, No. 19228, or a process
so like the patented process as to be indistinguishable.
The trial court found the defendant "not guilty" of contempt as charged; and this court,
on appeal, held that — a character that it could be made patent by the mere
annunciation of the acts performed by the defendant, which are alleged to constitute
the said violation. These acts were not clearly and manifestly contrary to the precise
terms of the prohibition. According to the express language of the judgment, the
20
prohibition is against the manufacture of canes and umbrellas with curved handles by
means of the use of a cool or mineral oil-burning lamp or blowpipe and the parties
have stipulated that the defendant did not use a coal or mineral oil-burning lamp but an
alcohol-burning lamp.
The question, however, arises as to whether that prohibition included the
substitution of alcohol for coal or mineral oil. In more abstract and general
terms, the appellant propounds this question in his brief, as follows: "The
question presented by this appeal is whether or not the use of a patented
process by a third person, without license or authority therefor, constitutes
an infringement when the alleged infringer has substituted in lieu of some
unessential part of the patented process a well-known mechanical
equivalent." It has seen that by its very terms this question implies in the
present case the existence of two fundamental facts which must first be
duly established, viz: (1) That the use of the lamp fed with petroleum or
mineral oil was an unessential part of the patented process the use of
which by the accused was prohibited by the said judgment; and (2) that
alcohol is an equivalent and proper substitute, well known as such, for
mineral oil or petroleum in connection with the said process. The appellant
has failed to affirmatively establish either of these two essential facts. He
has merely assumed their existence, without proving the same, thus
begging the whole question. Consequently the contempt with which the
accused is charged has not been fully and satisfactorily proved, and the
order appealed from should accordingly be affirmed in so far as it holds
that the defendant is not guilty of contempt. (7 Phil. Rep., 130).
Thereafter the plaintiff continued the use of the patented process, save only for the
substitutions of a lamp fed by alcohol for a lamp fed by petroleum or mineral oil, and
new proceedings were instituted under the provisions of section 172 for the purpose of
enforcing the original injunction above cited. Substantially the same question is
submitted in these new proceedings as that submitted in the former case, but at the
trial of this case testimony was introduced which, in our opinion, leaves no room for
doubt, first, that alcohol is an equivalent or substitute, well known as such at the time
when the patent was issued, for mineral oil or petroleum, in connection with blast
lamps or blowpipes such as that which plaintiff uses in the patented process, and,
second, that the use of a blast lamp or blowpipe fed with petroleum or mineral oil,
rather than one fed with alcohol, is an unessential part of the patented process the use
of which was prohibited by the said judgment.
It was clearly proven at the trial, that kerosene and alcohol blast lamps are agencies
for producing and applying heat, well known throughout the world long prior to 1906,
the date of the issue of the patent; that it is and for many years has been known that
one may for all ordinary purposes be used in the place of the other, and especially for
the purpose of applying heat in the manner described in the patent; that the only
consideration which determines the employment of one in place of the other is the
convenience of the user and the question of relative cost; and that the principle upon
which both lamps work is substantially identical, the only difference in construction
being occasioned by the application of this principle to oils of different physical and
chemical composition.
The plaintiff does not and can not claim a patent upon the particular lamp used by him.
The patent, however, gives him the exclusive right to the use of "la lamparilla o
soplete, alimentada de petroleo o esencia mineral" (the small lamp or blowpipe fed
with petroleum or mineral oil) in manufacturing curved handles for umbrellas and
canes, to which reference is made in the above-cited descriptive statement and
annexed note. "The small lamp or blowpipe" mentioned in the descriptive statement
and annexed note which accompanied the application for the patent, evidently referred
to the design of a blast lamp which was attached thereto; and in our opinion both
plaintiff and defendant make use of a blast lamp substantially similar, in principle and
design, to that referred to in the descriptive statement and the annexed note, for the
exclusive use of which in the manufacture of curved handles, plaintiff holds a patent.
True, defendant's blast lamp is fed with alcohol, and its shape varies in unimportant
details, for the purpose of accommodating the principle, by which the flame is secured,
to the different physical and chemical composition of the fuel used therein; but the
principle on which it works, its mode of application, and its general design distinguish it
in no essential particular from that used by the plaintiff. If the original design
accompanying the statement had shown a blast lamp made of brass or delf, he would
be a reckless advocate who would claim that the patent might lawfully be evaded by
the use of a lamp made of iron or tin; or if the original design had shown a blast lamp 6
inches high with a nozzle 4 inches long it would hardly be seriously contended that the
use of lamp 8 inches high with a nozzle 3 inches long would protect the ingenious
individual, who in all other respects borrowed the patented process, from the
consequences of an action for damages for infringement. But in the light of the
evidence of record in this case, the reasoning upon which these hypothetical claims alteration of the combination if the ingredient substituted performs
should be rejected applies with equal force to the contentions of the defendant, the substantially the same function as the one withdrawn.
ground for the rejection of the claims in each case being the same, and resting on the
fact that unessential changes, which do not affect the principle of the blast lamp used
Bona fide inventors of a combination are as much entitled to suppress
in the patented process, or the mode of application of heat authorized by the patent,
every other combination of the same ingredients to produce the same
are not sufficient to support a contention that the process in one case is in any
result, not substantially different from what they have invented and caused
essential particular different from that used in the other.
to be patented as to any other class of inventors. All alike have the right to
suppress every colorable invasion of that which is secured to them by
Counsel for plaintif invokes the doctrine of "mechanical equivalents" in support of his letters patent. (Seymour vs. Osborne, 78 U.S., 516, 556.)
contention, and indeed that doctrine is strikingly applicable to the facts in this case.
This doctrine is founded upon sound rules of reason and logic, and unless restrained
A claim for the particular means and mode of operation described in the
or modified by law in particular jurisdiction, is of universal application, so that it matters
specification extends, by operation of law, to the equivalent of such
not whether a patent be issued by one sovereignty or another, the doctrine may
means — not equivalent simply because the same result is thereby
properly be invoked to protect the patentee from colorable invasions of his patent
produced — but equivalent as being substantially the same device in
under the guise of substitution of some part of his invention by some well known
structure, arrangement and mode of operation. (Burden vs. Corning, Fed.
mechanical equivalent. Our attention has not been called to any provision of the patent
Cas., 2143. Gottfried vs. Philip Best Brewing Co., Fed. Cas., 5633.)
law of Spain, which denies to patentees thereunder the just and equitable protection of
the doctrine; and indeed a patent law which failed to recognize this doctrine would
afford scant protection to inventors, for it is difficult if not impossible to conceive an An equivalent device is such as a mechanic of ordinary skill in
invention, which is incapable of alteration or change in some unessential part, so as to construction of similar machinery, having the forms, specifications and
bring that part outside of the express terms of any form of language which might be machine before him, could substitute in the place of the mechanism
used in granting a patent for the invention; and has been well said by counsel for described without the exercise of the inventive faculty. (Burden vs.
plaintiff, human ingenuity would be taxed beyond its powers in preparing a grant of a Corning, supra.)
patent so comprehensive in its terms, "as to include within the express terms of its
detailed description every possible alternative of form, size, shape, material, location,
All the elements of the invention in this case are old, and the rule in such
color, weight, etc., of every wheel, rod, bolt, nut, screw, plate, and other component
cases, as before explained, undoubtedly is that a purpose can not invoke
parts of an invention."
the doctrine of equivalents to suppress all other improvements of the old
machine, but he is entitled to treat everyone as an infringer who makes,
The following citations from various decisions of the Federal Courts of the United uses, or vends his patented improvement without any other change than
States illustrate the application of the doctrine in that jurisdiction, and clearly point the the employment of a substitute for one of its elements, well known as such
way to the proper solution of the questions involved in the case at bar: at the date of his invention, and which any constructor acquainted with the
art will know how to comply. The reason for the qualification of the rule as
stated is, that such change — that is, the mere substitution of a well-
Can the defendant have the right of infringement, by substituting in lieu of
known element for another — where it appears that the substituted
some parts of the combination well-known mechanical equivalents? I am
element was well known as a usual substitute for the element left out — is
quite clear that be can not, both on principle and authority. It is not to be
merely a formal one, and nothing better than a colorable evasion of the
disputed that the inventor of an ordinary machine is, by his letters patent,
patent. (Union Sugar Refining Co. vs. Matthieson, Fed. Cas., 14399.)
protected against all mere formal alterations and against the substitution
of mere mechanical equivalents. Why should not the inventor of a new
combination receive the same protection? If he can not, then will his Counsel for the defendant insists that, under Spanish law, none of the steps of the
patent not be worth the parchment on which it is written. process described in the descriptive statement, save those mentioned in the "note"
thereto attached are included in the patent, and that the patent rights secured
thereunder are strictly limited to the precise language of the "note" attached to the
If no one can be held to infringe a patent for a combination unless he
descriptive statement; while counsel for plaintiff appears to think that the language of
uses all the parts of the combination and the identical machinery as that
the patent covers any process or device whereby wood or cane may be bent or curved
of the patentee, then will no patent for a combination be infringed; for
by the use of heat. But for the purpose of this decision it is not necessary to consider
certainly no one capable of operating a machine can be incapable of
these questions, further than to hold, as we do, that under the doctrine of equivalents,
adopting some formal alteration in the machinery, or of substituting
the language of the note in the descriptive statement applies to the operation of
mechanical equivalents. No one infringes a patent for a combination who
applying heat for the purpose of curving handles or canes and umbrellas by means of
does not employ all of the ingredients of the combination; but if he
a blast lamp fed with alcohol, as well as by means of a blast lamp fed with petroleum
employs all the ingredients, or adopts mere formal alterations, or
or mineral oil; and the defendant having admitted the fact that he applied heat for the
substitutes, for one ingredient another which was well known at the date
purpose of curving handles for canes and umbrellas by means of a blast lamp fed with
of the patent as a proper substitute for the one withdrawn, and which
alcohol, he must be deemed to have contempt of violating the terms and the injunction
performs substantially the same function as the one withdrawn, he does
issued in the principal case, wherein plaintiff was declared the owner of the patent in
infringe. (King vs. Louisville Cement Co., Fed. Cas., 7798.)
question, and defendant enjoined from its infringement.

Bona fide inventors of a combination are as much entitled to equivalents

The argument of counsel for defendant and appellant, based on the theory that the
as the inventors other patentable improvements; by which is meant that a
questions herein discussed and decided to have been heretofore settled by this court,
patentee in such a case may substitute another ingredient for any one of
and that the subject-matter of this proceeding is res adjudicata between the parties
the ingredients of his invention, if the ingredient substituted performs the
thereto is sufficiently refuted by the simple reading of the decision of this court in the
same function as the one omitted and as well known at the date of his
case relied upon. (Gsell vs. Veloso, 7 Phil. Rep., 130.)
patent as a proper substitute for the one omitted in the patented
combination. Apply that rule and it is clear that an alteration in a patented
combination which merely substitutes another old ingredient for one of the The judgment of the lower court should be and is hereby affirmed, with the costs of
ingredients in the patented combination, is an infringement of the patent, if this instance against the appellant.
the substitute performs the same function and was well known at the date
of the patent as a proper substitute for the omitted ingredient. (Gould vs.
Rees, 82 U.S., 187, 194.) Arellano, C.J., Torres, Mapa, Willard, and Tracey, JJ., concur.

Mere formal alterations in a combination in letters patent are no defense

to the charge of infringement and the withdrawal of one ingredient from
the same and the substitution of another which was well known at the date
of the patent as a proper substitute for the one withdrawn is a mere formal

21
[G.R. No. 144309. November 23, 2001]
SOLID TRIANGLE SALES CORPORATION and ROBERT SITCHON, petitioners, vs.
THE SHERIFF OF RTC QC, Branch 93; SANLY CORPORATION, ERA
RADIO AND ELECTRICAL SUPPLY, LWT CO., INCORPORATED; ROD
CASTRO, VICTOR TUPAZ and the PEOPLE OF THE PHILIPPINES,
respondents.
DECISION
KAPUNAN, J.:
The petition at bar stems from two cases, Search Warrant Case No. Q-3324
(99) before Branch 93 of the Quezon City Regional Trial Court (RTC), and Civil Case
No. Q-93-37206 for damages and injunctions before Branch 91 of the same court.
The facts are set forth in the Decision of the Court of Appeals dated July 6,
1999:
x x x on January 28, 1999, Judge Apolinario D. Bruselas, Jr.,
Presiding Judge of RTC, Branch 93, Quezon City, upon application of
the Economic Intelligence and Investigation Bureau (EIIB), issued
Search Warrant No. 3324 (99) against Sanly Corporation (Sanly),
respondent, for violation of Section 168 of R.A. No. 8293 (unfair
competition).
By virtue of Search Warrant No. 3324 (99), EIIB agents seized
451 boxes of Mitsubishi photographic color paper from respondent
Sanly. xxx
Forthwith, Solid Triangle, through Robert Sitchon, its Marketing
and Communication Manager, filed with the Office of the City
Prosecutor, Quezon City, an affidavit complaint for unfair competition
against the members of the Board of Sanly and LWT Co., Inc. (LWT),
docketed as I.S. No. 1-99-2870.
Sitchon alleged that ERA Radio and Electrical Supply (ERA),
owned and operated by LWT, is in conspiracy with Sanly in selling
and/or distributing Mitsubishi brand photo paper to the damage and
prejudice of Solid Triangle, [which claims to be the sole and exclusive
distributor thereof, pursuant to an agreement with the Mitsubishi
Corporation].
On February 4, 1999, petitioner Solid Triangle filed with Judge
Bruselas’ sala an urgent ex parte motion for the transfer of custody of
the seized Mitsubishi photo color paper stored in the office of EIIB.
On February 8, 1999, respondents Sanly, LWT and ERA moved
to quash the search warrant which was denied by Judge Bruselas in an
order dated March 5, 1999.
The said respondents filed a motion for reconsideration which
was granted by Judge Bruselas in the first assailed order of March 18,
1999. Respondent Judge held that there is doubt whether the act
complained of (unfair competition) is criminal in nature.
Petitioner Solid Triangle filed a motion for reconsideration
contending that the quashal of the search warrant is not proper
considering the pendency of the preliminary investigation in I.S. No. 1-
99-2870 for unfair competition wherein the seized items will be used as
evidence.
On March 26, 1999, Judge Bruselas issued the second assailed
order denying Solid Triangle’s motion for reconsideration.
On March 29, 1999, petitioner Solid Triangle filed with Branch
91 of the same Court, presided by Judge Lita S. Tolentino-Genilo, Civil
Case No. Q-99-37206 for damages and injunction with prayer for writs
of preliminary injunction and attachment. Impleaded as defendants
were Sanly, LWT and ERA.
On March 30, 1999, the defendants filed their opposition to the
application for the issuance of writs of injunction and attachment.
22
On March 31, 1999, Judge Genilo denied petitioner’s application
for a preliminary attachment on the ground that the application is not
supported with an affidavit by the applicant, through its authorized
officer, who personally knows the facts.
Meanwhile, on April 20, 1999, Judge Bruselas issued the third
assailed order, the dispositive portion of which reads:
WHEREFORE, the foregoing premises
considered, the court directs –
1) EIIB, Mr. Robert Sitchon and Solid Triangle
Sales Corporation to divulge and report to the court the
exact location of the warehouse where the goods subject
of this proceeding are presently kept within seventy-two
hours from receipt hereof;
2) Mr. Rober Sitchon and Solid Triangle Sales
Corporation to appear and show cause why they should
not be held in contempt of court for failure to obey a
lawful order of the court at a hearing for the purpose on
12 May 1999 at 8:30 o’clock in the morning;
3) The Deputy Sheriff of this Court to take
custody of the seized goods and cause their delivery to
the person from whom the goods were seized without
further lost [sic] of time;
Let a copy of this order be served by personal
service upon Mr. Robert Sitchon and Solid Triangle
Sales Corporation. Serve copies also to EIIB and the
respondents Rod Castro and Sanly Corporation.
SO ORDERED.i[1]
Alleging grave abuse of discretion, petitioners questioned before the Court of
Appeals the orders of Branch 93 of the Quezon City RTC granting private
respondents’ motion for reconsideration and denying that of petitioners’, as well as the
order dated April 20, 1999 directing petitioners to, among other things, show cause
why they should not be held in contempt. Petitioners also assailed the order of the
Quezon City RTC, Branch 91 denying their application for a writ of attachment. Upon
the filing of the petition on April 26, 1999, the Court of Appeals issued a temporary
restraining order to prevent Judge Bruselas from implementing the Order dated April
20, 1999.
On July 6, 1999, the Court of Appeals rendered judgment initially granting
certiorari. It held that the quashing of the warrant deprived the prosecution of vital
evidence to determine probable cause.
Admittedly, the City Prosecutor of Quezon City has filed a
complaint for unfair competition against private respondents and that
the undergoing preliminary investigation is in progress. In the said
proceedings, the prosecution inevitably will present the seized items to
establish a prima facie case of unfair competition against private
respondents.
Considering that Judge Bruselas quashed the search warrant,
he practically deprived the prosecution of its evidence so vital in
establishing the existence of probable cause.
Petitioners’ reliance on Vlasons Enterprises Corporation vs.
Court of Appeals [155 SCRA 186 (1987).] is in order. Thus:
The proceeding for the seizure of property in
virtue of a search warrant does not end with the actual
taking of the property by the proper officers and its
delivery, usually constructive, to the court. The order for
the issuance of the warrant is not a final one and cannot
constitute res judicata (Cruz vs. Dinglasan, 83 Phil. 333).
Such an order does not ascertain and adjudicate the
permanent status or character of the seized property.
By its very nature, it is provisional, interlocutory (Marcelo
vs. de Guzman, 114 SCRA 657). It is merely the first
step in the process to determine the character and title
of the property. That determination is done in the
criminal action involving the crime or crimes in
connection with which the search warrant was issued.
Hence, such a criminal action should be prosecuted, or
 commenced if not yet instituted, and prosecuted. The
outcome of the criminal action will dictate the disposition
of the seized property.ii[2]
The appellate court further ruled that the affidavit of merits is not necessary for the
order of preliminary attachment to issue considering that the petition itself is under
oath:
The denial was based on the ground that the application is not
supported by an affidavit of the applicant corporation, through its
authorized officer, who personally knows the facts.
We cannot go along with respondent judge’s theory. In Consul
vs. Consul [17 SCRA 667 (1996)], the Supreme Court held:
Affidavit of merits has a known purpose: Courts
and parties should not require the machinery of justice to
grind anew, if the prospects of a different conclusion
cannot be reasonably reached should relief from
judgment be granted. We look back at the facts here.
The petition for relief is verified by petitioner himself.
The merits of petitioner’s case are apparent in the
recitals of the petition. Said petition is under oath. That
oath, we believe, elevates the petition to the same
category as a separate affidavit. To require defendant to
append an affidavit of merits to his verified petition, to
the circumstances, is to compel him to do the
unnecessary. Therefore, the defect pointed by the court
below is one of forms, not of substance. Result:
Absence of a separate affidavit is of de minimis
importance.iii[3]
Upon motion by respondents, however, the Court of Appeals reversed itself. In
its “Amendatory Decision,” the appellate court held that there was no probable cause
for the issuance of the search warrant. Accordingly, the evidence obtained by virtue of
said warrant was inadmissible in the preliminary investigation.
x x x Under Sections 168 and 170 of R.A. 8293 (the Intellectual
Property Code), there is unfair competition if the alleged offender has
given to his goods the general appearance of the goods of another
manufacturer or dealer and sells or passes them off as goods of that
manufacturer or dealer in order to deceive or defraud the general public
or the legitimate trader. Also, if he makes false statements in the
course of trade to discredit the goods, business, or services of another.
Undisputedly, the seized goods from Sanly are genuine and not
mere imitations. This is admitted by petitioners in their application for a
search warrant and supporting affidavits, Annexes “A” to “D”, inclusive,
in their April 27, 1999 Submission of Annexes to this Court. It bears
stressing that there is no showing or allegation that Sanly has
presented, sold, or passed off its photographic paper as goods which
come from Solid Triangle. There is no attempt on its part to deceive.
Both Sanly and Solid Triangle sell genuine Mitsubishi products.
Solid Triangle acquires its goods from Japan on the basis of its
exclusive distributorship with Mitsubishi Corporation. While Sanly buys
its goods from Hongkong, claiming it is a parallel importer, not an unfair
competitor. As defined, a parallel importer is one which imports,
distributes, and sells genuine products in the market, independently of
an exclusive distributorship or agency agreement with the
manufacturer. And, this is precisely what Sanly states as its
commercial status.
Records show that Sanly sold its photographic paper purchased
from Hongkong without altering its appearance. It is distributed in the
same Mitsubishi box with its logo and distinguishing marks as marketed
in Japan. The same brown paper with the Mitsubishi seal is wrapped
around its products. Copies of the importation documents and the
certification on imports issued by the Philippine government recognized
Societe’ Generale’ d’ Surveillance (SGS) were appended to the motion
to quash search warrant.
Thus, on factual basis, the real dispute is actually between Solid
Triangle and the manufacturer Mitsubishi. If Solid Triangle feels
aggrieved, it should sue Mitsubishi for damages, if at all for breach of its
distributorship. But that is between them.
23
Certainly, there is here no probable cause to justify the issuance
of a search warrant based on a criminal action for “unfair competition.”
Therefore, since there is no probable cause for unfair
competition in this case, then the quashal of the search warrant by
respondent Judge Bruselas is valid. This being the case, there is merit
in the motion for reconsideration.
In ascertaining the legality of a search warrant and the validity of
the search and seizure conducted by the EIIB agents by virtue of the
warrant, it is essential that a crime has been committed or is being
committed and that the things seized are fruits of the crime or the
means by which it is committed.
The validity of a search and seizure is of constitutional
dimensions. The right to privacy and the sanctity of a person’s house,
papers and effects against unreasonable searches and seizures are not
only ancient. They are also zealously protected.
xxx
Solid Triangle contends that the quashal of the search warrant
deprived it of its right to prove a prima facie case of unfair competition
in the preliminary investigation. We initially agreed with it.
While Solid Triangle has the right to present every single piece
of evidence it can gather and muster, however, it has no right to prove
its case through the use of illegally seized evidence secured in
derogation of a constitutionally guaranteed right.
The constitutional provision that any evidence obtained in
violation of the provision against unreasonable searches and seizures
“shall be inadmissible for any purpose in any proceeding” finds
application here. The goods seized without probable cause are fruits of
the poisonous tree and cannot be used for the purpose of proving unfair
competition during preliminary investigation proceedings.
The case of Vlasons Enterprises Corporation vs. Court of
Appeals does not apply since it involved a different set of facts and
issues.
On the contrary, it is the case of People vs. Court of Appeals
[216 SCRA 101 (1992)] that governs, where the Supreme Court ruled
that with the quashal of the search warrant, the seized goods could not
be used as evidence for any purpose, in any proceeding. iv[4]
As regards the preliminary attachment, the appellate court found that there was
no ground for the issuance of the writ because:
x x x Sanly does not deny that it sells Mitsubishi photographic
color paper. But there is no showing that it attempts to depart from
country, defraud Solid Triangle or the buying public, conceal or dispose
of unjustly detained personal property, or commit any of the acts
provided in Rule 57 of the 1997 Rules of Civil Procedure as grounds for
the issuance of a writ of preliminary attachment.v[5]
Petitioners moved for reconsideration but the same was denied by the Court of
Appeals in its Resolution dated August 4, 2000.
In assailing the Amendatory Decision of the Court of Appeals, petitioners argue
that:
I.
THE JUDGE WHO ISSUED A SEARCH WARRANT THAT HAS
ALREADY BEEN IMPLEMENTED CANNOT QUASH THE WARRANT
ANYMORE, AT LEAST WITHOUT WAITING FOR THE FINDINGS OF
THE CITY PROSECUTOR WHO HAS THE EXCLUSIVE
JURISDICTION TO DETERMINE PROBABLE CAUSE.
II.
IN THE PARALLEL IMPORTATION EFFECTED BY THE
RESPONDENTS WITH DECEIT AND BAD FAITH, THERE EXISTS
PROBABLE CAUSE THAT THE CRIME OF UNFAIR COMPETITION
UNDER THE INTELLECTUAL PROPERTY CODE HAS BEEN
COMMITTED BY THE RESPONDENTS.
III.
 PETITIONERS’ APPLICATION FOR A WRIT OF ATTACHMENT
CANNOT BE DENIED ON THE GROUND THAT AN AFFIDAVIT OF
MERITS IS NOT APPENDED TO THE COMPLAINT, AS THE COURT
OF APPEALS HAS ALREADY RULED, AND ON THE GROUND THAT
THERE IS NO JUSTIFICATION FOR IT BECAUSE THE QUESTIONS
PERTINENT THERETO ARE NOT BEFORE THE COURT OF
APPEALS BUT BEFORE THE TRIAL COURT.
IV.
PETITIONERS CANNOT BE HELD LIABLE FOR CONTEMPT IN NOT
RETURNING THE GOODS SUBJECT OF THE SEARCH WARRANT
NOTWITHSTANDING THE REFUSAL OF THE COURT OF APPEALS
TO RULE ON THIS POINT FURTHER WHICH IS A GRIEVOUS
ERROR TO THE PREJUDICE OF THE PETITIONERS. vi[6]
Petitioners contend that the Constitution does not authorize the judge to
reverse himself and quash the warrant, “especially after goods had been seized
pursuant to the search warrant, and the prosecution is poised to push forward with the
goods as evidence.” vii[7] In finding that doubt exists that a crime has been committed, it
is argued that the judge “trench[ed] upon the prerogative and duty of the city
prosecutor.”viii[8]
The contention has no merit.
It is undisputed that only judges have the power to issue search warrants. ix[9]
This function is exclusively judicial. Article III of the Constitution unequivocally states:
Sec. 2. The right of the people to be secure in their persons,
houses, papers, and effects against unreasonable searches and
seizures of whatever nature and for any purpose shall be inviolable,
and no search warrant or warrant of arrest shall issue except upon
probable cause to be determined personally by the judge after
examination under oath or affirmation of the complainant and the
witnesses he may produce, and particularly describing the place to be
searched and the persons or things to be seized. [Emphasis supplied.]
Inherent in the courts’ power to issue search warrants is the power to quash
warrants already issued. In this connection, this Court has ruled that the motion to
quash should be filed in the court that issued the warrant unless a criminal case has
already been instituted in another court, in which case, the motion should be filed with
the latter.x[10] The ruling has since been incorporated in Rule 126 of the Revised Rules
of Criminal Procedure:
Sec. 14. Motion to quash a search warrant or to suppress
evidence; where to file. – A motion to quash a search warrant and/or to
suppress evidence obtained thereby may be filed in and acted upon
only by the court where the action has been instituted. If no criminal
action has been instituted, the motion may be filed in and resolved by
the court that issued the search warrant. However, if such court failed
to resolve the motion and a criminal case is subsequently filed in
another court, the motion shall be resolved by the latter court.
In the determination of probable cause, the court must necessarily resolve
whether or not an offense exists to justify the issuance or quashal of the search
warrant. Prior to the revision of December 1, 2000, Rule 126 of the Rules of Court
provided:
Sec. 3. Requisites for issuing search warrant. – A search
warrant shall not issue but upon probable cause in connection with one
specific offense to be determined personally by the judge after
examination under oath or affirmation of the complainant and the
witnesses he may produce, and particularly describing the place to be
searched and the things to be seized. [Emphasis supplied.] xi[11]
Note that probable cause is defined as:
xxx the existence of such facts and circumstances which could
lead a reasonably discreet and prudent man to believe that an offense
has been committed and that the item(s), article(s) or object(s) sought
in connection with said offense or subject to seizure and destruction by
law is in the place to be searched.xii[12]
In Kenneth Roy Savage/K Angelin Export Trading vs. Taypin,xiii[13] the Court
was confronted with a search warrant that was issued purportedly in connection with
unfair competition involving design patents. The Court held that the alleged crime is
not punishable under Article 189 of the Revised Penal Code, and accordingly,
quashed the search warrant issued for the non-existent crime.
24
In the issuance of search warrants, the Rules of Court requires
a finding of probable cause in connection with one specific offense to
be determined personally by the judge after examination of the
complainant and the witnesses he may produce, and particularly
describing the place to be searched and the things to be seized.
Hence, since there is no crime to speak of, the search warrant does not
even begin to fulfill these stringent requirements and is therefore
defective on its face. x x x.
A preliminary investigation, by definition, also requires a finding by the
authorized officer of the commission of a crime. Previous to the 2000 revision, Section
1 of Rule 112 of the Rules of Court defined a preliminary investigation as “an inquiry or
proceeding to determine whether there is sufficient ground to engender a well-founded
belief that a crime cognizable by the Regional Trial Court has been committed and the
respondent is probably guilty thereof, and should be held for trial.” xiv[14]
Section 2 of the same Rule enumerates who may conduct preliminary
investigations:
Sec. 2. Officers authorized to conduct preliminary
investigations. – The following may conduct preliminary investigations:
(a) Provincial or city fiscals and their assistants;
(b) Judges of the Municipal Trial Courts and Municipal Circuit
Trial Courts;
(c) National and Regional state prosecutors; and
(d) Such other officers as may be authorized by law.
Their authority to conduct preliminary investigations shall
include all crimes cognizable by the proper court in their respective
territorial jurisdictions.xv[15]
The determination of probable cause during a preliminary investigation has been
described as an executive function. xvi[16]
The proceedings for the issuance/quashal of a search warrant before a court
on the one hand, and the preliminary investigation before an authorized officer on the
other, are proceedings entirely independent of each other. One is not bound by the
other’s finding as regards the existence of a crime. The purpose of each proceeding
differs from the other. The first is to determine whether a warrant should issue or be
quashed, and the second, whether an information should be filed in court.
When the court, in determining probable cause for issuing or quashing a
search warrant, finds that no offense has been committed, it does not interfere with or
encroach upon the proceedings in the preliminary investigation. The court does not
oblige the investigating officer not to file an information for the court’s ruling that no
crime exists is only for purposes of issuing or quashing the warrant. This does not, as
petitioners would like to believe, constitute a usurpation of the executive function.
Indeed, to shirk from this duty would amount to an abdication of a constitutional
obligation.
The effect of the quashal of the warrant on the ground that no offense has
been committed is to render the evidence obtained by virtue of the warrant
“inadmissible for any purpose in any proceeding,” including the preliminary
investigation. Article III of the Constitution provides:
Sec. 3. (1) x x x.
(2) Any evidence obtained in violation of this or the preceding
section [Section 2] shall be inadmissible for any purpose in any
proceeding.
It may be true that, as a result of the quashal of the warrant, the private complainant is
deprived of vital evidence to establish his case, but such is the inevitable
consequence.
Nevertheless, the inadmissibility of the evidence obtained through an illegal
warrant does not necessarily render the preliminary investigation academic. The
preliminary investigation and the filing of the information may still proceed if, because
of other (admissible) evidence, there exists “sufficient ground to engender a well-
founded belief that a crime has been committed and the respondent is probably guilty
thereof, and should be held for trial.” The finding by the court that no crime exists does
not preclude the authorized officer conducting the preliminary investigation from
making his own determination that a crime has been committed and that probable
cause exists for purposes of filing the information.
Petitioners also argue that Section 14, Rule 126 of the Revised Rules of
Criminal Procedure, supra, while intended “to resolve conflicts of responsibility
between courts,” “does not expressly cover the situation where the criminal complaint
is pending with the prosecutor.” In such a case, petitioners submit, the public
prosecutor should be allowed to resolve the question of whether or not probable cause
exists.xvii[17]
The Court finds this interpretation too contrived. Section 14, Rule 126
precisely covers situations like the one at bar. Section 14 expressly provides that a
motion to quash a search warrant and/or to suppress evidence obtained thereby may
be filed in and acted upon only by the court where the action has been instituted.
Under the same section, the court which issued the search warrant may be prevented
from resolving a motion to quash or suppress evidence only when a criminal case is
subsequently filed in another court, in which case, the motion is to be resolved by the
latter court. It is therefore puerile to argue that the court that issued the warrant
cannot entertain motions to suppress evidence while a preliminary investigation is
ongoing. Such erroneous interpretation would place a person whose property has
been seized by virtue of an invalid warrant without a remedy while the goods procured
by virtue thereof are subject of a preliminary investigation.
We now turn to the question of whether the facts, as presented before the trial
court, constitute an offense.
Private respondents are alleged to have committed unfair competition in
violation of Section 168 of the Intellectual Property Code, which states:
SEC. 168. Unfair Competition, Rights, Regulation and
Remedies. – 168.1 A person who has identified in the mind of the public
goods he manufactures or deals in, his business or services from those
of others, whether or not a registered mark is employed, has a property
right in the goodwill of the said goods, business or services so
identified, which will be protected in the same manner as other property
rights.
168.2 Any person who shall employ deception or any other
means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who shall
commit any acts calculated to produce said result, shall be guilty of
unfair competition, and shall be subject to an action therefor.
168.3 In particular, and without in any way limiting the scope of
protection against unfair competition, the following shall be deemed
guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the
general appearance of goods of another manufacturer or dealer, either
as to the goods themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or dealer, or
who otherwise clothes the goods with such appearance as shall
deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor engaged
in selling such goods with a lie purpose;
(b) Any person who by any artifice, or device, or who employs
any other means calculated to induce the false belief that such person
is offering the service of another who has identified such services in the
mind of the public; or
(c) Any person who shall make any false statement in the
course of trade or who shall commit any other act contrary to good faith
of a nature calculated to discredit the goods, business or services of
another.
168.4 The remedies provided by Sections 156, 157 and 161
shall apply mutatis mutandis.
The same law, in Section 170, provides the penalty for violation of Section 168:
SEC. 170. Penalties. – Independent of the civil and
administrative sanctions imposed by law, a criminal penalty of
imprisonment from two (2) years to five (5) years and a fine ranging
from Fifty thousand pesos (50,000) to Two hundred thousand pesos
(200,000), shall be imposed on any person who is found guilty of
committing any of the acts mentioned in Section 155, Section 168 and
Subsection 169.1.
25
Petitioners submit that “the importation of even genuine goods can constitute a
crime under the Intellectual Property Code so long as fraud or deceit is present.” The
intent to deceive in this case, according to petitioners, is “patent” “from the following
undisputed facts”:
(a) Before marketing its product, the respondents totally
obliterated and erased the Emulsion Number and Type that was printed
on the box/carton of the product because of which the source of the
goods can no longer be traced.
(b) Respondents even covered the boxes with newspapers to
conceal true identity.
(c) Being also engaged in the sale of photo equipments [sic] and
having had the occasion of participating in the same exhibit with
petitioner Solid Triangle several times already, respondents certainly
knew that petitioner Solid Triangle is the sole and exclusive importer
and distributor of Mitsubishi Photo Paper.
(d) Two agents of the EIIB were also able to confirm from a
salesgirl of respondents that substantial quantity of stocks of Mitsubishi
Photo Paper are available at respondents’ store and that the products
are genuine, as they are duly authorized to sell and distribute it to
interested customers.
(e) No better proof of unfair competition is the seizure of the
goods, 451 boxes of Mitsubishi photographic color paper.xviii[18]
Petitioners further expound:
47. We may categorize the acts of the respondents as
“underground sales and marketing” of genuine goods, undermining the
property rights of petitioner Solid Triangle. The Court of Appeals itself
recognized the rights of a dealer. The acts of the respondents were
made to appropriate unjustly the goodwill of petitioner Solid Triangle,
and goodwill is protected by the law on unfair competition.
48. Petitioner Solid Triangle has established a trade or
business in which it had acquired goodwill and reputation that will be
protected, and so, to permit respondents to continue importing and
distributing Mitsubishi Photo Paper, would be to countenance the
unlawful appropriation of the benefit of a goodwill which petitioner Solid
Triangle has acquired and permit the respondent to grab the reputation
or goodwill of the business of another.
49. x x x petitioners have a valid cause to complain against
respondents for the criminal violation of the Intellectual Property Law
when the latter made it appear that they were duly authorized to sell or
distribute Mitsubishi Photo Paper in the Philippines, when in truth and in
fact they were not, and when they were hiding their importation from the
petitioners by such acts as removing the Emulsion Number and Type
and covering the boxes with old newspapers.xix[19]
We disagree with petitioners and find that the evidence presented before the
trial court does not prove unfair competition under Section 168 of the Intellectual
Property Code. Sanly Corporation did not pass off the subject goods as that of
another. Indeed, it admits that the goods are genuine Mitsubishi photographic paper,
which it purchased from a supplier in Hong Kong.xx[20] Petitioners also allege that
private respondents “made it appear that they were duly authorized to sell or distribute
Mitsubishi Photo Paper in the Philippines.” Assuming that this act constitutes a crime,
there is no proof to establish such an allegation.
We agree with petitioners, however, that the Court of Appeals went beyond the
issues when it ruled that there were no grounds for the issuance of an order of
preliminary attachment. The only issue raised with respect to the preliminary
attachment was whether the application for the writ should have been denied because
the same was not supported by an affidavit of the applicant corporation, through its
authorized officer, who personally knows the facts. Whether there are sufficient
grounds to justify the order is a matter best left to the trial court, which apparently has
yet to hear the matter. Thus, we sustain the Court of Appeals’ original decision
holding that an affidavit of merit is not necessary since the petition is verified by an
authorized officer who personally knows the facts.
Similarly premature is whether petitioners’ failure to return the goods to
respondents constituted indirect contempt. The assailed order dated April 20, 1999
was a “show cause” order. Before any hearing on the order could be held, petitioners
promptly filed a petition for certiorari. Clearly, the trial court had yet to rule on the
matter, and for this Court now to hold petitioners’ act contemptuous would preempt four gallons of CPS mesh prep, and
said court. nine gallons of CD lacquer.61[2]

WHEREFORE, the petition is GRANTED IN PART. The Amendatory Decision

of the Court of Appeals dated March 31, 2000, as well as its Resolution dated August BFTI subsequently filed on April 5, 2005 before Branch 24 of the RTC
4, 2000, is AFFIRMED insofar as it holds that (1) the Quezon City Regional Trial
Court, Branch 93, has the power to determine the existence of a crime in quashing a Manila presided by Judge Eugenio an Urgent Motion to Quash and/or to Exclude or
search warrant and, (2) the evidence does not support a finding that the crime of unfair Suppress Evidence and Return Seized Articles,62[3] alleging as follows, quoted
competition has been committed by respondents; and REVERSED insofar as it holds
that (1) there are no grounds to warrant the issuance of a writ of preliminary verbatim:
attachment and (2) petitioners are guilty of contempt. The case is remanded for
further proceedings to the courts of origin, namely, Branch 91 of RTC, Quezon City for
resolution of the application for a writ of attachment, and Branch 93 of the same court 1. The searching team
for resolution of the application to cite petitioners for contempt. entered the premises and conducted the
search without any witness in violation of the
Petitioners are ordered to return to respondent Sanly Corporation the 451 Rules of Court;
boxes of Mitsubishi photographic color paper seized by virtue of Search Warrant No.
3324 (99) issued by the Quezon City Regional Trial Court, Branch 93. 2. The raiding team
planted evidence of 600 compact discs at the
SO ORDERED. scene while no witnesses were present;
Davide, Jr., C.J., (Chairman), Puno, Pardo, and Ynares-Santiago, JJ., concur. 3. Certification against
forum shopping prescribed by law was not
executed;

4. For search warrant to be

valid, the master tapes must be presented;
SONY COMPUTER ENTERTAINMENT, INC., G.R. No. 169156
Petitioner, 5. The statement made by
Promulgated: the affiants in their joint-affidavit in support of
- versus - February 15, 2007 the application for the search warrant were
false and perjurious;
BRIGHT FUTURE 6. No probable cause
TECHNOLOGIES, INC., exists for the issuance of the warrant;
Respondent.

x - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -x
7. The search conducted
was illegal;
DECISION
8. The place to be
CARPIO MORALES, J.: searched was not described with particularity;

On application of Inspector Rommel G. Macatlang of the Philippine 9. No bond was posted by

the applicant.63[4]
National Police, after a complaint was received from petitioner, Sony Computer
Entertainment, Inc. (SCEI), eight search warrants 60[1] for copyright and trademark
SCEI filed an Opposition64[5] to the motion, to which BFTI filed a Reply,65[6]
infringement, of which Search Warrant Nos. 05-6336 and 05-6337 are relevant to the
the latter arguing that SCEI had no personality to represent the People of the
present case, were issued by the Manila Regional Trial Court (RTC) Executive Judge
Philippines in the case and to file the opposition to the motion because SCEI’s agents
Antonio M. Eugenio, Jr. following which a raid was conducted on the premises of
were mere witnesses of the applicant for the issuance of the search warrants. 66[7]
respondent, Bright Future Technologies, Inc. (BFTI), on April 1, 2005. Seized during
the raid were the following items:
On April 11, 2005, acting on a Very Urgent Motion to Inhibit67[8] filed by
eight replicating machines
five bonding machines SCEI to which BFTI interposed its objection, Judge Eugenio “voluntarily inhibited”
four printing machines himself from the case.68[9] The case was thereafter raffled to Branch 21 of the Manila
seven polycarbonate dryers
one table for silk screen RTC, presided by Judge Amor A. Reyes. 69[10]
ten moulds
two shredder machines
one color blue centroller 61
one dryer machine
62
92 boxes of assorted colors of paint
600 pieces of counterfeit Sony Playstation DVDs 63
285 boxes of blank CDs
64
eight boxes of white blank CDs
nine boxes of AL targets 65
two boxes of sputtering targets
66
18 gallons of UV bonding adhesive
four gallons of DVD bondage 67
21 gallons of phothum chemicals
68
60 69

26
 In the meantime or on April 14, 2005, SCEI, through counsel, filed with the the filing of a bond.79[20] BFTI filed the required bond alright,80[21] and the seized items
Department of Justice Task Force on Anti-Intellectual Property Piracy a complaint- were turned over to its custody.81[22]
affidavit against the directors and officers of BFTI.70[11]
Hence, arose SCEI’s present Petition for Review on Certiorari under Rule
By Order71[12] dated April 18, 2005, the RTC denied BFTI’s motion to 4582[23] which assails the August 8 and August 10, 2005 Orders of the court a quo,
quash the warrants, it finding that they were regularly issued and implemented, and contending that the RTC erred
that a bond is not required in the application for their issuance.
(1) . . . when it
disregarded [its] clear right . . . to appear and
BFTI filed a Motion for Reconsideration72[13] of the denial of its motion to
participate as a private complainant in the
quash. It also filed joint motions “for the inhibition of the Honorable Judge Amor search warrant proceedings;
Reyes,” “for reconsideration of the order of voluntary inhibition dated April 11, 2005,”
(2) . . . when it granted
and “for the return of the case to the executive judge.” 73[14] respondent’s Motion to Quash based on
questions of alleged irregularities by the peace
officers in enforcing the search warrants.
In an Order dated May 20, 2005, Judge Reyes transmitted the records of
(a) . . . when it ruled that the
the case to the Executive Judge pursuant to A.M. No. 03-8-02. 74[15] The case was then
use of the bolt cutter
re-raffled to Branch 8 of the Manila RTC, presided by Judge Felixberto T. Olalia, Jr. 75
violated Section 7 of Rule
[16] 126.

(b) . . . when it ruled that the

enforcement of the
In addressing the issue of SCEI’s personality to appear in the
search warrant violated
proceedings, the RTC held that it would treat SCEI’s counsel as “an officer of [the] the two-witness rule
provided in Section 8 of
Court to argue the other side, so to speak, for the clarification of issues related to
Rule 126;
search and seizure cases and to arrive at a better conclusion and resolution of issues
[3] . . . when it ordered the immediate release of the
in this case.”76[17]
seized property prior to the finality of the
order quashing the search warrants.
The RTC, however, found that the two-witness rule under Section 8 of
(a) . . . when it released the
Rule 126 which provides: seized properties by
virtue of the filing of a
bond by the respondent.83
SEC. 8. Search of house, room, or premises [24]

to be made in presence of two witnesses. ─ No search

of a house, room or any other premise shall be made
The issue of whether a private complainant, like SCEI, has the right to
except in the presence of the lawful occupant thereof or
any member of his family or in the absence of the latter, participate in search warrant proceedings was addressed in the affirmative in United
two witnesses of sufficient age and discretion residing in
Laboratories, Inc. v. Isip:84[25]
the same locality. (Underscoring supplied),

. . . [A] private individual or a private

was violated and that the searching team’s use of a bolt cutter to open the searched corporation complaining to the NBI or to a government
agency charged with the enforcement of special penal
premises was unnecessary, hence, it granted BFTI’s Motion for Reconsideration of its
laws, such as the BFAD, may appear, participate and file
April 18, 2005 Order by Order of August 8, 2005. 77[18] pleadings in the search warrant proceedings to maintain,
inter alia, the validity of the search warrant issued by the
court and the admissibility of the properties seized in
BFTI subsequently filed on August 9, 2005 an Ex Parte Motion to Return anticipation of a criminal case to be filed; such private
party may do so in collaboration with the NBI or such
Seized Articles78[19] which the RTC granted, by Order of August 10, 2005, subject to
government agency. The party may file an opposition to
a motion to quash the search warrant issued by the
court, or a motion for the reconsideration of the court
order granting such motion to quash.85[26] (Emphasis and
70 underscoring supplied)
71
72 79
73 80
74 81
75 82
76 83
77 84
78 85

27
 SCEI insists, however, that the searching team waited for the arrival of the
barangay officials who were summoned to witness the search,89[30] and that “[e]ven
When SCEI then opposed BFTI’s Urgent Motion to Quash and/or to
when the enforcing officers were moving towards the actual BFTI premises . . . they
Suppress or Exclude Evidence and Return Seized Articles (emphasis supplied), the
were accompanied at all times by one of the security guards on duty until the barangay
RTC correctly recognized the participation of SCEI in the proceedings.
officials arrived.”90[31] SCEI’s position raises an issue of fact which is not proper for
consideration in a petition for review on certiorari before this Court under Rule 45,
As for the use of a bolt cutter to gain access to the premises of BFTI, it
which is supposed to cover only issues of law.91[32] In any event, a security guard may
was, under the circumstances, reasonable, contrary to the RTC’s finding that it was
not be considered a “lawful occupant” or “a member of [the lawful occupant’s] family”
unnecessary. For, as the RTC itself found, after the members of the searching team
under the earlier quoted Section 8 of Rule 126.
introduced themselves to the security guards of BFTI and showed them the search
warrants, the guards refused to receive the warrants and to open the premises, they
As the two-witness rule was not complied with, the objects seized during
claiming that “they are not in control of the case.”86[27] The conditions required under
the April 1, 2005 search are inadmissible in evidence. Their return, on motion of BFTI,
Section 7 of Rule 126 were thus complied with:
was thus in order.92[33]

The officer, if refused admittance to the

A final word. The RTC order requiring BFTI to file a bond to ensure the
place of directed search after giving notice of his
purpose and authority, may break open any outer or return of the seized items should the Department of Justice find probable cause
inner door or window of a house or any part of a house
against it in I.S. No. 2005-315, SCEI v. Anthony Bryan B. Sy, et al., has no basis in
or anything therein to execute the warrant or liberate
himself or any person lawfully aiding him when law. Besides, the seized items being inadmissible in evidence, it would serve no
unlawfully detained therein. (Underscoring supplied)
purpose to ensure their return.

The RTC’s finding that the two-witness rule governing the execution of
WHEREFORE, the petition is DENIED.
search warrant was not complied with, which rule is mandatory to ensure regularity in
the execution of the search warrant, 87[28] is in order, however.
The August 8, 2005 Order of the Regional Trial Court of Manila, Branch 8
granting the Urgent Motion to Quash filed by respondent, Bright Future Technologies,
Observed the RTC:
Inc., is AFFIRMED.

At this point, it is worthy of note [sic] the two

statements issued by Barangay Police Subrino P. de
Castro and Gaudencio A. Masambique who affirmed in
their testimonies in Court that, to wit:
xxxx
The August 10, 2005 Order granting the Ex Parte Motion to Return Seized
Articles filed by respondent is AFFIRMED, with the MODIFICATION that the portion
requiring respondent to file a bond is SET ASIDE. Let the bond then filed by
respondent be CANCELLED.

3. Noong ako ay
SO ORDERED.
makarating sa nasabing lugar
nadatnan ko ang mga pulis at
mga miyembro ng Raiding
Team na nasa loob na ng gusali
ng Bright Future at nagsisiyasat
sa mga gamit at makinaryang
naroroon. Pagkatapos ay
nilapitan ako ng isang pulis at
ipinatanggap sa akin ang
nasabing search warrant.

The police were already searching

(“nagsisiyasat”) the area of respondent BFTI in clear
violation of the two-witness rule provided for by Section
8 of Rule 126. These statements of the two Barangay
Police ostensibly arriving late while a search was going
on was corroborated by Insp. Macatlang’s testimony that
the Barangay officials arrived at about 11:30 PM to 12
AM.88[29] (Underscoring supplied)

The RTC did not thus err in ordering the quashal of the search warrants.

89
86 90
87 91
88 92

28
i
ii
iii
iv
v
vi
vii
viii
ix
x
xi
xii
xiii
xiv
xv
xvi
xvii
xviii
xix
xx