Cases in the Philippines (Patent)

Manzano vs CA
Petitioner Angelita Manzano filed for cancellation of letters patent for a gas burner registered in the
name of respondent Melecia Madoloria who subsequently assigned the letters patent to UNITED
FOUNDRY for brevity. She alleged that the utility model covered by letters patent in this case (LPG GAS
BURNER) was not inventive, new or useful; the specification did not comply with the requirements of
Sec 14 RA 165; that respondent 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
the letter was secured by means of fraud or misrepresentation.

Petitioner presented in evidence her own model of an LPG burner called ransome burner which was
allegedly manufactured in 1974/1975. She claimed that this ransome burner had the same configuration
and mechanism as that of the model which was patented in favor of private respondent

Issue: whether the cancellation of patent is proper and if the invention is patentable

Ruling: Petitioners contention is untenable.

Sec 7 RA 165 expressly provides any invention of new and useful machine, manufactured product or
substance, process or an improvement of any of the foregoing shall be patentable.

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.—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 therefore should be denied; and if the application has been granted, the court, in a judicial
proceeding in which the validity of the patent is drawn in question, will hold it void and ineffective. It
has been repeatedly held that an invention must possess the essential elements of novelty, originality
and precedence, and for the patentee to be entitled to the protection the invention must be new to the
world.

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. The burden of proving want of novelty is on him who avers it and the burden is a heavy one
which is met only by clear and satisfactory proof which overcomes every reasonable doubt. 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.
There is a presumption that the Philippine Patent Office has correctly determined the patentability of
the model and such action must not be interfered with in the absence of competent evidence to the
contrary. The validity of the patent issued by the Philippine Patent Office in favor of private respondent
and the question over the inventiveness, novelty and usefulness of the improved model of the LPG
burner are matters which are better determined by the Patent Office. The technical staff of the
Philippine Patent Office composed of experts in their field has by the issuance of the patent in question
accepted private respondent’s model of gas burner as a discovery.

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 reversal of the findings and conclusions of the Patent Office and
the Court of Appeals.

Smith Kline Beckman vs CA and Tryco Pharma Corp.

Facts:

Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent

was issued to it for its invention entitled “Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.” The invention
is a means to fight off gastrointestinal parasites from various cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called
Impregon which contains a drug called Albendazole which fights off gastro-intestinal
roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.
Smith Kline is claiming that Albendazole is covered in their patent because it is substantially
the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since
both of them are meant to combat worm or parasite infestation in animals. And that
Albendazole is actually patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Kline’s patent does it mention that
Albendazole is present but even if it were, the same is “unpatentable”.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances
substantially do the same function in substantially the same way to achieve the same
results, thereby making them truly identical for in spite of the fact that the word Albendazole
does not appear in Tryco Paharma’s letters of patent, it has ably shown by evidence its
sameness with methyl 5 propylthio-2-benzimidazole carbamate.
Issue : whether Albendazole, the active ingredient in trycos impregon drug is included in petitioners
letters patent and that tryco is liable for patent infringement.

Ruling:

The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. In the case at
bar, petitioners evidence consists primarily that its patent for the compound methyl 5 propylthio
benzimidazole carbamate also covers the substance albendazole. Based on the letters patent no
mention of albendazole. It bears stressing that mere absence of the word albendazole is not
determinative of albendazole non-inclusion in the claims of the patent. The language of letter patent
fails to yield anything at all regarding albendazole. And no extrinsic evidence had been adduced to prove
that albendazole inheres in petitioners patent in spite of its omission therefrom or that the meaning of
the claims of the patent embraces the same.

While petitioner concedes that the mere literal wordings of its patent cannot establish private
respondent infringement, it urges the court to apply the doctrine of equivalents.

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 petitioners evidence to fails to convince this court of the
substantial sameness of petitioners patented compound and albendazole. While both have the same
effect, identity of result does not amount to infringement of patent unless it operates in substantially
the same way as the patented compound, even though it performs the same functions and achieve 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.

James Howard Booth and John Morton II vs The Director of Patents

Facts:

Petitioners are American citizen and chemists, invented an antibiotic designated as tetracycline. On
February 1954, petitioners applied for letter patent covering said invention to respondent Director of
Patents claiming the right of priority granted to foreign applicants under Section 15 of RA 165. Receipt of
petitioner’s application was acknowledged by respondent Director.

On April 14, 1954 petitioners filed with respondent Director a legalized copy of their application for
letters patent in the US for the same invention. Said legalized copy indicated that the application in the
US was filed on March 16, 1963. This letter date is crucial importance to petitioners cause under section
15 which provides that:

Section 15. Applications previously filed abroad. - An application for patent for an invention filed
in this country by any person who has previously regularly filed an application for a patent for the
same invention in a foreign country which, by treaty, convention, or law, affords similar privileges to
citizens of the Philippines shall have the same force and effect as the same applicant would have if
filed in this country on the date on which the application for patent for the same invention was first
filed in such foreign country: Provided, That the application in this country is filed within twelve
months from the earliest date on which any such foreign application was filed, and a certified copy of
the foreign application together with a translation thereof into English, if not in the English language,
is filed within six months from the date of filing in the Philippines, unless the Director for good cause
shown shall extend the time for filing such certified copy.

And provided further that, no patent shall be granted on the application for patent for an invention
which had been patented or describe in a printed publication in this or any foreign country more than
one year before the date of the actual filing of the application in this country, or which had been in
public use or sale in this country for more than one year period to such filing.

Issue: whether petitioners are entitled to priority right in the application of patent under RA 165

Ruling:

Incompleteness of specification of letters patent application a substantial defect; Failure to file a

complete application within the reglementary period for filing or to complete the same within a fixed
period makes the application converted into an ordinary application and not entitled to the priority date
of the filing of the patent application.—The specification which petitioners submitted on March 5, 1954
was far from complete. That defect was one of substance and not merely one of form. What petitioners
claimed as their invention was not completely determinable therefrom. Petitioners’ application could be
deemed as complete only on July 2, 1963 when they submitted the additional pages of the
Specifications and Claims. Respondent Director, therefore, did not err in converting petitioners’
application into an ordinary application filed on April 14, 1954, not only for their having failed to
complete their application within the four-month period provided for by Rules 47 and 48, Revised Rules
of Practice in Patent Cases, and as required of them by Paper No. 6, but also for their having failed to file
a complete application within twelve months from March 16, 1953, the date of the foreign application.
For, to be entitled to the filing date of the patent application, an invention disclosed in a previously filed
application must be described within the instant application in such a manner as to enable one skilled in
the art to use the same for a legally adequate utility.