Ursabia, Angelo Francis G

Special Commercial Laws

GODINES V. CA (G.R. NO. 97343)

Facts:

Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz which
covers a utility model for hand tractor or power tiller by virtue of a deed of assignment executed
by the latter in its favor. Respondent after suffering a decline in sales of the patented power
tillers, investigated and discovered that petitioner Godines was manufacturing the same power
tillers as they have. Respondent thus filed a complaint for patent infringement and unfair
competition against petitioner Godines. The trial court held petitioner liable for infringement. CA
affirmed.

Issue: Whether or not petitioner’s products infringe upon the patent of respondent SV-Agro.

Ruling: YES.

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. It appears from the observation of the
trial court that these claims of the patent and the features of the patented utility model were
copied by petitioner: 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. In operation, the floating power tiller of the defendant operates also in similar
manner as the turtle power tiller of plaintiff.

Petitioner’s argument that his power tillers were different from private respondent’s is that of a
drowning man clutching at straws. Recognizing that the logical fallback position of one in the
place of defendant is to aver that his product is different from the patented one, courts have
adopted the doctrine of equivalents. 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.” In this case, the trial court
observed: But a careful examination between the two power tillers will show that they will
operate on the same fundamental principles.

We are compelled to arrive at no other conclusion but that there was infringement.
Creser Precision Systems Inc. v CA and Floro International Co.

GR NO. 118708, February 2, 1998

Facts:

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

Issue: Whether or not the petitioner has the right to assail the validity of the patented work of the
respondent?

Ruling:

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