MANZANO VS.
CA configuration and mechanism as that of the
G.R. No. 113388 | 5 September 1997
FACTS: Angelita Manzano (petitioner) filed with
the Philippine Patent Office an action for
cancellation of Letters patent No. UM-4609 for a
gas burner registered in the name of Melecia
Madolaria (private respondent), who
subsequently assigned the letters patent to
UNITED FOUNDRY.
Petitioner alleged, among others:
1.The utility model covered by the letters patent,
an LPG gas burner, was not inventive, new, or
useful;
2.Private respondent is not the original and
actual inventor, nor she did derive her rights
from the original, true, and actual inventor of the
utility model covered by the letters patent;
3. The utility model covered had been known or
used by others in the Philippines for more than
one year before private respondent filed her
application for the letters patent; and
Petitioner presented the following to support her
petition:
1. Affidavit of petitioner alleging existence of
prior art;
2. Brochure distributed by Manila Gas
Corporation disclosing pictorial of Ransome
Burner; and
3. Brochure distributed by Esso Gasul showing a
picture of another similar burner.
Petitioner alleged that her husband, Ong Bun
Tua, worked as helper in UNITED FOUNDRY
where private respondent used to be affiliated
with. Ong helped in the casting of an LPG
burner which was the same utility model of a
burner for which the subject letters patent was
issued.
After her husband’s separation, she organized
BESCO METAL for the casting of LPG burners
one of which had the configuration, form, and
component similar to those of UNITED
FOUNDRY. The LPG burner, called Ransome,
was allegedly manufactured on 1974 or 1975
and solder by her in the course of her business.
Petitioner claimed that Ransome had the same
model which was patented in favor of private
respondent. Also, a burner cup of Ransome
burner was presented which was existing even
before the patent application of private
respondent.
DIRECTOR OF PATENTS: He denied the
petition for cancellation holding that the
evidence of petitioner was not able to establish
that the utility model of private respondent was
anticipated.
COURT OF APPEALS: Affirmed the decision
ISSUE: W/N the letters patent of private
respondent should be cancelled – NO
RULING:
Section 7 of RA No. 165, as amended, which
is the law on patents, expressly provides —
Sec. 7. Inventians 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. 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. 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:
Evidences 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.
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.
Furthermore, and more significantly, the
model does not show whether or not it
was manufactured and/or cast before
the application for the issuance of patent
for the LPG burner was filed by Melecia
Madolaria.
With respect to Ransome, petitioner
claimed it to be her own model of LPG
burner allegedly manufactured
sometime in 1974 or 1975 and sold by
her in the course of her business
operation in the name of Besco Metal
Manufacturing, which burner was
denominated as "Ransome" burner,
results show that the evidences
presented do not show the word
“Ransome” being referred to as the
product sold by petitioner. This is not the
way to show that the same anticipates
the subject letters patent.
The above findings and conclusions of the
Director of Patent were reiterated and affirmed
by the Court of Appeals.
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 respondent's
model of gas burner as a discovery.
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.
Finally, petitioner would want this Court to
review all over again the evidence she
presented before the Patent Office.
It has been held that the question on priority
of invention is one of fact. Novelty and utility
are likewise questions of fact. The validity of
patent is decided on the basis of factual
inquiries. Whether evidence presented
comes within the scope of prior art is a
factual issue to be resolved by the Patent
Office. There is question of fact when the
doubt or difference arises as to the truth or
falsehood of alleged facts or when the query
necessarily invites calibration of the whole
evidence considering mainly the credibility
of witnesses, existence and relevance of
specific surrounding circumstances, their
relation to each other and to the whole and
the probabilities of the situation.
SMITH KLINE BECKMAN CORP. VS CA
G.R. No. 126627 | 14 August 2003
FACTS: Smithe Kline (petitioner) is a
corporation exiting by virtue of the US laws and
is licensed to do business here in the
Philippines. It filed, as assignee, before the
Philippine Patent Office an application for patent
over an invention entitled “"Methods and
Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate."
Letters Patent No. 14561 for the aforesaid
invention was issued to petitioner for a term of
seventeen (17) years.
The letters patent provides in its claims that the
patented invention consisted of a new
compound named methyl 5 propylthio-2-
benzimidazole carbamate and the methods or
compositions utilizing the compound as an
active ingredient in fighting infections caused by
gastrointestinal parasites and lungworms in
animals such as swine, sheep, cattle, goats,
horses, and even pet animals.
Tryco Pharma Corporation (private respondent)
is a domestic corporation that manufactures,
distributes and sells veterinary products
including Impregon, a drug that has Albendazole
for its active ingredient and is claimed to be
effective against gastro-intestinal roundworms,
lungworms, tapeworms and fluke infestation in
carabaos, cattle and goats.
Smithe Kline sued private respondent for
infringement of patent and unfair competition
before the RTC. It claimed that its patent covers
or includes the substance Albendazole such that
Tryco Pharma, by manufacturing, selling, using,
and causing to be sold and used the drug
Impregon without its authorization, infringed
Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No.
14561 as well as committed unfair competition
under Article 189, paragraph 1 of the Revised
Penal Code and Section 29 of Republic Act No.
166 (The Trademark Law) for advertising and
selling as its own the drug Impregon although
the same contained petitioner’s patented
Albendazole.
ISSUE: W/N Tryco Pharma commited patent
infringement to the prejudice of Smithe Kline –
NO
RULING: The burden of proof to substantiate
a charge for patent infringement rests on the
plaintiff. In the case at bar, Smithe Kline’s
evidence consists primarily of its Letters Patent
No. 14561, and the testimony of Dr. Orinion, its
general manager in the Philippines for its Animal
Health Products Division, by which it sought to
show that its patent for the compound methyl 5
propylthio-2-benzimidazole carbamate also
covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent
No. 14561 in relation to the other portions
thereof, no mention is made of the compound
Albendazole. All that the claims disclose are: the
covered invention, that is, the compound methyl
5 propylthio-2-benzimidazole carbamate; the
compound’s being anthelmintic but nontoxic for
animals or its ability to destroy parasites without
harming the host animals; and the patented
methods, compositions or preparations involving
the compound to maximize its efficacy against
certain kinds of parasites infecting specified
animals.
When the language of its claims is clear and
distinct, the patentee is bound thereby and
may not claim anything beyond them. And so
are the courts bound which may not add to
or detract from the claims matters not
expressed or necessarily implied, nor may
they enlarge the patent beyond the scope of
that which the inventor claimed and the
patent office allowed, even if the patentee
may have been entitled to something more
than the words it had chosen would include.
It bears stressing that the mere absence of the
word Albendazole in Letters Patent No. 14561 is
not determinative of Albendazole’s non-inclusion
in the claims of the patent. While Albendazole is
admittedly a chemical compound that exists by a
name different from that covered in Smithe
Kline’s letters patent, the language of Letter
Patent No. 14561 fails to yield anything at all
regarding Albendazole. And no extrinsic
evidence had been adduced to prove that
Albendazole inheres in Smithe Kline’s patent in
spite of its omission therefrom or that the
meaning of the claims of the patent embraces
the same.
While petitioner concedes that the mere literal
wordings of its patent cannot establish private
respondent’s infringement, it urges this Court to
apply the doctrine of equivalents.
The doctrine of equivalents provides that an
infringement also takes place when a device
appropriates a prior invention by
incorporating its innovative concept and,
although with some modification and
change, performs substantially the same
function in substantially the same way to
achieve substantially the same result. Yet
again, a scrutiny of petitioner’s evidence fails to
convince this Court of the substantial sameness
of petitioner’s patented compound and
Albendazole. While both compounds have the
effect of neutralizing parasites in
animals, identity of result does not amount to
infringement of patent unless Albendazole
operates in substantially the same way or by
substantially the same means as the
patented compound, even though it performs
the same function and achieves the same
result. In other words, the principle or mode
of operation must be the same or
substantially the same.
The doctrine of equivalents thus requires
satisfaction of the function-means-and-result
test, the patentee having the burden to show
that all three components of such
equivalency test are met.
As stated early on, petitioner’s evidence fails to
explain how Albendazole is in every essential
detail identical to methyl 5 propylthio-2-
benzimidazole carbamate. Apart from the fact
that Albendazole is an anthelmintic agent like
methyl 5 propylthio-2-benzimidazole carbamate,
nothing more is asserted and accordingly
substantiated regarding the method or means by
which Albendazole weeds out parasites in
animals, thus giving no information on whether
that method is substantially the same as the
manner by which petitioner’s compound works.
The testimony of Dr. Orinion lends no support to
petitioner’s cause, he not having been presented
or qualified as an expert witness who has the
knowledge or expertise on the matter of
chemical compounds.
As for the concept of divisional applications
proffered by petitioner, it comes into play
when two or more inventions are claimed in
a single application but are of such a nature
that a single patent may not be issued for
them. The applicant thus is required "to
divide," that is, to limit the claims to
whichever invention he may elect, whereas
those inventions not elected may be made
the subject of separate applications which
are called "divisional applications." What this
only means is that petitioner’s methyl 5
propylthio-2-benzimidazole carbamate is an
invention distinct from the other inventions
claimed in the original application divided out,
Albendazole being one of those other
inventions. Otherwise, methyl 5 propylthio-2-
benzimidazole carbamate would not have been
the subject of a divisional application if a single
patent could have been issued for it as well as
Albendazole.
SIDE ISSUE: W/N Tryco Pharma is entitled to
be awarded damages and attorney’s fees – NO
While indemnification for actual or compensatory
damages covers not only the loss suffered
(damnum emergens) but also profits which the
obligee failed to obtain (lucrum cessans or
ganacias frustradas), it is necessary to prove the
actual amount of damages with a reasonable
degree of certainty based on competent proof
and on the best evidence obtainable by the
injured party. The testimonies of private
respondent’s officers are not the competent
proof or best evidence obtainable to establish its
right to actual or compensatory damages for
such damages also require presentation of
documentary evidence to substantiate a claim
therefor.

Also, the Court does not sustain the grant by the

appellate court of attorney’s fees to private
respondent anchored on Article 2208 (2) of the
Civil Code, private respondent having been
allegedly forced to litigate as a result of
petitioner’s suit. Even if a claimant is compelled
to litigate with third persons or to incur expenses
to protect its rights, still attorney’s fees may not
be awarded where no sufficient showing of bad
faith could be reflected in a party’s persistence
in a case other than an erroneous conviction of
the righteousness of his cause. There exists no
evidence on record indicating that petitioner was
moved by malice in suing private respondent.