CASE #1- PATENTS (Andal, John Caleb C.)
Felix
R.A. No. 8293 and R.A. No. 166 are special laws conferring
jurisdiction over violations of intellectual property rights to the
Regional Trial Court. They should therefore prevail over R.A. No.
7691, which is a general law. Hence, jurisdiction over the instant
criminal case for unfair competition is properly lodged with the
Regional Trial Court even if the penalty therefor is imprisonment
of less than 6 years, or from 2 to 5 years and a fine ranging
from P50,000.00 to P200,000.00.
[G.R. No. 161693. June 28, 2005]
MANOLO P. SAMSON, petitioner, vs. HON. VICTORIANO B.
CABANOS, In his capacity as Acting Presiding Judge,
Regional Trial Court of Antipolo City, Branch 71, PEOPLE
OF THE PHILIPPINES and CATERPILLAR,
INC., respondents.
PUNO, J.:
FACTS: Petitioner was charged with the crime of unfair competition
before the RTC of Antipolo City in an Information that states:
The undersigned Senior State Prosecutor of the Department of
Justice hereby accuses MANOLO P. SAMSON for violation of Sec.
168.3 (a) in relation to Secs. 123.1 (e), 131.3 and 170 of RA 8293
otherwise known as the Intellectual Property Code of the Philippines,
committed as follows:
That on or about the first week of November 1999 and sometime prior
or subsequent thereto, in Cainta, Rizal, Philippines, and within the
jurisdiction of this Honorable Court, above-named accused,
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owner/proprietor of ITTI Shoes Corporation located at F.P.
Avenue, Cainta, Rizal, did then and there willfully, unlawfully and
feloniously distribute, sell and/or offer for sale CATERPILLAR
products such as footwear, garments, clothing, bags, accessories and
paraphernalia which are closely identical to and/or colorable imitations
of the authentic Caterpillar products and likewise using trademarks,
symbols and/or designs as would cause confusion, mistake or
deception on the part of the buying public to the damage and
prejudice of CATERPILLAR, INC., the prior adopter, user and owner
of the following internationally famous marks: CATERPILLAR, CAT,
CATERPILLAR, CAT, CATERPILLAR & DESIGN, CAT AND
DESIGN, WALKING MACHINES and TRACK-TYPE TRACTOR &
DESIGN.
Petitioner moved to quash the information on the ground that the court
has no jurisdiction over the offense charged in the Information. He
argued that Section 170 of Republic Act (R.A.) No. 8293[4] provides
that the penalty for violation of Section 168 thereof is imprisonment
from two (2) to five (5) years and a fine ranging from fifty thousand
pesos (P50,000.00) to two hundred thousand pesos (P200,000.00),
and R.A. No. 7691[5] amending Batas Pambansa (B.P.) Blg.
129[6] vested the Metropolitan Trial Courts (MTC) exclusive original
jurisdiction over all offenses punishable with imprisonment not
exceeding six (6) years irrespective of the amount of the fine.
ISSUE: Whether or not the RTC has jurisdiction over the case
HELD: YES. In the case at bar, R.A. No. 8293 and R.A. No. 166 are
special laws conferring jurisdiction over violations of intellectual
property rights to the Regional Trial Court. They should therefore
prevail over R.A. No. 7691, which is a general law. Hence, jurisdiction
over the instant criminal case for unfair competition is properly lodged
with the Regional Trial Court even if the penalty therefor is
imprisonment of less than 6 years, or from 2 to 5 years and a fine
ranging from P50,000.00 to P200,000.00.
In fact, to implement and ensure the speedy disposition of cases
involving violations of intellectual property rights under R.A. No. 8293,
the Court issued A.M. No. 02-1-11-SC dated February 19, 2002
designating certain Regional Trial Courts as Intellectual Property
Courts. On June 17, 2003, the Court further issued a Resolution
consolidating jurisdiction to hear and decide Intellectual Property
Code and Securities and Exchange Commission cases in specific
Regional Trial Courts designated as Special Commercial Courts.

The case of Mirpuri v. Court of Appeals, invoked by petitioner finds no

application in the present case. Nowhere in Mirpuri did we state
that Section 27 of R.A. No. 166 was repealed by R.A. No. 8293.
Neither did we make a categorical ruling therein that jurisdiction over
cases for violation of intellectual property rights is lodged with the
Municipal Trial Courts. The passing remark in Mirpuri on the repeal of
R.A. No. 166 by R.A. No. 8293 was merely a backgrounder to the
enactment of the present Intellectual Property Code and cannot thus
be construed as a jurisdictional pronouncement in cases for violation
of intellectual property rights.

The foregoing ruling is the law of the case and thus lays to rest the
issue posed by petitioner. We see no reason in this case to deviate
therefrom. It is a basic legal principle that whatever is once irrevocably
established as the controlling legal rule or decision between the same
parties in the case continues to be the law of the case, whether
correct on general principles or not, so long as the facts on which
such decision was predicated continue to be the facts of the case
before the court.

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CASE 2 COPYRIGHT/PATENTS
Case Doctrine: Copyright is purely statutory. As such, the rights are
limited to what the statute confers. It may be obtained and enjoyed
only with respect to the subjects and by the persons, and on the terms
and conditions specified in the statute.
Pearl & Dean (Phil.), Inc. v. Shoemart, Inc.
G.R. No. 148222, August 15, 2003
FACTS:
Pearl & Dean (P&D) is engaged in the manufacture of advertising
display units referred to as light boxes. These units utilize specially
printed posters sandwiched between plastic sheets and illuminated
with backlights. It was able to secure registration over these
illuminated display units. The advertising light boxes were marketed
under the trademark “Poster Ads”. In 1985, P&D negotiated with
defendant Shoemart, Inc. (SMI) for the lease and installation of the
light boxes in SM North Edsa. However, since SM North Edsa was
under construction, SMI offered as alternative SM Makati and Cubao.
During the signing of the Contract, SMI only returned the Contract
with SM Makati. Manager of petitioner reminded SMI that their
agreement includes SM Cubao. However, SMI did not bother to reply.
Instead, respondent informed petitioner that they are rescinding the
contract for SM Makati due to non-performance. Two years later, SMI
engaged the services of EYD Rainbow Advertising to make the light
boxes. These were delivered in a staggered basis and installed at SM
Megamall and SM City. In 1989, petitioner received reports that exact
copy of its light boxes was installed by SMI. It further discovered that
North Edsa Marketing Inc. (NEMI), sister company of SMI, was set up
primarily to sell advertising space in lighted display units located in
SMI’s different branches. Petitioner sent letters to respondents asking
them to cease using the light boxes and the discontinued use of the
trademark “Poster Ads”. Claiming that SMI and NEMI failed to meet its
demand, petitioner filed a case for infringement of trademark and copy
right, unfair competition and damages. SMI maintained that it
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independently developed its poster panels using commonly known
techniques and available technology without notice of or reference to
P&D’s copyright. In addition, it said that registration of “Poster Ads”
obtained by petitioner was only for stationeries such as letterheads,
envelopes and the like. “Poster Ads” is a generic term which cannot
be appropriated as trademark, and, as such, registration of such mark
is invalid. It also stressed that P&D is not entitled to the reliefs sought
because the advertising display units contained no copyright notice as
provided for by law. RTC found SMI and NEMI jointly and severally
liable for infringement of copyright and trademark. CA reversed saying
that it agreed with SMI that what was copyrighted was the technical
drawings only and not the light boxes. Light boxes cannot be
considered as either prints, pictorial illustrations, advertising copies,
labels, tags or box wraps, to be properly classified as copyrightable
class “O” work. In addition, CA stressed that the protective mantle of
the Trademark Law extends only to the goods used by the first user
as specified in its certificate of registration. The registration of the
trademark “Poster Ads” covers only stationeries such as letterheads,
envelopes and calling cards and newsletter.
ISSUES:
(1) (On the issue of Copyright Infringement) If the engineering
or technical drawings of an advertising display unit are granted
copyright protection, is the light box depicted in such drawings
ipso facto also protected by such copyright?
(2) (On the issue of Patent Infringement) Should the light box
be registered separately and protected by a patent issued by
the Bureau of Patents Trademarks and Technology Transfer
(now Intellectual Property Office) in addition to the copyright of
the engineering drawings?
 (3) (On the issue of Trademark Infringement) Can the owner of
the registered trademark legally prevent others from using
such mark if it is mere abbreviation of a term descriptive of his
goods, services or business?
Held:
1. No. Copyright is purely statutory. As such, the rights are limited to
what the statute confers. It may be obtained and enjoyed only with
respect to the subjects and by the persons, and on the terms and
conditions specified in the statute. Accordingly, it can cover only the
works falling within the statutory enumeration or description.
Petitioner secured copyright under classification class “O” work.
Thus, copyright protection extended only to the technical
drawings and not to the light box itself because the latter was
not at all in the category of “prints, pictorial illustrations,
advertising copies, labels, tags and box wraps. What the law does
not include, it excludes, and for the good reason: the light box was not
a literary or artistic piece which could be copyrighted under the
copyright law. And no less clearly, neither could the lack of statutory
authority to make the light box copyrightable be remedied by the
simplistic act of entitling the copyright certificate issued by the
National Library as “Advertising Display Units”. It must be noted that
copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from
the moment of their creation.
2. Yes. Petitioner never secured a patent for the light boxes. It
therefore acquired no patent rights which could have protected
its invention, if in fact it really was. And because it had no patent,
petitioner could not legally prevent anyone from manufacturing
or commercially using the contraption. To be able to effectively
and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no
protection. The ultimate goal of a patent system is to bring new
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designs and technologies into the public through disclosure. Ideas,
once, disclosed to the public without protection of a valid patent, are
subject to appropriation without significant restraint. The Patent Law
has a three-fold purpose: first, patent law seeks to foster and reward
invention; second, it promotes disclosures of inventions to stimulate
further innovation and to permit the public to practice the invention
once the patent expires; third, the stringent requirements for patent
protection seek to ensure that ideas in the public domain remain there
for the free use of the public. It is only after an exhaustive examination
by the patent office that patent is issued. Therefore, not having gone
through the arduous examination for patents, petitioner cannot
exclude others from the manufacture, sale or commercial use of the
light boxes on the sole basis of its copyright certificate over the
technical drawings.
3. Court agrees with CA that the certificate of registration issued by
the Director of Patents can confer the exclusive right to use its own
symbol only to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate. One who has
adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others for products which
are of a different description. Assuming arguendo that “Poster Ads”
could validly qualify as a trademark, the failure of petitioner to secure
a trademark registration for specific use on the light boxes meant that
there could not have been any trademark infringement since
registration was an essential element thereof. There is no evidence
that petitioner’s use of “poster Ads” was distinctive or well-
known. As noted by CA, petitioner’s expert witness himself had
testified that “Poster Ads” was not too generic a name. SO it was
difficult to identify it with any company. This fact also prevented the
application of the doctrine of secondary meaning. “Poster Ads” was
generic and incapable of being used as a trademark because it was
used in the field of poster advertising the very business engaged in by
petitioner. Secondary meaning means that a word or phrase originally
incapable of exclusive appropriation with reference to an article in the
market might nevertheless have been used for so long and so
exclusively by one producer with reference to his article that, in the
trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was his property.

Incidental Issue: Unfair Competition

If at all, the cause of action should have been for unfair competition, a
situation which was possible even if P & D had no registration.
However, while the petitioner’s complaint in the RTC also cited unfair
competition, the trial court did not find private respondents liable
therefor. Petitioner did not appeal this particular point; hence, it cannot
now revive its claim of unfair competition. But even disregarding
procedural issues, we nevertheless cannot hold respondents guilty of
unfair competition. By the nature of things, there can be no unfair
competition under the law on copyrights although it is applicable
to disputes over the use of trademarks. Even a name or phrase
incapable of appropriation as a trademark or trade name may, by long
and exclusive use by a business (such that the name or phrase
becomes associated with the business or product in the mind of the
purchasing public), be entitled to protection against unfair competition.
In this case, there was no evidence that P & Ds use of Poster Ads
was distinctive or well-known. As noted by the Court of Appeals,
petitioners expert witnesses himself had testified that Poster Ads was
too generic a name. So it was difficult to identify it with any company,
honestly speaking. This crucial admission by its own expert witness
that Poster Ads could not be associated with P & D showed that, in
the mind of the public, the goods and services carrying the trademark
Poster Ads could not be distinguished from the goods and services of
other entities.

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Case 3- Rina
Novelty as requisite of patentibility
Doctrine:
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA
LUCHAN, respondents.
G.R. L-45101 November 28, 1986
PARAS, J.:p
Facts:
Petitioner ROSARIO C. MAGUAN is doing business under the firm name
and style of SWAN MANUFACTURING" while private respondent SUSANA
LUCHAN is likewise doing business under the firm name and style of
"SUSANA LUCHAN POWDER PUFF MANUFACTURING."
ROSARIO C. MAGUAN is a patent holder of powder puff namely:UM-423,
UM-450, and UM 1184.In a letter,Maguan informed Luchan 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 ; and explained such
production and sale constitute infringement of said patents and therefore
demand of discontinuance, otherwise it will be compelled to take judicial
action.
Maguan filed a complaint for damages with injunction and preliminary
injunction against private respondent for infringing the aforesaid letters
patent, and prayed, among others, that a writ of preliminary injunction be
immediately issued.
Private respondent alleged that the products she is manufacturing and
offering for sale are not Identical, or even only substantially Identical to the
products covered by petitioner's patents and, by way of affirmative defenses,
further alleged that petitioner's patents in question are void on the following
grounds:(1) the utility models applied for were not new and patentable under
Sec. 55 of R.A. 165, as amended by R.A. 864; and(2) the person to whom
the patents were issued was not the true and actual author of the utility
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models applied for, and neither did she derive her rights from any true and
actual author of these utility models for the following reasons:
(a) since years prior to the filing of applications for the patents involved,
powder puffs of the kind applied for were then already existing and
publicly being sold in the market; both in the Philippines and abroad;
and
(b) applicant's claims in her applications, of "construction" or process of
manufacturing the utility models applied for, with respect to UM-423 and UM-
450, were but a complicated and impractical version of an old, simple
one which has been well known to the cosmetics industry since years
previous to her filing of applications, and which belonged to no one
except to the general public;
Trial court issued an Order granting the preliminary injunction prayed for by
petitioner and subsequently issued enjoining the herein private respondent
(then defendant) and all other persons employed by her, from directly or
indirectly manufacturing, making or causing to be made, selling or causing to
be sold, or using or causing to be used in accordance with, or embodying the
utility models .
Private respondent questioned the propriety of the trial court's issuance of
the Writ of Preliminary Injunction arguing that since there is still a pending
cancellation proceedings before the Philippine Patent Office concerning
petitioner's patents, such cannot be the basis for preliminary injunction.
The trial court denied private respondent's motion for reconsideration .
In challenging these Orders private respondent filed a petition for certiorari
with the respondent court reiterating among other things the invalidity of
petitioner's patents.
CA promulgated a decision dismissing the preliminary injunction previously
issued by Court .ln said decision respondent court stated that in disposing of
the petition it tackled only the issue of whether the court a quo acted with
grave abuse of discretion in issuing the challenged orders. It made clear the
question of whether the patents have been infringed or not was not
determined considering the court a quohas yet to decide the case on the
merits
Issue: 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
WON the trial court erred in issuing an injunction not may be resolved."

Held:
Yes.
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 world. Accordingly, 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.
The law provides:
SEC. 9. Invention not considered new or patentable. — An invention shall
not be considered new or capable of being patented if it was known or used
by others in the Philippines before the invention thereof by the inventor
named in an application for patent for the invention; or if it was patented or
described in any printed publication in the Philippines or any foreign country
more than one year before the application for a patent therefor; or if it had
been in public use or on sale in the Philippines for more than one year
before the application for a patent therefor; or if it is the subject matter of a
validity issued patent in the Philippines granted on an application filed
before the filing of the application for patent therefor.
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.
Under the above established principles, it appears obvious that the trial court
committed a grave abuse of discretion which makes certiorari the appropriate
remedy.
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. A
parallel was drawn from a decision of the Supreme Court in the case
of Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1976] where the First
Division of the Supreme Court ruled that "The prerogative writ of certiorari
may be applied for by proper petition notwithstanding the existence of the
regular remedy of an appeal in due cause when among other reasons, the
broader interests of justice so require or an ordinary appeal is not an
adequate remedy."

Thus, more specifically, under American Law from which our Patent Law was
derived,it is generally held that in patent cases a preliminary injunction will
not issue for patent infringement unless the validity of the patent is clear and
beyond question. The issuance of letters patent, standing alone, is not
sufficient to support such drastic relief . In cases of infringement of patent no
preliminary injunction will be granted unless the patent is valid and infringed
beyond question and the record conclusively proves the defense is sham.

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. 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

7|Page

Case #4 – MEL
Patentable Inventions
DOCTRINE: Section 7, Republic Act No. 165, as amended provides: "Any
invention of a new and useful machine, manufactured product or substance,
process, or an improvement of the foregoing, shall be patentable
DOMICIANO A. AGUAS, vs. CONRADO G. DE LEON and COURT OF
APPEALS
G.R. No. L-32160 January 30, 1982
FACTS:
Conrado G. de Leon filed in the CFI Quezon City a complaint for
infringement of patent against Domiciano A. Aguas and F. H. Aquino and
Sons alleging, inter alia:
 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 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 invention;
De Leon’s petition for a Writ of Preliminary Injunction was granted.3
Aguas alleged in his answer that:
1. that the improvement of respondent is not patentable because it is
not new, useful and inventive
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2. that the process, subject of said patent, is not an invention or
discovery, or an improvement of the old system of making tiles;
3. that the letters patent of de Leon was actually a patent for the old
and non-patentable process of making mosaic pre-cast tiles
4. The petitioner also claims that changing the design from embossed
to engraved tiles is neither new nor inventive because the Machuca
Tile Factory and the Pomona Tile Manufacturing Company have
been manufacturing decorative wall tiles that are embossed as well
as engraved
TRIAL COURT: in favour of De Leon so nag-appeal si Aguas
CA: affirmed trial court
ISSUE:
Main: Is the alleged invention or discovery of respondent patentable?
Sub-issue: (see Aguas’ arguments)
HELD:
1. Yes, the alleged invention or discovery of respondent is patentable because
de Leon's process is an improvement of the old process of tile making.
 The tiles produced from de Leon's process are suitable for
construction and ornamentation, which previously had not been
achieved by tiles made out of the old process of tile making. De
Leon's invention has therefore brought about a new and useful kind
of tile.
 The old type of tiles were usually intended for floors although there
is nothing to prevent one from using them for walling purposes.
These tiles are neither artistic nor ornamental. They are heavy and
massive.
 The respondent's improvement is indeed inventive and goes beyond
the exercise of mechanical skill. He has introduced a new kind of tile
for a new purpose. He has improved the old method of making tiles
and pre-cast articles which were not satisfactory because of an
intolerable number of breakages, especially if deep engravings are
made on the tile. He has overcome the problem of producing
decorative tiles with deep engraving, but with sufficient
 durability. 15 Durability inspite of the thinness and lightness of the  The designs are embossed and not engraved as claimed by the
tile, is assured, provided that a certain critical depth is maintained in petitioner. There may be depressions but these depressions are too
relation to the dimensions of the tile. shallow to be considered engraved. Besides, the Machuca tiles are
heavy and massive.
2. The private respondent does not claim to be the discoverer or inventor of the
There is no similarity between the Pomona Tiles and de Leon's tiles:
old process of tile-making. He only claims to have introduced an
improvement of said process. In fact, Letters Patent No. 658 was issued by
 The Pomona tiles are made of ceramics. 20The process involved in
the Philippine Patent Office to the private respondent, Conrado G. de Leon,
making cement tiles is different from ceramic tiles. Cement tiles are
to protect his rights as the inventor of "an alleged new and useful made with the use of water, while in ceramics fire is used.
improvement in the process of making mosaic pre-cast tiles." 11Indeed,  As regards the allegation of the petitioner that the private respondent
Section 7, Republic Act No. 165, as amended provides: "Any invention of a copied some designs of Pomona, suffice it to say that what is in
new and useful machine, manufactured product or substance, process, or an issue here is the process involved in tile making and not the design.
improvement of the foregoing, shall be patentable.
Thus, petition is denied.
3. 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. Some of the
novel features of the private respondent's improvements are the following:

 critical depth, with corresponding easement and lip width to such

degree as leaves the tile as thin as 1/8 of an inch at its thinnest
portion,
 Ideal composition of cement and fine river sand, among other
ingredients that makes possible the production of tough and durable
wall tiles, though thin and light;
 the engraving of deep designs in such a way as to make the tiles
decorative, artistic and suitable for wall ornamentation, and the fact
that the tiles can be mass produced in commercial quantities and
can be conveniently stock-piled, handled and packed without any
intolerable incidence of breakages.

4. The Machuca tiles are different from that of the private respondent:

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CASE #5 – CRUZ, YRAH MICARLA M.
PATENTS (doctrine of equivalents must satisfy “function-means-and-
result test”)
The doctrine of equivalents provides that an infringement also takes place
when a device appropriates a prior invention by incorporating its innovative
concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve
substantially the same result.
SMITH KLINE BECKMAN CORPORATION vs. THE HONORABLE COURT
OF APPEALS and TRYCO PHARMA CORPORATION
G. R. No. 126627. August 14, 2003
CARPIO-MORALES, J.:
FACTS: Smith Kline Beckman Corporation (petitioner), a corporation
existing by virtue of the laws of the state of Pennsylvania, United States of
America (U.S.) and licensed to do business in the Philippines, filed before the
Philippine Patent Office (now Bureau of Patents, Trademarks and
Technology Transfer) an application for patent over an invention entitled
Methods and Compositions for Producing Biphasic Parasiticide Activity Using
Methyl 5 Propylthio-2-Benzimidazole Carbamate.
Tryco Pharma Corporation (private respondent) is a domestic corporation
that manufactures, distributes and sells veterinary products including
Impregon, a drug that has Albendazole for its active ingredient and is claimed
to be effective against gastro-intestinal roundworms, lungworms, tapeworms
and fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair
competition before the RTC. It claimed that its patent covers or includes the
substance Albendazole such that private respondent, by manufacturing,
selling, using, and causing to be sold and used the drug Impregon without its
authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561
as well as committed unfair competition under Article 189, paragraph 1 of the
Revised Penal Code and Section 29 of Republic Act No. 166 (The
Trademark Law) for advertising and selling as its own the drug Impregon
although the same contained petitioners patented Albendazole.
Private respondent in its Answer averred that Letters Patent No. 14561
does not cover the substance Albendazole for nowhere in it does that
10 | P a g e
word appear; that even if the patent were to include Albendazole, such
substance is unpatentable; that the Bureau of Food and Drugs allowed it to
manufacture and market Impregon with Albendazole as its known ingredient;
that there is no proof that it passed off in any way its veterinary products as
those of petitioner; that Letters Patent No. 14561 is null and void, the
application for the issuance thereof having been filed beyond the one year
period from the filing of an application abroad for the same invention covered
thereby, in violation of Section 15 of Republic Act No. 165 (The Patent Law);
and that petitioner is not the registered patent holder.
RTC dismissed petitioner’s complaint. CA upheld the trial courts finding that
private respondent was not liable for any infringement of the patent of
petitioner in light of the latter’s failure to show that Albendazole is the same
as the compound subject of Letters Patent No. 14561.
ISSUES: Whether or not the CA gravely erred in not finding that
Albendazole, the active ingredient in Trycos impregon drug, is included in
petitioners letters patent no. 14561, and that consequently Tryco is
answerable for patent infringement.
HELD: NO. Tryco is not answerable for patent infringement.
The burden of proof to substantiate a charge for patent infringement rests on
the plaintiff. In the case at bar, petitioners evidence consists primarily of its
Letters Patent No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products Division, by which
it sought to show that its patent for the compound methyl 5 propylthio-2-
benzimidazole carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the
other portions thereof, no mention is made of the compound Albendazole. All
that the claims disclose are: the covered invention, that is, the compound
methyl 5 propylthio-2-benzimidazole carbamate; the compounds being
anthelmintic but nontoxic for animals or its ability to destroy parasites without
harming the host animals; and the patented methods, compositions or
preparations involving the compound to maximize its efficacy against certain
kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound
thereby and may not claim anything beyond them.
The doctrine of equivalents provides that an infringement also takes
place when a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way
to achieve substantially the same result. Yet again, a scrutiny of
petitioner’s evidence fails to convince this Court of the substantial
sameness of petitioners patented compound and Albendazole. While
both compounds have the effect of neutralizing parasites in
animals, identity of result does not amount to infringement of patent
unless Albendazole operates in substantially the same way or by
substantially the same means as the patented compound, even though
it performs the same function and achieves the same result. In other
words, the principle or mode of operation must be the same or
substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-

and-result test, the patentee having the burden to show that all three
components of such equivalency test are met.

As stated early on, petitioners evidence fails to explain how Albendazole is in

every essential detail identical to methyl 5 propylthio-2-benzimidazole
carbamate. Apart from the fact that Albendazole is an anthelmintic agent like
methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted
and accordingly substantiated regarding the method or means by which
Albendazole weeds out parasites in animals, thus giving no information on
whether that method is substantially the same as the manner by which
petitioners compound works. The testimony of Dr. Orinion lends no support
to petitioner’s cause, he not having been presented or qualified as an expert
witness who has the knowledge or expertise on the matter of chemical
compounds.

As for the concept of divisional applications proffered by petitioner, it comes

into play when two or more inventions are claimed in a single application but
are of such a nature that a single patent may not be issued for them. The
applicant thus is required to divide, that is, to limit the claims to whichever
invention he may elect, whereas those inventions not elected may be made
the subject of separate applications which are called divisional
applications. What this only means is that petitioners methyl 5 propylthio-2-
benzimidazole carbamate is an invention distinct from the other inventions
claimed in the original application divided out, Albendazole being one of
those other inventions. Otherwise, methyl 5 propylthio-2-benzimidazole
carbamate would not have been the subject of a divisional application if a
single patent could have been issued for it as well as Albendazole.

SC AFFIRMED CA’s decision.

11 | P a g e
Case 6 GAMO LIP
PASCUAL GODINES vs. CA and SV-AGRO ENTERPRISES, INC.
G.R. No. 97343 September 13, 1993
Doctrine: Doctrine of quivalents is “(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." 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.
Facts:
The Philippine Patent Office issued a Letters Patent 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."
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."
12 | P a g e
The patent was acquired by SV-Agro Industries Enterprises, Inc. 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 in the Bulletin Today. SV- Agro
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 were being manufactured and sold by
Pascual Godines. SV-Agri notified Godines about the existing patent and
demanded that the latter stop selling and manufacturing.. Upon Godines’
failure to comply with the demand, SV-Agro Industries filed before the RTC a
complaint for infringement of patent and unfair competition. After trial, the
court held Pascual Godines liable for infringement of patent and unfair
competition. The decision was affirmed by the appellate court. Hence the
petition to the SC.
Godines maintains that: 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.
Issue: Whether or not Godines is guilty of infringement of patent.
Held: Note: The Court cited both the CA (used the literal test) but
Godines maintains that the products are different (SC cited the RTC
decision; used the doctrine of equivalents). Atty. Might ask what was
used. Safe answer ang Doctine of equivalents but they essentially used
both.
Yes, Godines is guilty of infriengement of patent. Citing the decision of the
CA: (1) Godines admits in his Answer that he 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 the usual business and
manufacturing practice. Defendant judicially admitted two units of the turtle power
tiller sold by him to Policarpio Berondo.
Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. 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."
To determine whether 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.
Citing the RTC: “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. In appearance and form, both the floating power tillers of the defendant
and the turtle power tiller of the plaintiff are virtually the same...Viewed from any
perspective or angle, the power tiller of the defendant is identical and similar to 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.
- The 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." 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.
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
13 | P a g e
invention are sufficient to put the item beyond the scope of literal infringement. 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." 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.
Citing the RTC: “But a careful examination between the two power tillers will
show 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.:
To establish an infringement, it is not essential to show that the defendant
adopted the device or process in every particular; Proof of an adoption of the
substance of the thing will be sufficient. "In one sense," said Justice Brown, "it
may be said that no device can be adjudged an infringement that does not
substantially correspond with the patent. But another construction, which
would limit these words to exact mechanism described in the patent, would be
so obviously unjust that no court could be expected to adopt it. . . .”
The law will protect a patentee against imitation of his patent by other forms and
proportions. If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even though they differ
in name, form, or shape.
We pronounce petitioner liable for infringement in accordance with Section 37 of
Republic Act No. 165, and Sec. 29 (a) for unfair competition.
Case7
SMITH KLINE & FRENCH LABORATORIES, LTD. vs. COURT OF
APPEALS
G.R. No. 121267. October 23, 2001
Ponente: J. Kapunan
DOCTRINE: 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.
FACTS: Petitioner is the assignee of Letters Patent No. 12207 covering
the pharmaceutical product Cimetidine, issued by the BPTTT to Graham
John Durant, John Collin Emmett and Robin Genellin on 1978. On 1989,
private respondent filed with the BPTTT a petition for compulsory license to
manufacture and produce its own brand of medicines using Cimetidine.
Private respondent invoked Section 34 of Republic Act No. 165, the law then
governing patents, which states that an application for the grant of a
compulsory license under a particular patent may be filed with the BPTTT at
any time after the lapse of two (2) years from the date of grant of such
patent, if the patented invention or article relates to food or medicine, or
manufactured substances which can be used as food or medicine, or is
necessary for public health or public safety
Also, according to petitioner, the grant of a compulsory license to
private respondent is an invalid exercise of police power since it was not
shown that there is an overwhelming public necessity for such grant,
considering that petitioner is able to provide an adequate supply
of Cimetidine to satisfy the needs of the Philippine market. It argues further
that the provisions of the Patent Law on compulsory licensing contravene the
Convention of Paris for the Protection of Industrial Property (Paris
Convention), which allegedly permits the granting of a compulsory license
over a patented product only to prevent abuses which might result from the
exercise of the exclusive rights conferred by the patent,or on the ground of
failure to work or insufficient working of the patented product, within four
years from the date of filing of the patent application or three years from the
date of grant of the patent, whichever expires last.
ISSUE:
1. Won the petitioner’s application be granted?
14 | P a g e
2.Whether the provisions of Patent Law contravenes the Paris
Convention?
Held: No. Under the Sec 34 of the Patent Law ,grounds for Compulsory
Licensing. (1) Any person may apply to the Director for the grant of a license
under a particular patent at any time after the expiration of two years from the
date of the grant of the patent, under any of the following circumstances:
(e) If the patented invention or article relates to food or medicine or
manufactured substances which can be used as food or medicine, or is
necessary for public health or public safety.
More than ten years have passed since the patent for Cimetidine was
issued to petitioner and its predecessors-in-interest, and the compulsory
license applied for by private respondent is for the use, manufacture and sale
of a medicinal product. Furthermore, both the appellate court and the BPTTT
found that private respondent had the capability to work Cimetidine or to
make use thereof in the manufacture of a useful product.
2. No. It is clear that 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.
Section 34 of R.A. No. 165, even if the Act was enacted prior to the
Philippines adhesion to the Convention, fits well within the aforequoted
provisions of Article 5 of the Paris Convention. In the explanatory note of Bill
No. 1156 which eventually became R.A. No. 165, the legislative intent in the
grant of a compulsory license was not only to afford others an opportunity 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 R.A. No. 165.
 1. that petitioner is the first, true and actual inventor of an aerial fuze
denominated as "Fuze, PDR 77 CB4 "which it developed as early as
December 1981 under the Self-Reliance Defense Posture Program (SRDP) of
Case no. 8_LALA
the AFP;
Patents: who may sue infringement
2. that sometime in 1986, petitioner began supplying the AFP with the said
CRESER PRECISION SYSTEMS, INC. vs. COURT OF APPEALS AND aerial fuze;
FLORO INTERNATIONAL CORP.
3. that private respondent's aerial fuze is identical in every respect to the
G.R. No. 118708 February 2, 1998 petitioner's fuze; and

MARTINEZ, J. 4. that the only difference between the two fuzes are miniscule and
merely cosmetic in nature.
CASE DOCTRINE: The phrase anyone possessing any right, title or interest
in and to the patented invention upon which petitioner maintains its present On June 27, 199, private respondent filed a petition forcertiorari, mandamus
suit, refers only to the patentees successors-in-interest, assignees or and prohibition before respondent Court of Appeals.Grounds:
grantees since actions for infringement of patent may be brought in the name
a. Petitioner has no cause of action for infringement against private
of the person or persons interested, whether as patentee, assignees or
respondent, the latter not having any patentfor the aerial fuze which it claims
grantees, of the exclusive right. (SEE SECTION 42, R.A. 165 below)
to have invented and developed and allegedly infringed by private
FACTS: Private respondent is a domestic corporation engaged in the respondent;
manufacture, production, distribution and sale of military armaments,
b. the case being an action for cancellation or invalidation of private
munitions, airmunitions and other similar materials.
respondent's Letters Patent over itsown aerial fuze, the proper venue is the
On January 23, 1990, private respondent was granted by the Bureau of Office of the Director of Patents;
Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent
c. The trial court acted in grave abuse of discretion and/or in excess of
No. UM-6938 covering an aerial fuze which was published in the September-
jurisdiction in finding that petitioner hasfully established its clear title or right
October 1990, Vol. III, No. 5 issue of the Bureau of Patents Official Gazette.
to preliminary injunction;
Sometime in November 1993, private respondent, through its president, Mr.
d. The trial court acted in grave abuse of discretion and/or in excess of
Gregory Floro, Jr., discovered that petitioner submitted samples of its
jurisdiction in granting the preliminaryinjunction, it being disruptive of the
patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing.
status quo; ande. The trial court acted in grave abuse of discretion and/or in
He learned that petitioner was claiming the aforesaid aerial fuze as its own
excess of jurisdiction in granting the preliminaryinjunction thereby depriving
and planning to bid and manufacture the same commercially without license
private respondent of its property rights over the patented aerial fuze and
or authority from private respondent.
cause itirreparable damages.
To protect its right, private respondent on December 3, 1993, sent a letterto
On November 9, 1994, the respondent court reversed the Trial Court's Order
petitioner advising it fro its existing patent and its rights thereunder, warning
and dismissd the complaint filed by petitioner.
petitioner of a possible court action and/or application for injunction, should it
proceed with the scheduled testing by the military on December 7, 1993. On January 17, 1995, petitioner’s motion for reconsideration was also denied.
In response to private respondent's demand, petitioner filed a complaint for Hence, this present petition.
injunction and damages Allegations in the complaint of petitioner:
15 | P a g e
ISSUE: Whether or not the petitioner has the right to assail the validity of the
patented work of the respondent.

HELD: The court finds the argument of the petitioner untenable.

Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly

provides:

SECTION. 42. Civil action for infringement. Any patentee, or anyone

possessing any right, title or interest in and to the patented invention, whose
rights have been infringed, may bring a civil action before the proper Court of
First Instance (now Regional Trial court), to recover from the infringer
damages sustained by reason of the infringement and to secure an injunction
for the protection of his right. x x x

The phrase anyone possessing any right, title or interest in and to the
patented invention upon which petitioner maintains its present suit, refers
only to the patentees successors-in-interest, assignees or grantees since
actions for infringement of patent may be brought in the name of the person
or persons interested, whether as patentee, assignees or grantees, of the
exclusive right. Moreover, there can be no infringement of a patent until a
patent has been issued, since whatever right one has to the invention
covered by the patent arises alone from the grant of patent. In short, a
person or entity who has not been granted letters patent over an invention
and has not acquired any right or title thereto either as assignee or as
licensee, has no cause of action for infringement because the right to
maintain an infringement suit depends on the existence of the patent.

Thus, as correctly ruled by the respondent Court of Appeals in its assailed

decision: since the petitioner (private respondent herein) is the patentee of
the disputed invention embraced by letters of patent UM No. 6938 issued to it
on January 23, 1990 by the Bureau of Patents, it has in its favor not only the
presumption of validity of its patent, but that of a legal and factual first and
true inventor of the invention.

16 | P a g e
Case no. 9 – PATENTABILITY
A utility model shall not be considered new if before the application for a patent
it has been publicly known or publicly used in this country or has been described
in a printed publication or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or described within
the country
ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and MELECIA
MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING
CORPORATION, respondents.
BELLOSILLO, J.:
Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February
1982 an action for the cancellation of Letters Patent No. UM-4609 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.
petitioner further alleged that (a) the utility model covered by the letters patent of
respondent had been known or used by others in the Philippines for more than one
(1) year before she filed her application for letters patent on 9 December 1979; (b)
the products which were produced in accordance with the utility model covered by
the letters patent had been in public use or on sale in the Philippines for more than
one (1) year before the application for patent therefor was filed.
Petitioner presented the following documents which she correspondingly marked
as exhibits: (a) affidavit of petitioner alleging the existence of prior art, marked Exh.
A; (b) a brochure distributed by Manila Gas Corporation disclosing a pictorial
representation of Ransome Burner made by Ransome Torch and Burner Company,
USA, marked Exh. D; and, (c) a brochure distributed by Esso Gasul or Esso Standard
17 | P a g e
Eastern, Inc., of the Philippines showing a picture of another similar burner with top
elevation view and another perspective view of the same burner, marked Exh. E.
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 for which Letters Patent No. UM-4609
was issued, and that after her husbands separation from the shop she organized
Besco Metal 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.
Petitioner also presented in evidence her own model of an LPG burner called
Ransome burner marked Exh. L, which was allegedly manufactured in 1974 or 1975
and sold by her in the course of her business operation in the name of BESCO
METAL. Petitioner claimed that this Ransome burner (Exh. L) had the same
configuration and mechanism as that of the model which was patented in favor of
private respondent Melecia Madolaria.
Private respondent, on the other hand, presented only one witness, Rolando
Madolaria, that in his early years with the company, UNITED FOUNDRY was
engaged in the manufacture of different kinds of gas stoves as well as burners
based on sketches and specifications furnished by customers; that the company
manufactured early models of single-piece types of burners where the mouth and
throat were not detachable; that private respondent again made some innovations;
that after a few months, private respondent discovered the solution to all the
defects of the earlier models and, based on her latest sketches and specifications,
he was able to cast several models incorporating the additions to the innovations
introduced in the models. Various tests were conducted on the latest model in the
presence and under the supervision of Melecia Madolaria and they obtained
perfect results. Rolando Madolaria testified that private respondent decided to file
her application for utility model patent in December 1979.
On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56
denying 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. Not one of the various pictorial representations of
business clearly and convincingly showed that the devices presented by petitioner
was identical or substantially identical with the utility model of the respondent. The
decision also stated that even assuming that the brochures depicted clearly each
and every element of the patented gas burner device so that the prior art and
patented device became identical although in truth they were not, they could not
serve as anticipatory bars for the reason that they were undated. The dates when
they were distributed to the public were not indicated and, therefore, were useless
prior art references. Petitioner elevated the decision of the Director of Patents to
the Court of Appeals which on 15 October 1993 affirmed the decision of the
Director of Patents. Hence, this petition for review on certiorari alleging that the
Court of Appeals Petitioner submits that the differences cited by the Court of
Appeals between the utility model of private respondent and the models of Manila
Gas Corporation and Esso Standard Eastern, Inc., are more imaginary than real. She
alleges that based on Exhs. E, E-1, F and F-1 or the brochures of Manila Gas
Corporation and Esso Standard Eastern, Inc., presented by petitioner, the cup-
shaped burner mouth and threaded hole on the side are shown to be similar to the
utility model of private respondent. The exhibits also show a detachable burner
mouth having a plurality of upwardly existing undulations adopted to act as gas
passage when the cover is attached to the top of said cup-shaped mouth all of
which are the same as those in the patented model. Petitioner also denies as
substantial difference the short cylindrical tube of the burner mouth appearing in
the brochures of the burners being sold by Manila Gas Corporation and the long
cylindered tube of private respondents model of the gas burner.
Issue: Whether the invention is patentable.
Yes. Section 7 of RA No. 165, as amended, which is the law on patents, expressly
provides -
Sec. 7. Inventions patentable. Any invention of a new and useful machine,
manufactured product or substance, process or an improvement of any of the
foregoing, shall be patentable.
Further, Sec. 55 of the same law provides -
Sec. 55. Design patents and patents for utility models. - (a) Any new, original and
ornamental design for an article of manufacture and (b) any new model of
implements or tools or of any industrial product or of part of the same, which does
not possess the quality of invention, but which is of practical utility by reason of its
form, configuration, construction or composition, may be protected by the author
thereof, the former by a patent for a design and the latter by a patent for a utility
18 | P a g e
model, in the same manner and subject to the same provisions and requirements as
relate to patents for inventions insofar as they are applicable except as otherwise
herein provided.
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.[2] 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.[3]
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an LPG Burner on
22 July 1981, the Philippine Patent Office found her invention novel and patentable.
The issuance of such patent creates a presumption which yields only to clear and
cogent evidence that the patentee was the original and first inventor. Hence, a
utility model shall not be considered new if before the application for a patent it
has been publicly known or publicly used in this country or has been described in a
printed publication or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or described within
the country.[5]
Not one of the various pictorial representations of burners clearly and convincingly
show that the device presented therein is identical or substantially identical in
construction with the aforesaid utility model. It is relevant and material to state
that in determining whether novelty or newness is negated by any prior art, only
one item of the prior art may be used at a time. For anticipation to occur, the prior
art must show that each element is found either expressly or described or under
principles of inherency in a single prior art reference or that the claimed invention
was probably known in a single prior art device or practice. Even assuming gratia
arguendi that the aforesaid brochures do depict clearly on all fours each and every
element of the patented gas burner device so that the prior art and the said
patented device become identical, although in truth they are not, they cannot serve
as anticipatory bars for the reason that they are undated. The dates when they
were distributed to the public were not indicated and, therefore, they are useless
prior art references.
At this juncture, it is worthwhile to point out that petitioner also presented Exh. M
which is the alleged burner cup of an imported Ransome burner. Again, this Office
finds the same as unreliable evidence to show anticipation. It observed that there is
no date indicated therein as to when it was manufactured and/or imported before
the filing of the application for issuance of patent of the subject utility model. What
is more, some component parts of Exh. M are missing, as only the cup was
presented so that the same could not be compared to the utility model (subject
matter of this case) which consists of several other detachable parts in combination
to form the complete LPG burner.

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 (clear and convincing evidence to overthrow the presumption of
validity of a patent).

Hence, the petition is denied.

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Case no. 10 - COMPULSORY LICENSING; ADGMarmol
In the explanatory note of Bill No. 1156 which eventually became
R.A. No. 165, the legislative intent in the grant of a compulsory
license was not only to afford others an opportunity 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 the Convention foresaw,
and which our Congress likewise wished to prevent in enacting R.A.
No. 165.
G.R. No. 121867 July 24, 1997
SMITH KLINE & FRENCH LABORATORIES, LTD., petitioner, vs.
COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and DOCTORS PHARMACEUTICALS, INC.
respondents.
DAVIDE, JR., J.:
Petitioner is a foreign corporation with principal office at Welwyn
Garden City, England. It owns Philippine Letters Patent No. 12207 issued
by the BPTTT for the patent of the drug Cimetidine.
Private respondent is a domestic corporation engaged in the business of
manufacturing and distributing pharmaceutical products. On 30 March
1987, it filed a petition for compulsory licensing with the BPTTT for
authorization to manufacture its own brand of medicine from the drug
Cimetidine and to market the resulting product in the Philippines,
pursuant to Section 34 of Republic Act No. 165 (An Act Creating a Patent
Office Prescribing Its Powers and Duties, Regulating the Issuance of
Patents, and Appropriating Funds Therefor), which provides for the
compulsory licensing of a particular patent after the expiration of two
years from the grant of the latter if the patented invention relates to,
inter alia, medicine or that which is necessary for public health or public
safety. Private respondent alleged that the grant of Philippine Letters
Patent No. 12207 was issued on 29 November 1978; that the petition
was filed beyond the two-year protective period provided in Section 34
20 | P a g e
of R.A. No. 165; and that it had the capability to work the patented
product or make use of it in its manufacture of medicine.
Petitioner opposed, arguing that private respondent had no cause of
action and lacked the capability to work the patented product; the
petition failed to specifically divulge how private respondent would use
or improve the patented product; and that private respondent was
motivated by the pecuniary gain attendant to the grant of a compulsory
license. Petitioner also maintained that it was capable of satisfying the
demand of the local market in the manufacture and marketing of the
medicines covered by the patented product. Finally, petitioner
challenged the constitutionality of Sections 34 and 35 of R.A. No. 165 for
violating the due process and equal protection clauses of the
Constitution.
BPTTT decision: 1. That [private respondent] be hereby granted a non-
exclusive and non-transferable license to manufacture, use and sell in
the Philippines its own brands of pharmaceutical products containing
[petitioner's] patented invention which is disclosed and claimed in
Letters Patent No. 12207;
2. By virtue of this license, [private respondent] shall pay [petitioner] a
royalty on all license products containing the patented substance made
and sold by [private respondent] in the amount equivalent to TWO AND
ONE HALF PERCENT (2.5%) of the net sales in Philippine currency. The
term "net scale" [sic] means the gross amount billed for the product
pertaining to Letters Patent No. 12207.
CA decision: Affirmed the BPTTT’s decision.
Issues: 1) Whether the grant of compulsory licensing violates the Paris
Convention for the Protection of Industrial Property.
2) Whether the grant of CL a valid exercise of police power.
3) Whether royalty rate of 2.5% of the net wholesale price amt. to
expropriation w/o just compensation.
Held: 1) No. Section 34 of R.A. No. 165, even if the Act was enacted prior product in the manufacture of a useful product. In this case, the
to the Philippines' adhesion to the Convention, fits well within the applicant was able to show that Cimetidine, (subject matter of latters
provision of Article 5* of the Paris Convention. In the explanatory note of Patent No. 12207) is necessary for the manufacture of an anti-ulcer
Bill No. 1156 which eventually became R.A. No. 165, the legislative intent drug/medicine, which is necessary for the promotion of public health.
in the grant of a compulsory license was not only to afford others an Hence, the award of compulsory license is a valid exercise of police
opportunity to provide the public with the quantity of the patented power.
product, but also to prevent the growth of monopolies. Certainly, the
3) No expropriation as there’s just compensation. Sec.35 (b) of R.A.165
growth of monopolies was among the abuses which the Convention
gives the Director of Patents discretion to set royalty rate w/in 5% net
foresaw, and which our Congress likewise wished to prevent in enacting
wholesale price.
R.A. No. 165.
The patented invention relates to compound and compositions used in
inhibiting certain actions of the histamine, hence, it relates to medicine.
There is ample evidence to show that [private respondent] possesses
such capability, having competent personnel, machines and equipment
as well as permit to manufacture different drugs containing patented
active ingredients such as ethambutol of American Cyanamid and
Ampicillin and Amoxicillin of Beecham Groups, Ltd
As to the claim by the petitioner that it has the capacity to work the
patented product although it was not shown that any pretended abuse
has been committed, thus the reason for granting compulsory license "is
intended not only to give a chance to others to supply the public with the
quantity of the patented article but especially to prevent the building up
of patent monopolities [sic]." [Parke Davis v. Doctors Pharmaceuticals,
Inc., 14 SCRA 1053].
* “Each country of the union shall have the right to take legislative
measures providing for the grant of compulsory licenses to prevent the
abuses which might result from the exercise of the exclusive rights
conferred by the patent, for example, failure to work.” Article 5, Paris
Convention.
2) Yes. The granting of compulsory license is not simply because Sec. 34
(1) e, RA 165 allows it in cases where the invention relates to food and
medicine. The Director of Patents also considered in determining that
the applicant has the capability to work or make use of the patented

21 | P a g e
Case No. 11- M. Padayao
It is elementary that a patent may be infringed where the essential or
substantial features of the patented invention are taken or appropriated, or the
device, machine or other subject matter alleged to infringe is substantially
identical with the patented invention. In order to infringe a patent, a machine or
device must perform the same function, or accomplish the same result by
identical or substantially identical means and the principle or mode of
operation must be substantially the same.
ROBERTO L. DEL ROSARIO vs. COURT OF APPEALS AND JANITO
CORPORATION
G.R. No. 115106. March 15, 1996
BELLOSILLO, J
Facts: Roberto L. del Rosario filed a complaint for patent infringement against Janito
Corporation. He alleged that he was a patentee of an audio equipment and improved
audio equipment commonly known as the sing-along system or karaoke 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 ones 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. Thus he sought from the trial court the issuance of a writ of preliminary
injunction to enjoin private respondent, its officers and everybody elsewhere acting
on its behalf, from using, selling and advertising the miyata or miyata karaoke brand,
the injunction to be made permanent after trial, and praying for damages, attorneys
fees and costs of suit.
The RTC issued a writ of preliminary injunction upon a bond on the basis of its finding
that petitioner was a holder of a utility model patent for a sing-along system and that
22 | P a g e
without his approval and consent private respondent was admittedly manufacturing
and selling its own sing-along system under the brand name miyata which was
substantially similar to the patented utility model of petitioner.
The CA reversed the RTC. It expressed the view that there was no infringement of
the patents of petitioner by the fact alone that private respondent had manufactured
the miyata karaoke or audio system, and that the karaoke system was a universal
product manufactured, advertised and marketed in most countries of the world long
before the patents were issued to petitioner.
Issue: Whether Janito Corporation was guilty of patent infringement.
Held: Yes. The Patent Law expressly acknowledges that any new model of
implements or tools of any industrial product even if not possessed of the quality of
invention but which is of practical utility is entitled to a patent for utility model. Here,
there is no dispute that the letters patent issued to petitioner are for utility models of
audio equipment.
Under Sec. 55 of The Patent Law a utility model shall not be considered new if before
the application for a patent it has been publicly known or publicly used in this country
or has been described in a printed publication or publications circulated within the
country, or if it is substantially similar to any other utility model so known, used or
described within the country. Respondent corporation failed to present before the trial
court competent evidence that the utility models covered by the Letters Patents
issued to petitioner were not new.
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 respondents 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 is elementary that a patent may be infringed where the essential or
substantial features of the patented invention are taken or appropriated, or the
device, machine or other subject matter alleged to infringe is substantially
identical with the patented invention. In order to infringe a patent, a machine or
device must perform the same function, or accomplish the same result by
identical or substantially identical means and the principle or mode of
operation must be substantially the same.
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 petitioners 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 speakers 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.
Clearly, therefore, both petitioners and respondents models involve
substantially the same modes of operation and produce substantially the same
if not identical results when used.

23 | P a g e
CASE#12 – PAT (UTILITY MODEL)
G.R. No. L-20354 July 28, 1969
GERARDO SAMSON, JR., ,
vs. FELIPE TARROZA and DIRECTOR OF PATENTS,
DOCTRINE: There is an express recognition under the Patent Law, as
already noted, that any new model of implements or tools or of any industrial
product even if not possessed of the quality of invention but which is of
"practical utility" is entitled to a "patent for a utility model." From the above
description of the side tilting-dumping wheelbarrow, the product of
respondent's ingenuity and industry, it is quite apparent that it has a place in
the market and possesses what the statute refers to as "practical utility."
FACTS: Petitioner was, on May 22, 1958, awarded Utility Model Patent No.
27 for the above type of wheelbarrow which "consists of a wheeled carriage
base and an upper pivoted and detachable carrying tray. The carriage base
is comprised of a wheel and two equal lengths of continuous pipes bent to
provide wheel forks at the front and at the rear to support the back portion of
the tray, with the ends of the pipes being adopted as the carrying handles for
the wheelbarrow. The two pipes thus bent are joined together by cross
braces in the front and at the rear. The tray is removably pivoted at its front
end through hook catches at its bottom corners, to the forward cross brace,
and its rear end rests solidly over the rear portion of the legs. To dump the
load the user pulls a dumping handle at the back end to cause the tray to
pivot upwardly about the front brace to a position of about 45 degrees with
the horizontal and with its front end panel being supported by the wheel."
Respondent's Side Tilting-Dumping Wheelbarrow, on the other hand,
consists "of a wheeled carriage made of tubular frames essentially as in
petitioner's. Welded transversely to the parallel frames are two brackets
provided with holes designed to complement similar holes on brackets
provided on the tray. The brackets on the tray are so placed that with the
provision of a bolt through the openings the tray may be tilted approximately
170 degrees to the left or to the right of the wheelbarrow with its axis running
longitudinally through the center of the bottom face of the tray."
A petition for the cancellation of a utility model patent for a Side Tilting-
Dumping Wheelbarrow granted to respondent Felipe A. Tarroza. It was
correctly denied by respondent Director of Patents. Petitioner Gerardo
Samson, Jr., himself the grantee of a utility model patent for a Dumping and
24 | P a g e
Detachable Wheelbarrow, lacked any legal justification for such a plea. So
respondent Director ruled. Not satisfied, petitioner elevated the matter to this
Court for review.
ISSUE: Whether or not respondent’s Utility Model Patent deserves
cancellation.
HELD: No. There is an express recognition under the Patent Law, as already
noted, that any new model of implements or tools or of any industrial product
even if not possessed of the quality of invention but which is of "practical
utility" is entitled to a "patent for a utility model." From the above description
of the side tilting-dumping wheelbarrow, the product of respondent's
ingenuity and industry, it is quite apparent that it has a place in the market
and possesses what the statute refers to as "practical utility." Respondent
Tarroza is entitled to its benefits. The grant to him of a patent for a utility
model is in accordance with law.
Another alleged error was imputed to respondent Director of Patents. It
would find fault with his failing to hold that respondent Tarroza "was not the
true and actual" author of the mechanical contrivance for which he was
granted a utility model patent. This is what the appealed decision has to say
on this point: "Petitioner's theory with respect to the second ground for
cancellation, to wit: that respondent is not the true and actual inventor or
designer of the utility model is premised on the fact that because of the
proximity of the two, the petitioner and the respondent being brothers-in-law,
and living in adjoining residential lots, the latter has had ample time and
opportunity to observe and copy the former's wheelbarrow. But the
testimonial evidence thus presented is not clear, satisfactory, and free from
doubt, in the face of allegations to the contrary by the respondent."
Case #13 – (Velasco, Divina G.)
PATENTS : RIGHTS ARISING THEREFROM
A patentee shall have the exclusive right to make, use and sell
the patented machine, article or product, and to use the patented
process for the purpose of industry or commerce, throughout
the territory of the Philippines for the term of the patent; and
such making, using, or selling by any person without the
authorization of the patentee constitutes infringement of the
patent.
PHIL PHARMAWEALTH, INC., Petitioner, vs. PFIZER, INC. and
PFIZER (PHIL.) INC. Respondents
G.R. No. 167715 ; November 17, 2010
PERALTA, J.
FACTS:
Respondent companies, Pfizer, Inc. and Pfizer (Phil.), Inc. filed a
Complaint for patent infringement against Petitioner Phil
Pharmawealth, Inc. with the Bureau of Legal Affairs of the Intellectual
Property Office (BLA-IPO) alleging:
 Pfizer is the registered owner of Philippine Letters Patent No.
21116 issued on July 16, 1987 valid until July 16, 2004. The
claims of this Patent are directed to a method of increasing the
effectiveness of a beta-lactam antibiotic in a mammalian
subject, which comprises co-administering to said subject a
beta-lactam antibiotic effectiveness increasing amount of a
25 | P a g e
compound of the formula IA. The scope of the claims of the
Patent extends to a combination of penicillin such as ampicillin
sodium and beta-lactam antibiotic like sulbactam sodium.
 It covers ampicillin sodium/sulbactam sodium (hereafter
Sulbactam Ampicillin). Ampicillin sodium is a specific example
of the broad beta-lactam antibiotic disclosed and claimed in
the Patent. It is the compound which efficacy is being
enhanced by co-administering the same with sulbactam
sodium. Sulbactam sodium, on the other hand, is a specific
compound of the formula IA disclosed and claimed in the
Patent.
 Pfizer is marketing Sulbactam Ampicillin under the brand
name Unasyn. The sole and exclusive distributor of Unasyn
products in the Philippines is Zuellig Pharma Corporation.
 Sometime in January and February 2003, complainants came
to know that Phil Pharmawealth submitted bids for the supply
of Sulbactam Ampicillin to several hospitals without the
consent of complainants and in violation of the complainants'
intellectual property rights.
 Complainants wrote the above hospitals and demanded that
the latter immediately cease and desist from accepting bids for
the supply of Sulbactam Ampicillin or awarding the same to
entities other than complainants.
 In gross and evident bad faith, respondent and the hospitals
willfully ignored complainants' just, plain and valid demands,
refused to comply. As registered owner of the Patent, Pfizer is
entitled to protection under Section 76 of the IP Code.
Respondents prayed for permanent injunction, damages and the
forfeiture and impounding of the alleged infringing products and for
the issuance of a temporary restraining order and a preliminary
injunction against petitioner.
On July 15, 2003, BLA-IPO issued a preliminary injunction for ninety
days. Within said period respondents filed a Motion for Extension of
Writ of Preliminary Injunction – denied. Motion for Reconsideration –
denied.
Respondents then filed a special civil action for certiorari with the CA.
While the case was pending before the CA, respondents filed a
Complaint with the Regional Trial Court (RTC) of Makati City for
infringement and unfair competition with damages against herein
petitioner.
On August 24, 2004, the RTC of Makati City issued an Order
directing the issuance of a temporary restraining order conditioned
upon respondents' filing of a bond.
In a subsequent Order dated April 6, 2005, RTC granted petition
prohibiting and restraining Phil Pharmawealth, its agents,
representatives and assigns from importing, distributing or selling
Sulbactam Ampicillin products to any entity in the Philippines.
On November 16, 2004, Petitioner filed a Motion to Dismiss the
petition filed with the CA on the ground of forum shopping. On
January 18, 2005, The CA issued a temporary restraining order which
prohibited petitioner from importing, distributing, selling or offering for
sale Sulbactam Ampicillin products to any hospital or to any other
entity in the Philippines, or from infringing Pfizer Inc.'s Philippine
Patent No. 21116 and impounding all the sales invoices and other
26 | P a g e
documents evidencing sales by Phil Pharmawealth of Sulbactam
Ampicillin products.
On February 7, 2005, Petitioner filed a Motion to dismiss the case for
being moot and academic, contending that respondents' patent had
already lapsed. Petitioner also moved for the reconsideration of the
temporary restraining order issued by the CA that the patent right
sought to be protected has been extinguished due to the lapse of the
patent license and on the ground that the CA has no jurisdiction to
review the order of the BLA-IPO as said jurisdiction is vested by law in
the Office of the Director General of the IPO. On April 11, 2005,
denied.
ISSUES:
1) Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already
lapsed?
2) What tribunal has jurisdiction to review the decisions of the
Director of Legal Affairs of the Intellectual Property Office?
3) Is there forum shopping when a party files two actions with two
seemingly different causes of action and yet pray for the same
relief?
RULING:
1) NO. Section 37 of Republic Act No. (RA) 165, which was the
governing law at the time of the issuance of respondents'
patent, provides:
Section 37. Rights of patentees. A patentee shall have the
exclusive right to make, use and sell the patented machine,
article or product, and to use the patented process for the
purpose of industry or commerce, throughout the territory of
 the Philippines for the term of the patent; and such making,
using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent.
In the instant case, Philippine Letters Patent No. 21116, which
was the basis of respondents in filing their complaint with the
BLA-IPO, was issued on July 16, 1987 until July 16, 2004,
which is in conformity with Section 21 of RA 165, providing
that the term of a patent shall be seventeen (17) years from
the date of issuance thereof.
The Court agrees with petitioner that after July 16, 2004,
respondents no longer possess the exclusive right to make,
use and sell the articles or products covered by Philippine
Letters Patent No. 21116.
From Section 3, Rule 58, of the Rules of Court, two requisites
must exist to warrant the issuance of an injunctive relief,
namely: (1) the existence of a clear and unmistakable right
that must be protected; and (2) an urgent and paramount
necessity for the writ to prevent serious damage.
Hence, the issuance by the CA of a temporary restraining
order in favor of the respondents is not proper.
2) Court of Appeals. It is true that under Section 7(b) of RA
8293, otherwise known as the Intellectual Property Code of the
Philippines, which is the presently prevailing law, the Director
General of the IPO exercises exclusive appellate jurisdiction
over all decisions rendered by the Director of the BLA-IPO.
However, what is being questioned before the CA is not a
decision, but an interlocutory order of the BLA-IPO denying
respondents' motion to extend the life of the preliminary
injunction issued in their favor.
27 | P a g e
RA 8293 is silent with respect to any remedy available to
litigants who intend to question an interlocutory order issued
by the BLA-IPO. Moreover, Section 1(c), Rule 14 of the Rules
and Regulations on Administrative Complaints for Violation of
Laws Involving Intellectual Property Rights simply provides
that interlocutory orders shall not be appealable. Hence, in
the absence of such a remedy, the provisions of the Rules of
Court shall apply in a suppletory manner. Hence, in the
present case, respondents correctly resorted to the filing of a
special civil action for certiorari with the CA to question the
assailed Orders of the BLA-IPO, as they cannot appeal
therefrom and they have no other plain, speedy and adequate
remedy in the ordinary course of law. This is consistent with
Sections 1 and 4, Rule 65 of the Rules of Court, as amended.
In the first place, respondents' act of filing their complaint
originally with the BLA-IPO is already in consonance with the
doctrine of primary jurisdiction. It is settled that one of the
exceptions to the doctrine of primary jurisdiction is where the
question involved is purely legal and will ultimately have to be
decided by the courts of justice.
3) YES. A careful reading of the complaint filed with the RTC of
Makati City would show that respondents have the same
cause of action as in their complaint filed with the IPO. They
claim that they have the exclusive right to make, use and sell
Sulbactam Ampicillin products and that petitioner violated this
right. Thus, it does not matter that the patents upon which the
complaints were based are different. The fact remains that in
both complaints the rights violated and the acts violative of
such rights are identical. In fact, respondents seek
substantially the same reliefs in their separate complaints with
the IPO and the RTC for the purpose of accomplishing the
same objective. Dismissed without prejudice on the ground of
litis pendencia.