Subject matter Manly Sportswear Manufacturing Inc.

v Dadodette Enterprises Facts: The NBI secured a search warrant on March 14, 2003 from the RTC to act upon the information that respondents were in possession of goods copyright of which belongs to the petitioner. Finding reasonable grounds in violation of Section 172 and 217 of RA 8293 a search warrant was issued. Respondents move to quash and annul the search warrant contending it is invalid and the requisites for its issuance are not complied with. They insist that the sporting goods manufactured and registered in the name MANLY is just ordinary and common and not among the classes protected under RA 8293. The court granted the motion to quash declaring the search warrant null and void because there were certificates of registrations issued earlier than MANLY for the same sporting goods under various brands thereby negating the fact that their products are copyrighted and original creations. Motion for reconsideration was denied by the appellate court sustaining the lower courts decision thus this instant petition for review for certiorari. Issue: Whether or not the certificate of registration in favor of MANLY sustains the action against the respondents. Ruling: The court ruled that the petitioner is not protected by the copyright law despite the issuance of the copyright certificate of registration as it merely gives prima facie evidence of the validity and ownership. Therefore if the there are sufficient evidence that the copyrighted products are not original creations and are readily available in the market under various brands, validity and originality will not be presumed therefore the trial court has the right to quash the issued warrant for lack of probable cause. Moreover no copyright accrues to the petitioner since Sec. 2, Rule 7 of the Copyrights Safeguards and Regulations provides that the registration and deposit of work is purely for recording the date of registration and is not conclusive as to the copyright ownership. It is not a proof of copyright ownership and nonpayment for registration within the prescribed period shall only make the copyright owner liable to pay a fine. Excluded works

Francisco Joaquin vs Franklin Drilon GR No. 108946, January 28, 1999 Facts: BJ Productions, Inc (BJPI) is a holder of a Certificate of Copyright no. M922 issued on January 28, 1971 of Rhoda and Me which is a dating show aired from 1970 to 1977. It submitted to the National Library an addendum its certificate of copyright specifying the shows format and style of presentation. While watching the television, its President, Francisco Joaquin saw on RPN Channel 9 the episode on Its a Date produced by IXL Productions. He wrote a letter to IXLs president Gabriel Zosa informing him that BJPI has a copyright of the same format as shown on their Its a Date show in their Rhoda and Me show. Zosa sought to register IXLs copyright to their first episode of Its a Date to the National Library. Petitioner filed a complaint in violation of PD No. 49 against the respondent before the RTC of Quezon City. Respondent sought a review of the resolution from the Asst. City Prosecutor before the Department of Justice. Sec. of Justice Franklin Drilon directed to move for dismissal of the case against the respondents and denied the petitioners motion for reconsideration hence this petition before the Supreme Court. Issue: Whether or not the format or mechanics of the petitioners television show is entitled to a copyright protection. Ruling: The Supreme Court held that the format of a show is not copyrightable as provided by Section 2 of PD no. 49 otherwise known as the Decree on Intellectual Property which enumerates the classes of work that are covered by the copyright protection. Similarly, RA 8293, the Intellectual Property Code of the Philippines provides that format or mechanics of a television show is not included in the list of the protected work by the copyright law of the Philippines. PD 49 enumerates the works subject to copyright protection which refers to finished works and not on concepts. It does not extend to an idea, procedure, process, system, method or operation, concept, principles or discovery regardless of the form to which it is described, explained, and illustrated or embodied in the work. Copyright requirements VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises vs. LEVI STRAUSS & CO., LEVI STRAUSS (PHIL.), INC.

FACTS: Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally known clothing manufacturer, own the arcuate design trademark which was registered under US Trademark Registration No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and Venancio Sambar, without the consent and authority of private respondents and in infringement and unfair competition, sold and advertised, and despite demands to cease and desist, continued to manufacture, sell and advertise denim, pants under the brand name Europress with back pockets bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion on the buying public, prejudiced to private respondents goodwill and property right. Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was issued to him, but he denied using it. He said he did not authorize anyone to use the copyrighted design. Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing, advertising and selling pants with the arcuate design on their back pockets. Private respondents moved for reconsideration praying for the cancellation of petitioners copyright registration. Trial court granted the prayer. Petitioner appealed to the Court of Appeals which affirmed the ruling of the trial court. ISSUE: Whether petitioner infringe on private respondents arcuate design. HELD: To be entitled to a copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another. Both the trail court and the Court of Appeals found there was infringement.

Copyright infringment PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC. G.R. No. 131522, July 19, 1999 FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For Today (CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency (DEP). Petitioners found that several pages of the respondent's book are similar, if not all together a copy of petitioners' book. Habana et al. filed an action for damages and injunction, alleging respondents infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially familiar with the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed certain portions of their book CET. On the other hand, Robles contends that the book DEP is the product of her own intellectual creation, and was not a copy of any existing valid copyrighted book and that the similarities may be due to the authors' exercise of the "right to fair use of copyrighted materials, as guides." The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this appeal, petitioners submit that the appellate court erred in affirming the trial court's decision. ISSUE: Whether Robles committed infringement in the production of DEP. HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. The court finds that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights. In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow another to copy the book without appropriate acknowledgment is injury enough.

Patents Patentable inventions CASE DIGEST: Aguas vs. De Leon 111 SCRA 238 (1982) FACTS: This is a petition for certiorari to review the decision of the Court of Appeals. On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of patent against petitioner Domiciano Aguas and F.H. Aquino and Sons alleging among others that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No. 658, the latter infringed the same by making, using and selling tiles embodying said patent invention. A writ of Preliminary Injuction was subsequently issued. Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia that respondent De Leon is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast tiles, the same having been used by several tile-making factories both here and abroad years before the alleged invention by De Leon; hence, it is not patentable. The trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon. Thus, this petition. ISSUE: Whether or not the alleged invention or discovery of respondent is patentable. HELD: Yea. x x x It should be noted that the private respondent does not claim to be the discoverer or inventor of the old process of tilemaking. He only claims to have introduced an improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to the private respondent Conrado G. De Leon, to protect his rights as the inventor of an alleged new and useful improvement in the process of making pre-cast tiles. Indeed, section 7, Republic Act No. 165, as amended provides: Any invention of a new and useful

machine, manufactured product or substance, process, or an improvement of the foregoing, shall be patentable. Patent requirement ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.) G.R. No. 14101, September 24, 1919 Facts: Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office for his so-called invention of an improved adjustable plow with the use his own native plow. A certified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine Islands. Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business in Iloilo City, was a manufacturer of plow parts. It produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow. Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged infringement of his U.S. Patent by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by reason of this infringement, to which the court issued the preliminary injunction prayed for. The defendant denied the allegations and defended that the patent lacked novelty or invention, that there was no priority of ideas or device in the principle and construction of the plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had already been in public use for more than two years before the application of the plaintiff for his patent. The trial judge rendered judgment in favor of the defendant, declaring null and without effect the patent in question and dismissing the suit with costs against the plaintiff. Hence, the plaintiff appealed said judgment. Issues: 1. Whether the patented invention is void for lack of novelty and invention? 2. Whether the patent is invalid considering that the plow had already

been in public use for over two years prior to the application for a patent. Ruling: 1. Yes, the patent if void. The Supreme Court affirmed the trial courts conclusion that the plow of the plaintiff is not different from the native plow, except in the material, in the form, in the weight and the grade of the result, the said differences giving it neither a new function nor a new result distinct from the function and the result obtained from the native plow. Also, its production does not presuppose the exercise of the inventive faculty but merely of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law. 2. Yes, the patent is void. Under the provisions of the statute, an inventor's creation must not have been in public use or on sale in the United States (and the Philippine Islands) for more than two years prior to his application. Further, it was proved that the invention was used in public at Iloilo by others than Vargas, the inventor, more than two years before the application for the patent thus, the patent is invalid. Patent licensing CASE DIGEST: Parke Davis vs. Doctors Pharmaceuticals

PARKE DAVIS and COMPANY vs. DOCTORS' PHARMACEUTICALS, INC., ET AL. G.R. No. L-22221, August 31, 1965 FACTS: Parke Davies and Company is an owner of a Patent entitled "Process for the Manufacturing of Antibiotics" (Letters Patent No. 50) which was issued by the Philippine Patent Office on February 9, 1950. The patent relates to a chemical compound 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. Doctors Pharmaceuticals Inc. requested that it be granted a voluntary license to manufacture and produce our own brand of medicine,

containing chloramphenicol, and to use, sell, distribute, or otherwise dispose of the same in the Philippines under such terms and conditions as may be deemed reasonable and mutually satisfactory, which Parke Davies declined. Doctors Pharmaceuticals Inc. filed a petition with the Director of Patents requesting the Director to grant a compulsory license. After careful evaluation and hearings, the Director granted the request of Doctors Pharmaceuticals. ISSUE: Is the decision of the Director of Patents in granting Doctors Pharmaceutical Inc. compulsory license to use the substance chloramphenicol, valid? HELD: Yes the decision of the Director of Patents in granting Doctors Pharmaceutical Inc. compulsory license to use the substance chloramphenicol is valid. The Supreme Court says that patents issued to foods and medicines are not exclusive so as not to prevent the building up of patent monopolies. Public benefit is foremost. The Court dismissed the contention of Parke Davies that the Director of Patents erred in granting compulsory license. The decision appealed from is affirmed, with costs against petitioner. Patent infringment CASE DIGEST: CARLOS GSELL vs. VALERIANO VELOSO YAP-JUE FACTS: The principal case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process for manufacture of curved handles for canes, parasols, and umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question, and obtained against this defendant a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by this Court on appeal. The order was couched in the following terms: It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell.

Thereafter the defendant continued to manufacture curved cane handles for walking sticks and umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol. The trial court found the defendant not guilty of contempt as charged; and this court, on appeal, held that The violation, if there has been any, was not of such a character that it could be made patent by the mere annunciation of the acts performed by the defendant, which are alleged to constitute the said violation. Consequently, the contempt with which the accused is charged has not been fully and satisfactorily proved, and the order appealed from should accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt. Substantially, the same question is submitted in these new proceedings as that submitted in the former case. ISSUE: Whether the use of a patented process by a third person, without license or authority therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part of the patented process a well-known mechanical equivalent. HELD: Counsel for plaintiff invokes the doctrine of mechanical equivalents in support of his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded upon sound rules of reason and logic, and unless restrained or modified by law in particular jurisdiction, is of universal application, so that it matters not whether a patent be issued by one sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of a substitution of some part of his invention by some well-known mechanical equivalent. The use of a process in all respects identical with a process protected by a valid patent, save only that a well-known mechanical equivalent is substituted in lieu of some particular part of the patented process is an infringement upon the rights of the owner of the patent, which will be enjoined in appropriate proceeding, and the use of such process, after the order enjoining its use has been issued, is a contempt, under the provision of section 172 of the Code of Civil Procedure.

Smith Kline Beckman Co. v Court of Appeals Facts: Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on October 8, 1976 as assignee before the Bureau of Patents an application for patent on its invention called Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate. A Letters of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2-Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal parasites and lung worms in animals. The respondent Tryco Pharma manufactures, distributes and sells veterinary product, one of which is the Impregon, a drug having Albendazole as its active ingredient effective against gastrointestinal worms in animals. Petitioner now sues the respondent for patent infringement and unfair competition before the RTC as it claims that their patent includes the substance Albendazole used by the respondent and they sold and used the drug Impregon without the petitioners authorization and committed unfair competition for selling as its own the drug that substantially functions to achieve the same result. Petitioner further contends that under the doctrine of equivalents in determining patent infringement, the active substance Albendazole used by the respondent is substantially the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by its patent with the same use of combating worm infestations in animals. It prodded the court to go beyond the literal words used in the Letter of Patent issued to them to consider that the words Methyl 5 Propylthio-2Benzimidazole Carbanate and Albendazole are the same. Respondent avers that the Letter of Patents issued to petitioner does not cover Albendazole in that the word does not appear on it. Even if the patent were to include Albendazole it is unpatentable. They secured approval from the Bureau of Foods and Drugs to manufacture and market Impregon with the Albendazole as its active ingredients. The petitioner has no proof that they passed their veterinary products as that of the petitioner. Issue: Whether or not respondent is guilty of patent infringement? Ruling: The Supreme Court held that it did not. When the language of the claim is clear and distinct, the patentee is bound thereby and may not

claim anything beyond them. The language of the Letter of Patents issued to the petitioner failed to yield anything that it includes Albendazole. The doctrine of equivalents does not apply in the case at bar because it requires that for infringement to take place, the device should appropriate a prior invention by incorporating its innovative concept and although there are some modifications and change they perform substantially the same results. The petitioners evidence failed to adduce that substantial sameness on both the chemicals they used. While both compounds produce the same effects of neutralizing parasites in animals, the identity of result does not amount to infringement. The petitioner has the burden to show that it satisfies the function-means-and-result-test required by the doctrine of equivalents. Nothing has been substantiated on how Albendazole can weed the parasites out from animals which is similar to the manner used by the petitioner in using their own patented chemical compound. CASE DIGEST: Frank vs. Benito PATRICK HENRY FRANK and WILLIAM HENRY GOHN vs. CONSTANCIO BENITO G.R. No. L-27793, March 15, 1928 FACTS: Plaintiffs are the owners of a patent covering hemp-stripping machine No. 1519579 issued to them by the United States Patent Office and duly registered in the Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235 Plaintiffs allege that the defendant manufactured a hemp-stripping machine in which, without authority from the plaintiffs, and has embodied and used such spindles and their method of application and use, and is exhibiting his machine to the public for the purpose of inducing its purchase. Frank and Gohn stress that use by the Benito of such spindles and the principle of their application to the stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions and specifications. Plaintiffs assert the violation of infringement upon the patent granted to Frank & Gohn, and requested that an action for injunction and damages be instituted against Benito. Respondent on the other hand contends that it had no prior knowledge of the prior existence of the hemp-stripping invention of the plaintiffs nor had any intent to imitate the Franks product. Likewise, the defendant contended that the facts alleged therein do not constitute a cause of action, that it is ambiguous and vague. The lower court rendered judgment in favor of the plaintiffs, to which was later affirmed

by the appellate court. HELD: As a rule, the burden of proof to substantiate a charge of infringement is with the plaintiff. 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 correct. The burden the shifts to the defendant to overcome by competent evidence this legal presumption. The patent in the case at bar, having been introduced in evidence, affords a prima facie presumption of its correctness and validity. Hence, this is not a case of a conflict between two different patents. In the recent of Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United States ruled an improper cannot appropriate the basic patent of another, and if he does so without license is an infringer, and may be used as such. It is well established that an improver cannot appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such. Utility models Utility models Samson vs. Tarroza FACTS: This is an appeal from a decision of the Director of Patents denying the petition for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Felipe Tarroza for his Side Tilting-Dumping Wheelbarrow. Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent No. 27 for a Dumping and Detachable Wheelbarrow, which he claims to have been infringed by the respondent, they being neighbors. ISSUE: Whether or not respondents Utility Model Patent deserves cancellation. HELD: No. There is an express recognition under the Patent Law that any new model of implements or tools or of any industrial product even if not

possessed of the quality of invention but which is of practical utility is entitled to a patent for a utility model: From the description of the side of tilting-dumping wheelbarrow, the product of ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers to as practical utility.