2. GR NO.
175769-70 JANUARY 19, 2009
ABS-CBN BROADCASTING CORPORATION, petitioner
v.
PHILIPPINE MUNTIMEDIA SYSTEM, INC., CESAR REYES, FRANCIS CHUA,
MANUEL ABELLADA, RAUL DE MESA, AND ALOYSHIUS COLAYCO,
respondents
YNARES- SANTIAGO, J.:
FACTS:
PMSI is an operator of Dream Broadcasting System which delivers a
digital direct to home television satellite to its subscribers all over the
Philippines. It was granted franchise by the Provisional Authority by the NTC
to install, operate, and maintain a nationwide DTH satellite service.
When it started its operation, it offered as part of its program line-up
programs such as ABS-CBN channel 2 and 23, NBN, Channel 4, ABC, Channel
9, IBC 13, etc. Pursuant to Memorandum Circular 4-088-88, all cable
television system operators operating within the Grade A and B contours to
carry out the television signals of the authorized broadcast stations.
ABS-CBN demanded that PMSI cease and desist from rebroadcasting
Channel 2 and 23, but PMSI contended that the rebroadcasting was in
accordance with the authority granted by NTC.
There were negotiations for settlement but it was terminated by ABS-
CBN. It then filed with the IPO a complaint for Violation of Laws involving
Property Rights with prayer of a TRO and or a Writ of Preliminary injunction.
It alleged that the rebroadcasting is a violation of ABS-CBN’s Copyright and
broadcasting rights.
The Bureau of Legal Affairs (BLA) of the IPO granted the application
for a TRO, thus PMSI suspended its retransmission of Channel 2 and 23 and
likewise filed a petition for certiorari with the CA.
PMSI filed with the BLA a manifestation reiterating that it is subject to
the must-carry rule under Memorandum Circular No. 04-08-88 of the NTC,
along with the letter from NTC Commissioner Borje mandating respondent to
comply with the said memorandum.
The BLA rendered a decision finding that PMSI infringed the
broadcasting rights and copyright of ABS-CBN and ordered the permanent
cease and desist from rebroadcasting the subject channels.
On appeal, the Director-General of the IPO reversed and set aside the
decision of the BLA. This was sustained by the CA.
ISSUE:
Whether or not there exist a violation of Copyright Laws in
rebroadcasting of the subject channels 2 and 23.
HELD:
No. In the present case, the respondent does not claim to be the
origin of the programs broadcasted by ABS-CBN. It merely carried the
existing signals of the appellee. It did not produce, select or determine the
programs to be shown in these channels.
When a broadcaster transmits, the signals are scattered or dispersed
in the air. Anybody may pick-up these signals. There is no restrictions as to
its number, type or class of recipients. To receive the signals, there is no
required fee for subscription. The only limitation to such dispersal of the
signals in the air is the technical capacity of the transmitters and other
equipment employed by the broadcaster.
The SC agreed with the findings of the Director-General that there is
no infringement since there was no rebroadcasting, because rebroadcasting
as defined under the Rome Convention is the simultaneous broadcasting by
one broadcasting organization of the broadcast of another broadcasting
organization. PMSI merely carries out or retransmits the same signal created
by ABS-CBN. Petition DENIED.
Maguan vs. Court of Appeals, 146 SCRA 107
FACTS:
Petitioner Rosario C. Maguan is doing business under the firm name and style
of SWAN MANUFACTURING" while private respondent Susana Luchan is
likewise doing business under the firm name and style of "SUSANA LUCHAN
POWDER PUFF MANUFACTURING."
The 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.
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.
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. It having
denied the Motion for Reconsideration, the private respondent filed a petition
for certiorari before the Court of Appeals.
The Preliminary injunction issued by the trial court was affirmed by the CA
but it later on dismissed the petition and set aside the preliminary injunction
previously issued by the trial court.
ISSUE: Whether Maguan has a right to file an action before the CFI for
injunction due to infringement of her patent.
HELD:
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 (Sec. 42, R.A. 165).
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.
The question then in the instant case is whether or not the evidence
introduced by private respondent herein is sufficient to overcome said
presumption. 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.
As pointed out by said appellate court said evidence appeared not to have
been considered at all by the court a quo for alleged lack of jurisdiction, on
the mistaken notion that such question is within the exclusive jurisdiction of
the patent office. 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.
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.
Vargas vs. F.M. Yaptico & Co., 40 Phil 195
Thus, more specifically, under American Law from which our Patent Law was Facts:
derived 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 Plaintiff Angel Vargas, a farmer, was issued patents by the United States
beyond question. Patent Office for his so-called invention of an improved adjustable plow with
The issuance of letters patent, standing alone, is not sufficient to support the use his own native plow. A certified copy of the patent was filed in the
such drastic relief. In cases of infringement of patent no preliminary Division of Patents, Copyrights, and Trademarks of the Executive Bureau,
injunction will be granted unless the patent is valid and infringed beyond Government of the Philippine Islands.
question and the record conclusively proves the defense is sham.
For failure to determine first the validity of the patents before aforesaid Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business
issuance of the writ, the trial court failed to satisfy the two requisites in Iloilo City, was a manufacturer of plow parts. It produced points, shares,
necessary if an injunction is to issue, namely: the existence of the right to be shoes, and heel pieces in a considerable amount adapted to replace worn-out
protected and the violation of said right. 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.
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.

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.
Vargas vs. Chua, 57 Phil 206
FACTS:
The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal from the
judgment of the Court of First Instance of Manila, which held in favor of
Vargas and against Chua - to henceforth abstain from making,
manufacturing, selling or offering for 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 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 profitsobtained by them from the sale of said plows from September 2,
1924, to pay himdamages 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 fromthe
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 apatent may be obtained, or if, on the contrary, it is
substantially the same plow represented byExhibit 3-Chua the patent for
which was declared null and void in the aforementioned case ofVargas vs. F.
M. Yaptico & Co., supra.We have carefully examined all the plows presented
as exhibits as well as the designsof those covered by the patent, and we are
convinced that NO SUBSTANTIALDIFFERENCE EXISTS BETWEEN THE PLOW,
Exhibit F, and the plow, Exhibit 3-Chua whichwas 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
ismovable 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 improvementwhatever has been
made on the latest model, for the same working and movementof 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 whichas
has already been stated, was adjustable and movable.
the appellee is not entitled to the protection he seeks for the simple reason
that hisplow, 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 thiscountry and had been in use in many parts of the
Philippine Archipelago, especially inthe Province of Iloilo, long before he
obtained his last patent.
Frank vs. Kosuyama, 59 Phil 206
FACTS: This action brought by the plaintiffs herein originated from patent no.
1519579 on improvement inhemp stripping machines issued by the US Patent
Office (USPO) on December 16, 1924 and registered in theBureau 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 andselling similar machines. Plaintiff appealed from
the judgment rendered by the trial court dismissing theircomplaint. In the
amended complaint, plaintiffs alleged that their hemp stripping machines, for
which theyobtained a patent, have the following characteristics: “A stripping
head, a horizontal table, a stripping knifesupported upon such table, a
tappering spindle, a rest holder adjustably secured on the table portion, a
leverand means of compelling the knife to close upon the table, a pallet or
rest in the bottom of the table, a resilientcushion under such palletor rest.”
Despite the fact that they filed an amended complaint from which the
“spindle” or conical drum, which wasthe only characteristic feature of the
machine mentioned in the original complaint, was eliminated,
plaintiffsinsisted that the said part constitutes the essential difference
between the machine in question and othermachines 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 machinesalready in use at the time. It cannot be said
that they have invented the ‘spindle’ as this was already knownsince the year
1909 or 1910. Neither it can be said that they have invented the stripping
knife and thecontrivance which controls the movement and pressure thereof
on the ground that stripping knives togetherwith their control sets were
already in actual use in the different stripping machines long before their
machineappeared. Neither can it be said that they invented the fly wheel
because that part or piece thereof, soessential in every machine from time
immemorial, was already known and actually employed in hempstripping
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 toallow 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 plaintiffsdoes not constitute an invention on the
ground that it lacks the elements of novelty, originality andprecedence. In
fact, before the plaintiffs herein obtained their patent, they themselves had
already publiclyused the same kind of machine for some months, at least,
and, various other machines, having in general, thesame 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 ofthe plaintiffs came into existence.
Also, Adrian de Icsiar applied for a patent on an invention which resulted in
the rejection by the USPO of theplaintiffs' original application for a patent on
the so called “spindle” or conical drum which was then in actualused 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
fromtheir application.
Plaintiffs relied on Frank and Gohn vs. Benito where it was held that the
defendant infringed upon the patentof the therein plaintiffs. However, such
case cannot be invoked as a precedent to justify a judgment in favor ofthe
plaintiffs on the ground that the facts in one case entirely different from
those in the other. In the formercase, defendant did not set up the same
special defenses as those alleged by the herein defendant in hisanswer and
the plaintiffs therein confined themselves to presenting the patent where the
“spindle” wasmentioned. The court held that it was one of the essential
characteristics that was imitated or copied by thethen defendant.
Herein, it is obvious that the “spindle” is not an integral part of the machine
patented by the plaintiffs on theground 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
FACTS: Conrado G. de Leon filed in the CFI of Rizal at Quezon City a
complaint for infringement of patent againstDomiciano A. Aguas and F. H.
Aquino and Sons alleging that being the original first and sole inventor of
certain newand useful improvements in the process of making mosaic pre-
cast tiles, he was lawfully granted a patent (Patent No.658). The said
invention was new, useful, not known or used by others in the country.He
alleged that Aguas infringed the patent by making, using and selling tiles
embodying said patent invention and F.H. Aquino & Sons is guilty of
infringement by making and furnishing to the defendant Domiciano A. Aguas
theengravings, castings and devices designed and intended of tiles
embodying his patented invention.He has given notice to the defendants of
their said acts of infringement and requested them to desist, but,
defendantshave refused and neglected to desist and have disregarded such
request.He sought for the issuance of a preliminary injunction, which was
subsequently granted.Aguas filed his answer denying the allegations of the
plaintiff and alleging that: the plaintiff is neither the original firstnor sole
inventor of the improvements in the process of making mosaic pre-cast tiles,
the same having been used byseveral tile-making factories in the Philippines
and abroad years before the alleged invention by de Leon. He furtheralleged
that that (a) the invention of plaintiff is neither inventive nor new, hence, it is
not patentable, (b) defendant hasbeen granted valid patents on designs for
concrete decorative wall tiles; and (c) that he cannot be guilty ofinfringement
because his products are different from those of the plaintiff.RTC ruled in
favor of de Leon. On appeal, CA affirmed the RTC decision.
ISSUE:Whether the alleged invention or discovery of respondent is
patentable.
HELD:Yes.
caused by theinclination of the protrusions of the patented moulds is for the
purpose of facilitating the removal of the newlyprocessed tile from the female
die. Evidently, appellee's improvement consists in the solution to the old
criticalproblem by making the protrusions on his moulds attain an optimum
height, so that the engraving thereon would bedeep enough to produce tiles
for sculptured and decorative purposes, strong optimum thickness of
appellee's newtiles of only 1/8 of an inch at the deepest easement (Exhs. "D"
and "D-1") is a most critical feature, suggestive ofdiscovery and
inventiveness, especially considering that, despite said thinness, the freshly
formed tile remains strongenough for its intended purpose.

The petitioner questioned the validity of the patent of the private respondent,
Conrado G. de Leon, on the ground thatthe process, subject of said patent, is
not an invention or discovery, or an improvement of the old system of
makingtiles. It should be noted that the private respondent does not claim to
be the discoverer or inventor of the old processof tile-making. He only claims
to have introduced an improvement of said process. In fact, Letters Patent
No. 658 wasissued by the Philippine Patent Office to the private respondent,
Conrado G. de Leon, to protect his rights as theinventor 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.
CA found that 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
notmerely 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 thedurability
of the finished product preventing the flaking off of the edges. The easement
Manzano vs. Court of Appeals, 278 SCRA 688
FACTS
Petitioner Manzano filed before the Philippine Patent Office an action for the
cancellation of patent for a gas burner registered under the name of
respondent Madolaria, who assigned the letters patent to United Foundry.
Manzano claimed, among others, that the gas burner was not inventive, new
or useful and that Madaloria was not the original and actual inventor thereof.
Manzano also alleged that the gas burner in question had already been in use
and on sale in the Philippines for more than a year prior to respondent’s filing
for the application. To support her contention, Manzano presented two
undated brochures of two different Gas companies which allegedly depicted
an identical gas burner with that covered in Madolaria’s letters patent.
Madolaria’s husband testified that Madolaria, after customers’ complaint,
devised a way to solve the defects in the gas burners, which is now the
subject of this case.
only to clear and cogent evidence that the patentee was the original and first
inventor.
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.

Citing the petitioner’s inability to convincingly establish that the patented
utility model was not novel, the Director of Patents denied the petition for
cancellation, which was affirmed by the CA. Hence, this appeal.
ISSUE
Whether or not Madolaria’s patented utility was novel.
RULING
YES.
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 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” x x x, the Philippine Patent Office found her invention novel and
patentable. The issuance of such patent creates a presumption which yields