MAGUAN V CA

Principle in the case:

 A patentee shall have the exclusive right to make, use and sell the patented article or product and the making,
using, or selling by any person without the authorization of the patentee constitutes infringement of the patent (Sec.
37, R.A. 165). Any patentee whose rights have been infringed upon may bring an action before the proper CFI now
(RTC) and to secure an injunction for the protection of his rights.

FACTS:
Maguan is doing business under the firm name and style of SWAN MANUFACTURING" while Luchan is likewise
doing business under the firm name and style of "SUSANA LUCHAN POWDER
PUFFMANUFACTURING.”Maguan informed Luchan that the powder puffs Luchan is manufacturing and selling to
various enterprises particularly those in the cosmetics industry, resemble Identical or
substantially Identical powder puffs of which she (Maguan) is a patent holder under Registration
Certification Nos. Extension UM-109, ExtensionUM-110 and Utility Model No. 1184; Maguan explained such
production and sale constitute infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled totake judicial action. Luchan replied stating that her
products are different and countered that Maguan’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. Maguan filed a complaint for damages with injunction and preliminary injunction
against Luchan with the then Court of First Instance of Rizal. The trial court issued an Order granting the preliminary
injunction prayed for. Consequently, the corresponding writ was subsequently issued.

Issue: 
WON in Maguan has a right to file an action before the CFI for injunction due to infringement of her
patent.

Ruling:
Yes.

Rationale: When a patent is sought to be enforced, the questions of invention, novelty or prior use, and each of
them, are open to judicial examination. Under the present Patent Law, there is even less
reason to doubt that the trial court has jurisdiction to declare the patents in question invalid.
 
A patentee shall have the exclusive right to make, use and sell the patented article or product and the
making, using, or selling by any person without the authorization of the patentee constitutes infringement of the
patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring an action before the
proper CFI now (RTC) and to secure an injunction for the protection of his rights.

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.

ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.)

G.R. No. 14101, September 24, 1919

Facts:

Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office
for his so-called invention of an improved adjustable plow with the use his own native
plow. A certified copy of the patent was filed in the Division of Patents, Copyrights, and
Trademarks of the Executive Bureau, Government of the Philippine Islands.
Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business in Iloilo
City, was a manufacturer of plow parts. It produced points, shares, shoes, and heel
pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.

Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged
infringement of his U.S. Patent by the defendant F. M Yaptico & Co. (Ltd.), and to
recover the damages suffered by reason of this infringement, to which the court issued
the preliminary injunction prayed for.

The defendant denied the allegations and defended that the patent lacked novelty or
invention, that there was no priority of ideas or device in the principle and construction
of the plow, and that the plow, whose manufacture it was sought to have enjoined by
the plaintiff, had already been in public use for more than two years before the
application of the plaintiff for his patent.

The trial judge rendered judgment in favor of the defendant, declaring null and without
effect the patent in question and dismissing the suit with costs against the plaintiff.
Hence, the plaintiff appealed said judgment.

Issues:

1. Whether the patented invention is void for lack of novelty and invention?

2. Whether the patent is invalid considering that the plow had already been in public
use for over two years prior to the application for a patent.

Ruling:

1. Yes, the patent if void. The Supreme Court affirmed the trial court’s conclusion that
the plow of the plaintiff is not different from the native plow, 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. Also, 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.

2. Yes, the patent is void. 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.

Further, it was proved that the invention was used in public at Iloilo by others than
Vargas, the inventor, more than two years before the application for the patent thus,
the patent is invalid.
Vargas vs. Chua

FACTS:
The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal from thejudgment of the Court of First Instance of
Manila, which held in favor of Vargas andagainst Chua - to henceforth abstain from making, manufacturing, selling or
offeringfor a sale plows of the type of those manufactured by the plaintiff,

Angel Vargas, the plaintiff herein, brought this action to restrain the appellants (CHUA)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 hispatent 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 profitsobtained by them from the sale of said plows from September
2, 1924, to pay him damages equivalent to double the amount of such profits.

- That the plaintiff (VARGAS) is the registered owner and possessor of United StatesPatent No. 1,507,530 on certain plow
improvements, issued by the United States PatentOffice on September 2, 1924, a certified copy of which was registered in
the Bureau ofCommerce 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.

The parties agree that the defendant Coo Teng Hee, doing business under the nameof Coo Kun & Sons Hardware Co., has
been selling to his customers in his store on J.Ma. Basa Street in Iloilo, plows of the kind, type and design represented by
Exhibits B, B1 and B-2, having bought said plows from his codefendant, Petronila Chua, whomanufactures them in her
factory on Iznart Street, Iloilo., the plaintiff herein, through his attorneys Paredes, Buencamino & Yulo, sent byregistered
mail to the herein defendant, Coo Kun & Sons Hardware Co., at Iloilo, theoriginal of the letter Exhibit E, which was received
by it on September 28, 1927,according to the receipt marked Exhibit E-1 attached hereto.

That the plows manufactured by the plaintiff in accordance with his patent, Exhibit A,are commonly known to the trade in
Iloilo, as well as in other parts of the Philippines, as"Arados Vargas", and that the plaintiff is the sole manufacturer of said
plows. A sampleof these plows is presented as Exhibit F.

HELD:-

the plow upon which the appellee's contention is based, does not constitute aninvention and, consequently, the privilege
invoked by him is untenable and the patentacquired by him should be declared ineffective.The judgment appealed from is
hereby reversed and the appellants are absolved from the complaint, with costs of this instance against the appellee. So
ordered.

ISSUE: Whether 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.

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 onthe 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 notonly 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 itsgraduation could be carried through with more certainty by the use of the bolt which as has
already been stated, was adjustable and movable.

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.
Frank Vs Kosuyama
FACTS:

This action brought by the plaintiffs herein originated from patent no. 1519579 on improvement in hemp stripping
machines issued by the US Patent Office (USPO) on December 16, 1924 and registered in the Bureau of Commerce and
Industry of the Philippines on March 17, 1925.

Plaintiffs prayed:

1. That judgment be rendered against defendant, ordering him to refrain immediately from the manufacture and sale of
similar machines,

2. To render an accounting of the profits realized from the manufacture and sale of the machines in question, and that in
case of refusal or failure to render accounting, be ordered to pay plaintiffs the sum of Php 60.00 as profit on each machine
manufactured or sold by him;

3. That upon approval of the required bond, defendant be restrained from continuing the manufacture and sale of similar
machines;

4. That after the trial the preliminary injunction issued therein be declared permanent; and 5. That said defendant be
sentenced to pay the costs and damages that plaintiffs might be able to prove.

Plaintiffs alleged that defendant infringed their rights and privileges over the patent by manufacturing and selling similar
machines. Plaintiff appealed from the judgment rendered by the trial court dismissing their complaint. In the amended
complaint, plaintiffs 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.”

Despite 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, 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.

ISSUE/S: Was there patent infringement herein? None.

RULING: The trial court held concluded that Frank and Gohn merely made minor improvements on machines already in use
at the time. It cannot be said that they have invented the ‘spindle’ 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 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.

The SC reviewed the evidence and agreed with the trial court that the hemp-stripping machine of the plaintiffs does not
constitute an invention on the ground that it lacks the elements of novelty, originality and precedence. In fact, before the
plaintiffs herein obtained their patent, they themselves had already publicly used the same kind of machine for some
months, at least, and, various other machines, having in general, the same characteristics and important parts as that of
the said plaintiffs, were known in Davao. Similar machines were already known in that locality and were used by the owners
of hemp plantations before the machine of the plaintiffs came into existence.

Also, Adrian de Icsiar applied for a patent on an invention which resulted in the rejection by the USPO of the plaintiffs'
original application for a patent on the so called “spindle” or conical drum which was then in actual used in some hemp
stripping machines.

Defendant is not civilly liable for alleged infringement of the patent in question. Plaintiffs cannot insist that the “spindle”
was a patented invention on the ground that they voluntarily omitted said part of the machine from their application.

Plaintiffs relied on Frank and Gohn vs. Benito where it was held that the defendant infringed upon the patent of the therein
plaintiffs. However, such case cannot be invoked as a precedent to justify a judgment in favor of the plaintiffs on the ground
that the facts in one case entirely different from those in the other. In the former case, 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 where the “spindle” was mentioned. The court held that it was one of the essential characteristics
that was imitated or copied by the then defendant.

Herein, 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 as it was expressly excluded in their application.

The judgment appealed from is affirmed.

Aguas vs. De Leon

111 SCRA 238 (1982)

FACTS:

This is a petition for certiorari to review the decision of the Court of Appeals.

On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of
patent against petitioner Domiciano Aguas and F.H. Aquino and Sons alleging among others that being the original first and
sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, and thereafter lawfully
acquired from the Philippine Patent Office, Patent No. 658, the latter infringed the same by making, using and selling tiles
embodying said patent invention. A writ of Preliminary Injuction was subsequently issued.

Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia that respondent De Leon 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 both here and abroad years before the alleged invention by De Leon;
hence, it is not patentable.

The trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon. Thus, this
petition.

ISSUE:

Whether or not the alleged invention or discovery of respondent is patentable.

HELD:

Yea. x x x 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 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.”

ANGELITA MANZANO VS COURT OF APPEALS

G.R. NO. 113388

September 5, 1997

PONENTE: Bellosillo, J.

FACTS:

Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters Patent for a gas burner
registered in the name of private respondent Madolaria who subsequently assigned the same to private respondent
United Foundry. Petitioner alleged that the utility model covered by the letters patent was not inventive, new, or useful,
the specification did not comply with the requirements of R.A. No. 165, that respondent was not the original, true, and
actual inventor nor did she derive her rights from the same, and that respondent was guilty of fraud or
misrepresentation in applying for the letters patent.

Petitioner also alleged that the utility model in question had already been in use and on sale (petitioner herself being a
distributor/seller of the said gas burners) in the Philippines for more than one year before the respondent filed for the
application. Petitioner presented two undated brochures of two different Gas companies (Manila Gas Corp. & Esso
Gasul) which allegedly depicts an identical gas burner as the one covered in respondent’s letters patent. Respondent
presented her husband as lone witness to testify that respondent, thru complaints of customers, devised a way to solve
the defects in the gas burners, and respondent’s innovation is now the subject of the letters patent.

The Director of Patents denied the petition for cancellation, which was affirmed by the CA, on the ground that petitioner
was not able to convincingly establish that the patented utility model was not novel. Petitioner failed to overcome her
burden and overturn the presumption of legality of the issuance of letters patent and that respondent withheld material
facts with intent to deceive which, if disclosed, would have resulted in the refusal by the PPO to issue the letters patent.
Hence, this appeal.

ISSUE: WON the CA erred in upholding the decision of the Director of Patents.

RULING: NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO 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.

As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of legality of the
issuance of letters patent to respondent Madolaria was not legally met by petitioner in her action for the cancellation of
the patent. The findings and conclusions of the Director of Patent were reiterated and affirmed by the Court of Appeals.
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.
The validity of the patent issued by the PPO 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 PPO.
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 model and such action must not be interfered with in the absence of
competent evidence to the contrary.