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straightforward, but as demonstrated by this case, modern science has

made it less so.


Brief Fact Summary.

Boothe vs Director of Patents | G.R. No. L-24919


Chakrabarty (Plaintiff) sought to patent a live, man-made
microorganism.
January 28, 1980 | Melencio-Herrera, J.

Synopsis of Rule of Law.

Facts: Petitioners James Boothe and John Morton II, who are
A live, man-made microorganism is a non-naturally occurring American citizens and chemists, invented an antibiotic designated as
composition and therefore may be patented. “tetracycline”. In February 19, 1954, petitioners applied for Letters of
Patent covering such invention and claiming the right of priority granted
Facts. to foreign applications under Section 15 of the Patent Law (R.A. 165).
In April 14, 1954, petitioners filed a legalized copy of their application
in the United States for the same invention which showed that it was
Chakrabarty (Plaintiff) developed a new species of bacterium capable filed on March 16, 1953. However, in an interference proceeding in the
of metabolizing hydrocarbons in a manner unknown in naturally United States in 1958; the Letters patent for a similar invention was
occurring organisms using recombinant DNA processes. The awarded to Pfizer and Co. Despite such pronouncement, petitioners
microorganisms exhibited great promise in the treatment of oil still requested that their application be granted on the basis of the
spills. Plaintiff applied for a patent, which was denied by the Patent claims originally filed by them.
Office (Defendant) on the basis that the microorganisms were products
of nature and therefore unpatentable. The Board of Appeals The Patent Examiner rejected all of petitioners’ claims by
affirmed. The Court of Customs and Patent Appeals reversed, and the reason of the pronouncement in favour of Pfizer and Co. and that the
United States Supreme Court granted review. Specification filed by petitioners were incomplete since it appears that
the Specification in petitioner’s US application did not completely
Issue. appear in their local application. Petitioners then submitted two
complete copies of their Specification but was rejected in 1959 by the
Chief Patent Examiner. Petitioners moved for reconsideration on the
May a live, man-made microorganism be patented? ground that their application falls under the exception provided in Rule
47 of the Revised Rules of Practice in Patent Cases since their
submissions are not new matters but a mere “minor informalities.”
Held. Again, such was rejected by the Chief Patent Examiner ruling that the
Patent Law provides for a deadline for filing which cannot be extended
(Burger, C.J.) Yes. A live, man-made microorganism is a non- otherwise the latter shall be rendered useless.
naturally occurring composition and therefore may be
patented. Resolution of this issue is, regardless of its philosophical Petitioner appealed to respondent Director of Patents who
implications, strictly a matter of statutory construction. The relevant ruled that the application shall be considered as an ordinary application
statute here, 35 U.S.C. § 101, defines as patentable any new and for petitioner failed to file within the period to claim priority right under
useful “manufacture”� or “composition of matter,”� among other the law since it was only in April 14, 1954 when petitioner completed
things. It is a basic rule of construction that words are given their its application. Petitioner now avers that they are granted priority rights
natural, ordinary meanings. There can be little doubt that under convention and treaty but was denied but respondent. Hence,
microorganisms produced by recombinant DNA technology may be the instant petition.
said to be manufactured and to be compositions of matter. For
purposes of patent law, the fact they are alive is not relevant. Although
it is true that naturally-occurring products may not be patented, a
genetically-engineered microorganism is not naturally occurring. While Issue: Whether or not petitioners are entitled to priority right in the
this Court recognizes that recombinant DNA technology is a application of patent under R.A. 165.
controversial field, it is ill-equipped to balance the competing values
and interests manifested therein; this is a task for Congress. Since the
patent laws clearly include materials such as are at issue here within
their scope, and no specific law exists to exclude it, the only Held: No. Under Rule 47 and 48 of the Revised Rules of Practice in
appropriate holding is that recombinant DNA-produced Patent cases, an application is deemed complete when all the required
microorganisms are patentable. Affirmed. parts to comply with the rules are submitted except that minor
informalities may be waived subject to subsequent correction,
whenever required. The filing date of the applicant is the date on which
Dissent. the complete application is received in the Patent Office.

(Brennan, J.) Congress, in enacting the Plant Patent Act in 1930 and The submission made by petitioner on March 5, 1954 was
the Plant Variety Protection Act in 1970, has indicated that bacteria are far from complete since its defect was one of substance and not
excluded from patentability. Patent protection must not be extended merely one of form. Their invention was not completely determinable
further than Congress intended. Congress has not left a legislative therefrom due to the incompleteness of the Specification. It was only
vacuum regarding the type of patent at issue. The Plant Patent Act the time petitioners submitted the additional pages of Specifications
gives patent protection to developers of certain asexually reproduced and Claims to the Patent Office when the application was deemed
plants. The Plant Variety Protection Act extends protection to certain complete. In order to be entitled to the priority right under the Patent
new plant varieties capable of sexual reproduction. Therefore, Law which provided that the local application must be filed within 12
contrary to the majority’s assertion, the patent at issue does not pose months from the date of the foreign application and such application
the problem of “unanticipated inventions.”� In these two Acts, must be complete. The facts show that the application of petitioners
Congress has addressed the general problem of patenting animate was only deemed completed in April 14, 1954 which was outside the
inventions and has chosen carefully limited language granting one-year period from its application in March 16, 1953.
protection to some kinds of discoveries, but specifically excluding
others. These Acts show strong evidence of a congressional limitation Hence, petitioners are no longer entitled to the priority right
that excludes bacteria from patentability. The Acts evidence in the application of patent under the Patent Law.
Congress’s understanding, at least since 1930, that §101 does not
include living organisms. If newly developed living organisms not
naturally occurring had been patentable under §101, the plants PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright
included in the scope of the 1930 and 1970 Acts could have been
patented without new legislation. Therefore, Congress believed that it
had to legislate in order to make agricultural “human-made and Patents
inventions”� patentable, and, because the legislation Congress
enacted is limited, it follows that Congress never intended to make
items outside the scope of the legislation patentable.

Trademark, copyright and patents are different intellectual property


Discussion.
rights that cannot be interchanged with one another. A trademark is
The general rule is that things occurring naturally in the universe may
not be patented. Neither a type of plant occurring naturally nor a any visible sign capable of distinguishing the goods or services of an
natural principal could be patented. The laws of motion could not have
been patented by Newton. This legal principle appears enterprise and shall include a stamped or marked container of goods.

The scope of a copyright is confined to literary and artistic works which


are original intellectual creations in the literary and artistic domain. using the same. Patent has a three-fold purpose: a) to foster and

Patentable inventions refer to any technical solution of a problem in reward invention; b) promotes disclosures of invention and permit

any field of human activity which is new, involves an inventive step and public to use the same upon expiration; c) stringent requirements for

is industrially applicable. patent protection to ensure in the public domain remain there for free

use of the public. Since petitioner was not able to go through such

examination, it cannot exclude others from manufacturing, or selling


FACTS:
such lightboxes. No patent, no protection.

Pearl and Dean is a corporation in the manufacture of advertising

display units also known as light boxes, which were manufactured by


(3) The certificate of registration issued by the Director of Patents gives
Metro Industrial Services. A copyright Registration was obtained in
exclusive right to use its own symbol only to the description specified in
1981. These were marketed in the name of "Poster Ads". They also
the certificate. It cannot prevent others to use the same trademark with
applied for a registration of trademark with the Bureau of Patents in
a different description.
1983, but was only approved in 19988. In 1985, petitioner had n

agreement with respondent Shoemart Inc (SMI) to install these light

boxes in their Makati and Cubao branch, Only the Makati branch was (4) "Poster Ads" is a general term that cannot be associated

able to sigh the agreement. In 1986, the contract was rescinded specifically to Pearl and Dean, thus it cannot be considered to use

unilaterally by SMI, and instead contracted with Metro Industrial such term to be unfair competition against the petitioner.

Services. They installed these lightboxes in different SM city branches,

including Cubao and Makati, with association with North Edsa

Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI

and NEMI to put down their installations of the light boxes, and

payment of compensatory damages worth P20M. Claiming that

respondents failed to comply, they filed a case for infringement of

trademark and copyright, unfair competition and damages. RTC ruled

in favor of petitioner, but CA reversed.

ISSUES:

(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement

(3) Whether there was a trademark infringement

(4) Whether there was unfair competition

RULING: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions

specified in the statute. Therefore, it can only cover the works falling

within the statutory enumeration or description. Since the copyright

was classified under class "O" works, which includes "prints, pictorial

illustrations, advertising copies, labels, tags and box wraps," and does

not include the light box itself. A lightbox, even admitted by the

president of petitioner company, was neither a literary nor an artistic

work but an engineering or marketing invention, thus not included

under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and

cannot legally prevent anyone from manufacturing or commercially

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