Manzano v. CA Facts

Manzano v.
CA
Facts:
Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the
cancellation of Letters Patent No. UM-4609 for a gas burner registered in the name of respondent Melecia
Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing
Corporation (UNITED FOUNDRY, for brevity). Petitioner alleged that (a) the utility model covered by the
letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the specification of
the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c)
respondent Melecia Madolaria was not the original, true and actual inventor nor did she derive her rights
from the original, true and actual inventor of the utility model covered by the letters patent; and, (d) the
letters patent was secured by means of fraud or misrepresentation. In support of her petition for
cancellation petitioner further alleged that (a) the utility model covered by the letters patent of respondent
had been known or used by others in the Philippines for more than one (1) year before she filed her
application for letters patent on 9 December 1979; (b) the products which were produced in accordance
with the utility model covered by the letters patent had been in public use or on sale in the Philippines for
more than one (1) year before the application for patent therefor was filed.
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the
UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970;
that Ong helped in the casting of an LPG burner which was the same utility model of a burner for which
Letters Patent No. UM-4609 was issued, and that after her husbands separation from the shop she
organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners one of
which had the configuration, form and component parts similar to those being manufactured by UNITED
FOUNDRY. Petitioner presented in evidence an alleged model of an LPG burner marked Exh. K and
covered by the Letters Patent of respondent, and testified that it was given to her in January 1982 by one
of her customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also presented in
evidence her own model of an LPG burner called Ransome burner marked Exh. L, which was allegedly
manufactured in 1974 or 1975 and sold by her in the course of her business operation in the name of
BESCO METAL. Petitioner claimed that this Ransome burner (Exh. L) had the same configuration and
mechanism as that of the model which was patented in favor of private respondent Melecia Madolaria.
Also presented by petitioner was a burner cup of an imported Ransome burner marked Exh M which was
allegedly existing even before the patent application of private respondent.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who testified,
among others, that he was the General Supervisor of the UNITED FOUNDRY in the foundry, machine
and buffing section; that in his early years with the company, UNITED FOUNDRY was engaged in the
manufacture of different kinds of gas stoves as well as burners based on sketches and specifications
furnished by customers; that the company manufactured early models of single-piece types of burners
where the mouth and throat were not detachable; that in the latter part of 1978 respondent Melecia
Madolaria confided in him that complaints were being brought to her attention concerning the early
models being manufactured; that he was then instructed by private respondent to cast several
experimental models based on revised sketches and specifications; that private respondent again made
some innovations; that after a few months, private respondent discovered the solution to all the defects of
the earlier models and, based on her latest sketches and specifications, he was able to cast several
models incorporating the additions to the innovations introduced in the models. Various tests were
conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they
obtained perfect results. Rolando Madolaria testified that private respondent decided to file her application
for utility model patent in December 1979.
On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56 denying the petition
for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the
patented utility model of private respondent was anticipated.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which on 15 October
1993 affirmed the decision of the Director of Patents.
Petitioner submits that the differences cited by the Court of Appeals between the utility model of private
respondent and the models of Manila Gas Corporation and Esso Standard Eastern, Inc., are more
imaginary than real. She alleges that based on Exhs. E, E-1, F and F-1 or the brochures of Manila Gas
Corporation and Esso Standard Eastern, Inc., presented by petitioner, the cup-shaped burner mouth and
threaded hole on the side are shown to be similar to the utility model of private respondent. The exhibits
also show a detachable burner mouth having a plurality of upwardly existing undulations adopted to act
as gas passage when the cover is attached to the top of said cup-shaped mouth all of which are the same
as those in the patented model. Petitioner also denies as substantial difference the short cylindrical tube
of the burner mouth appearing in the brochures of the burners being sold by Manila Gas Corporation and
the long cylindered tube of private respondents model of the gas burner.
Petitioner further contends that the utility model of private respondent is absolutely similar to the LPG
burner being sold by petitioner in 1975 and 1976, and also to the Ransome burner depicted in the old
brochures of Manila Gas Corporation and Esso Standard Eastern, Inc., fabricated by Ransome Torch and
Burner Company of Oakland, California, USA, especially when considered through actual physical
examination, assembly and disassembly of the models of petitioner and private respondent.
Issue/s: Is the petition impressed with merit? [NO]
Held:
We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is the law on patents,
expressly provides -
Sec. 7. Inventions patentable. Any invention of a new and useful machine, manufactured product or
substance, process or an improvement of any of the foregoing, shall be patentable.
Further, Sec. 55 of the same law provides -
Sec. 55. Design patents and patents for utility models. - (a) Any new, original and ornamental design for
an article of manufacture and (b) any new model of implements or tools or of any industrial product or of
part of the same, which does not possess the quality of invention, but which is of practical utility by reason
of its form, configuration, construction or composition, may be protected by the author thereof, the former
by a patent for a design and the latter by a patent for a utility model, in the same manner and subject to
the same provisions and requirements as relate to patents for inventions insofar as they are applicable
except as otherwise herein provided.
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.2 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 the protection the invention must be new
to the world.
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an LPG Burner on 22 July 1981, the
Philippine Patent Office found her invention novel and patentable. The issuance of such patent creates a
presumption which yields only to clear and cogent evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one
which is met only by clear and satisfactory proof which overcomes every reasonable doubt. 4 Hence, a
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.
As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of
legality of the issuance of UM-4609 to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. Thus the Director of Patents explained his reasons for the denial
of the petition to cancel private respondents patent -
Scrutiny of Exhs. D and E readily reveals that the utility model (LPG Burner) is not anticipated. Not one of
the various pictorial representations of burners clearly and convincingly show that the device presented
therein is identical or substantially identical in construction with the aforesaid utility model. 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.
(Kalman v. Kimberly Clark, 218 USPQ 781, 789)
Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each and every
element of the patented gas burner device so that the prior art and the said patented device become
identical, 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 primary purpose of the patent system is not the reward of the individual but the advancement of the
arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of information concerning discoveries and
inventions. This is a matter which is properly within the competence of the Patent Office the official action
of which has the presumption of correctness and may not be interfered with in the absence of new
evidence carrying thorough conviction that the Office has erred. Since the Patent Office is an expert body
preeminently qualified to determine questions of patentability, its findings must be accepted if they are
consistent with the evidence, with doubts as to patentability resolved in favor of the Patent Office.
The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the
question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are
matters which are better determined by the Patent Office. The technical staff of the Philippine Patent
Office composed of experts in their field has by the issuance of the patent in question accepted private
respondents model of gas burner as a discovery. There is a presumption that the Office has correctly
determined the patentability of the model8 and such action must not be interfered with in the absence of
competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the Court
of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has failed to
show compelling grounds for a reversal of the findings and conclusions of the Patent Office and the Court
of Appeals.
DP: WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals affirming that of the
Philippine Patent Office is AFFIRMED. Costs against petitioner.
E.I Dupont De Nemours and Co. v. Francisco
Facts:
On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the Bureau of
Patents, Trademarks, and Technology Transfer.6 The application was for Angiotensin II Receptor
Blocking Imidazole (losartan), an invention related to the treatment of hypertension and congestive heart
failure.7 The product was produced and marketed by Merck, Sharpe, and Dohme Corporation (Merck),
E.I. Dupont Nemours' licensee, under the brand names Cozaar and Hyzaar. 8
On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma,
and Carbonell,10 sent the Intellectual Property Office11 a letter requesting that an office action be issued
on Philippine Patent Application No. 35526.
1. Contrary to what was alleged, the Chemical Examining Division's (CED) record will show that as far as
the said division is concern[ ed], it did not fail to issue the proper and timely action on the instant
application. CED record shows that the subject application was assigned to the examiner on June 7,
1988. A month after that was July 19, 1988, the first Office Action was mailed but was declared
abandoned as of September 20, 1988 for applicant's (Atty. Mapili, a local resident agent who handled a
majority of E.I. Dupont Nemours' patent applications in the Philippines from 1972 to 1996) failure to
respond within the period as prescribed under Rule 112. Since then, no other official transactions were
recorded. Tlris record is complemented by the Examiner-in-charge's own record ....
2. It was noted that it took thirteen (13) long years for the applicant to request for such Office Action. This
is not expected of the applicant since it is an acceptable fact that almost all inventors/ applicants wish for
the early disposition for their applications.14
On May 29, 2002, E.I. Dupont Nemours replied to the office action by submitting a Power of Attorney
executed by Miriam Meconnahey, authorizing Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and
Carbonell to prosecute and handle its patent applications. 15 On the same day, it also filed a Petition for
Revival with Cost of Philippine Patent Application No. 35526.
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Although it appears that the former counsel, Atty. Nicanor Mapili was remiss in his obligations as counsel
for the applicants, the Office cannot revive the abandoned application because of the limitations provided
in Rule 115. Clearly, the Petition for Revival was filed beyond the reglementary period. Since the law and
rules do not give the Director of Patents the discretion to stretch the period for revival, the Office is
constrained to apply Rule 115 to the instant case.
After an exhaustive examination of the records of this case, this Court believes that there is sufficient
justification to relax the application of the above-cited doctrine in this case, and to afford petitioner some
relief from the gross negligence committed by its former lawyer, Atty. Nicanor D. Mapili[.] 28
The Office of the Solicitor General, on behalf of the Intellectual Property Office, moved for reconsideration
of this Decision on September 22, 2004.
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In the interim, Therapharma, Inc. moved for leave to intervene and admit the Attached Motion for
Reconsideration dated October 11, 200430 and argued that the Court of Appeals' August 31, 2004
Decision directly affects its "vested" rights to sell its own product. 31
Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs its own
application for a losartan product "Lifezar," a medication for hypertension, which the Bureau granted.32 It
argued that it made a search of existing patent applications for similar products before its application, and
that no existing patent registration was found since E.I. Dupont Nemours' application for its losartan
product was considered abandoned by the Bureau of Patents, Trademarks, and Technology Transfer. 33 It
alleged that sometime in 2003 to 2004, there was an exchange of correspondence between
Therapharma, Inc. and Merck. In this exchange, Merck informed Therapharma, Inc. that it was pursuing a
patent on the losartan products in the Philippines and that it would pursue any legal action necessary to
protect its product.34
On January 31, 2006, the Court of Appeals issued the Resolution 35 granting the Motion· for Leave to
Intervene. According to the Court of Appeals, Therapharma, Inc. had an interest in the revival of E.I.
Dupont Nemours' patent application since it was the local competitor for the losartan product. 36 It stated
that even if the Petition for Review was premised on the revival of the patent application, Therapharma,
Inc.' s intervention was not premature since E.I. Dupont Nemours, through Merck, already threatened
Therapharma, Inc. with legal action if it continued to market its losartan product.
The Court of Appeals ruled that the public interest would be prejudiced by the revival of E.I. Dupont
Nemours' application.40 It found that losartan was used to treat hypertension, "a chronic ailment afflicting
an estimated 12.6 million Filipinos,"41 and noted that the presence of competition lowered the price for
losartan products. 42 It also found that the revival of the application prejudiced Therapharma, Inc.' s
interest, in that it had already invested more than P20,000,000.00 to develop its own losartan product and
that it acted in good faith when it marketed its product.
Hence, this petition.
Issue/s: Is the petition impressed with merit? [NO]
Held:
A patent is granted to provide rights and protection to the inventor after an invention is disclosed to the
public. It also seeks to restrain and prevent unauthorized persons from unjustly profiting from a protected
invention. However, ideas not covered by a patent are free for the public to use and exploit. Thus, there
are procedural rules on the application and grant of patents established to protect against any
infringement. To balance the public interests involved, failure to comply with strict procedural rules will
result in the failure to obtain a patent.
Petitioner argues that it was not negligent in the prosecution of its patent application 133 since it was Atty.
Mapili or his heirs who failed to inform it of crucial developments with regard to its patent application. 134 It
argues that as a client in a foreign country, it does not have immediate supervision over its local counsel
so it should not be bound by its counsel's negligence. 135 In any case, it complied with all the requirements
for the revival of an abandoned application under Rule 113 of the 1962 Revised Rules of Practice. 136
Respondents, on the other hand, argue that petitioner was inexcusably and grossly negligent in the
prosecution of its patent application since it allowed eight (8) years to pass before asking for a status
update on its application. 137 Respondent Intellectual Property Office argues that petitioner's inaction for
eight (8) years constitutes actual abandonment. 138 It also points out that from the time petitioner
submitted its new Special Power of Attorney on September 29, 1996, it took them another four (4) years
to request a status update on its application. 139
Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice, a patent application is deemed
abandoned if the applicant fails to prosecute the application within four months from the date of
the mailing of the notice of the last action by the Bureau of Patents, Trademarks, and Technology
Transfer, and not from applicant's actual notice. Section 11 l(a)
states:
Chapter VII
TIME FOR RESPONSE BY APPLICANT; ABANDONMENT OF APPLICATION
111. Abandonment for failure to respond within the time limit.-
(a) If an applicant fails to prosecute his application within four months after the date when the last official
notice of action by the Office was mailed to him, or within such time as may be fixed (rule 112), the
application will become abandoned.
According to the records of the Bureau of Patents, Trademarks, and Technology Transfer Chemical
Examining Division, petitioner filed Philippine Patent Application No. 35526 on July 10, 1987. It was
assigned to an examiner on June 7, 1988. An Office Action was mailed to petitioner's agent, Atty. Mapili,
on July 19, 1988. Because petitioner failed to respond within the allowable period, the application was
deemed abandoned on September 20, 1988.140 Under Section 113, petitioner had until January 20, 1989
to file for a revival of the patent application. Its Petition for Revival, however, was filed on May 30,
2002, 141 13 years after the date of abandonment.
Even assuming that the four (4)-month period could be extended, petitioner was inexcussably negligent in
the prosecution of its patent application.
Negligence is inexcusable if its commission could have been avoided through ordinary diligence and
prudence. 142 It is also settled that negligence of counsel binds the client as this "ensures against the
resulting uncertainty and tentativeness of proceedings if clients were allowed to merely disown. 143 their
counsels' conduct."
Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond to the Office
Action sent by the Bureau of Patents, Trademarks, and Technology Transfer on June 19, 1988. Because
of his negligence, petitioner's patent application was declared abandoned. He was again negligent when
he failed to revive the abandoned application within four (4) months from the date of abandonment.
Petitioner tries to disown Atty. Mapili 's conduct by arguing that it was not informed of the abandonment of
its patent application or of Atty. Mapili's death. By its own evidence, however, petitioner requested a
status update from Atty. Mapili only on July 18, 1995, eight (8) years after the filing of its application. 144 It
alleged that it only found out about Atty. Mapili 's death sometime in March 1996, as a result of its senior
patent attorney's visit to the Philippines. 145 Although it was in petitioner's discretion as a foreign client to
put its complete trust and confidence on its local resident agent, there was a correlative duty on its part to
be diligent in keeping itself updated on the progress of its patent applications. Its failure to be informed of
the abandonment of its patent application was caused by its own lack of prudence.
In Bernardo v. Court of Appeals, 146 "[n]o prudent party will leave the fate of his case entirely to his
lawyer .... It is the duty of a party-litigant to be in contact with his counsel from time to time in order to be
informed of the progress of his case." 147
Even if Atty. Mapili's death prevented petitioner from submitting a petition for revival on time, it was clearly
negligent when it subsequently failed to immediately apprise itself of the status of its patent application.
ON RIGHT OF PRIORITY
The right of priority given to a patent applicant is only relevant when there are two or more conflicting
patent applications on the same invention. Because a right of priority does not automatically grant letters
patent to an applicant, possession of a right of priority does not confer any property rights on the applicant
in the absence of an actual patent.
Petitioner argues that its patent application was filed on July 10, 1987, within 12 months from the prior
filing of a U.S. patent application on July 11, 1986.158 It argues that it is protected from becoming part of
the public domain because of convention priority under the Paris Convention for the Protection of
Industrial Property and Section 9 of Republic Act No. 165. 159
Respondent Therapharma, Inc., on the other hand, argues that a mere patent application does not vest
any right in the applicant before the issuance of the patent.160 It argues that the "priority date" argued by
petitioner is only relevant in determining who has a better right to the patent among the other applicants
who subsequently apply for the same invention.
Under Section 31 of the Intellectual Property Code, a right of priority is given to any patent applicant who
has previously applied for a patent in a country that grants the same privilege to Filipinos. Section 31
states:
SECTION 31. Right of Priority. - An application for patent filed by any person who has previously applied
for the same invention in another country which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That:
a. the local application expressly claims priority;
b. it is filed within twelve (12) months from the date the earliest foreign application was filed; and
c. a certified copy of the foreign application together with an English translation is filed within six (6)
months from the date of filing in the Philippines.
A patent applicant with the right of priority is given preference in the grant of a patent when there are two
or more applicants for the same invention. Section 29 of the Intellectual Property Code provides:
SECTION 29. First to File Rule. - If two (2) or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the person who filed an application for
such invention, or where two or more applications are filed for the same invention, to the applicant who
has the earliest filing date or, the earliest priority date.
Since both the United States162 and the Philippines163 are signatories to the Paris Convention for the
Protection of Industrial Property, an applicant who has filed a patent application in the United States may
have a right of priority over the same invention in a patent application in the Philippines.164 However, this
right of priority does not immediately entitle a patent applicant the grant of a patent. A right of priority is
not equivalent to a patent. Otherwise, a patent holder of any member-state of the Paris Convention need
not apply for patents in other countries where it wishes to exercise its patent.
It was, therefore, inaccurate for petitioner to argue that its prior patent application in the United States
removed the invention from the public domain in the Philippines. This argument is only relevant if
respondent Therapharma, Inc. had a conflicting patent application with the Intellectual Property Office. A
right of priority has no bearing in a case for revival of an abandoned patent application.
ON PURPOSE OF PATENT
The grant of a patent is to provide protection to any inventor from any patent infringement. 165 Once an
invention is disclosed to the public, only the patent holder has the exclusive right to manufacture, utilize,
and market the invention.166 In Creser Precision Systems v. Court of Appeals:167
Under American jurisprudence, an inventor has no common-law right to a monopoly of his invention. He
has the right to make, use and vend his own invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives the inventor
the right to exclude all others. As a patentee, he has the exclusive right of making, using or selling the
invention. 168
Under the Intellectual Property Code, a patent holder has the right to "to restrain, prohibit and
prevent" 169 any unauthorized person or entity from manufacturing, selling, or importing any product
derived from the patent. However, after a patent is granted and published in the Intellectual Property
Office Gazette, 170 any interested third party "may inspect the complete description, claims, and drawings
of the patent." 171
The grant of a patent provides protection to the patent holder from the indiscriminate use of the invention.
However, its mandatory publication also has the correlative effect of bringing new ideas into the public
consciousness. After the publication of the patent, any person may examine the invention and develop it
into something further than what the original patent holder may have envisioned. After the lapse of 20
years, 172 the invention becomes part of the public domain and is free for the public to use. In Pearl and
Dean v. Shoemart, Inc.: 173
To be able to effectively and legally preclude others from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to
bring new designs and technologies into the public domain through disclosure. Ideas, once disclosed to
the public without the protection of a valid patent, are subject to appropriation without significant restraint.
On one side of the coin is the public which will benefit from new ideas; on the other are the inventors who
must be protected. As held in Bauer & Cie vs. O'Donnell, "The act secured to the inventor the exclusive
right to make use, and vend the thing patented, and consequently to prevent others from exercising like
privileges without the consent of the patentee. It was passed for the purpose of encouraging useful
invention and promoting new and useful inventions by the protection and stimulation new and useful
inventions given to inventive genius, and was intended to secure to the public, after the lapse of the
exclusive privileges granted the benefit of such inventions and improvements."
The law attempts to strike an ideal balance between the interests:
"(The p)atent system thus embodies a carefully varafted bargain for encouraging the creation and
disclosure of new useful and non-obvious advances in technology and design, in return for the exclusive
right to practice the invention for a number of years.
In addition, a patent holder of inventions relating to food or medicine does not enjoy absolute monopoly
over the patent. Both Republic Act No. 165 and the Intellectual Property Code provide for compulsory
licensing. Compulsory licensing is defined in the Intellectual Property Code as the "grant a license to
exploit a patented invention, even without the agreement of the patent owner." 175
Under Republic Act No. 165, a compulsory license may be granted to any applicant three (3) years after
the grant of a patent if the invention relates to food or medicine necessary for public health or safety. 176 In
Smith Kline & French Laboratories, Ltd. vs. Court of Appeals: 177
Section 34 of R.A. No. 165, even if the Act was enacted prior to the Philippines' adhesion to the [Paris]
Convention, fits well within the aforequoted provisions of Article 5 of the Paris Convention. In the
explanatory note of Bill No. 1156 which eventually became R.A. No. 165, the legislative intent in the grant
of a compulsory license was not only to afford others an opportunity to provide the public with the quantity
of the patented product, but also to prevent the growth of monopolies. Certainly, the growth of monopolies
was among the abuses which Section A, Article 5 of the Convention foresaw, and which our Congress
likewise wished to prevent in enacting R.A. No. 165. 178
The patent holder’s proprietary right over the patent only lasts for three (3) years from the grant of the
patent, after which any person may be allowed to manufacture, use or sell the invention subject to the
payment of royalties
DP: WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and the Amended
Decision dated August 30, 2006 of the Court of Appeals are AFFIRMED.
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ON CONFIDENTIALITY
Appeal is not a right but a mere privilege granted by statute. 98 It may only be exercised in accordance with
the law that grants it.
Accordingly, the Court of Appeals is not bound by the rules of procedure in administrative agencies. The
procedural rules of an administrative agency only govern proceedings within the agency. Once the Court
of Appeals has given due course to an appeal from a ruling of an administrative agency, the proceedings
before it are governed by the Rules of Court.
However, petitioner argues that intervention should not have been allowed on appeal 99 since the revival of
a patent application is ex parte and is "strictly a contest between the examiner and the applicant" 100 under
Sections 78101 and 79102 of the 1962 Revised Rules of Practice. 103 It argues that the disallowance of any
intervention is to ensure the confidentiality of the proceedings under Sections 13 and 14 of the 1962
Revised Rules of Practice. 104
Respondents argue that the 1962 Revised Rules of Practice is only applicable before the Intellectual
Property Office. 105 In particular, respondent Therapharma, Inc. argues that the issue before the Court of
Appeals was beyond the realm of patent examination proceedings since it did not involve the patentability
of petitioner's invention. 106 It further argues that its intervention did not violate the confidentiality of the
patent application proceedings since petitioner was not required to divulge confidential information
regarding its patent application. 107
In the 1962 Revised Rules of Practice, final decisions of the Director of Patents are appealed to this Court
and governed by Republic Act No. 165. In particular:
PARTX
PETITION AND APPEALS
....
CHAPTER IV
APPEALS TO THE SUPREME COURT FROM FINAL ORDERS OR
DECISIONS OF THE DIRECTOR OF PATENTS IN EX PARTE AND
INTER PARTES PROCEEDINGS
265. Appeals to the Supreme Court in ex parte and inter partes proceedings.-Any person who is
dissatisfied with the final decision of the Director of Patents, (affirming that of a Principal Examiner)
denying him a patent for an invention, industrial design or utility model; any person who is dissatisfied with
any final decision of the Director of Patents (affirming that of the Executive Examiner) in any proceeding;
and any party who is dissatisfied with any final decision of the Director of Patents in an inter partes
proceeding, may appeal such final decision to the Supreme Court within thirty days from the date he
receives a copy of such decision. (Republic Act No. 165, section 16, as amended by section 3, Republic
Act No. 864.)
266. Procedure on appeal to the Supreme Court.-For the procedure on appeal to the Supreme Court,
from the final decisions of the Director of Patents, see sections 63 to 73, inclusive, of Republic Act No.
165 (patent law).
Particularly instructive is Section 73 of Republic Act No. 165, which provides:
Section 73. Rules of Court applicable. - In all other matters not herein provided, the applicable provisions
of the Rules of Court shall govern.
Republic Act No. 165 has since been amended by Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines (Intellectual Property Code), in 1997. This is the applicable
law with regard to the revival of petitioner's patent application. Section 7 (7.1 )(a) of the Intellectual
Property Code states:
SECTION 7. The Director General and Deputies Director General. -
7 .1. Functions. - The Director General shall exercise the following powers and functions:
....
b. Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the
Director of Patents, the Director of Trademarks, and the Director of the Documentation, Information and
Technology Transfer Bureau. The decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of the Director of Patents, and the Director of Trademarks shall be
appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the
decisions of the Director of Documentation, Information and Technology Transfer Bureau shall be
appealable to the Secretary of Trade and Industry[.] (Emphasis supplied)
Thus, it is the Rules of Court, not the 1962 Revised Rules of Practice, which governs the Court of
Appeals' proceedings in appeals from the decisions of the Director-General of the Intellectual Property
Office regarding the revival of patent applications.
Rule 19 of the Rules of Court provides that a court has the discretion to determine whether to give due
course to an intervention. Rule 19, Section 1 states:
RULE 19
INTERVENTION
SECTION 1. Who may intervene. -A person who has a legal interest in the matter in litigation, or in the
success of either of the parties, or an interest against both, or is so situated as to be adversely affected by
a distribution or other disposition of property in the custody of the court or of an officer thereof may, with
leave of court, be allowed to intervene in the action. The court shall consider whether or not the
intervention will unduly delay or prejudice the adjudication of the rights of the original parties, and whether
or not the intervenor's rights may be fully protected in a separate proceeding.
The only questions the court need to consider in a motion to intervene are whether the intervenor has
standing to intervene, whether the motion will / unduly delay the proceedings or prejudice rights already
established, and whether the intervenor's rights may be protected in a separate action. 108
If an administrative agency's procedural rules expressly prohibit an intervention by third parties, the
prohibition is limited only to the proceedings before the administrative agency. Once the matter is brought
before the Court of Appeals in a petition for review, any prior prohibition on intervention does not apply
since the only question to be determined is whether the intervenor has established a right to intervene
under the Rules of Court.
In this case, respondent Therapharma, Inc. filed its Motion for Leave to Intervene 109 before the Court of
Appeals, not before the Intellectual Property Office. In assessing whether to grant the intervention, the
Court of Appeals considered respondent Therapharma, Inc.' s legal interest in the case and its other
options for the protection of its interests. 110 This was within the discretion of the Court of Appeals under
the Rules of Court.
Respondent Therapharma, Inc. was able to show that it had legal interest to intervene in the appeal of
petitioner's revival of its patent application. While its intervention may have been premature as no patent
has been granted yet, petitioner's own actions gave rise to respondent Therapharma, Inc.' s right to
protect its losartan product.
Respondent Therapharma, Inc. filed an application for product registration before the Bureau of Food and
Drugs on June 4, 2003 and was granted a Certificate of Product Registration on January 27, 2004. 111 It
conducted patent searches from October 15, 1995 and found that no patent application for losartan had
been filed either before the Bureau of Patents, Trademarks, and Technology Transfer or before the
Intellectual Property Office.112
As early as December 11, 2003, petitioner through Merck was already sending communications
threatening legal action if respondent Therapharma, Inc. continued to develop and market losartan in the
Philippines. The letter stated:
Merck is strongly committed to the protection of its valuable intellectual property rights, including the
subject losartan patents. While fair competition by sale of pharmaceutical products which are domestically
produced legally is always welcomed by Merck and MSD Philippines, Merck will vigorously pursue all
available legal remedies against any unauthorized manufacturer, distributor or supplier of losartan in
countries where its patents are in force and where such activity is prohibited by law. Thus, Merck is
committed to preventing the distribution of losartan in the Philippines if it originates from, or travels
through, a country in which Merck holds patent rights. 113 (Emphasis supplied)
This letter was presented before the Court of Appeals, which eventually granted the revival of the patent
application in its August 31, 2004 Decision. Petitioner had no pending patent application for its losartan
product when it threatened respondent Therapharma, Inc. with legal action. 114
Respondent Therapharma, Inc. expressed its willingness to enter into a Non-Use and Confidentiality
Contract if there was a pending patent application. 115 After several negotiations on the clauses of the
contract, 116 the parties were unable to come to an agreement. In its letter dated May 24,
2004, 117 respondent Therapharma, Inc. expressed its frustration on petitioner's refusal to give a clear
answer on whether it had a pending patent application:
For easy reference, we have reproduced below paragraph 5 of the Confidentiality and Non-Use
Agreement ("Confidentiality Agreement"), underscoring your proposed amendment:
"THERAPHARMA agrees that upon receipt of Specifications and Claims of Application No. 35526 or at
any time thereafter, before it becomes part of the public domain, through no fault of THERAPHARMA, it
will not, either directly or indirectly, alone, or through, on behalf of, or in conjunction with any other person
or entity, make use of any information contained therein, particularly the product covered by its claims and
the equivalents thereof, in any manner whatsoever."
We find your proposed insertion odd. What may be confidential, and which we agree you have every right
to protect by way of the Confidentiality Agreement, are the Specifications and Claims in the patent
application, not the product per se. The product has been in the market for years. Hence, how can it be
confidential? Or is the ambiguity intended to create a legal handle because you have no cause of action
against us should we launch our own version of the losartan product?
....
Finally, the questions we posed in our previous letters are plain and simple - Is the Philippine Patent
Application No. 35526 still pending before the IPO, i.e., it has neither been withdrawn by your
licensor nor denied registration by the IPO for any reason whatsoever? When did your licensor
file said application with the IPO? These questions are easy to answer, unless there is an intention to
mislead. You are also
aware that the IPO is the only government agency that can grant letters patent. This is why we find
disturbing your statement that the pendency of the patent application before the IPO is "not relevant".
Hence, unless we receive unequivocal answers to the questions above, we regret that we cannot agree to
execute the Confidentiality Agreement; otherwise, we may be acknowledging by contract a right that you
do not have, and never will have, by law. 118 (Emphasis and underscoring in the original)
The threat of legal action against respondent Therapharma, Inc. was real and imminent. If respondent
Therapharma, Inc. waited until petitioner was granted a patent application so it could file a petition for
compulsory licensing and petition for cancellation of patent under Section 240 119 and Section 247 120 of the
1962 Revised Rules of Practice, 121 its continued marketing of Lifezar would be considered as an
infringement of petitioner's patent.
Even assuming that the Intellectual Property Office granted the revival of Philippine Patent Application
No. 35526 back in 2000, petitioner's claim of absolute confidentiality in patent proceedings is inaccurate.
In the 1962 Revised Rules of Practice, the Bureau of Patents, Trademarks, and Technology Transfer
previously required secrecy in pending patent applications. Section 13 states:
13. Pending applications are preserved in secrecy.-No information will be given to anyone respecting the
filing by any particular person of any application for a patent, the pendency of any particular case before
the Office, or the subject matter of any particular application, unless the same is authorized by the
applicant in writing, and unless it shall be necessary, in the opinion of the Director of Patents for the
proper conduct of business before the Office.
The Intellectual Property Code, however, changed numerous aspects of the old patent law. The
Intellectual Property Code was enacted not only to amend certain provisions of existing laws on
trademark, patent, and copyright, but also to honor the country's commitments under the World Trade
Organization - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement),
a treaty that entered force in the Philippines on January 1, 1995. 122
The mandatory disclosure requirement in the TRIPS Agreement 123 precipitated the shift from a first-to-
invent system to a first-to-file system. The first-to-file system required citizens of foreign countries to
register their patents in the Philippines before they can sue for infringement. 124
Lawmakers, however, expressed their concern over the extension of the period of protection for
registered patents. 125 Under Section 21 126 of Republic Act No. 165, a patent had a term of 17 years. The
Intellectual Property Code extended the period to 20 years. 127
During the interpellations before the House of Representatives, then Representative Neptali Gonzales II
(Gonzales) explained that under the Intellectual Property Code, the period of protection would have been
shortened because of the publication requirement:
MR. TANADA. Under the proposed measure, Your Honor, what is the period of protection that is given to
the holder of the patent registered?
MR. GONZALES. Seventeen years from grant of patent, Mr. Speaker. Unlike before ...
MR. TANADA. Under the present law, Mr. Speaker.
MR. GONZALES. I mean 17 years from filing, Mr. Speaker, unlike before which is 20 years from grant.
Okay.
I am sorry, Mr. Speaker. Seventeen years from filing under the existing law, 20 years from grant under the
proposed measure. It would appear, Mr. Speaker, that the proposed measure seeks to extend the grant
of the patent.
MR. TA.NADA. But you have made the period of protection longer, Mr. Speaker.
MR. GONZALES. On the contrary, Mr. Speaker, when a similar question was previously propounded
before, actually Mr. Speaker, it may decrease in fact the period of protection, Mr. Speaker. Because
unlike before 17 years from grant, Mr. Speaker, now 20 years from application or from filing but actually,
Mr. Speaker, it normally takes three to four years before a patent is actually granted even under the
proposed measure. Because as you can see[,] publication in the BPTTT Gazette would even taken place
after 18 months from filing. In other words, the procedure itself is such a manner that normally takes a
period of about three years to finally grant the patent. So even if 20 years is given from the time of filing
actually in essence it will be the same, Mr. Speaker, because under the existing law 17 years from grant.
But even under our existing law from the time that a patent application is filed it also takes about three to
four years, Mr. Speaker, to grant the same.
Now, why from filing, Mr. Speaker? Because the patent holder applicant is now required to publish in a
manner easily understood by a person trained or with the same skill as that of a patent holder. And from
that time this is published, this process covered by the patent is already made available. In fact, from the
time that it is published, any interested person may even examine and go over the records as filed with
the BPTTT and, therefore, this new technology or new invention is now made available to persons
equipped or possessed with the same skills as that of the patent holder. And that is the reason why the
patent is - the time of the patent is now tacked from the time it is filed because as a compromise it is now
mandatory to publish the said patent together with its description - the description of the process and
even would, at times demand the deposit of sample of the industrial design, Mr. Speaker. 128
Gonzales further clarified that the publication requirements of the Intellectual Property Code would
necessarily shorten the period for confidentiality of patent applications:
MR. MONFORT. Now, another question is, (another is) you know, the time from the filing of the date up to
publication which is the period of pendency or confidentiality, may I know how many years will it take, that
confidentiality period, variability.
MR. GONZALES. Eighteen months, Mr. Speaker.

MR. MONFORT. How many?
MR. GONZALES. Eighteen months.
MR. MONFORT. I do not think it is 18 months.
MR. GONZALES. It is provided for in the law, Mr. Speaker, because prior to the publication, naturally, the
records become confidential because the essence of a patent, trademark, or copyright is to give the
author or the inventor exclusive right to work on his own invention. And that is his invention, and naturally,
it is but right that he should have the exclusive right over his invention.
On the other hand, the law requires that after 18 months, it should now be published. When it is now
published, naturally, it ceases to be confidential in character because it is now ready for examination. It is
now ready for possible copying of any interested person because the application, as we have repeatedly
said on the floor, would require the filing of a description of the invention that can be carried out by a
Eerson similarly trained in the arts and sciences as that of the patent holder. 129
Thus, the absolute secrecy required by the 1962 Revised Rules of Practice would not be applicable to a
patent application before the Intellectual Property Office. Section 13 of the 1962 Revised Rules of
Practice does not appear in the Intellectual Property Code, 130 in the Rules and Regulations on
Inventions, 131 or in the Revised Implementing Rules and Regulations for Patents, Utility Models and
Industrial Design. 132 The Intellectual Property Code now states that all patent applications must be
published in the Intellectual Property Office Gazette and that any interested party may inspect all
documents submitted to the Intellectual Property Office. The patent application is only confidential before
its publication. Sections 44 and 45 of the Intellectual Property Code provide:
SECTION 44. Publication of Patent Application. -
44.1. The patent application shall be published in the IPO Gazette together with a search document
established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of
eighteen (18) months from the filing date or priority date.
44.2. After publication of a patent application, any interested party may inspect the application documents
filed with the Office.
44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may prohibit or
restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national
security and interests of the Republic of the Philippines. (n)
SECTION 45. Confidentiality Before Publication. -A patent application, which has not yet been published,
and all related documents, shall not be made available for inspection without the consent of the applicant.
It was inaccurate, therefore, for petitioner to argue that secrecy in patent applications prevents any
intervention from interested parties. The confidentiality in patent applications under the Intellectual
Property Code is not absolute since a party may already intervene after the publication of application.
Maguan v. CA
Facts:
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING" while private
respondent is likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER
PUFF MANUFACTURING."
It is undisputed that petitioner is a patent holder of powder puff.
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private respondent that the
powder puffs the latter is manufacturing and selling to various enterprises particularly those in the
cosmetics industry, resemble Identical or substantially Identical powder puffs of which the former is a
patent holder under Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility
Model No. 1184; petitioner explained such production and sale constitute infringement of said patents and
therefore its immediate discontinuance is demanded, otherwise it will be compelled to take judicial action.
(Rollo, pp. 7-8).
Private respondent replied stating that her products are different and countered that petitioner's patents
are void because the utility models applied for were not new and patentable and the person to whom the
patents were issued was not the true and actual author nor were her rights derived from such author.
(Taken from allegations in the Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private respondent
assailed the validity of the patents involved and filed with the Philippine Patent Office petitions for
cancellation of (1) Utility Model Letter Patent Extension No. UM-109 (Inter Partes Case No. 838, Susana
Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case No. 839,
Susana Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No. UM-110 (Inter Partes
Case No. 840, Susana Luchan v. Rosario C. Tan. (Taken from allegations in the Answer, par. 10, Rollo,
pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with injunction and
preliminary injunction against private respondent with the then Court of First Instance of Rizal, Pasig
Branch, docketed as Civil Case No. 19908, for infringing the aforesaid letters patent, and prayed, among
others, that a writ of preliminary injunction be immediately issued (Complaint, Rollo, p. 90).
Respondent reasoned out that:
(a) since years prior to the filing of applications for the patents involved,
powder puffs of the kind applied for were then already existing and
publicly being sold in the market; both in the Philippines and abroad; and
(b) applicant's claims in her applications, of "construction" or process of

manufacturing the utility models applied for, with respect to UM-423 and
UM-450, were but a complicated and impractical version of an old,
simple one which has been well known to the cosmetics industry since
years previous to her filing of applications, and which belonged to no one
except to the general public; and with respect to UM1184; her claim in
her application of a unitary powder puff, was but an limitation of a product
well known to the cosmetics industry since years previous to her filing of
application, and which belonged to no one except to the general public;
(Answer, Rollo, pp. 93-94).
Reviewing on reconsideration, respondent court (CA) 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. It also held that there is a prima facie showing of a fair question of invalidity of
petitioner's patents on the ground of lack of novelty. Respondent court made a complete turnabout from
its original decision and promulgated a Resolution.
Hence, this petition.
Issue/s:
Whether or not the evidence introduced by private respondent herein is sufficient to overcome
presumption of correctness and validity? [YES]
Was there infringement of patent rights? [NO]
Held:
The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff
introduces the patent in evidence, and the same is in due form, there is created a prima facie presumption
of its correctness and validity. The decision of the Commissioner (now Director) of Patent in granting the
patent is presumed to be correct. The burden of going forward with the evidence (burden of evidence)
then shifts to the defendant to overcome by competent evidence this legal presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses
presented by private respondents before the Court of First Instance before the Order of preliminary
injunction was issued as well as those presented by the petitioner, respondent Court of Appeals was
satisfied that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the
ground of lack of novelty.
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. (Frank, et al. v. Kosuyama Vargas v. F.M.
Yaptico & Co. and Vargas v. Chua, et al., supra).
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.
Thus, more specifically, under American Law from which our Patent Law was derived (Vargas v. F.M.
Yaptico & Co. supra) it is generally held that in patent cases a preliminary injunction will not issue for
patent infringement unless the validity of the patent is clear and beyond question. The issuance of letters
patent, standing alone, is not sufficient to support such drastic relief (8 Deller's Walker on Patents p. 406).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction which under
the circumstances should be denied.
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. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
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.
DP: PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby AFFIRMED.
Vargas v. F.M. Yaptico & Co. September 24, 1919
Facts:
Angel Vargas, a farmer acquainted with local conditions and alive to the commercial possibilities, took it
upon himself to produce, with the native plow as the model, an improved, adjustable plow. On July 22,
1910, he made application for a United States patent to cover his so-called invention. On March 12, 1912,
letters patent were issued by the United States Patent Office in favor of Vargas .On April 24, 1912, 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. The patent and its registry was also published in
the newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo, Philippine Islands.
On the plows there was first stamped the words "Patent Applied For," later after the patent had been
granted, changed to "Patented Mar. 12, 1912." Ninety per cent of the plows in use in the Visayas (Iloilo
and vicinity) are said to be Vargas plows.
During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry business
(producing metal castings) in the City of Iloilo. It openly held itself out as a manufacturer of plow parts. It
has in fact produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace
worn-out parts of the Vargas plow.
Such was the existing situation when, in the early part of 1918, the owner of the patent, and thus the
proper party to institute judicial proceedings, began action in the Court of First Instance of Iloilo to enjoin
the alleged infringement of U.S. Patent No. 1020232 by the defendant F. M Yaptico & Co. (Ltd.), and to
recover the damages suffered by reason of this infringement. The court issued the preliminary injunction
as prayed for.
The defendant, in addition to a general denial, alleged, as special defenses, 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.
As herein before stated, the defendant relies on three special defenses. One such defense, concerns the
element of novelty, invention, or discovery, that gives existence to the right to a patent. On this point the
trial court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not different from the
native plow, Exhibit 2, except in the material, in the form, in the weight and the grade of the result, the
said differences giving it neither a new function nor a new result distinct from the function and the result
obtained from the native plow; consequently, 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." In thus finding, the court may have been right, since the Vargas
plow does not appear to be such a "combination" as contains a novel assemblage of parts exhibiting
invention.
A second line of defense relates to the fact that defendant has never made a complete Vargas plow, but
only points, shares, shoes, and heel pieces, to serve as repairs. Defendant's contention is, that in
common with other foundries, he has for years cast large numbers of plow points and shares suitable for
use either on the native wooden plow, or on the Vargas plow. A difference has long been recognized
between repairing and reconstructing a machine. If, for instance, partial injuries, whether they occur from
accident or from wear and tear, to a machine for agricultural purposes, are made this is only re-fitting the
machine for use, and thus permissible. (Wilson vs. Simpson [1850], 9 How., 109.) Even under the more
rigorous doctrine of Leeds & Catlin Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be
possible that all the defendant has done is to manufacture and sell isolated parts to be used to replace
worn-out parts.
The third defense is, that 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.Without, therefore, committing ourselves as to the first two defenses, we propose to base our
decision on the one just suggested as more easily disposing of the case. (See 20 R. C. L., 1140-1142.)
We do so with full consciousness of the doubt which arose in the mind of the trial court, but with the belief
that since it has been shown 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, the patent is invalid.
The parties subsequently entered into a stipulation that the court should first resolve the question of
whether or not there had been an infraction of the patent, reserving the resultant question of damages for
later decision. After the taking of evidence, including the presentation of exhibits, the trial judge, the
Honorable Antonio Villareal, in a very exhaustive and learned decision, rendered judgment in favor of the
defendant and against the plaintiff, declaring null and without effect the patent in question and dismissing
the suit with costs against the plaintiff .The preliminary injunction theretofore issued was dissolved.
From this judgment the plaintiff has appealed, specifying five errors. The principal assignment No. 1 is,
that the trial court erred in finding that the patented invention of the plaintiff is lacking in novelty and
invention.
Issue/s:
Should the patent be declared null and without effect on the ground of lack of novelity? [YES]
Was there infringement of patent rights? [NO]
Held:
Note: On July 22, 1910, he made application for a United States patent to cover his so-called invention.
On the facts, we think the testimony shows such a public use of the Vargas plow as to render the patent
invalid. Nicolas Roces, a farmer, testified that he had bought twenty Vargas plows, of which Exhibit 5 was
one, in December, 1907; and Exhibit 5, the court found, was a plow completely identical with that for
which the plaintiff had received a patent. The minor exception, and this in itself corroborative of Roces'
testimony, is that the handle of plow Exhibit 5 is marked with the letters "A V" and not with the words
"Patent Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a business house,
testified that he had received plows similar to Exhibits D, 5, and 4, for sale on commission on May, 1908,
from Bonifacio Araneta, partner of Vargas in the plow business. Ko Pao Ko, a blacksmith, testified that he
had made fifty plow frames in 1905 for Vargas and Araneta, of which Exhibit 4 is one; Exhibit 4, the court
found, is a plow identical with that patented by Vargas, but without share and mould-board. Alfred Berwin,
an employee in the office of Attorney John Bordman, testified that on September 21, 1908, he had
knowledge of a transaction wherein Vargas and Araneta desired to obtain money to invest in a plow
factory. George Ramon Saul, a mechanic of the "Taller Visayas" of Strachan and MacMurray, testified
that he had made Vargas plow points and shares of the present form upon order of Araneta and Vargas
in 1906 and 1907 .William MacMurray, proprietor of the "Taller Visayas," corroborated the evidence of the
witness Saul by the exhibition of the account against Vargas and Araneta wherein, under date of
December 13, 1906, appears the item "12 new soft steel plow shares forged and bored for rivets as per
sample." Against all this, was the testimony of the plaintiff Angel Vargas who denied that Saul could have
been seen the Vargas plow in 1907 and 1907, who denied that Roces purchased the Vargas plow in
1907, who denied that Lizarraga could have acted as an agent to sell two plows in November, 1908, who
denied any remembrance of the loan mentioned by Berwin as having been negotiated in September,
1908, who denied that Ko Pao Ko made fifty plows one of which is Exhibit 4, for Araneta and Vargas in
1905. Plaintiff introduced his books to substantiate his oral testimony .It is hardly believable that five or six
witnesses for the defense would deliberately perjure themselves under oath. One might, but that all
together, of different nationalities, would enter into such a conspiracy, is to suppose the improbable.
Tested by the principles which go to make the law, we think a preponderance of the evidence is to the
effect that for more than two years before the application for the original letters patent, or before July 22,
1908, there was, by the consent and allowance of Vargas, a public use of the invention covered by them.
DP: To conclude, we are not certain but that appellee has proved every one of his defenses. We are
certain that he has at least demonstrated the public use of the Vargas plow over two years prior to the
application for a patent. Such being the case, although on a different ground, we must sustain the
judgment of the lower court, without prejudice to the determination of the damages resulting from the
granting of the injunction, with the costs of this instance against the appellant. So ordered.
--------------------------------------------------------------------------------------------------------------------------------------------
Before resolving these rival contentions, we should have before us the relevant law. Act No. 2235 of the
Philippine Legislature, enacted on February 10, 1913, in effect makes the United States Patent Laws
applicable in the Philippine Islands. It provides that "owners of patents, including design patents, which
have been issued or may hereafter be issued, duly registered in the United States Patent Office under the
laws of the United States relating to the grant of patents, shall receive in the Philippine Islands the
protection accorded them in the United States under said laws." (Sec. 1.) Turning to the United States
Patent Laws, we find the Act of Congress of March 3, 1897, amendatory of section 4886 of the United
States Revised Statutes, reading as follows:
Any person who has invented or discovered any new and useful art, machine, manufacture, or
composition of matter, or any new an useful improvements thereof, not known or used by others
in this country, before his invention or discovery thereof, and not patented or described in any
printed publication in this or any foreign country, before his invention or discovery thereof, or
more than two years prior to his application, and not in public use or on sale in this country for
more than two years prior to his application, unless the same is proved to have been abandoned,
may upon payment of the fees required by law, and other due proceeding had, obtain a patent
therefor. (29 Stat. L., 692, 7 Fed .Stat. Ann. [2d Ed.], p. 23.)
Vargas v. Chua
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.
6. That the plaintiff is the registered owner and possessor of United States Patent No. 1,507,530
on certain plow improvements, issued by the United States Patent Office on September 2, 1924,
a certified copy of which was registered in the Bureau of Commerce and industry of the
Government of the Philippine Islands on October 17, 1924. A certified copy of said patent is
attached to this stipulation of facts as Exhibit A.
7. That the plaintiff is now and has been engaged, since the issuance of his patent, in the
manufacture and sale of plows of the kind, type and design covered by the aforementioned
patent, said plows being of different sizes and numbered in accordance therewith from 1 to 5.
8. That, since the filing of the complaint to date, the defendant, Petronila Chua, has been
manufacturing and selling plows of the kind, type and design represented by Exhibits B, B-1 and
B-2, of different sizes, designated by Nos. 2, 4 and 5.
9. That, since the filing of the complaint to date, the defendant, Coo Teng Hee, doing business in
Iloilo under the name of Coo Kun & Sons Hardware Co., has been obtaining his plows, of the
form and size of Exhibits B, B-1 and B-2, from the defendant Petronila Chua.
13. That, on September 19, 1928, the defendant Cham Samco & Sons, sold in its store on Sto.
Cristo St., Manila, the plow Exhibit B-1, for the sale of which invoice Exhibit D was issued.
The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal from the judgment of the Court of
First Instance of Manila, the dispositive part of which reads as follows:
Wherefore judgment is rendered in favor of the plaintiff and against the defendants, ordering each
and every one of them, their agents, mandatories and attorneys, to henceforth abstain from
making, manufacturing, selling or offering for a sale plows of the type of those manufactured by
the plaintiff, and particularly plows of the model of Exhibits B, B-1 and B-2, and to render to the
plaintiff a detailed accounting of the profits obtained by them from the manufacture and sale of
said type of plows within thirty (30) days from the date of the receipt by them of notice of this
decision, with costs against all of the defendants.
Issue/s: Whether or not the plow, Exhibit F, constitutes a real invention or an improvement for which a
patent may be obtained, or if, on the contrary, it is substantially the same plow represented by Exhibit 3-
Chua the patent for which was declared null and void in the aforementioned case of Vargas vs. F. M.
Yaptico & Co., supra. [NO]
Held:
We have carefully examined all the plows presented as exhibits as well as the designs of those covered
by the patent, and we are convinced that no substantial difference exists between the plow, Exhibit F, and
the plow, Exhibit 3-Chua which was originally patented by the appellee, Vargas. The only difference noted
by us is the suppression of the bolt and the three holes on the metal strap attached to the handle bar.
These holes and bolt with its nut were suppressed in Exhibit F in which the beam is movable as in the
original plow. The members of this court, with the plows in view, arrived at the conclusion that not only is
there no fundamental difference between the two plows but no improvement whatever has been made on
the latest model, for the same working and movement of the beam existed in the original model with the
advantage, perhaps, that its graduation could be carried through with more certainty by the use of the bolt
which as has already been stated, was adjustable and movable.
As to the fact, upon which much emphasis was laid, that deeper furrows can be made with the new
model, we have seen that the same results can be had with the old implement.
In view of the foregoing, we are firmly convinced that 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.
DP: 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.
Frank v. Kosuyama
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 Hemp Stripper is intended to dramatically decrease time and man power necessary for separating
flower and leaf material from the stalks and branches of whole plants.]
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.
The plaintiffs appealed from the judgment rendered by the trial court dismissing their complaint, with cost,
as well as the defendant's counterclaim of P10,000. The defendant did not appeal.
In their amended complaint, the plaintiff alleged that their hemp stripping machines, for which they
obtained a patent, have the following characteristics: "A stripping head, a horizontal table, a stripping
knife supported upon such table, a tappering spindle, a rest holder adjustably secured on the table
portion, a lever and means of compelling the knife to close upon the table, a pallet or rest in the bottom of
the table, a resilient cushion under such palletor rest." In spite of the fact that they filed an amended
complaint from which the "spindle" or conical drum, which was the only characteristic feature of the
machine mentioned in the original complaint, was eliminated, the plaintiffs insisted that the said part
constitutes the essential difference between the machine in question and other machines and that it was
the principal consideration upon which their patent was issued. The said plaintiffs sustained their
contention on this point even in their printed brief and memorandum filed in this appeal.
[Spindle: 1.) a slender rounded rod with tapered ends used in hand spinning to twist and wind thread
from a mass of wool or flax held on a distaff.; 2.) a rod or pin serving as an axis that revolves or on
which something revolves.]
During the trial, both parties presented voluminous evidence from which the trial court arrived at the
following conclusions:
In constructing their machine the plaintiffs did nothing but improve, to a certain degree, those that
were already in vogue and in actual us in hemp producing provinces. It cannot be said that they
have invented the "spindle" inasmuch as this was already known since the year 1909 or 1910.
Neither it can be said that they have invented the stripping knife and the contrivance which
controls the movement and pressure thereof on the ground that stripping knives together with
their control sets were already in actual use in the different stripping machines long before their
machine appeared. Neither can it be said that they invented the fly wheel because that part or
piece thereof, so essential in every machine from time immemorial, was already known and
actually employed in hemp stripping machines such as those of Riesgo (Exhibit 4-A), Crumb
(Exhibit 1-A), Icsiar (Exhibit A-Suzara), Browne (Exhibit 28-A), McFie, etc., all of which were in
use for the benefit of hemp long before the appearance of the plaintiffs' machines in the market.
Much less can it be said that they invented the pedal to raise the knife in order to allow the hemp
to be stripped to pass under it, on the ground that the use of such contrivance has, likewise, been
known since the invention of the most primitive of hemp stripping machines.
On the other hand, although the plaintiffs alleged in their original complaint that "the principal and
important feature of said machine is a spindle upon which the hemp to be stripped is wound in the
process of stripping," nevertheless, in their amended complaint of March 3, 1928, which was filed
after a portion of the evidence therein had already been submitted and it was known that the use
of the spindle was nothing new, they still made the allegations appearing in paragraph 3 of their
said amended complaint and reproduced on pages 2,3,4 and 5 hereof, copying the same from
the application which they filed with the United States Patent Office, under which they obtained
their patent in question. The aforesaid application clearly shows that what they applied for was
not a patent for a "pioneer or primary invention" but only for some "new and useful improvement
in hemp stripping machines."
Issue/s: Whether or not the hemp stripping machine constitute an invention. [NO]
Held:
We agree with the trial court that, 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 (48
C.J., sec. 101, p. 97, and 102, p. 98). 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. Machines known as Molo, Riesgo, Crumb, Icsiar, Browne
and McFie were already known in that locality and used by the owners of hemp plantations before the
machine of the plaintiffs came into existence. It may also be noted that Adrian de Icsiar applied for a
patent on an invention which resulted in the rejection by the United States Patent Office of the plaintiffs'
original application for a patent on the so called "spindle" or conical drum which was then in actual use in
the Dringman and Icsiar hemp stripping machines.
Notwithstanding the foregoing facts, the trial court did not decree the annulment of the plaintiffs' patent
and the herein defendant-appellee insists that the patent in question should be declared null and void. We
are of the opinion that it would be improper and untimely to render a similar judgment, in view of the
nature of the action brought by the plaintiffs and in the absence of a cross-complaint to that effect. For the
purposes of this appeal, suffice it to hold that the defendant is not civilly liable for alleged infringement of
the patent in question.
In the light of sound logic, the 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.
In support of their claim the plaintiffs invoke the doctrine laid down by this court in the case of Frank and
Gohn vs. Benito (51 Phil., 712), wherein it was held that the therein defendant really infringed upon the
patent of the therein plaintiffs. It may be noted that the plaintiffs in the former and those of the latter case
are the same and that the patent then involved is the very same one upon which the present action of the
plaintiffs is based. The above-cited case, however, cannot be invoked as a precedent to justify a
judgment in favor of the plaintiffs-appellants on the ground that the facts in one case entirely different from
those in the other. In the former case the defendant did not set up the same special defenses as those
alleged by the herein defendant in his answer and the plaintiffs therein confined themselves to presenting
the patent, or rather a copy thereof, wherein the "spindle" was mentioned, and this court took for granted
their claim that it was one of the essential characteristics thereof which was imitated or copied by the then
defendant. Thus it came to pass that the "spindle" in question was insistently mentioned in the decision
rendered on appeal as the essential part of the plaintiffs' machine allegedly imitated by the then
defendant. In the case under consideration, it 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.
DP: 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. So ordered.
Aguas v. de Leon
Facts:
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 plaintiff has the exclusive license to make, use and sell
throughout the Philippines the improvements set forth in said Patent No. 658; 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;
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;
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:
The defendant Domiciano Aguas appealed to the Court of Appeals. 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.
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. Hence, this petition.
Issue/s: Whether or not the improvements stated in the patent of de Leon constitutes an invention,
hence, patentable. [YES]
Held:
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." 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 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 patentability of the
improvement by the private respondent of the process in question.
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.
DP: 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.
Diamond v. Chakrabarty
Facts:
Respondent microbiologist filed patent claims for human-made, genetically engineered bacterium that
was capable of breaking down multiple components of crude oil. The US Court of Customs and Patent
Appeals allowed the claim. Petitioner, Commissioner of Patents and Trademarks, appealed the
judgment. The court affirmed the judgment that allowed respondent microbiologist's patent claims. The
language of the patent statute covered respondent's invention of a living, genetically engineered micro-
organism.
Issue/s: Whether or not respondent's micro-organism qualifies as patentable subject matter. [YES]
Held:
The court affirmed the judgment that allowed respondent's claims. The court rejected the argument of the
patent office board of appeals that 35 U.S.C.S. § 101 (a US law governing registration of patents) was not
intended to cover living things such as laboratory created micro-organisms. The court held that
respondent's micro-organism constituted a "manufacture" or a "composition of matter" within the meaning
of 35 U.S.C.S. § 101 and thus qualified as patentable subject matter. The court found that respondent
had produced a new bacterium with markedly different characteristics from any found in nature and which
had the potential for significant utility. The court held that the language of 35 U.S.C.S. § 101 embraced
respondent's invention.
The U.S. Supreme Court reads the term "manufacture" in 35 U.S.C.S. § 101 in accordance with its
dictionary definition to mean the production of articles for use from raw or prepared materials by giving to
these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.
Similarly, composition of matter is construed consistent with its common usage to include all compositions
of two or more substances and all composite articles, whether they are the results of chemical union, or of
mechanical mixture, or whether they are gases, fluids, powders or solids.

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Issue/s: Is the petition impressed with merit? [NO]

Further, Sec. 55 of the same law provides -

Hence, this petition.

Issue/s: Is the petition impressed with merit? [NO]

TIME FOR RESPONSE BY APPLICANT; ABANDONMENT OF APPLICATION

111. Abandonment for failure to respond within the time limit.-

a. the local application expressly claims priority;

The law attempts to strike an ideal balance between the interests:

Particularly instructive is Section 73 of Republic Act No. 165, which provides:

SECTION 7. The Director General and Deputies Director General. -

MR. TANADA. Under the present law, Mr. Speaker.

MR. GONZALES. Eighteen months, Mr. Speaker.

MR. GONZALES. Eighteen months.

MR. MONFORT. I do not think it is 18 months.

SECTION 44. Publication of Patent Application. -

It is undisputed that petitioner is a patent holder of powder puff.

Respondent reasoned out that:

(b) applicant's claims in her applications, of "construction" or process of

Hence, this petition.

Was there infringement of patent rights? [NO]

The law provides:

SEC. 9. Invention not considered new or patentable. — An invention shall not be

Was there infringement of patent rights? [NO]

WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the

1. Declaring plaintiff's patent valid and infringed:

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