Patents Digests

August 15, 2018 | Author: maantutitot | Category: Patent, Patent Infringement, Glossary Of Patent Law Terms, Evidence, Injunction
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PATENTS: DIGESTS MANZANO v CA 278 SCRA 688

  The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. sciences. The function function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent syst system em is to encou encourag rage e diss dissem emina inatio tion n of infor informa mati tion on concerning discoveries and inventions. FACTS: Angeli Angelita ta Manz Manzan ano o file filed d PPO PPO an actio action n for for the cancellation cancellation of Letters Patent Patent for a gas burner registered registered in th e n am ame o f resp on on de de nt nt Melec ia ia Mad ol olar ia ia who subseque subsequently ntly assigned assigned the letter letters s patent patent to New United United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). brevity). Petiti Petitioner oner alleged alleged that (a) the utility utility model model covered covered by the letters letters patent, patent, in this case, case, an LPG gas burn burner er,, was was not not inv inventi entive ve,, new new or usef useful ul;; (b) the specification of the letters patent did not comply with the requir requirem ement ents s of Sec. Sec. 14, 14, RA No. No. 165, 165, as amend amended; ed; (c) respondent Melecia Madolaria was not the original, true and actua actuall invent inventor or nor nor did did she she deriv derive e her her rights rights from the origin original, al, true true and and actua actuall invent inventor or of the the utilit utility y mode modell covered covered by the letters letters patent patent;; and, (d) the letters letters patent patent was secured by means of fraud or misrepresentation.   Testifying Testifying for herself herself petitioner petitioner narrated 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 shop she organiz organized ed Besco Besco Metal Metal Manufa Manufactur cturing ing (BESCO (BESCO METAL, for brevity) for the casting of LPG burners one of  which which had the configur configurati ation, on, form form and compone component nt parts parts similar to those being manufactured by UNITED FOUNDRY. Peti Petiti tione onerr pres present ented ed two two (2) (2) other other witne witness sses es,, 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 petitioner was not able to establish establish convincingly convincingly that the pate patent nted ed util utilit ity y mode modell of priv privat ate e resp respon onde dent nt was was anticipated. Petitioner elevated the decision of the Director of  Patents Patents to the Court of Appeals which affirmed 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 element of novelt novelty y is an essenti essential al requisit requisite e of the patentab patentabilit ility y of an inventi invention on or discov discovery ery.. If a device device or proces process s has has been been known known or used used by others others prior prior to its its invention invention or discovery discovery by the applicant, an application for a patent therefor therefor should be denied; and if the application 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, original originality ity and preceden precedence, ce, and for the patente patentee e 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 matters which are better determined determined by the Patent Office. Office. The technical technical staff of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in question accepted accepted private private respond respondent ent’s ’s model model of gas burner as a discove discovery. ry. There There is a presump presumptio tion n that the Office has correctly determined the patentability of the model and such actio action n must must not not be inte interf rfere ered d with with in the abse absence nce 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 subst substan anti tial al evide evidence nce.. Peti Petiti tione onerr has has fail failed ed to show show compel compellin ling g groun grounds ds for for a reve revers rsal al of the the findi findings ngs and and conclusions of the Patent Office and the Court of Appeals. Petition DISMISSED. MAGUAN v CA 146 SCRA 107

FACTS: Petitioner is doing business under the firm name and and styl style e of SWAN SWAN MANU MANUFA FACT CTUR URIN ING" G" whil while e priv privat ate e respondent is likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING.” And holder petitio petitioner ner informe informed d private private respond respondent ent that the powder powder puffs puffs the latter is manufa manufactur cturing ing and selling selling to various various enterpri enterprises ses particu particularl larly y those those in the cosmeti cosmetics cs indus industr try, y, resem resembl ble e Ident Identica icall or subs substa tanti ntial ally ly Ident Identic ical al powder puffs of which the former is a patent holder under Registration Certification Nos. Extension UM-109, Extension UM-110 UM-110 and Utility Utility Model Model No. 1184; 1184; petitio petitioner ner explaine explained d such producti production on and sale sale constit constitute ute infringe infringemen mentt of said said patents patents and theref therefore ore its immedia immediate te discont discontinua inuance nce is demanded, otherwise it will be compelled to take judicial action Priv Privat ate e resp respon onde dent nt repl replie ied d stat statin ing g that that her her produc products ts are diffe differe rent nt and and counte countered red that that petit petitio ioner ner's 's patents are void because the utility models applied for were not new and patenta patentabl ble e and the perso person n to whom whom the the patents were issued was not the true and actual author nor were her rights derived from such author. Peti Petiti tione onerr file filed d a compl complai aint nt for for dama damages ges with with injunc injuncti tion on and and preli prelimi mina nary ry injunc injuncti tion on agains againstt priv privat ate e respondent with the then Court of First Instance of Rizal   The The tria triall cour courtt issu issued ed an Orde Orderr gran granti ting ng the the prel prelim imin inar ary y inju injunc ncti tion on pray prayed ed for by peti petittione ioner. r. Conseque Consequently ntly,, the correspo correspondin nding g writ writ was subseq subsequent uently ly issued. In challeng challenging ing these these Orders Orders private private respond respondent ent filed a petition for certiorari with the respondent court but was denied. Hence this petition. ISSUE: (1) Whether or not in an action for infringement the Court a jurisdiction tion to determ determine ine the invalidi invalidity ty of the quo had jurisdic pate patent nts s at issu issue e whic which h inva invali lidi dity ty was was stil stilll pend pendin ing g consideration in the patent office. (2) Whether or not the Court a quo committed grave abuse of discre discreti tion on in the the issu issuan ance ce of a writ writ of prelim prelimina inary ry injunction. (3) Whether or not certiorari is the proper remedy. 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

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PATENTS: DIGESTS 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 reaso reason n to doubt doubt that that the the tria triall court court has has juris jurisdic dicti tion on to declare declare the patents patents in questio question n invalid invalid.. A patentee 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. 2) The The burd burden en of proo prooff to subs substa tant ntia iate te a char charge ge of  infringe infringemen mentt is with with the plaintif plaintiff. f. But where the plaintif plaintiff  f  introduces the patent in evidence, and the same is in due form, form, there there is created created a   prima facie presumpt presumption ion of its correctness and validity. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be corr correc ect. t. The The burd burden en of goin going g forw forwar ard d with with the 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. After a careful careful review of the evidence consisting consisting of  64 exhibits and oral testimonies of five witnesses presented by private respondents before the Court of First Instance before the Order of preliminary injunction was issued as well as those presented by the petitioner, respondent Court of  Appeals was satisfied 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 mist mistak aken en noti notion on that that such such quest question ion in withi within n the exclusive jurisdiction of the patent office. It has been repeatedly held that an invention invention must possess the essential elements of novelty , originality and prec preced eden ence ce and and for for the the pate patent ntee ee to be enti entitl tled ed to prot protec ecti tion on,, the the inve invent ntio ion n must must be new new to the the worl world. d. Accordingly, Accordingly, a single instance instance of public use of the invention 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. It will will be noted noted that the validit validity y of petitio petitioner' ner's s pate patent nts s is in ques questi tion on for for want want of nove novelt lty. y. Priv Privat ate e resp respon onde dent nt cont conten ends ds that that powd powder er puff puffs s Iden Identi tica call in appea appeara rance nce with with that that cover covered ed by petit petitio ioner ner's 's patent patents s existed existed and were publicly known and used as early as 1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199). As correctly observed by respond respondent ent Court Court of Appeals Appeals,, "since "since suffic sufficient ient proofs proofs have been introduced in evidence showing a fair question of  the invalidity of the patents issued for such models, it is but right right that that the the evide evidence nce be look looked ed into, into, eval evaluat uated ed and and determined determined on the merits so that the matter matter of whether the patents issued were in fact valid or not may be resolved." (Rollo, pp. 286-287). All All thes these e notw notwit iths hsta tand ndin ing, g, the the tria triall cour courtt nonetheless issued the writ of preliminary injunction which under the circumstances should be denied. For failure failure to determi determine ne first first the validity validity of the patents before aforesaid aforesaid issuance of the writ, the trial court failed to satisfy the two requisites necessary if an injunction is to issu issue, e, name namely ly:: the the exis existe tenc nce e of the the righ rightt to be protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).

Under the above established principles, it appears obvious obvious that the trial court commit committed ted a grave grave abuse abuse of  discretion which makes certiorari the appropriate remedy. As foun found d by respo responde ndent nt Court Court of Appea Appeals ls,, 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. Under the circumstances, respondent appellate court court is of the the view view that that ordina ordinary ry appe appeal al is obvio obviousl usly y inadequate. VARGAS v YAPTICO & CO 40 PHIL 195

FACTS: Angel Angel Varga Vargas, s, a farm farmer er acquai acquainte nted d with with local local conditions and alive to the commercial possibilities, took it upon himself to produce, with the native plow as the model, an improved, adjustable plow. He made application for a United States patent to cover his so-called invention. The letters patent were issued by the United States Patent Office in favor of Vargas .Acertified .Acertified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine Islands. The patent and its registry was also published in the newspaper, El Tiempo. Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo, Philippine Islands. On the plows there was first stamped the words "Pat "Patent ent Appli Applied ed For, For,"" later later afte afterr the patent patent had had been been granted, changed to "Patented Mar. 12, 1912." Ninety per cent of the plows in use in the Visayas (Iloilo and vicinity) are said to be Vargas plows. During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the foundry business in the City of Iloilo. It openly held itself out as a manufacturer of plow parts. It has in fact produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace wornout parts of the Vargas plow. Such was the existing situation when, in the early part of 1918, the owner of the patent, and thus the proper party to institute judicial proceedings, began action in the Court Court of Firs Firstt Insta Instance nce of Iloilo Iloilo to enjoi enjoin n the the alleg alleged ed infringement of U.S. Patent No. 1020232 by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by reas reason on of this this infrin infringe geme ment nt.. The The court court issue issued d the prelimi preliminary nary injunct injunction ion as prayed prayed for. for. The defenda defendant, nt, in addition to a general denial, alleged, as special defenses, that the patent lacked novelty or invention, that there was no prio priori rity ty of idea ideas s or devi device ce in the prin princi cipl ple e and and cons constr truc ucti tion on of the the plow plow,, and and that that the the plow plow,, whos whose e manufacture it was sought to have enjoined by the plaintiff, had already been in public use for more than two years before before the applicat application ion of the plaintiff plaintiff for his patent. patent. The parties parties subsequ subsequentl ently y entered entered into a stipula stipulation tion that the court should first resolve the question of whether or not there had been an infraction of the patent, reserving the resultant question of damages for later decision. After the taking of evidence, including the presentation of exhibits, the trial judge, the Honorable Antonio Villareal, in a very exhaust exhaustive ive and learned learned decision decision,, rendered rendered judgme judgment nt in favor of the defendant and against the plaintiff, declaring null and without effect the patent in question and dismissing the suit suit with with costs costs against against the plainti plaintiff. ff. The prelimi preliminary nary injunction theretofore issued was dissolved. From this judgment the plaintiff has appealed. ISSUE: (1) The judgmen judgmentt of the trial trial court court in finding the patent patent granted granted plainti plaintiff ff void void for lack of novelty novelty and inventi invention on should be affirmed;

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PATENTS: DIGESTS (2) The patent granted plaintiff is void from the public use of  his plow for over two years prior to his application for a patent, and (3) If the patent is valid, there has been no contributory infringement by defendant. HELD: (1) When a patent is sought to be enforced, "the question of  invention, invention, novelty, or prior use, and each of them, are open to judicial examination." The burden of proof to substantiate a charge charge of infr infring ingem ement ent is with with the the plaint plaintif iff. f. Where Where,, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a   prima facie presumption of its correctness and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be corr correc ect. t. The The burd burden en then then shif shifts ts to the the defe defend ndan antt to overcome overcome by competent competent evidence this legal presumption presumption .With all due respect, therefore, for the critical and expert examination of the invention by the United States Patent Office, the question of the validity of the patent is one for   judi judici cial al dete determ rmina inati tion, on, and since since a patent patent has has been been submitted, the exact question is whether the defendant has assumed the burden of proof as to anyone of his defenses As herein herein before before stated, stated, the defenda defendant nt relies relies on three three special special defenses. defenses. One such defense, defense, on which which the  judgment of the lower court is principally grounded, and to which appellant devotes the major portion of his vigorous argument, argument, concerns the element of novelty, invention, or discovery, that gives existence to the right to a patent. On this point the trial court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not different from the native plow, Exhibit 2, except in the material, in the form, in the weight and the grade of the result, the said differences differences giving it neither a new function nor a new result distinct from the function and the result obtained from the nati native ve plow plow;; cons conseq eque uent ntly ly,, its its prod produc ucti tion on does does not not presuppose presuppose the exercise exercise of the inventive faculty but merely of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law." In thus thus findi finding, ng, the court court may may have have been been right right,, since since the the Vargas plow does not appear to be such a "combination" "combination" as contains a novel assemblage of parts exhibiting invention. A second line of defense relates to the fact that defendan defendantt has never made made a complet complete e Vargas Vargas plow, plow, but only points, points, shares shares,, shoes, shoes, and heel pieces, pieces, to serve serve as repairs. repairs. Defenda Defendant's nt's content contention ion is, that that in common common with with other foundries, he has for years cast large numbers of plow points points and shares shares suitable suitable for use either either on the native wooden plow, or on the Vargas plow. A difference has long been recogniz recognized ed between between repairin repairing g and reconst reconstruct ructing ing a machine. If, for instance, partial injuries, whether they occur from from accid acciden entt or from from wear wear and tear, tear, to a machi machine ne for for agricult agricultural ural purposes, purposes, are made made this is only only re-fitt re-fitting ing the machine for use, and thus permissible. Even under the more rigorous doctrine of Leeds & Catlin Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it may be possible that all the defen defenda dant nt has has done done is to manuf manufact actur ure e and and sell sell isolated parts to be used to replace worn-out parts.   The third defense is, that under the provisions of  the statute, an inventor's creation must not have been in public use or on sale in the United States (and the Philippine Islands) Islands) for more more than than two years years prior prior to his applicati application on .Without, therefore, committing ourselves as to the first two defenses, we propose to base our decision on the one just suggested as more easily disposing of the case. (See 20 R. C. L., 1140-1142.) We do so with full consciousness of the doubt which arose in the mind of the trial court, but with the belief that since it has been shown that the invention was used in public at Iloilo by others than Vargas, the inventor,

more than two years before the application for the patent, the patent is invalid. Although we have spent some time in arriving at this point, yet having reached it, the question in the case is single and can be brought to a narrow compass. Under the English Statute of Monopolies (21 Jac. Ch., 3), and under the Unite United d Stat States es Pate Patent nt Act Act of Febru February ary 21, 21, 1793 1793,, late laterr amended to be as herein quoted, it was always the rule, as stated by Lord Coke, Justice Story and other authorities, that to entitle a man to a patent, the invention must be new to the world. As said by the United States Supreme Court, "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." On the facts, we think the testimony shows such a public use of the Vargas plow as to render the patent invalid Nicolas Roces, a farmer, testified that he had bought twenty Vargas Vargas plows, of which which Exhibit Exhibit 5 was one, in December December,, 1907; and Exhibit 5, the court found, was a plow completely identic identical al with with that that for which the plaintif plaintifff had received received a patent. The minor exception, and this in itself corroborative corroborative of Roces' testimony, is that the handle of plow Exhibit 5 is marked with the letters "A V" and not with the words "Patent Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a business house, testified that he had received plows similar to Exhibits D, 5, and 4, for sale on commission on May, 1908, 1908, from Bonifacio Araneta, partner of Vargas in the plow business. Ko Pao Ko, a blacksmith, testified that he had made fifty plow frames in 1905 for Vargas and Araneta, of which Exhibit 4 is one; Exhibit 4, the court found, is a plow identical with that patented by Vargas, but without share and mould-board. Alfred Berwin, an employee in the office of Attorney John Bordman, testified that on September 21, 1908, he had knowledge of a transaction wherein Vargas and Araneta desired to obtain money to invest in a plow factory factory.. George George Ramon Ramon Saul, Saul, a mechani mechanic c of the "Taller "Taller Visayas" of Strachan and MacMurray, testified that he had made Vargas plow points and shares of the present form upon order of Araneta and Vargas in 1906 and 1907 .William MacMurray, MacMurray, proprietor of the "Taller Visayas," Visayas," corroborated the evidence of the witness Saul by the exhibition of the account against Vargas and Araneta wherein, under date of  December 13, 1906, appears the item "12 new soft steel plow shares forged forged and bored bored for rivets as per sample." sample." Against Against all this, this, was the testim testimony ony of the plaintiff plaintiff Angel Vargas Vargas who denied denied that that Saul could have been seen the Vargas Vargas plow in 1907 and 1907, 1907, who denied denied that Roces Roces purch purchas ased ed the the Vargas Vargas plow plow in 1907 1907,, who denie denied d that that Lizarraga could have acted as an agent to sell two plows in November, 1908, who denied any remembrance of the loan ment mentio ione ned d by Berw Berwin in as havi having ng been been nego negoti tiat ated ed in September, 1908, who denied that Ko Pao Ko made fifty plows one of which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff introduced his books to substantiate his oral testimony .It is hardly believable that five or six witnesses for the defense would deliberately perjure themselves under oath oath.. One One migh might, t, but but that that all all toge togeth ther er,, of diff differ eren entt national nationalitie ities, s, would would enter enter into such a conspir conspiracy acy,, is to suppose the improbable.  Tested by the principles which go to make the law, we think a preponderance of the evidence is to the effect that for more than two years before the application for the original letters patent, or before July 22, 1908, there was, by the consent and allowance of Vargas, a public use of the invention covered by them.  To conclude, we are not certain but that appellee has proved every one of his defenses. We are certain that he has at least demonstrated the public use of the Vargas

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PATENTS: DIGESTS plow over two years prior to the application for a patent. Such being the case, although on a different ground, we must must sust sustai ain n the the judgm judgment ent of the the lowe lowerr court court,, witho without ut prejudic prejudice e to the determ determinat ination ion of the damages damages resulting resulting from the granting of the injunction, with the costs of this instance against the appellant. So ordered.

ISSUE: Whether there is an infringement on the patents HELD:

 The trial court did not decree the annulment annulment of the plaintiffs' patent and the herein defendant-appellee insists that the patent in question should be declared null and void. FRANK v KOSUYAMA We are are of the the opin opinio ion n that that it woul would d be impr improp oper er and and 59 PHIL 206 untimely to render a similar judgment, in view of the nature FACTS: of the action brought by the plaintiffs and in the absence of  Pate Patent nt on impr improv ovem emen entt in hem hemp stri stripp ppin ing g a cross-complaint to that effect. For the purposes of this machine machines, s, issued issued by the United States States Patent Patent Office Office and appeal, suffice it to hold that the defendant is not civilly registered in the Bureau of Commerce and Industry of the liable for alleged infringement of the patent in question. Philipp Philippine, ine, was the origin of this action action brought brought by the In the light of sound sound logic, logic, the plaintiff plaintiffs s cannot cannot plaintiffs plaintiffs herein who prayed that the judgment be rendered insist that the "spindle" was a patented invention on the against against the defendan defendant, t, ordering ordering him thereby thereby to refrain refrain ground gro und that th at said sai d part pa rt of the th e machi ma chine ne was wa s volun vo lunta taril rily y immediately immediately from the manufacture manufacture and sale of machines machines omitted by them from their application, as evidenced by the simi simila larr to the the one one cove covere red d by the patent patent:: to render render an photographic copy thereof (Exhibit 41) wherein it likewise accounting of the profits realized from the manufacture and appea appears rs that that the pate patent nt on Impro Improve ved d Hemp Hemp Strip Strippi ping ng sale of the machines in question; that in case of refusal or Machines was issued minus the "spindle" "spindle" in question. question. Were fail failure ure to rende renderr such such accou accounti nting, ng, the the defend defendant ants s be we to stress to this part of the machine, we would be giving ordered to pay the plaintiffs the sum of P60 as profit on the patent obtained by the plaintiffs a wider range than it each machine machine manufac manufacture tured d or sold sold by him; that upon upon actu actual ally ly has, has, whic which h is cont contra rary ry to the the prin princi cipl ples es of  approval of the required bond, said defendant be restrained interpretation in matters relating to patents. from continuing the manufacture manufacture and sale of the same kind In support of their claim the plaintiffs invoke the of machines; that after the trial the preliminary injunction doctrine laid down by this court in the case of Frank and issued therein be declared permanent and, lastly, that the Gohn vs. Benito (51 Phil., 712), wherein it was held that the said defendant be sentenced to pay the costs and whatever therein defendant really infringed upon the patent of the damages the plaintiffs might be able to prove therein. The therein plaintiffs. It may be noted that the plaintiffs in the action therefore was based upon alleged infringement by former and those of the latter case are the same and that the defendant of the rights and privileges acquired by the the patent then involved is the very same one upon which plaintiffs over the aforesaid patent through the manufacture the present action of the plaintiffs is based. The above-cited and sale by the former of machines similar to that covered case, however, cannot be invoked as a precedent to justify a by the aforesaid patent.  judgment in favor of the plaintiffs-appella plaintiffs-appellants nts on the ground  The plaintiffs appealed from the judgment rendered that the facts in one case entirely different from those in the by the trial court dismissing their complaint, with cost, as other. In the former case the defendant did not set up the well well as the the defend defendan ant' t's s count counter ercla claim im of P10, P10,00 000. 0. The The same sa me speci sp ecial al defens def enses es as those tho se alle al leged ged by the herei herein n defendant did not appeal. defendant in his answer and the plaintiffs therein confined In their amended amended complaint, complaint, the plaintiff plaintiff alleged thems themselv elves es to prese presenti nting ng the the pate patent, nt, or rather rather a copy copy that their hemp stripping machines, for which they obtained thereof thereof,, wherein wherein the "spindl "spindle" e" was mention mentioned, ed, and this a patent, patent, have the followi following ng charact characteris eristic tics: s: "A strippi stripping ng court took for granted their claim that it was one of the head, a horizontal table, a stripping knife supported upon essenti essential al characte characteris ristics tics thereof thereof which which was imitat imitated ed or such such table, table, a tapperin tappering g spindle spindle,, a rest holder adjustably adjustably copied by the then defendant. Thus it came to pass that the secu secure red d on the the tabl table e port portio ion, n, a leve leverr and and mean means s of  "spin "spindle dle"" in quest questio ion n was was insi insist sten entl tly y ment mention ioned ed in the the compelling compelling the knife to close upon the table, a pallet or rest decision rendered on appeal as the essential part of the in the bottom of the table, a resilient cushion under such plaintiffs' machine allegedly imitated by the then defendant. palletor rest." In spite of the fact that they filed an amended In the case case under under cons conside iderat ration ion,, it is obviou obvious s that that the the complaint from which the "spindle" or conical drum, which "spindle" "spindle " is not an integral part of the machine patented by was was the the only only char charac acte teri rist stic ic feat featur ure e of the the mach machin ine e the plaintiffs on the ground that it was eliminated from their mention mentioned ed in the origina originall complai complaint, nt, was eliminat eliminated, ed, the patent patent inasm inasmuch uch as it was was expre express ssly ly exclu exclude ded d in their their plaintiffs insisted that the said part constitutes the essential application, as evidenced by the aforesaid Exhibit 41. differen difference ce between between the machine machine in questio question n and other other Wherefore, Wherefore, reiterating that the defendant cannot machines and that it was the principal consideration upon be held civilly liable for alleged infringement of the patent which their patent was issued. The said plaintiffs sustained upon which the present action is based on the ground that their contention contention on this point even in their printed brief and there is no essential essential part of the machine manufactured manufactured and memorandum filed in this appeal. sold so ld by him, him , which wh ich was unkno unk nown wn to the publi public c in the During the trial, both parties presented voluminous Province of Davao at the time the plaintiffs applied for and evide evidence nce from from which which the the trial trial court court concl conclude uded d that that in obta obtain ined ed thei theirr pate patent nt for for impr improv oved ed hemp hemp stri stripp ppin ing g constru constructin cting g their their machine machine the plaintif plaintiffs fs did nothing nothing but machines, the judgment appealed from is hereby affirmed, improve, to a certain degree, those that were already in with the costs against the plaintiffs-appellants. So ordered. vogue vogue and in actual actual us in hemp hemp produci producing ng provinc provinces. es. It VARGAS v CHUA cannot cannot be said said that that they they have have invent invented ed the "spin "spindle dle"" 57 PHIL 784 inasmuch as this was already known since the year 1909 or FACTS: 1910. Neither it can be said that they have invented the Angel Angel Vargas, Vargas, the plaintif plaintifff herein, herein, brought brought this this strip strippin ping g knif knife e and the contr contriv ivanc ance e which which cont control rols s the action to restrain the appellants and the other defendant move moveme ment nt and and pres pressu sure re ther thereo eoff on the the grou ground nd that that entity, Cham Samco & Sons, their agents and mandatories, mandatories, strip strippin ping g kniv knives es toget together her with with their their contr control ol sets sets were were from continuing the manufacture and sale of plows similar already already in actual actual use in the differ different ent strippi stripping ng machine machines s to his plow described in his patent No. 1,507,530 issued by long before their machine appeared. the United States Patent Office on September 2, 1924; and

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PATENTS: DIGESTS to compel compel all all of said said defe defenda ndants nts,, afte afterr rende renderi ring ng an accounting accounting of the profits obtained by them from the sale of  said plows from September 2, 1924, to pay him damages equivalent to double the amount of such profits.   The trial court rendered a judgement in favor of  plaintiffs and against the defendant. It appears from the bill of exceptions that Cham Samco & Sons did not appeal. ISSUE: Whether Whether the plow, Exhibit Exhibit F, constit constitutes utes 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. HELD:   The appellee appellee is not entitled entitled to the protectio protection n he seeks for the simple reason that his plow, Exhibit F, does not constit constitute ute an inventi invention on in the legal sense, sense, and because because,, according to the evidence, the same type of plows had been manufactured in this country and had been in use in many parts parts of the Phil Philipp ippine ine Archip Archipel elago ago,, espec especial ially ly in the the Province of Iloilo, long before he obtained his last patent. In the above mentioned case of  Vargas vs. F. M. Yaptico & Co., we said: When When a pate patent nt is sough soughtt to be enforc enforced, ed, "the questions of invention, novelty, or prior use, and each of  them, are open to judicial examination." The burden of proof  to substantiate a charge of infringement is with the plaintiff. Where, Where, howev however er,, the the plain plainti tiff ff intro introdu duces ces the patent patent in evide evidence nce,, if it is the the due form, form, it affo afford rds s a prima prima faci facie e presumption of its correctness and validity. The decision of  the Commi Commiss ssio ioner ner of Pate Patent nts s in granti granting ng the the pate patent nt is always presumed to be correct. The burden then shifts to the defenda defendant nt to overcom overcome e by compet competent ent evidenc evidence e this this legal presumption. With all due respects, therefore, for the critical critical and expert expert examinati examination on of the inventi invention on by the United States Patent Office, the question of the validity of  the patent is one for judicial judicial determinat determination, ion, and since since a patent has been submitted, the exact question is whether the defenda defendant nt has assume assumed d the burden burden of proof proof as to anyone of his defenses. We repeat that in view of the evidence presented, and particularly of the examination we have made of the plows, we cannot escape the conclusion that the plow upon whic which h the the appe appell llee ee's 's cont conten enti tion on is base based, d, does does not not constit constitute ute an inventio invention n and, and, consequ consequent ently, ly, the privileg privilege e invoked by him is untenable and the patent acquired by him should be declared ineffective.   The judgment judgment appeale appealed d from from is hereby hereby revers reversed ed and the appellants are absolved from the complaint, with costs of this instance against the appellee. So ordered.

and issued to him; that said invention was new, useful, not known or used by others in this country before his invention thereof.   That the defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and selling tiles embodying said patent invention and that defendant F. H. Aquino Aquino & Sons is guilty guilty of infringe infringemen mentt by making and furnis furnishin hing g to the defend defendan antt Domici Domiciano ano A. Aguas Aguas the the engravings, castings and devices designed and intended of  tiles embodying plaintiff;s patented invention; that he has given direct and personal notice to the defendants of their said acts of infringement infringement and requested them to desist, but neverthe nevertheles less, s, defenda defendants nts have have refused refused and neglecte neglected d to desist and have disregarded such request, and continue to so infr infring inge e caus causing ing great great and and irrep irrepara arable ble damag damage e to plaintiff; that if the aforesaid infringement is permitted to continue, further losses and damages and irreparable injury will be sustained by the plaintiff; that there is an urgent need for the immediate issuance of a preliminary injunction.  The court granted the injunction. And likewise held in favor of the plaintiff and against the defendant. ISSUE: Whether the process, subject of said patent, is not an inventio invention n or discove discovery, ry, or an improv improveme ement nt of the old system of making tiles. HELD:  The validily of the patent issued by the Philippines Patent Patent Office in favor favor of the private private respondent respondent and the question over the inventiveness, novelty and usefulness of  the improved process therein specified and described are matter matters s which which are better better determi determined ned by the Philipp Philippines ines Patent Office. The technical staff of the Philippines Patent Office, Office, composed composed of expert experts s in their their field, field, have, by the issuance issuance of the patent in question, question, accepted the thinness thinness of  the private respondent's new tiles as a discovery. There is a presumption presumption that the Philippines Patent Office has correctly correctly determi determined ned the patenta patentabili bility ty of the improve improvemen mentt by the private respondent of the process in question.   The The content contention ion of the petitioner petitioner Aguas that the letters patent of de Leon was actually a patent for the old and non-patentable process of making mosaic pre-cast tiles is devoid of merit. De Leon never claimed to have invented the process of tile-making. tile-making. The Claims and Specifications Specifications of  Patent No. 658 show that although some of the steps or parts parts of the old old proc process ess of tile tile maki making ng were were desc describ ribed ed therein, there were novel and inventive features mentioned mentioned in the process. In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process and/or improvement being patentable.

PARKE DAVIS & CO v DOCTOR’S PHARMA 124 SCRA 115

AGUAS v DE LEON 111 SCRA 238

FACTS: Conra Conrado do G. de Leon Leon file filed d in the Court Court of Firs Firstt Inst Instan ance ce of Riz Rizal at Quez Quezon on City City a com complai plaint nt for for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for Philippine patent, and having complied in all respects with the statute and the rules of the Philippine Patent Office, Patent No. 658 was lawfully granted

FACTS: Parke Parke Davis Davis & Company Company,, petitio petitioner ner herein, herein, is a forei foreign gn corpor corporat ation ion is the owner owner of a pate patent nt entit entitled led "Process for the Manufacturing of Antibiotics" (Letters Patent No. No. 50) 50) The The pate patent nt rela relate tes s to a chem chemic ical al comp compou ound nd represented by a formula commonly called chloramphenicol .   The patent contains ten claims, nine of which are process claims, and the other is a product claim to the chemical substance chloramphenicol . Respondent Respondent Doctors' Doctors' Pharmaceutical Pharmaceuticals, s, Inc., on the other hand, is a domestic corporation which applied for a

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PATENTS: DIGESTS petit petitio ion n with with the Direc Directo torr of Pate Patents nts,, which which was was late laterr amended, praying that it be granted a compulsory license under under Lette Letters rs Paten Patentt No. 50 grante granted d to Park Parke e Davi Davis s & Company based on the following grounds: (1) the patented inventio invention n relate relates s to medicin medicine e and is necessa necessary ry for public health and safety; (2) Parke Davis & Company is unwilling to grant petitioner a voluntary license under said patent by reason of which the production production and manufacture manufacture of needed medicine containing containing chloramphenicol has been been unduly unduly rest restra rain ined ed to a cert certai ain n exte extent nt that that it is beco becomi ming ng a mono monopo poly ly;; (3) (3) the the dema demand nd for for medi medici cine ne cont contai aini ning ng chloramphenicol is not being met to an adequate extent and on reasonable prices; and (4) the patented invention is not being worked in the Philippines on a commercial scale. In its petition, petition, Doctors' Doctors' Pharmaceutica Pharmaceuticals, ls, Inc. prayed that it be authorized to manufacture, use, and sell its own products containing chloramphenicol as well as choose its own brand or trademark. Parke Davis & Company filed a written opposition sett settin ing g up the the foll follow owin ing g affi affirm rmat ativ ive e defe defens nses es:: (1) (1) a compulsory license may only be issued to one who will work the patent and respondent does not intend to work it itself  but merely to import the patented product; (2) respondent has not not reque request sted ed any licen license se to work work the the pate patente nted d invention in the Philippines; (3) respondent is not competent to work the patented invention; (4) to grant respondent respondent the request requested ed license license would would be against against public interes interestt and would only serve its monetary interest; and (6) the patented invention is not necessary for public health and safety. the the Dire Direct ctor or of Pate Patent nts s rend render ered ed a deci decisi sion on granting to respondent the license prayed for .Hence this petition. ISSUE: Whether Whether or not the Director Director of Patents Patents erred jn ordering the grant of compulsory license HELD: Each of the circumstances circumstances mentioned mentioned in the law as grounds stands alone and is independent independent of the others. And from them we can see that in order that any person may be granted granted a license license under a particul particular ar patente patented d inventi invention on relating to medicine under Section 34(d), it is sufficient that the application be made after the expiration of three years from from the date date of the grant grant of the the patent patent and that that the the Director should find that a case for granting such license has been made out. Since in the instant case it is admitted by petitioner petitioner that the chemical substance substance chloramphenicol is a medic medicine ine,, while while Lett Letters ers Pate Patent nt No. No. 50 cove coveri ring ng said said substan substance ce were were granted granted to Parke Parke Davis Davis & Company Company on February February 9, 1950, 1950, and the instant instant applicat application ion for license license under said patent was only filed in 1960, verily the period that had elapsed then is more than three years, and so the conditions for the grant of the license had been fulfilled. We find, therefore, no error in the decision of the Director of  Patents on this aspect of the controversy.

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