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

: This is a petition for certiorari to review the decision of the Court of Appeals in CA G.R. NO. 37824-R entitled "Conrado G. de Leon, plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino and Sons, defendants-appellants," the dispositive portion of which reads: WHEREFORE, with the modification that plintiff-applee's award of moral damages is hereby redured to P3,000.00, the appealed judgment is hereby affirmed, in all othe respects, with costs against appellants. 1 On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for Philippine patent, and having complied in all respects with the statute and the rules of the Philippine Patent Office, Patent No. 658 was lawfully granted and issued to him; that said invention was new, useful, not known or used by others in this country before his invention thereof, not patented or described in any printed publication anywhere before his invention thereof, or more than one year prior to his application for patent thereof, not patented in any foreign country by him or his legal representatives on application filed more than one year prior to his application in this country; that plaintiff has the exclusive license to make, use and sell throughout the Philippines the improvements set forth in said Patent No. 658; that the invention patented by said Patent No. 658 is of great utility and of great value to plaintiff and of great benefit to the public who has demanded and purchased tiles embodying the said invention in very large quantities and in very rapidly increasing quant ies; that he has complied with the Philippine statues relating to marking patented tiles sold by him; that the public has in general acknowledged the validity of said Patent No. 658, and has respected plaintiff's right therein and thereunder; that the defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and selling tiles embodying said patent invention and that defendant F. H. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. Aguas the engravings, castings and devices designed and intended of tiles embodying plaintiff;s patented invention; that he has given direct and personal notice to the defendants of their said acts of infringement and requested them to desist, but nevertheless, defendants have refused and neglected to desist and have disregarded such request, and continue to so infringe causing great and irreparable damage to plaintiff; that if the aforesaid infringement is permitted to continue, further losses and damages and irreparable injury will be sustained by the plaintiff; that there is an urgent need for the immediate issuance of a preliminary injunction; that as a result of the defendants' wrongful conduct, plaintiff has suffered and the defendants are liable to pay him, in addition to actual damages and loss of profits which would be determined upon proper accounting, moral and exemplary or corrective damages in the sum of P90,000.00; that plaintiff has been compelled to go to court for the protection and enforcement of his and to engage the service of counsel, thereby incurring attorney's fees and expenses of litigation in the sum of P5,000.00. 2 On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary Injunction was issued. 3 On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the allegations of the plaintiff and alleging that: the plaintiff is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast tiles, the same having been used by several tile-making factories in the Philippines and abroad years before the alleged invention by de Leon; that Letters Patent No. 658 was unlawfully acquired by making it appear in the application in relation thereto that the process is new and that the plaintiff is the owner of the process when in truth and in fact the process incorporated in the patent application has been known and used in the Philippines by almost all tile makers long before the alleged use and registration of patent by plaintiff Conrado G. de Leon; that the registration of the alleged invention did not confer any right on the plaintiff because the registration was unlawfully secured and was a result of the gross misrepresentation on the part of the plaintiff that his

alleged invention is a new and inventive process; that the allegation of the plaintiff that Patent No. 658 is of great value to plaintiff and of great benefit to the public is a mere conclusion of the plaintiff, the truth being that a) the invention of plaintiff is neither inventive nor new, hence, it is not patentable, b) defendant has been granted valid patents (Patents No. 108, 109, 110 issued on December 21, 1961) on designs for concrete decorative wall tiles; and c) that he can not be guilty of infringement because his products are different from those of the plaintiff. 4 The trial court rendered a decision dated December 29, 1965, the dispositive portion of which reads: WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the defendants: 1. Declaring plaintiff's patent valid and infringed: 2. Granting a perpetual injunction restraining defendants, their officers, agents, employees, associates, confederates, and any and all persons acting under their authority from making and/or using and/or vending tiles embodying said patented invention or adapted to be used in combination embodying the same, and from making, manufacturing, using or selling, engravings, castings and devises designed and intended for use in apparatus for the making of tiles embodying plaintiff's patented invention, and from offering or advertising so to do, and from aiding and abetting or in any way contributing to the infringement of said patent; 3. Ordering that each and all of the infringing tiles, engravings, castings and devices, which are in the possession or under the control of defendants be delivered to plaintiff; 4. Ordering the defendants to jointly and severally pay to the plaintiff the following sums of money, to wit: (a) P10,020.99 by way of actual damages; (b) P50,000.00 by way of moral damages; (c) P5,000.00 by way of exemplary damages; (d) P5,000.00 by way of attorney's fees and (e) costs of suit. 5 The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the following errors. 6 I THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY AS THE SAME HAS ALREADY LONG BEEN USED BY TILE MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY. II THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGE-OLD TILE MAKING SYSTEM.

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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 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. ² 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 nonpatentable process of making mosaic pre-cast tiles; Second error. ² 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. ² 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:

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 defendant Aguas personally, as a building contractor, 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

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still. 13 The contention of the petitioner Aguas that the letters patent of de Leon was actually a patent for the old and non-patentable process of making mosaic pre-cast tiles is devoid of merit. Moreover. 237). There is no showing that this case falls under one of the exceptions when this Court may overrule the findings of fact of the Court of Appeals. accepted the thinness of the private respondent's new tiles as a discovery. 16 The petitioner also claims that changing the design from embossed to engraved tiles is neither new nor inventive because the Machuca Tile Factory and the Pomona Tile Manufacturing Company have been manufacturing decorative wall tiles that are embossed as well as engraved. The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill. the Machuca tiles are heavy and massive. There may be depressions but these depressions are too shallow to be considered engraved. 18 and that the private respondent had copied some designs of Pomona. Besides.be deep enough to produce tiles for sculptured and decorative purposes. which previously had not been achieved by tiles made out of the old process of tile making. p. These tiles are neither artistic nor ornamental. the engraving of deep designs in such a way as to make the tiles decorative.000. Vol. No proof was adduced to show that any tile of the same kind had been produced by others before appellee. 19 The Machuca tiles are different from that of the private respondent. he could not present any. 658 show that although some of the steps or parts of the old process of tile making were described therein. There is.99 by way of actual damages. He has improved the old method of making tiles and pre-cast articles which were not satisfactory because of an intolerable number of breakages. during the trial. protrusions and depressions are known to some sculptors. In fact. others previous to his discovery thereof. The technical staff of the Philippines Patent Office.a concrete sculptured tile which could be utilized for walling and decorative purposes. the process and/or improvement being patentable. there were novel and inventive features mentioned in the process. d) P5. Anent this matter. "D" and "D-1") is a most critical feature. the clear preponderance of evidence bolsters said presumption of validity of appellee's patent. Dellers Edition. c) P5. suffice it to say that what is in issue here is the process involved in tile making and not the design. There is no indication in the records of this case and this Court is unaware of any fact. Aguas did infringe de Leon's patent. the freshly formed tile remains strong enough for its intended purpose. lip width. 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. or known to. The designs are embossed and not engraved as claimed by the petitioner. Cement tiles are made with the use of water. no concrete proof that the improved process of tile-making described in appellee's patent was used by. While it is true that the matter of easement. The old type of tiles were usually intended for floors although there is nothing to prevent one from using them for walling purposes. which would tend to show that concrete wall tiles similar to those produced by appellee had ever been made by others before he started manufacturing the same. but with sufficient durability. easement and field of designs. De Leon's invention has therefore brought about a new and useful kind of tile. suggestive of discovery and inventiveness. In view of the foregoing. b) P50. novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office. 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. 21 The lower court awarded the following damages: 22 a) P10.00 moral damages. There is no similarity between the Pomona Tiles and de Leon's tiles.00 by way of attomey's fees and e) Costs of suit because: 3 . while in ceramics fire is used. The only issue then to be resolved is the amount of damages that should be paid by Aguas. Ideal composition of cement and fine river sand. In its decision the Court of Appeals affirmed the amount of damages awarded by the lower court with the modification that the respondent is only entitled to P3.00 by way of moral damages. plaintiff has succeeded in producing a new product . to be able to produce a new and useful wall tile. Some of the novel features of the private respondent's improvements are the following: critical depth. despite said thinness. the Court of Appeals said: Appellant has not adduced evidence sufficient to overcome the above established legal presumption of validity or to warrant reversal of the findings of the lower court relative to the validity of the patent in question. provided that a certain critical depth is maintained in relation to the dimensions of the tile. 658 was legally issued.00 by way of exemplary damages. This contention is without merit. 12 The validily of the patent issued by the Philippines Patent Office in favor of the private respondent and the question over the inventiveness. is assured. therefore. He has overcome the problem of producing decorative tiles with deep engraving. The records disclose that de Leon's process is an improvement of the old process of tile making. from any earlier source but. as we have already pointed out. This commercial success is evidence of patentability (Walker on Patents. despite the fact that appellant had every chance to do so. by the issuance of the patent in question. among other ingredients that makes possible the production of tough and durable wall tiles. depth. and the fact that the tiles can be mass produced in commercial quantities and can be conveniently stock-piled. it appears that appellee has been deriving considerable profit from his manufacture and sale of such tiles. De Leon never claimed to have invented the process of tile-making. 15 Durability inspite of the thinness and lightness of the tile. 17 that these tiles have also depth. I. useful and inventive.000. 20 The process involved in making cement tiles is different from ceramic tiles. The Pomona tiles are made of ceramics. sodium silicate and screened fine sand. have. He has introduced a new kind of tile for a new purpose.000. Both the trial court and the Court of Appeals found as a fact that the petitioner Domiciano A. strong optimum thickness of appellee's new tiles of only 1/8 of an inch at the deepest easement (Exhs. The tiles produced from de Leon's process are suitable for construction and ornamentation. especially considering that. By using his improved process. appellant was challenged by appellee to present a tile of the same kind as those produced by the latter. amounts to an invention.020. artistic and suitable for wall ornamentation. this Court finds that Patent No. if the totality of all these features are viewed in combination with the Ideal composition of cement. lip width. More so. especially if deep engravings are made on the tile. The Claims and Specifications of Patent No. though thin and light. by using them all together. They are heavy and massive. In fact.000. handled and packed without any intolerable incidence of breakages. composed of experts in their field. 14 The petitioner also contends that the improvement of respondent is not patentable because it is not new. As regards the allegation of the petitioner that the private respondent copied some designs of Pomona.

Under Sec. SO ORDERED. 118708 February 2. No. petitioner filed on December 8. should it proceed with the scheduled testing by the military on December 7. MARTINEZ.R. 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. production. On December 27. 1993. plaintiff was unstandably very sad. Feb. without pronouncement as to costs. private respondent on December 3. 42 of the Patent Law any patentee whose rights have been infringed is entitled to damages which. warning petitioner of a possible court action and/or application for injunction. 36.340. 1993. 2219 NCC). t. Hon. considering especially. 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.n. 37824-R appealed from is hereby affirmed. the decision of the Court of Appeals in CA G. true and actual inventor of the aerial fuze. t.n.) The wantonness and evident bad faith characterizing defendants' prejudicial acts against plaintiff justify the assessment of moral damages in plaintiff's favor. among others: that petitioner is the first. 34425 entitled "Floro International Corp. hearings were held on the application of petitioner for the issuance of a writ of preliminary injunction. discovered that petitioner submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing. After the hearings. UM-6938 3 covering an aerial fuze which was published in the September-October-1990. THE COMPLAINT FOR INJUNCTION AND DAMAGES. INC. under the circumstances such damages are justly due" (Art. In response to private respondent's demand. 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. he worried and became nervous and lost concentration on his work in connection with his tile business (pp.020. the trial court directed the parties to submit their respective memoranda in support of their positions. respondents. plaintiff's character and reputation have been unnecessarily put in question because defendants. the fact that he staked everything on his pre-cast tile business (p. 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. 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. Trademarks and Technology Transfer (BPTTT). Tirso D. though we do not believe the amount of P50. 1993 AND MAY 11.000. 1993. and that the only difference between the two fuzes are miniscule and merely cosmetic in nature. true and actual inventor of an aerial fuze denominated as "Fuze. the trial court issued a temporary restraining order. private respondent was granted by the Bureau of Patents. Branch 88. 1964). that private respondent's aerial fuze is identical in every respect to the petitioner's fuze. private respondent. and owner of the likewise reputed House of Pre-Cast. J. with both parties presenting their evidence.R. 1993 a complaint 6 for injunction and damages arising from the alleged infringement before the Regional Trial Court of Quezon City. airmunitions and other similar materials. he made a gross income of P3. The complaint alleged. sent a letter 5 to petitioner advising it of its existing patent and its rights thereunder.00 awarded by the lower court is warranted by the circumstances. petitioner. a Letters Patent No. distribution and sale of military armaments. Vol.. CIVIL CASE NO. he is entitled to an award of moral damages in the sum of P50.000. petitioner began supplying the AFP with the said aerial fuze. that sometime in 1986. 30. 1990.C Cruz and Creser Precision System. Id. 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.A. J. 5 issue of the Bureau of Patent's Official Gazette. Necessarily. To protect its right. Mr.. Inc. 1993. Considering the wantonness of the infringement committed by the defendants who knew all the time about the existence of plaintiff's patent. 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. Private respondent is a domestic corporation engaged in the manufacture.99. PDR 77 CB4" which it developed as early as December 1981 under the SelfReliance Defense Posture Program (SRDP) of the AFP. 1998 CRESER PRECISION SYSTEMS.00 to be paid jointly and severally by defendants. the dispositive portion of which reads: WHEREFORE.00.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. On December 10. said acts of defendants have caused plaintiff considerable mental suffering..33. took no part. Thereafter.. 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.000. Guerrero. 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. the Court hereby awards plaintiff exemplary damages in the sum of P5. No. that petitioner's available remedy is to file a petition for cancellation of patent before the Bureau of Patents. We feel that said amount should be reduced to P3. "Willful injury to property may be a legal ground for awarding moral damages if the court should find that. G.. privileges and benefits to which it is duly entitled as the first. In addition. the Court feels there is reason to grant plaintiff maximum damages in the sum of P10. which can be safely be considered the amount by which he enriched himself when he infringed plaintiff's patent. Considering the status of plaintiff as a reputable businessman. COURT OF APPEALS AND FLORO INTERNATIONAL CORP. vs. Gregory Floro. 2 On January 23. Makasiar.-G. Melencio-Herrera and Plana. JJ. 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. concur. III. 4 .00 by way of compensating appellee for his moral suffering.000. 4 Sometime in November 1993. SP No. vs. No. 1994 ARE ORDERED SET ASIDE. marketing and/or profiting therefrom. munitions. Jr. 28. 28.s. and/or from performing any other act in connection therewith or tending to prejudice and deprive it of any rights. through its president.". 1994 in C.. WHEREFORE.s.: This petition for review on certiorari assails the decision 1 of the Court of Appeals dated November 9.R.. Teehankee. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY ORDERED DISMISSED AND HIS ORDERS THEREIN OF DECEMBER 29. THE PETITION IS HEREBY GRANTED.

A patent. The motion for reconsideration was also denied on January 17. and from profiting therefrom. filed a petition for certiorari. 42." With regards to the defendant's assertion that an action for infringement may only be brought by "anyone possessing right. 1993 and dismissing the complaint filed by petitioner. the respondent court rendered the now assailed decision reversing the trial court's Order of December 29. Therefore. Civil action for infringement. On November 9. 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. the world is free to copy and use it with impunity. The last actual. or anyone possessing any right. has no cause of action for infringement because the right to maintain an infringement suit depends on the existence of the patent. 1993. 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 over the patented aerial fuze and cause it irreparable damages. During the hearing for the issuance of the preliminary injunction. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in granting the preliminary injunction. Private respondent moved for reconsideration but this was denied by the trial court in its Order 9 of May 11. the order issued by the Court in effect maintained the status quo. an action for infringement not as a patentee but as an entity in possession of a right. RA 165 to include only "the first true and actual inventor. The defendant's claim is primarily hinged on its patent (Letters Patent No. He has the right to make. assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested. On the contrary. While petitioner claims to be the first inventor of the aerial fuze. title or interest to the patented invention. refers only to the patentee's successors-in-interest. plaintiffs application for the issuance of a writ of preliminary injunction is granted and. d. 13 In short. 165. Defendant further contends that the order in issue is disruptive of the status quo. . otherwise known as the Patent Law. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his right. still it has no right of property over the same upon which it can maintain a suit unless it obtains a patent therefor. . With the issuance of the order. the proper venue is the Office of the Director of Patents. let the writ of preliminary injunction be issued by the branch Clerk of this Court enjoining the defendant and any and all persons acting on its behalf or by and under its authority. under Section 42 of the Patent Law (R. It is petitioner's contention that it can file. WHEREFORE. 10. 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. The phrase "anyone possessing any right. ² Any patentee. explicitly provides: Sec.000. the trial court issued an Order 8 granting the issuance of a writ of preliminary injunction against private respondent the dispositive portion of which reads: WHEREFORE. marketing and/or selling aerial fuzes identical to those of the plaintiff. the operations of the plaintiff continue. this court believes that the defendant will not suffer irreparable injury by virtue of said order. only the patentee or his successors-in-interest may file an action for infringement.00. b. 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. marketing and/or selling aerial fuzes identical. 5 . Aggrieved. assignees. mandamus and prohibition 10 before respondent Court of Appeals raising as grounds the following: a.A. to those of plaintiff. It advances the theory that while the absence of a patent may prevent one from lawfully suing another for infringement of said patent. premises considered. RA 165) qualified by Sec. UM-6983) the validity of which is being questioned in this case. 165). the plaintiff has amply proven its entitlement to the relief prayed for. 1995. Petitioner has no cause of action for infringement against private respondent. 14 Petitioner admits it has no patent over its aerial fuze. . from manufacturing. of the exclusive right. Under the aforequoted law. Thus. 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. may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law. 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. 1994. or as grantees. the case being an action for cancellation or invalidation of private respondent's Letters Patent over its own aerial fuze. the Motion for Reconsideration is hereby denied for lack of merit. there can be no infringement of a patent until a patent has been issued. whose rights have been infringed. This remedy. may bring a civil action before the proper Court of First Instance (now Regional Trial court). it being disruptive of the status quo. The Court finds no sufficient cause to reconsider its order dated December 29. title or interest in and to the patented invention. c. his heirs. 1993. this present petition. 1994. 1994. SO ORDERED. title or interest in and to the patented invention.A. and from profiting therefrom and/or performing any other act in connection therewith until further orders from this Court. and/or from performing any other act in connection therewith until further orders from this Court. Section 42 of R. private respondent on June 27. such as by offering it for sale. the latter not having any patent for the aerial fuze which it claims to have invented and developed and allegedly infringed by private respondent. however. 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." (Section 42. pertinent portions of which read: For resolution before this Court is the Motion for Reconsideration filed by the defendant and the plaintiff's Opposition thereto. since whatever right one has to the invention covered by the patent arises alone from the grant of patent.On December 29. Under American jurisprudence. it has no legal basis or cause of action to institute the petition for injunction and damages arising from the alleged infringement by private respondent. We find the above arguments untenable. whether as patentee. 11 Hence. petitioner points out. legal representatives or assignees. but if he voluntarily discloses it. Sec. "this court finds the foregoing to be untenable. The trial court acted in grave abuse of discretion and/or in excess of jurisdiction in finding that petitioner has fully established its clear title or right to preliminary injunction. upon posting of the corresponding bond by plaintiff in the amount of PHP 200. and e. title or interest in and to the patented invention" upon which petitioner maintains its present suit. use and vend his own invention. Lastly. 12 Moreover. an inventor has no common-law right to a monopoly of his invention.

(3) a pair of paddy wheels. 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. novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office. and (10) an idler pulley installed on the engine foundation. in the absence of error or abuse of power or lack of jurisdiction or grave abuse of discretion. petitioner Pascual Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringement of patent and unfair competition. the judgment appealed from is hereby AFFIRMED. he has the exclusive right of making.. JJ. 3.00) as reimbursement of attorney's fees and other expenses of litigation. herein private respondent. SO ORDERED. plus the further sum of Eighty Thousand Pesos (P80. the court held Pascual Godines liable for infringement of patent and unfair competition. As such. (5) a transmission case. we sustain the assailed decision of the respondent Court of Appeal. After trial. concur. Hence. Ordering the defendant to pay the plaintiff. Jesus S. this petition was filed. Melo. J. The dispositive portion of the decision reads as follows: WHEREFORE." In the case of Aguas vs.: Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court. he could not be liable for 6 . composed of experts in their field. the main components of which are the following: "(1) a vacuumatic house float. (6) an operating handle.. Thereafter. 97343 September 13.. Petitioner maintains the defenses which he raised before the trial and appellate courts.gives the inventor the right to exclude all others. it has in its favor not only the presumption of validity of its patent. petitioner. The dispositive portion of the assailed decision is hereby quoted to wit: WHEREFORE. its chairman and president. He can. as correctly ruled by the respondent Court of Appeals in its assailed decision: "since the petitioner (private respondent herein) is the patentee of the disputed invention embraced by letters of patent UM No.000. The operator handles the hand tractor through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a Ushaped G. hence. Thus. As a patentee. No. and against defendant Pascual Godines: 1. Inc. have. file a petition for cancellation of the patent within three (3) years from the publication of said patent with the Director of Patents and raise as ground therefor that the person to whom the patent was issued is not the true and actual inventor. 4 The decision was affirmed by the appellate court.00) as damages to its business reputation and goodwill. vs. anyone who has no patent over an invention but claims to have a right or interest thereto can not file an action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. by virtue of a Deed of Assignment executed by the latter in its favor. Declaring the writ of preliminary injunction issued by this Court against defendant as permanent. it can not now assail or impugn the validity of the private respondent's letters patent by claiming that it is the true and actual inventor of the aerial fuze. 1993 PASCUAL GODINES. 1976. 16 we stated that: The validity of the patent issued by the Philippine Patent Office in favor of the private respondent and the question over the investments. UM-2236 issued by the Philippine Patent Office to one Magdalena S. The engine drives the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. private respondent manufactured and sold the patented power tillers with the patent imprinted on them.00) for unrealized profits during the period defendant was manufacturing and selling copied or imitation floating power tiller. G. respondents. Upon investigation. Regalado.R. ROMERO.I. is not left without any remedy.000. the further sum of Eight Thousand Pesos (P8. pipe at the V-shaped end. Arturo M. SPECIAL FOURTH DIVISION and SVAGRO ENTERPRISES.000." 2 The patented hand tractor works in the following manner: "the engine drives the transmission gear thru the V-belt. The V-belt drives the pulley attached to the transmission gear which in turn drives the shaft where the paddy wheels are attached. SV-Agro Industries caused the publication of the patent in Bulletin Today. De Leon. 1979. Anonat for petitioner. and to pay the costs of the suit. In 1979. SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair competition. premises considered. Puno and Mendoza. There is a presumption that the Philippine Patent Office has correctly determined the patentability of the improvement by the private respondent of the process in question. 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. from Magdalena Villaruz. a driven pulley and a transmission shaft. accepted the thinness of the private respondent's new tiles as a discovery. Zamboanga del Sur branch. however. The technical Staff of the Philippines Patent Office. (8) a frontal frame extension above the quarter ² circularly shaped water covering hold (sic) in place the transmission case. Thus. JUDGMENT is hereby rendered in favor of the plaintiff SV-Agro Industries Enterprises.. with the elimination of the award for attorney's fees. it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. a newspaper of general circulation. Villaruz on July 15. Alinio for private respondent. In accordance with the patent. petitioner's remedy is not to file an action for injunction or infringement but to file a petition for cancellation of private respondent's patent. Consequently. with costs against appellant. but that of a legal and factual first and true inventor of the invention. On October 31. Said person. by the issuance of the patent in question. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50. (2) a harrow with adjustable operating handle. (4) a protective water covering for the engine main drive. Upon petitioner's failure to comply with the demand. The reason for this is that the said remedy is available only to the patent holder or his successors-in-interest. 2. THE HONORABLE COURT OF APPEALS. 1990 by the Bureau of Patents. using or selling the invention. It covers a utility model for a hand tractor or power tiller. (9) a V-belt connection to the engine main drive with transmission gear through the pulley. under Section 28 of the aforementioned law. 6938 issued to it on January 23. the decision of the Court of Appeals is hereby AFFIRMED. No pronouncement as to costs. SV-Agro Industries suffered a decline of more than 50% in sales in its Molave. SO ORDERED. 15 Further. WHEREFORE. INC. Inc. 1 The patent involved in this case is Letters Patent No." 3 The above mentioned patent was acquired by SV-Agro Industries Enterprises. private respondent notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Petitioner however failed to do so. (7) an engine foundation on the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed. In fine.

And. it is also observed that petitioner also called his power tiller as a floating power tiller. (TSN. the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form. 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. 1984. the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff. 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. in infringement of patent. similarities or differences are to be determined. rather than technical. On the other hand. The question now arises: Did petitioner's product infringe upon the patent of private respondent? Tests have been established to determine infringement. Such imitation would leave room for ² indeed encourage ² the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which. resort must be had. We are compelled to arrive at no other conclusion but that there was infringement. . meaning that defendant is principally a manufacturer of power tillers. selling and distributing them long before plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental. 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. principle or mode of operation. 15 It also stated: 7 . This is contrary to the usual business and manufacturing practice. in the first instance." 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. a paddy in front. March 12. In dismissing the first argument of petitioner herein. attached to the side of the vacuumatic housing float and supported by the upstanding G. . and that those made by him were different from those being manufactured and sold by private respondent. it is necessary and sufficient to constitute equivalency that the same function can be performed in substantially the same way or manner. . "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and. but upon his own specification and design. Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutching at straws. mere differences of form or name are immaterial. 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. and hence outside the reach of the law. employed for 11 years as welder of the Ozamis Engineering. both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. side. the operating handle. August 19. The question of whether petitioner was manufacturing and selling power tillers is a question of fact better addressed to the lower courts. In appearance and form. repeat jobs and material wastage. the Court of Appeals quoted the findings of the court. We find no merit in his arguments. and (b) the doctrine of equivalents. 13) 10 Moreover. 14 In this case. 7 In using literal infringement as a test. not by the names of things. . Both have the circularly-shaped vacuumatic housing float. Witness Rodrigo took photographs of the same power tillers (front. 7). to determine whether there is exact identity of all material elements. or by the same or substantially the same. If accused matter clearly falls within the claim. configuration. the trial court observed: Defendant's witness Eduardo Cañete. design and appearance. No document was (sic) ever been presented showing such job orders. But a careful examination between the two power tillers will show that they will operate on the same fundamental principles. were manufactured and sold by him (see TSN. but in the light of what elements do. 1987. the harrow housing with its operating handle and the paddy wheel protective covering. In operation. performs substantially the same function in substantially the same way to achieve substantially the same result. a transmission box housing the transmission gears. This was admitted by the defendant himself in court that they are operating on the same principles. to the words of the claim. p. . 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. top and back views for purposes of comparison (see Exhibits H-4 to H-28). At the center was the turtle power tiller of plaintiff." 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. a handle which is V-shaped and inclined upwardly. 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. p. and it is rather unusual for defendant to manufacture something without the specification and designs. would be enough to take the copied matter outside the claim. according to establish jurisprudence. These are (a) literal infringement. the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications.I. Defendant admitted to the Court that two (2) of the power inspected on March 12. More specifically. 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. 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. 9 The trial court made the following observation: Samples of the defendant's floating power tiller have been produced and inspected by the court and compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H28)." 8 To determine whether the particular item falls within the literal meaning of the patent claims. 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. and on both sides thereof were the floating power tillers of defendant (Exhibits H to H-2). and that said appellate court's findings of fact are conclusive upon this Court. The parts or components thereof are virtually the same. though adding nothing. considering that he is an engineer by profession and proprietor of the Ozamis Engineering shop. 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 ". pipes and an engine base at the top midportion of the vacuumatic housing float to which the engine drive may be attached. but where these tests are satisfied. albeit with some modification and change." 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. infringement is made out and that is the end of it.infringement of patent and unfair competition. . 12 Thus. This is not only time consuming. ". a protective water covering. not upon specification and design of buyers. identity in the test. but costly because it involves a trial and error method. The three power tillers were placed alongside with each other. . according to this doctrine. Viewed from any perspective or angle. 1984. and substantial. However.

1974. Rollo." said Justice Brown. Rollo. If two devices do the same work in substantially the same way. Pasig Branch. Tan. for a period of 5years fromApril 5. UM-450 (extended and/or renewed under Extension No. and the second. "In one sense. Rosario C. 1971) 2. premises considered. par. for infringing the aforesaid letters patent. (Emphasis ours) As far as the issue regarding unfair competition is concerned. using. Rollo. the first dated July 6. Rosario C. UM110 for a period of 5 years from January 26. Tan). use and sell the patented machine. Extension UM-110 and Utility Model No. . (Taken from allegations in the Answer.To establish an infringement. 1184. Rosario C. ² . 7-8). (Taken from allegations in the Answer. 1972) 3. 86). as amended. ² A patentee shall have the exclusive right to make." 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. . 19908. xxx xxx xxx Considering the foregoing. ROSARIO C. 37. titled "SUSANA LUCHAN v. throughout the territory of the Philippines for the terms of the patent. and to use the patented process for the purpose of industry or commerce. denying the motion for reconsideration of the first resolution above-mentioned. respondents. petitioner explained such production and sale constitute infringement of said patents and therefore its immediate discontinuance is demanded. and such making. 838. 1976 in CA-G. But another construction. Bidin. on August 24. dated November 4. Susana Luchan v.:p Submitted on December 9. JJ. 4. 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. 29. petitioner. the decision of the Court of Appeals is hereby AFFIRMED and this petition DENIED for lack of merit. concur. The law will protect a patentee against imitation of his patent by other forms and proportions. Tan). PARAS. UM109 for a period of 5 years from October 6. (3) Utility Model Letters Patent Extension No. provides. 165. Ambrosio Padilla Law Offices for petitioner. MAGUAN (formerly ROSARIO C. L-45101 November 28. (2) Utility Model Letters Patent No.. providing. In her answer. J. article or product. would be so obviously unjust that no court could be expected to adopt it. TAN). Rollo. it is not essential to show that the defendant adopted the device or process in every particular. Unfair competition. Hon. even though they differ in name. 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. otherwise it will be compelled to take judicial action. and accomplish substantially the same result. et al. pp. 1974. "it may be said that no device can be adjudged an infringement that does not substantially correspond with the patent. inter alia: Sec. 93). private respondent alleged that the products she is manufacturing and offering for sale are not Identical. pp. further alleged that petitioner's patents in question are void on the following grounds: G. or even only substantially Identical to the products covered by petitioner's patents and. Right of Patentees. Rollo. . UM-1184 (Inter Partes Case No. xxx xxx xxx In particular. THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN. And on July 25. among others. filed a complaint for damages with injunction and preliminary injunction against private respondent with the then Court of First Instance of Rizal. 1976. either as to the goods themselves or in the wrapping of the packages in which they are contained. we find no reversible error in the decision of the Court of Appeals affirming with modification the decision of the trial court.(Petition. which would limit these words to exact mechanism described in the patent. (Rollo. or shape. they are the same. Feliciano. the following shall be deemed guilty of unfair competition: (a) Any person. p. Susana Luchan v. WHEREFORE. . 1977 for Our decision is this petition for review on certiorari of the two Resolutions of the Court of Appeals. 166. resemble Identical or substantially Identical powder puffs of which the former is a patent holder under Registration Certification Nos. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. . No. UM-110 (Inter Partes Case No. In a letter dated July 10. pp. . rights and remedies. and prayed. par. petitioner informed private respondent that the powder puffs the latter is manufacturing and selling to various enterprises particularly those in the cosmetics industry. 10. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. 6-7). p. and without in any way limiting the scope of unfair competition. by way of affirmative defenses. that a writ of preliminary injunction be immediately issued (Complaint.. Proof of an adoption of the substance of the thing will be sufficient. 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. SP-04706. 1976. is on leave. UM 1184. or selling by any person without the authorization of the Patentee constitutes infringement of the patent. Susana Luchan v." It is undisputed that petitioner is a patent holder of powder puff namely: 1. 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. petitioner. In view thereof. HONRADO. J. 839. as amended. Melo and Vitug. docketed as Civil Case No. 16 We pronounce petitioner liable for infringement in accordance with Section 37 of Republic Act No. setting aside its Decision of February 16. 1974. vs. UM-109 (Inter Partes Case No. 90). UM-423 (extended and/or renewed under Extension No.R. inter alia: Sec. form. p. or in any other feature of their appearance. . . Extension UM-109. 1986 8 . 1974 (Annex "D". or the devices or words thereon. 840. 94-95). suffice it to say that Republic Act No.R.

the utility models applied for were not new and patentable under Sec. (2) Writ of preliminary injunction dated September 18. p. as amended by R. the trial court denied private respondent's motion for reconsideration (Annex "N". Rollo. respondents. granting the preliminary injunction. 1975. all issued in connection with Civil Case No. her claim in her application of a unitary powder puff. On September 18. No. or using or causing to be used in accordance with. 1975. p. On October 15. THEREFORE. and neither did she derive her rights from any true and actual author of these utility models. II THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE THEORY OF RESPONDENT JUDGE THAT HE HAS NO JURISDICTION TO INVALIDATE THE PATENTS UPON GROUND OF LACK OF NOVELTY OF THE PRODUCTS PATENTED. such cannot be the basis for preliminary injunction (Motion for Reconsideration. Said court noticed that contrary to the lower courts position that the court a quo had no jurisdiction to determine the question of invalidity of the patents. p. powder puffs of the kind applied for were then already existing and publicly being sold in the market. 450 (Extension No. UM110). 131). 1974. Reviewing on reconsideration. 19908. Rollo. It made clear the question of whether the patents have been infringed or not was not determined considering the court a quo has yet to decide the case on the merits (Ibid. 864. 148-171) reiterating among other things the invalidity of petitioner's patents and prayed that the trial court be restrained from enforcing or continuing to enforce the following: (1) Order dated September 18. selling or causing to be sold. for the following reasons: (a) since years prior to the filing of applications for the patents involved. the proceedings complained of in the petition to wit: 1) Order dated September 18. Rollo. (Answer. and Order dated September 11. 190). p. SO ORDERED. 1976. p. 93-94). Rollo. 186). p. and/or any person/persons acting on your stead. (CA Decision. 1974. both in the Philippines and abroad. pp. Consequently. and Utility Model No. Rollo. were but a complicated and impractical version of an old. making or causing to be made. the trial court issued an Order (Annex "K". Rollo. Feeling aggrieved. granting the preliminary injunction. finding no merit in the herein petition.73) On February 16. In an Order dated September 11.A. Section 45 and 46 of the Patent Law allow the court to 9 . respondent court promulgated a decision the dispositive portion of which reads: WHEREFORE. simple one which has been well known to the cosmetics industry since years previous to her filing of applications. 55 of R. 1. p. pp. 1974. was but an limitation of a product well known to the cosmetics industry since years previous to her firing of application. Rollo. 1975. or embodying the utility models of the Philippine Patent Office Utility Model Letters Patent Nos. 2) Writ of Preliminary Injunction dated September 18. the Writ of Preliminary Injunction was issued by the respondent Court of Appeals as follows: NOW. 132). 125) granting the preliminary injunction prayed for by petitioner. Rollo.(1) at the time of filing of application for the patents involved. (Annex "P". the same is hereby dismissed and the preliminary injunction previously issued by this Court is hereby set aside. p. are hereby ENJOINED to RESTRAIN from enforcing or continuing to enforce. 1184 or from infringement upon or violating said letters patent in any way whatsoever (Annex " K-1 ". UM-109). 142). UNTIL FURTHER ORDERS FROM THIS COURT. you. with costs. and with respect to UM1184. her agents. Private respondent questioned the propriety of the trial court's issuance of the Writ of Preliminary Injunction arguing that since there is still a pending cancellation proceedings before the Philippine Patent Office concerning petitioner's patents. of "construction" or process of manufacturing the utility models applied for. servants and employees from directly or indirectly manufacturing. 1975 (Annex "D". 189). and (b) applicant's claims in her applications. denying petitioner's motion for reconsideration. ln said decision respondent court stated that in disposing of the petition it tackled only the issue of whether the court a quo acted with grave abuse of discretion in issuing the challenged orders. 1974. private respondent moved to reconsider the afore-mentioned Decision based on the following grounds: I THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE EXISTENCE OF A FAIR QUESTION OF INVALIDITY OF PRIVATE RESPONDENT'S PATENTS. the corresponding writ was subsequently issued (Annex "K-1". 131) enjoining the herein private respondent (then defendant) and all other persons employed by her. p. 165. and which belonged to no one except to the general public. and (3) Order dated September 11. 1974.A. Rollo. with respect to UM-423 and UM-450. 1974 denying petitioner's motion petition for reconsideration. and (2) the person to whom the patents were issued was not the true and actual author of the utility models applied for. respondent court gave weight to private respondent's allegation that the latter's products are not identical or even only substantially identical to the products covered by petitioner's patents. In challenging these Orders private respondent filed a petition for certiorari with the respondent court on September 29. (Motion for Reconsideration. Rollo. 423 (Extension No. and which belonged to no one except to the general public..

Rollo. the dispositive portion of which reads: WHEREFORE. the petition was given due course (Rollo. 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. p. 46 of the same law which provides that if the Court shall find the patent or any claim thereof invalid. Accordingly. petitioner filed her Reply (Rollo. 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. 95 SCRA 359). 1976. Without pronouncement as to costs. p. (2) Whether or not the Court a quo committed grave abuse of discretion in the issuance of a writ of preliminary injunction. Yaptico & Co.. Chua. The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by competent evidence this legal presumption. 42. the Director shall on certification of the final judgment . 1977.. 290) which was filed on December 16. p. 1976 (Rollo. without giving due course to the petition. will be fatal to. the Court resolved to declare the case submitted for decision on December 9.M. Rollo. Kosuyana 59 Phil. respondent court considered it a grave abuse of discretion when the court a quo issued the writ being questioned without looking into the defenses alleged by herein private respondent. 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. denied the same for lack of merit. 57 Phil. Petition). F.A. 402) In the same manner. 359). A patentee shall have the exclusive right to make. 1976. (Rollo. as correctly stated by respondent Court of Appeals. p. the right to the relief demanded must be clear and unmistakable. not persuaded by the grounds embodied in the motion for reconsideration filed by herein petitioner (Annex "V ". et al. is not sufficient to support such drastic relief (8 Deller's Walker on Patents p. and the same is in due form. 281). 1976 Resolution (Rollo. pp. (Ibid. F. it considered the remedy of appeal. ² 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. 165). 1977 (Rollo. Then. this petition. the challenged orders. R. 1967) and the dissolution of the writ is proper where applicant has doubtful title to the disputed property. 207 [1933]).A. (Sangki v. 10 . thereby maintaining the same stand it took in its July 6. Vargas v. supra). v. it is ministerial on the part of the patent office to execute the judgment. respondent court. to be inadequate.make a finding on the validity or invalidity of patents and in the event there exists a fair question of its invalidity. It has been repeatedly held that an invention must possess the essential elements of novelty . 199 [1919]. 21 SCRA 1392. (3) Whether or not certiorari is the proper remedy. (CA Resolution. 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. (Ramos v. as a general rule because of the injurious consequences a writ of injunction may bring. et al. December 26. there is created a prima facie presumption of its correctness and validity. 1977 (Rollo. Invention not considered new or patentable. 227). 323) and on May 30." Upon such certification. The question then in the instant case is whether or not the evidence introduced by private respondent herein is sufficient to overcome said presumption. Defenses in an action for infringement are provided for in Section 45 of the same law which in fact were availed of by private respondent in this case. 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. 345). C. 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. The issuance of letters patent. 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. In a Resolution dated November 4. 226). use and sell the patented article or product and the making. more specifically. Frank and Gohn v. Kosuyama Vargas v. (Frank. 37. Petitioner filed her brief on July 14. 9 of the Patent Law) before the date of his application for his patent." (Vargas v.M. or selling by any person without the authorization of the patentee constitutes infringement of the patent (Sec. 40 Phil. our decision is hereby set aside. Thus. The writ of certiorari is ordered issued. p. issue an order cancelling the patent or the claims found invalid and shall publish a notice thereof in the Official Gazette. Comelec. and each of them. 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. Thereafter. The burden of proof to substantiate a charge of infringement is with the plaintiff. 351) while private respondent filed her brief on August 25. p. are hereby set aside. 1977 (Rollo. III. this Court required respondent to file her Comment (Rollo. pp. Thereafter. 221-222). 359). petitioner having failed to file reply brief.M. the validity of the patent when issued. pp. originality and precedence and for the patentee to be entitled to protection. 406). respondent court made a complete turnabout from its original decision and promulgated a Resolution. The law provides: SEC. II. p. standing alone. Yaptico & Co. the invention must be new to the world. a single instance of public use of the invention by a patentee for more than two years (now for more than one year only under Sec. Exhibit H and H-1 and the order denying the motion for reconsideration (Annex "K". 165). Thus. Chua. the situation calls for a denial of the writ of preliminary injunction pending the evaluation of the evidence presented (Rollo. Under the present Patent Law. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be correct.. this conclusion is reinforced by Sec. Any patentee whose rights have been infringed upon may bring an action before the proper CFI now (RTC) and to secure an injunction for the protection of his rights (Sec.A. under American Law from which our Patent Law was derived (Vargas v. using. novelty or prior use.. on July 6. p. Hence. 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. 218-226).. Further. On December 3. under the circumstances. p. on the mistaken notion that such question in within the exclusive jurisdiction of the patent office. there is even less reason to doubt that the trial court has jurisdiction to declare the patents in question invalid. under our jurisprudence. 1976. are open to judicial examination. 291-316). pp. 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. 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. The assignment of errors raised by the petitioner in this case (Rollo. 9. But where the plaintiff introduces the patent in evidence. Yaptico & Co. and Vargas v. F. p. 790-791 [1933]. finding the lower court's position to have been opposed to Patent Law. SO ORDERED. Accordingly. the questions of invention. R.

Honrado. 69 SCRA 328 [1976] where the First Division of the Supreme Court ruled that "The prerogative writ of certiorari may be applied for by proper petition notwithstanding the existence of the regular remedy of an appeal in due cause when among other reasons. "K" and covered by the Letters Patent of respondent. Fernan. it is elementary that the trial judge is a mere nominal party as clearly provided in Section 5. "L. the broader interests of justice so require or an ordinary appeal is not an adequate remedy. for brevity) for the casting of LPG burners one of which had the configuration. respondent appellate court is of the view that ordinary appeal is obviously inadequate. namely: the existence of the right to be protected and the violation of said right. 128 SCRA 276). the assailed resolutions of the Court of Appeals are hereby AFFIRMED. This is a matter which is properly within the competence of the Patent Office the official action of which has the presumption of correctness and may not be interfered with in the absence of new evidence carrying thorough conviction that the Office has erred. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions." (b) a brochure distributed by Manila Gas Corporation disclosing a pictorial representation of Ransome Burner made by Ransome Torch and Burner Company. (c) a brochure distributed by Esso Gasul or Esso Standard Eastern. On the other hand. and Feliciano. Quintillan. 286-287). There is no dispute that petitioner has seasonably petitioned." (Hon. 194-199)." Private respondent maintains the position that the resolutions sought to be appealed from had long become final and executory for failure of Hon. Gutierrez. in this case. Tarona v. configuration and mechanism as that of the model covered by the Letters Patent issued to private respondent. the trial court judge. COURT OF APPEALS. As found by respondent Court of Appeals. Such contention is untenable. PREMISES CONSIDERED. Rule 65 of the Revised Rules of Court where it shall be the duty of such person or persons interested in sustaining the proceedings in court. Under the circumstances. G. and that after her husband's separation from the shop she organized Besco Metal Manufacturing (BESCO METAL. true and actual inventor nor did she derive her rights from the original. Court of Appeals. UM-4609 was issued. was not inventive." Relative thereto "the judge whose order is under attack is merely a nominal party. 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. 113388 September 5.. Lim Se v. * JJ. Ong testified that he worked as a helper in the UNITED FOUNDRY from 1965 to 1970 where he helped in the casting of LPG burners with the same form. its findings must be accepted if they are consistent with the evidence.. Alampay. and. Private respondent contends that powder puffs Identical in appearance with that covered by petitioner's patents existed and were publicly known and used as early as 1963 long before petitioner was issued the patents in question. respondents. "since sufficient proofs have been introduced in evidence showing a fair question of the invalidity of the patents issued for such models.It will be noted that the validity of petitioner's patents is in question for want of novelty. "D. pp. her husband Ong Bun Tua and Fidel Francisco. 735-736. took no part. and MELECIA MADOLARIA. "E. BELLOSILLO. (Buayan Cattle Co." Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970. as amended. Inc. that Ong helped in the casting of an LPG burner which was the same utility model of a burner for which Letters Patent No.. Petitioner also presented in evidence her own model of an LPG burner called "Ransome" burner marked Exh. Inc. both in his or their own behalf and in behalf of the court or judge affected by the proceedings. 14. v. it is but right that the evidence be looked into. UM-4609 for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY. Rollo. 45 thereof which may be raised anytime. Argel. For failure to determine first the validity of the patents before aforesaid issuance of the writ. Alcasid v. 28 of the Patent Law and not to a defense against an action for infringement under Sec. p. (b) the products which were produced in accordance with the utility model covered by the letters patent had been in public use or on sale in the Philippines for more than one (1) year before the application for patent therefor was filed. 1 Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of Letters Patent No. vs.: The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. marked Exh. pp. new or useful. Since the Patent Office is an expert body preeminently qualified to determine questions of patentability. evaluated and determined on the merits so that the matter of whether the patents issued were in fact valid or not may be resolved. Sayo. of the Philippines showing a picture of another similar burner with top elevation view and another perspective view of the same burner. for brevity)." which was allegedly manufactured in 1974 or 1975 and sold by her in the course of her business operation in the name of BESCO METAL. 524. with doubts as to patentability resolved in favor of the Patent Office. No. Petitioner claimed that this "Ransome" burner (Exh. concur. Petitioner presented in evidence an alleged model of an LPG burner marked Exh. SO ORDERED. (Rollo. In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by the letters patent of respondent had been known or used by others in the Philippines for more than one (1) year before she filed her application for letters patent on 9 December 1979. All these notwithstanding. marked Exh. J. Francisco testified that he had been employed with the Manila Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he retired 11 . As correctly observed by respondent Court of Appeals. (d) the letters patent was secured by means of fraud or misrepresentation. (b) the specification of the letters patent did not comply with the requirements of Sec. and testified that it was given to her in January 1982 by one of her customers who allegedly acquired it from UNITED FOUNDRY. Feria (Chairman). true and actual inventor of the utility model covered by the letters patent. petitioner. form and component parts similar to those being manufactured by UNITED FOUNDRY. marked Exh. (c) respondent Melecia Madolaria was not the original. Petitioner presented the following documents which she correspondingly marked as exhibits: (a) affidavit of petitioner alleging the existence of prior art. RA No. "to appear and defend. to appeal by certiorari from the resolutions of respondent Court of Appeals. 291-292). as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION. 102 Phil. pp." and. (Rollo. it appears obvious that the trial court committed a grave abuse of discretion which makes certiorari the appropriate remedy. A parallel was drawn from a decision of the Supreme Court in the case of Sanchez v. "A. 1997 ANGELITA MANZANO.. Under the above established principles. 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. As to petitioner's claim of prescription.R. 70 SCRA 378). namely. 288). the injunctive order of the trial court is of so general a tenor that petitioner may be totally barred from the sale of any kind of powder puff. Petitioner alleged that (a) the utility model covered by the letters patent. J. Reynaldo P. wherefore. private respondent's contention that such refers to the filing of petitions for cancellation in the Patent Office under Sec. (List of Exhibits. Hon.. "L") had the same configuration and mechanism as that of the model which was patented in favor of private respondent Melecia Madolaria. USA. an LPG gas burner. Petitioner presented two (2) other witnesses. the trial court failed to satisfy the two requisites necessary if an injunction is to issue. 165. is evident under aforesaid law. Samson. the trial court nonetheless issued the writ of preliminary injunction which under the circumstances should be denied." (Rollo. 67 SCRA 508. Jr.

Private respondent. on the other hand. the court. fabricated by Ransome Torch and Burner Company of Oakland. ² (a) Any new. Inc. UNITED FOUNDRY was engaged in the manufacture of different kinds of gas stoves as well as burners based on sketches and specifications furnished by customers. machine and buffing section. The decision also stated that even assuming that the brochures depicted clearly each and every element of the patented gas burner device so that the prior art and patented device became identical although in truth they were not. Petitioner also denies as substantial difference the short cylindrical tube of the burner mouth appearing in the brochures of the burners being sold by Manila Gas Corporation and the long cylindered tube of private respondent's model of the gas burner. they could not serve as anticipatory bars for the reason that they were undated.. UM-4609 to Melecia Madolaria for an "LPG Burner" on 22 July 1981. an application for a patent therefor should be denied. Petitioner further contends that the utility model of private respondent is absolutely similar to the LPG burner being sold by petitioner in 1975 and 1976. construction or composition. UM-4609 in the name of private respondent. if disclosed. and Manila Gas Corporation. Inc. the standard of evidence sufficient to overcome the presumption of legality of the issuance of UM-4609 to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the patent. 86-56 denying the petition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. that he was then instructed by private respondent to cast several experimental models based on revised sketches and specifications. this petition for review on certiorari alleging that the Court of Appeals erred (a) in relying on imaginary differences which in actuality did not exist between the model of private respondent covered by Letters Patent No. that private respondent again made some innovations. Petitioner submits that the differences cited by the Court of Appeals between the utility model of private respondent and the models of Manila Gas Corporation and Esso Standard Eastern." "F" and "F-1" or the brochures of Manila Gas Corporation and Esso Standard Eastern.. If a device or process has been known or used by others prior to its invention or discovery by the applicant.. process or an improvement of any of the foregoing. that in his early years with the company. may be protected by the author thereof. which is the law on patents. presented by petitioner. used or described within the country. Petitioner also emphasizes that the brochures indicated the telephone number of Manila Gas Corporation as 5-79-81 which is a five (5) numbered telephone number existing before 1975 because telephones in Metro Manila started to have six (6) numbers only after that year. it is argued that the testimony of private respondent's lone witness Rolando Madolaria should not have been given weight by the Patent Office and the Court of Appeals because it contained mere after-thoughts and pretensions. in the same manner and subject to the same provisions and requirements as relate to patents for inventions insofar as they are applicable except as otherwise herein provided. he was able to cast several models incorporating the additions to the innovations introduced in the models. and. will hold it void and ineffective. or if it is substantially similar to any other utility model so known. and also to the "Ransome" burner depicted in the old brochures of Manila Gas Corporation and Esso Standard Eastern. that in the latter part of 1978 respondent Melecia Madolaria confided in him that complaints were being brought to her attention concerning the early models being manufactured. Petitioner elevated the decision of the Director of Patents to the Court of Appeals which on 15 October 1993 affirmed the decision of the Director of Patents. who testified. private respondent discovered the solution to all the defects of the earlier models and. Not one of the various pictorial representations of burners clearly and convincingly show that the device presented therein 12 . the former by a patent for a design and the latter by a patent for a utility model.. USA. 5 As found by the Director of Patents. 3 In issuing Letters Patent No. Finally. originality and precedence. 2 It has been repeatedly held that an invention must possess the essential elements of novelty. UM-4609 was obtained by means of fraud and/or misrepresentation. presented only one witness. Sec. form and mechanism as that of the private respondent's patented model. surmises and conjectures. (c) in relying mainly on the testimony of private respondent's sole witness Rolando Madolaria. in a judicial proceeding in which the validity of the patent is drawn in question. 165. the Philippine Patent Office found her invention novel and patentable. the cup-shaped burner mouth and threaded hole on the side are shown to be similar to the utility model of private respondent. 55 of the same law provides ² Sec. No evidence whatsoever was presented by petitioner to show that the then applicant Melecia Madolaria withheld with intent to deceive material facts which. that the company manufactured early models of single-piece types of burners where the mouth and throat were not detachable. UM-4609 and the previously known model of Esso Standard Eastern. Section 7 of RA No. We cannot sustain petitioner. She alleges that based on Exhs. The exhibits also show a detachable burner mouth having a plurality of upwardly existing undulations adopted to act as gas passage when the cover is attached to the top of said cup-shaped mouth all of which are the same as those in the patented model. among others. Rolando Madolaria testified that private respondent decided to file her application for utility model patent in December 1979. but which is of practical utility by reason of its form. The findings of the Patent Office and the Court of Appeals that the brochures of Manila Gas Corporation and Esso Standard Eastern. Petitioner argues that the actual demonstration made during the hearing disclosed the similarities in form. (b) in rendering judgment based on misapprehension of facts. are more imaginary than real. Inc.. making such imaginary differences grounded entirely on speculation. would have resulted in the refusal by the Philippine Patent Office to issue the Letters Patent under inquiry. Various tests were conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. Rolando Madolaria. which does not possess the quality of invention. Petitioner thus asks this Court to take judicial notice of the fact that Esso Standard Eastern. as amended. 55. California. original and ornamental design for an article of manufacture and (b) any new model of implements or tools or of any industrial product or of part of the same. (d) in not cancelling Letters Patent No. 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. therefore. The element of novelty is an essential requisite of the patentability of an invention or discovery. Inc. Petitioner faults the Court of Appeals for disregarding the testimonies of Ong Bun Tua and Fidel Francisco for their failure to produce documents on the alleged importation by Manila Gas Corporation of "Ransome" burners in 1965 which had the same configuration. The records and evidence also do not support the petitioner's contention that Letters Patent No. operation and mechanism and parts between the utility model of private respondent and those depicted in the brochures. Inc. 4 Hence. configuration. manufactured product or substance. "D" and "E" readily reveals that the utility model (LPG Burner) is not anticipated. The dates when they were distributed to the public were not indicated and. shall be patentable. Inc. expressly provides ² Sec. Hence. Not one of the various pictorial representations of business clearly and convincingly showed that the devices presented by petitioner was identical or substantially identical with the utility model of the respondent. and for the patentee to be entitled to the protection the invention must be new to the world. Sandiego issued Decision No. were useless prior art references. especially when considered through actual physical examination. disappeared before 1979 and reappeared only during the Martial Law years as Petrophil Corporation." "E-1. 7. Design patents and patents for utility models. The burden of proving 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. are undated cannot overcome the fact of their circulation before private respondent filed her application for utility model patent. based on her latest sketches and specifications. that after a few months. Further. assembly and disassembly of the models of petitioner and private respondent.as supervisor and that Manila Gas Corporation imported "Ransome" burners way back in 1965 which were advertised through brochures to promote their sale.. "E. On 7 July 1986 the Director of Patents Cesar C. Any invention of a new and useful machine. Thus the Director of Patents explained his reasons for the denial of the petition to cancel private respondent's patent ² Scrutiny of Exhs. and if the application has been granted. Inventians patentable. a utility model shall not be considered "new" if before the application for a patent it has been publicly known or publicly used in this country or has been described in a printed publication or publications circulated within the country. that he was the General Supervisor of the UNITED FOUNDRY in the foundry.

"M" which is the alleged burner cup of an imported "Ransome" burner. the Petition is DENIED. especially when affirmed by the Court of Appeals. Branch 56. But the same could not be given credence since he himself admitted during cross-examination that he has never been connected with Manila Gas Corporation. therefore. (Kalman v. 9 Finally. concur. She argues that contrary to the decision of the Patent Office and the Court of Appeals." Another factor working against the Petitioner's claims is that an examination of Exh. Its jurisdiction is limited to reviewing and revising errors of law imputed to the lower court. only one item of the prior art may be used at a time. xxx xxx xxx It must likewise be pointed out that Ong Bun Tua testified on the brochures allegedly of Manila Gas and of Esso Gasul marked Exhs. as what occurred in this case. The validity of patent is decided on the basis of factual inquiries. Costs against petitioner. the model marked Exh. which burner was denominated as "Ransome" burner xxx xxx xxx But a careful examination of Exh. Regional Trial Court.R. petitioner would want this Court to review all over again the evidence she presented before the Patent Office. they cannot serve as anticipatory bars for the reason that they are undated. The alleged failure of the Director of Patents and the Court of Appeals to accord evidentiary weight to the testimonies of the witnesses of petitioner showing anticipation is not a justification to grant the petition. Kapunan and Hermosisima." petitioner claimed it to be her own model of LPG burner allegedly manufactured sometime in 1974 or 1975 and sold by her in the course of her business operation in the name of Besco Metal Manufacturing. This Office. xxx xxx xxx Furthermore. subject matter of the cancellation proceeding. although in truth they are not. Presiding Judge. With respect to Exh. He could not even present any importation papers relating to the alleged imported ransome burners. 152950 13 . and more significantly. "L" would disclose that there is no indication of the time or date it was manufactured. "K" does not show whether or not it was manufactured and/or cast before the application for the issuance of patent for the LPG burner was filed by Melecia Madolaria. the prior art must show that each element is found either expressly or described or under 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. UM-4609 through Exhs.. it has been held that oral testimony to show anticipation is open to suspicion and if uncorroborated by cogent evidence. are conclusive on this Court when supported by substantial evidence. What is more. therefore. HON. Economic Intelligence & Investigation Bureau. 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 combination to form the complete LPG burner. The technical staff of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in question accepted private respondent's model of gas burner as a discovery. It has been held that the question on priority of invention is one of fact. Neither did his wife. Special Operative Group. 10 There is question of fact when the doubt or difference arises as to the truth or falsehood of alleged facts or when the query necessarily invites calibration of the whole evidence considering mainly the credibility of witnesses. Respondent. Present: -versusCHRISTOPHER CHOI. thus has no way of determining whether Exh. At this juncture. GATBALITE. its findings of fact being conclusive and not reviewable by this Court. 6 The above findings and conclusions of the Director of Patent were reiterated and affirmed by the Court of Appeals. Vitug. Angeles City and ATTY. "L" would show that it does not bear the word "Ransome" which is the burner referred to as the product being sold by the Petitioner. it may be held insufficient. Promulgated: G. It is relevant and material to state that in determining whether novelty or newness is negatived by any prior art. No. This is not the way to prove that Exh. Kimberly Clark.. 789) Even assuming gratia arguendi that the aforesaid brochures do depict 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. they are useless prior art references. it is worthwhile to point out that petitioner also presented Exh. Petitioners. It observed that there is no date indicated therein as to when it was manufactured and/or imported before the filing of the application for issuance of patent of the subject utility model. WHEREFORE. JJ. BENNIE NICDAO. some component parts of Exh. Jr. novelty and usefulness of the improved model of the LPG burner are matters which are better determined by the Patent Office. The rule is settled that the findings of fact of the Director of Patents. Pursuant to the requirement of clear and convincing evidence to overthrow the presumption of validity of a patent. For anticipation to occur. "E" and "F" and on the alleged fact that Manila Gas Corporation was importing from the United States "Ransome" burners. Footnotes PEOPLE OF THE PHILIPPINES. 218 USPQ 781. SO ORDERED. UM-4609. "L. Novelty and utility are likewise questions of fact. Again. 11 Time and again we have held that it is not the function of the Supreme Court to analyze or weigh all over again the evidence and credibility of witnesses presented before the lower tribunal or office. Whether evidence presented comes within the scope of prior art is a factual issue to be resolved by the Patent Office. Special Prosecutor. 7 The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the question over the inventiveness. The dates when they were distributed to the public were not indicated and. "L" anticipates Letters Patent No. the evidence she presented clearly proves that the patented model of private respondent is no longer new and. "M" are missing. The Supreme Court is not a trier of facts.is identical or substantially identical in construction with the aforesaid utility model. LOURDES F. "C" and "D. "L" was really manufactured before the filing of the aforesaid application which matured into Letters Patent No. Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and the Court of Appeals. fraud attended the acquisition of patent by private respondent. existence and relevance of specific surrounding circumstances. this Office finds the same as unreliable evidence to show anticipation. The Decision of the Court of Appeals affirming that of the Philippine Patent Office is AFFIRMED. There is a presumption that the Office has correctly determined the patentability of the model 8 and such action must not be interfered with in the absence of competent evidence to the contrary. their relation to each other and to the whole and the probabilities of the situation.

in relation to Section 169 of RA 8293. and a ³supplemental motion to quash´10[10] on June 22. as well as cardboard cases of fake Marlboro Red Cigarettes (each cardboard case contains two (2) [m]aster [c]ases of Marlboro believe that the cigarettes purchased by Nieto were fake and in violation of RA CA in a decision dated April 10. after examining under oath in the form of searching and probing questions. SO ORDERED. Both were denied by On April 27. Bennie Nicdao14[14] be prohibited from using as No. 25-13 Columbia Street.6[6] not sufficiently established as the examination conducted was not probing and After examination of the applicant and his witnesses. Case No. Mario P. 1999. 99-17 is deemed NULL and VOID and SET ASIDE. MARIO P. Nieto. 99-8116.5[5] also known as the Intellectual of discretion in refusing to quash the search warrant. 1999 worded as follows: evidence the articles seized by virtue of the search warrant. 2002 in CA-G. Gatbalite issued Search Warrant Respondent also prayed that Atty. Pampanga. seize and bring the said articles to the undersigned to be dealt with in accordance with law. 2 and 3 (a) and (c) in relation to Section 169 of R.. control and custody [r]eams and packs of fake Marlboro Red Cigarettes. Respondent ATTY. 2002. 1999. Carmenville Subd. 1999 at Angeles City. arguing that probable cause was Property Code. kept and sold thereat in violation of Section 168. Judge Lourdes F. 2006 x-----------------------------------------. Judge Gatbalite in an order dated November 29.12[12] 14 . in determining whether there was probable cause to It appearing to the satisfaction of the undersigned.8[8] On May 12.: and each [m]aster case contains fifty (50) reams) being distributed. BENNY NICDAO is prohibited from using in evidence the articles seized by virtue of Search Warrant No. 2000. Department of Finance. applied for a search warrant with the Regional Trial Court (RTC) of Angeles City. I.August 3. Philippines. Intelligence Operative. the petition for certiorari and prohibition is GRANTED. Given under my hand this 27th day of April. paragraphs 2 and 3 prohibition13[13] before the CA. You are hereby further directed to submit a return within ten (10) days from today. Cavalera and David Lee Sealey. 1999. Branch 56. Angeles City has in his possession. respondent filed a petition for certiorari and against respondent Christopher Choi for violation of Section 168. Search Warrant No. the dispositive portion of which read: WHEREFORE. Max exhaustive and the warrant did not particularly describe the place to be searched. SP No. 25-13 Columbia Street. He alleged that Judge Gatbalite committed grave abuse (a) and (c). J. No. par. and his witnesses Max Cavalera and David Lee Sealey that there are good and sufficient reasons to believe that Christopher Choi of No. This was granted by the TO ANY PEACE OFFICER: G r e e t i n g s: According to the CA. NIETO. Economic Intelligence Investigation Bureau.4[4] On June 19. 99-17 dated April 27. 8293. Department of Finance. 99-17 in Crim.. respondent filed a ³motion to quash search warrant´9[9] The factual antecedents follow.11[11] Reconsideration was likewise denied. the applicant. Carmenville Subd.A. namely.S.R.x DECISION CORONA. Intelligence Operative of the Economic Intelligence and Investigation Bureau.3[3] The search was conducted on the same date. THEREFORE.7[7] This petition for review on certiorari1[1] seeks the reversal of the decision2[2] of the Court of Appeals (CA) dated April 10. 59587. 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 the aforedescribed items found at the residence/warehouse of Christopher Choi at No. 1999. Angeles City.

is that correct? Yes. your Honor. Q A Q Sections 4 and 5 of Rule 126 state: A Q A Q A Court: Sec. Hence. Do you affirm and confirm other contents of this affidavit? Yes. executed by one David Lee Sealey. that fake Marlboro cigarettes bought by them from Michael Chua. the CA ruled that Judge Gatbalite committed grave abuse of finding of probable cause. I concluded that they are counterfeit or unauthorized product[s].8293. the complainant and the witnesses he may produce on facts personally known to them and attach to the record their sworn statements. That¶s all. instead of sought to be searched. The People also assert that the CA erred in applying the doctrine in 20th Century Fox Film Corporation20[20] since it had already been superseded by Columbia Pictures. your Honor. your Honor. if you did anything? I examined the sample of cigarettes and their packaging bearing the Marlboro Trade Marks which were suspected to be produc[ed] and manufactured by La Suerte or [with] the permission of Philip Morris. After the same had been turned over to you. personally examine in the form of searching questions and answers. Inc.18[18] Court: Q There was testimony here given by Mr. Mario Nieto and Max Cavalera.22[22] The determination of the existence of probable cause relying on his testimony alone.16[16] The examination of Sealey went this way: requirement under the Supreme Court ruling in 20th Century Fox Film Corporation v. ² A search warrant shall not issue except 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. The CA reasoned that this was an absolute requires the following: 15 . your Honor. v. in writing and under oath. She should have at least required Sealey to present committed and that the objects sought in connection with the offense are in the place the alleged fake Marlboro cigarettes and the genuine ones for comparison. and particularly describing the place to be searched and the things to be seized which may be anywhere in the Philippines. I am the one. 5.17[17] According to the foregoing provisions. this petition. in issuing A Q the search warrant. together with the affidavits submitted. Judge Gatbalite purportedly did not comply strictly with the requirement to determine the existence of probable cause by personally examining the applicant and his witnesses through searching questions and answers. what did you do with the said merchandise. The People of the Philippines aver that the CA erred in finding that Judge Gatbalite committed grave abuse of discretion in issuing the search warrant allegedly because she failed to determine probable cause pursuant to Sections 4 and 5 of Rule 126 of the Rules of Court.15[15] Judge Gatbalite failed to ask searching and probing questions of witness David Lee Sealey. do you know this David Lee Sealey? Yes. ² The judge must. Probable cause means such facts and circumstances which discretion when she merely relied on the conclusion of Sealey that the cigarettes he would lead a reasonably discreet and prudent man to believe that an offense has been received from Nieto were fake. Court of Appeals. 4.21[21] We rule for the People of the Philippines. Whose signature is this appearing on the printed name David Lee Sealey? This is my signature. Examination of complainant. Christopher Choi and Johnny Chang were turned over to you for examination. Court of Appeals. the color of the box and the printing on the front side of the packs and the cigarettes themselves. Sec. Requisites for issuing search warrant. before issuing the warrant. your Honor.19[19] The People assail the finding of the CA that. a search warrant can be issued only upon a In addition. Do you have any knowledge of this person named Christopher Choi? None. record. There is an affidavit here marked as exhibit. A Q A What was the result of your examination? Based on the packaging of the packs.

The standards of judgment are those of a reasonably prudent man. your Honor. the representative and authority from the Philip Morris. in the storage room as shown in the lay out of the house. A: Q: A: in this application for search warrant filed today April 27. can you point it out here? Yes. Where did you see him. Do you know this Christopher Choi referred to herein? Yes. probable cause is concerned with probability. Where? At No. As the term implies. As a matter of fact 16 . your Honor.26[26] If the judge fails to determine probable cause by personally examining the applicant and his witnesses in the form of searching questions before issuing a search warrant. Subject of the application? Yes.30[30] The entirety of the questions propounded by the court and the answers thereto must be considered by the judge. Michael Chua.00 per pack. I introduced myself as the one who was referred by a certain Michael Chua who is interested in buying the Marlboro cigarettes from him and he accommodated me and showed me the sample that he has and I was able to procure the samples from him. P17.27[27] Q: A: The determination of probable cause does not call for the application of rules and standards of proof that a judgment of conviction requires after trial on the merits. in violation of Section 169 of R. How many Marlboro cigarettes did you buy? We bought only one ream. Pampanga. How did you know him? When I was conducting a test-buy operation against Mr. a certain Christopher Choi. Carmenville Subd. Angeles City. not merely routinary.24[24] The judge must not simply rehash the contents of the affidavit but must make his own inquiry on the intent and justification of the application. As what? As the supplier for the goods.23[23] Q: A: The searching questions propounded to the applicant and the witnesses depend largely on the discretion of the judge. No formula or fixed rule for its determination exists. This Christopher Choi? I went to his house. I got the samples form Mr.28[28] No law or rule states that probable cause requires a specific kind of evidence. who lives in the same village and who is actually the supplier for the entire region. grave abuse of discretion is committed. your Honor. David Lee Sealey. general. your Honor. (2) (3) the examination must be under oath and the examination must be reduced in writing in the form of searching questions and answers. the samples that like what we did to the others were inspected by certain Mr. your Honor.31[31] Q: A: Q: A: Q: A: Q: A: Q: A: Q: A: Why do you know him? He was introduced to us by Michael Chua. 8293. Upon arriving at the place what did you do? Upon arriving at the place. perfunctory or pro-forma. David Lee Sealey. at the warehouse..A. 1999? Yes.(1) the judge must examine the complainant and his witnesses personally. Did you actually buy those samples? Yes.. peripheral. not the exacting calibrations of a judge after a full-blown trial. they are almost everywhere in the house of Christopher Choi. not absolute or even moral certainty. petitioner judge also heard the testimony of applicant Nieto: Q: A: Q: Q: In connection with Search Warrant 99-17. your Honor. Christopher Choi. Do you know from what particular place the house of Christopher Choi did he got (sic) those samples? The volume stocks were found inside the house. Mr.25[25] The questions should not merely be repetitious of the averments stated in the affidavits or depositions of the applicant and the witnesses. it is axiomatic that the examination must be probing and exhaustive. Michael Chua told me that the bulk of supply if we need more supply we can get from the source. Although there is no hard-and-fast rule governing how a judge should conduct his examination. There is a sketch here attached to your application. aside from the testimony of Sealey. 25-13 Columbia St.29[29] Probable cause is determined in the light of conditions obtaining in a given situation. your Honor. In this case. are you the same Mario Nieto who is the applicant A: Q: A: Q: A: You went to the warehouse? We were shown [the] entire area by the supplier. your Honor. it is adjacent to the residential house as shown in the sketch. Christopher Choi and I submitted them to Mr.

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. in the absence thereof. Judicial dicta should always be construed within the factual matrix of their parturition. 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.35[35] the findings of the judge deserve great weight. no law or rule which requires that the existence of probable cause is or should be determined solely by a specific kind of evidence. as the ruling in 20th Century Fox may appear to do. otherwise a careless interpretation thereof could unfairly fault the writer with the vice of overstatement and the reader with the fallacy of undue generalization. there can be no finding of probable cause for the issuance of a search warrant. The testimonies and other evidence on record constituted adequate bases to establish probable cause that the alleged offense had been committed. Mario Nieto and I again went to the subject place to conduct a test-buy operation. 20th Century Fox Film Corporation. 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. v. he was one of those identified by the informant storing and selling counterfeit Marlboro cigarettes. a witness who accompanied Nieto during the ³test-buy´ operation. More importantly. does not rule out the use of testimonial or documentary evidence. There is. depositions. this could not have been contemplated by the framers of the Constitution.36[36] We thus find no reason to disturb Judge Gatbalite¶s findings. On April 23. inconvenience or expenses out of proportion to its evidentiary value. 1999 at about 8:30 p. 33[33] also testified: More to the point. The reviewing court can overturn such findings only upon proof that the judge disregarded the facts before him or ignored the clear dictates of reason. xxx xxx xxx Q A How about this Christopher Choi? As I¶ve said earlier. to repeat. The testimonies were consistent with each other and the narration of facts was credible. Choi had been convinced of our intention to buy cigarettes from him. Angeles City. especially where the production in court of object evidence would result in delay. admissions or other classes of evidence tending to prove the factum probandum. not at all superficial and perfunctory. we cannot say that Judge Gatbalite committed grave abuse of discretion in issuing the search warrant. insofar as it required the presentation of the master tapes for comparison with the pirated copies for a search warrant to issue. At what place? At 25-13 Columbia St. Inc. It is true that such master tapes are object evidence. Her questions were sufficiently probing..32[32] Max Cavalera. 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.. had already been superseded by Columbia Pictures. 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. Such auxiliary procedure. as correctly pointed out by petitioners. that in copyright infringement cases. [A]fter Mr.. Court of Appeals: Accordingly. he brought us to his warehouse where he showed to us several cardboard cases of Marlboro cigarettes. 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. 1999 we conducted a surveillance and we were able to confirm that the said cigarettes are being stored at the subject place. and we do not believe that the Court intended the statement in 20th Century Fox regarding master tapes as the dictum for all seasons and reasons in infringement cases. as pronounced by the Court in Columbia 17 . to restrict the exercise of discretion by a judge by adding a particular requirement (the presentation of master tapes.m.he was trying to show us how much volume he has and his capacity to supply. Surely. xxx xxx xxx Furthermore.37[37] (emphasis supplied) It is obvious that 20th Century Fox Film Corporation should not be applied to the present case since this involves the offense of unfair competition and not copyright infringement. It is evidently incorrect to suggest. the presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that.34[34] Q A In fine. Carmenville Subd. xxx xxx xxx Given the foregoing testimonies and applying the established standards in determining probable cause. so on April 22. however. 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.

DIETER FISCHER. KENJI SHIGEMATSU. the petition is hereby GRANTED. 2989841[4] 3011242[5] 18 . Montecillo and Ongsiako to process their patent applications in the Philippines. 1987 June 18. HARRY GREAVES. two employees of the law firm.Issuance of letters patent for ³Pharmaceutical Compositions´ 3054843[6] WHEREFORE. ROBERT CABI-AKMAN. respondents. The assailed decision of the Court of Appeals dated April 10.Pictures. (8) Lothar Schuartz. among others. 1987 (2) 29630 October 21. 113407. 1987 June 10. Date of Office Action March 20. It was then that the firm learned about the notices of abandonment. SP No. MORTIMER THOMPSON. the judge¶s exercise of discretion should not be unduly restricted by adding a requirement that is not sanctioned by law. Immediately after their dismissal. these employees worked with the patent group of the law firm and had the duty. through correspondences called Office Actions. Arthur Sprenger and Remy Simond. JOHN BERNARD WATKINS. July 28. MICHIBAZU OCHI. 1987 June 3. 99-17 as VALID. 2000] LOTHAR SCHUARTZ. Kenji Shigematsu and Eni Shinozaki..Issuance of letters patent for ³Colour Value Measurement´ (3) Heinrich Evbergger. notices of abandonment were sent on the following dates: Serial Nos. RESOLUTION PARDO. 1987 2963040[3] On December 7. As petitioners¶ law firm did not respond to these office actions within the prescribed time. 1987 January 14. FABIO CARLI. THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF PATENTS. J. the law firm conducted an inventory of all the documents entrusted to them. and Dieter Fischer.Issuance of letters patent for ³Tool for Moulding the Top Past of a Plastic Container´ (4) Mortimer Thompson.Issuance of letters patent for ³Preservation Composition´ (7) Fabio Carli. 1987 (5) 30548 August 18. 1987 June 1. 1986 June 11. 1986 (3) 29898 June 22. (1) Michibazu Ochi. George Bangkas and Rafael Rosas were dismissed from employment. ENI SHINOZAKI. 1987 (9) 32050 198749[12] March 31. UDOLF KUEHNE.´ 48[11] 3205047[10] [G. July 15. July 12.Issuance of letters patent for ³Method Generation for Hot Gas by Incinerators´ (6 )John Bernard Watkins. 1987 (4) 30112 August 6. letters patent for ³Tamper Evident Closures and Packages´ (5) Yoshimi Iwasaki. Inc. REMY SIMOND and HEINRICH EVBERGGER. 1987. Friedel Verderberg. 3081944[7] 3196845[8] 3197446[9] SO ORDERED. MALCOLM JOHN LAW. ARTHUR SPRENGER. vs. Date of Abandonment (1) 23354 July 21. No. petitioners. 59587 is REVERSED and SET ASIDE.Issuance of letters patent for ³Hackling Drum Room or Chamber at the Self-Feeding Equipment for Threshing of Upper Hackling System´ (2) Robert Cabi-Akman. 1987 January 28. Trademarks and Technology Transfer for registration of patents. respectively identified as follows: Applicant Serial No. Prior to the dismissal. petitioners applied to the Bureau of Patents.Issuance of letters patent for ³Electrodeposition of Chromium and Chromium Bearing Alloys. On different dates. Judgment is hereby rendered declaring Search Warrant No. YOSHIMI IWASAKI.Issuance of 2335439[2] Petitioners¶ patent applications lacked certain requirements and the Bureau informed the law firm about it. of getting the firm¶s letters and correspondence from the Bureau of Patents. Rudolf Kuehne.R. 1987 (6) 30819 1987 (7) 31968 1987 (8) 31974 September 24. CHEN WOO CHIN.R. TRADEMARKS AND TECHNOLOGY TRANSFER.Issuance of letters patent for ³Process for Producing Copper-Laminated Base Material for Printed Circuit Boards´ (9) Malcolm John Law.: 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 petition for revival of patent applications. 2002 in CA-G. Harry Greaves and Chen Woo Chin. 1987 July 23. FRIEDEL VERDERBERG. They hired the law firm Siguion Reyna.

Puno. 1988 January 21. R. 1988 March 14. 1988 January 15. In that case plaintiff established his title to a valid patent covering the process in question. 31968. CARSON. 1988/March 1. However. defendant-appellant. 30112. ³Makati. petitioners lost sight of the fact that the petition could not be granted because of laches. petitioners¶ argument would be correct.. when their employees Bangkas and Rosas had been dismissed. L-4720 January 19. The principal case to which these proceedings are ancillary. 1991.Thereafter. in consideration of the foregoing premises.´ 53[16] On September 14. petitioners were deemed to have forfeited their right to revive their applications for patent. for appellee. 1988 denied the petition for revival of the patent applications. petitioners moved for reconsideration of the Court of Appeals¶ decision. J. are hereby denied and no further petitions nor requests for reconsideration hereof shall be entertained hereafter. Specifically the decision provides: ³WHEREFORE. for which reason no petition for revival was filed. or on February 14.. WHEREFORE. The Court AFFIRMS the decision of the Court of Appeals in CA-G. on February 7. and Ynares-Santiago. 1988/July 15. this petition for review on appeal from the order/decision of the Director of Bureau of Patents is hereby DISMISSED with costs against the appellants. There was an unreasonable delay before the petitions to revive applications were filed. A lawyer shall not neglect a legal matter entrusted to him. the Court of Appeals dismissed the consolidated appeal for being filed beyond the 15-day reglementary period to appeal. 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 the Bureau of Patents. The firm had been notified about the abandonment as early as June 1987. 1992. They received a copy of the resolution. 143.´57[20] In the instant case. 1992. and 32050. 1909 CARLOS GSELL. that they came to know about it. 1988/March 1.J. and umbrellas. 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 Bureau of Patents as separate and individual applications.52[15] On August 13. 1988/February 29. Jr. (Chairman). They were appealing from the resolution of the Director of Patents dated January 31. If the facts above-mentioned were the sole basis of determining whether the appeal was filed on time. the Court DENIES the petition for lack of merit. and obtained against this defendant a judgment. and filed the consolidated appeal seven (7) days after. DUKA. vs. These applications are deemed forfeited upon the lapse of such period. 1994. in contempt proceedings prosecuted under the provisions of section 172 of the Code of Civil Procedure. VALERIANO VELOSO YAP-JUE. Jr.59[22] The Court of Appeals did not err or gravely abuse its discretion in dismissing the petition for review. filed with the Bureau of Patents separate petitions for revival of the patent applications on the following dates: Serial Nos. granting a perpetual injunction restraining its infringement. L SO ORDERED. ³SO ORDERED. 1988 March 17. For Serial No. SP No. plaintiff-appellee. we can not grant the present petition.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. 1991. petitioners¶ patent attorneys not only failed to take notice of the notices of abandonment. petitioners filed the instant petition for review on certiorari.R. SO ORDERED. but they failed to revive the application within the four-month period. Haussermann and Cohn. This clearly showed that petitioners¶ counsel had been remiss in the handling of their clients¶ applications. 30819. No. No costs. an unreasonable period of time had lapsed due to the negligence of petitioners¶ counsel. for appellant. 31974. petitioners appealed the above resolution of the Bureau of Patents to the Court of Appeals. (1) 23354 (2) 29630 (3) 30122 (4) 30548 (5) 30819 (6) 31968 (7) 31974 (8) 32050 Date Petition Filed March 3. but it was only after December 7.) The order was couched in the following terms: 19 . these dates clearly established that their appeal was seasonably filed. 30548. the applicant abandoned his application. 1988 May 27. By such inaction. which the court denied on January 7. 29898.56[19] ³A lawyer¶s fidelity to the cause of his client requires him to be ever mindful of the responsibilities that should be expected of him. petitioners. Prior to the filing of the petition for revival of the patent application with the Bureau of Patents. Rep. all the petitions for revival of the above-captioned abandoned applications bearing Serial Nos. 23354. through the law firm. Director III´ 51[14] On February 14. through their patent attorneys. JJ.54[17] Aggrieved. According to petitioners. 1991. 1991. The dispositive portion specifically provides: ³WHEREFORE. The appellate court found no cogent reason to justify the reversal or modification of its decision. of the Bureau of Patents denied all the petitions for revival because they were filed out of time. Moreover. concur. parasols. as provided in the rules of practice in patent cases. 1988 January 25. Metro Manila. Chicote and Miranda. The contention is not meritorious. which judgment was affirmed by this court on appeal (6 Phil. 1987. this 31st day of January 1991. for reasons above stated and in the light of the applicable law on the matter.: This an appeal from a final order of the Court of First Instance of the city of Manila. Director Luis M.58[21] Hence. UIS M. Kapunan. Philippines.50[13] On January 31. Petitioners contend that the Court of Appeals committed grave abuse of discretion when it held that the consolidated appeal was filed out of time. was an action to enjoin infringement of a patented process for the manufacture of curved handles for canes. which G. 24175. C. JR. 1991. 1988 March 3. 29630... Duka. 29898. Davide.

in connection with blast lamps or blowpipes such as that which plaintiff uses in the patented process. 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. held that ² a character that it could be made patent by the mere annunciation of the acts performed by the defendant. These acts were not clearly and manifestly contrary to the precise terms of the prohibition. rather than one fed with alcohol. defendant's blast lamp is fed with alcohol. and especially for the purpose of applying heat in the manner described in the patent. which are alleged to constitute the said violation. The patent. as follows: "The question presented by this appeal is whether or not the use of a patented process by a third person. first. the reasoning upon which these hypothetical claims should be rejected applies with equal force to the contentions of the defendant. Once the cane has been shaped as desired. which process was protected by patent No. 19228. but the principle on which it works. Counsel for plaintif invokes the doctrine of "mechanical equivalents" in support of his contention. second. The question. The trial court found the defendant "not guilty" of contempt as charged. the ground for the rejection of the claims in each case being the same. from the consequences of an action for damages for infringement. thus begging the whole question. and this court. the 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. by which the flame is secured. 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 affords large profits to the workman. lamp fed with alcohol. 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. however. NOTE. and its general design distinguish it in no essential particular from that used by the plaintiff. the end of which is attached to a fixed point. This operation having been performed. No. In more abstract and general terms. and (2) that alcohol is an equivalent and proper substitute. This operation having been performed. The plaintiff does not and can not claim a patent upon the particular lamp used by him. for mineral oil or petroleum. and is then cleaned. Thereafter the plaintiff continued the use of the patented process. (7 Phil. Substantially the same question is submitted in these new proceedings as that submitted in the former case. except only that he be substituted for a lamp fed with petroleum or mineral oil. the plaintiff in the original action alleging that the ² 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. and the order appealed from should accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt. and. According to the express language of the judgment. so that it matters 20 . that kerosene and alcohol blast lamps are agencies for producing and applying heat. well known as such. the date of the issue of 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. the only difference in construction being occasioned by the application of this principle to oils of different physical and chemical composition. ² The patent applied for shall be for the industrial product "cane handles for walking sticks and umbrellas. and indeed that doctrine is strikingly applicable to the facts in this case. but at the trial of this case testimony was introduced which. leaves no room for doubt. which do not affect the principle of the blast lamp used in the patented process. save only for the substitutions of a lamp fed by alcohol for a lamp fed by petroleum or mineral oil. or the mode of application of heat authorized by the patent. they are then trimmed and the interior cleaned by means of a gimlet of about 15 centimeters in length operated by a wheel. But in the light of the evidence of record in this case. 19228. to that referred to in the descriptive statement and the annexed note. 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. that alcohol is an equivalent or substitute. however. the outsides are thoroughly cleaned.." 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. and ornamented at will. on appeal. that the use of a blast lamp or blowpipe fed with petroleum or mineral oil. well known throughout the world long prior to 1906. and new proceedings were instituted under the provisions of section 172 for the purpose of enforcing the original injunction above cited. and unless restrained or modified by law in particular jurisdiction. in principle and design.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. handiwork. without proving the same. is an unessential part of the patented process the use of which was prohibited by the said judgment. True. Consequently the contempt with which the accused is charged has not been fully and satisfactorily proved. well known as such at the time when the patent was issued. 130). or a process so like the patented process as to be indistinguishable. He has merely assumed their existence. owing to the great risk engendered by the treatment of such fragile material as a light cane. the appellant propounds this question in his brief. fed by petroleum or mineral fuel. who in all other respects borrowed the patented process. its mode of application. Contempt proceedings were instituted against the defendant in the month of February. issued in favor of Henry Gsell. curved by means of a small lamp or blowpipe. to which reference is made in the above-cited descriptive statement and annexed note." 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. Rep. which completely fills the hole made by the gimlet. 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 resting on the fact that unessential changes. thereby giving to the cane the necessary strength to resist the heat of the lamp or blowpipe without breaking or cracking. If the original design accompanying the statement had shown a blast lamp made of brass or delf. 1904. It was clearly proven at the trial. by means of which the knots inside are broken. "The small lamp or blowpipe" mentioned in the descriptive statement and annexed note which accompanied the application for the patent. There is then introduced to a depth of about 15 centimeters a piece of very clean bamboo. 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. 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 the different physical and chemical composition of the fuel used therein. gives him the exclusive right to the use of "la lamparilla o soplete. for the exclusive use of which in the manufacture of curved handles. varnished. it is allowed to cool. and its shape varies in unimportant details. in our opinion. and in our opinion both plaintiff and defendant make use of a blast lamp substantially similar. This industry requires skillful. are not sufficient to support a contention that the process in one case is in any essential particular different from that used in the other. The appellant has failed to affirmatively establish either of these two essential facts. On the other hand. This doctrine is founded upon sound rules of reason and logic. evidently referred to the design of a blast lamp which was attached thereto. plaintiff holds a patent. however. without license or authority therefor. arises as to whether that prohibition included the substitution of alcohol for coal or mineral oil. is given the shape of a hook or some other form by means of fire and pressure. the cane. for mineral oil or petroleum in connection with the said process. and by him transferred to Carlos Gsell ² 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. is of universal application. for the purpose of accommodating the principle. and that the principle upon which both lamps work is substantially identical.

November 23. Mapa. with the costs of this instance against the appellant. specifications and machine before him. 7798. and indeed a patent law which failed to recognize this doctrine would afford scant protection to inventors. respondents. plate. which is incapable of alteration or change in some unessential part. undoubtedly is that a purpose can not invoke the doctrine of equivalents to suppress all other improvements of the old machine. Veloso. bolt. vs. INCORPORATED. to the equivalent of such means ² not equivalent simply because the same result is thereby produced ² but equivalent as being substantially the same device in structure. supra. then will no patent for a combination be infringed. The argument of counsel for defendant and appellant. Apply that rule and it is clear that an alteration in a patented combination which merely substitutes another old ingredient for one of the ingredients in the patented combination.S.R. (Seymour vs. arrangement and mode of operation. 78 U. but if he employs all the ingredients. that under the doctrine of equivalents.. and the defendant having admitted the fact that he applied heat for the purpose of curving handles for canes and umbrellas by means of a blast lamp fed with alcohol. based on the theory that the questions herein discussed and decided to have been heretofore settled by this court. but he is entitled to treat everyone as an infringer who makes. (Burden vs.. the doctrine may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of substitution of some part of his invention by some well known mechanical equivalent. and has been well said by counsel for plaintiff.. size. then will his patent not be worth the parchment on which it is written. as well as by means of a blast lamp fed with petroleum or mineral oil. not substantially different from what they have invented and caused to be patented as to any other class of inventors. of every wheel. All alike have the right to suppress every colorable invasion of that which is secured to them by letters patent. by which is meant that a patentee in such a case may substitute another ingredient for any one of the ingredients of his invention. [G. 82 U. while counsel for plaintiff appears to think that the language of the patent covers any process or device whereby wood or cane may be bent or curved by the use of heat. by substituting in lieu of some parts of the combination well-known mechanical equivalents? I am quite clear that be can not. and the rule in such cases. Cas. by operation of law. LWT CO. Corning. save those mentioned in the "note" thereto attached are included in the patent. (King vs.. so as to bring that part outside of the express terms of any form of language which might be used in granting a patent for the invention. color. and nothing better than a colorable evasion of the patent. Cas. could substitute in the place of the mechanism described without the exercise of the inventive faculty. for one ingredient another which was well known at the date of the patent as a proper substitute for the one withdrawn. Rees.) A claim for the particular means and mode of operation described in the specification extends. Cas. "as to include within the express terms of its detailed description every possible alternative of form. Our attention has not been called to any provision of the patent law of Spain. 194. further than to hold. uses. 2001] SOLID TRIANGLE SALES CORPORATION and ROBERT SITCHON. Willard. 516. 14399. wherein plaintiff was declared the owner of the patent in question. Torres. 144309. Bona fide inventors of a combination are as much entitled to suppress every other combination of the same ingredients to produce the same result. shape. (Gsell vs. the mere substitution of a wellknown element for another ² where it appears that the substituted element was well known as a usual substitute for the element left out ² is merely a formal one. JJ. Why should not the inventor of a new combination receive the same protection? If he can not. by his letters patent. as before explained. having the forms. Branch 93.) An equivalent device is such as a mechanic of ordinary skill in construction of similar machinery. and defendant enjoined from its infringement. and which performs substantially the same function as the one withdrawn. if the substitute performs the same function and was well known at the date of the patent as a proper substitute for the omitted ingredient. (Union Sugar Refining Co. Philip Best Brewing Co. and clearly point the way to the proper solution of the questions involved in the case at bar: Can the defendant have the right of infringement. for certainly no one capable of operating a machine can be incapable of adopting some formal alteration in the machinery. It is not to be disputed that the inventor of an ordinary machine is. Matthieson. etc. as we do. 2143. Louisville Cement Co. SANLY CORPORATION. DECISION 21 .J. Corning. under Spanish law. and that the patent rights secured thereunder are strictly limited to the precise language of the "note" attached to the descriptive statement. No. But for the purpose of this decision it is not necessary to consider these questions.. C. is an infringement of the patent. concur. ROD CASTRO. petitioners. human ingenuity would be taxed beyond its powers in preparing a grant of a patent so comprehensive in its terms.) Bona fide inventors of a combination are as much entitled to equivalents as the inventors other patentable improvements. Rep. protected against all mere formal alterations and against the substitution of mere mechanical equivalents. Cas. Fed.. and Tracey. Gottfried vs. he must be deemed to have contempt of violating the terms and the injunction issued in the principal case. THE SHERIFF OF RTC QC. The reason for the qualification of the rule as stated is.) The judgment of the lower court should be and is hereby affirmed. (Burden vs. (Gould vs. rod. that such change ² that is. Fed. if the ingredient substituted performs the same function as the one omitted and as well known at the date of his patent as a proper substitute for the one omitted in the patented combination. 187. none of the steps of the process described in the descriptive statement. If no one can be held to infringe a patent for a combination unless he uses all the parts of the combination and the identical machinery as that of the patentee. material. and other component parts of an invention.. for it is difficult if not impossible to conceive an invention. or of substituting mechanical equivalents." The following citations from various decisions of the Federal Courts of the United States illustrate the application of the doctrine in that jurisdiction.) 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 alteration of the combination if the ingredient substituted performs substantially the same function as the one withdrawn. and that the subject-matter of this proceeding is res adjudicata between the parties thereto is sufficiently refuted by the simple reading of the decision of this court in the case relied upon. ERA RADIO AND ELECTRICAL SUPPLY..) Counsel for the defendant insists that. No one infringes a patent for a combination who does not employ all of the ingredients of the combination. the language of the note in the descriptive statement applies to the operation of applying heat for the purpose of curving handles or canes and umbrellas by means of a blast lamp fed with alcohol. weight... location. vs. Osborne.. VICTOR TUPAZ and the PEOPLE OF THE PHILIPPINES. or vends his patented improvement without any other change than the employment of a substitute for one of its elements. which denies to patentees thereunder the just and equitable protection of the doctrine.) All the elements of the invention in this case are old. nut. and which any constructor acquainted with the art will know how to comply. both on principle and authority. Fed.S.. screw. he does infringe. 130.not whether a patent be issued by one sovereignty or another. Arellano. Fed. or adopts mere formal alterations.. 7 Phil. or substitutes. well known as such at the date of his invention. 5633. 556.

By its very nature. Let a copy of this order be served by personal service upon Mr. Court of Appeals [155 SCRA 186 (1987).. No. as well as the order dated April 20. he practically deprived the prosecution of its evidence so vital in establishing the existence of probable cause. On February 8. Judge Bruselas issued the third assailed order. respondent. Sitchon alleged that ERA Radio and Electrical Supply (ERA). 1999. an affidavit complaint for unfair competition against the members of the Board of Sanly and LWT Co. 2) Mr. the court directs ± 1) EIIB. 3324 (99). who personally knows the facts. The order for the issuance of the warrant is not a final one and cannot constitute res judicata (Cruz vs. for violation of Section 168 of R. On March 31. It is merely the first step in the process to determine the character and title of the property. de Guzman. through its authorized officer. We cannot go along with respondent judge¶s theory.KAPUNAN. through Robert Sitchon. and prosecuted. who personally knows the facts. such a criminal action should be prosecuted.] is in order. Q-99-37206 for damages and injunction with prayer for writs of preliminary injunction and attachment. 333).S. Mr. (LWT). 1999.: The petition at bar stems from two cases. 1999. Judge Apolinario D. Meanwhile. 1999. Consul [17 SCRA 667 (1996)]. interlocutory (Marcelo vs. 1999. Jr. through its authorized officer. On March 30. Q-3324 (99) before Branch 93 of the Quezon City Regional Trial Court (RTC). petitioner Solid Triangle filed with Branch 91 of the same Court. Dinglasan. Petitioners¶ reliance on Vlasons Enterprises Corporation vs. Judge Bruselas issued the second assailed order denying Solid Triangle¶s motion for reconsideration.S. Petitioners also assailed the order of the Quezon City RTC. J. 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. Upon the filing of the petition on April 26. 199-2870 for unfair competition wherein the seized items will be used as evidence. respondents Sanly. the prosecution inevitably will present the seized items to establish a prima facie case of unfair competition against private respondents. The facts are set forth in the Decision of the Court of Appeals dated July 6. Respondent Judge held that there is doubt whether the act complained of (unfair competition) is criminal in nature. 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. or commenced if not yet instituted. usually constructive. upon application of the Economic Intelligence and Investigation Bureau (EIIB). In the said proceedings. the Court of Appeals rendered judgment initially granting certiorari. owned and operated by LWT. to the court. SO ORDERED. 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. 1999. the Court of Appeals issued a temporary restraining order to prevent Judge Bruselas from implementing the Order dated April 20. Serve copies also to EIIB and the respondents Rod Castro and Sanly Corporation. 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. On March 29. 1999. LWT and ERA moved to quash the search warrant which was denied by Judge Bruselas in an order dated March 5. 1999. Branch 93. 1999. 1999. Tolentino-Genilo. 1999. the defendants filed their opposition to the application for the issuance of writs of injunction and attachment.. 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¶. Quezon City. 1999. On February 4. On March 26. on April 20. Quezon City. Bruselas. EIIB agents seized 451 boxes of Mitsubishi photographic color paper from respondent Sanly. Such an order does not ascertain and adjudicate the permanent status or character of the seized property. 83 Phil.A. Hence. 3324 (99) against Sanly Corporation (Sanly). show cause why they should not be held in contempt. 1999 directing petitioners to. In Consul vs. Solid Triangle.i[1] Alleging grave abuse of discretion. By virtue of Search Warrant No. 114 SCRA 657). among other things. the Supreme Court held: 22 . Inc. No. LWT and ERA. the foregoing premises considered. 1999: x x x on January 28. 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. the dispositive portion of which reads: WHEREFORE. The outcome of the criminal action will dictate the disposition of the seized property. and Civil Case No. Search Warrant Case No. 8293 (unfair competition). It held that the quashing of the warrant deprived the prosecution of vital evidence to determine probable cause. [which claims to be the sole and exclusive distributor thereof. xxx Forthwith. presided by Judge Lita S. Considering that Judge Bruselas quashed the search warrant. is in conspiracy with Sanly in selling and/or distributing Mitsubishi brand photo paper to the damage and prejudice of Solid Triangle. 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. it is provisional. Civil Case No. On July 6. Robert Sitchon and Solid Triangle Sales Corporation. Q-93-37206 for damages and injunctions before Branch 91 of the same court. The said respondents filed a motion for reconsideration which was granted by Judge Bruselas in the first assailed order of March 18. 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. No. filed with the Office of the City Prosecutor.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. Presiding Judge of RTC. Admittedly. docketed as I. 1999. pursuant to an agreement with the Mitsubishi Corporation]. That determination is done in the criminal action involving the crime or crimes in connection with which the search warrant was issued. 1-99-2870. Impleaded as defendants were Sanly. issued Search Warrant No. Branch 91 denying their application for a writ of attachment. its Marketing and Communication Manager. 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.

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. or services of another. if he makes false statements in the course of trade to discredit the goods. The right to privacy and the sanctity of a person¶s house. And. then the quashal of the search warrant by respondent Judge Bruselas is valid. If Solid Triangle feels aggrieved. 2000. Records show that Sanly sold its photographic paper purchased from Hongkong without altering its appearance. They are also zealously protected.Affidavit of merits has a known purpose: Courts and parties should not require the machinery of justice to grind anew. defraud Solid Triangle or the buying public. II.v[5] Petitioners moved for reconsideration but the same was denied by the Court of Appeals in its Resolution dated August 4. not of substance. there is merit in the motion for reconsideration. 1999 Submission of Annexes to this Court. It bears stressing that there is no showing or allegation that Sanly has presented. 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. however. Court of Appeals [216 SCRA 101 (1992)] that governs. in their April 27. The validity of a search and seizure is of constitutional dimensions. where the Supreme Court ruled that with the quashal of the search warrant. We look back at the facts here. x x x Under Sections 168 and 170 of R. The petition for relief is verified by petitioner himself. In its ³Amendatory Decision. Thus. distributes. 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. While Sanly buys its goods from Hongkong. a parallel importer is one which imports. On the contrary. there is here no probable cause to justify the issuance of a search warrant based on a criminal action for ³unfair competition. Certainly. IN THE PARALLEL IMPORTATION EFFECTED BY THE RESPONDENTS WITH DECEIT AND BAD FAITH. in any proceeding. Annexes ³A´ to ³D´. Also.A. In assailing the Amendatory Decision of the Court of Appeals. sold. it should sue Mitsubishi for damages. on factual basis. The constitutional provision that any evidence obtained in violation of the provision against unreasonable searches and seizures ³shall be inadmissible for any purpose in any proceeding´ finds application here. The same brown paper with the Mitsubishi seal is wrapped around its products.´ Therefore. independently of an exclusive distributorship or agency agreement with the manufacturer. business. IV. Solid Triangle acquires its goods from Japan on the basis of its exclusive distributorship with Mitsubishi Corporation. Court of Appeals does not apply since it involved a different set of facts and issues. While Solid Triangle has the right to present every single piece of evidence it can gather and muster.iv[4] As regards the preliminary attachment. we believe. not an unfair competitor. and sells genuine products in the market. Both Sanly and Solid Triangle sell genuine Mitsubishi products. Accordingly. the real dispute is actually between Solid Triangle and the manufacturer Mitsubishi. if the prospects of a different conclusion cannot be reasonably reached should relief from judgment be granted. 8293 (the Intellectual Property Code). this is precisely what Sanly states as its commercial status. the seized goods from Sanly are genuine and not mere imitations. conceal or dispose of unjustly detained personal property. 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 23 . But that is between them. Said petition is under oath. 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. the evidence obtained by virtue of said warrant was inadmissible in the preliminary investigation. AT LEAST WITHOUT WAITING FOR THE FINDINGS OF THE CITY PROSECUTOR WHO HAS THE EXCLUSIVE JURISDICTION TO DETERMINE PROBABLE CAUSE. however. claiming it is a parallel importer. papers and effects against unreasonable searches and seizures are not only ancient. 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. or passed off its photographic paper as goods which come from Solid Triangle. To require defendant to append an affidavit of merits to his verified petition. 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. It is distributed in the same Mitsubishi box with its logo and distinguishing marks as marketed in Japan. since there is no probable cause for unfair competition in this case. THE JUDGE WHO ISSUED A SEARCH WARRANT THAT HAS ALREADY BEEN IMPLEMENTED CANNOT QUASH THE WARRANT ANYMORE. the Court of Appeals reversed itself. Undisputedly. 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. This being the case.´ the appellate court held that there was no probable cause for the issuance of the search warrant. AS THE COURT OF APPEALS HAS ALREADY RULED. But there is no showing that it attempts to depart from country. Result: Absence of a separate affidavit is of de minimis importance. PETITIONERS¶ APPLICATION FOR A WRIT OF ATTACHMENT CANNOT BE DENIED ON THE GROUND THAT AN AFFIDAVIT OF MERITS IS NOT APPENDED TO THE COMPLAINT. it is the case of People vs. 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. There is no attempt on its part to deceive. elevates the petition to the same category as a separate affidavit. the defect pointed by the court below is one of forms. This is admitted by petitioners in their application for a search warrant and supporting affidavits. 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. III. We initially agreed with it. The case of Vlasons Enterprises Corporation vs. That oath. inclusive. THERE EXISTS PROBABLE CAUSE THAT THE CRIME OF UNFAIR COMPETITION UNDER THE INTELLECTUAL PROPERTY CODE HAS BEEN COMMITTED BY THE RESPONDENTS. The merits of petitioner¶s case are apparent in the recitals of the petition. to the circumstances. the seized goods could not be used as evidence for any purpose. it has no right to prove its case through the use of illegally seized evidence secured in derogation of a constitutionally guaranteed right. if at all for breach of its distributorship. petitioners argue that: I. Therefore. As defined.iii[3] Upon motion by respondents. is to compel him to do the unnecessary.

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. the motion is to be resolved by the latter court. the search warrant does not even begin to fulfill these stringent requirements and is therefore defective on its face. x x x. and Such other officers as may be authorized by law. (1) x x x. Motion to quash a search warrant or to suppress evidence. 2. A preliminary investigation. If no criminal action has been instituted. Requisites for issuing search warrant. The preliminary investigation and the filing of the information may still proceed if. supra. 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. 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. the inadmissibility of the evidence obtained through an illegal warrant does not necessarily render the preliminary investigation academic. if such court failed to resolve the motion and a criminal case is subsequently filed in another court. since there is no crime to speak of. 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. 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.xii[12] In Kenneth Roy Savage/K Angelin Export Trading vs. Under the same section. but such is the inevitable consequence. where to file. In the determination of probable cause. It is therefore puerile to argue that the court that issued the warrant 24 . houses. and particularly describing the place to be searched and the things to be seized. Rule 126 of the Revised Rules of Criminal Procedure. finds that no offense has been committed. Rule 126 of the Rules of Court provided: Sec. Hence.´ including the preliminary investigation. whether an information should be filed in court.xvi[16] The proceedings for the issuance/quashal of a search warrant before a court on the one hand.xvii[17] The Court finds this interpretation too contrived. and should be held for trial. The Court held that the alleged crime is not punishable under Article 189 of the Revised Penal Code. in determining probable cause for issuing or quashing a search warrant. 14.´vii[7] In finding that doubt exists that a crime has been committed. Article III of the Constitution provides: Sec. The purpose of each proceeding differs from the other. the court must necessarily resolve whether or not an offense exists to justify the issuance or quashal of the search warrant.´ ³does not expressly cover the situation where the criminal complaint is pending with the prosecutor. ± The following may conduct preliminary investigations: (a) (b) Trial Courts. to shirk from this duty would amount to an abdication of a constitutional obligation.ERROR TO THE PREJUDICE OF THE PETITIONERS. Previous to the 2000 revision. also requires a finding by the authorized officer of the commission of a crime. and accordingly. 3. It may be true that. as petitioners would like to believe.´ 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. and should be held for trial. are proceedings entirely independent of each other. and effects against unreasonable searches and seizures of whatever nature and for any purpose shall be inviolable. [Emphasis supplied. the motion should be filed with the latter. 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 ³inadmissible for any purpose in any proceeding. 2000.ix[9] This function is exclusively judicial.´viii[8] The contention has no merit. The right of the people to be secure in their persons. (2) Any evidence obtained in violation of this or the preceding section [Section 2] shall be inadmissible for any purpose in any proceeding. Indeed. Petitioners also argue that Section 14. 2. constitute a usurpation of the executive function. and the prosecution is poised to push forward with the goods as evidence. 3.´ In such a case. it does not interfere with or encroach upon the proceedings in the preliminary investigation. In the issuance of search warrants. there exists ³sufficient ground to engender a wellfounded belief that a crime has been committed and the respondent is probably guilty thereof. because of other (admissible) evidence. it is argued that the judge ³trench[ed] upon the prerogative and duty of the city prosecutor. Prior to the revision of December 1. Rule 126 precisely covers situations like the one at bar. (c) (d) Provincial or city fiscals and their assistants. When the court. Officers authorized to conduct preliminary investigations.´xiv[14] Section 2 of the same Rule enumerates who may conduct preliminary investigations: Sec. as a result of the quashal of the warrant. the public prosecutor should be allowed to resolve the question of whether or not probable cause exists. and particularly describing the place to be searched and the persons or things to be seized. papers.xv[15] The determination of probable cause during a preliminary investigation has been described as an executive function. by definition.] Inherent in the courts¶ power to issue search warrants is the power to quash warrants already issued. Article III of the Constitution unequivocally states: Sec. Section 1 of Rule 112 of the Rules of Court defined a preliminary investigation as ³an 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. 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. the motion shall be resolved by the latter court. Taypin.xiii[13] the Court was confronted with a search warrant that was issued purportedly in connection with unfair competition involving design patents.x[10] The ruling has since been incorporated in Rule 126 of the Revised Rules of Criminal Procedure: Sec. and the second. the motion may be filed in and resolved by the court that issued the search warrant. Nevertheless. [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). and the preliminary investigation before an authorized officer on the other. petitioners submit. The first is to determine whether a warrant should issue or be quashed. This does not. ³especially after goods had been seized pursuant to the search warrant.vi[6] Petitioners contend that the Constitution does not authorize the judge to reverse himself and quash the warrant. 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. and particularly describing the place to be searched and the things to be seized. However. Judges of the Municipal Trial Courts and Municipal Circuit National and Regional state prosecutors. It is undisputed that only judges have the power to issue search warrants. One is not bound by the other¶s finding as regards the existence of a crime. the private complainant is deprived of vital evidence to establish his case. Their authority to conduct preliminary investigations shall include all crimes cognizable by the proper court in their respective territorial jurisdictions. while intended ³to resolve conflicts of responsibility between courts. in which case. ± 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. in which case. In this connection. Section 14. quashed the search warrant issued for the non-existent crime. ± 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.

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. is AFFIRMED insofar as it holds that (1) the Quezon City Regional Trial Court. 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. 168. namely. The assailed order dated April 20. We may categorize the acts of the respondents as ³underground sales and marketing´ of genuine goods. who personally knows the facts. as well as its Resolution dated August 4. the following shall be deemed guilty of unfair competition: (a) Any person. or who shall commit any acts calculated to produce said result. (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. 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. Private respondents are alleged to have committed unfair competition in violation of Section 168 of the Intellectual Property Code.´ Assuming that this act constitutes a crime. 48. 168. Indeed. Petitioners submit that ³the importation of even genuine goods can constitute a crime under the Intellectual Property Code so long as fraud or deceit is present. and goodwill is protected by the law on unfair competition. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer. there is no proof to establish such an allegation. We agree with petitioners. Before any hearing on the order could be held. business or services of another. The case is remanded for further proceedings to the courts of origin. (2) the evidence does not support a finding that the crime of unfair competition has been committed by respondents. 1999 was a ³show cause´ order. either as to the goods themselves or in the wrapping of the packages in which they are contained. business or services so identified. 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. the trial court had yet to rule on the matter. The Court of Appeals itself recognized the rights of a dealer. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a lie purpose. other than the actual manufacturer or dealer.000). as presented before the trial court. Sanly Corporation did not pass off the subject goods as that of another. the petition is GRANTED IN PART. whether or not a registered mark is employed. petitioners promptly filed a petition for certiorari. to permit respondents to continue importing and distributing 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. or in any other feature of their appearance.´ The intent to deceive in this case. We now turn to the question of whether the facts.000) to Two hundred thousand pesos (200. according to petitioners.cannot entertain motions to suppress evidence while a preliminary investigation is ongoing. 168. (b) Any person who by any artifice. in Section 170. and Branch 93 of the same court 25 . 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. has the power to determine the existence of a crime in quashing a search warrant and. provides the penalty for violation of Section 168: SEC.4 The remedies provided by Sections 156. Unfair Competition. which states: SEC. Penalties. (b) Respondents even covered the boxes with newspapers to conceal true identity. ± 168. 170. and shall be subject to an action therefor. Whether there are sufficient grounds to justify the order is a matter best left to the trial court. when in truth and in fact they were not. or his business. constitute an offense. 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. which apparently has yet to hear the matter. ± Independent of the civil and administrative sanctions imposed by law. The same law. Branch 93.1.3 In particular. 2000. Regulation and Remedies. 168. or the devices or words thereon. Petitioner Solid Triangle has established a trade or business in which it had acquired goodwill and reputation that will be protected. WHEREFORE. through its authorized officer. 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.xviii[18] Petitioners further expound: 47. 451 boxes of Mitsubishi photographic color paper. 49. which will be protected in the same manner as other property rights. Thus. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. The acts of the respondents were made to appropriate unjustly the goodwill of petitioner Solid Triangle. 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. respondents certainly knew that petitioner Solid Triangle is the sole and exclusive importer and distributor of Mitsubishi Photo Paper. 157 and 161 shall apply mutatis mutandis. his business or services from those of others. which it purchased from a supplier in Hong Kong. and so. shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155.xx[20] Petitioners also allege that private respondents ³made it appear that they were duly authorized to sell or distribute Mitsubishi Photo Paper in the Philippines. or device. it admits that the goods are genuine Mitsubishi photographic paper. Branch 91 of RTC. and REVERSED insofar as it holds that (1) there are no grounds to warrant the issuance of a writ of preliminary attachment and (2) petitioners are guilty of contempt. Similarly premature is whether petitioners¶ failure to return the goods to respondents constituted indirect contempt. undermining the property rights of petitioner Solid Triangle. however. 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. and without in any way limiting the scope of protection against unfair competition. Section 168 and Subsection 169.2 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. 2000.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. Rights. has a property right in the goodwill of the said goods. Quezon City for resolution of the application for a writ of attachment.1 A person who has identified in the mind of the public goods he manufactures or deals in. or services for those of the one having established such goodwill. and for this Court now to hold petitioners¶ act contemptuous would preempt said court. 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. The Amendatory Decision of the Court of Appeals dated March 31. is ³patent´ ³from the following undisputed facts´: (a) Before marketing its product. Clearly. shall be guilty of unfair competition. 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. a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (50. who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer.

on April 1. INC. 2005 before Branch 24 of the RTC Manila presided by Judge Eugenio an Urgent Motion to Quash and/or to Exclude or Suppress Evidence and Return Seized Articles..J.70[11] By Order71[12] dated April 18... No bond was posted by the applicant. 3.. Seized during the raid were the following items: eight replicating machines five bonding machines four printing machines seven polycarbonate dryers one table for silk screen ten moulds two shredder machines one color blue centroller one dryer machine 92 boxes of assorted colors of paint 600 pieces of counterfeit Sony Playstation DVDs 285 boxes of blank CDs eight boxes of white blank CDs nine boxes of AL targets two boxes of sputtering targets 18 gallons of UV bonding adhesive four gallons of DVD bondage 21 gallons of phothum chemicals four gallons of CPS mesh prep.69[10] In the meantime or on April 14.. 1.. Jr.... G. For search warrant to be valid... and that a bond is not required in the application for their issuance.65[6] the latter arguing that SCEI had no personality to represent the People of the Philippines in the case and to file the opposition to the motion because SCEI¶s agents were mere witnesses of the applicant for the issuance of the search warrants.66[7] On April 11. Eugenio. quoted verbatim: 26 . Reyes.. through counsel. of which Search Warrant Nos.. SCEI. J. The place to be searched was not described with particularity. Branch 93. Petitioners are ordered to return to respondent Sanly Corporation the 451 boxes of Mitsubishi photographic color paper seized by virtue of Search Warrant No.68[9] The case was thereafter raffled to Branch 21 of the Manila RTC. No probable cause exists for the issuance of the warrant.61[2] 8... Jr. 05-6336 and 05-6337 are relevant to the present case.: 9.. Petitioner. x . The statement made by the affiants in their joint-affidavit in support of the application for the search warrant were false and perjurious..... On application of Inspector Rommel G.. Inc.. 6.. and Ynares-Santiago.R. The searching team entered the premises and conducted the search without any witness in violation of the Rules of Court. 2.. BFTI subsequently filed on April 5.... Pardo. it finding that they were regularly issued and implemented. filed with the Department of Justice Task Force on Anti-Intellectual Property Piracy a complaintaffidavit against the directors and officers of BFTI.. SONY COMPUTER ENTERTAINMENT.. 4. Judge Eugenio ³voluntarily inhibited´ himself from the case.. The raiding team planted evidence of 600 compact discs at the scene while no witnesses were present. 2005. acting on a Very Urgent Motion to Inhibit67[8] filed by SCEI to which BFTI interposed its objection.... (SCEI). Certification against forum shopping prescribed by law was not executed. .. JJ.. INC. to which BFTI filed a Reply. Macatlang of the Philippine National Police. concur. Respondent. and nine gallons of CD lacquer. the master tapes must be presented. 169156 Promulgated: February 15. eight search warrants60[1] for copyright and trademark infringement... Puno.. Davide. Bright Future Technologies.62[3] alleging as follows. Inc...for resolution of the application to cite petitioners for contempt. 2007 5. No.. DECISION CARPIO MORALES. the RTC denied BFTI¶s motion to quash the warrants. 3324 (99) issued by the Quezon City Regional Trial Court. SO ORDERED. after a complaint was received from petitioner.-x 7.. presided by Judge Amor A. (Chairman). (BFTI). Sony Computer Entertainment.versus BRIGHT FUTURE TECHNOLOGIES. C.63[4] SCEI filed an Opposition64[5] to the motion. following which a raid was conducted on the premises of respondent. The search conducted was illegal. 2005.. 2005.... were issued by the Manila Regional Trial Court (RTC) Executive Judge Antonio M. 2005..

. 2005. by Order of August 10. 8. arose SCEI¶s present Petition for Review on Certiorari under Rule 4582[23] which assails the August 8 and August 10.´ ³for reconsideration of the order of voluntary inhibition dated April 11. the guards refused to receive the warrants and to open the premises.BFTI filed a Motion for Reconsideration72[13] of the denial of its motion to quash. . under the circumstances. or premises to be made in presence of two witnesses. (a) . it granted BFTI¶s Motion for Reconsideration of its April 18. contrary to the RTC¶s finding that it was unnecessary. room or any other premise shall be made except in the presence of the lawful occupant thereof or any member of his family or in the absence of the latter. when it disregarded [its] clear right . two witnesses of sufficient age and discretion residing in the same locality. when it granted respondent¶s Motion to Quash based on questions of alleged irregularities by the peace officers in enforcing the search warrants. Judge Reyes transmitted the records of the case to the Executive Judge pursuant to A. when it ruled that the enforcement of the search warrant violated the two-witness rule provided in Section 8 of Rule 126. The issue of whether a private complainant.83[24] The RTC. . hence. the RTC correctly recognized the participation of SCEI in the proceedings. 2005 an Ex Parte Motion to Return Seized Articles78[19] which the RTC granted. however. when it released the seized properties by virtue of the filing of a bond by the respondent. such private party may do so in collaboration with the NBI or such government agency. it was. Inc. reasonable. 2005 Order by Order of August 8.´ and ³for the return of the case to the executive judge. The party may file an opposition to a motion to quash the search warrant issued by the court.79[20] BFTI filed the required bond alright. . No search of a house. . 2005. as the RTC itself found. room. after the members of the searching team introduced themselves to the security guards of BFTI and showed them the search warrants. contending that the RTC erred When SCEI then opposed BFTI¶s Urgent Motion to Quash and/or to Suppress or Exclude Evidence and Return Seized Articles (emphasis supplied). . Isip:84[25] was violated and that the searching team¶s use of a bolt cutter to open the searched premises was unnecessary. to appear and participate as a private complainant in the search warrant proceedings. . . may appear. .M. the RTC held that it would treat SCEI¶s counsel as ³an officer of [the] Court to argue the other side. like SCEI. presided by Judge Felixberto T. or a motion for the reconsideration of the court order granting such motion to quash. 2005 Orders of the court a quo. they 27 . inter alia. the validity of the search warrant issued by the court and the admissibility of the properties seized in anticipation of a criminal case to be filed.75[16] (b) In addressing the issue of SCEI¶s personality to appear in the proceedings. Jr. . For. . . As for the use of a bolt cutter to gain access to the premises of BFTI. .81[22] . 2005. It also filed joint motions ³for the inhibition of the Honorable Judge Amor Reyes. . when it ruled that the use of the bolt cutter violated Section 7 of Rule 126. found that the two-witness rule under Section 8 of Rule 126 which provides: SEC. No. so to speak. such as the BFAD. for the clarification of issues related to search and seizure cases and to arrive at a better conclusion and resolution of issues in this case. (2) In an Order dated May 20. .´73[14] (1) . when it ordered the immediate release of the seized property prior to the finality of the order quashing the search warrants. has the right to participate in search warrant proceedings was addressed in the affirmative in United Laboratories. .74[15] The case was then re-raffled to Branch 8 of the Manila RTC. . Search of house. (Underscoring supplied). . participate and file pleadings in the search warrant proceedings to maintain. (a) .85[26] (Emphasis and underscoring supplied) Hence. v. [A] private individual or a private corporation complaining to the NBI or to a government agency charged with the enforcement of special penal laws.77[18] BFTI subsequently filed on August 9. subject to the filing of a bond. Olalia. 2005. 03-8-02.´76[17] [3] . 80[21] and the seized items were turned over to its custody.

with the MODIFICATION that the portion requiring respondent to file a bond is SET ASIDE. which is supposed to cover only issues of law. . however. SCEI insists. (Underscoring supplied) As the two-witness rule was not complied with. Pagkatapos ay nilapitan ako ng isang pulis at ipinatanggap sa akin ang nasabing search warrant. was thus in order. they were accompanied at all times by one of the security guards on duty until the barangay officials arrived. Their return. WHEREFORE. The August 10. These statements of the two Barangay Police ostensibly arriving late while a search was going on was corroborated by Insp. the petition is DENIED. Observed the RTC: At this point. The RTC order requiring BFTI to file a bond to ensure the return of the seized items should the Department of Justice find probable cause The RTC¶s finding that the two-witness rule governing the execution of search warrant was not complied with. has no basis in law.89[30] and that ³[e]ven when the enforcing officers were moving towards the actual BFTI premises . against it in I. however.claiming that ³they are not in control of the case. Sy. 2005 search are inadmissible in evidence. Branch 8 granting the Urgent Motion to Quash filed by respondent.. which rule is mandatory to ensure regularity in the execution of the search warrant. . Noong ako ay 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. de Castro and Gaudencio A. it is worthy of note [sic] the two statements issued by Barangay Police Subrino P. Besides. to wit: xxxx 3. 2005-315. a security guard may 28 . if refused admittance to the place of directed search after giving notice of his purpose and authority.. et al. Masambique who affirmed in their testimonies in Court that. Bright Future Technologies. Anthony Bryan B. may break open any outer or inner door or window of a house or any part of a house or anything therein to execute the warrant or liberate himself or any person lawfully aiding him when unlawfully detained therein. on motion of BFTI.91[32] In any event. Let the bond then filed by respondent be CANCELLED.92[33] A final word. Macatlang¶s testimony that the Barangay officials arrived at about 11:30 PM to 12 AM. No.´86[27] The conditions required under Section 7 of Rule 126 were thus complied with: not be considered a ³lawful occupant´ or ³a member of [the lawful occupant¶s] family´ under the earlier quoted Section 8 of Rule 126.87[28] is in order. The officer. that the searching team waited for the arrival of the barangay officials who were summoned to witness the search. The August 8. is AFFIRMED.S. Inc. the objects seized during the April 1. the seized items being inadmissible in evidence. 2005 Order granting the Ex Parte Motion to Return Seized Articles filed by respondent is AFFIRMED. 2005 Order of the Regional Trial Court of Manila. SCEI v.88[29] (Underscoring supplied) The RTC did not thus err in ordering the quashal of the search warrants. The police were already searching (³nagsisiyasat´) the area of respondent BFTI in clear violation of the two-witness rule provided for by Section 8 of Rule 126.´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. it would serve no purpose to ensure their return. SO ORDERED.