ROSARIO C. MAGUAN (Formerly Rosario C. Tan) vs.

CA
L-45101, November 28, 1986
Paras, J.

FACTS:
Rosario Maguan is doing business under the name of SWAN MANUFACTURING, while
respondent Susana Luchan is doing business under the name of SUSANA LUCHAN POWDER
PUFF MANUFACTURING. Maguan informed Luchan that the powder puffs the latter is
manufacturing and selling to enterprises, specifically those in the cosmetics industry, resemble
substantially identical powder puffs of which Maguan is the patent holder under Registration
Certification Nos. Extension UM-109, Extension UM-110, and Utility Model No. 1184. Maguan
contended that such production and sale constitute infringement of the aforementioned patents
and therefore, its immediate discontinuance is demanded, otherwise it will be compelled to take
judicial action.

Luchan replied, stating that her products are different and that the petitioner’s patents are void as
the utility models applied for were not new and patentable, and that the person to whom the
patents were issued was not the true and actual author nor were her rights derived from such
author.

Maguan filed a complaint for damages with injunction and preliminary injunction against
Luchan with the CFI of Rizal, which issued an order granting the preliminary injunction. Its
Motion for Reconsideration being denied, Luchan filed a Petition for Certiorari before the Court
of Appeals, which was affirmed but subsequently set aside.

ISSUES:
(1) whether in an action for infringement the Court has jurisdiction to determine the
invalidity of patents pending consideration in the Patent Office
(2) whether the Court committed grave abuse of discretion in the issuance of a writ of
preliminary injunction

HELD:
(1) YES. When a patent is sought to be enforced, the questions of invention, novelty or
prior use, and each of them, are open to judicial examination. A patentee shall have
the exclusive right to make, use, and sell the patented article or product and the making,
using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent. Any patentee whose rights have been infringed may bring an
action before the proper court and to secure and injunction for the protection of his rights.

(2) YES. The burden of proof to substantiate a charge of infringement is with the plaintiff.
But where the plaintiff introduces the patent in evidence, and the same is in due form,
there is a prima facie presumption of its correctness and validity. The decision of the
Director in granting the patent is presumed to be correct. The burden of going forward
with the evidence then shifts to the defendant to overcome this legal presumption.
In the case at bar, after reviewing the evidence and oral testimonies of five witnesses
presented by the respondent, the CA was satisfied that there is a prima facie showing of a
fair question of invalidity of the petitioner’s patents on the ground of lack of novelty.
The CA pointed out that the said ground appeared not to have been considered by the trail
court on the mistaken notion that such question is within the exclusive jurisdiction of the
Patent Office.

It has been repeatedly held that an invent must possess the essential elements of
novelty, originality, and precedence 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 the 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 validity of petitioner’s patents is in question for want of novelty. The respondent
contends that powder puffs identical in appearance with that covered by the petitioner’s
patents existed and were publicly known and used as early as 1963, long before the
petitioner was issued the patents in issue. As correctly observed by the CA, since
sufficient proof was introduced in evidence showing a fair question of the invalidity of
the patents issued for such models, it is but right that the evidence be looked into,
evaluated, and determined on the merits.