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MANZANO v CA 278 SCRA 688 (1997) 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. FACTS: Angelita Manzano filed PPO an action for the cancellation of Letters Patent 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. 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 and that after her husband’s 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 two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel Francisco. 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. Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. Petitioner elevated the decision of the Director of Patents to the Court of Appeals which affirmed the decision of the Director of Patents. Hence, this petition for review on certiorari. ISSUE: Whether the dismissal is proper where the patent applied for has no substantial difference between the model to be patented and those sold by petitioner. HELD: 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. However, 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. 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. 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. Petition DISMISSED.
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novelty or prior use. otherwise it will be compelled to take judicial action Private respondent replied stating that her products are different and countered that petitioner's patents are void because the utility models applied for were not new and patentable and the person to whom the patents were issued was not the true and actual author nor were her rights derived from such author. and the same is in due form. 165). (2) Whether or not the Court a quo committed grave abuse of discretion in the issuance of a writ of preliminary injunction. 37. Extension UM109. the questions of invention. HELD: 1) The first issue has been laid to rest in a number of cases where the Court ruled that "When a patent is sought to be enforced. or selling by any person without the authorization of the patentee constitutes infringement of the patent (Sec. 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.” And holder petitioner informed private respondent that the powder puffs the latter is manufacturing and selling to various enterprises particularly those in the cosmetics industry. and each of them. In challenging these Orders private respondent filed a petition for certiorari with the respondent court but was denied. there is even less reason to doubt that the trial court has jurisdiction to declare the patents in question invalid. Petitioner filed a complaint for damages with injunction and preliminary injunction against private respondent with the then Court of First Instance of Rizal The trial court issued an Order granting the preliminary injunction prayed for by petitioner. But where the plaintiff introduces the patent in evidence. MS | 2 . As pointed out by said appellate court said evidence appeared not to have been considered at all by the court a quo for alleged lack of jurisdiction. SOTELO. the corresponding writ was subsequently issued. Hence this petition. The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by competent evidence this legal presumption. are open to judicial examination. ISSUE: (1) Whether or not in an action for infringement the Court a quo had jurisdiction to determine the invalidity of the patents at issue which invalidity was still pending consideration in the patent office. on the mistaken notion that such question in within the exclusive jurisdiction of the patent office. there is created a prima facie presumption of its correctness and validity." Under the present Patent Law. 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. 1184. MAGUAN v CA 146 SCRA 107 (1986) 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. A patentee shall have the exclusive right to make. 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. R. resemble Identical or substantially Identical powder puffs of which the former is a patent holder under Registration Certification Nos. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be correct. 2) The burden of proof to substantiate a charge of infringement is with the plaintiff. petitioner explained such production and sale constitute infringement of said patents and therefore its immediate discontinuance is demanded. Consequently.PATENTS: DIGESTS (3) Whether or not certiorari is the proper remedy.A. Extension UM-110 and Utility Model No. use and sell the patented article or product and the making. using. The question then in the instant case is whether or not the evidence introduced by private respondent herein is sufficient to overcome said presumption.
that in SOTELO. originality and precedence and for the patentee to be entitled to protection. the exact question is whether the defendant has assumed the burden of proof as to anyone of his defenses As herein before stated. Under the circumstances. the question of the validity of the patent is one for judicial determination. One such defense. however. Defendant's contention is. on which the judgment of the lower court is principally grounded. pp. namely: the existence of the right to be protected and the violation of said right. shares. v. On this point the trial court reached the conclusion that "the patented plow of the plaintiff. it affords a prima facie presumption of its correctness and validity. 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. and since a patent has been submitted. Exhibit 2. Quintillan. the trial court nonetheless issued the writ of preliminary injunction which under the circumstances should be denied." In thus finding. or discovery. in the form. or prior use. A second line of defense relates to the fact that defendant has never made a complete Vargas plow. the validity of the patent when issued. Accordingly. respondent appellate court is of the view that ordinary appeal is obviously inadequate. consequently. 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. therefore. will be fatal to. 9 of the Patent Law) before the date of his application for his patent. Exhibit D. As correctly observed by respondent Court of Appeals. "since sufficient proofs have been introduced in evidence showing a fair question of the invalidity of the patents issued for such models. concerns the element of novelty. 194-199). its production does not presuppose the exercise of the inventive faculty but merely of mechanical skill. since the Vargas plow does not appear to be such a "combination" as contains a novel assemblage of parts exhibiting invention. Rollo. (Buayan Cattle Co. invention. which does not give a right to a patent of an invention under the provisions of the Patent Law. and to which appellant devotes the major portion of his vigorous argument. it appears obvious that the trial court committed a grave abuse of discretion which makes certiorari the appropriate remedy. "the question of invention. are open to judicial examination. the defendant relies on three special defenses. All these notwithstanding. As found by respondent Court of Appeals. it is but right that the evidence be looked into." (Rollo.. the trial court failed to satisfy the two requisites necessary if an injunction is to issue. 128 SCRA 276). Where. except in the material. It will be noted that the validity of petitioner's patents is in question for want of novelty. evaluated and determined on the merits so that the matter of whether the patents issued were in fact valid or not may be resolved. Under the above established principles. The burden then shifts to the defendant to overcome by competent evidence this legal presumption . for the critical and expert examination of the invention by the United States Patent Office. shoes. (List of Exhibits.With all due respect. For failure to determine first the validity of the patents before aforesaid issuance of the writ. that gives existence to the right to a patent. novelty.PATENTS: DIGESTS It has been repeatedly held that an invention must possess the essential elements of novelty . VARGAS v YAPTICO & CO 40 PHIL 195 HELD: (1) When a patent is sought to be enforced. MS | 3 . and each of them. is not different from the native plow. Private respondent contends that powder puffs Identical in appearance with that covered by petitioner's patents existed and were publicly known and used as early as 1963 long before petitioner was issued the patents in question. 286-287). but only points." The burden of proof to substantiate a charge of infringement is with the plaintiff. if it is in due form. to serve as repairs. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. and heel pieces. the plaintiff introduces the patent in evidence. the injunctive order of the trial court is of so general a tenor that petitioner may be totally barred from the sale of any kind of powder puff. pp. the court may have been right. in the weight and the grade of the result. the invention must be new to the world. Inc.
would enter into such a conspiracy. Victor Talking Machine Co. the court found. the invention must be new to the world. the court found.William MacMurray. Even under the more rigorous doctrine of Leeds & Catlin Co. Although we have spent some time in arriving at this point. and thus permissible. 1908. Ch. 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.. a mechanic of the "Taller Visayas" of Strachan and MacMurray. is to suppose the improbable. (See 20 R. the patent is invalid. who denied that Ko Pao Ko made fifty plows one of which is Exhibit 4. it was always the rule. testified that he had received plows similar to Exhibits D. MS | 4 . "it has been repeatedly held by this court that a single instance of public use of the invention by a patentee for more than two years before the date of his application for his patent will be fatal to the validity of the patent when issued. Justice Story and other authorities. vs. committing ourselves as to the first two defenses. testified that he had bought twenty Vargas plows. for Araneta and Vargas in 1905. the inventor. Under the English Statute of Monopolies (21 Jac. 5. partial injuries. or on the Vargas plow. an employee in the office of Attorney John Bordman." corroborated the evidence of the witness Saul by the exhibition of the account against Vargas and Araneta wherein. that to entitle a man to a patent. George Ramon Saul. the question in the case is single and can be brought to a narrow compass. If.It is hardly believable that five or six witnesses for the defense would deliberately perjure themselves under oath. 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 .12. The third defense is. Ko Pao Ko. was a plow completely identical with that for which the plaintiff had received a patent. from Bonifacio Araneta.Without. he had knowledge of a transaction wherein Vargas and Araneta desired to obtain money to invest in a plow factory. is a plow identical with that patented by Vargas. L. who denied that Roces purchased the Vargas plow in 1907. and Exhibit 5. partner of Vargas in the plow business. yet having reached it. Plaintiff introduced his books to substantiate his oral testimony . are made this is only re-fitting the machine for use. 1793." On the facts. whether they occur from accident or from wear and tear. testified that on September 21.. for instance. more than two years before the application for the patent. but with the belief that since it has been shown that the invention was used in public at Iloilo by others than Vargas. A difference has long been recognized between repairing and reconstructing a machine. 3). proprietor of the "Taller Visayas. of which Exhibit 5 was one. 1912." Salvador Lizarraga. (. Alfred Berwin. Exhibit 4." Against all this. As said by the United States Supreme Court. a clerk in a business house. that under the provisions of the statute.) We do so with full consciousness of the doubt which arose in the mind of the trial court.PATENTS: DIGESTS common with other foundries. appears the item "12 new soft steel plow shares forged and bored for rivets as per sample. later amended to be as herein quoted. a farmer. 1907. and this in itself corroborative of Roces' testimony. and 4. we propose to base our decision on the one just suggested as more easily disposing of the case. of which Exhibit 4 is one. in December. as stated by Lord Coke. 325). and under the United States Patent Act of February 21.S. SOTELO. it may be possible that all the defendant has done is to manufacture and sell isolated parts to be used to replace wornout parts. One might. of different nationalities. 1908. therefore. testified that he had made Vargas plow points and shares of the present form upon order of Araneta and Vargas in 1906 and 1907 . he has for years cast large numbers of plow points and shares suitable for use either on the native wooden plow.. was the testimony of the plaintiff Angel Vargas who denied that Saul could have been seen the Vargas plow in 1907 and 1907. 11401142. who denied that Lizarraga could have acted as an agent to sell two plows in November. The minor exception. 1908. a blacksmith. for sale on commission on May. but without share and mould-board. C. testified that he had made fifty plow frames in 1905 for Vargas and Araneta. but that all together. we think the testimony shows such a public use of the Vargas plow as to render the patent invalid Nicolas Roces. under date of December 13. to a machine for agricultural purposes. 213 U. who denied any remembrance of the loan mentioned by Berwin as having been negotiated in September. 1908. 1906.
In the light of sound logic. however. which is contrary to the principles of interpretation in matters relating to patents. FRANK v KOSUYAMA 59 PHIL 206 HELD: 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. For the purposes of this appeal. VARGAS v CHUA 57 PHIL 784 HELD: The appellee is not entitled to the protection he seeks for the simple reason that his plow. or rather a copy thereof. So ordered. we are not certain but that appellee has proved every one of his defenses. 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. 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. 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. The above-cited case. 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. by the consent and allowance of Vargas. Exhibit F. and because. 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. wherein it was held that the therein defendant really infringed upon the patent of the therein plaintiffs. Such being the case. 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. To conclude. Benito (51 SOTELO. with the costs against the plaintiffsappellants. wherein the "spindle" was mentioned. In the case under consideration. 1908. with the costs of this instance against the appellant. 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. 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. there was. although on a different ground. a public use of the invention covered by them. 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. or before July 22. Were we to stress to this part of the machine. we must sustain the judgment of the lower court. 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. In support of their claim the plaintiffs invoke the doctrine laid down by this court in the case of Frank and Gohn vs. the judgment appealed from is hereby affirmed. without prejudice to the determination of the damages resulting from the granting of the injunction. MS | 5 . Phil.PATENTS: DIGESTS Tested by the principles which go to make the law. cannot be invoked as a precedent to justify a judgment in favor of the plaintiffsappellants on the ground that the facts in one case entirely different from those in the other. 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. 712). suffice it to hold that the defendant is not civilly liable for alleged infringement of the patent in question.. as evidenced by the aforesaid Exhibit 41. we would be giving the patent obtained by the plaintiffs a wider range than it actually has. 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. So ordered. does not constitute an invention in the legal sense. Wherefore.
M. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. The technical staff of the Philippines Patent Office. therefore. the same type of plows had been manufactured in this country and had been in use in many parts of the Philippine Archipelago. 1950. it is sufficient that the application be made after the expiration of three years from the date of the grant of the patent and that the Director should find that a case for granting such license has been made out. composed of experts in their field. the privilege invoked by him is untenable and the patent acquired by him should be declared ineffective. consequently. novelty. novelty and usefulness of the improved process therein specified and described are matters which are better SOTELO. therefore. and so the conditions for the grant of the license had been fulfilled. the question of the validity of the patent is one for judicial determination. for the critical and expert examination of the invention by the United States Patent Office. have. The Claims and Specifications of Patent No. or prior use." The burden of proof to substantiate a charge of infringement is with the plaintiff. PARKE DAVIS & CO v DOCTOR’S PHARMA 124 SCRA 115 HELD: Each of the circumstances mentioned in the law as grounds stands alone and is independent of the others. 50 covering said substance were granted to Parke Davis & Company on February 9. And from them we can see that in order that any person may be granted a license under a particular patented invention relating to medicine under Section 34(d). the process and/or improvement being patentable. F. De Leon never claimed to have invented the process of tilemaking. Since in the instant case it is admitted by petitioner that the chemical substance chloramphenicol is a medicine. Yaptico & Co. long before he obtained his last patent. does not constitute an invention and. are open to judicial examination. we cannot escape the conclusion that the plow upon which the appellee's contention is based. the exact question is whether the defendant has assumed the burden of proof as to anyone of his defenses. 658 show that although some of the steps or parts of the old process of tile making were described therein. 658 was legally issued. no error in the decision of the Director of Patents on this aspect of the controversy. it affords a prima facie presumption of its correctness and validity. we said: When a patent is sought to be enforced. The burden then shifts to the defendant to overcome by competent evidence this legal presumption. Where. while Letters Patent No. In view of the foregoing. We find. "the questions of invention. With all due respects. verily the period that had elapsed then is more than three years.PATENTS: DIGESTS according to the evidence. by the issuance of the patent in question. and the instant application for license under said patent was only filed in 1960. 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. We repeat that in view of the evidence presented. if it is the due form. The contention of the petitioner Aguas that the letters patent of de Leon was actually a patent for the old and nonpatentable process of making mosaic precast tiles is devoid of merit. AGUAS v DE LEON 111 SCRA 238 HELD: The validily of the patent issued by the Philippines Patent Office in favor of the private respondent and the question over the inventiveness. determined by the Philippines Patent Office. however. In the above mentioned case of Vargas vs. with costs of this instance against the appellee.. accepted the thinness of the private respondent's new tiles as a discovery. the plaintiff introduces the patent in evidence. The judgment appealed from is hereby reversed and the appellants are absolved from the complaint. and since a patent has been submitted. and each of them. and particularly of the examination we have made of the plows. there were novel and inventive features mentioned in the process. especially in the Province of Iloilo. this Court finds that Patent No. So ordered. MS | 6 .
MS | 7 .PATENTS: DIGESTS SOTELO.
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