Manzano vs.

Court of Appeals and Mandolaria

GR NO. 113388, September 5, 1997
FACTS:
A case of cancellation of Letters of Patent for a gas burner before the Patent
Office was filed by one Angelita Manzano against Melecia Mandolaris.
The petitioner made the following allegations:
A. The utility model of the gas burner covered in this patent was not inventive
or useful;
B. The specification of the letters of patent did not comply with the
requirements of Sec 14, RA No. 165, as amended;
C. Melecia was not the original, true and actual inventor of the utility model;
D. The letters was secured thru fraud;
E. The utility model has been in existence years before her application for
patent was filed.
Respondent Mandolaria presented lone witness, Rolando, where the latter claimed that he
used to work as a supervisor before the United Foundry was was involved in the construction
of several models of burners, that after several attempts, they were finally able to perfect the
process of manufacturing lampburners and consequently, filed the patent before the office.
On 7-7-86, the Director of Patents issued a decision denying the petition for cancellation and
holding that the evidence was not convincing enough.
The case was brought before the Court of Appeals which upheld the decision of the Patent
Office.
A petition for Certiorari was subsequently filed before the Supreme Court.
ISSUE:
Whether the dismissal is proper where the patent applied for has no substantial difference
between the model to be patented and those sold by petitioner.
RULING:
The element of novelty is an essential requisite of the patentability of an invention or
discovery. If a device or process has been known or used by others prior to its invention or
discovery by the applicant, an application for a patent therefor should be denied; and if the
application has been granted, the court, in a judicial proceeding in which the validity of the
patent is drawn in question, will hold it void and ineffective. It has been repeatedly held that
an invention must possess the essential elements of novelty, originality and precedence, and
for the patentee to be entitled to the protection the invention must be new to the world.
However, The validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the improved
model of the LPG burner are matters which are better determined by the Patent Office. The
technical staff of the Philippine Patent Office composed of expert s in their field has by the

issuance of the patent in question accepted private respondents model of gas burner as a
discovery. There is a presumption that the Office has correctly determined the patentability
of the model and such action must not be interfered with in the absence of competent
evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when affirmed
by the Court of Appeals, are conclusive on this Court when supported by substantial
evidence. Petitioner has failed to show compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of Appeals. Petition DISMISSED.
Creser Precision Systems Inc. v Court of Appeals and Floro International Co.
GR NO. 118708, February 2, 1998

FACTS:
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in
1993, respondent discovered that the petitioner submitted samples of its patented aerial
fuze to the AFP for testing claiming to be his own. To protect its right, respondent sent letter of
warning to petitioner on a possible court action should it proceed its testing by the AFP.
In response the petitioner filed a complaint for injunction and damages arising from alleged
infringement before the RTC asserting that it is the true and actual inventor of the aerial fuze
which it developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It
has been supplying the military of the aerial fuze since then and that the fuze of
the respondent is similar as that of the petitioner. Petitioner prayed for restraining order and
injunction from marketing, manufacturing and profiting from the said invention by the
respondent.
The trial court ruled in favor of the petitioner citing the fact that it was the first to develop the
aerial fuze since 1981 thus it concludes that it is the petitioners aerial fuze that was copied
by the respondent. Moreover, the claim of respondent is solely based on its letter of patent
which validity is being questioned.
On appeal, respondent argued that the petitioner has no cause of action since he has no
right to assert there being no patent issued to his aerial fuze. The Court of Appeals reversed
the decision of the trial court dismissing the complaint of the petitioner. It was the contention
of the petitioner that it can file under Section 42 of the Patent Law an action for infringement
not as a patentee but as an entity in possession of a right, title or interest to the patented
invention.
It theorizes that while the absence of a patent prevents one from lawfully suing another for
infringement of said patent, such absence does not bar the true and actual inventor of the
patented invention from suing another in the same nature as a civil action for infringement.

ISSUE:
Whether or not the petitioner has the right to assail the validity of the patented work of
the respondent?
RULING:
The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent
(RA 165) provides that only the patentee or his successors-in-interest may file an action
against infringement. What the law contemplates in the phrase anyone possessing any
right, title or interest in and to the patented invention refers only to the patentees
successors-in-interest, assignees or grantees since the action on patent infringement may be
brought only in the name of the person granted with the patent. There can be no
infringement of a patent until a patent has been issued since the right one has over the
invention covered by the patent arises from the grant of the patent alone. Therefore, a
person who has not been granted letter of patent over an invention has not acquired right
or title over the invention and thus has no cause of action for infringement. Petitioner
admitted to have no patent over his invention. Respondents aerial fuze is covered by
letter of patent issued by the Bureau of Patents thus it has in his favor not only the
presumption of validity of its patent but that of a legal and factual first and true inventor of
the invention.

ROBERTO L. DEL ROSARIO vs. COURT OF APPEALS AND JANITO CORPORATION

G.R. No. 115106 March 15, 1996
FACTS:
Roberto del Rosario petitions this Court to review the decision of the Court of Appeals 1
which set aside the order of the Regional Trial Court of Makati granting a writ of preliminary
injunction in his favor.
The antecedents: On 18 January 1993 petitioner filed a complaint for patent infringement
against private respondent Janito Corporation. Roberto L. del Rosario alleged that he was a
patentee of an audio equipment and improved audio equipment commonly known as t he
sing-along System or karaoke under Letters Patent No. UM-5269 dated 2 June 1983 as well as
Letters Patent No. UM-6237 dated 14 November 1986 issued by the Director of Patents. The
effectivity of both Letters Patents was for five (5) years and was extended for another five (5)
years starting 2 June 1988 and 14 November 1991, respectively. He described his sing -along
system as a handy multi-purpose compact machine which incorporates an amplifier
speaker, one or two tape mechanisms, optional tuner or radio and microphone mixer with
features to enhance one's voice, such as the echo or reverb to stimulate an opera hall or a
studio sound, with the whole system enclosed in one cabinet casing.

In the early part of 1990 petitioner learned that private respondent was manufacturing a
sing-along system bearing the trademark miyata or miyata karaoke substantially similar if not
identical to the sing-along system covered by the patents issued in his favor.
ISSUE:
Whether respondent Court of Appeals erred in finding the trial court to have committed
grave abuse of discretion in enjoining private respondent from manufacturing, selling and
advertising the miyata karaoke brand sing-along system for being substantially similar if not
identical to the audio equipment covered by letters patent issued to petitioner.
HELD:
For the writ to issue the interest of petitioner in the controversy or the right he seeks to be
protected must be a present right, a legal right which must be shown to be clear and
positive.
Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued for
a term of five (5) years from the grant of a Utility Model herein described
The const ruction of an audio equipment com prising a subst antially cubical casing having a
window at its rear and upper corner fitted with a slightly inclined control panel, said cubical
(casing) having a vertical partition wall therein defining a rear compartment and a front
compartment, and said front compartment serving as a speaker baffle; a transistorized
amplifier circuit having an echo section and writhed in at least the printed circuit boards
placed inside said rear compartment of said casing and attached to said vertical partition
wall, said transist orized amplifier circuit capable of being operat ed from out side, through
various cont rols mount ed on said control panel of such casing; a loud speaker fitted inside
said front compartment of said casing and connected to the out put of the main audio
amplifier section of said transistorized amplifier circuit and a tape player mount ed on the t op
wall of said casing and said tape player being connect ed in conventional manner t o said
transistorized amplifier circuit.
Petitioner established before the trial court that respondent Janito Corporation was
manufacturing a similar sing-along system bearing the trademark miyata which infringed his
patented models. He also alleged that both his own patented audio equipment and
respondent's sing-along system were constructed in a casing with a control panel, the casing
having a vertical partition wall defining the rear compartment from the front compartment,
with the front compartment consisting of a loud speaker baffle, both containing a
transistorized amplifier circuit capable of being operated from outside through various
controls mounted on the control panel, and that both had loud speakers fitted inside the
front compartment of the casing and connected to the output of the main audio amplifier
section both having a tape recorder and a tape player mounted on the control panel with
the tape recorder and tape player being both connected to the transistorized amplifier
circuit.
It may be noted that respondent corporation failed to present before the trial court a clear,
competent and reliable comparison between its own model and that of petitioner, and

disregarded completely petitioner's utility Model No. 6237 which improved on his first
patented model. Notwithstanding the differences cited by respondent corporation, it did
not refute and disprove the allegations of petitioner before the trial court that: (a) both are
used by a singer to sing and amplify his voice; (b) both are used to sing with a minus-one or
multiplex tapes, or that both are used to play minus-one or standard cassette tapes for
singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex tape
and to record the singing and the accompaniment; (d) both are used to sing with live
accompaniment and to record the same; (e) both are used to enhance the voice of the
singer using echo effect, treble, bass and other controls; (g) both are equipped with
cassette tape decks which are installed with one being used for playback and the other, for
recording the singer and the accompaniment, and both may also be used to record a
speaker's voice or instrumental playing, like the guitar and other instruments; (h) both are
encased in a box-like cabinets; and, (i) both can be used with one or more microphones.
The trial court is direct ed to continue with the proceedings on the main action pending
before it in order to resolve with dispatch the issues therein presented.
Godines vs. Court of Appeals
G.R. No. 97343, 226 SCRA 338 , September 13, 1993
Through this petition for review in certiorari of a decision of the Court of Appeals affirming the
decision of the trial court, petitioner Pascual Godines seeks to reverse the adverse decision
of the Court a quo that he was liable for infringement of patent and unfair competition. The
disposit ive portion of the assailed decision is hereby quoted to wit:

WHEREFORE, with the elimination of the award for attorney's fees, the judgment appealed
from is hereby AFFIRMED, with costs against appellant. 1

The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent
Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand
tractor or power tiller, the main components of which are the following: "(1) a vacuumatic
house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a
protective water covering for the engine main drive; (5) a transmission case; (6) an
operating handle; (7) an engine foundation on the top midportion of the vacuumatic
housing float to which the main engine drive is detachedly installed; (8) a frontal frame
extension above the quarter circularly shaped water covering hold (sic) in place the
transmission case; (9) a V-belt connection to the engine main drive with transmission gear
through the pulley, and (10) an idler pulley installed on the engine foundation." 2 The
patented hand tractor works in the following manner: "the engine drives the transmission
gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives the
transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt

drives the pulley attached to the transmission gear which in turn drives 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 U shaped G.I. pipe at the V-shaped end." 3

The above mentioned patent was acquired by SV-Agro Indust ries Enterprises, Inc., herein
private respondent, from Magdalena Villaruz, its chairman and president, by virtue of a
Deed of Assignment executed by the latter in its favor. On October 31, 1979, SV -Agro
Industries caused the publication of the patent in Bulletin Today, a newspaper of general
circulation.

In accordance with the patent, private respondent manufactured and sold the patented
power tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered a decline
of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it
discovered that power tillers similar to those patented by private respondent were being
manufactured and sold by petitioner herein. Consequently, private respondent notified
Pascual Godines about the existing patent and demanded that the latter stop selling and
manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SVAgro Industries filed before the Regional Trial Court a complaint for infringement of pat ent
and unfair competition.

After trial, the court held Pascual Godines liable for infringement of patent and unfair
competition. The dispositive portion of the decision reads as follows:

WHEREFORE, premises considered, JUDGMENT is hereby rendered in fav or of the plaintiff SVAgro Industries Enterprises, Inc., and against defendant Pascual Godines:

1.
Declaring the writ of preliminary injunction issued by this Court against defendant as
permanent;

2.
Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos
(P50,000.00) as damages to its business reputation and goodwill, plus the further sum of
Eighty Thousand Pesos (P80,000.00) for unrealized profits during the period defendant was
manufacturing and selling copied or imitation floating power tiller;

3.
Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand Pesos
(P8,000.00) as reimbursement of attorney's fees and other expenses of litigation; and to pay
the costs of the suit.

SO ORDERED. 4

The decision was affirmed by the appellate court.

Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before
the trial and appellate courts, to wit: that he was not engaged in the manufacture and sale
of the power tillers as he made them only upon the special order of his customers who gave
their own specifications; hence, he could not be liable for infringement of patent and unfair
competition; and that those made by him were different from those being manufactured
and sold by private respondent.

We find no merit in his arguments. The question of whether petitioner was manufacturing and
selling power tillers is a question of fact better addressed to the lower courts. In dismissing the
first argument of petitioner herein, the Court of Appeals quoted the findings of the court, to
wit:

It is the contention of defendant that he did not manufacture or make imitations or copies of
plaintiff's turtle power tiller as what he merely did was to fabricate his floating power tiller
upon specifications and designs of those who ordered them. However, this contention
appears untenable in the light of the following circumstances: 1) he admits in his Answer that
he has been manufacturing power tillers or hand tractors, selling and distributing them long
before plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis
Occidental, meaning that defendant is principally a manufacturer of power tillers, not upon
specification and design of buyers, but upon his own specification and design; 2) it would be
unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of
plaintiff upon specifications of buyers without requiring a job order where the specification
and designs of those ordered are specified. No document was (sic) ever been presented
showing such job orders, and it is rather unusual for defendant to manufacture something
without the specification and designs, considering that he is an engineer by profession and
proprietor of the Ozamis Engineering shop. On 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
manufacture them merely based on their verbal instructions. This is contrary to t he usual

business and manufacturing practice. This is not only time consuming, but costly because it
involves a trial and error method, repeat jobs and material wastage. Defendant judicially
admitted two (2) units of the turtle power tiller sold by him to Policarpio Berondo. 5

Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of
the Supreme Court in cases brought to it from the Court of Appeals in a petition for certiorari
under Rule 45 of the Rules of Court is limited to the review of errors of law, and that said
appellate court's findings of fact are conclusive upon this Court." 6

The fact that petitioner herein manufactured and sold power tillers without patentee's
authority has been established by the courts despite petitioner's claims to the contrary.

The question now arises: Did petitioner's product infringe upon the patent of private
respondent?

Tests have been established to determine infringement. These are (a) literal infringement;
and (b) the doctrine of equivalents. 7 In using literal infringement as a test, ". . . resort must be
had, in the first instance, to the words of the claim. If accused matter clearly falls within the
claim, infringement is made out and that is the end of it." 8 To determine w hether the
particular item falls within the literal meaning of the patent claims, the court must juxtapose
the claims of the patent and the accused product within the overall context of the claims
and specifications, to determine whether there is exact identity of all material elements. 9

The trial court made the following observation:

Samples of the defendant's floating power tiller have been produced and inspected by the
court and compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H-28).
In appearance and form, both the floating power tillers of the defendant and the turtle
power tiller of the plaintiff are virtually the same. Defendant admitted to the Court that two
(2) of the power inspected on March 12, 1984, were manufactured and sold by him (see TSN,
March 12, 1984, p. 7). 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 (Exhibits H to H-2). Witness Rodrigo took photographs of the same
power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to
H-28). Viewed from any perspective or angle, the power tiller of the defendant is identical

and similar t o that of the turtle power tiller of plaintiff in form, configuration, design and
appearance. The parts or components thereof are virtually the same. Both have the
circularly-shaped vacuumatic housing float, a paddy in front, a protective water covering, a
transmission box housing the transmission gears, a handle which is V-shaped and inclined
upwardly, attached to the side of the vacuumatic housing float and supported by the
upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing
float to which the engine drive may be attached. In operation, the floating power tiller of
the defendant operates also in similar manner as the turtle power tiller of plaintiff. This was
admitted by the defendant himself in court that they are operating on the same principles.
(TSN, August 19, 1987, p. 13) 10

Moreover, it is also observed that petitioner also called his power tiller as a floating power
tiller. The patent issued by the Patent Office referred to a "farm implement but more
particularly to a turtle hand tractor having a vacuumatic housing float on which the engine
drive is held in place, the operating handle, the harrow housing with its operating handle
and the paddy wheel protective covering." 11 It appears from the foregoing observation of
the trial court that these claims of the patent and the features of the patented utility model
were copied by petitioner. We are compelled to arrive at no other conclusion but that there
was infringement.

Petitioner's argument that his power tillers were different from private respondent's is that of a
drowning man clutching at straws.

Recognizing that the logical fallback position of one in the place of defendant is to aver that
his product is different from the patented one, courts have adopted the doctrine of
equivalents which recognizes that minor modifications in a patented invention are sufficient
to put the item beyond the scope of literal infringement. 12 Thus, according to this doctrine,
"(a)n infringement also occurs when a device appropriates a prior invention by incorporating
its innovative concept and, albeit with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the
same result." 13 The reason for the doctrine of equivalents is that to permit the imitation of a
patented invention which does not copy any literal detail would be to convert the
protection of the patent grant into a hollow and useless thing. Such imitation would leave
room for indeed encourage the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent which, though adding nothing, would
be enough to take the copied matter outside the claim, and hence outside the reach of the
law. 14

In this case, the trial court observed:

Defendant's witness Eduardo Caete, employed for 11 years as welder of the Ozamis
Engineering, and therefore actually involved in the making of the floating power tillers of
defendant tried to explain the difference between the floating power tillers made by the
defendant. But a careful examination between the two power tillers will sh ow that they will
operate on the same fundamental principles. And, according to establish jurisprudence, in
infringement of patent, similarities or differences are to be determined, not by the names of
things, but in the light of what elements do, and substantial, rather than technical, identity in
the test. More specifically, it is necessary and sufficient to constitute equivalency that the
same function can be performed in substantially the same way or manner, or by the same or
substantially the same, principle or mode of operation; but where these tests are satisfied,
mere differences of form or name are immaterial. . . .

Savage vs Judge Taypin

G.R. No. 134217. May 11, 2000
FACTS:
Petitioners Savage, seek to nullify the search warrant issued by respondent Judge Aproniano
B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the seizure of certain
pieces of wrought iron furniture from the factory of petitioners located in Biasong,
Talisay, Cebu.
The complaint was lodged by private respondent Eric Ng Mendoza, president and general
manager of Mendco Development Corporation (MENDCO), alleging that Savages
products are the object of unfair competition involving design patents, punishable under Art.
189 of the Revised Penal Code as amended. Savage contends however, that there was no
existence of offense leading to the issuance of a search warrant and eventual seizure of its
products.

ISSUE:
Whether or not unfair competition involving design patents are punishable under Article 189
of the Revised Penal Code.

HELD:
To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The
repealing clause of the IPC provides that Articles 188 and 189 of the Revised Penal Code
(RPC), Presidential Decree No. 49, are hereby repealed The issue involving the existence of
"unfair competition" as a felony involving design patents, referred to in Art. 189 of the Revised
Penal Code, has been rendered moot and academic by the repeal of the article. Hence,
the search warrant cannot even be issued by virtue of a possible violation of the IPR Code.
There is no mention of any crime of "unfair competition" involving design patents in the
controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the
crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189
of the Revised Penal Code.
The court is are prevented from applying these principles, along with the new provisions on
Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts
constitute patent infringement as defined by the same Code
Although the case traces its origins to the year 1997 or before the enactment of the IPR
Code, Article 22 of the Revised Penal Code provides that penal laws shall be applied
retrospectively, if such application would be beneficial to the accused. Since the IPR Code
effectively obliterates the possibility of any criminal liability attaching to the acts alleged,
then RPC provisions must be applied.
Smith Kline and French Laboratories vs Court of Appeals
G.R. No. 121267, October 23, 2001
FACTS:
In August

1989, Danlex Research Laboratories petitioned

before Bureau

of

Patents,

Trademarks and Technology Transfer (BPTTT) that it may be granted a compulsory license for
the use and manufacture of the pharmaceutical product Cimetidine. Cimetidine is useful as
an antihistamine and in the treatment of ulcers. Cimetidine is originally patented to Smith

Kline and French Laboratories in 1978, and the said patent is still in force at the time of
application by Danlex Research.
The BPTTT granted the application of Danlex Research together with a provision that
Danlex Research should be paying 2.5% of the net wholesale price as royalty payment to
Smith Kline. This was affirmed by the Court of Appeals.
Smith Kline assailed the grant as it argued, among others, that the same is an invalid exercise
of police power because there is no overwhelming public necessity for such grant
considering that Smith Kline is able to provide an adequate supply of it to satisfy the needs of
the Philippine market; that a provision in the Philippine Patent Laws is violative of the Paris
Convention to which the Philippines is a signatory.
To explain the second contention, Smith Kline states that the Paris Convention only allows
compulsory licensing if the original licensee (patent holder) has failed to work on the patent;
that therefore, the provision in the Philippine Patent Laws which adds other grounds for the
granting of compulsory license i.e. monopoly, is invalid and contrary to the Paris Convention.
ISSUE:
Whether or not Smith Kline is correct.

HELD:
No. The granting is a valid exercise of police power. Cimetidine is medicinal in nature, and
therefore necessary for the promotion of public health and safety.
On the second contention, Section A(2) of Article 5 [of the Paris Convention] unequivocally
and explicitly respects the right of member countries to adopt legislative measures to
provide for the grant of compulsory licenses to prevent abuses which might result from the
exercise of the exclusive rights conferred by the patent. An example provided of possible
abuses is failure to work; however, as such, is merely supplied by way of an example, it is
plain that the treaty does not preclude the inclusion of other forms of categories of abuses.
The legislative intent in the grant of a compulsory license was not only to afford others an
opport unity to provide the public with the quantity of the patented product, but also to
prevent the growth of monopolies. Certainly, the growth of monopolies was among the
abuses which Section A, Article 5 of the Convention foresaw, and which our Congress
likewise wished to prevent in enacting.

Maguan vs Court of Appeals

G.R. L-45101, November 28, 1986

Principle in the case:

A patentee shall have the exclusive right to make, use and sell the patentedarticle or
product and the making, using, or selling by any person without the authorization of
thepatentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose
rightshave been infringed upon may bring an action before the proper CFI now (RTC) and to
secure aninjunction for the protection of his rights.
FACTS:
Maguan is doing business under the firm name and style of SWAN MANUFACTURING" while
Luchan islikewise doing business under the firm name and style of "SUSANA LUCHAN POWDER
PUFFMANUFACTURING.Maguan informed Luchan that the powder puffs Luchan is
manufacturing and selling to various enterprisesparticularly those in the cosmetics industry,
resemble Identical or substantially Identical powder puffs of which she (Maguan) is a patent
holder under Registration Certification Nos. Extension UM-109, ExtensionUM-110 and Utility
Model No. 1184; Maguan explained such production and sale constitute infringement of said
patents and therefore its immediate discontinuance is demanded, otherwise it will be
compelled totake judicial action.Luchan replied stating that her products are different and
countered that Maguans patents are voidbecause the utility models applied for were not
new and patentable and the person to whom the patentswere issued was not the true and
actual author nor were her rights derived from such author.Maguan filed a complaint for
damages with injunction and preliminary injunction against Luchan with thethen Court of
First Instance of Rizal. The trial court issued an Order granting the preliminary
injunctionprayed for. Consequently, the corresponding writ was subsequently issued.
ISSUE:
WON in Maguan has a right to file an action before the CFI for injunction due to infringement
of herpatent.
RULING:
Yes.Rationale:When a patent is sought to be enforced, the questions of invention, novelty or
prior use, and each of them,are open to judicial examination.Under the present Patent Law,
there is even less reason to doubt that the trial court has jurisdiction todeclare the pat ents in
question invalid.
A patentee shall have the exclusive right to make, use andsell the patented article or
product and the making, using, or selling by any person withoutthe authorization of the
patentee constitutes infringement of the patent (Sec. 37, R.A. 165).Any patentee whose

rights have been infringed upon may bring an action before the properCFI now (RTC) and to
secure an injunction for the protection of his rights.
The burden of proof to substantiate a charge of infringement is with the plaintiff. But where
the plaintiff introduces the patent in evidence, and the same is in due form, there is created
a prima facie presumptionof its correctness and validity. The decision of the Commissioner
(now Director) of Patent in granting thepatent is presumed to be correct. The burden of
going forward with the evidence (burden of evidence)then shifts to the defendant to
overcome by competent evidence this legal presumption.