Concept of Novelty

G.R. No. 14101           September 24, 1919

ANGEL VARGAS, plaintiff-appellant,
vs.
F. M. YAPTICO & CO. (Ltd.), defendant-appellee.

Vargas v. Yaptico & Co G.R. No. 14101            September 24, 1919

Malcolm, J:

Facts:
Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office
for his so-called invention of an improved adjustable plow with the use his own native plow. A
certified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of
the Executive Bureau, Government of the Philippine Islands. Defendant F. M. Yaptico & Co.
(Ltd.) is a firm engaged in the foundry business in Iloilo City. The firm manufacturers plow
parts. It also produced points, shares, shoes, and heel pieces in a considerable amount adapted to
replace worn-out parts of the plow of Vargas.
Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged
infringement of his U.S. Patent by the defendant F. M Yaptico & Co. and to recover the damages
suffered by reason of this infringement, to which the court issued the preliminary injunction
prayed for. 
The defendant denied the allegations and defended that the patent lacked novelty or
invention, that there was no priority of ideas or device in the principle and construction of the
plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had
already been in public use for more than two years before the application of the plaintiff for his
patent. 
The trial judge rendered judgment in favor of the defendant, declaring null and without
effect the patent in question and dismissing the suit with costs against the plaintiff. Hence, the
plaintiff appealed said judgment. 

Issue:
1. Who has the burden of proof that infringement of patent exists?
2. Whether or not the defendant Yaptico & Co did not infringe the patent filed the petitioner
Vargas on the following grounds?
a) That the invention lacks novelty, invention, and discovery
b) That the invention had already been used prior to the application of patent.

Held:
1. The one who infringes the patent has the proof that there is no existence of infringement
of patent.
2. No, the defendant Yaptico & Co did not infringe the patent filed the petitioner Vargas.

Ratio:
1. When a patent is sought to be enforced, "the question of invention, novelty, or prior use, and
each of them, are open to judicial examination." The burden of proof to substantiate a charge
of infringement is with the plaintiff. The registered patent is presumed to be correct and
valid. The decision of the Commissioner of Patents in granting the patent is always presumed
to be correct. The burden then shifts to the defendant to overcome by competent evidence
this legal presumption. In this case, the defendant Yaptico & Co has burden of proof that the
patent filed by petitioner is void.
2. A. The patented plow of petitioner Vargas is not different from the native plow except in the
material, form, weight, and the grade of the result. The differences do not give a new
function or a new result distinct from the function and the result obtained from the native
plow. Its production does not presuppose the exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent of an invention under the provisions
of the Patent Law. The plow of Vargas does not appear to be such a "combination" as
contains a novel assemblage of parts exhibiting a new invention.
B. Under the provisions of the statute, an inventor's creation must not have been in public
use or on sale in the United States (and the Philippine Islands) for more than two years prior
to his application. Several testimonies manifest that the plow of Vargas was in a public use
and it was completely identical with other plows available in the market. Further, it was
proved that the invention was used in public at Iloilo by others than Vargas, the inventor,
more than two years before the application for the patent thus, the patent is invalid.
G.R. No. L-36650             January 27, 1933

ANGEL VARGAS, plaintiff-appellee,
vs.
PETRONILA CHUA, ET AL.,

Facts: Angel Vargas, the plaintiff herein, brought this action to restrain the appellants and the other
defendant entity, Cham Samco & Sons, their agents and mandatories, from continuing the
manufacture and sale of plows similar to his plow described in his patent No. 1,507,530 issued by
the United States Patent Office on September 2, 1924; and to compel all of said defendants, after
rendering an accounting of the profits obtained by them from the sale of said plows from September
2, 1924, to pay him damages equivalent to double the amount of such profits.

Issue: WON there is infringement committed by the defendant

Held:

The appellee is not entitled to the protection he seeks for the simple reason that his plow, Exhibit F,
does not constitute an invention in the legal sense, and because, according to the evidence, the
same type of plows had been manufactured in this country and had been in use in many parts of the
Philippine Archipelago, especially in the Province of Iloilo, long before he obtained his last patent.

As said by the United States Supreme Court, "it has been repeatedly held by this court that a single
instance of public use of the invention by a patentee of more than two years before the date of his
application for his patent will be fatal to the validity of the patent when issued." (Vargas vs. Yaptico)

We repeat that in view of the evidence presented, and particularly of the examination we have made
of the plows, we cannot escape the conclusion that the plow upon which the appellee's contention is
based, does not constitute an invention and, consequently, the privilege invoked by him is untenable
and the patent acquired by him should be declared ineffective.

The judgment appealed from is hereby reversed and the appellants are absolved from the complaint,
with costs of this instance against the appellee. So ordered.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs-appellants,
vs.
G. KOSUYAMA, defendant-appellee.

J.W. Ferrier for appellants.

Pablo Lorenzo for appellee.

Facts :

Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping machines, issued by the United
States Patent Office on December 16,1924, and registered in the Bureau of Commerce and Industry
of the Philippine Islands on March 17,1925, was the origin of this action brought by the plaintiffs
herein who prayed that the judgment be rendered against the defendant, ordering him thereby to
refrain immediately from the manufacture and sale of machines similar to the one covered by the
patent: to render an accounting of the profits realized from the manufacture and sale of the
machines in question; that in case of refusal or failure to render such accounting, the defendants be
ordered to pay the plaintiffs the sum of P60 as profit on each machine manufactured or sold by him;
that upon approval of the required bond, said defendant be restrained from continuing the
manufacture and sale of the same kind of machines; that after the trial the preliminary injunction
issued therein be declared permanent and, lastly, that the said defendant be sentenced to pay the
costs and whatever damages the plaintiffs might be able to prove therein. The action therefore was
based upon alleged infringement by the defendant of the rights and privileges acquired by the
plaintiffs over the aforesaid patent through the manufacture and sale by the former of machines
similar to that covered by the aforesaid patent.

Issue: WON the improvement in hemp stripping machines by the plaintiff is a novelty

Held: No. Strictly speaking, the hemp stripping machine of the plaintiffs does not constitute an
invention on the ground that it lacks the elements of novelty, originality and precedence. In fact,
before the plaintiffs herein obtained their patent, they themselves had already publicly used the
same kind of machine for some months, at least, and, various other machines, having in general, the
same characteristics and important parts as that of the said plaintiffs, were known in the Province of
Davao. 

he plaintiffs cannot insist that the "spindle" was a patented invention on the ground that said part of
the machine was voluntarily omitted by them from their application, as evidenced by the
photographic copy thereof (Exhibit 41) wherein it likewise appears that the patent on Improved
Hemp Stripping Machines was issued minus the "spindle" in question. Were we to stress to this part
of the machine, we would be giving the patent obtained by the plaintiffs a wider range than it actually
has, which is contrary to the principles of interpretation in matters relating to patents.

t is obvious that the "spindle" is not an integral part of the machine patented by the plaintiffs on the
ground that it was eliminated from their patent inasmuch as it was expressly excluded in their
application, as evidenced by the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held civilly liable for alleged infringement of the
patent upon which the present action is based on the ground that there is no essential part of the
machine manufactured and sold by him, which was unknown to the public in the Province of Davao
at the time the plaintiffs applied for and obtained their patent for improved hemp stripping machines,
the judgment appealed from is hereby affirmed, with the costs against the plaintiffs-appellants
G.R. L-45101 November 28, 1986

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,

vs.
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.

Ambrosio Padilla Law Offices for petitioner.

FACTS:
Petitioner does business under firm name “Swan Manufacturing” while private respondent does
business under firm name “Susana Luchan Powder Puff Manufacturing”. Petitioner is a patent holder of
powder puff namely: UM-423, UM-450, UM-1184.

Petitioner sent a letter to private respondent that the powder puffs the latter manufactures and sells to
various enterprises, particularly those in the cosmetics industry, resembles identically or is substantially
identical to the former’s powder puffs which it is a patent holder of. Petitioner explained such
production and sale constitute infringement of said patents and therefore its immediate discontinuance
is demanded, otherwise it will be compelled to take judicial action.

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.

Later, private respondent assailed the validity of the patents involved and filed with the Philippine
Patent Office petitions for cancellation of: UM-109, UM-1184, UM-110. In view thereof, petitioner filed a
complaint for damages with injunction and preliminary injunction against private respondent with the
then CFI for infringing the aforesaid letters patent.

Trial Court granted the preliminary injunction, enjoining the herein private respondent and all other
persons employed by her, her agents, servants and employees from directly or indirectly manufacturing,
making or causing to be made, selling or causing to be sold, or using or causing to be used in accordance
with, or embodying the utility models of the Philippine Patent Office Utility Model Letters Patent.

In a MR, private respondent questioned the propriety of the trial court's issuance of the Writ of
Preliminary Injunction arguing that since there is still a pending cancellation proceedings before the
Philippine Patent Office concerning petitioner's patents, such cannot be the basis for preliminary
injunction. However, the trial court denied such MR.

CA initially denied private respondent’s petition for certiorari, but later reversed itself upon
reconsideration. 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.
ISSUES:
Whether or not the evidence introduced by private respondent is sufficient to overcome the
presumption of correctness and validity of the patent.

RULING:

YES. After a careful review of the evidence consisting of 64 exhibits and oral testimonies of 5 witnesses
presented by private respondents before the CFI, as well as those presented by the petitioner,
respondent CA was satisfied that there is a prima facie showing of a fair question of invalidity of
petitioner's patents on the ground of lack of novelty.
As pointed out by said appellate court said evidence appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in within the
exclusive jurisdiction of the patent office.

The burden of proof to substantiate a charge of patent infringement lies with the plaintiff. But once
the patent is in evidence, there is created a prima facie presumption of its correctness and validity –
the burden of evidence is upon the defendant to overcome this presumption. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The burden of
going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by
competent evidence this legal presumption.

It has been repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence and for the patentee to be entitled to protection, the invention must be
new to the world. Accordingly, 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. 9 of the Patent Law) before the date of
his application for his patent, will be fatal to the validity of the patent when issued.

The law provides:

"SEC. 9. Invention not considered new or patentable.—An invention shall not be considered new or
capable of being patented if it was known or used by others in the Philippines before the invention
thereof by the inventor named in an application for patent for the invention; or if it was patented or
described in any printed publication in the Philippines or any foreign country more than one year before
the application for a patent therefor; or if it had been in public use or on sale in the Philippines for more
than one year before the application for a patent therefor; or if it is the subject matter of a validity
issued patent in the Philippines granted on an application filed before the filing of the application for
patent therefor."

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. As correctly observed by respondent CA, "since sufficient proofs
have been introduced in evidence showing a fair question of the invalidity of the patents issued for
such models, it is but right that the evidence be looked into, evaluated and determined on the merits so
that the matter of whether the patents issued were in fact valid or not may be resolved."

For failure to determine first the validity of the patents before aforesaid issuance of the writ, the trial
court failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of
the right to be protected and the violation of said right. As found by respondent Court of Appeals, 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.

Claim of prescription may be availed of by patent holder in petitions for cancellation at the Patent
Office, but not in ordinary civil actions for infringement of patent. As to petitioner's claim of
prescription, private respondent's contention that such refers to the filing of petitions for cancellation in
the Patent Office under Sec. 28 of the Patent Law and not to a defense against an action for
infringement under Sec. 45 thereof which may be raised anytime, is evident under aforesaid law.

G.R. No. 115106 March 15, 1996

ROBERTO L. DEL ROSARIO, petitioner,

vs.
COURT OF APPEALS AND JANITO CORPORATION, respondents.

Facts:
Petitioner filed a complaint for patent infringement against private respondent
Janito Corporation. Roberto L. del Rosario alleged that he was a patentee of an audio
equipment and improved audio equipment commonly known as the sing-along System
or karaoke. The effectivity of the Letters Patents was for five (5) years and was extended
for another five (5) years.
Petitioner alleges that private respondent was manufacturing a sing-along system
bearing the trademark miyata or miyata karaoke substantially similar if not identical
to the sing-along system covered by the patents issued in his favor. Thus he sought from
the trial court the issuance of a writ of preliminary injunction to enjoin private
respondent, its officers and everybody elsewhere acting on its behalf, from using, selling
and advertising the miyata or miyata karaoke brand.
The trial court ruled in favor of petitioner. On appeal, the appellate court
reversed the decision of the RTC. It expressed the view that there was no infringement
of the patents of petitioner by the fact alone that private respondent had manufactured
the miyata karaoke or audio system, and that the karaoke system was a universal
product manufactured, advertised and marketed in most countries of the world long
before the patents were issued to petitioner.
Issue:

WON there is infringement.

Held:

Yes. The Patent Law expressly acknowledges that any new model of implements
or tools of any industrial product even if not possessed of the quality of invention but
which is of practical utility is entitled to a patent for utility model. Here, there is no
dispute that the letters patent issued to petitioner are for utility models of audio
equipment.

It is elementary that a patent may be infringed where the essential or substantial

features of the patented invention are taken or appropriated, or the device, machine or
other subject matter alleged to infringe is substantially identical with the patented
invention. In order to infringe a patent, a machine or device must perform the same
function, or accomplish the same result by identical or substantially identical means and
the principle or mode of operation must be substantially the same.

Clearly, therefore, both petitioner's and respondent's models involve

substantially the same modes of operation and produce substantially the same if not
identical results when used.

Patent Law; Any new model of implements or tools of any industrial product even if not possessed of
the quality of invention but which is of practical utility is entitled to a patent for utility model.—The
Patent Law expressly acknowledges that any new model of implements or tools of any industrial
product even if not possessed of the quality of invention but which is of practical utility is entitled to a
patent for utility model. Here, there is no dispute that the letters patents issued to petitioner are for
utility models of audio equipment. Del Rosario vs. Court of Appeals, 255 SCRA 152, G.R. No.
115106 March 15, 1996

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, or if it is substantially similar to any other utility model so known, used
or described within the country.—Under Sec. 55 of The Patent Law 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, or if it is substantially similar to any other utility model so known, used or described within
the country. Respondent corporation failed to present before the trial court competent evidence that
the utility models covered by the Letters Patents issued to petitioner were not new. Del Rosario vs.
Court of Appeals, 255 SCRA 152, G.R. No. 115106 March 15, 1996

Same; Infringement; Words and Phrases; A patentee shall have the exclusive right to make, use and
sell the patented machine, article or product for the purpose of industry or commerce, throughout the
territory of the Philippines for the term of the patent, and such making, using or selling by any person
without authorization of the patentee constitutes infringement of his patent.—As may be gleaned
herein, the rights of petitioner as a patentee have been sufficiently established, contrary to the
findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of The
Patent Law, petitioner as a patentee shall have the exclusive right to make, use and sell the
patented machine, article or product for the purpose of industry or commerce, throughout the
territory of the Philippines for the term of the patent, and such making, using or selling by any person
without authorization of the patentee constitutes infringement of his patent.
Same; Same; In order to infringe a patent, a machine or device must perform the same function, or
accomplish the same result by identical or substantially identical means and the principle or mode of
operation must be substantially the same.—It is elementary that a patent may be infringed where the
essential or substantial features of the patented invention are taken or appropriated, or the device,
machine or other subject matter alleged to infringe is substantially identical with the patented
invention. In order to infringe a patent, a machine or device must perform the same function, or
accomplish the same result by identical or substantially identical means and the principle or mode of
operation must be substantially the same.

Del Rosario vs. Court of Appeals, 255 SCRA 152, G.R. No. 115106 March 15, 1996

G.R. No. 113388 September 5, 1997

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

Ponente: Justice Josue Bellosillo

FACTS:

Angelita Manzano filed with the Philippine Patent Office an action for the
cancellation of Letters Patent for a gas burner registered in the name of Melecia
Madolaria who subsequently assigned the letters patent to New United Foundry Corp.
Manzano alleged that the utility model covered by the letters patent which was an LPG
gas burner, was not inventive, new or useful. Manzano presented as evidence a
brochure distributed by Manila Gas Corpo. disclosing a pictorial representation of
Ransome Burner made by Ransome Torch and Burner Company, and another brochure
distributed by Esso Gasul showing a picture of another similar burner with top elevation
view and another perspective view of the same burner. Manzano claimed that this
"Ransome" burner had the same configuration and mechanism as that of the model
which was patented in favor of private respondent Melecia Madolaria.

Rolando Madolaria testified for respondent Melecia Madolaria. He alleged that he

was the General Supervisor of the UNITED FOUNDRY which was engaged in the
manufacture of different kinds of gas stoves as well as burners based on sketches and
specifications furnished by customers. He alleged that in 1978, Melecia instructed him
to cast several experimental models based on revised sketches and specifications and
thereafter tests were made that resulted to innovative models subject of the assailed
application. Director of Patents denied 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. On appeal, CA affirmed the said order.
ISSUE:

Whether the utility model subject of the questioned letters of patent lacks the
element of novelty.

HELD:

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. 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. 

The element of novelty is an essential requisite of the patentability of an invention

or discovery. If a device or process has been known or used by others prior to its
invention or discovery by the applicant, an application for a patent therefor should be
denied; and if the application has been granted, the court, in a judicial proceeding in
which the validity of the patent is drawn in question, will hold it void and ineffective. 

It is relevant and material to state that in determining whether novelty or newness

is negatived by any prior art, only one item of the prior art may be used at a time. For
anticipation to occur, 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.

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, although in truth they are not, they
cannot serve as anticipatory bars for the reason that they are undated. The dates when
they were distributed to the public were not indicated and, therefore, they are useless
prior art references.The validity of patent is decided on the basis of factual inquiries.
Whether evidence presented comes within the scope of prior art is a factual issue to be
resolved by the Patent Office.
Concept of Inventive Step

G.R. No. L-32160 January 30, 1982

DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

Commercial Law; Patents; Phil Patents Office; Determination of patentability of a product within the
competence of the Philippines Patent Office; Presumption that determination of Patents Office of
product’s patent ability is correct.—The validity of the patent issued by the Philippines Patent Office
in favor of the private respondent and the question over the inventiveness, novelty and usefulness of
the improved process therein specified and described are matters which are better determined by
the Philippines Patent Office. The technical staff of the Philippines Patent Office, composed of
experts in their field, have, by the issuance of the patent in question, accepted the thinness of the
private respondent’s new tiles as a discovery. There is a presumption that the Philippines Patent
Office has correctly determined the patent ability of the improvement by the private respondent of
the process in question.

Same; Same; Tile Making; Where improvement in tile making is inventive and different from old
process of tile making, improvement is patent able.—The respondent’s improvement is indeed
inventive and goes beyond the exercise of mechanical skill. He has introduced a new kind of tile for
a new purpose. He has improved the old method of making tiles and precast articles which were not
satisfactory because of an intolerable number of breakages, especially if deep engravings are made
on the tile. He has overcome the problem of producing decorative tiles with deep engraving, but with
sufficient durability. Durability inspite of the thinness and lightness of the tile, is assured, provided
that a certain critical depth is maintained in relation to the dimensions of the tile. x x x The Machuca
tiles are different from that of the private respondent. The designs are embossed and not engraved
as claimed by the petitioner. There may be depressions but these depressions are too shallow to be
considered engraved. Besides, the Machuca tiles are heavy and massive. Aguas vs. De Leon, 111
SCRA 238, No. L-32160 January 30, 1982

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

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.

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.

THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT COULD
NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE
EVEN IN MATTERS NOT PATENTED BY THE PLAINTIFF - LIKE THE
COMPOSITION AND PROPORTION OF INGREDIENTS USED AND THE
STRUCTURAL DESIGNS OF THE MOULD AND THE TILE PRODUCED - THAT OF
THE DEFENDANT ARE DIFFERENT.

VI

THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND IN

HOLDING THE DEFENDANT, INSTEAD OF THE PLAINTIFF, LIABLE FOR
DAMAGES, AND ATTORNEY'S FEES.

On August 5, 1969, the Court of Appeals affirmed the decision of the trial court, with the modification
that plaintiff-appellee's award of moral damages was reduced to P3,000.00. 7

The petitioner assigns the following errors supposedly committed by the Court of Appeals:

It is now respectfully submitted that the Court of Appeals committed the following
errors involving questions of law, to wit:

First error. — When it did not conclude that the letters patent of the respondent
although entitled on the cover page as a patent for improvements, was in truth and in
fact, on the basis of the body of the same, a patent for the old and non-patentable
process of making mosaic pre-cast tiles;

Second error. — When it did not conclude from the admitted facts of the case,
particularly the contents of the letters patent, Exh. L and the pieces of physical
evidence introduced consisting of samples of the tiles and catalouges, that the
alleged improvements introduced by the respondent in the manufacture of mosaic
pre-cast tiles are not patentable, the same being not new, useful and inventive.

Third error. — As a corollary, when it sentenced the herein petitioner to pay the
damages enumerated in the decision of the lower court (Record on Appeal, pp. 74-
75), as confirmed by it (the Court of Appeals), but with the modification that the
amount of P50,000.00 moral damages was reduced to P3,000.00. 8

The facts, as found by the Court of Appeals, are:

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 be deep enough to produce tiles for sculptured and
 decorative purposes, strong optimum thickness of appellee's new tiles of only 1/8 of
an inch at the deepest easement (Exhs. "D" and "D-1") is a most critical feature,
suggestive of discovery and inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for its intended purpose.

While it is true that the matter of easement, lip width, depth, protrusions and
depressions are known to some sculptors, still, to be able to produce a new and
useful wall tile, by using them all together, amounts to an invention. More so, if the
totality of all these features are viewed in combination with the Ideal composition of
cement, sodium silicate and screened fine sand.

By using his improved process, plaintiff has succeeded in producing a new product -
a concrete sculptured tile which could be utilized for walling and decorative purposes.
No proof was adduced to show that any tile of the same kind had been produced by
others before appellee. Moreover, it appears that appellee has been deriving
considerable profit from his manufacture and sale of such tiles. This commercial
success is evidence of patentability (Walker on Patents, Dellers Edition, Vol. I, p.
237). 12

The validily of the patent issued by the Philippines Patent Office in favor of the private respondent
and the question over the inventiveness, novelty and usefulness of the improved process therein
specified and described are matters which are better determined by the Philippines Patent Office.
The technical staff of the Philippines Patent Office, composed of experts in their field, have, by the
issuance of the patent in question, accepted the thinness of the private respondent's new tiles as a
discovery. There is a presumption that the Philippines Patent Office has correctly determined the
patentability of the improvement by the private respondent of the process in question.

Anent this matter, 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. In fact, as we have already pointed
out, the clear preponderance of evidence bolsters said presumption of validity of
appellee's patent. There is no indication in the records of this case and this Court is
unaware of any fact, 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. In fact, during the trial, appellant was challenged by
appellee to present a tile of the same kind as those produced by the latter, from any
earlier source but, despite the fact that appellant had every chance to do so, he could
not present any. There is, therefore, no concrete proof that the improved process of
tile-making described in appellee's patent was used by, or known to, others previous
to his discovery thereof. 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. De Leon never
claimed to have invented the process of tile-making. The Claims and Specifications of Patent No.
658 show that although some of the steps or parts of the old process of tile making were described
therein, there were novel and inventive features mentioned in the process. Some of the novel
features of the private respondent's improvements are the following: critical depth, with
corresponding easement and lip width to such degree as leaves the tile as thin as 1/8 of an inch at
its thinnest portion, Ideal composition of cement and fine river sand, among other ingredients that
makes possible the production of tough and durable wall tiles, though thin and light; the engraving of
deep designs in such a way as to make the tiles decorative, artistic and suitable for wall
ornamentation, and the fact that the tiles can be mass produced in commercial quantities and can be
conveniently stock-piled, handled and packed without any intolerable incidence of breakages. 14

The petitioner also contends that the improvement of respondent is not patentable because it is not
new, useful and inventive. This contention is without merit.

The records disclose that de Leon's process is an improvement of the old process of tile making.
The tiles produced from de Leon's process are suitable for construction and ornamentation, which
previously had not been achieved by tiles made out of the old process of tile making. De Leon's
invention has therefore brought about a new and useful kind of tile. The old type of tiles were usually
intended for floors although there is nothing to prevent one from using them for walling purposes.
These tiles are neither artistic nor ornamental. They are heavy and massive.

The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill.
He has introduced a new kind of tile for a new purpose. He has improved the old method of making
tiles and pre-cast articles which were not satisfactory because of an intolerable number of
breakages, especially if deep engravings are made on the tile. He has overcome the problem of
producing decorative tiles with deep engraving, but with sufficient durability. 15 Durability inspite of the
thinness and lightness of the tile, is assured, provided that a certain critical depth is maintained in relation
to the dimensions of the tile. 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; 17 that these tiles
have also depth, lip width, easement and field of designs; 18 and that the private respondent had copied
some designs of Pomona. 19

The Machuca tiles are different from that of the private respondent. The designs are embossed and not
engraved as claimed by the petitioner. There may be depressions but these depressions are too shallow
to be considered engraved. Besides, the Machuca tiles are heavy and massive.

There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona tiles are made of
ceramics. 20 The process involved in making cement tiles is different from ceramic tiles. Cement tiles are
made with the use of water, while in ceramics fire is used. As regards the allegation of the petitioner that
the private respondent copied some designs of Pomona, suffice it to say that what is in issue here is the
process involved in tile making and not the design.

In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process and/or
improvement being patentable.

Both the trial court and the Court of Appeals found as a fact that the petitioner Domiciano A. Aguas
did infringe de Leon's patent. 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. The only issue then to be
resolved is the amount of damages that should be paid by Aguas.

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 P3,000.00 moral damages. 21

The lower court awarded the following damages: 22

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 attomey's fees and

e) Costs of suit

because:

An examination of the books of defendant Aguas made before a Commissioner

reveals that during the period that Aguas was manufacturing and selling tiles similar
to plaintiff's, he made a gross income of P3,340.33, which can be safely be
considered the amount by which he enriched himself when he infringed plaintiff's
patent. Under Sec. 42 of the Patent Law any patentee whose rights have been
infringed is entitled to damages which, according to the circumstances of the case
may be in a sum above the amount found as actual damages sustained provided the
award does not exceed three times the amount of such actual damages. Considering
the wantonness of the infringement committed by the defendants who knew all the
time about the existence of plaintiff's patent, the Court feels there is reason to grant
plaintiff maximum damages in the sum of P10,020.99. And in order to discourage
patent infringements and to give more teeth to the provisions of the patent law thus
promoting a stronger public policy committed to afford greater incentives and
protection to inventors, the Court hereby awards plaintiff exemplary damages in the
sum of P5,000.00 to be paid jointly and severally by defendants. Considering the
status of plaintiff as a reputable businessman, and owner of the likewise reputed
House of Pre-Cast, he is entitled to an award of moral damages in the sum of
P50,000.00. 23

In reducing the amount of moral damages the Court of Appeals said:

As regards the question of moral damages it has been shown that as a result of the
unlawful acts of infringment committed by defendants, plaintiff was unstandably very
sad; he worried and became nervous and lost concentration on his work in
connection with his tile business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition,
plaintiff's character and reputation have been unnecessarily put in question because
defendants, by their acts of infringement have created a doubt or suspicion in the
public mind concerning the truth and honesty of plaintiff's advertisements and public
announcements of his valid patent. Necessarily, said acts of defendants have caused
plaintiff considerable mental suffering, considering especially, the fact that he staked
everything on his pre-cast tile business (p. 36, t.s.n., Id.) The wantonness and
evident bad faith characterizing defendants' prejudicial acts against plaintiff justify the
assessment of moral damages in plaintiff's favor, though we do not believe the
amount of P50,000.00 awarded by the lower court is warranted by the
circumstances. We feel that said amount should be reduced to P3,000.00 by way of
compensating appellee for his moral suffering. "Willful injury to property may be a
legal ground for awarding moral damages if the court should find that, under the
circumstances such damages are justly due" (Art. 2219 NCC).

There is no reason to reduce the amount of damages and attorneys fees awarded by the trial court
as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed from is
hereby affirmed, without pronouncement as to costs.

SO ORDERED.

Makasiar, Guerrero, Melencio-Herrera and Plana, JJ., concur.

Registration of Utility Models

Samson V. Tarroza

G.R. No. L-20354             July 28, 1969

GERARDO SAMSON, JR., petitioner,

vs.
FELIPE TARROZA and DIRECTOR OF PATENTS, respondents.

Hermenegildo V. Lopez for petitioner.

Isaac S. Puno, Jr. for respondent Felipe Tarroza.
Office of the Solicitor General for respondent Director of Patents.

FERNANDO, J.:

With the statutory recognition of patentability based on the "practical utility" concept 1 thus rendering
clear that a patent is not solely to be earned under the "flash of genius" theory, 2 this petition for the
cancellation of a utility model patent for a Side Tilting-Dumping Wheelbarrow granted to respondent
Felipe A. Tarroza was correctly denied by respondent Director of Patents. Petitioner Gerardo
Samson, Jr., himself the grantee of a utility model patent for a Dumping and Detachable
Wheelbarrow, lacked any legal justification for such a plea. So respondent Director ruled. Not
satisfied, petitioner elevated the matter to us for review. There is no reason why a different outcome
is to be expected. His appeal must fail.

Petitioner was, on May 22, 1958, awarded Utility Model Patent No. 27 for the above type of
wheelbarrow which, as noted in the decision, "consists of a wheeled carriage base and an upper
pivoted and detachable carrying tray. The carriage base is comprised of a wheel and two equal
lengths of continuous pipes bent to provide wheel forks at the front and at the rear to support the
back portion of the tray, with the ends of the pipes being adopted as the carrying handles for the
wheelbarrow. The two pipes thus bent are joined together by cross braces in the front and at the
rear. The tray is removably pivoted at its front end through hook catches at its bottom corners, to the
forward cross brace, and its rear end rests solidly over the rear portion of the legs. To dump the load
the user pulls a dumping handle at the back end to cause the tray to pivot upwardly about the front
brace to a position of about 45 degrees with the horizontal and with its front end panel being
supported by the wheel." 3

Respondent's Side Tilting-Dumping Wheelbarrow, on the other hand, consists "of a wheeled
carriage made of tubular frames essentially as in petitioner's. Welded transversely to the parallel
frames are two brackets provided with holes designed to complement similar holes on brackets
provided on the tray. The brackets on the tray are so placed that with the provision of a bolt through
the openings the tray may be tilted approximately 170 degrees to the left or to the right of the
wheelbarrow with its axis running longitudinally through the center of the bottom face of the tray." 4

There is an express recognition under the Patent Law, as already noted, that any new model of
implements or tools or of any industrial product even if not possessed of the quality of invention but
which is of "practical utility" is entitled to a "patent for a utility model." From the above description of
the side tilting-dumping wheelbarrow, the product of respondent's ingenuity and industry, it is quite
apparent that it has a place in the market and possesses what the statute refers to as "practical
utility." The requirement explicitly set forth in the statute has thus been met. Respondent Tarroza is
entitled to its benefits. The grant to him of a patent for a utility model is in accordance with law.
There was no reason, therefore, for its cancellation. So it was held by the Director of Patents. That
decision as already noted should stand.

Moreover, in appeals from a decision of the Director of Patents, only questions of law may be
reviewed, findings of facts being conclusive unless unsupported by substantial evidence. So it was
decided in Che v. Philippines Patent Office. 5 As was emphasized in Bagano v. Director of Patents: "It
is almost trite to state here that in cases of the nature as the one at bar, only questions of law are to
be raised in order that this Court could exercise its appellate jurisdiction and review the
decision." 6 The above well-settled doctrines suffice to demonstrate that this petition for review, as
noted at the outset, is without merit. It was not error then, to reiterate, for the respondent Director of
Patents to deny the cancellation of the utility patent granted respondent Tarroza. To borrow from the
language of the Che opinion: "Even on the sole issue alone, the petition for review must fail."

Another alleged error was imputed to respondent Director of Patents. It would find fault with his
failing to hold that respondent Tarroza "was not the true and actual" author of the mechanical
contrivance for which he was granted a utility model patent. This is what the appealed decision has
to say on this point: "Petitioner's theory with respect to the second ground for cancellation, to wit:
that respondent is not the true and actual inventor or designer of the utility model is premised on the
fact that because of the proximity of the two, the petitioner and the respondent being brothers-in-law,
and living in adjoining residential lots, the latter has had ample time and opportunity to observe and
copy the former's wheelbarrow. But the testimonial evidence thus presented is not clear, satisfactory,
and free from doubt, in the face of allegations to the contrary by the respondent." 7 The futility of such
an assignment of error is thus apparent. Again, it is factual in character. It is not for us, as noted
above, to review or revise the same, there being no showing of a lack of substantial evidence in
support thereof.

WHEREFORE, the decision of April 13, 1962 of respondent Director of Patents denying the petition
for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Tarroza is hereby
affirmed. With costs against petitioner.

Concepcion, C.J., Reyes, J.B.L., Dizon, Makalintal, Zaldivar, Sanchez, Castro, Capistrano,
Teehankee and Barredo, JJ., concur. 1äwphï1.ñët

Patent law; Quality of invention; "Practical utility" concept.—There is an express recognition under
the Patent Law that any new model of implements or tools or of any industrial product even if not
possessed of the quality of invention but which is of "practical utility" is entitled to a "patent for a
utility model." From the description of the side of tiltingdumping wheelbarrow, the product of
ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the
statute refers to as "practical utility."
Same; Director of Patents; Decisions; Findings of fact; Questions of law; When Supreme Court may
review decisions of Director of Patents.—In appeals from a decision of the Director of Patents, only
questions of law may be reviewed, findings of facts being conclusive unless unsupported by
substantial evidence. (Che v. Philippines Patent Office, L-18337, Jan. 30, 1965). As was
emphasized in Bagano v. Director of Patents (L-20170, Aug. 10, 1965). Samson, Jr. vs. Tarroza, 28
SCRA 792, No. L-20354 July 28, 1969

G.R. No. 161295               June 29, 2005

JESSIE G. CHING, petitioner,
vs.
WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y.
SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE PRODUCT CORPORATION), respondents.

Intellectual Property; Copyright Law; The focus of copyright is the usefulness of the artistic design
and not its marketability.—It bears stressing that the focus of copyright is the usefulness of the
artistic design, and not its marketability. The central inquiry is whether the article is a work of art.
Works for applied art include all original pictorials, graphics, and sculptural works that are intended
to be or have been embodied in useful article regardless of factors such as mass production,
commercial exploitation, and the potential availability of design patent protection.

Same; Same; While works of applied art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are not.—As gleaned from the
description of the models and their objectives, these articles are useful articles which are defined as
one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or
to convey information. Indeed, while works of applied art, original intellectual, literary and artistic
works are copyrightable, useful articles and works of industrial design are not. A useful article may
be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable of existing independently
of the utilitarian aspects of the article.

Same; Same; That the works of the petitioner may be the proper subject of a patent does not entitle
him to the issuance of a search warrant for violation of copyright laws.—That the works of the
petitioner may be the proper subject of a patent does not entitle him to the issuance of a search
warrant for violation of copyright laws. In Kho v. Court of Appeals and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated, the Court ruled that “these copyright and patent rights are
completely distinct and separate from one another, and the protection afforded by one cannot be
used interchangeably to cover items or works that exclusively pertain to the others.” Ching vs.
Salinas, Sr., 462 SCRA 241, G.R. No. 161295 June 29, 2005

DECISION
CALLEJO, SR., J.:

This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals
(CA) in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders3 of the
Regional Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos.
01-2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of
plastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of
Copyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing
for Automobile."4

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.5

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against
William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product
Corporation. It was alleged that the respondents therein reproduced and distributed the said models
penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought
the seizure of the following:

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of
plastic polypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of
polyvinyl chloride plastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride
plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the
manufacture/fabrication of items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts.6

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the
seizure of the aforecited articles.7 In the inventory submitted by the NBI agent, it appears that the
following articles/items were seized based on the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene

- C190 27 }

- C240 rear 40 }
 - C240 front 41 } BAG 1

b) Polyvinyl Chloride Plastic

- C190 13 }

c) Vehicle bearing cushion

- center bearing cushion 11 }

Budder for C190 mold 8 }

Diesel Mold

a) Mold for spring eye bushing rear 1 set

b) Mold for spring eye bushing front 1 set

c) Mold for spring eye bushing for C190 1 set

d) Mold for C240 rear 1 piece of the set

e) Mold for spring eye bushing for L300 2 sets

f) Mold for leaf spring eye bushing C190 with metal 1 set

g) Mold for vehicle bearing cushion 1 set8

The respondents filed a motion to quash the search warrants on the following grounds:

2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground
that:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaning – there (sic)
are original parts that they are designed to replace. Hence, they are not original.9

The respondents averred that the works covered by the certificates issued by the National Library
are not artistic in nature; they are considered automotive spare parts and pertain to technology. They
aver that the models are not original, and as such are the proper subject of a patent, not copyright.10

In opposing the motion, the petitioner averred that the court which issued the search warrants was
not the proper forum in which to articulate the issue of the validity of the copyrights issued to him.
Citing the ruling of the Court in Malaloan v. Court of Appeals,11 the petitioner stated that a search
warrant is merely a judicial process designed by the Rules of Court in anticipation of a criminal case.
Until his copyright was nullified in a proper proceeding, he enjoys rights of a registered owner/holder
thereof.
On January 3, 2002, the trial court issued an Order12 granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance. The court ruled that the work
covered by the certificates issued to the petitioner pertained to solutions to technical problems, not
literary and artistic as provided in Article 172 of the Intellectual Property Code.

His motion for reconsideration of the order having been denied by the trial court’s Order of February
14, 2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no
jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by the
National Library. He insisted that his works are covered by Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner averred that the copyright certificates are prima
facie evidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife
Express Corporation v. Carol Wright Sales, Inc.13 The petitioner asserted that the respondents failed
to adduce evidence to support their motion to quash the search warrants. The petitioner noted that
respondent William Salinas, Jr. was not being honest, as he was able to secure a similar copyright
registration of a similar product from the National Library on January 14, 2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the
RTC did not commit any grave abuse of its discretion in issuing the assailed order, to wit:

It is settled that preliminarily, there must be a finding that a specific offense must have been
committed to justify the issuance of a search warrant. In a number of cases decided by the Supreme
Court, the same is explicitly provided, thus:

"The probable cause must be in connection with one specific offense, and the judge must, before
issuing the warrant, personally examine in the form of searching questions and answers, in writing
and under oath, the complainant and any witness he may produce, on facts personally known to
them and attach to the record their sworn statements together with any affidavit submitted.

"In the determination of probable cause, the court must necessarily resolve whether or not an
offense exists to justify the issuance or quashal of the search warrant."

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but
subsequently quashed, for the offense of Violation of Class Designation of Copyrightable Works
under Section 177.1 in relation to Section 177.3 of Republic Act 8293, when the objects subject of
the same, are patently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works
(Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing
Cushion fall on neither classification. Accordingly, if, in the first place, the item subject of the petition
is not entitled to be protected by the law on copyright, how can there be any violation?14

The petitioner’s motion for reconsideration of the said decision suffered the same fate. The petitioner
forthwith filed the present petition for review on certiorari, contending that the revocation of his
copyright certificates should be raised in a direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of
his copyright in a proceeding to quash a search warrant for allegedly infringing items, the RTC
committed a grave abuse of its discretion when it declared that his works are not copyrightable in the
first place. He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, which took effect on January 1, 1998, provides in no uncertain terms that copyright
protection automatically attaches to a work by the sole fact of its creation, irrespective of its mode or
form of expression, as well as of its content, quality or purpose.15 The law gives a non-inclusive
definition of "work" as referring to original intellectual creations in the literary and artistic domain
protected from the moment of their creation; and includes original ornamental designs or models for
articles of manufacture, whether or not registrable as an industrial design and other works of applied
art under Section 172.1(h) of R.A. No. 8293. lawphil.net

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to
which the petitioner’s utility designs were classified. Moreover, according to the petitioner, what the
Copyright Law protects is the author’s intellectual creation, regardless of whether it is one with
utilitarian functions or incorporated in a useful article produced on an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry of
an article eligible for patent bars or invalidates its registration under the Law on Copyright. The test
of protection for the aesthetic is not beauty and utility, but art for the copyright and invention of
original and ornamental design for design patents.16 In like manner, the fact that his utility designs or
models for articles of manufacture have been expressed in the field of automotive parts, or based on
something already in the public domain does not automatically remove them from the protection of
the Law on Copyright.17

The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same
presumption to an affidavit executed by an author who claims copyright ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search warrant
means merely a reasonable suspicion of the commission of the offense. It is not equivalent to
absolute certainty or a finding of actual and positive cause.18 He assists that the determination of
probable cause does not concern the issue of whether or not the alleged work is copyrightable. He
maintains that to justify a finding of probable cause in the issuance of a search warrant, it is enough
that there exists a reasonable suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright is
valid; hence, the burden of overturning this presumption is on the alleged infringers, the respondents
herein. But this burden cannot be carried in a hearing on a proceeding to quash the search warrants,
as the issue therein is whether there was probable cause for the issuance of the search warrant. The
petitioner concludes that the issue of probable cause should be resolved without invalidating his
copyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially a
technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e.,
from rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong
enough to endure pressure brought about by the vibration of the counter bearing and thus brings
bushings. Such work, the respondents assert, is the subject of copyright under Section 172.1 of R.A.
No. 8293. The respondents posit that a technical solution in any field of human activity which is
novel may be the subject of a patent, and not of a copyright. They insist that the certificates issued
by the National Library are only certifications that, at a point in time, a certain work was deposited in
the said office. Furthermore, the registration of copyrights does not provide for automatic protection.
Citing Section 218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if a
party categorically questions its existence and legality. Moreover, under Section 2, Rule 7 of the
Implementing Rules of R.A. No. 8293, the registration and deposit of work is not conclusive as to
copyright outlay or the time of copyright or the right of the copyright owner. The respondents
maintain that a copyright exists only when the work is covered by the protection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models
are copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears
stressing that upon the filing of the application for search warrant, the RTC was duty-bound to
determine whether probable cause existed, in accordance with Section 4, Rule 126 of the Rules of
Criminal Procedure:

SEC. 4. Requisite for issuing search warrant. – A search warrant shall not issue but upon probable
cause in connection with one specific offense to be determined personally by the judge after
examination under oath or affirmation of the complainant and the witnesses he may produce, and,
particularly, describing the place to be searched and the things to be seized.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in the
determination of probable cause, the court must necessarily resolve whether or not an offense exists
to justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed,
probable cause is deemed to exist only where facts and circumstances exist which could lead a
reasonably cautious and prudent man to believe that an offense has been committed or is being
committed. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant
may be issued for the search and seizure of personal property (a) subject of the offense; (b) stolen
or embezzled and other proceeds or fruits of the offense; or (c) used or intended to be used as the
means of committing an offense.

The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine
probable cause. The court cannot abdicate its constitutional obligation by refusing to determine
whether an offense has been committed.20 The absence of probable cause will cause the outright
nullification of the search warrant.21

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie
Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was
being copied and distributed by the respondents. Thus, the ownership of a valid copyright is
essential.22

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality

is meant that the material was not copied, and evidences at least minimal creativity; that it was
independently created by the author and that it possesses at least same minimal degree of
creativity.23 Copying is shown by proof of access to copyrighted material and substantial similarity
between the two works.24 The applicant must thus demonstrate the existence and the validity of his
copyright because in the absence of copyright protection, even original creation may be freely
copied.25

By requesting the NBI to investigate and, if feasible, file an application for a search warrant for
infringement under R.A. No. 8293 against the respondents, the petitioner thereby authorized the
RTC (in resolving the application), to delve into and determine the validity of the copyright which he
claimed he had over the utility models. The petitioner cannot seek relief from the RTC based on his
claim that he was the copyright owner over the utility models and, at the same time, repudiate the
court’s jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of
estoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work
or, in its absence, other evidence.26 A copyright certificate provides prima facie evidence of originality
which is one element of copyright validity. It constitutes prima facie evidence of both validity and
ownership27 and the validity of the facts stated in the certificate.28 The presumption of validity to a
certificate of copyright registration merely orders the burden of proof. The applicant should not
ordinarily be forced, in the first instance, to prove all the multiple facts that underline the validity of
the copyright unless the respondent, effectively challenging them, shifts the burden of doing so to
the applicant.29 Indeed, Section 218.2 of R.A. No. 8293 provides:

218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject matter to which the
action relates if the defendant does not put in issue the question whether copyright subsists
in the work or other subject matter; and

(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to
be the owner of the copyright if he claims to be the owner of the copyright and the defendant
does not put in issue the question of his ownership.

A certificate of registration creates no rebuttable presumption of copyright validity where other

evidence in the record casts doubt on the question. In such a case, validity will not be presumed.30

To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A.
No. 8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos.
2001-197 and 2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by
the National Library covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle
Bearing Cushion both classified under Section 172.1(h) of R.A. No. 8293, to wit:

SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works, hereinafter referred to as
"works," are original intellectual creations in the literary and artistic domain protected from the
moment of their creation and shall include in particular:

...

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as
an industrial design, and other works of applied art.

Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic
creation with utilitarian functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed by
the petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial bore that is centrally located and provided
with a perpendicular flange on one of its ends and a cylindrical metal jacket surrounding the
peripheral walls of said body, with the bushing made of plastic that is either polyvinyl chloride or
polypropylene.31 Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising
a generally semi-circular body having a central hole to secure a conventional bearing and a plurality
of ridges provided therefore, with said cushion bearing being made of the same plastic
materials.32 Plainly, these are not literary or artistic works. They are not intellectual creations in the
literary and artistic domain, or works of applied art. They are certainly not ornamental designs or one
having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art.33 Works for applied art include
all original pictorials, graphics, and sculptural works that are intended to be or have been embodied
in useful article regardless of factors such as mass production, commercial exploitation, and the
potential availability of design patent protection.34

As gleaned from the description of the models and their objectives, these articles are useful articles
which are defined as one having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design
are not.35 A useful article may be copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of the utilitarian aspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the
author’s intellectual creation, regardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected by copyright law.
However, the law refers to a "work of applied art which is an artistic creation." It bears stressing that
there is no copyright protection for works of applied art or industrial design which have aesthetic or
artistic features that cannot be identified separately from the utilitarian aspects of the
article.36 Functional components of useful articles, no matter how artistically designed, have
generally been denied copyright protection unless they are separable from the useful article.37

In this case, the petitioner’s models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility
model as follows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent
pressure would eventually wore (sic) out that would cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for
automobile that is made up of plastic.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of
polyvinyl chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both
causes cushion to the leaf spring, yet strong enough to endure pressure brought about by the up
and down movement of said leaf spring.

Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
much longer life span than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
very simple construction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is
supplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel
material of the leaf spring.

These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility
model;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and

Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designated
same parts throughout, there is shown a utility model for a leaf-spring eye bushing for automobile
generally designated as reference numeral 10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.

As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange
13 on one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said
body 11. When said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring
eye (not shown), which is also made of steel or cast steel. In effect, the bushing 10 will not be
directly in contact with steel, but rather the metal jacket, making the life of the bushing 10 longer than
those without the metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant
soft texture plastic or a hard polypropylene plastic, both are capable to endure the pressure applied
thereto, and, in effect, would lengthen the life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is
insertably provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17
accommodates or engages with the leaf-spring bolt (not shown) connecting the leaf spring and the
automobile’s chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and
cylindrical as to its construction. Said another embodiment is also made of polypropylene or
polyvinyl chloride plastic material. The steel tube 17 and metal jacket 14 may also be applied to this
embodiment as an option thereof.38

VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent
pressure would eventually be worn out that would cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made
up of plastic.

Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride,
an oil resistant soft texture plastic material which causes cushion to the propeller’s center bearing,
yet strong enough to endure pressure brought about by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life
span than rubber bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple
construction and can be made using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Figure 2 is a sectional view thereof.

Referring now to the several views of the drawing, wherein like reference numeral designate same
parts throughout, there is shown a utility model for a vehicle-bearing cushion generally designated
as reference numeral 10.

Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to
house a conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a
plurality of ridges 13 which serves reinforcing means thereof.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant
plastic material which is strong, durable and capable of enduring severe pressure from the center
bearing brought about by the rotating movement of the propeller shaft of the vehicle.39

A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any
of the aforesaid.40 Essentially, a utility model refers to an invention in the mechanical field. This is the
reason why its object is sometimes described as a device or useful object.41 A utility model varies
from an invention, for which a patent for invention is, likewise, available, on at least three aspects:
first, the requisite of "inventive step"42 in a patent for invention is not required; second, the maximum
term of protection is only seven years43 compared to a patent which is twenty years,44 both reckoned
from the date of the application; and third, the provisions on utility model dispense with its
substantive examination45 and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not
ornamental. They lack the decorative quality or value that must characterize authentic works of
applied art. They are not even artistic creations with incidental utilitarian functions or works
incorporated in a useful article. In actuality, the personal properties described in the search warrants
are mechanical works, the principal function of which is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in
the catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A.
No. 8293. Applying the principle of ejusdem generis which states that "where a statute describes
things of a particular class or kind accompanied by words of a generic character, the generic word
will usually be limited to things of a similar nature with those particularly enumerated, unless there be
something in the context of the state which would repel such inference,"46 the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature
as the works enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion. Indeed, in Joaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v.
Shoemart, Incorporated,48 the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the
rights are only such as the statute confers, and may be obtained and enjoyed only with respect to
the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it
can cover only the works falling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated,50 the Court ruled that "these copyright and
patent rights are completely distinct and separate from one another, and the protection afforded by
one cannot be used interchangeably to cover items or works that exclusively pertain to the others."
The Court expounded further, thus:

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of
a problem in any field of human activity which is new, involves an inventive step and is industrially
applicable.

The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v.
Stein51 to buttress his petition. In that case, the artifacts involved in that case were statuettes of
dancing male and female figures made of semi-vitreous china. The controversy therein centered on
the fact that although copyrighted as "works of art," the statuettes were intended for use and used as
bases for table lamps, with electric wiring, sockets and lampshades attached. The issue raised was
whether the statuettes were copyright protected in the United States, considering that the copyright
applicant intended primarily to use them as lamp bases to be made and sold in quantity, and carried
such intentions into effect. At that time, the Copyright Office interpreted the 1909 Copyright Act to
cover works of artistic craftsmanship insofar as their form, but not the utilitarian aspects, were
concerned. After reviewing the history and intent of the US Congress on its copyright legislation and
the interpretation of the copyright office, the US Supreme Court declared that the statuettes were
held copyrightable works of art or models or designs for works of art. The High Court ruled that:

"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so
far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic
jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as
paintings, drawings and sculpture. …"

So we have a contemporaneous and long-continued construction of the statutes by the agency

charged to administer them that would allow the registration of such a statuette as is in question
here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and
utility but art for the copyright and the invention of original and ornamental design for design
patents." Significantly, the copyright office promulgated a rule to implement Mazer to wit:

… [I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and
attractively shaped will not qualify it as a work of art."

In this case, the bushing and cushion are not works of art. They are, as the petitioner himself
admitted, utility models which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The
assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED.
Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET
ASIDE. Costs against the petitioner.

SO ORDERED.

Puno, (Chairman), Austria-Martinez, Tinga, and Chico-Nazario, JJ., concur.