PATENTS: DIGESTS

MANZANO v CA
278 SCRA 688

Manufacturing (BESCO METAL, for brevity) for the

casting of LPG burners one of which had the
configuration, form and component parts similar to
those being manufactured by UNITED FOUNDRY.

The primary purpose of the patent system is not

the reward of the individual but the advancement of the
arts and sciences. The function of a patent is to add to
the sum of useful knowledge and one of the purposes of
the patent system is to encourage dissemination of
information concerning discoveries and inventions.

Petitioner presented two (2) other witnesses,

namely, her husband Ong Bun Tua and Fidel Francisco.
Private respondent, on the other hand, presented
only one witness, Rolando Madolaria, who testified,
among others, that he was the General Supervisor of
the UNITED FOUNDRY.

FACTS:
Angelita Manzano filed PPO an action for the
cancellation of Letters Patent for a gas burner registered
in the name of respondent Melecia Madolaria who
subsequently assigned the letters patent to New United
Foundry and Manufacturing Corporation (UNITED
FOUNDRY, for brevity). Petitioner alleged that (a) the
utility model covered by the letters patent, in this case,
an LPG gas burner, was not inventive, new or useful; (b)
the specification of the letters patent did not comply
with the requirements of Sec. 14, RA No. 165, as
amended; (c) respondent Melecia Madolaria was not the
original, true and actual inventor nor did she derive her
rights from the original, true and actual inventor of the
utility model covered by the letters patent; and, (d) the
letters patent was secured by means of fraud or
misrepresentation.

Director of Patents Cesar C. Sandiego denied the

petition for cancellation and holding that the evidence
of petitioner was not able to establish convincingly that
the patented utility model of private respondent was
anticipated.
Petitioner elevated the decision of the Director of
Patents to the Court of Appeals which affirmed the
decision of the Director of Patents. Hence, this petition
for review on certiorari.
ISSUE:
Whether the dismissal is proper where the patent
applied for has no substantial difference between the
model to be patented and those sold by petitioner.

Testifying for herself petitioner narrated that her

husband Ong Bun Tua worked as a helper in the UNITED
FOUNDRY where respondent Melecia Madolaria used to
be affiliated with from 1965 to 1970; that Ong helped in
the casting of an LPG burner which was the same utility
model of a burner and that after her husbands
separation from the shop she organized Besco Metal

HELD:
The element of novelty is an essential requisite of the
patentability of an invention or discovery. If a device or
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PATENTS: DIGESTS
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.

FACTS:
Petitioner is doing business under the firm name
and style of SWAN MANUFACTURING" while private
respondent is likewise doing business under the firm
name and style of "SUSANA LUCHAN POWDER PUFF
MANUFACTURING. And holder
petitioner informed private respondent that the
powder puffs the latter is manufacturing and selling to
various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical
powder puffs of which the former is a patent holder
under Registration Certification Nos. Extension UM-109,
Extension UM-110 and Utility Model No. 1184; petitioner
explained such production and sale constitute
infringement of said patents and therefore its
immediate discontinuance is demanded, otherwise it
will be compelled to take judicial action

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 experts 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.

Private respondent replied stating that her

products are different and countered that petitioner's
patents are void because the utility models applied for
were not new and patentable and the person to whom
the patents were issued was not the true and actual
author nor were her rights derived from such author.

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.

Petitioner filed a complaint for damages with

injunction and preliminary injunction against private
respondent with the then Court of First Instance of Rizal
The trial court issued an Order granting the
preliminary injunction prayed for by petitioner.
Consequently, the corresponding writ was subsequently
issued.

MAGUAN v CA
146 SCRA 107
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PATENTS: DIGESTS
In challenging these Orders private respondent
filed a petition for certiorari with the respondent court
but was denied. Hence this petition.

CFI now (RTC) and to secure an injunction for the

protection of his rights.
2) The burden of proof to substantiate a charge of
infringement is with the plaintiff. But where the plaintiff
introduces the patent in evidence, and the same is in
due form, there is created a prima facie presumption of
its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the
patent is presumed to be correct. The burden of going
forward with the evidence (burden of evidence) then
shifts to the defendant to overcome by competent
evidence this legal presumption.

ISSUE:
(1) Whether or not in an action for infringement the
Court a quo had jurisdiction to determine the invalidity
of the patents at issue which invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo committed grave
abuse of discretion in the issuance of a writ of
preliminary injunction.

The question then in the instant case is whether

or not the evidence introduced by private respondent
herein is sufficient to overcome said presumption.

(3) Whether or not certiorari is the proper remedy.

HELD:

After a careful review of the evidence consisting

of 64 exhibits and oral testimonies of five witnesses
presented by private respondents before the Court of
First Instance before the Order of preliminary injunction
was issued as well as those presented by the petitioner,
respondent Court of Appeals was satisfied that there is
a prima facie showing of a fair question of invalidity of
petitioner's patents on the ground of lack of novelty. As
pointed out by said appellate court said evidence
appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the
mistaken notion that such question in within the
exclusive jurisdiction of the patent office.

1) The first issue has been laid to rest in a number of

cases where the Court ruled that "When a patent is
sought to be enforced, the questions of invention,
novelty or prior use, and each of them, are open to
judicial examination."
Under the present Patent Law, there is even less
reason to doubt that the trial court has jurisdiction to
declare the patents in question invalid. A patentee shall
have the exclusive right to make, use and sell the
patented article or product and the making, using, or
selling by any person without the authorization of the
patentee constitutes infringement of the patent (Sec.
37, R.A. 165). Any patentee whose rights have been
infringed upon may bring an action before the proper

It has been repeatedly held that an invention

must possess the essential elements of novelty ,
originality and precedence and for the patentee to be
entitled to protection, the invention must be new to the
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PATENTS: DIGESTS
world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now
for more than one year only under Sec. 9 of the Patent
Law) before the date of his application for his patent,
will be fatal to, the validity of the patent when issued.

abuse of discretion
appropriate remedy.

which

makes

certiorari

the

As found by respondent Court of Appeals, the

injunctive order of the trial court is of so general a tenor
that petitioner may be totally barred from the sale of
any kind of powder puff. Under the circumstances,
respondent appellate court is of the view that ordinary
appeal is obviously inadequate.

It will be noted that the validity of petitioner's

patents is in question for want of novelty. Private
respondent contends that powder puffs Identical in
appearance with that covered by petitioner's patents
existed and were publicly known and used as early as
1963 long before petitioner was issued the patents in
question. (List of Exhibits, Rollo, pp. 194-199). As
correctly observed by respondent Court of Appeals,
"since sufficient proofs have been introduced in
evidence showing a fair question of the invalidity of the
patents issued for such models, it is but right that the
evidence be looked into, evaluated and determined on
the merits so that the matter of whether the patents
issued were in fact valid or not may be resolved." (Rollo,
pp. 286-287).

VARGAS v YAPTICO & CO

40 PHIL 195
FACTS:
Angel Vargas, a farmer acquainted with local
conditions and alive to the commercial possibilities, took
it upon himself to produce, with the native plow as the
model, an improved, adjustable plow. He made
application for a United States patent to cover his socalled invention. The letters patent were issued by the
United States Patent Office in favor of Vargas .Acertified
copy of the patent was filed in the Division of Patents,
Copyrights, and Trademarks of the Executive Bureau,
Government of the Philippine Islands. The patent and its
registry was also published in the newspaper, El
Tiempo.

All these notwithstanding, the trial court

nonetheless issued the writ of preliminary injunction
which under the circumstances should be denied.
For failure to determine first the validity of the
patents before aforesaid issuance of the writ, the trial
court failed to satisfy the two requisites necessary if an
injunction is to issue, namely: the existence of the right
to be protected and the violation of said right. (Buayan
Cattle Co., Inc. v. Quintillan, 128 SCRA 276).

Since 1910, Vargas has engaged in the

manufacture of these plows in the city of Iloilo,
Philippine Islands. On the plows there was first stamped
the words "Patent Applied For," later after the patent
had been granted, changed to "Patented Mar. 12, 1912."

Under the above established principles, it

appears obvious that the trial court committed a grave
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PATENTS: DIGESTS
Ninety per cent of the plows in use in the Visayas (Iloilo
and vicinity) are said to be Vargas plows.

From this judgment the plaintiff has appealed.

ISSUE:

During this same period, the firm of F. M. Yaptico

& Co. (Ltd.), was engaged in the foundry business in the
City of Iloilo. It openly held itself out as a manufacturer
of plow parts. It has in fact produced points, shares,
shoes, and heel pieces in a considerable amount
adapted to replace worn-out parts of the Vargas plow.

(1) The judgment of the trial court in finding the patent

granted plaintiff void for lack of novelty and invention
should be affirmed;
(2) The patent granted plaintiff is void from the public
use of his plow for over two years prior to his
application for a patent, and

Such was the existing situation when, in the early

part of 1918, the owner of the patent, and thus the
proper party to institute judicial proceedings, began
action in the Court of First Instance of Iloilo to enjoin the
alleged infringement of U.S. Patent No. 1020232 by the
defendant F. M Yaptico & Co. (Ltd.), and to recover the
damages suffered by reason of this infringement. The
court issued the preliminary injunction as prayed for.
The defendant, in addition to a general denial, alleged,
as special defenses, that the patent lacked novelty or
invention, that there was no priority of ideas or device
in the principle and construction of the plow, and that
the plow, whose manufacture it was sought to have
enjoined by the plaintiff, had already been in public use
for more than two years before the application of the
plaintiff for his patent. The parties subsequently entered
into a stipulation that the court should first resolve the
question of whether or not there had been an infraction
of the patent, reserving the resultant question of
damages for later decision. After the taking of evidence,
including the presentation of exhibits, the trial judge,
the Honorable Antonio Villareal, in a very exhaustive
and learned decision, rendered judgment in favor of the
defendant and against the plaintiff, declaring null and
without effect the patent in question and dismissing the
suit with costs against the plaintiff. The preliminary
injunction theretofore issued was dissolved.

(3) If the patent is valid, there has been no contributory

infringement by defendant.

HELD:
(1) When a patent is sought to be enforced, "the
question of invention, novelty, or prior use, and each of
them, are open to judicial examination." The burden of
proof to substantiate a charge of infringement is with
the plaintiff. Where, however, the plaintiff introduces
the patent in evidence, if it is in due form, it affords a
prima facie presumption of its correctness and validity.
The decision of the Commissioner of Patents in granting
the patent is always presumed to be correct. The
burden then shifts to the defendant to overcome by
competent evidence this legal presumption .With all due
respect, therefore, for the critical and expert
examination of the invention by the United States
Patent Office, the question of the validity of the patent
is one for judicial determination, and since a patent has
been submitted, the exact question is whether the
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PATENTS: DIGESTS
defendant has assumed the burden of proof as to
anyone of his defenses

thus permissible. Even under the more rigorous doctrine

of Leeds & Catlin Co. vs. Victor Talking Machine Co.
([1909], 213 U.S., 325), it may be possible that all the
defendant has done is to manufacture and sell isolated
parts to be used to replace worn-out parts.

As herein before stated, the defendant relies on

three special defenses. One such defense, on which the
judgment of the lower court is principally grounded, and
to which appellant devotes the major portion of his
vigorous argument, concerns the element of novelty,
invention, or discovery, that gives existence to the right
to a patent. On this point the trial court reached the
conclusion that "the patented plow of the plaintiff,
Exhibit D, is not different from the native plow, Exhibit
2, except in the material, in the form, in the weight and
the grade of the result, the said differences giving it
neither a new function nor a new result distinct from the
function and the result obtained from the native plow;
consequently, its production does not presuppose the
exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent
of an invention under the provisions of the Patent Law."
In thus finding, the court may have been right, since the
Vargas plow does not appear to be such a "combination"
as contains a novel assemblage of parts exhibiting
invention.

The third defense is, that under the provisions of

the statute, an inventor's creation must not have been
in public use or on sale in the United States (and the
Philippine Islands) for more than two years prior to his
application .Without, therefore, committing ourselves as
to the first two defenses, we propose to base our
decision on the one just suggested as more easily
disposing of the case. (See 20 R. C. L., 1140-1142.) We
do so with full consciousness of the doubt which arose
in the mind of the trial court, but with the belief that
since it has been shown that the invention was used in
public at Iloilo by others than Vargas, the inventor, more
than two years before the application for the patent, the
patent is invalid.
Although we have spent some time in arriving at
this point, yet having reached it, the question in the
case is single and can be brought to a narrow compass.
Under the English Statute of Monopolies (21 Jac. Ch., 3),
and under the United States Patent Act of February 21,
1793, later amended to be as herein quoted, it was
always the rule, as stated by Lord Coke, Justice Story
and other authorities, that to entitle a man to a patent,
the invention must be new to the world. As said by the
United States Supreme Court, "it has been repeatedly
held by this court that a single instance of public use of
the invention by a patentee for more than two years
before the date of his application for his patent will be
fatal to the validity of the patent when issued."

A second line of defense relates to the fact that

defendant has never made a complete Vargas plow, but
only points, shares, shoes, and heel pieces, to serve as
repairs. Defendant's contention is, that in common with
other foundries, he has for years cast large numbers of
plow points and shares suitable for use either on the
native wooden plow, or on the Vargas plow. A difference
has long been recognized between repairing and
reconstructing a machine. If, for instance, partial
injuries, whether they occur from accident or from wear
and tear, to a machine for agricultural purposes, are
made this is only re-fitting the machine for use, and
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PATENTS: DIGESTS
On the facts, we think the testimony shows such
a public use of the Vargas plow as to render the patent
invalid Nicolas Roces, a farmer, testified that he had
bought twenty Vargas plows, of which Exhibit 5 was
one, in December, 1907; and Exhibit 5, the court found,
was a plow completely identical with that for which the
plaintiff had received a patent. The minor exception,
and this in itself corroborative of Roces' testimony, is
that the handle of plow Exhibit 5 is marked with the
letters "A V" and not with the words "Patent Applied For"
or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk
in a business house, testified that he had received plows
similar to Exhibits D, 5, and 4, for sale on commission
on May, 1908, from Bonifacio Araneta, partner of Vargas
in the plow business. Ko Pao Ko, a blacksmith, testified
that he had made fifty plow frames in 1905 for Vargas
and Araneta, of which Exhibit 4 is one; Exhibit 4, the
court found, is a plow identical with that patented by
Vargas, but without share and mould-board. Alfred
Berwin, an employee in the office of Attorney John
Bordman, testified that on September 21, 1908, he had
knowledge of a transaction wherein Vargas and Araneta
desired to obtain money to invest in a plow factory.
George Ramon Saul, a mechanic of the "Taller Visayas"
of Strachan and MacMurray, testified that he had made
Vargas plow points and shares of the present form upon
order of Araneta and Vargas in 1906 and 1907 .William
MacMurray, proprietor of the "Taller Visayas,"
corroborated the evidence of the witness Saul by the
exhibition of the account against Vargas and Araneta
wherein, under date of December 13, 1906, appears the
item "12 new soft steel plow shares forged and bored
for rivets as per sample." Against all this, was the
testimony of the plaintiff Angel Vargas who denied that
Saul could have been seen the Vargas plow in 1907 and
1907, who denied that Roces purchased the Vargas plow
in 1907, who denied that Lizarraga could have acted as
an agent to sell two plows in November, 1908, who

denied any remembrance of the loan mentioned by

Berwin as having been negotiated in September, 1908,
who denied that Ko Pao Ko made fifty plows one of
which is Exhibit 4, for Araneta and Vargas in 1905.
Plaintiff introduced his books to substantiate his oral
testimony .It is hardly believable that five or six
witnesses for the defense would deliberately perjure
themselves under oath. One might, but that all
together, of different nationalities, would enter into such
a conspiracy, is to suppose the improbable.
Tested by the principles which go to make the
law, we think a preponderance of the evidence is to the
effect that for more than two years before the
application for the original letters patent, or before July
22, 1908, there was, by the consent and allowance of
Vargas, a public use of the invention covered by them.
To conclude, we are not certain but that appellee
has proved every one of his defenses. We are certain
that he has at least demonstrated the public use of the
Vargas plow over two years prior to the application for a
patent. Such being the case, although on a different
ground, we must sustain the judgment of the lower
court, without prejudice to the determination of the
damages resulting from the granting of the injunction,
with the costs of this instance against the appellant. So
ordered.
FRANK v KOSUYAMA
59 PHIL 206
FACTS:
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PATENTS: DIGESTS
Patent on improvement in hemp stripping
machines, issued by the United States Patent Office and
registered in the Bureau of Commerce and Industry of
the Philippine, was the origin of this action brought by
the plaintiffs herein who prayed that the judgment be
rendered against the defendant, ordering him thereby
to refrain immediately from the manufacture and sale of
machines similar to the one covered by the patent: to
render an accounting of the profits realized from the
manufacture and sale of the machines in question; that
in case of refusal or failure to render such accounting,
the defendants be ordered to pay the plaintiffs the sum
of P60 as profit on each machine manufactured or sold
by him; that upon approval of the required bond, said
defendant
be
restrained
from
continuing
the
manufacture and sale of the same kind of machines;
that after the trial the preliminary injunction issued
therein be declared permanent and, lastly, that the said
defendant be sentenced to pay the costs and whatever
damages the plaintiffs might be able to prove therein.
The action therefore was based upon alleged
infringement by the defendant of the rights and
privileges acquired by the plaintiffs over the aforesaid
patent through the manufacture and sale by the former
of machines similar to that covered by the aforesaid
patent.

holder adjustably secured on the table portion, a lever

and means of compelling the knife to close upon the
table, a pallet or rest in the bottom of the table, a
resilient cushion under such palletor rest." In spite of
the fact that they filed an amended complaint from
which the "spindle" or conical drum, which was the only
characteristic feature of the machine mentioned in the
original complaint, was eliminated, the plaintiffs insisted
that the said part constitutes the essential difference
between the machine in question and other machines
and that it was the principal consideration upon which
their patent was issued. The said plaintiffs sustained
their contention on this point even in their printed brief
and memorandum filed in this appeal.
During the trial, both parties presented
voluminous evidence from which the trial court
concluded that in constructing their machine the
plaintiffs did nothing but improve, to a certain degree,
those that were already in vogue and in actual us in
hemp producing provinces. It cannot be said that they
have invented the "spindle" inasmuch as this was
already known since the year 1909 or 1910. Neither it
can be said that they have invented the stripping knife
and the contrivance which controls the movement and
pressure thereof on the ground that stripping knives
together with their control sets were already in actual
use in the different stripping machines long before their
machine appeared.

The plaintiffs appealed from the judgment

rendered by the trial court dismissing their complaint,
with cost, as well as the defendant's counterclaim of
P10,000. The defendant did not appeal.

ISSUE:

In their amended complaint, the plaintiff alleged

that their hemp stripping machines, for which they
obtained a patent, have the following characteristics: "A
stripping head, a horizontal table, a stripping knife
supported upon such table, a tappering spindle, a rest

Whether there is an infringement on the patents

HELD:
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PATENTS: DIGESTS
The trial court did not decree the annulment of
the plaintiffs' patent and the herein defendant-appellee
insists that the patent in question should be declared
null and void. We are of the opinion that it would be
improper and untimely to render a similar judgment, in
view of the nature of the action brought by the plaintiffs
and in the absence of a cross-complaint to that effect.
For the purposes of this appeal, suffice it to hold that
the defendant is not civilly liable for alleged
infringement of the patent in question.

special defenses as those alleged by the herein

defendant in his answer and the plaintiffs therein
confined themselves to presenting the patent, or rather
a copy thereof, wherein the "spindle" was mentioned,
and this court took for granted their claim that it was
one of the essential characteristics thereof which was
imitated or copied by the then defendant. Thus it came
to pass that the "spindle" in question was insistently
mentioned in the decision rendered on appeal as the
essential part of the plaintiffs' machine allegedly
imitated by the then defendant. In the case under
consideration, it is obvious that the "spindle" is not an
integral part of the machine patented by the plaintiffs
on the ground that it was eliminated from their patent
inasmuch as it was expressly excluded in their
application, as evidenced by the aforesaid Exhibit 41.

In the light of sound logic, the plaintiffs cannot

insist that the "spindle" was a patented invention on the
ground that said part of the machine was voluntarily
omitted by them from their application, as evidenced by
the photographic copy thereof (Exhibit 41) wherein it
likewise appears that the patent on Improved Hemp
Stripping Machines was issued minus the "spindle" in
question. Were we to stress to this part of the machine,
we would be giving the patent obtained by the plaintiffs
a wider range than it actually has, which is contrary to
the principles of interpretation in matters relating to
patents.

Wherefore, reiterating that the defendant cannot

be held civilly liable for alleged infringement of the
patent upon which the present action is based on the
ground that there is no essential part of the machine
manufactured and sold by him, which was unknown to
the public in the Province of Davao at the time the
plaintiffs applied for and obtained their patent for
improved hemp stripping machines, the judgment
appealed from is hereby affirmed, with the costs against
the plaintiffs-appellants. So ordered.

In support of their claim the plaintiffs invoke the

doctrine laid down by this court in the case of Frank and
Gohn vs. Benito (51 Phil., 712), wherein it was held that
the therein defendant really infringed upon the patent
of the therein plaintiffs. It may be noted that the
plaintiffs in the former and those of the latter case are
the same and that the patent then involved is the very
same one upon which the present action of the plaintiffs
is based. The above-cited case, however, cannot be
invoked as a precedent to justify a judgment in favor of
the plaintiffs-appellants on the ground that the facts in
one case entirely different from those in the other. In
the former case the defendant did not set up the same

VARGAS v CHUA
9

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PATENTS: DIGESTS
57 PHIL 784

The appellee is not entitled to the protection he

seeks for the simple reason that his plow, Exhibit F,
does not constitute an invention in the legal sense, and
because, according to the evidence, the same type of
plows had been manufactured in this country and had
been in use in many parts of the Philippine Archipelago,
especially in the Province of Iloilo, long before he
obtained his last patent.

FACTS:
Angel Vargas, the plaintiff herein, brought this
action to restrain the appellants and the other
defendant entity, Cham Samco & Sons, their agents and
mandatories, from continuing the manufacture and sale
of plows similar to his plow described in his patent No.
1,507,530 issued by the United States Patent Office on
September 2, 1924; and to compel all of said
defendants, after rendering an accounting of the profits
obtained by them from the sale of said plows from
September 2, 1924, to pay him damages equivalent to
double the amount of such profits.

In the above mentioned case of Vargas vs. F. M.

Yaptico & Co., we said:
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." The burden of
proof to substantiate a charge of infringement is with
the plaintiff. Where, however, the plaintiff introduces
the patent in evidence, if it is the due form, it affords a
prima facie presumption of its correctness and validity.
The decision of the Commissioner of Patents in granting
the patent is always presumed to be correct. The
burden then shifts to the defendant to overcome by
competent evidence this legal presumption. With all due
respects, therefore, for the critical and expert
examination of the invention by the United States
Patent Office, the question of the validity of the patent
is one for judicial determination, and since a patent has
been submitted, the exact question is whether the
defendant has assumed the burden of proof as to
anyone of his defenses.

The trial court rendered a judgement in favor of

plaintiffs and against the defendant.
It appears from the bill of exceptions that Cham
Samco & Sons did not appeal.
ISSUE:
Whether the plow, Exhibit F, constitutes a real
invention or an improvement for which a patent may be
obtained, or if, on the contrary, it is substantially the
same plow represented by Exhibit 3-Chua the patent for
which was declared null and void in the aforementioned
case of Vargas vs. F. M. Yaptico & Co., supra.

We repeat that in view of the evidence presented,

and particularly of the examination we have made of
the plows, we cannot escape the conclusion that the
plow upon which the appellee's contention is based,
does not constitute an invention and, consequently, the

HELD:

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PATENTS: DIGESTS
privilege invoked by him is untenable and the patent
acquired by him should be declared ineffective.

invention; that he has given direct and personal notice

to the defendants of their said acts of infringement and
requested them to desist, but nevertheless, defendants
have refused and neglected to desist and have
disregarded such request, and continue to so infringe
causing great and irreparable damage to plaintiff; that if
the aforesaid infringement is permitted to continue,
further losses and damages and irreparable injury will
be sustained by the plaintiff; that there is an urgent
need for the immediate issuance of a preliminary
injunction.

The judgment appealed from is hereby reversed

and the appellants are absolved from the complaint,
with costs of this instance against the appellee. So
ordered.
AGUAS v DE LEON
111 SCRA 238

The court granted the injunction. And likewise

held in favor of the plaintiff and against the defendant.

FACTS:

ISSUE:

Conrado G. de Leon filed in the Court of First

Instance of Rizal at Quezon City a complaint for
infringement of patent against Domiciano A. Aguas and
F. H. Aquino and Sons alleging that being the original
first and sole inventor of certain new and useful
improvements in the process of making mosaic pre-cast
tiles, he lawfully filed and prosecuted an application for
Philippine patent, and having complied in all respects
with the statute and the rules of the Philippine Patent
Office, Patent No. 658 was lawfully granted and issued
to him; that said invention was new, useful, not known
or used by others in this country before his invention
thereof.

Whether the process, subject of said patent, is

not an invention or discovery, or an improvement of the
old system of making tiles.
HELD:
The validily of the patent issued by the
Philippines Patent Office in favor of the private
respondent and the question over the inventiveness,
novelty and usefulness of the improved process therein
specified and described are matters which are better
determined by the Philippines Patent Office. The
technical staff of the Philippines Patent Office,
composed of experts in their field, have, by the issuance
of the patent in question, accepted the thinness of the
private respondent's new tiles as a discovery. There is a
presumption that the Philippines Patent Office has
correctly
determined
the
patentability
of
the

That the defendant Domiciano A. Aguas infringed

Letters of Patent No. 658 by making, using and selling
tiles embodying said patent invention and that
defendant F. H. Aquino & Sons is guilty of infringement
by making and furnishing to the defendant Domiciano A.
Aguas the engravings, castings and devices designed
and intended of tiles embodying plaintiff;s patented
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PATENTS: DIGESTS
improvement by the private respondent of the process
in question.

later amended, praying that it be granted a compulsory

license under Letters Patent No. 50 granted to Parke
Davis & Company based on the following grounds: (1)
the patented invention relates to medicine and is
necessary for public health and safety; (2) Parke Davis
& Company is unwilling to grant petitioner a voluntary
license under said patent by reason of which the
production and manufacture of needed medicine
containing chloramphenicol has been unduly restrained
to a certain extent that it is becoming a monopoly; (3)
the demand for medicine containing chloramphenicol is
not being met to an adequate extent and on reasonable
prices; and (4) the patented invention is not being
worked in the Philippines on a commercial scale. In its
petition, Doctors' Pharmaceuticals, Inc. prayed that it be
authorized to manufacture, use, and sell its own
products containing chloramphenicol as well as choose
its own brand or trademark.

The contention of the petitioner Aguas that the

letters patent of de Leon was actually a patent for the
old and non-patentable process of making mosaic precast tiles is devoid of merit. De Leon never claimed to
have invented the process of tile-making. The Claims
and Specifications of Patent No. 658 show that although
some of the steps or parts of the old process of tile
making were described therein, there were novel and
inventive features mentioned in the process.
In view of the foregoing, this Court finds that
Patent No. 658 was legally issued, the process and/or
improvement being patentable.
PARKE DAVIS & CO v DOCTORS PHARMA

Parke Davis & Company filed a written opposition

setting up the following affirmative defenses: (1) a
compulsory license may only be issued to one who will
work the patent and respondent does not intend to work
it itself but merely to import the patented product; (2)
respondent has not requested any license to work the
patented invention in the Philippines; (3) respondent is
not competent to work the patented invention; (4) to
grant respondent the requested license would be
against public interest and would only serve its
monetary interest; and (6) the patented invention is not
necessary for public health and safety.

124 SCRA 115

FACTS:
Parke Davis & Company, petitioner herein, is a
foreign corporation is the owner of a patent entitled
"Process for the Manufacturing of Antibiotics" (Letters
Patent No. 50) The patent relates to a chemical
compound represented by a formula commonly called
chloramphenicol. The patent contains ten claims, nine
of which are process claims, and the other is a product
claim to the chemical substance chloramphenicol.

the Director of Patents rendered a decision

granting to respondent the license prayed for .Hence
this petition.

Respondent Doctors' Pharmaceuticals, Inc., on

the other hand, is a domestic corporation which applied
for a petition with the Director of Patents, which was
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PATENTS: DIGESTS
ISSUE:
Whether or not the Director of Patents erred jn
ordering the grant of compulsory license
HELD:
Each of the circumstances mentioned in the law
as grounds stands alone and is independent of the
others. And from them we can see that in order that any
person may be granted a license under a particular
patented invention relating to medicine under Section
34(d), it is sufficient that the application be made after
the expiration of three years from the date of the grant
of the patent and that the Director should find that a
case for granting such license has been made out. Since
in the instant case it is admitted by petitioner that the
chemical substance chloramphenicol is a medicine,
while Letters Patent No. 50 covering said substance
were granted to Parke Davis & Company on February 9,
1950, and the instant application for license under said
patent was only filed in 1960, verily the period that had
elapsed then is more than three years, and so the
conditions for the grant of the license had been fulfilled.
We find, therefore, no error in the decision of the
Director of Patents on this aspect of the controversy.

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