SEHWANI, INCORPORATED and/or BENITA'S FRITES, INC., vs IN-N-OUT BURGER, INCPe ! !oners FACTS: Petitioner Sehwani, Inc.

alleged that respondent lack the legal capacity to sue because it was not doingbusiness in the Philippines and that it has no cause of action because its ark is not registered or used inthe Philippines. They clai ed that as the registered owner of the !I"#"#$%T! ark, it en&oys thepresu ption that the sa e was 'alidly ac(uired and that it has the e)clusi'e right to use the ark.*oreo'er, petitioners argued that other than the bare allegation of fraud in the registration of the ark,respondent failed to show the e)istence of any of the grounds for cancellation thereof under the IP Code. +espondents contended that petitioners co itted a 'iolation of intellectual property rights when theyrefused to accede to the de and in desisting fro clai ing ownership of the ark !I"#"#$%T! and to'oluntarily cancelling its Trade ark +egistration. They argued that they ha'e been the owner of thetradena e !I"#"#$%T! and trade arks !I"#"#$%T,! !I"#"#$%T ,urger - Arrow .esign! and !I"#"#$%T,urger /ogo,! which are used in its business since 0123 up to the present. These tradena e andtrade arks were registered in the %nited States as well as in other parts of the world issue 45n respondent has the legal capacity to sue for the protection of its trade arks, albeit it is notdoing business in the Philippines held67S. Section 089 in relation to Section : of +.A. "o. 3;1:, pro'ides for the +ight of Foreign Corporation toSue in Trade ark or Ser'ice *ark 7nforce ent Action. In addition, Articles 8 that !A tradena eshall be protected in all countries of the %nion without the obligation of filing or registration whether or notit for s part of a trade ark.!Article 8bis which go'erns the protection of well#known trade arks, is a self# e)ecuting pro'ision and doesnot re(uire legislati'e enact ent to gi'e it effect in the e ber country. The (uestion of whether or notrespondent<s trade arks are considered !well#known! is factual in nature. Considering the factual findingsof the ,/A#IP$, the SC is inclined to fa'or the declaration of the ark !I"#"#$%T! as an internationallywell#known ark on the basis of !registrations in 'arious countries around the world and itsco prehensi'e ad'ertise ents therein.! The fact that respondent<s arks are neither registered nor usedin the Philippines is of no o ent. "a# a$ vs. Pa%&!na$an, '' P(!&. )** +,-,). Fa/ s /aktaw is the registered owner and author of a literary work entitled .iccionario =ispano#Tagalog >Spanish#Tagalog .ictionary? published in the City of *anila in 0331 by the printing establish ent /a $pinion. Paglinawan without the consent of /aktaw, reproduced said literary work, i properly copied the greater part thereof in the work published by hi and entitled .iccionariong @astila#Tagalog >Spanish#Tagalog .ictionary?. The act of Pagliwanan is a 'iolation of article A of the /aw of Banuary 09, 03A1, on Intellectual Property, caused irreparable in&uries to /aktaw who was surprised when, on publishing his new work entitled .iccionario Tagalog#=ispano >Tagalog#Spanish .ictionary? he learned of the fact, and >2? that the da ages occasioned to hi by the publication of PaglinawanCs work a ounted to D09,999. /aktaw

prayed the court to order the Paglinawan to withdraw fro sale all stock of the work of Paglinawan to pay hi the su of D09,999, with costs. Paglinawan in his answer denied generally each and e'ery allegation of the co plaint and prayed the court to absol'e hi fro the co plaint. "a$ Article A of the /aw of Banuary 09, 03A1, on Intellectual Property: "obody ay reproduce another personCs work without the ownerCs consent, e'en erely to annotate or add anything to it, or i pro'e any edition thereof. Iss0e 4hether or not Paglinawan 'iolated Article A of the Intellectual Property /aw >03A1?E He&d 6es, Paglinawan 'iolated Article A of Intellectual Property /aw. It is not necessary that a work should be an i proper copy of another work pre'iously published. It is enough that anotherCs work has been reproduced without the consent of the owner, e'en though it be only to annotate, add so ething to it, or i pro'e any edition thereof. +/. P01&!s(ed Ed! !on o2 Wor# Se/. ,3' Section 0A2. Published 7dition of 4ork. # In addition to the right to publish granted by the author, his heirs, or assigns, the publisher shall ha'e a copyright consisting erely of the right of reproduction of the typographical arrange ent of the published edition of the work. >n? "ote: Separate right of the publisher e)clusi'ely on typographical arrange ent. +*.Wor#s No Pro e/ ed Se/. ,3* +a.Un4ro e/ ed S015e/ 6a er Se/. ,3* Section 0AF. %nprotected Sub&ect *atter. # "otwithstanding the pro'isions of Sections 0A; and 0A:, no protection shall e)tend, under this law, to any idea, procedure, syste , ethod or operation, concept, principle, disco'ery or ere data as such, e'en if they are e)pressed, e)plained, illustrated or e bodied in a workG news of the day and other iscellaneous facts ha'ing the character of ere ite s of press infor ationG or any official te)t of a legislati'e, ad inistrati'e or legal nature, as well as any official translation thereof >n?

Intellectual Property Law on Copyright Copyrightable Subject Pearl and .ean Inc. is a corporation engaged in the anufacture of ad'ertising display units called light bo)es. In Banuary 0130, Pearl and .ean was able to ac(uire copyrights o'er the designs of the display units. In 0133, their trade ark application for HPoster AdsI was appro'edG they used the sa e trade ark to ad'ertise their light bo)es. In 013F, Pearl and .ean negotiated with Shoe art Inc. >S*? so that the for er ay be contracted to install light bo)es in the ad spaces of S*. 7'entually, S* re&ected Pearl and .ean<s proposal. Two years later, Pear and .ean recei'ed report that light bo)es e)actly the sa e as theirs are being used by S* in their ad spaces. They de anded S* to stop using the light bo)es and at the sa e ti e asked for da ages a ounting to P;9 *. S* refused to pay da ages though they struck down the light bo)es. Pearl and .ean e'entually sued S*. S* argued that it did not

infringe on Pearl and .ean<s trade ark because Pearl and .ean<s trade ark is only applicable to en'elopes and stationeries and not to the type of ad spaces owned by S*. S* also a'erred that HPoster AdsI is a generic ter hence it is not sub&ect to trade ark registration. S* also a'erred that the actual light bo)es are not copyrightable. The +TC ruled in fa'or of Pearl and .ean. ,ut the Court of Appeals ruled in fa'or of S*. ISSUE7 4hether or not the Court of Appeals is correct. HE"D7 6es. The light bo)es cannot, by any stretch of the i agination, be considered as either prints, pictorial illustrations, ad'ertising copies, labels, tags or bo) wraps, to be properly classified as a copyrightableG what was copyrighted were the technical drawings only, and not the light bo)es the sel'es. In other cases, it was held that there is no copyright infringe ent when one who, without being authoriJed, uses a copyrighted architectural plan to construct a structure. This is because the copyright does not e)tend to the structures the sel'es. $n the trade ark infringe ent allegation, the words HPoster AdsI are a si ple contraction of the generic ter poster ad'ertising. In the absence of any con'incing proof that HPoster AdsI has ac(uired a secondary eaning in this &urisdiction, Pearl and .ean<s e)clusi'e right to the use of HPoster AdsI is li ited to what is written in its certificate of registration, na ely, stationeries.
6AN8ANO v CA 93) SCRA :)) The pri ary purpose of the patent syste is not the reward of the indi'idual but the ad'ance ent of the arts and sciences. The function of a patent is to add to the su of useful knowledge and one of the purposes of the patent syste is to encourage disse ination of infor ation concerning disco'eries and in'entions. FACTS: Angelita *anJano filed PP$ an action for the cancellation of /etters Patent for a gas burner registered in the na e of respondent *elecia *adolaria who subse(uently assigned the letters patent to "ew %nited Foundry and *anufacturing Corporation >%"IT7. F$%".+6, for bre'ity?. Petitioner alleged that >a? the utility odel co'ered by the letters patent, in this case, an /PK gas burner, was not in'enti'e, new or usefulG >b? the specification of the letters patent did not co ply with the re(uire ents of Sec. 02, +A "o. 08F, as a endedG >c? respondent *elecia *adolaria was not the original, true and actual in'entor nor did she deri'e her rights fro the original, true and actual in'entor of the utility odel co'ered by the letters patentG and, >d? the letters patent was secured by eans of fraud or isrepresentation. Testifying for herself petitioner narrated that her husband $ng ,un Tua worked as a helper in the %"IT7. F$%".+6 where respondent *elecia *adolaria used to be affiliated with fro 018F to 01A9G that $ng helped in the casting of an /PK burner which was the sa e utility odel of a burner and that after her husband<s separation fro the shop she organiJed ,esco *etal *anufacturing >,7SC$ *7TA/, for bre'ity? for the casting of /PK burners one of which had the configuration, for and co ponent parts si ilar to those being anufactured by %"IT7. F$%".+6. Petitioner presented two >;? other witnesses, na ely, her husband $ng ,un Tua and Fidel Francisco. Pri'ate respondent, on the other hand, presented only one witness, +olando *adolaria, who testified, a ong others, that he was the Keneral Super'isor of the %"IT7. F$%".+6..irector of Patents Cesar C. Sandiego denied the petition for cancellation and holding that the e'idence of petitioner was not able to establish con'incingly that the patented utility odel of pri'ate respondent was anticipated. Petitioner ele'ated the decision of the .irector of Patents to the Court of Appeals which affir ed the decision of the .irector of Patents. =ence, this petition for re'iew on certiorari. ISS%7: 4hether the dis issal is proper where the patent applied for has no substantial difference between the odel to be patented and those sold by petitioner. =7/.: The ele ent of no'elty is an essential re(uisite of the patentability of an in'ention or disco'ery. If a de'ice or process has been known or used by others prior to its in'ention or disco'ery by the applicant, an application for a patent therefor should be deniedG and if the application has been granted, the court, in a &udicial proceeding in which the 'alidity of the patent is drawn in (uestion, will hold it 'oid and ineffecti'e. It has been repeatedly held that an in'ention ust possess the essential ele ents of no'elty, originality and precedence, and for the patentee to be entitled to the protection the in'ention ust be new to the world. =owe'er, The 'alidity of the patent issued by the Philippine Patent $ffice in fa'or of pri'ate respondent and the (uestion o'er the in'enti'eness, no'elty and usefulness of the i pro'ed odel of the /PK burner are atters which are better deter ined by the Patent $ffice. The technical staff of the Philippine Patent $ffice co posed of e)perts in their field has by the issuance of the patent in (uestion accepted pri'ate respondent<s odel of gas burner as a disco'ery. There is a presu ption that the $ffice has correctly deter ined the patentability of the odel and such action ust not be interfered with in the absence of

co petent e'idence to the contrary. co pelling grounds for a re'ersal of the findings and The rule is settled that the findings of fact of the conclusions of the Patent $ffice and the Court of Appeals. .irector of Patents, especially when affir ed by the Court of Petition .IS*ISS7.. Appeals, are conclusi'e on this Court when supported by substantial e'idence. Petitioner has failed to show LL####################################################################################################################################################################### LL AGUAS v DE "EON ,,, SCRA 9;) FACTS: Conrado K. de /eon filed in the Court of First Instance of +iJal at MueJon City a co plaint for infringe ent of patent against .o iciano A. Aguas and F. =. A(uino and Sons alleging that being the original first and sole in'entor of certain new and useful i pro'e ents in the process of aking osaic pre#cast tiles, he lawfully filed and prosecuted an application for Philippine patent, and ha'ing co plied in all respects with the statute and the rules of the Philippine Patent $ffice, Patent "o. 8F3 was lawfully granted and issued to hi G that said in'ention was new, useful, not known or used by others in this country before his in'ention thereof. That the defendant .o iciano A. Aguas infringed /etters of Patent "o. 8F3 by aking, using and selling tiles e bodying said patent in'ention and that defendant F. =. A(uino - Sons is guilty of infringe ent by aking and furnishing to the defendant .o iciano A. Aguas the engra'ings, castings and de'ices designed and intended of tiles e bodying plaintiffGs patented in'entionG that he has gi'en direct and personal notice to the defendants of their said acts of infringe ent and re(uested the to desist, but ne'ertheless, defendants ha'e refused and neglected to desist and ha'e disregarded such re(uest, and continue to so infringe causing great and irreparable da age to plaintiffG that if the aforesaid infringe ent is per itted to continue, further losses and da ages and irreparable in&ury will be sustained by the plaintiffG that there is an urgent need for the i ediate issuance of a preli inary in&unction. The court granted the in&unction. And likewise held in fa'or of the plaintiff and against the defendant. ISS%7: 4hether the process, sub&ect of said patent, is not an in'ention or disco'ery, or an i pro'e ent of the old syste of aking tiles. =7/.: The 'alidily of the patent issued by the Philippines Patent $ffice in fa'or of the pri'ate respondent and the (uestion o'er the in'enti'eness, no'elty and usefulness of the i pro'ed process therein specified and described are atters which are better deter ined by the Philippines Patent $ffice. The technical staff of the Philippines Patent $ffice, co posed of e)perts in their field, ha'e, by the issuance of the patent in (uestion, accepted the thinness of the pri'ate respondentCs new tiles as a disco'ery. There is a presu ption that the Philippines Patent $ffice has correctly deter ined the patentability of the i pro'e ent by the pri'ate respondent of the process in (uestion. The contention of the petitioner Aguas that the letters patent of de /eon was actually a patent for the old and non#patentable process of aking osaic pre#cast tiles is de'oid of erit. .e /eon ne'er clai ed to ha'e in'ented the process of tile# aking. The Clai s and Specifications of Patent "o. 8F3 show that although so e of the steps or parts of the old process of tile aking were described therein, there were no'el and in'enti'e features entioned in the process. In 'iew of the foregoing, this Court finds that Patent "o. 8F3 was legally issued, the process and5or i pro'e ent being patentable.

))####################################################################################################################)) Intellectual Property Law Law on Patents - Doctrine of Equi alents S ith @line is a %S corporation licensed to do business in the Philippines. In 0130, a patent was issued to it for its in'ention entitled H*ethods and Co positions for Producing ,iphasic Parasiticide Acti'ity %sing *ethyl F Propylthio#;#,enJi idaJole Carba ate.I The in'ention is a eans to fight off gastrointestinal parasites fro 'arious cattles and pet ani als. Tryco Phar a is a local corporation engaged in the sa e business as S ith @line. S ith @line sued Tryco Phar a because the latter was selling a 'eterinary product called I pregon which contains a drug called AlbendaJole which fights off gastro#intestinal roundwor s, lungwor s, tapewor s and fluke infestation in carabaos, cattle and goats. S ith @line is clai ing that AlbendaJole is co'ered in their patent because substantially the sa e as ethyl F propylthio#;#benJi idaJole carba ate co'ered by its patent since both of the are eant to co bat wor or parasite infestation in ani als. And that AlbendaJole is actually patented under S ith @line by the %S.

Tryco Phar a a'erred that nowhere in I pregon<s packaging does it but e'en if it were, the sa e is HunpatentableI.

ention that AlbendaJole is present

S ith @line thus in'oked the doctrine of e(ui'alents, which i plies that the two substances substantially do the sa e function in substantially the sa e way to achie'e the sa e results, thereby aking the truly identical for in spite of the fact that the word AlbendaJole does not appear in petitioner<s letters patent, it has ably shown by e'idence its sa eness with ethyl F propylthio#;#benJi idaJole carba ate. ISSUE: 4hether or not there is patent infringe ent in this case HE"D7 "o. S ith @line failed to pro'e that AlbendaJole is a co pound inherent in the patented in'ention. "owhere in the patent does the word AlbendaJole found. 4hen the language of its clai s is clear and distinct, the patentee is bound thereby and ay not clai anything beyond the . Further, there was a separate patent for AlbendaJole gi'en by the %S which i plies that AlbendaJole is indeed separate and distinct fro the patented co pound here. A scrutiny of S ith @line<s e'idence fails to pro'e the substantial sa eness of the patented co pound and AlbendaJole. 4hile both co pounds ha'e the effect of neutraliJing parasites in ani als, identity of result does not a ount to infringe ent of patent unless AlbendaJole operates in substantially the sa e way or by substantially the sa e eans as the patented co pound, e'en though it perfor s the sa e function and achie'es the sa e result. In other words, the principle or ode of operation ust be the sa e or substantially the sa e. The doctrine of e(ui'alents thus re(uires satisfaction of the function# eans#and#result test, the patentee ha'ing the burden to show that all three co ponents of such e(ui'alency test are et. Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., F:F %.S. A;; >;99;? Facts: Festo Corporation >petitioner? possessed patents for an industrial de'ice. After Festo began arketing its de'ice, Shoketsu @inJoku @ogyo @abushiki Co. >S*C, respondents? entered the arket with a de'ice that used one two-way sealing ring and a non!agneti"able slee e. Festo Corporation already owned two si ilar patents >although their initial patent application was re&ected? for this industrial de'ice. Festo filed suit, clai ing that S*CCs de'ice was sufficiently si ilar that it infringed FestoCs patents under the doctrine of e(ui'alents. FestoCs clai had been a ended during prosecution for, at the 'ery least, co pliance with :F %.S.C. N00;, and thus Shoketsu clai ed that prosecution history estoppel should bar Festo fro asserting e(ui'alents. The %nited States .istrict Court for the .istrict of *assachusetts held that FestoCs a end ents were not ade to a'oid prior art, and therefore the a end ents were not the kind that gi'e rise to estoppel. A panel of the Federal Circuit affir ed. A; F. :d 3FA >011F?. The Supre e Court granted certiorari, 'acated, and re anded in light of an inter'ening decision in #arner-$en%inson . &ilton Da is Che!ical Co.. After a decision by the original panel on re and, 0A; F. :d 0:80 >0111?, the Federal Circuit ordered rehearing en banc, 03A F. :d 0:30 >0111?. The court sitting en banc held that clai a end ents ade for co pliance with the Patent Act presented a co plete bar to clai ing e(ui'alents. Issue:

4hether any a end ent to a patent application that narrowed a patent clai to co ply with the Patent Act creates an absolute bar to e(ui'alents for the particular clai li itation that was narrowed by the a end ent. +uling: The Supre e Court 'acated the ruling ade by the Federal Circuit, holding that such a end ents do not create an absolute bar, but instead ust be e)a ined in light of the reason for the change. In the unani ous opinion, Bustice @ennedy e)plained that it was not whether prosecution history estoppel applied to a end ents, but to what e)tent the a end ent surrendered co'erage of the clai . If the change was ade to clarify a translation, for e)a ple, the in'entor should suffer no reduction in rights. ,ut if the change was ade to keep the patent fro o'erlapping with another patent, then the applicant will be presu ed to ha'e gi'en up the right to co plain about anything broader than the patent clai itself. In particular, the Court held that patenteeCs decision to narrow clai s through a end ent in order to co ply with the Patent Act auto atically assu es surrender of the territory between the original clai and the a ended clai , i.e., a presu ption of surrendering all e(ui'alents for the particular clai li itation that was narrowed by the a end ent. The Court thus placed the burden on the applicant as to showing what e(ui'alents were not surrendered. Still, the Court conceded, howe'er, that there are so e cases where the a end ent cannot be 'iewed as surrendering a particular e(ui'alent. !The e(ui'alent ay ha'e been unforeseeable at the ti e of the applicationG the rationale underlying the a end ent ay bear no ore than a tangential relation to the e(ui'alent in (uestionG or there ay be so e other reason suggesting that the patentee could not reasonably be e)pected to ha'e described the insubstantial substitute in (uestion. In those cases the patentee can o'erco e the presu ption that prosecution history estoppel bars a finding of e(ui'alence.!

$ther rulings: The doctrine of e(ui'alents allows a patentee to pro'e infringe ent e'en when there are inor differences between the patented apparatus and the allegedly infringing apparatus. A patentee ay prospecti'ely depri'e herself of access to the doctrine of e(ui'alents through a doctrine known as prosecution history estoppel, by a ending her patent clai s during the prosecution of her patent application to narrow the scope of her clai s in such a way as to e)clude the infringing apparatus. In turn, there are three e)ceptions to prosecution history estoppel: >0? the e(ui'alent was Hunforeseeable at the ti e of the application,I >;? Hthe rationale underlying the a end ent ObearsP no ore than a tangential relation to the e(ui'alent in (uestion,I or >:? . . . Hso e other reason suggestOsP that the patentee could not reasonably be e)pected to ha'e described the insubstantial substitute in (uestion.I G.R. No. -3;'; Se4 e<1er ,;, ,--; PASCUA" GODINES, petitioner, 's.

THE HONORAB"E COURT OF APPEA"S, SPECIA" FOURTH DI=ISION and S=-AGRO ENTERPRISES, INC., respondents. $esus S. 'nonat for petitioner. 'rturo (. 'linio for pri ate respon)ent. RO6ERO, J.: Through this petition for re'iew in certiorari of a decision of the Court of Appeals affir ing the decision of the trial court, petitioner Pascual Kodines seeks to re'erse the ad'erse decision of the Court a quo that he was liable for infringe ent of patent and unfair co petition. The dispositi'e portion of the assailed decision is hereby (uoted to wit: 4=7+7F$+7, with the eli ination of the award for attorneyCs fees, the &udg ent appealed fro is hereby AFFI+*7., with costs against appellant. , The patent in'ol'ed in this case is /etters Patent "o. %*#;;:8 issued by the Philippine Patent $ffice to one *agdalena S. QillaruJ on Buly 0F, 01A8. It co'ers a utility odel for a hand tractor or power tiller, the ain co ponents of which are the following: !>0? a 'acuu atic house floatG >;? a harrow with ad&ustable operating handleG >:? a pair of paddy wheelsG >2? a protecti'e water co'ering for the engine ain dri'eG >F? a trans ission caseG >8? an operating handleG >A? an engine foundation on the top idportion of the 'acuu atic housing float to which the ain engine dri'e is detachedly installedG >3? a frontal fra e e)tension abo'e the (uarter R circularly shaped water co'ering hold > sic? in place the trans ission caseG >1? a Q#belt connection to the engine ain dri'e with trans ission gear through the pulley, and >09? an idler pulley installed on the engine foundation.! 9 The patented hand tractor works in the following anner: !the engine dri'es the trans ission gear thru the Q#belt, a dri'en pulley and a trans ission shaft. The engine dri'es the trans ission gear by tensioning of the Q#belt which is controlled by the idler pulley. The Q#belt dri'es the pulley attached to the trans ission gear which in turn dri'es the shaft where the paddy wheels are attached. The operator handles the hand tractor through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a %# shaped K.I. pipe at the Q#shaped end.! ; The abo'e entioned patent was ac(uired by SQ#Agro Industries 7nterprises, Inc., herein pri'ate respondent, fro *agdalena QillaruJ, its chair an and president, by 'irtue of a .eed of Assign ent e)ecuted by the latter in its fa'or. $n $ctober :0, 01A1, SQ#Agro Industries caused the publication of the patent in ,ulletin Today, a newspaper of general circulation. In accordance with the patent, pri'ate respondent anufactured and sold the patented power tillers with the patent i printed on the . In 01A1, SQ#Agro Industries suffered a decline of ore than F9S in sales in its *ola'e, Ta boanga del Sur branch. %pon in'estigation, it disco'ered that power tillers si ilar to those patented by pri'ate respondent were being anufactured and sold by petitioner herein. Conse(uently, pri'ate respondent notified Pascual Kodines about the e)isting patent and de anded that the latter stop selling and anufacturing si ilar power tillers. %pon petitionerCs failure to co ply with the de and, SQ#Agro Industries filed before the +egional Trial Court a co plaint for infringe ent of patent and unfair co petition. After trial, the court held Pascual Kodines liable for infringe ent of patent and unfair co petition. The dispositi'e portion of the decision reads as follows:

4=7+7F$+7, pre ises considered, B%.K*7"T is hereby rendered in fa'or of the plaintiff SQ#Agro Industries 7nterprises, Inc., and against defendant Pascual Kodines: 0. .eclaring the writ of preli inary in&unction issued by this Court against defendant as per anentG ;. $rdering defendant Pascual Kodines to pay plaintiff the su of Fifty Thousand Pesos >PF9,999.99? as da ages to its business reputation and goodwill, plus the further su of 7ighty Thousand Pesos >P39,999.99? for unrealiJed profits during the period defendant was anufacturing and selling copied or i itation floating power tillerG :. $rdering the defendant to pay the plaintiff, the further su of 7ight Thousand Pesos >P3,999.99? as rei burse ent of attorneyCs fees and other e)penses of litigationG and to pay the costs of the suit. S$ $+.7+7.. ' The decision was affir ed by the appellate court. Thereafter, this petition was filed. Petitioner aintains the defenses which he raised before the trial and appellate courts, to wit: that he was not engaged in the anufacture and sale of the power tillers as he ade the only upon the special order of his custo ers who ga'e their own specificationsG hence, he could not be liable for infringe ent of patent and unfair co petitionG and that those ade by hi were different fro those being anufactured and sold by pri'ate respondent. 4e find no erit in his argu ents. The (uestion of whether petitioner was anufacturing and selling power tillers is a (uestion of fact better addressed to the lower courts. In dis issing the first argu ent of petitioner herein, the Court of Appeals (uoted the findings of the court, to wit: It is the contention of defendant that he did not anufacture or ake i itations or copies of plaintiffCs turtle power tiller as what he erely did was to fabricate his floating power tiller upon specifications and designs of those who ordered the . =owe'er, this contention appears untenable in the light of the following circu stances: 0? he ad its in his Answer that he has been anufacturing power tillers or hand tractors, selling and distributing the long before plaintiff started selling its turtle power tiller in Ta boanga del Sur and *isa is $ccidental, eaning that defendant is principally a anufacturer of power tillers, not upon specification and design of buyers, but upon his own specification and designG ;? it would be unbelie'able that defendant would fabricate power tillers si ilar to the turtle power tillers of plaintiff upon specifications of buyers without re(uiring a &ob order where the specification and designs of those ordered are specified. "o docu ent was >sic? e'er been presented showing such &ob orders, and it is rather unusual for defendant to anufacture so ething without the specification and designs, considering that he is an engineer by profession and proprietor of the $Ja is 7ngineering shop. $n the other hand, it is also highly unusual for buyers to order the fabrication of a power tiller or hand tractor and allow defendant to anufacture the erely based on their 'erbal instructions. This is contrary to the usual business and anufacturing practice. This is not only ti e consu ing, but costly because it in'ol'es a trial and error ethod, repeat &obs and aterial wastage. .efendant &udicially ad itted two >;? units of the turtle power tiller sold by hi to Policarpio ,erondo. *

$f general acceptance is the rule i bedded in our &urisprudence that !. . . the &urisdiction of the Supre e Court in cases brought to it fro the Court of Appeals in a petition for certiorari under +ule 2F of the +ules of Court is li ited to the re'iew of errors of law, and that said appellate courtCs findings of fact are conclusi'e upon this Court.! : The fact that petitioner herein anufactured and sold power tillers without patenteeCs authority has been established by the courts despite petitionerCs clai s to the contrary. The (uestion now arises: .id petitionerCs product infringe upon the patent of pri'ate respondentE Tests ha'e been established to deter ine infringe ent. These are >a? literal infringe entG and >b? the doctrine of e(ui'alents. 3 In using literal infringe ent as a test, !. . . resort ust be had, in the first instance, to the words of the clai . If accused atter clearly falls within the clai , infringe ent is ade out and that is the end of it.! ) To deter ine whether the particular ite falls within the literal eaning of the patent clai s, the court ust &u)tapose the clai s of the patent and the accused product within the o'erall conte)t of the clai s and specifications, to deter ine whether there is e)act identity of all aterial ele ents. The trial court ade the following obser'ation: Sa ples of the defendantCs floating power tiller ha'e been produced and inspected by the court and co pared with that of the turtle power tiller of the plaintiff >see 7)hibits = to =#;3?. In appearance and for , both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are 'irtually the sa e. .efendant ad itted to the Court that two >;? of the power inspected on *arch 0;, 0132, were anufactured and sold by hi >see TS", *arch 0;, 0132, p. A?. The three power tillers were placed alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof were the floating power tillers of defendant >7)hibits = to =#;?. 4itness +odrigo took photographs of the sa e power tillers >front, side, top and back 'iews for purposes of co parison >see 7)hibits =#2 to =#;3?. Qiewed fro any perspecti'e or angle, the power tiller of the defendant is identical and si ilar to that of the turtle power tiller of plaintiff in for , configuration, design and appearance. The parts or co ponents thereof are 'irtually the sa e. ,oth ha'e the circularly#shaped 'acuu atic housing float, a paddy in front, a protecti'e water co'ering, a trans ission bo) housing the trans ission gears, a handle which is Q#shaped and inclined upwardly, attached to the side of the 'acuu atic housing float and supported by the upstanding K.I. pipes and an engine base at the top idportion of the 'acuu atic housing float to which the engine dri'e ay be attached. In operation, the floating power tiller of the defendant operates also in si ilar anner as the turtle power tiller of plaintiff. This was ad itted by the defendant hi self in court that they are operating on the sa e principles. >TS", August 01, 013A, p. 0:? ,> *oreo'er, it is also obser'ed that petitioner also called his power tiller as a floating power tiller. The patent issued by the Patent $ffice referred to a !far i ple ent but ore particularly to a turtle hand tractor ha'ing a 'acuu atic housing float on which the engine dri'e is held in place, the operating handle, the harrow housing with its operating handle and the paddy wheel protecti'e co'ering.! ,, It appears fro the foregoing obser'ation of the trial court that these clai s of the patent and the features of the patented utility odel were copied by petitioner. 4e are co pelled to arri'e at no other conclusion but that there was infringe ent.

PetitionerCs argu ent that his power tillers were different fro an clutching at straws.

pri'ate respondentCs is that of a drowning

+ecogniJing that the logical fallback position of one in the place of defendant is to a'er that his product is different fro the patented one, courts ha'e adopted the doctrine of e(ui'alents which recogniJes that inor odifications in a patented in'ention are sufficient to put the ite beyond the scope of literal infringe ent. ,9 Thus, according to this doctrine, !>a?n infringe ent also occurs when a de'ice appropriates a prior in'ention by incorporating its inno'ati'e concept and, albeit with so e odification and change, perfor s substantially the sa e function in substantially the sa e way to achie'e substantially the sa e result.! ,; The reason for the doctrine of e(ui'alents is that to per it the i itation of a patented in'ention which does not copy any literal detail would be to con'ert the protection of the patent grant into a hollow and useless thing. Such i itation would lea'e roo for R indeed encourage R the unscrupulous copyist to ake uni portant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied atter outside the clai , and hence outside the reach of the law. ,' In this case, the trial court obser'ed: .efendantCs witness 7duardo CaUete, e ployed for 00 years as welder of the $Ja is 7ngineering, and therefore actually in'ol'ed in the aking of the floating power tillers of defendant tried to e)plain the difference between the floating power tillers ade by the defendant. ,ut a careful e)a ination between the two power tillers will show that they will operate on the sa e funda ental principles. And, according to establish &urisprudence, in infringe ent of patent, si ilarities or differences are to be deter ined, not by the na es of things, but in the light of what ele ents do, and substantial, rather than technical, identity in the test. *ore specifically, it is necessary and sufficient to constitute e(ui'alency that the sa e function can be perfor ed in substantially the sa e way or anner, or by the sa e or substantially the sa e, principle or ode of operationG but where these tests are satisfied, ere differences of for or na e are i aterial. . . . ,* It also stated: To establish an infringe ent, it is not essential to show that the defendant adopted the de'ice or process in e'ery particularG Proof of an adoption of the substance of the thing will be sufficient. !In one sense,! said Bustice ,rown, !it ay be said that no de'ice can be ad&udged an infringe ent that does not substantially correspond with the patent. ,ut another construction, which would li it these words to e)act echanis described in the patent, would be so ob'iously un&ust that no court could be e)pected to adopt it. . . . The law will protect a patentee against i itation of his patent by other for s and proportions. If two de'ices do the sa e work in substantially the sa e way, and acco plish substantially the sa e result, they are the sa e, e'en though they differ in na e, for , or shape. ,: 4e pronounce petitioner liable for infringe ent in accordance with Section :A of +epublic Act "o. 08F, as a ended, pro'iding, inter alia: Sec. :A. *ight of Patentees. R A patentee shall ha'e the e)clusi'e right to ake, use and sell the patented achine, article or product, and to use the patented process for the purpose of industry or co erce, throughout the territory of the Philippines for the ter s

of the patentG an) such !a%ing+ using+ or selling by any person without the authori"ation of the Patentee constitutes infringe!ent of the patent . >7 phasis ours? As far as the issue regarding unfair co petition is concerned, suffice it to say that +epublic Act "o. 088, as a ended, pro'ides, inter alia: Sec. ;1. ,nfair co!petition+ rights an) re!e)ies. R . . . ))) ))) ))) In particular, and without in any way li iting the scope of unfair co petition, the following shall be dee ed guilty of unfair co petition: >a? Any person, who in selling his goods shall gi'e the the general appearance of goods of another anufacturer or dealer, either as to the goods the sel'es or in the wrapping of the packages in which they are contained, or the de'ices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers that the goods offered are those of a anufacturer or dealer other than the actual anufacturer or dealer, or who otherwise clothes the goods with such appearance as shall decei'e the public and defraud another of his legiti ate trade. . . . ))) ))) ))) Considering the foregoing, we find no re'ersible error in the decision of the Court of Appeals affir ing with odification the decision of the trial court. 4=7+7F$+7, pre ises considered, the decision of the Court of Appeals is hereby AFFI+*7. and this petition .7"I7. for lack of erit. S<! ( ?&!ne Be/#<an Cor4ora !on vs. T(e Hon. Co0r o2 A44ea&s, e a&. Fa/ s7 Petitioner S ith @line ,eck an is an A erican corporation licensed to do business in the Philippines. In01A8 it filed with the Philippine Patent $ffice a patent application o'er ethyl F propylthio#;# benJi idaJolecarba ate, a che ical co pound that fought infections caused by gastrointestinal parasites in far and petani als. In 0130 the PP$ issued /etters Patent "o. 02F80 for the said in'ention for a ter of 0A years.Pri'ate respondent Tryco Phar a is a do estic corporation that dealt in 'eterinary products. It anufactured andsold I pregon, a drug which fought gastrointestinal parasites in far ani als, and which contained the co poundAlbendaJole as acti'e ingredient.Clai ing that /etters Patent "o. 02F80 co'ered the substance AlbendaJole, S ith @line filed before the CaloocanCity +egional Trial Court a co plaint against Tyco Phar a for patent infringe ent, and for unfair co petitionunder Article 031 of the +e'ised Penal Code and Section ;1 of the Trade ark /aw.In its .ecision the +TC dis issed S ith @line<s co plaint, and ordered the cancellation of /etters Patent "o.02F80 for being null and 'oid. S ith @line appealed to the Court of Appeals.The CA affir ed that Tyco Phar a was not liable for patent infringe ent, but re'ersed the +TC<s finding that/etters Patent "o. 02F80 was 'oid. S ith @line filed a petition for re'iew with the Supre e Court. Iss0e7 4hether Tyco Phar a co itted patent infringe ent to the pre&udice of S ith @line. He&d7 "o, Tyco Phar a did not 0.The clai s of /etters Patent "o. 02F80 do not ention the co pound AlbendaJole. All that the clai sdisclose are: the co'ered in'ention, i.e., the co pound ethyl F

propylthio#;#benJi idaJole carba ateG theco pound<s ability to destroy parasites without har ing the host ani alsG and the patented ethods,co positions or preparations in'ol'ing the co pound to a)i iJe its efficacy against certain kinds of parasites infecting specified ani als.4hen the language of its clai s is clear and distinct, the patentee is bound thereby and ay not clai anything beyond the . The courts are si ilarly bound: they ay not add to or detract fro the clai s attersnot e)pressed or necessarily i plied, nor ay they enlarge the patent beyond the scope of that which thein'entor clai ed and the patent office allowed, e'en if the patentee ay ha'e been entitled to so ething orethan the words it had chosen would include.The ere absence of the word AlbendaJole in the patent is not deter inati'e of AlbendaJole<s non#inclusionin its clai s. 4hile AlbendaJole is ad ittedly a che ical co pound that e)ists by a na e different fro thatco'ered in the patent, the language of the patent fails to yield anything at all regarding AlbendaJole. "oe)trinsic e'idence had been adduced to pro'e that AlbendaJole inheres in S ith @lein<s patent in spite of itso ission therefro , or that the eaning of the clai s of the patent e braces AlbendaJole.;.S ith @lein has not et the re(uire ents for the application of the doctrine of e(ui'alents.The doctrine of e(ui'alents pro'ides that an infringe ent also takes place when a de'ice appropriates a prior in'ention by incorporating its inno'ati'e concept and, although with so e odification and change, perfor ssubstantially the sa e function in substantially the sa e way to achie'e substantially the sa e result. Thedoctrine thus re(uires satisfaction of the function# eans#and#result test, the patentee ha'ing the burden toshow that all three co ponents of such e(ui'alency test are et.4hile both co pounds ha'e the effect of neutraliJing parasites in ani als, identity of result does not a ountto infringe ent of patent unless AlbendaJole operates in substantially the sa e way or by substantially thesa e eans as the patented co pound, e'en though it perfor s the sa e function and achie'es the sa eresult. In other words, the principle or ode of operation ust be the sa e or substantially the sa e.Apart fro the fact that AlbendaJole is an anthel intic agent like ethyl F propylthio#;#benJi idaJolecarba ate, nothing ore is asserted and accordingly substantiated regarding the ethod or eans by whichAlbendaJole weeds out parasites in ani als, thus gi'ing no infor ation on whether that ethod issubstantially the sa e as the anner by which S ith @lein<s co pound works. C+7S7+ P+7CISI$" S6ST7*S, I"C., petitioner+ s. C$%+T $F APP7A/S A". F/$+$ I"T7+"ATI$"A/ C$+P., respon)ents. This petition for re'iew on certiorari assails the decisioniO0P. The decision of the Court of Appeals was penned by Bustice Kloria C. Paras and concurred in by Bustice Salo e A. *ontoya and Bustice =ector /. =ofileUa. 0 of the Court of Appeals dated "o'e ber 1, 0112 in C.A.#K.+. SP. "o. :22;F entitled HFloro International Corp. 's. =on. Tirso ..C CruJ and Creser Precision Syste , Inc.I, the dispositi'e portion of which reads: H4=7+7F$+7, T=7 P7TITI$" IS =7+7,6 K+A"T7.. T=7 C$*P/AI"T F$+ I"B%"CTI$" A". .A*AK7S, CIQI/ CAS7 "$. 1:#03F8 ,7F$+7 T=7 +7SP$".7"T B%.K7 IS =7+7,6 $+.7+7. .IS*ISS7. A". =IS $+.7+S T=7+7I" $F .7C7*,7+ ;1, 011: A". *A6 00, 0112 A+7 $+.7+7. S7T ASI.7.I Pri'ate respondent is a do estic corporation engaged in the anufacture, production, distribution and sale of ilitary ar a ents, unitions, air unitions and other si ilar aterials. iiO;P $n Banuary ;:, 0119, pri'ate respondent was granted by the ,ureau of Patents, Trade arks and Technology Transfer >,PTTT?, a /etters Patent "o. %*#81:3 iiiO:P co'ering an aerial fuJe which was

published in the Septe ber#$ctober 0119, Qol. III, "o. F issue of the ,ureau of Patent<s $fficial KaJette.i'O2P So eti e in "o'e ber 011:, pri'ate respondent, through its president, *r. Kregory Floro, Br., disco'ered that petitioner sub itted sa ples of its patented aerial fu"e to the Ar ed Forces of the Philippines >AFP? for testing. =e learned that petitioner was clai ing the aforesaid aerial fu"e as its own and planning to bid and anufacture the sa e co ercially without license or authority fro pri'ate respondent. To protect its right, pri'ate respondent on .ece ber :, 011:, sent a letter 'OFP to petitioner ad'ising it fro its e)isting patent and its rights thereunder, warning petitioner of a possible court action and5or application for in&unction, should it proceed with the scheduled testing by the ilitary on .ece ber A, 011:. In response to pri'ate respondent<s de and, petitioner filed on .ece ber 3, 011: a co plaint 'iO8P for in&unction and da ages arising fro the alleged infringe ent before the +egional Trial Court of MueJon City, ,ranch 33. The co plaint alleged, a ong others: that petitioner is the first, true and actual in'entor of an aerial fuJe deno inated as HFuJe, P.+ AA C,2I which is de'eloped as early as .ece ber 0130 under the Self#+eliance .efense Posture Progra >S+.P? of the AFPG that so eti e in 0138, petitioner began supplying the AFP with the said aerial fuJeG that pri'ate respondent<s aerial fuJe is identical in e'ery respect to the petitioner<s fuJeG and that the only difference between the two fuJes are iniscule and erely cos etic in nature. Petitioner prayed that a te porary restraining order and5or writ of preli inary in&unction be issued en&oining pri'ate respondent including any and all persons acting on its behalf fro anufacturing, arketing and5or profiting therefro , and5or fro perfor ing any other act in connection therewith or tending to pre&udice and depri'e it of any rights, pri'ileges and benefits to which it is duly entitled as the first, true and actual in'entor of the aerial fu"e. $n .ece ber 09, 011:, the trial court issued a te porary restraining order. Thereafter, hearings were held on the application of petitioner for the issuance of a writ of preli inary in&unction, with both parties presenting their e'idence. After the hearings, the trial court directed the parties to sub it their respecti'e e oranda in support of their positions. $n .ece ber ;A, 011:, pri'ate respondent sub itted its e orandu 'iiOAP alleging that petitioner has no cause of action to file a co plaint of infringe ent against it since it has no patent for the aerial fu"e which it clai s to ha'e in'entedG that petitioner<s a'ailable re edy is to file a petition for cancellation of patent before the ,ureau of PatentsG that pri'ate respondent as the patent holder cannot be stripped of its property right o'er the patented aerial fu"e consisting of the e)clusi'e right to anufacture, use and sell the sa e and that it stands to suffer irreparable da age and in&ury if it is en&oined fro the e)ercise of its property right o'er its patent. $n .ece ber ;1, 011:, the trial court issued an $rder'iiiO3P granting the issuance of a writ of preli inary in&unction against pri'ate respondent the dispositi'e portion of which reads: H4=7+7F$+7, plaintiff<s application for the issuance of a writ of preli inary in&unction is granted and, upon posting of the corresponding bond by plaintiff in the a ount of P=P ;99,999.99, let the writ of preli inary in&unction be issued by the branch Clerk of this Court en&oining the defendant and any and all persons acting on its behalf or by and under its authority, fro anufacturing, arketing and5or selling aerial fuJes identical, to those of plaintiff, and fro profiting therefro , and5or fro perfor ing any other act in connection therewith until further orders fro this Court.I Pri'ate respondent o'ed for reconsideration but this was denied by the trial courts in its $rder i)O1P of *ay 00, 0112, pertinent portions of which read:

HFor resolution before this Court is the *otion for +econsideration filed by the defendant and the plaintiff<s $pposition thereto. The Court finds no sufficient cause to reconsider its order dated .ece ber ;1, 011:. .uring the hearing for the issuance of the preli inary in&unction, the plaintiff has a ply pro'en its entitle ent to the relief prayed for. It is undisputed that the plaintiff has de'eloped its aerial fuJe way back in 0130 while the defendant began anufacturing the sa e only in 013A. Thus, it is only logical to conclude that it was the plaintiff<s aerial fuJe that was copied or i itated which gi'es the plaintiff the right to ha'e the defendant en&oined Hfro anufacturing, arketing and5or selling aerial fuJes identical to those of the plaintiff, and fro profiting therefro and5or perfor ing any other act in connection therewith until further orders fro this Court.I 4ith regards to the defendant<s assertion that an action for infringe ent ay only be brought by Hanyone possessing right, title or interest to the patented in'ention,I >Section 2;, +A 08F? (ualified by Section 09, +A 08F to include only Hthe first true and actual in'entor, his heirs, legal representati'es to assignees,I this court finds the foregoing to be untenable. Sec. 09 erely enu erates the persons who ay ha'e an in'ention patented which does not necessarily li it to these persons the right to institute an action for infringe ent. .efendant further contends that the order in issue is disrupti'e of the status quo. $n the contrary, the order issued by the Court in effect aintained the status quo. The last actual , peaceable uncontested status e)isting prior to this contro'ersy was the plaintiff anufacturing and selling its own aerial fuJes P.+ AA C,2 which was ordered stopped through the defendant<s letter. 4ith issuance of the order, the operations of the plaintiff continue. /astly, this court belie'es that the defendant will not suffer irreparable in&ury by 'irtue of said order. The defendant<s clai is pri arily hinged on its patent >/etters Patent "o. %*#813:? the 'alidity of which is being (uestioned in this case. 4=7+7F$+7, pre ises considered, the *otion for +econsideration is hereby denied for lack of S$ $+.7+7..I Aggrie'ed, pri'ate respondent on Bune ;A, 0112, filed a petition for certiorari, anda us and prohibition)O09Pbefore respondent Court of Appeals raising as grounds the following: a. Petitioner has no cause of action for infringe ent against pri'ate respondent, the latter not ha'ing any patent for the aerial fuJe which it clai s to ha'e in'ented and de'eloped and allegedly infringed by pri'ate respondentG The case being an action for cancellation or in'alidation of pri'ate respondent<s /etters Patent o'er its own aerial fuJe, the proper 'enue is the $ffice of the .irector of PatentsG The trial court acted in gra'e abuse of discretion and or in e)cess of &urisdiction in finding that petitioner has fully established its clear title or right to preli inary in&unctionG The trial court acted in gra'e abuse of discretion and5or in e)cess of &urisdiction in granting the preli inary in&unction, it being disrupti'e of the status (uoG and The trial court acted in gra'e abuse of discretion and5or in e)cess of &urisdiction in granting the preli inary in&unction thereby depri'ing pri'ate respondent of its property rights o'er the patented aerial fuJe and cause it irreparable da ages. erit.

b. c.

d. e.

$n "o'e ber 1, 0112, the respondent court rendered the now assailed decision re'ersing the trial court<s $rder of .ece ber ;1, 011: and dis issing the co plaint filed by petitioner.

The

otion for reconsideration was also denied on Banuary 0A, 011F. )iO00P =ence, this present petition.

It is petitioner<s contention that it can file, under Section 2; of the Patent /aw >+.A. 08F?, an action for infringe ent not as a patentee but as an entity in possession of a right, title or interest in and to the patented in'ention. It ad'ances the theory that while the absence of a patent ay pre'ent one fro lawfully suing another for infringe ent of said patent, such absence does not bar the first true and actual in'entor of the patented in'ention fro suing another who was granted a patent in a suit for declaratory or in&uncti'e relief recogniJed under A erican patent laws. This re edy, petitioner points out, ay be likened to a ci'il action for infringe ent under Section 2; of the Philippine Patent /aw. 4e find the abo'e argu ents untenable. Section 2; of +.A. 08F, otherwise known as the Patent /aw, e)plicitly pro'ides: S7CTI$". 2;. Ci il action for infringe!ent. V Any patentee, or anyone possessing any right, title or interest in and to the patented in'ention, whose rights ha'e been infringed, ay bring a ci'il action before the proper Court of First Instance >now +egional Trial court?, to reco'er fro the infringer da ages sustained by reason of the infringe ent and to secure an in&unction for the protection of his right. ) ) ) %nder the afore(uoted law, only the patentee or his successors#in#interest ay file an action for infringe ent. The phrase Hanyone possessing any right+ title or interest in an) to the patente) in ention I upon which petitioner aintains its present suit, refers only to the patentee<s successors#in#interest, assignees or grantees since actions for infringe ent of patent ay be brought in the na e of the person or persons interested, whether as patentee, assignees or grantees, of the e)clusi'e right. )iiO0;P *oreo'er, there can be no infringe ent of a patent until a patent has been issued, since whate'er right one has to the in'ention co'ered by the patent arises alone fro the grant of patent. )iiiO0:P In short, a person or entity who has not been granted letters patent o'er an in'ention and has not ac(uired any right or title thereto either as assignee or as licensee, has no cause of action for infringe ent because the right to aintain an infringe ent suit depends on the e)istence of the patent. )i'O02P Petitioner ad its it has no patent o'er its aerial fu"e. Therefore, it has no legal basis or cause of action to institute the petition for in&unction and da ages arising fro the alleged infringe ent by pri'ate respondent. 4hile petitioner clai s to be the first in'entor of the aerial fu"e, still it has no right of property o'er the sa e upon which it can aintain a suit unless it obtains a patent therefor. %nder A erican &urisprudence, and in'entor has no co on#law right to a onopoly of his in'ention. =e has the right to ake, use and 'end his own in'ention, but if he 'oluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with i punity. A patent, howe'er, gi'es the in'entor the right to e)clude all others. As a patentee, he has the e)clusi'e right of aking, using or selling the in'ention. )' O0FP Further, the re edy of declaratory &udg ent or in&uncti'e suit on patent in'alidity relied upon by petitioner cannot be likened to the ci'il action for infringe ent under Section 2; of the Patent /aw. The reason for this is that the said re edy is a'ailable only to the patent holder or his successors#in#interest. Thus, anyone who has no patent o'er an in'ention but clai s to ha'e a right or interest thereto can not file an action for declaratory &udg ent or in&uncti'e suit which is not recogniJed in this &urisdiction. Said person, howe'er, is not left without any re edy. =e can, under Section ;3 of the afore entioned law, file a petition for cancellation of the patent within three >:? years fro the publication of said patent with the .irector of Patents and raise as ground therefor that the person to who the patent was issued is not the true and actual in'entor. =ence, petitioner<s re edy is not to file an action for in&unction or infringe ent but to file a petition for cancellation of pri'ate respondent< patent. Petitioner howe'er failed to do so. As

such, it can not now assail or i pugn the 'alidity of the pri'ate respondent<s letters patent by clai ing that it is the true and actual in'entor of the aerial fu"e. Thus, as correctly ruled by the respondent Court of Appeals in its assailed decision: H since the petitioner -pri ate respon)ent herein. is the patentee of the )ispute) in ention e!brace) by letters of patent ,( /o. 0123 issue) to it on $anuary 42+ 5116 by the 7ureau of Patents+ it has in its fa or not only the presu!ption of ali)ity of its patent+ but that of a legal an) factual first an) true in entor of the in ention.I In the case of Aguas 's. .e /eon,)'iO08P we stated that: HThe 'alidity of the patent issued by the Philippine Patent $ffice in fa'or of the pri'ate respondent and the (uestion o'er the in'est ents, no'elty and usefulness of the i pro'ed process therein specified and described are atters which are better deter ined by the Philippines patent $ffice, co posed of e)perts in their field, ha'e, by the issuance of the patent in (uestion, accepted the thinness of the pri'ate respondent<s new tiles as a disco'ery. There is a presu ption that the Philippine Patent $ffice has correctly deter ined the patentability of the i pro'e ent by the pri'ate respondent of the process in (uestion.I In fine, in the absence of error or abuse of power or lack or &urisdiction or gra'e abuse of discretion, we sustain the assailed decision of the respondent Court of Appeal. WHEREFORE, the decision of the Court of Appeals is hereby AFFI+*7.. "o pronounce ent as to costs. S$ $+.7+7.. +egalado, >Chair an?, *elo, Puno, and *endoJa, BB., concur.

Ta@ada vs. An%ara, G.R. No. ,,)9-*, 6aA 9, ,--3 IN RE" TO7 P(!&!44!ne /o<<! <en o (e GATT-TRIPS a%ree<en Section :. International Con'entions and +eciprocity. # Any person who is a national or who is do iciled or has a real and effecti'e industrial establish ent in a country which is a party to any con'ention, treaty or agree ent relating to intellectual property rights or the repression of unfair co petition, to which the Philippines is also a party, or e)tends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the e)tent necessary to gi'e effect to any pro'ision of such con'ention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. >n? Keneral Agree ent on Tariffs and Trade >GATT? was a collection of treaties go'erning access to the econo ies of treaty adherents with no institutionaliJed body ad inistering the agree ents or dependable syste of dispute settle ent. >Tanada 's. Angara? Ta@ada vs. An%ara, G.R. No. ,,)9-*, 6aA 9, ,--3 The Philippines &oined 4T$ as a founding e ber with the goal, as articulated by President Fidel Q. +a os in two letters to the Senate of i pro'ing !Philippine access to foreign arkets, especially its a&or trading partners, through the reduction of tariffs on its e)ports, particularly agricultural and industrial products.! The President also saw in the 4T$ the opening of !new opportunities for the

ser'ices sector . . . , >the reduction of? costs and uncertainty associated with e)porting . . . , and >the attraction of? ore in'est ents into the country.! Although the Chief 7)ecuti'e did not e)pressly ention it in his letter, the Philippines R and this is of special interest to the legal profession R will benefit fro the 4T$ syste of dispute settle ent by &udicial ad&udication through the independent 4T$ settle ent bodies called >0? .ispute Settle ent Panels and >;? Appellate Tribunal. =eretofore, trade disputes were settled ainly through negotiations where solutions were arri'ed at fre(uently on the basis of relati'e bargaining strengths, and where naturally, weak and underde'eloped countries were at a disad'antage. +'. D!d RA )9-; re4ea& eB!s !n% &a$s on !n e&&e/ 0a& 4ro4er AC /8. *epublic 'ct 3412 Section 421.5 'll 'cts an) parts of 'cts inconsistent herewith+ !ore particularly *epublic 'ct /o. 509+ as a!en)e): *epublic 'ct /o. 500+ as a!en)e): an) 'rticles 533 an) 531 of the *e ise) Penal Co)e: Presi)ential Decree /o. ;1+ inclu)ing Presi)ential Decree /o. 439+ as a!en)e)+ are hereby repeale). <hus+ only inconsistent pro isions or parts of *' 509+ *' 500+ PD ;1 an) PD 439 were repeale)

C(!n% vs. Sa&!nas, G.R. No. ,:,9-*, D0ne 9-, 9>>* Fa/ s Bessie K. Ching is the owner and general anager of Beshicris *anufacturing Co., the aker and anufacturer of a %tility *odel, described as H/eaf Spring 7ye ,ushing for Auto obileI ade up of plastic. $n Septe ber 2, ;990, Ching and Boseph 6u were issued by the "ational /ibrary Certificates of Copyright +egistration and .eposit of the said work described therein as H/eaf Spring 7ye ,ushing for Auto obile.I $n Septe ber ;9, ;990, Ching re(uested the "ational ,ureau of In'estigation >",I? for police5in'estigati'e assistance for the apprehension and prosecution of illegal anufacturers, producers and5or distributors of the works. After due in'estigation, the ",I filed applications for search warrants in the +TC of *anila against 4illia Salinas, Sr. and the officers and e bers of the ,oard of .irectors of 4ilaware Product Corporation. It was alleged that the respondents therein reproduced and distributed the said odels penaliJed under Sections 0AA.0 and 0AA.: of +epublic Act >+.A.? "o. 3;1:. Iss0es 4hether or not the sub&ect atter is co'ered by the Copyright of the Intellectual Property CodeE He&d It is worthy to state that the works protected under the /aw on Copyright are: literary or artistic works >Sec. 0A;? and deri'ati'e works >Sec. 0A:?. The /eaf Spring 7ye ,ushing and Qehicle ,earing Cushion fall on neither classification. ,eing plain auto oti'e spare parts that ust confor to the original structural design of the co ponents they seek to replace, the /eaf Spring 7ye ,ushing and Qehicle ,earing Cushion are not orna ental. They lack the decorati'e (uality or 'alue that ust characteriJe authentic works of applied art. They are not e'en artistic creations with incidental utilitarian functions or works incorporated in a useful article. In actuality, the personal properties described in the search warrants are echanical works, the principal function of which is utility sans any aesthetic e bellish ent. "either are we to regard the /eaf Spring 7ye ,ushing and Qehicle ,earing Cushion as included in the catch#all phrase Hother literary, scholarly, scientific and artistic worksI in Section 0A;.0>a? of +.A. "o. 3;1:. Applying the principle of e&usde generis which states that Hwhere a statute describes things of a particular class or kind acco panied by words of a generic character, the generic word will usually be li ited to things of a si ilar nature with those particularly enu erated, unless there be so ething in the

conte)t of the state which would repel such inference,IO28P the /eaf Spring 7ye ,ushing and Qehicle ,earing Cushion are not copyrightable, being not of the sa e kind and nature as the works enu erated in Section 0A; of +.A. "o. 3;1:. DE" ROSARIO = CA Intellectual Property Law Law on Patents Infringe!ent =arao%e (achine FACTS7 .el +osario was granted a patent for his inno'ation called the H*inus $neI karaoke. The patent was issued in Bune 0133 for fi'e years and was renewed in "o'e ber 0110 for another fi'e years as there were i pro'e ent introduced to his H inus oneI karaoke. In 011:, while the patent was still effecti'e, .el +osario sued Banito Corporation, a Bapanese co pany owned by Banito Cua, for allegedly infringing upon the patent of .el +osario. .el +osario alleged that Banito was anufacturing a sing#along syste under the brand H iyata karaokeI which is substantially if not identical to his H inus oneI karaoke. The lower court ruled in fa'or of .el +osario but the Court of Appeals ruled that there was no infringe ent because the karaoke syste was a uni'ersal product anufactured, ad'ertised and arketed all o'er the world long before .el +osario was issued his patents. ISSUE7 4hether or not the Court of Appeals erred in its ruling. HE"D7 6es. The Patent /aw e)pressly acknowledges that any new odel of i ple ents or tools of any industrial product e'en if not possessed of the (uality of in'ention but which is of practical utility is entitled to a patent for utility odel. =ere, there is no dispute that the letters patent issued to .el +osario are for utility odels of audio e(uip ent. It is ele entary that a patent ay be infringed where the essential or substantial features of the patented in'ention are taken or appropriated, or the de'ice, achine or other sub&ect atter alleged to infringe is substantially identical with the patented in'ention. In order to infringe a patent, a achine or de'ice ust perfor the sa e function, or acco plish the sa e result by identical or substantially identical eans and the principle or ode of operation ust be substantially the sa e. In the case at bar, iyata karaoke was pro'en to ha'e substantial if not identical functionality as that of the inus one karaoke which was co'ered by the second patent issued to .el +osario. Further, Banito failed to present co petent e'idence that will show that .el +osario<s inno'ation is not new. FI"A/ "$T7S: Cresser Precision Syste s '. CA$nly the patentee ay file for infringe ent. There can be no infringe ent of a patent until a patent has been issuedsince whate'er right one has to the in'ention conferred by the patent arises alone fro a grant of patent.S ith @line '. CAArticle F of the Paris Con'ention une(ui'ocally and e)plicitly respects the right of the e ber countries to adoptlegislati'e easures to pro'ide for grant of co pulsory licenses to pre'ent abuses which ight result fro the e)erciseof the e)clusi'e rights conferred by the patent.Parke .a'is '. .octors Phar aceuticalsFact of e)istence of ; different substances of edicine of which the court could not take &udicial notice of norco petent to so find in the absence of e'idence, and the e)istence of two patents re(uire presentation of e'idence toshow whether the substances are the sa e or not.KodineJ '. CATests to deter ine infringe ent areG 0? .octrine of /iteral Infringe ent ;? .octrine of 7(ui'alents. The reason for thedoctrine of e(ui'alents is that to per it the i itation of a patented in'ention which does not copy any literal detailwould be to con'ert the protection of the patent grant into hollow and useless thing.S ith @line ,eck an '. CAThe doctrine of e(ui'alents thus re(uires satisfaction of the functions# eans#and# result test, the patentee ha'ing theburden to show that all three co ponents of such e(ui'alency test are et.*anJano '. CAThere is a presu ption that the Philippine Patent $ffice has correctly deter ined the

patentability of the odel andsuch action ust not be interfered with, in the absence of co petent e'idence to the contrary. *aguan '. CAAn in'ention ust possess the essential ele ents of no'elty, originality, and precedence and for the patentee to beentitled to protection, the in'ention ust be new to the world. A single instance of public use of the in'ention by apatentee for ore than two years>now ore than 0 year under Sec.1 of Patent /aw? before the date of application forhis patent will be fatal to the 'alidity of the patent when issued.

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