G.R. No. 113388. September 5, 1997
D; and, (c) a brochure distributed by Esso
ANGELITA MANZANO, Petitioner, v. COURT OF
APPEALS, and MELECIA MADOLARIA, as Assignor
to NEW UNITED FOUNDRY MANUFACTURING
CORPORATION, Respondents.
DECISION
BELLOSILLO, J.:
The primary purpose of the patent system is not the
reward of the individual but the advancement of the arts
and sciences. The function of a patent is to add to the
sum of useful knowledge and one of the purposes of the
patent system is to encourage dissemination of
information concerning discoveries and inventions. This
is a matter which is properly within the competence of
the Patent Office the official action of which has the
presumption of correctness and may not be interfered
with in the absence of new evidence carrying thorough
conviction that the Office has erred. Since the Patent
Office is an expert body preeminently qualified to
determine questions of patentability, its findings must be
accepted if they are consistent with the evidence, with
doubts as to patentability resolved in favor of the Patent
Office.1chanroblesvirtuallawlibrary
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. In support of her petition for
cancellation 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.
Gasul or Esso Standard 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 presented in evidence an
alleged model of an LPG burner marked Exh. K and
covered by the Letters Patent of respondent, and
testified that it was given to her in January 1982 by one
of her customers who allegedly acquired it from 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. Also presented by petitioner was a
burner cup of an imported Ransome burner marked Exh
M which was allegedly existing even before the patent
application of private respondent.
Petitioner presented two (2) other witnesses, namely,
her husband Ong Bun Tua and Fidel Francisco. Ong
testified that he worked as a helper in the UNITED
FOUNDRY from 1965 to 1970 where he helped in the
casting of LPG burners with the same form, configuration
and mechanism as that of the model covered by the
Letters Patent issued to private respondent. Francisco
testified that he had been employed with the Manila Gas
Corporation from 1930 to 1941 and from 1952 up to
1969 where he retired as supervisor and that Manila Gas
Corporation imported Ransome burners way back in
1965 which were advertised through brochures to
promote their sale.
Private respondent, on the other hand, presented only
one witness, Rolando Madolaria, who testified, among
others, that he was the General Supervisor of the
UNITED FOUNDRY in the foundry, machine and buffing
section; 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 in the latter part of 1978 respondent
Melecia Madolaria confided in him that complaints were
being brought to her attention concerning the early
models being manufactured; that he was then instructed
by private respondent to cast several experimental
models based on revised sketches and specifications;
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. The records and evidence also do not
support the petitioners contention that Letters Patent No.
UM-4609 was obtained by means of fraud and/or
misrepresentation. No evidence whatsoever was
presented by petitioner to show that the then applicant
Melecia Madolaria withheld with intent to deceive
material facts which, if disclosed, would have resulted in
the refusal by the Philippine Patent Office to issue the
Letters Patent under inquiry.
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 erred (a) in relying on imaginary
differences which in actuality did not exist between the
model of private respondent covered by Letters Patent
No. UM-4609 and the previously known model of Esso
Standard Eastern, Inc., and Manila Gas Corporation,
making such imaginary differences grounded entirely on
speculation, surmises and conjectures; (b) in rendering
judgment based on misapprehension of facts; (c) in
relying mainly on the testimony of private respondents
sole witness Rolando Madolaria; and, (d) in not
canceling Letters Patent No. UM-4609 in the name of
private respondent.
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.
Petitioner argues that the actual demonstration made
during the hearing disclosed the similarities in form,
operation and mechanism and parts between the utility
model of private respondent and those depicted in the
brochures. The findings of the Patent Office and the
Court of Appeals that the brochures of Manila Gas
Corporation and Esso Standard Eastern, Inc., are
undated cannot overcome the fact of their circulation
before private respondent filed her application for utility
model patent. Petitioner thus asks this Court to take
judicial notice of the fact that Esso Standard Eastern,
Inc., disappeared before 1979 and reappeared only
during the Martial Law years as Petrophil Corporation.
Petitioner also emphasizes that the brochures indicated
the telephone number of Manila Gas Corporation as 5-
79-81 which is a five (5) numbered telephone number
existing before 1975 because telephones in Metro
Manila started to have six (6) numbers only after that
year.
Petitioner further contends that the utility model of
private respondent is absolutely similar to the LPG
burner being sold by petitioner in 1975 and 1976, and
also to the Ransome burner depicted in the old
brochures of Manila Gas Corporation and Esso Standard
Eastern, Inc., fabricated by Ransome Torch and Burner
Company of Oakland, California, USA, especially when
considered through actual physical examination,
assembly and disassembly of the models of petitioner
and private respondent. Petitioner faults the Court of
Appeals for disregarding the testimonies of Ong Bun Tua
and Fidel Francisco for their failure to produce
documents on the alleged importation by Manila Gas
Corporation of Ransome burners in 1965 which had the
same configuration, form and mechanism as that of the
private respondents patented model.
Finally, it is argued that the testimony of private
respondents lone witness Rolando Madolaria should not
have been given weight by the Patent Office and the
Court of Appeals because it contained mere after-
thoughts and pretensions.
We cannot sustain petitioner. 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 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.3chanroblesvirtuallawlibrary
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.4 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.5chanroblesvirtuallawlibrary
As found by the Director of Patents, the standard of
evidence sufficient to overcome the presumption of
legality of the issuance of UM-4609 to respondent
Madolaria was not legally met by petitioner in her action
for the cancellation of the patent. Thus the Director of
Patents explained his reasons for the denial of the
petition to cancel private respondents patent -
Scrutiny of Exhs. D and E readily reveals that the utility
model (LPG Burner) is not anticipated. 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
negatived 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. (Kalman v. Kimberly Clark, 218 USPQ 781,
789)
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.
xxxx
Furthermore, and more significantly, the model marked
Exh. K does not show whether or not it was
manufactured and/or cast before the application for the
issuance of patent for the LPG burner was filed by
Melecia Madolaria.
With respect to Exh. L, petitioner claimed it to be her
own model of LPG burner allegedly manufactured
sometime in 1974 or 1975 and sold by her in the course
of her business operation in the name of Besco Metal
Manufacturing, which burner was denominated as
Ransome burner
xxxx
But a careful examination of Exh. L would show that it
does not bear the word Ransome which is the burner
referred to as the product being sold by the Petitioner.
This is not the way to prove that Exh. L anticipates
Letters Patent No. UM-4609 through Exhs. C and D.
Another factor working against the Petitioners claims is
that an examination of Exh. L would disclose that there is
no indication of the time or date it was manufactured.
This Office, thus has no way of determining whether
Exh. L was really manufactured before the filing of the
aforesaid application which matured into Letters Patent
No. UM-4609, subject matter of the cancellation
proceeding.
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.
xxxx
It must likewise be pointed out that Ong Bun Tua
testified on the brochures allegedly of Manila Gas and of
Esso Gasul marked Exhs. E and F and on the alleged
fact that Manila Gas Corporation was importing from the
United States Ransome burners. But the same could not
be given credence since he himself admitted during
cross- examination that he has never been connected
with Manila Gas Corporation. He could not even present
any importation papers relating to the alleged imported
ransome burners. Neither did his
wife.6chanroblesvirtuallawlibrary
The above findings and conclusions of the Director of
Patent were reiterated and affirmed by the Court of
Appeals.7chanroblesvirtuallawlibrary
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 respondents model of gas burner as a
discovery. There is a presumption that the Office has
correctly determined the patentability of the model8 and
such action must not be interfered with in the absence of
competent evidence to the contrary.
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.
The alleged failure of the Director of Patents and the
Court of Appeals to accord evidentiary weight to the
testimonies of the witnesses of petitioner showing
anticipation is not a justification to grant the petition.
Pursuant to the requirement of clear and convincing
evidence to overthrow the presumption of validity of a
patent, it has been held that oral testimony to show
anticipation is open to suspicion and if uncorroborated by
cogent evidence, as what occurred in this case, it may
be held insufficient.9chanroblesvirtuallawlibrary
Finally, petitioner would want this Court to review all over
again the evidence she presented before the Patent
Office. She argues that contrary to the decision of the
Patent Office and the Court of Appeals, the evidence she
presented clearly proves that the patented model of
private respondent is no longer new and, therefore, fraud
attended the acquisition of patent by private respondent.
It has been held that the question on priority of invention
is one of fact. Novelty and utility are likewise questions of
fact. The validity of patent is decided on the basis of
factual inquiries. Whether evidence presented comes
within the scope of prior art is a factual issue to be
resolved by the Patent Office.10 There is question of fact
when the doubt or difference arises as to the truth or
falsehood of alleged facts or when the query necessarily
invites calibration of the whole evidence considering
mainly the credibility of witnesses, existence and
relevance of specific surrounding circumstances, their
relation to each other and to the whole and the
probabilities of the situation.11chanroblesvirtuallawlibrary
Time and again we have held that it is not the function of
the Supreme Court to analyze or weigh all over again the
evidence and credibility of witnesses presented before
the lower tribunal or office. The Supreme Court is not a
trier of facts. Its jurisdiction is limited to reviewing and
revising errors of law imputed to the lower court, its
findings of fact being conclusive and not reviewable by
this Court.
WHEREFORE, the Petition is DENIED. The Decision of
the Court of Appeals affirming that of the Philippine
Patent Office is AFFIRMED. Costs against petitioner.
SO ORDERED.

G.R. No. 174379, August 31, 2016
E.I. DUPONT DE NEMOURS AND CO. (ASSIGNEE OF
INVENTORS CARINI, DUNCIA AND
WONG), Petitioner, v. DIRECTOR EMMA C.
FRANCISCO (IN HER CAPACITY AS DIRECTOR
GENERAL OF THE INTELLECTUAL PROPERTY
OFFICE), DIRECTOR EPIFANIO M. EVASCO (IN HIS
CAPACITY AS THE DHUECTOR OF THE BUREAU OF
PATENTS), AND THERAPHARMA,
INC., Respondents.
DECISION
LEONEN, J.:
A patent is granted to provide rights and protection to the
inventor after an invention is disclosed to the public. It
also seeks to restrain and prevent unauthorized persons
from unjustly profiting from a protected invention.
However, ideas not covered by a patent are free for the
public to use and exploit. Thus, there are procedural
rules on the application and grant of patents established
to protect against any infringement. To balance the
public interests involved, failure to comply with strict
procedural rules will result in the failure to obtain a
patent.
This resolves a Petition for Review on
Certiorari1 assailing the Court of Appeals Amended
Decision2 dated August 30, 2006, which denied the
revival of Philippine Patent Application No. 35526, and
the Court of Appeals Resolution3 dated January 31,
2006, which granted the intervention of Therapharma,
Inc. in the revival proceedings.
E.I. Dupont Nemours and Company (E.I. Dupont
Nemours) is an American corporation organized under
the laws of the State of Delaware.4 It is the assignee of
inventors David John Carini, John Jonas Vytautas
Duncia, and Pancras Chor Bun Wong, all citizens of the
United States of America.5chanrobleslaw
On July 10, 1987, E.I. Dupont Nemours filed Philippine
Patent Application No. 35526 before the Bureau of
Patents, Trademarks, and Technology Transfer.6 The
application was for Angiotensin II Receptor Blocking
Imidazole (losartan), an invention related to the
treatment of hypertension and congestive heart
failure.7 The product was produced and marketed by
Merck, Sharpe, and Dohme Corporation (Merck), E.I.
Dupont Nemours' licensee, under the brand names
Cozaar and Hyzaar.8chanrobleslaw
The patent application was handled by Atty. Nicanor D.
Mapili (Atty. Mapili), a local resident agent who handled
a majority of E.I. Dupont Nemours' patent applications in
the Philippines from 1972 to 1996.9chanrobleslaw
On December 19, 2000, E.I. Dupont Nemours' new
counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma,
and Carbonell,10 sent the Intellectual Property Office11 a
letter requesting that an office action be issued on
Philippine Patent Application No. 35526.12chanrobleslaw
In response, Patent Examiner Precila O. Bulihan of the
Intellectual Property Office sent an office action marked
Paper No. 2 on January 30, 2002,13 which
stated:ChanRoblesVirtualawlibrary
The appointed attorney on record was the late Atty.
Nicanor D. Mapili. The reconstituted documents provided
no documents that will show that the authority to
prosecute the instant application is now transferred to
the present counsel. No official revocation on record is
available.
Therefore, an official revocation of the Power of Attorney
of the former counsel and the appointment of the present
by the applicant is therefore required before further
action can be undertaken.
1. Contrary to what was alleged, the
Chemical Examining Division's (CED)
record will show that as far as the said
division is concerned, it did not fail to
issue the proper and timely action on the
instant application. CED record shows
that the subject application was
assigned to the examiner on June 7,
1988. A month after that was July 19,
1988, the first Office Action was mailed
but was declared abandoned as of
September 20, 1988 for applicant's
failure to respond within the period as
prescribed under Rule 112. Since then,
no other official transactions were
recorded. This record is complemented
by the Examiner-in-charge's own
record . . . .
....
2. It was noted that it took thirteen (13)
long years for the applicant to request
for such Office Action. This is not
expected of the applicant since it is an
acceptable fact that almost all
inventors/applicants wish for the early
disposition for their applications.14
On May 29, 2002, E.I. Dupont Nemours replied to the
office action by submitting a Power of Attorney executed
by Miriam Meconnahey, authorizing Ortega, Castillo, Del
Castillo, Bacorro, Odulio, Calma, and Carbonell to
prosecute and handle its patent applications.15 On the
same day, it also filed a Petition for Revival with Cost of
Philippine Patent Application No. 35526.16chanrobleslaw
In its Petition for Revival, E.I. Dupont Nemours argued
that its former counsel, Atty. Mapili, did not inform it
about the abandonment of the application, and it was not
aware that Atty. Mapili had already died.17 It argued that
it discovered Atty. Mapili's death when its senior-level
patent attorney visited the Philippines in 1996.18 It
argued that it only had actual notice of the abandonment
on January 30, 2002, the date of Paper No. 2.19 Thus, it
argued that its Petition for Revival was properly filed
under Section 113 of the 1962 Revised Rules of Practice
before the Philippines Patent Office in Patent Cases
(1962 Revised Rules of Practice).20chanrobleslaw
On April 18, 2002, the Director of Patents denied the
Petition for Revival for having been filed out of
time.21 The
Resolution22 stated:ChanRoblesVirtualawlibrary
Propriety dictates that the well-settled rule on agency
should be applied to this case to maintain the objectivity
and discipline of the Office. Therefore, for cases such as
the instant case, let the Office maintain its position that
mistakes of the counsel bind the client,' regardless of the
degree of negligence committed by the former counsel.
Although it appears that the former counsel, Arty.
Nicanor Mapili was remiss in his obligations as counsel
for the applicants, the Office cannot revive the
abandoned application because of the limitations
provided in Rule 115. Clearly, the Petition for Revival
was filed beyond the reglementary period. Since the law
and rules do not give the Director of Patents the
discretion to stretch the period for revival, the Office is
constrained to apply Rule 115 to the instant case.
In view of the foregoing considerations, applicants'
petition to revive the subject application is hereby
denied.
SO ORDERED.23chanroblesvirtuallawlibrary
E.I. Dupont Nemours appealed the denial to the Director-
General of the Intellectual Property Office on August 26,
2002.24 In the Decision25cralawred dated October 22,
2003, Director-General Emma C. Francisco denied the
appeal and affirmed the Resolution of the Director of
Patents.
On November 21, 2003, petitioner filed before the Court
of Appeals a Petition for Review seeking to set aside the
Intellectual Property Office's Decision dated October 22,
2003.26chanrobleslaw
On August 31, 2004, the Court of Appeals granted the
Petition for Review.27 In allowing the Petition for Revival,
the Court of Appeals stated:ChanRoblesVirtualawlibrary
After an exhaustive examination of the records of this
case, this Court believes that there is sufficient
justification to relax the application of the above-cited
doctrine in this case, and to afford petitioner some relief
from the gross negligence committed by its former
lawyer, Atty. Nicanor D.
Mapili[.]28chanroblesvirtuallawlibrary
The Office of the Solicitor General, on behalf of the
Intellectual Property Office, moved for reconsideration of
this Decision on September 22, 2004.29chanrobleslaw
In the interim, Therapharma, Inc. moved for leave to
intervene and admit the Attached Motion for
Reconsideration dated October 11, 200430 and argued
that the Court of Appeals' August 31, 2004 Decision
directly affects its "vested" rights to sell its own
product.31chanrobleslaw
Therapharma, Inc. alleged that on January 4, 2003, it
filed before the Bureau of Food and Drugs its own
application for a losartan product "Lifezar," a medication
for hypertension, which the Bureau granted.32 It argued
that it made a search of existing patent applications for
similar products before its application, and that no
existing patent registration was found since E.I. Dupont
Nemours' application for its losartan product was
considered abandoned by the Bureau of Patents,
Trademarks, and Technology Transfer.33 It alleged that
sometime in 2003 to 2004, there was an exchange of
correspondence between Therapharma, Inc. and Merck.
In this exchange, Merck informed Therapharma, Inc. that
it was pursuing a patent on the losartan products in the
Philippines and that it would pursue any legal action
necessary to protect its product.34chanrobleslaw
On January 31, 2006, the Court of Appeals issued the
Resolution35 granting the Motion for Leave to Intervene.
According to the Court of Appeals, Therapharma, Inc.
had an interest in the revival of E.I. Dupont Nemours'
patent application since it was the local competitor for
the losartan product.36 It stated that even if the Petition
for Review was premised on the revival of the patent
application, Therapharma, Inc.'s intervention was not
premature since E.I. Dupont Nemours, through Merck,
already threatened Therapharma, Inc. with legal action if
it continued to market its losartan
product.37chanrobleslaw
E.I. Dupont Nemours moved for reconsideration on
February 22, 2006, assailing the Court of Appeals'
January 31, 2006 Resolution.38chanrobleslaw
On August 30, 2006, the Court of Appeals resolved both
Motions for Reconsideration and rendered the Amended
Decision39 reversing its August 31, 2004 Decision.
The Court of Appeals ruled that the public interest would
be prejudiced by the revival of E.I. Dupont Nemours'
application.40 It found that losartan was used to treat
hypertension, "a chronic ailment afflicting an estimated
12.6 million Filipinos,"41 and noted that the presence of
competition lowered the price for losartan products.42 It
also found that the revival of the application prejudiced
Therapharma, Inc.'s interest, in that it had already
invested more than P20,000,000.00 to develop its own
losartan product and that it acted in good faith when it
marketed its product.43chanrobleslaw
The Court of Appeals likewise found that it erroneously
based its August 31, 2004 Decision on E.I Dupont
Nemours' allegation that it took seven (7) to 13 years for
the Intellectual Property Office to act on a patent
application.44 It stated that while it might have taken that
long to issue the patent, it did not take that long for the
Intellectual Property Office to act on
application.45 Citing Schuartz v. Court of Appeals,46 it
found that both E.I. Dupont Nemours and Arty. Mapili
were inexcusably negligent in prosecuting the patent
application.47chanrobleslaw
On October 19, 2006, petitioner E.I. Dupont Nemours
filed before this Court this Petition for Review on
Certiorari.48 Both respondents Intellectual Property Office
and Therapharma, Inc. were directed to comment on the
comment on the Petition.49 Upon submission of their
respective Comments,50 petitioner was directed to file its
Consolidated Reply.51 Thereafter, the parties were
directed to file their respective
memoranda.52chanrobleslaw
The arguments of the parties present several issues for
this Court's resolution, as follows:
chanRoblesvirtualLawlibraryFirst, whether the Petition
for Review on Certiorari complied with Rule 45, Section
4 of the Rules of Court when petitioner failed to attach
certain documents to support the allegations in the
complaint;
Second, whether petitioner should have filed a petition
for certiorari under Rule 65 of the Rules of Court;
Third, whether the Petition for Review on Certiorari
raises questions of fact;
Fourth, whether the Court of Appeals erred in allowing
the intervention of respondent Therapharma, Inc. in
petitioner's appeal;
Fifth, whether the Court of Appeals erred in denying
petitioner's appeal for the revival of its patent application
on the grounds that (a) petitioner committed inexcusable
negligence in the prosecution of its patent application;
and (b) third-party rights and the public interest would be
prejudiced by the appeal;
Sixth, whether Schuartz applies to this case in that the
negligence of a patent applicant's counsel binds the
applicant; and cralawlawlibrary
Lastly, whether the invention has already become part of
public domain.
I
The question of whether the Court of Appeals may
resolve a motion for intervention is a question that
assails an interlocutory order and requests a review of a
lower court's exercise of discretion. Generally, a petition
for certiorari under Rule 65 of the Rules of Court will lie
to raise this issue in a limited manner. There must be a
clear showing of grave abuse of discretion for the writ of
certiorari to be issued.
However, when the Court of Appeals has already
resolved the question of intervention and the merits of
the case, an appeal through a petition for review on
certiorari under Rule 45 of the Rules of Court is the
proper remedy.
Respondent Therapharma, Inc. argues that the Petition
should be dismissed outright for being the wrong mode
of appeal.53 It argues that petitioner should have filed a
petition for certiorari under Rule 65 since petitioner was
assailing an act done by the Court of Appeals in the
exercise of its discretion.54 It argues that petitions under
Rule 45 are limited to questions of law, and petitioner
raised findings of fact that have already been affirmed by
the Court of Appeals.55chanrobleslaw
Petitioner, on the other hand, argues that Rule 65 is only
available when there is no appeal or any plain, speedy
remedy in the ordinary course of law. Since a petition for
review under Rule 45 was still available to it, it argues
that it correctly availed itself of this remedy.56 Petitioner
also argues that there are exceptions to the general rule
on the conclusiveness of the Court of Appeals' findings
of fact.57 It argues that it was necessary for it to discuss
relevant facts in order for it to show that the Court of
Appeals made a misapprehension of
facts.58chanrobleslaw
The special civil action of certiorari under Rule 65 is
intended to correct errors of jurisdiction.59 Courts lose
competence in relation to an order if it acts in grave
abuse of discretion amounting to lack or excess of
jurisdiction.60 A petition for review under Rule 45, on the
other hand, is a mode of appeal intended to correct
errors of judgment.61 Errors of judgment are errors
committed by a court within its jurisdiction.62 This
includes a review of the conclusions of law63 of the lower
court and, in appropriate cases, evaluation of the
admissibility, weight, and inference from the evidence
presented.
Intervention results in an interlocutory order ancillary to a
principal action.64 Its grant or denial is subject to the
sound discretion of the court.65 Interlocutory orders, or
orders that do not make a final disposition of the merits
of the main controversy or cause of action,66 are
generally not reviewable.67 The only exception is a
limited one, in that when there is no plain, speedy, and
adequate remedy, and where it can be shown that the
court acted without, in excess, or with such grave abuse
of discretion that such action ousts it of jurisdiction.
Judicial economy, or the goal to have cases prosecuted
with the least cost to the parties, 68 requires that
unnecessary or frivolous reviews of orders by the trial
court, which facilitate the resolution of the main merits of
the case, be reviewed together with the main merits of
the case. After all, it would be more efficient for an
appellate court to review a case in its entire context
when the case is finally disposed.
The question of whether intervention is proper is a
question of law. Settled is the distinction between a
question of law and a question of fact. A question of fact
arises when there is doubt as to the truth or falsity of
certain facts.69 A question of law, on the other hand,
arises when "the appeal raises doubt as to the
applicable law on a certain set of facts."70 The test often
used by this Court to determine whether there is a
question of fact or a question of law "is not the
appellation given to such question by the party raising
the same; rather, it is whether the appellate court can
determine the issue raised without reviewing or
evaluating the evidence, in which case, it is a question of
law; otherwise it is a question of fact."71chanrobleslaw
Petitioner raises the question of whether Republic Act
No. 165 allows the Court of Appeals to grant a motion for
intervention. This necessarily requires a determination of
whether Rule 19 of the Rules of Court72 applies in
appeals of cases filed under Republic Act No. 165. The
determination of this question does not require a review
of re-evaluation of the evidence. It requires a
determination of the applicable law.
II
If a petition fails to attach material portions of the record,
it may still be given due course if it falls under certain
exceptions. Although Rule 45, Section 4 of the Rules of
Court requires that the petition "be accompanied by . . .
such material portions of the record as would support the
petition," the failure to do so will not necessarily warrant
the outright dismissal of the complaint.73chanrobleslaw
Respondent Therapharma, Inc. argues that the Petition
should have been outright dismissed since it failed to
attach certain documents to support its factual
allegations and legal arguments, particularly: the
annexes of the Petition for Review it had filed before the
Court of Appeals and the annexes in the Motion for
Leave to Intervene it had filed.74 It argues that petitioner's
failure to attach the documents violates Rule 45, Section
4, which requires the submission of material portions of
the record.75chanrobleslaw
On the other hand, petitioner argues that it was able to
attach the Court of Appeals Decision dated August 31,
2004, the Resolution dated January 31, 2006, and the
Amended Decision dated August 30, 2006, all of which
were sufficient for this Court to give due course to its
Petition.76chanrobleslaw
In Magsino v. De Ocampo,77 this Court applied the
procedural guideposts in Galvez v. Court of Appeals78 in
determining whether the Court of Appeals correctly
dismissed a petition for review under Rule 42 for failure
to attach relevant portions of the record.
Thus:ChanRoblesVirtualawlibrary
In Galvez v. Court of Appeals, a case that involved the
dismissal of a petition for certiorari to assail an
unfavorable ruling brought about by the failure to attach
copies of all pleadings submitted and other material
portions of the record in the trial court (like the complaint,
answer and position paper) as would support the
allegations of the petition, the Court recognized three
guideposts for the CA to consider in determining whether
or not the rules of procedures should be relaxed, as
follows:ChanRoblesVirtualawlibrary
First, not all pleadings and parts of case records are
required to be attached to the petition. Only those which
are relevant and pertinent must accompany it. The test
of relevancy is whether the document in question will
support the material allegations in the petition, whether
said document will make out a prima facie case of grave
abuse of discretion as to convince the court to give due
course to the petition.
Second, even if a document is relevant and pertinent to
the petition, it need not be appended if it is shown that
the contents thereof can also [sic] found in another
document already attached to the petition. Thus, if the
material allegations in a position paper are summarized
in a questioned judgment, it will suffice that only a
certified true copy of the judgment is attached.
Third, a petition lacking an essential pleading or part of
the case record may still be given due course or
reinstated (if earlier dismissed) upon showing that
petitioner later submitted the documents required, or that
it will serve the higher interest of justice that the case be
decided on the merits.79chanroblesvirtuallawlibrary
Although Magsino referred to a petition for review under
Rule 42 before the Court of Appeals, the procedural
guideposts cited in Magsino may apply to this case since
the contents of a pleading under Rule 4280 are
substantially the same as the contents of a pleading
under Rule 45,81 in that both procedural rules require the
submission of "material portions of the record as would
support the allegations of the petition."82chanrobleslaw
In support of its Petition for Review on Certiorari,
petitioner attached the Court of Appeals Decision dated
August 31, 2004,83 the Resolution dated January 31,
2006,84 and the Amended Decision dated August 30,
2006.85 The Court of Appeals Resolution and Amended
Decision quoted extensive portions of its rollo in support
of its rulings.86 These conclusions were sufficient to
convince this Court not to outright dismiss the Petition
but to require respondents to first comment on the
Petition, in satisfaction of the first and second procedural
guideposts in Magsino.
Upon filing of its Consolidated Reply,87 petitioner was
able to attach the following additional documents:
chanRoblesvirtualLawlibrary
(1) Petition for Review filed before the Court of
 Appeals;88
(2) Letters dated July 18, 1995, December 12,
1995, and December 29, 1995;89
(3) Declaration of Ms. Miriam Meconnahey dated
June 25, 2002;90
(4) Spreadsheet of petitioner's patent applications
handled by Atty. Mapili;91
(5) Power of Attorney and Appointment of Resident
Agent dated September 26, 1996;92
(6) Letter dated December 19, 2000 requesting an
Office Action on Patent Application No. 35526;93
(7) Paper No. 2 dated January 30, 2002;94
(8) Petition for Revival dated January 30, 2002 with
attached Power of Attorney and Appointment of
Resident Agent;95
(9) Resolution dated July 24, 2002 by Director of
the Bureau of Patents;96 and
(10) Notice of and Memorandum on Appeal before
the Director-General of the Intellectual Property
Office.97
The third procedural guidepost in Magsino was complied
with upon the submission of these documents.
Petitioner, therefore, has substantially complied with
Rule 45, Section 4 of the Rules of Court.
III
Appeal is not a right but a mere privilege granted by
statute.98 It may only be exercised in accordance with the
law that grants it.
Accordingly, the Court of Appeals is not bound by the
rules of procedure in administrative agencies. The
procedural rules of an administrative agency only govern
proceedings within the agency. Once the Court of
Appeals has given due course to an appeal from a ruling
of an administrative agency, the proceedings before it
are governed by the Rules of Court.
However, petitioner argues that intervention should not
have been allowed on appeal99 since the revival of a
patent application is ex parte and is "strictly a contest
between the examiner and the applicant"100 under
Sections 78101 and 79102 of the 1962 Revised Rules of
Practice.103 It argues that the disallowance of any
intervention is to ensure the confidentiality of the
proceedings under Sections 13 and 14 of the 1962
Revised Rules of Practice.104chanrobleslaw
Respondents argue that the 1962 Revised Rules of
Practice is only applicable before the Intellectual
Property Office.105 In particular, respondent
Therapharma, Inc. argues that the issue before the Court
of Appeals was beyond the realm of patent examination
proceedings since it did not involve the patentability of
petitioner's invention.106 It further argues that its
intervention did not violate the confidentiality of the
patent application proceedings since petitioner was not
required to divulge confidential information regarding its
patent application.107chanrobleslaw
In the 1962 Revised Rules of Practice, final decisions of
the Director of Patents are appealed to this Court and
governed by Republic Act No. 165. In
particular:ChanRoblesVirtualawlibrary
PART X
PETITION AND APPEALS
. . . .
CHAPTER IV
APPEALS TO THE SUPREME COURT FROM FINAL
ORDERS OR DECISIONS OF THE DIRECTOR OF
PATENTS IN EX PARTE AND INTER PARTES
PROCEEDINGS
265. Appeals to the Supreme Court in ex parte and inter
partes proceedings.—Any person who is dissatisfied with
the final decision of the Director of Patents, (affirming
that of a Principal Examiner) denying him a patent for an
invention, industrial design or utility model; any person
who is dissatisfied with any final decision of the Director
of Patents (affirming that of the Executive Examiner) in
any proceeding; and any party who is dissatisfied with
any final decision of the Director of Patents in an inter
partes proceeding, may appeal such final decision to the
Supreme Court within thirty days from the date he
receives a copy of such decision. (Republic Act No. 165,
section 16, as amended by section 3, Republic Act No.
864.)
266. Procedure on appeal to the Supreme Court.—For
the procedure on appeal to the Supreme Court, from the
final decisions of the Director of Patents, see sections 63
to 73, inclusive, of Republic Act No. 165 (patent law).
Particularly instructive is Section 73 of Republic Act No.
165, which provides:ChanRoblesVirtualawlibrary
Section 73. Rules of Court applicable. — In all other
matters not herein provided, the applicable provisions of
the Rules of Court shall govern.
Republic Act No. 165 has since been amended by
Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines (Intellectual
Property Code), in 1997. This is the applicable law with
regard to the revival of petitioner's patent application.
Section 7(7.1)(a) of the Intellectual Property Code
states:ChanRoblesVirtualawlibrary
SECTION 7. The Director General and Deputies Director
General. —
7.1. Functions. — The Director General shall exercise
the following powers and functions:
chanRoblesvirtualLawlibrary. . . .
b. Exercise exclusive appellate jurisdiction over all
decisions rendered by the Director of Legal Affairs, the
Director of Patents, the Director of Trademarks, and the Respondent Therapharma, Inc. was able to show that it
Director of the Documentation, Information and had legal interest to intervene in the appeal of
Technology Transfer Bureau. The decisions of the petitioner's revival of its patent application. While its
Director General in the exercise of his appellate intervention may have been premature as no patent has
jurisdiction in respect of the decisions of the Director of been granted yet, petitioner's own actions gave rise to
Patents, and the Director of Trademarks shall be respondent Therapharma, Inc.'s right to protect its
appealable to the Court of Appeals in accordance with losartan product.
the Rules of Court; and those in respect of the decisions
of the Director of Documentation, Information and Respondent Therapharma, Inc. filed an application for
Technology Transfer Bureau shall be appealable to the product registration before the Bureau of Food and
Secretary of Trade and Industry[.] (Emphasis supplied) Drugs on June 4, 2003 and was granted a Certificate of
Product Registration on January 27, 2004.111 It
Thus, it is the Rules of Court, not the 1962 Revised
conducted patent searches from October 15, 1995 and
Rules of Practice, which governs the Court of Appeals'
found that no patent application for losartan had been
proceedings in appeals from the decisions of the
filed either before the Bureau of Patents, Trademarks,
Director-General of the Intellectual Property Office
and Technology Transfer or before the Intellectual
regarding the revival of patent applications.
Property Office.112chanrobleslaw
Rule 19 of the Rules of Court provides that a court has
As early as December 11, 2003, petitioner through
the discretion to determine whether to give due course to
Merck was already sending communications threatening
an intervention. Rule 19, Section 1
legal action if respondent Therapharma, Inc. continued
states:ChanRoblesVirtualawlibrary
to develop and market losartan in the Philippines. The
RULE 19
letter stated:ChanRoblesVirtualawlibrary
INTERVENTION
Merck is strongly committed to the protection of its
valuable intellectual property rights, including the subject
SECTION 1. Who may intervene. — A person who has a
losartan patents. While fair competition by sale of
legal interest in the matter in litigation, or in the success
pharmaceutical products which are domestically
of either of the parties, or an interest against both, or is
produced legally is always welcomed by Merck and MSD
so situated as to be adversely affected by a distribution
Philippines, Merck will vigorously pursue all available
or other disposition of property in the custody of the court
legal remedies against any unauthorized manufacturer,
or of an officer thereof may, with leave of court, be
distributor or supplier of losartan in countries where its
allowed to intervene in the action. The court shall
patents are in force and where such activity is prohibited
consider whether or not the intervention will unduly delay
by law. Thus, Merck is committed to preventing the
or prejudice the adjudication of the rights of the original
distribution of losartan in the Philippines if it originates
parties, and whether or not the intervenor's rights may
from, or travels through, a country in which Merck holds
be fully protected in a separate proceeding.
patent rights.113 (Emphasis supplied)
The only questions the court need to consider in a
This letter was presented before the Court of Appeals,
motion to intervene are whether the intervenor has
which eventually granted the revival of the patent
standing to intervene, whether the motion will unduly
application in its August 31, 2004 Decision. Petitioner
delay the proceedings or prejudice rights already
had no pending patent application for its losartan product
established, and whether the intervenor's rights may be
when it threatened respondent Therapharma, Inc. with
protected in a separate action.108chanrobleslaw
legal action.114chanrobleslaw
If an administrative agency's procedural rules expressly
Respondent Therapharma, Inc. expressed its willingness
prohibit an intervention by third parties, the prohibition is
to enter into a Non-Use and Confidentiality Contract if
limited only to the proceedings before the administrative
there was a pending patent application.115 After several
agency. Once the matter is brought before the Court of
negotiations on the clauses of the contract,116 the parties
Appeals in a petition for review, any prior prohibition on
were unable to come to an agreement. In its letter dated
intervention does not apply since the only question to be
May 24, 2004,117 respondent Therapharma, Inc.
determined is whether the intervenor has established a
expressed its frustration on petitioner's refusal to give a
right to intervene under the Rules of Court.
clear answer on whether it had a pending patent
application:ChanRoblesVirtualawlibrary
In this case, respondent Therapharma, Inc. filed its
For easy reference, we have reproduced below
Motion for Leave to Intervene109 before the Court of
paragraph 5 of the Confidentiality and Non-Use
Appeals, not before the Intellectual Property Office. In
Agreement ("Confidentiality Agreement"), underscoring
assessing whether to grant the intervention, the Court of
your proposed amendment:ChanRoblesVirtualawlibrary
Appeals considered respondent Therapharma, Inc.'s
"THERAPHARMA agrees that upon receipt of
legal interest in the case and its other options for the
Specifications and Claims of Application No. 35526 or at
protection of its interests.110 This was within the
any time thereafter, before it becomes part of the public
discretion of the Court of Appeals under the Rules of
domain, through no fault of THERAPHARMA, it will not,
Court.
either directly or indirectly, alone, or through, on behalf
of, or in conjunction with any other person or entity,
make use of any information contained therein,
particularly the product covered by its claims and the
equivalents thereof, in any manner whatsoever."
We find your proposed insertion odd. What may be
confidential, and which we agree you have every right to
protect by way of the Confidentiality Agreement, are the
Specifications and Claims in the patent application, not
the product per se. The product has been in the market
for years. Hence, how can it be confidential? Or is the
ambiguity intended to create a legal handle because you
have no cause of action against us should we launch our
own version of the losartan product?
. . . .
Finally, the questions we posed in our previous letters
are plain and simple — Is the Philippine Patent
Application No. 35526 still pending before the IPO, i.e., it
has neither been withdrawn by your licensor nor denied
registration by the IPO for any reason whatsoever?
When did your licensor file said application with the
IPO? These questions are easy to answer, unless there
is an intention to mislead. You are also aware that the
IPO is the only government agency that can grant letters
patent. This is why we find disturbing your statement that
the pendency of the patent application before the IPO is
"not relevant". Hence, unless we receive unequivocal
answers to the questions above, we regret that we
cannot agree to execute the Confidentiality Agreement;
otherwise, we may be acknowledging by contract a right
that you do not have, and never will have, by
law.118 (Emphasis and underscoring in the original)
The threat of legal action against respondent
Therapharma, Inc. was real and imminent. If respondent
Therapharma, Inc. waited until petitioner was granted a
patent application so it could file a petition for
compulsory licensing and petition for cancellation of
patent under Section 240119 and Section 247120 of the
1962 Revised Rules of Practice,121 its continued
marketing of Lifezar would be considered as an
infringement of petitioner's patent.
Even assuming that the Intellectual Property Office
granted the revival of Philippine Patent Application No.
35526 back in 2000, petitioner's claim of absolute
confidentiality in patent proceedings is inaccurate.
In the 1962 Revised Rules of Practice, the Bureau of
Patents, Trademarks, and Technology Transfer
previously required secrecy in pending patent
applications. Section
states:ChanRoblesVirtualawlibrary
13. Pending applications are preserved in secrecy. —
No information will be given to anyone respecting the
filing by any particular person of any application for a
patent, the pendency of any particular case before the
Office, or the subject matter of any particular application,
unless the same is authorized by the applicant in writing,
and unless it shall be necessary, in the opinion of the
Director of Patents for the proper conduct of business
before the Office.
The Intellectual Property Code, however, changed
numerous aspects of the old patent law. The Intellectual
Property Code was enacted not only to amend certain
provisions of existing laws on trademark, patent, and
copyright, but also to honor the country's commitments
under the World Trade Organization - Agreement on
Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement), a treaty that entered force in the
Philippines on January 1, 1995.122chanrobleslaw
The mandatory disclosure requirement in the TRIPS
Agreement123 precipitated the shift from a first-to-invent
system to a first-to-file system. The first-to-file system
required citizens of foreign countries to register their
patents in the Philippines before they can sue for
infringement.124chanrobleslaw
Lawmakers, however, expressed their concern over the
extension of the period of protection for registered
patents.125 Under Section 21126 of Republic Act No. 165,
a patent had a term of 17 years. The Intellectual
Property Code extended the period to 20
years.127chanrobleslaw
During the interpellations before the House of
Representatives, then Representative Neptali Gonzales
II (Gonzales) explained that under the Intellectual
Property Code, the period of protection would have been
shortened because of the publication
requirement:ChanRoblesVirtualawlibrary
MR. TAÑADA. Under the proposed measure, Your
Honor, what is the period of protection that is given to
the holder of the patent registered?
MR. GONZALES. Seventeen years from grant of patent,
Mr. Speaker. Unlike before . . .
MR. TAÑADA. Under the present law, Mr. Speaker.
MR. GONZALES. I mean 17 years from filing, Mr.
Speaker, unlike before which is 20 years from grant.
Okay.
I am sorry, Mr. Speaker. Seventeen years from filing
under the existing law, 20 years from grant under the
proposed measure. It would appear, Mr. Speaker, that
the proposed measure seeks to extend the grant of the
patent.
MR. TAÑADA. But you have made the period of
13
protection longer, Mr. Speaker.
MR. GONZALES. On the contrary, Mr. Speaker, when a
similar question was previously propounded before,
actually Mr. Speaker, it may decrease in fact the period
of protection, Mr. Speaker. Because unlike before 17
years from grant, Mr. Speaker, now 20 years from
application or from filing but actually, Mr. Speaker, it
normally takes three to four years before a patent is
actually granted even under the proposed measure.
Because as you can see[,] publication in the BPTTT
Gazette would even taken place after 18 months from
filing. In other words, the procedure itself is such a
manner that normally takes a period of about three years
to finally grant the patent. So even if 20 years is given
from the time of filing actually in essence it will be the
same, Mr. Speaker, because under the existing law 17
years from grant. But even under our existing law from
the time that a patent application is filed it also takes
about three to four years, Mr. Speaker, to grant the
same.
Now, why from filing, Mr. Speaker? Because the patent
holder applicant is now required to publish in a manner
easily understood by a person trained or with the same
skill as that of a patent holder. And from that time this is
published, this process covered by the patent is already
made available. In fact, from the time that it is published,
any interested person may even examine and go over
the records as filed with the BPTTT and, therefore, this
new technology or new invention is now made available
to persons equipped or possessed with the same skills
as that of the patent holder. And that is the reason why
the patent is — the time of the patent is now tacked from
the time it is filed because as a compromise it is now
mandatory to publish the said patent together with its
description - the description of the process and even
would, at times demand the deposit of sample of the
industrial design, Mr.
Speaker.128chanroblesvirtuallawlibrary
Gonzales further clarified that the publication
requirements of the Intellectual Property Code would
necessarily shorten the period for confidentiality of
patent applications:ChanRoblesVirtualawlibrary
MR. MONFORT. Now, another question is, (another is)
you know, the time from the filing of the date up to
publication which is the period of pendency or
confidentiality, may I know how many years will it take,
that confidentiality period, variability.
MR. GONZALES. Eighteen months, Mr. Speaker.
MR. MONFORT. How many?
MR. GONZALES. Eighteen months.
MR. MONFORT. I do not think it is 18 months.
MR. GONZALES. It is provided for in the law, Mr.
Speaker, because prior to the publication, naturally, the
records become confidential because the essence of a
patent, trademark, or copyright is to give the author or
the inventor exclusive right to work on his own invention.
And that is his invention, and naturally, it is but right that
he should have the exclusive right over his invention.
On the other hand, the law requires that after 18 months,
it should now be published. When it is now published,
naturally, it ceases to be confidential in character
because it is now ready for examination. It is now ready
for possible copying of any interested person because
the application, as we have repeatedly said on the floor,
would require the filing of a description of the invention
that can be carried out by a person similarly trained in
the arts and sciences as that of the patent
holder.129chanroblesvirtuallawlibrary
Thus, the absolute secrecy required by the 1962
Revised Rules of Practice would not be applicable to a
patent application before the Intellectual Property Office.
Section 13 of the 1962 Revised Rules of Practice does
not appear in the Intellectual Property Code,130 in the
Rules and Regulations on Inventions,131 or in the
Revised Implementing Rules and Regulations for
Patents, Utility Models and Industrial Design.132 The
Intellectual Property Code now states that all patent
applications must be published in the Intellectual
Property Office Gazette and that any interested
party may inspect all documents submitted to the
Intellectual Property Office. The patent application is only
confidential before its publication. Sections 44 and 45 of
the Intellectual Property Code
provide:ChanRoblesVirtualawlibrary
SECTION 44. Publication of Patent Application. —
44.1. The patent application shall be published in the
IPO Gazette together with a search document
established by or on behalf of the Office citing any
documents that reflect prior art, after the expiration of
eighteen (18) months from the filing date or priority date.
44.2. After publication of a patent application, any
interested party may inspect the application documents
filed with the Office.
44.3. The Director General, subject to the approval of the
Secretary of Trade and Industry, may prohibit or restrict
the publication of an application, if in his opinion, to do
so would be prejudicial to the national security and
interests of the Republic of the Philippines. (n)
SECTION 45. Confidentiality Before Publication. — A
patent application, which has not yet been published,
and all related documents, shall not be made available
for inspection without the consent of the applicant.
It was inaccurate, therefore, for petitioner to argue that
secrecy in patent applications prevents any intervention
from interested parties. The confidentiality in patent
applications under the Intellectual Property Code is not
absolute since a party may already intervene after the
publication of the application.
IV
An abandoned patent application may only be revived
within four (4) months from the date of abandonment. No
extension of this period is provided by the 1962 Revised
Rules of Practice. Section 113
states:ChanRoblesVirtualawlibrary
113. Revival of abandoned application. — An application
abandoned for failure to prosecute may be revived as a
pending application if it is shown to the satisfaction of the
Director that the delay was unavoidable. An abandoned
application may be revived as a pending application
within four months from the date of abandonment upon Rules and Regulations on Inventions, and Rule 929 of
good cause shown and upon the payment of the the Revised Implementing Rules and Regulations for
required fee of P25. An application not revived within the Patents, Utility Models and Industrial Design. The period
specified period shall be deemed forfeited. of four (4) months from the date of abandonment,
however, remains unchanged. The Intellectual Property
Petitioner argues that it was not negligent in the
Code even provides for a shorter period of three (3)
prosecution of its patent application133 since it was Atty.
months within which to file for
Mapili or his heirs who failed to inform it of crucial
revival:ChanRoblesVirtualawlibrary
developments with regard to its patent application.134 It
SECTION 133. Examination and Publication. —
argues that as a client in a foreign country, it does not
have immediate supervision over its local counsel so it
. . . .
should not be bound by its counsel's negligence. 135 In
any case, it complied with all the requirements for the
133.4. An abandoned application may be revived as a
revival of an abandoned application under Rule 113 of
pending application within three (3) months from the date
the 1962 Revised Rules of Practice.136chanrobleslaw
of abandonment, upon good cause shown and the
payment of the required fee.
Respondents, on the other hand, argue that petitioner
was inexcusably and grossly negligent in the prosecution Rule 930 of the Rules and Regulations on Inventions
of its patent application since it allowed eight (8) years to provides:ChanRoblesVirtualawlibrary
pass before asking for a status update on its Rule 930. Revival of application. - An application
application.137 Respondent Intellectual Property Office deemed withdrawn for failure to prosecute may be
argues that petitioner's inaction for eight (8) years revived as a pending application within a period of four
constitutes actual abandonment.138 It also points out that (4) months from the mailing date of the notice of
from the time petitioner submitted its new Special Power withdrawal if it is shown to the satisfaction of the Director
of Attorney on September 29, 1996, it took them another that the failure was due to fraud, accident, mistake or
four (4) years to request a status update on its excusable negligence.
application.139chanrobleslaw
A petition to revive an application deemed withdrawn
Under Chapter VII, Section 111(a) of the 1962 Revised must be accompanied by (1) a showing of the cause of
Rules of Practice, a patent application is deemed the failure to prosecute, (2) a complete proposed
abandoned if the applicant fails to prosecute the response, and (3) the required fee.
application within four months from the date of
the mailing of the notice of the last action by the Bureau An application not revived in accordance with this rule
of Patents, Trademarks, and Technology Transfer, and shall be deemed forfeited.
not from applicant's actual notice. Section 111 (a) Rule 929 of the Revised Implementing Rules and
states:ChanRoblesVirtualawlibrary Regulations for Patents, Utility Models and Industrial
Chapter VII Design provides:ChanRoblesVirtualawlibrary
TIME FOR RESPONSE BY APPLICANT; Rule 929. Revival of Application. - An application
ABANDONMENT OF APPLICATION deemed withdrawn for failure to prosecute may be
revived as a pending application within a period of four
111. Abandonment for failure to respond within the time (4) months from the mailing date of the notice of
limit. — (a) If an applicant fails to prosecute his withdrawal if it is shown to the satisfaction of the Director
application within four months after the date when the that the failure was due to fraud, accident, mistake, or
last official notice of action by the Office was mailed to excusable negligence.
him, or within such time as may be fixed (rule 112), the
application will become abandoned. A petition to revive an application deemed withdrawn
According to the records of the Bureau of Patents, shall be accompanied by:
Trademarks, and Technology Transfer Chemical
Examining Division, petitioner filed Philippine Patent chanRoblesvirtualLawlibrary(a) A showing of a justifiable
Application No. 35526 on July 10, 1987. It was assigned reason for the failure to prosecute;
to an examiner on June 7, 1988. An Office Action was (b) A complete proposed response; and
mailed to petitioner's agent, Atty. Mapili, on July 19, (c) Full payment of the required fee.
1988. Because petitioner failed to respond within the
allowable period, the application was deemed No revival shall be granted to an application that has
abandoned on September 20, 1988.140 Under Section been previously revived with cost.
113, petitioner had until January 20, 1989 to file for a
revival of the patent application. Its Petition for Revival, An application not revived in accordance with this Rule
however, was filed on May 30, 2002,14113 years after the shall be deemed forfeited.
date of abandonment. Even if the delay was unavoidable, or the failure to
prosecute was due to fraud, accident, mistake, or
Section 113 has since been superseded by Section excusable negligence, or the Petition was accompanied
133.4 of the Intellectual Property Code, Rule 930 of the by a complete proposed response, or all fees were paid,
the Petition would still be denied since these regulations
only provide a four (4)-month period within which to file
for the revival of the application. The rules do not
provide any exception that could extend this four (4)-
month period to 13 years.
Petitioner's patent application, therefore, should not be
revived since it was filed beyond the allowable period.
V take any action when it submitted its Power of Attorney
Even assuming that the four (4)-month period could be
extended, petitioner was inexcusably negligent in the
prosecution of its patent application.
Negligence is inexcusable if its commission could have
been avoided through ordinary diligence and
prudence.142 It is also settled that negligence of counsel
binds the client as this "ensures against the resulting
uncertainty and tentativeness of proceedings if clients
were allowed to merely disown their counsels'
conduct."143chanrobleslaw
Petitioner's resident agent, Atty. Mapili, was undoubtedly
negligent in failing to respond to the Office Action sent by
the Bureau of Patents, Trademarks, and Technology
Transfer on June 19, 1988. Because of his negligence,
petitioner's patent application was declared abandoned.
He was again negligent when he failed to revive the
abandoned application within four (4) months from the
date of abandonment.
Petitioner tries to disown Atty. Mapili's conduct by
arguing that it was not informed of the abandonment of
its patent application or of Atty. Mapili's death. By its
own evidence, however, petitioner requested a status
update from Atty. Mapili only on July 18, 1995, eight (8)
years after the filing of its application.144It alleged that it
only found out about Atty. Mapili's death sometime in
March 1996, as a result of its senior patent attorney's
visit to the Philippines.145 Although it was in petitioner's
discretion as a foreign client to put its complete trust and
confidence on its local resident agent, there was a
correlative duty on its part to be diligent in keeping itself
updated on the progress of its patent applications. Its
failure to be informed of the abandonment of its patent
application was caused by its own lack of prudence.
In Bernardo v. Court of Appeals,146 "[n]o prudent party
will leave the fate of his case entirely to his lawyer . . . . It
is the duty of a party-litigant to be in contact with his
counsel from time to time in order to be informed of the
progress of his case."147chanrobleslaw
Even if Atty. Mapili's death prevented petitioner from
submitting a petition for revival on time, it was clearly
negligent when it subsequently failed to immediately
apprise itself of the status of its patent application.
Upon learning of Atty. Mapili's death, petitioner issued a
Power of Attorney and Appointment of Resident Agent in
favor of Bito, Lozada, Ortega & Castillo on March 25,
1996.148 Despite the immediate action in the substitution
of its resident agent, it only requested a status update of
Philippine Patent Application No. 35526 from the
Intellectual Property Office on December 14, 2000,149 or
four (4) years after it learned of Atty. Mapili's death.
Petitioner attempts to explain that it took them four (4)
years to request a status update because the Bureau of
Patents, Trademarks, and Technology Transfer failed to
and Appointment of Resident Agent in favor of Bito,
Lozada, Ortega & Castillo.150 The Power of Attorney,
however, shows that it was only to inform the Bureau
that all notices relating to its pending patent applications
should be sent to it. Philippine Patent Application No.
35526 was declared abandoned on September 20, 1988.
As far as the Bureau was concerned, it was a forfeited
application that had already been archived. It was not
the Bureau's duty to resurrect previous notices of
forfeited and abandoned applications to be sent to new
resident agents unless a specific status update was
requested. Considering that petitioner only requested a
status update on December 14, 2000, it was only then
that the Intellectual Property Office would start sending
notices to it.
Contrary to the posturing of petitioner, Schuartz is
applicable.
In Schuartz, several foreign inventors seeking to file
patent applications in the Philippines hired the law firm
Siguion Reyna, Montecillo and Ongsiako to process their
applications.151 The Bureau of Patents, Trademarks, and
Technology Transfer mailed the law firm several notices
of abandonment on its patent applications from June
1987 to September 1987. The law firm only found out
about this in December 1987, after it dismissed two (2)
of its employees in charge of handling correspondences
from the Bureau.152 The law firm filed petitions for revival
of its patent applications from March 1988, all of which
were denied by the Director of the Bureau of Patents for
being filed out of time.153 An appeal was subsequently
filed before the Court of Appeals but was dismissed for
being filed beyond the reglementary
period.154chanrobleslaw
This Court found that although the Court of Appeals may
have erred in counting the period for appeal, it could not
grant the Petition. This Court
stated:ChanRoblesVirtualawlibrary
[Petitioners lost sight of the fact that the petition could
not be granted because of laches. Prior to the filing of
the petition for revival of the patent application with the
Bureau of Patents, an unreasonable period of time had
lapsed due to the negligence of petitioners' counsel. By
such inaction, petitioners were deemed to have forfeited
their right to revive their applications for patent.
Facts show that the patent attorneys appointed to follow
up the applications for patent registration had been
negligent in complying with the rules of practice
prescribed by the Bureau of Patents. The firm had been
notified about the abandonment as early as June 1987,
but it was only after December 7, 1987, when their
employees Bangkas and Rosas had been dismissed,
that they came to know about it. This clearly showed that
petitioners' counsel had been remiss in the handling of
their clients' applications.
"A lawyer's fidelity to the cause of his client requires him
to be ever mindful of the responsibilities that should be
expected of him. A lawyer shall not neglect a legal
matter entrusted to him." In the instant case, petitioners'
patent attorneys not only failed to take notice of the
notices of abandonment, but they failed to revive the
application within the four-month period, as provided in
the rules of practice in patent cases. These applications
are deemed forfeited upon the lapse of such
period.155 (Emphasis supplied)
Petitioner attempts to distinguish itself from Schuartz by
arguing that the petitioners in Schuartz had actual notice
of abandonment while petitioner here was only able to
have actual notice when it received Paper No. 2.
The four (4)-month period in Section 111156 of the 1962
Revised Rules of Practice, however, is not counted
from actual notice of abandonment but from mailing of
the notice. Since it appears from the Intellectual Property
Office's records that a notice of abandonment was
mailed to petitioner's resident agent on July 19,
1988,157 the time for taking action is counted from this
period. Petitioner's patent application cannot be revived
simply because the period for revival has already lapsed
and no extension of this period is provided for by the
1962 Revised Rules of Practice.
VI
The right of priority given to a patent applicant is only
relevant when there are two or more conflicting patent
applications on the same invention. Because a right of
priority does not automatically grant letters patent to an
applicant, possession of a right of priority does not
confer any property rights on the applicant in the
absence of an actual patent.
Petitioner argues that its patent application was filed on
July 10, 1987, within 12 months from the prior filing of a
U.S. patent application on July 11, 1986.158 It argues that
it is protected from becoming part of the public domain
because of convention priority under the Paris
Convention for the Protection of Industrial Property and
Section 9 of Republic Act No. 165.159chanrobleslaw
Respondent Therapharma, Inc., on the other hand,
argues that a mere patent application does not vest any
right in the applicant before the issuance of the
patent.160 It argues that the "priority date" argued by
petitioner is only relevant in determining who has a
better right to the patent among the other applicants who
subsequently apply for the same
invention.161chanrobleslaw
Under Section 31 of the Intellectual Property Code, a
right of priority is given to any patent applicant who has
previously applied for a patent in a country that grants
the same privilege to Filipinos. Section 31
states:ChanRoblesVirtualawlibrary
SECTION 31. Right of Priority. — An application for
patent filed by any person who has previously applied for
the same invention in another country which by treaty,
convention, or law affords similar privileges to Filipino
citizens, shall be considered as filed as of the date of
filing the foreign application: Provided, That:
chanRoblesvirtualLawlibrarya. the local application
expressly claims priority;
b. it is filed within twelve (12) months from the date the
earliest foreign application was filed;
and cralawlawlibrary
c. a certified copy of the foreign application together with
an English translation is filed within six (6) months from
the date of filing in the Philippines.
A patent applicant with the right of priority is given
preference in the grant of a patent when there are two or
more applicants for the same invention. Section 29 of the
Intellectual Property Code
provides:ChanRoblesVirtualawlibrary
SECTION 29. First to File Rule. — If two (2) or more
persons have made the invention separately and
independently of each other, the right to the patent shall
belong to the person who filed an application for such
invention, or where two or more applications are filed for
the same invention, to the applicant who has the earliest
filing date or, the earliest priority date.
Since both the United States162 and the Philippines163 are
signatories to the Paris Convention for the Protection of
Industrial Property, an applicant who has filed a patent
application in the United States may have a right of
priority over the same invention in a patent application in
the Philippines.164 However, this right of priority does not
immediately entitle a patent applicant the grant of a
patent. A right of priority is not equivalent to a patent.
Otherwise, a patent holder of any member-state of the
Paris Convention need not apply for patents in other
countries where it wishes to exercise its patent.
It was, therefore, inaccurate for petitioner to argue that
its prior patent application in the United States removed
the invention from the public domain in the Philippines.
This argument is only relevant if respondent
Therapharma, Inc. had a conflicting patent application
with the Intellectual Property Office. A right of priority has
no bearing in a case for revival of an abandoned patent
application.
VII
The grant of a patent is to provide protection to any
inventor from any patent infringement.165 Once an
invention is disclosed to the public, only the patent
holder has the exclusive right to manufacture, utilize, and
market the invention.166 In Creser Precision Systems v.
Court of Appeals:167
Under American jurisprudence, an inventor has no
common-law right to a monopoly of his invention. He has
the right to make, use and vend his own invention, but if
he voluntarily discloses it, such as by offering it for sale,
the world is free to copy and use it with impunity. A
patent, however, gives the inventor the right to exclude
all others. As a patentee, he has the exclusive right of
making, using or selling the
invention.168chanroblesvirtuallawlibrary
Under the Intellectual Property Code, a patent holder
has the right to "to restrain, prohibit and prevent"169 any
unauthorized person or entity from manufacturing,
selling, or importing any product derived from the patent.
However, after a patent is granted and published in the
Intellectual Property Office Gazette,170 any interested
third party "may inspect the complete description, claims,
and drawings of the patent."171chanrobleslaw
The grant of a patent provides protection to the patent
holder from the indiscriminate use of the invention.
However, its mandatory publication also has the
correlative effect of bringing new ideas into the public
consciousness. After the publication of the patent, any
person may examine the invention and develop it into
something further than what the original patent holder
may have envisioned. After the lapse of 20 years,172 the
invention becomes part of the public domain and is free
for the public to use. In Pearl and Dean v. Shoemart,
Inc.:173
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 designs
and technologies into the public domain through
disclosure. Ideas, once disclosed to the public without
the protection of a valid patent, are subject to
appropriation without significant restraint.
On one side of the coin is the public which will benefit
from new ideas; on the other are the inventors who must
be protected. As held in Bauer & Cie vs. O'Donnell, "The
act secured to the inventor the exclusive right to make
use, and vend the thing patented, and consequently to
prevent others from exercising like privileges without the
consent of the patentee. It was passed for the purpose of
encouraging useful invention and promoting new and
useful inventions by the protection and stimulation new
and useful inventions by the protection and stimulation
given to inventive genius, and was intended to secure to
the public, after the lapse of the exclusive privileges
granted the benefit of such inventions and
improvements."
The law attempts to strike an ideal balance between the
two interests:ChanRoblesVirtualawlibrary
"(The p)atent system thus embodies a carefully crafted
bargain for encouraging the creation and disclosure of
new useful and non-obvious advances in technology and
design, in return for the exclusive right to practice the
invention for a number of years. The inventor may keep
his invention secret and reap its fruits indefinitely. In
consideration of its disclosure and the consequent
benefit to the community, the patent is granted. An
exclusive enjoyment is guaranteed him for 17 years, but
upon the expiration of that period, the knowledge of the
invention inures to the people, who are thus enabled to
practice it and profit by its use."
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 therefor the free use
of the public."
It is only after an exhaustive examination by the patent
office that a patent is issued. Such an in-depth
investigation is required because "in rewarding a useful
invention, the rights and welfare of the community must
be fairly dealt with and effectively guarded. To that end,
the prerequisites to obtaining a patent are strictly
observed and when a patent is issued, the limitations on
its exercise are equally strictly enforced. To begin with, a
genuine invention or discovery must be demonstrated
lest in the constant demand for new appliances, the
heavy hand of tribute be laid on each slight technological
advance in art."174 (Emphasis supplied)
In addition, a patent holder of inventions relating to food
or medicine does not enjoy absolute monopoly over the
patent. Both Republic Act No. 165 and the Intellectual
Property Code provide for compulsory licensing.
Compulsory licensing is defined in the Intellectual
Property Code as the "grant a license to exploit a
patented invention, even without the agreement of the
patent owner."175chanrobleslaw
Under Republic Act No. 165, a compulsory license may
be granted to any applicant three (3) years after the
grant of a patent if the invention relates to food or
medicine necessary for public health or
safety.176 In Smith Kline & French Laboratories, Ltd. vs.
Court of Appeals:177
Section 34 of R.A. No. 165, even if the Act was enacted
prior to the Philippines' adhesion to the [Paris]
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. 165.178chanroblesvirtuallawlibrary
The patent holder's proprietary right over the patent only
lasts for three (3) years from the grant of the patent, after
which any person may be allowed to manufacture, use,
or sell the invention subject to the payment of
royalties:ChanRoblesVirtualawlibrary
The right to exclude others from the manufacturing, PRICE PRICE
using, or vending an invention relating to food or  As of  Within one
medicine should be conditioned to allowing any person Lifezar's month from
to manufacture, use, or vend the same after a period of first entry Lifezar's
three years from the date of the grant of the letters into the entry or by
patent. After all, the patentee is not entirely deprived of market on July 4, 2004
any proprietary right. In fact, he has been given the June 4,
period of three years of complete monopoly over the 2004
patent. Compulsory licensing of a patent on food or
medicine without regard to the other conditions imposed 50 mg - 50mg -
LIFEZAR Therapharma
in Section 34 is not an undue deprivation of proprietary P20.20 P20.20
interests over a patent right because the law sees to it
that even after three years of complete monopoly 50mg - 50mg -
something is awarded to the inventor in the form of a P39.50 P39.50
COZAAR Merck
bilateral and workable licensing agreement and a  100mg -  100 -
reasonable royalty to be agreed upon by the parties and P55.00 P44.00
in default of such agreement, the Director of Patent may Respondent Therapharma, Inc. also presented figures
fix the terms and conditions of the showing that there was a 44% increase in the number of
license.179chanroblesvirtuallawlibrary losartan units sold within five (5) months of its entry into
the market.190 More Filipinos are able to purchase
A patent is a monopoly granted only for specific
losartan products when there are two (2) different
purposes and objectives. Thus, its procedures must be
players providing competitive prices in the market.
complied with to attain its social objective. Any request
for leniency in its procedures should be taken in this
Lifezar, and another of respondent Therapharma, Inc.'s
context. Petitioner, however, has failed to convince this
products, Combizar, have also been recommended as
court that the revival of its patent application would have
cheaper alternative losartan medication, since they were
a significant impact on the pharmaceutical industry.
priced "50 percent less than foreign
brands."191chanrobleslaw
Hypertension, or high blood pressure, is considered a
"major risk factor for cardiovascular disease"180 such as
Public interest will be prejudiced if, despite petitioner's
"heart disease, stroke, kidney failure and
inexcusable negligence, its Petition for Revival is
blindness."181 In a study conducted by the World Health
granted. Even without a pending patent application and
Organization, 25% of adults aged 21 years and older in
the absence of any exception to extend the period for
the Philippines suffer from high blood
revival, petitioner was already threatening to pursue
pressure.182 According to the Department of Health,
legal action against respondent Therapharma, Inc. if it
heart disease remains the leading cause of mortality in
continued to develop and market its losartan product,
the Philippines.183 Angiotensin II Receptor Blocking
Lifezar.192 Once petitioner is granted a patent for its
Imidazole or "losartan" is one of the medications used for
losartan products, Cozaar and Hyzaar, the loss of
the treatment of hypertension.184chanrobleslaw
competition in the market for losartan products may
result in higher prices. For the protection of public
In a study conducted by the Philippine Institute for
interest, Philippine Patent Application No. 35526 should
Development Studies, "affordability of drugs remains a
be considered a forfeited patent application.
serious problem"185 in the Philippines. It found that
because of the cost of drugs, accessibility to drugs
WHEREFORE, the Petition is DENIED. The Resolution
become prohibitive for the lowest-earning households
dated January 31, 2006 and the Amended Decision
and are "even more prohibitive for the unemployed and
dated August 30, 2006 of the Court of Appeals
indigent."186 Several measures have been enacted by the
are AFFIRMED.
government to address the high costs of medicine,
among them, parallel drug importation187 and the
passage of Republic Act No. 9502, otherwise known as
the Universally Accessible Cheaper and Quality
Medicines Act of 2008.188 Figures submitted by
respondent Therapharma, Inc., however, also show that
the presence of competition in the local pharmaceutical
market may ensure the public access to cheaper
medicines.

According to respondent Therapharma, Inc., the retail

price of petitioner's losartan product, Cozaar, decreased
within one (1) month of respondent Therapharma, Inc.'s
entry into the market:189
BRAND TRADER RETAIL RETAIL

G.R. L-45101 November 28, 1986
ROSARIO C. MAGUAN (formerly ROSARIO C.
TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and
SUSANA LUCHAN, respondents.
PARAS, J.:p
Submitted on December 9, 1977 for Our decision is this
petition for review on certiorari of the two Resolutions of
the Court of Appeals, the first dated July 6, 1976, setting
aside its Decision of February 16, 1976 in CA-G.R. No.
SP-04706, titled "SUSANA LUCHAN v. Hon.
HONRADO, et al."  wherein it ruled for the dismissal of
the petition for lack of merit and at the same time
nullifying the writ of preliminary injunction it had
previously issued; and the second, dated November 4,
1976, denying the motion for reconsideration of the first
resolution above-mentioned.
Petitioner is doing business under the firm name and
style of SWAN MANUFACTURING" while private
respondent is likewise doing business under the firm
name and style of "SUSANA LUCHAN POWDER PUFF
MANUFACTURING."
It is undisputed that petitioner is a patent holder of
powder puff namely:
1. UM-423 (extended
and/or renewed under
Extension No. UM-109
for a period of 5 years
from October 6, 1971)
2. UM-450 (extended
and/or renewed under
Extension No. UM110
for a period of 5 years
from January 26, 1972)
3. UM 1184, for a period
of 5years fromApril 5,
1974.(Petition, Rollo,
pp. 6-7).
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86),
petitioner informed private respondent 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 under Registration
Certification Nos. Extension UM-109, Extension UM-110
and Utility Model No. 1184; petitioner explained such
production and sale constitute infringement of said
patents and therefore its immediate discontinuance is
demanded, otherwise it will be compelled to take judicial
action. (Rollo, pp. 7-8).
Private respondent replied stating that her products are
different and countered that petitioner's patents are void
because the utility models applied for were not new and
patentable and the person to whom the patents were
issued was not the true and actual author nor were her
rights derived from such author. (Taken from allegations
in the Answer, par. 4, Rollo, p. 93). And on July 25,
1974, private respondent assailed the validity of the
patents involved and filed with the Philippine Patent
Office petitions for cancellation of (1) Utility Model Letter
Patent Extension No. UM-109 (Inter Partes Case No.
838, Susana Luchan v. Rosario C. Tan), (2) Utility Model
Letters Patent No. UM-1184 (Inter Partes Case No. 839,
Susana Luchan v. Rosario C. Tan), (3) Utility Model
Letters Patent Extension No. UM-110 (Inter Partes Case
No. 840, Susana Luchan v. Rosario C. Tan. (Taken from
allegations in the Answer, par. 10, Rollo, pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a
complaint for damages with injunction and preliminary
injunction against private respondent with the then Court
of First Instance of Rizal, Pasig Branch, docketed as
Civil Case No. 19908, for infringing the aforesaid letters
patent, and prayed, among others, that a writ of
preliminary injunction be immediately issued (Complaint,
Rollo, p. 90).
In her answer, 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) at the time of filing of
application for the
patents involved, 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 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; and with
respect to UM1184; her
claim in her application
of a unitary powder puff,
was but an limitation of
a product well known to
the cosmetics industry
since years previous to
her firing of application,
and which belonged to
no one except to the
general public; (Answer,
Rollo, pp. 93-94).
On September 18, 1974, the trial court issued an Order
(Annex "K", Rollo, p. 125) granting the preliminary
injunction prayed for by petitioner. Consequently, the
corresponding writ was subsequently issued (Annex "K-
1", Rollo, p. 131) enjoining the herein private respondent
(then defendant) and all other persons employed by her,
her agents, servants and employees 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
of the Philippine Patent Office Utility Model Letters
Patent Nos. 423 (Extension No. UM-109), No. 450
(Extension No. UM-110), and Utility Model No. 1184 or
from infringement upon or violating said letters patent in
any way whatsoever (Annex " K-1 ", Rollo, p. 131).
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 (Motion for Reconsideration,
Rollo, p. 132).
In an Order dated September 11, 1975, the trial court
denied private respondent's motion for reconsideration
(Annex "N", Rollo, p. 142).
In challenging these Orders private respondent filed a
petition for certiorari with the respondent court on
September 29, 1975 (Annex "D", Rollo, pp. 148-171)
reiterating among other things the invalidity of
petitioner's patents and prayed that the trial court be
restrained from enforcing or continuing to enforce the
following:
(1) Order dated
September 18, 1974,
granting the preliminary
injunction;
(2) Writ of preliminary
injunction dated
September 18, 1974;
and
(3) Order dated
September 11, 1974
denying petitioner's
motion petition for
reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction
was issued by the respondent Court of Appeals as
follows:
 NOW, THEREFORE, you, respondents,
and/or any person/persons acting on
your stead, are hereby ENJOINED to
RESTRAIN from enforcing or continuing
to enforce, the proceedings complained
of in the petition to wit: 1) Order dated
September 18, 1974, granting the
preliminary injunction; 2) Writ of
Preliminary Injunction dated September
18, 1974; and Order dated September
11, 1975, denying petitioner's motion for
reconsideration, all issued in connection
with Civil Case No. 19908, UNTIL
FURTHER ORDERS FROM THIS
COURT. (Annex "P", Rollo, p. 1.73)
On February 16, 1976, respondent court promulgated a
decision the dispositive portion of which reads:
WHEREFORE, finding no merit in the
herein petition, the same is hereby
dismissed and the preliminary injunction
previously issued by this Court is hereby
set aside, with costs.
SO ORDERED. (CA Decision, Rollo, p.
189).
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 quo has yet to
decide the case on the merits (Ibid., p. 186).
Feeling aggrieved, private respondent moved to
reconsider the afore-mentioned Decision based on the
following grounds:
I challenged orders, Exhibit H and H-1
THAT THIS
HONORABLE COURT
ERRED IN NOT
APPRECIATING THE
EXISTENCE OF A Decision now being set aside is hereby
FAIR QUESTION OF
INVALIDITY OF
PRIVATE
RESPONDENT'S
PATENTS.
II
THAT THIS
HONORABLE COURT
ERRED IN NOT
REJECTING THE
THEORY OF
RESPONDENT JUDGE
THAT HE HAS NO
JURISDICTION TO
INVALIDATE THE
PATENTS UPON
GROUND OF LACK OF
NOVELTY OF THE
PRODUCTS
PATENTED. (Motion for
Reconsideration, Rollo,
p. 190).
Reviewing on reconsideration, respondent court gave
weight to private respondent's allegation that the latter's
products are not identical or even only substantially
identical to the products covered by petitioner's patents.
Said court noticed that contrary to the lower courts
position that the court a quo had no jurisdiction to
determine the question of invalidity of the patents,
Section 45 and 46 of the Patent Law allow the court to
make a finding on the validity or invalidity of patents and
in the event there exists a fair question of its invalidity,
the situation calls for a denial of the writ of preliminary
injunction pending the evaluation of the evidence
presented (Rollo, pp. 218-226). Thus, finding the lower
court's position to have been opposed to Patent Law,
respondent court considered it a grave abuse of
discretion when the court a quo issued the writ being
questioned without looking into the defenses alleged by
herein private respondent. Further, it considered the
remedy of appeal, under the circumstances, to be
inadequate.
Thus, on July 6, 1976, respondent court made a
complete turnabout from its original decision and
promulgated a Resolution, the dispositive portion of
which reads:
WHEREFORE, our decision is hereby
set aside. The writ of certiorari is
ordered issued. Accordingly, the
and the order denying the motion for
reconsideration (Annex "K", Petition),
are hereby set aside. The writ of
preliminary injunction previously ordered
by this Court and ordered lifted by the
reinstated and made permanent.
Without pronouncement as to costs.
SO ORDERED. (CA Resolution, Rollo,
p. 226).
In a Resolution dated November 4, 1976, respondent
court, not persuaded by the grounds embodied in the
motion for reconsideration filed by herein petitioner
(Annex "V ", Rollo, p. 227), denied the same for lack of
merit, thereby maintaining the same stand it took in its
July 6, 1976 Resolution (Rollo, p. 281). Hence, this
petition.
On December 3, 1976, without giving due course to the
petition, this Court required respondent to file her
Comment (Rollo, p. 290) which was filed on December
16, 1976 (Rollo, pp. 291-316). Thereafter, petitioner filed
her Reply (Rollo, p. 323) and on May 30, 1977, the
petition was given due course (Rollo, p. 345). Petitioner
filed her brief on July 14, 1977 (Rollo, p. 351) while
private respondent filed her brief on August 25, 1977
(Rollo, p. 359). Thereafter, petitioner having failed to file
reply brief, the Court resolved to declare the case
submitted for decision on December 9, 1977 (Rollo, p.
359).
The assignment of errors raised by the petitioner in this
case (Rollo, pp. 15-16) may be reduced to three main
issues:
(1) Whether or not in an
action for infringement
the Court a quo  had
jurisdiction to determine
the invalidity of the
patents at issue which
invalidity was still
pending consideration
in the patent office.
(2) Whether or not the
Court a quo committed
grave abuse of
discretion in the
issuance of a writ of
preliminary injunction.
(3) Whether or not
certiorari is the proper
remedy.
The first issue has been laid to rest in a number of cases
where the Court ruled that "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."
(Vargas v. F.M. Yaptico & Co. 40 Phil. 199 [1919];
Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and
Gohn v. Kosuyana 59 Phil. 207 [1933]).
Under the present Patent Law, there is even less reason
to doubt that the trial court has jurisdiction to declare the
patents in question invalid. 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 (Sec. 37, R.A.
165). Any patentee whose rights have been infringed
upon may bring an action before the proper CFI now
(RTC) and to secure an injunction for the protection of
his rights (Sec. 42, R.A. 165). Defenses in an action for
infringement are provided for in Section 45 of the same
law which in fact were availed of by private respondent in
this case. Then, as correctly stated by respondent Court
of Appeals, this conclusion is reinforced by Sec. 46 of
the same law which provides that if the Court shall find
the patent or any claim thereof invalid, the Director shall
on certification of the final judgment ... issue an order
cancelling the patent or the claims found invalid and
shall publish a notice thereof in the Official Gazette."
Upon such certification, it is ministerial on the part of the
patent office to execute the judgment. (Rollo, pp. 221-
222).
II.
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 created a prima facie presumption of
its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the
patent is presumed to be correct. The burden of going
forward with the evidence (burden of evidence) then
shifts to the defendant to overcome by competent
evidence this legal presumption.
The question then in the instant case is whether or not
the evidence introduced by private respondent herein is
sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64
exhibits and oral testimonies of five witnesses presented
by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as
well as those presented by the petitioner, respondent
Court of Appeals was satisfied that there is a prima
facie  showing of a fair question of invalidity of
petitioner's patents on the ground of lack of novelty. As
pointed out by said appellate court said evidence
appeared not to have been considered at all by the
court a quo for alleged lack of jurisdiction, on the
mistaken notion that such question in within the
exclusive jurisdiction of the patent office.
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 (now for
more than one year only under Sec. 9 of the Patent Law)
before the date of his application for his patent, will be
fatal to, the validity of the patent when issued. (Frank, et
al. v. Kosuyama Vargas v. F.M. Yaptico & Co. and
Vargas v. Chua, et al., supra).
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.
Thus, more specifically, under American Law from which
our Patent Law was derived (Vargas v. F.M. Yaptico &
Co. supra) 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 (8 Deller's Walker on Patents p. 406). 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. (Ibid., p. 402)
In the same manner, under our jurisprudence, as a
general rule because of the injurious consequences a
writ of injunction may bring, the right to the relief
demanded must be clear and unmistakable. (Sangki v.
Comelec, 21 SCRA 1392; December 26, 1967) and the
dissolution of the writ is proper where applicant has
doubtful title to the disputed property. (Ramos v. C.A., 95
SCRA 359).
III.
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. (List of
Exhibits, Rollo, pp. 194-199). 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 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
not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless
issued the writ of preliminary injunction which under the
circumstances should be denied.
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. (Buayan Cattle
Co., Inc. v. Quintillan, 128 SCRA 276).
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. (Rollo, p. 288). 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."
Private respondent maintains the position that the
resolutions sought to be appealed from had long become
final and executory for failure of Hon. Reynaldo P.
Honrado, the trial court judge, to appeal by certiorari
from the resolutions of respondent Court of Appeals.
(Rollo, pp. 291-292).
Such contention is untenable.
There is no dispute that petitioner has seasonably
petitioned. On the other hand, it is elementary that the
trial judge is a mere nominal party as clearly provided in
Section 5, Rule 65 of the Revised Rules of Court where
it shall be the duty of such person or persons interested
in sustaining the proceedings in court, "to appear and
defend, both in his or their own behalf and in behalf of
the court or judge affected by the proceedings."
Relative thereto "the judge whose order is under attack
is merely a nominal party; wherefore, a judge in his
official capacity should not be made to appear as a party
seeking reversal of a decision that is unfavorable to the
action taken by him." (Hon. Alcasid v. Samson, 102 Phil.
735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v.
Argel, 70 SCRA 378).
As to petitioner's claim of prescription, private
respondent's contention that such refers to the filing of
petitions for cancellation in the Patent Office under Sec.
28 of the Patent Law and not to a defense against an
action for infringement under Sec. 45 thereof which may
be raised anytime, is evident under aforesaid law.
PREMISES CONSIDERED, the assailed resolutions of
the Court of Appeals are hereby AFFIRMED.
SO ORDERED.
G.R. No. 14101           September 24, 1919
ANGEL VARGAS, plaintiff-appellant,
vs.
F. M. YAPTICO & CO. (Ltd.), defendant-appellee.
Charles C. Cohn for appellants . decision, rendered judgment in favor of the defendant
John Bordman for appellee.
MALCOLM, J.:
Rude wooden implements for tilling the soil have been in
use in the Philippines, possibly not since the Israelites
"went down to sharpen every man his share and his
coulter," but certainly for many years. Iron plows called
"Urquijo" and "Pony" have latterly been the vogue.
Angel Vargas, a farmer acquainted with local conditions
and alive to the commercial possibilities, took it upon
himself to produce, with the native plow as the model, an
improved, adjustable plow. On July 22, 1910, he made
application for a United States patent to cover his so-
called invention. On March 12, 1912, letters patent were
issued by the United States Patent Office in favor of
Vargas .On April 24, 1912, a certified copy of the patent
was filed in the Division of Patents, Copyrights, and
Trademarks of the Executive Bureau, Government of the
Philippine Islands. The patent and its registry was also
published in the newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture of
these plows in the city of Iloilo, Philippine Islands. On the
plows there was first stamped the words "Patent Applied
For," later after the patent had been granted, changed to
"Patented Mar. 12, 1912." Ninety per cent of the plows in
use in the Visayas (Iloilo and vicinity) are said to be
Vargas plows.
During this same period, the firm of F. M. Yaptico & Co.
(Ltd.), was engaged in the foundry business in the City of
Iloilo. It openly held itself out as a manufacturer of plow
parts. It has in fact produced points, shares, shoes, and
heel pieces in a considerable amount adapted to replace
worn-out parts of the Vargas plow.
Such was the existing situation when, in the early part of
1918, the owner of the patent, and thus the proper party
to institute judicial proceedings, began action in the
Court of First Instance of Iloilo to enjoin the alleged
infringement of U.S. Patent No. 1020232 by the
defendant F. M Yaptico & Co. (Ltd.), and to recover the
damages suffered by reason of this infringement. The
court issued the preliminary injunction as prayed for. The
defendant, in addition to a general denial, alleged, as
special defenses, that the patent lacked novelty or
invention, that there was no priority of ideas or device in
the principle and construction of the plow, and that the
plow, whose manufacture it was sought to have enjoined
by the plaintiff, had already been in public use for more
than two years before the application of the plaintiff for
his patent. The parties subsequently entered into a
stipulation that the court should first resolve the question
of whether or not there had been an infraction of the
patent, reserving the resultant question of damages for
later decision. After the taking of evidence, including the
presentation of exhibits, the trial judge, the Honorable
Antonio Villareal, in a very exhaustive and learned
and against the plaintiff, declaring null and without effect
the patent in question and dismissing the suit with costs
against the plaintiff .The preliminary injunction
theretofore issued was dissolved.
From this judgment the plaintiff has appealed, specifying
five errors. The principal assignment No. 1 is, that the
trial court erred in finding that the patented invention of
the plaintiff is lacking in novelty and invention.
Defendant, in reply, relies on three propositions, namely:
(1) The judgment of the trial court in finding the patent
granted plaintiff void for lack of novelty and invention
should be affirmed; (2) The patent granted plaintiff is
void from the public use of his plow for over two years
prior to his application for a patent, and (3) If the patent
is valid, there has been no contributory infringement by
defendant.
Before resolving these rival contentions, we should have
before us the relevant law. Act No. 2235 of the Philippine
Legislature, enacted on February 10, 1913, in effect
makes the United States Patent Laws applicable in the
Philippine Islands. It provides that "owners of patents,
including design patents, which have been issued or
may hereafter be issued, duly registered in the United
States Patent Office under the laws of the United States
relating to the grant of patents, shall receive in the
Philippine Islands the protection accorded them in the
United States under said laws." (Sec. 1.) Turning to the
United States Patent Laws, we find the Act of Congress
of March 3, 1897, amendatory of section 4886 of the
United States Revised Statutes, reading as follows:
Any person who has invented or discovered any
new and useful art, machine, manufacture, or
composition of matter, or any new an useful
improvements thereof, not known or used by
others in this country, before his invention or
discovery thereof, and not patented or described
in any printed publication in this or any foreign
country, before his invention or discovery
thereof, or more than two years prior to his
application, and not in public use or on sale in
this country for more than two years prior to his
application, unless the same is proved to have
been abandoned, may upon payment of the fees
required by law, and other due proceeding had,
obtain a patent therefor. (29 Stat. L., 692, 7
Fed .Stat. Ann. [2d Ed.], p. 23.)
When a patent is sought to be enforced, "the question of
invention, novelty, or prior use, and each of them, are
open to judicial examination." The burden of proof to
substantiate a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the patent in
evidence, if it is in due form, it affords a prima
facie presumption of its correctness and validity. The
decision of the Commissioner of Patents in granting the
patent is always presumed to be correct. The burden
then shifts to the defendant to overcome by competent
evidence this legal presumption .With all due respect,
therefore, for the critical and expert examination of the
invention by the United States Patent Office, the
question of the validity of the patent is one for judicial
determination, and since a patent has been submitted,
the exact question is whether the defendant has
assumed the burden of proof as to anyone of his
defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall.,
583; Blanchard vs .Putnam [1869], 8 Wall., 420;
Seymour vs. Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876], 92 U.S., 347; 20 R. C. L.,
1112, 1168, 1169.)
As herein before stated, the defendant relies on three
special defenses. One such defense, on which the
judgment of the lower court is principally grounded, and
to which appellant devotes the major portion of his
vigorous argument, concerns the element of novelty,
invention, or discovery, that gives existence to the right
to a patent. On this point the trial court reached the
conclusion that "the patented plow of the plaintiff, Exhibit
D, is not different from the native plow, Exhibit 2, except
in the material, in the form, in the weight and the grade
of the result, the said differences giving it neither a new
function nor a new result distinct from the function and
the result obtained from the native plow; consequently,
its production does not presuppose the exercise of the
inventive faculty but merely of mechanical skill, which
does not give a right to a patent of an invention under
the provisions of the Patent Law." In thus finding, the
court may have been right, since the Vargas plow does
not appear to be such a "combination" as contains a
novel assemblage of parts exhibiting invention.
(See Stimpson vs. Woodman [1870], 10 Wall., 117 —
rollers; Hicks vs. Kelsey [1874], 20 Wall., 353 — stoves;
Washburn & Moen Mfg. Co. vs. Beat 'Em All Barbed
Wire Co. [1892], 143 U.S., 275 — barbed wire;
Lynch vs .Dryden [1873], C. D., 73 — walking
cultivators; Torrey vs. Hancock [1910], 184 Fed., 61 —
rotary plows.)
A second line of defense relates to the fact that
defendant has never made a complete Vargas plow, but
only points, shares, shoes, and heel pieces, to serve as
repairs. Defendant's contention is, that in common with
other foundries, he has for years cast large numbers of
plow points and shares suitable for use either on the
native wooden plow, or on the Vargas plow. A difference
has long been recognized between repairing and
reconstructing a machine. If, for instance, partial injuries,
whether they occur from accident or from wear and tear,
to a machine for agricultural purposes, are made this is
only re-fitting the machine for use, and thus permissible.
(Wilson vs. Simpson [1850], 9 How., 109.) Even under
the more rigorous doctrine of Leeds & Catlin Co. vs.
Victor Talking Machine Co. ([1909], 213 U.S., 325), it
may be possible that all the defendant has done is to
manufacture and sell isolated parts to be used to replace
worn-out parts.
The third defense is, that under the provisions of the
statute, an inventor's creation must not have been in
public use or on sale in the United States (and the
Philippine Islands) for more than two years prior to his
application .Without, therefore, committing ourselves as
to the first two defenses, we propose to base our
decision on the one just suggested as more easily
disposing of the case. (See  20 R. C. L., 1140-1142.) We
do so with full consciousness of the doubt which arose in
the mind of the trial court, but with the belief that since it
has been shown that the invention was used in public at
Iloilo by others than Vargas, the inventor, more than two
years before the application for the patent, the patent is
invalid.
Although we have spent some time in arriving at this
point, yet having reached it, the question in the case is
single and can be brought to a narrow compass. Under
the English Statute of Monopolies (21 Jac. Ch., 3), and
under the United States Patent Act of February 21, 1793,
later amended to be as herein quoted, it was always the believable that five or six witnesses for the defense
rule, as stated by Lord Coke, Justice Story and other would deliberately perjure themselves under oath. One
authorities, that to entitle a man to a patent, the invention might, but that all together, of different nationalities,
must be new to the world. (Pennock and Sellers vs. would enter into such a conspiracy, is to suppose the
Dialogue [1829], 2 Pet., 1.) As said by the United States improbable.
Supreme Court, "it has been repeatedly held by this
court that a single instance of public use of the Tested by the principles which go to make the law, we
invention  by a patentee for more than two years before think a preponderance of the evidence is to the effect
the date of his application for his patent will be fatal to that for more than two years before the application for
the validity of the patent  when issued." (Worley vs. the original letters patent, or before July 22, 1908, there
Lower Tobacco Co .[1882], 104 U. S., 340; McClurg vs. was, by the consent and allowance of Vargas, a public
Kingsland [1843], I How., 202; Consolidated Fruit Jar use of the invention covered by them.
Co. vs. Wright [1877], 94 U. S., 92; Egbert vs. Lippmann
[1881], 104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall., To conclude, we are not certain but that appellee has
120; Manning vs. Cape Ann Isinglass and Glue Co. proved every one of his defenses. We are certain that he
[1883], 108 U. S., 462; Andrews vs. Hovey [1887], 123 has at least demonstrated the public use of the Vargas
U. S., 267; Campbell vs. City of New York [1881], 1 L. R. plow over two years prior to the application for a patent.
A., 48.) Such being the case, although on a different ground, we
must sustain the judgment of the lower court, without
On the facts, we think the testimony shows such a public prejudice to the determination of the damages resulting
use of the Vargas plow as to render the patent invalid from the granting of the injunction, with the costs of this
Nicolas Roces, a farmer, testified that he had bought instance against the appellant. So ordered.
twenty Vargas plows, of which Exhibit 5 was one, in
December, 1907; and Exhibit 5, the court found, was a
plow completely identical with that for which the plaintiff
had received a patent. The minor exception, and this in
itself corroborative of Roces' testimony, is that the
handle of plow Exhibit 5 is marked with the letters "A V"
and not with the words "Patent Applied For" or "Patented
Mar.12, 1912." Salvador Lizarraga, a clerk in a business
house, testified that he had received plows similar to
Exhibits D, 5, and 4, for sale on commission on May,
1908, from Bonifacio Araneta, partner of Vargas in the
plow business. Ko Pao Ko, a blacksmith, testified that he
had made fifty plow frames in 1905 for Vargas and
Araneta, of which Exhibit 4 is one; Exhibit 4, the court
found, is a plow identical with that patented by Vargas,
but without share and mould-board. Alfred Berwin, an
employee in the office of Attorney John Bordman,
testified that on September 21, 1908, he had knowledge
of a transaction wherein Vargas and Araneta desired to
obtain money to invest in a plow factory. George Ramon
Saul, a mechanic of the "Taller Visayas" of Strachan and
MacMurray, testified that he had made Vargas plow
points and shares of the present form upon order of
Araneta and Vargas in 1906 and 1907 .William
MacMurray, proprietor of the "Taller Visayas,"
corroborated the evidence of the witness Saul by the
exhibition of the account against Vargas and Araneta
wherein, under date of December 13, 1906, appears the
item "12 new soft steel plow shares forged and bored for
rivets as per sample." Against all this, was the testimony
of the plaintiff Angel Vargas who denied that Saul could
have been seen the Vargas plow in 1907 and 1907, who
denied that Roces purchased the Vargas plow in 1907,
who denied that Lizarraga could have acted as an agent
to sell two plows in November, 1908, who denied any
remembrance of the loan mentioned by Berwin as
having been negotiated in September, 1908, who denied
that Ko Pao Ko made fifty plows one of which is Exhibit
4, for Araneta and Vargas in 1905. Plaintiff introduced
his books to substantiate his oral testimony .It is hardly
 abstain from making, manufacturing, selling or
offering for a sale plows of the type of those
manufactured by the plaintiff, and particularly
plows of the model of Exhibits B, B-1 and B-2,
and to render to the plaintiff a detailed
accounting of the profits obtained by them from
the manufacture and sale of said type of plows
within thirty (30) days from the date of the
receipt by them of notice of this decision, with
costs against all of the defendants.

Angel Vargas, the plaintiff herein, brought this action to

restrain the appellants and the other defendant entity,
Cham Samco & Sons, their agents and mandatories,
from continuing the manufacture and sale of plows
similar to his plow described in his patent No. 1,507,530
issued by the United States Patent Office on September
2, 1924; and to compel all of said defendants, after
rendering an accounting of the profits obtained by them
from the sale of said plows from September 2, 1924, to
pay him damages equivalent to double the amount of
such profits.

It appears from the bill of exceptions that Cham Samco

& Sons did not appeal.

In addition to the evidence presented, the parties

submitted the following stipulation of facts:

The parties agree on the following facts:

1. That the plaintiff, Angel Vargas, is of age and

a resident of the municipality of Iloilo, Iloilo,
Philippine Islands.

2. That the defendant, Petronila Chua, is also of

age, and is married to Coo Pao alias Coo
Paoco, and resides in Iloilo.

3. That the defendant, Coo Teng Hee, is also of

G.R. No. L-36650             January 27, 1933
ANGEL VARGAS, plaintiff-appellee,
vs.
PETRONILA CHUA, ET AL., defendants-appellants.
IMPERIAL, J.:
The defendants Petronila Chua, Coo Pao and Coo Teng
Hee, appeal from the judgment of the Court of First
Instance of Manila, the dispositive part of which reads as
follows:
Wherefore judgment is rendered in favor of the
plaintiff and against the defendants, ordering
each and every one of them, their agents,
mandatories and attorneys, to henceforth
age and a resident of Iloilo, and is the sole
owner of the business known as Coo Kun &
Sons Hardware Co. established in Iloilo.
4. That the defendant, Cham Samco & Sons, is
a commercial partnership duly organized under
the laws of the Philippine Islands, with their
principal office in the City of Manila, and that the
defendants Cham Samco, Cham Siong E, Cham
Ai Chia and Lee Cham Say, all of age and
residents of the City of Manila, are the partners
of the firm Cham Samco & Sons.
5. The parties take for granted that the complaint
in this case is amended in the sense that it
includes Coo Paoco as party defendant in his
capacity as husband of the defendant, Petronila
Chua, with Attorney Jose F. Orozco also
representing him, and that he renounces his
rights to receive summons in this case by
reproducing the answer of his codefendant,
Petronila Chua.
6. That the plaintiff is the registered owner and
possessor of United States Patent No.
1,507,530 on certain plow improvements, issued
by the United States Patent Office on September
2, 1924, a certified copy of which was registered
in the Bureau of Commerce and industry of the
Government of the Philippine Islands on October
17, 1924. A certified copy of said patent is
attached to this stipulation of facts as Exhibit A.
7. That the plaintiff is now and has been
engaged, since the issuance of his patent, in the
manufacture and sale of plows of the kind, type
and design covered by the aforementioned
patent, said plows being of different sizes and
numbered in accordance therewith from 1 to 5.
8. That, since the filing of the complaint to date,
the defendant, Petronila Chua, has been
manufacturing and selling plows of the kind, type
and design represented by Exhibits B, B-1 and
B-2, of different sizes, designated by Nos. 2, 4
and 5.
9. That, since the filing of the complaint to date,
the defendant, Coo Teng Hee, doing business in
Iloilo under the name of Coo Kun & Sons
Hardware Co., has been obtaining his plows, of
the form and size of Exhibits B, B-1 and B-2,
from the defendant Petronila Chua.
10. Without prejudice to the plaintiff's right to ask
the defendants to render an accounting in case
the court deem it proper, the parties agree that
the defendant Coo Teng Hee, doing business
under the name of Coo Kun & Sons Hardware
Co., has been selling to his customers in his
store on J. Ma. Basa Street in Iloilo, plows of the
kind, type and design represented by Exhibits B,
B-1 and B-2, having bought said plows from his
codefendant, Petronila Chua, who manufactures
them in her factory on Iznart Street, Iloilo.
11. That, according to the invoices marked
Exhibits C and C-2 dated March 13, 1928, and
June 19, 1928, respectively, the defendant
Cham Samco & Sons, on the dates mentioned,
had, in the ordinary course of business, bought
of its codefendant Coo Kun & Sons Hardware
Co., 90 plows of the form, type and design of
Exhibits B, B-1 and B-2 which it has been selling
in its store on Sto. Cristo Street, Manila.
12. That the same defendant Cham Samco &
Sons, in the ordinary course of business, bought
on March 17, 1928, of the store "El Progreso"
owned by Yao Ki & Co., of Iloilo, a lot of 50
plows, of the form, type and design of Exhibit B-
1, as shown by Invoice C-1, and that it has been
selling them in its store on Sto. Cristo St.,
Manila.
13. That, on September 19, 1928, the defendant
Cham Samco & Sons, sold in its store on Sto.
Cristo St., Manila, the plow Exhibit B-1, for the
sale of which invoice Exhibit D was issued.
14. That, on December 20, 1927, the plaintiff
herein, through his attorneys Paredes,
Buencamino & Yulo, sent by registered mail to
the herein defendant, Coo Kun & Sons
Hardware Co., at Iloilo, the original of the letter
Exhibit E, which was received by it on
September 28, 1927, according to the receipt
marked Exhibit E-1 attached hereto.
15. That the plows manufactured by the plaintiff
in accordance with his patent, Exhibit A, are
commonly known to the trade in Iloilo, as well as
in other parts of the Philippines, as "Arados
Vargas", and that the plaintiff is the sole
manufacturer of said plows. A sample of these
plows is presented as Exhibit F.
16. That the document, Exhibit 1-Chua, is a
certified copy of the amended complaint, the
decision of the Court of First Instance of Iloilo
and that of the Supreme Court (R. G. No. 14101)
in civil case No. 3044 of Iloilo, entitled "Angel
Vargas", plaintiff, vs. F. M. Yaptico & Co., Ltd.,
defendant", and that Exhibit 2-Chua et al. is a
certified copy of Patent No. 1,020,232, to which
the aforementioned complaint and decision
refer, issued in favor of Angel Vargas by the
United States Patent Office on March 12, 1912,
and that Exhibit 3-Chua et al., represents the
plow manufactured by Angel Vargas in
accordance with his Patent marked Exhibit 2-
Chua et al.
The appellants assign the following errors:
FIRST ERROR
The trial court erred in declaring that the Vargas
plow, Exhibit F (covered by Patent No.
1,507,530) is distinct from the old model Vargas
plow, Exhibit 2-Chua, covered by the former
Patent No. 1,020,232, which had been declared
null and void by this court.
SECOND ERROR
The trial court erred in mistaking the
improvement on the plow for the plow itself.
THIRD ERROR
 The trial court erred in rendering judgment in
favor of the plaintiff and against the defendants.
FOURTH ERROR
The trial court erred in not dismissing the
complaint with costs against the plaintiff.
The evidence shows that Exhibit F is the kind of plows
the plaintiff, Angel Vargas, manufactures, for which
Patent No. 1,507,530, Exhibit A, was issued in his favor.
Exhibits B, B-1 and B-2 are samples of the plows which
the herein appellants, Coo Pao and Petronila Chua,
have been manufacturing since 1918, and Exhibit 3-
Chua represents the plow for which, on March 12, 1912,
the appellee obtained a patent from the United States
Patent Office, which was declared null and void by the
Supreme Court in the case of Vargas vs. F. M. Yap Tico
& Co.  (40 Phil., 195).
With these facts in view, the principal and perhaps the
only question we are called upon to decide is whether
the plow, Exhibit F, constitutes a real invention or an
improvement for which a patent may be obtained, or if,
on the contrary, it is substantially the same plow
represented by Exhibit 3-Chua the patent for which was
declared null and void in the aforementioned case
of Vargas vs. F. M. Yaptico & Co., supra.
We have carefully examined all the plows presented as
exhibits as well as the designs of those covered by the
patent, and we are convinced that no substantial
difference exists between the plow, Exhibit F, and the
plow, Exhibit 3-Chua which was originally patented by
the appellee, Vargas. The only difference noted by us is
the suppression of the bolt and the three holes on the
metal strap attached to the handle bar. These holes and
bolt with its nut were suppressed in Exhibit F in which
the beam is movable as in the original plow. The
members of this court, with the plows in view, arrived at
the conclusion that not only is there no fundamental
difference between the two plows but no improvement
whatever has been made on the latest model, for the
same working and movement of the beam existed in the
original model with the advantage, perhaps, that its
graduation could be carried through with more certainty
by the use of the bolt which as has already been stated,
was adjustable and movable.
As to the fact, upon which much emphasis was laid, that
deeper furrows can be made with the new model, we
have seen that the same results can be had with the old
implement.
In view of the foregoing, we are firmly convinced that the
appellee is not entitled to the protection he seeks for the
simple reason that his plow, Exhibit F, does not
constitute an invention in the legal sense, and because,
according to the evidence, the same type of plows had
been manufactured in this country and had been in use
in many parts of the Philippine Archipelago, especially in
the Province of Iloilo, long before he obtained his last
patent.
In the above mentioned case of Vargas vs. F. M. Yaptico
& Co.,  we said:
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."
The burden of proof to substantiate a charge of
infringement is with the plaintiff. Where,
however, the plaintiff introduces the patent in
evidence, if it is the due form, it affords a prima
facie presumption of its correctness and validity.
The decision of the Commissioner of Patents in
granting the patent is always presumed to be
correct. The burden then shifts to the defendant
to overcome by competent evidence this legal
presumption. With all due respects, therefore, for
the critical and expert examination of the
invention by the United States Patent Office, the
question of the validity of the patent is one for
judicial determination, and since a patent has
been submitted, the exact question is whether
the defendant has assumed the burden of proof
as to anyone of his defenses. (See Agawan
Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [1869], 8 Wall., 420;
Seymour vs. Osborne [1871], 11 Wall., 516;
Reckendorfer vs. Faber [1876], 92 U. S., 347; 20
R. C. L., 1112, 1168, 1169.)
Although we spent some time in arriving at this
point, yet, having reached it, the question in the
case is single and can be brought to a narrow
compass. Under the English Statute of
Monopolies (21 Jac. Ch., 3), and under the
United States Patent Act of February 21, 1793,
later amended to be as herein quoted, it was
always the rule, as stated by Lord Coke, Justice
Story and other authorities, that to entitle a man
to a patent, the invention must be new to the
world. (Pennock and Sellers vs. Dialogue [1829],
2 Pet., 1.) As said by the United States Supreme
Court, "it has been repeatedly held by this court
that a single instance of public use of the
invention  by a patentee of more than two years
before the date of his application for his
patent will be fatal to the validity of the
patent  when issued." (Worley vs. Lower
Tobacco Co. [1882], 104 U. S., 340;
McClurg vs. Kingsland [1843], 1 How., 202;
Consolidated Fruit Jar Co. vs. Wright [1877], 94
U. S., 92; Egbert vs. Lippmann [1881], 104 U.
S., 333; Coffin vs. Ogden [1874], 18 Wall., 120;
Manning vs. Cape Ann Isinglass and Glue Co.
[1883], 108 U. S., 462; Andrews vs. Hovey
[1887], 123 U. S., 267; Campbell vs. City of New
York [1888], 1 L. R. A., 48.)
We repeat that in view of the evidence presented, and
particularly of the examination we have made of the
plows, we cannot escape the conclusion that the plow
upon which the appellee's contention is based, does not
constitute an invention and, consequently, the privilege
invoked by him is untenable and the patent acquired by
him should be declared ineffective.
The judgment appealed from is hereby reversed and the
appellants are absolved from the complaint, with costs of
this instance against the appellee. So ordered.
G.R. No. 38010. December 21, 1933.
PATRICK HENRY FRANK and WILLIAM HENRY
GOHN, Plaintiffs-Appellants, v. G.
KOSUYAMA, Defendant-Appellee.
SYLLABUS
1. PATIENT; ESSENTIAL ELEMENTS. — Strictly
speaking, the hemp stripping machine of the plaintiffs
does not constitute an invention on the ground that it
lacks the element of novelty, originality and precedence
(48 C. J., sec. 101, p. 97, and sec. 102, p. 98).
2. ID.; KNOWLEDGE AND USE BY THE PUBLIC. —
Before the plaintiffs herein obtained their patent, they
themselves had already publicly used the same kind of
machine for many months, at least, and, various other
machines, having in general, the same characteristics
and important parts as that of the said plaintiffs, were
known in the Province of Davao.
3. ID.; ANNULMENT. — Notwithstanding all the facts
herein stated, the trial court did not annul the plaintiffs’
patent and the defendant herein insists that the patent in
question should be declared null and void. In view of the
nature of the action brought by the plaintiffs, annulment
does not lie in the absence of a cross-complaint to that
effect.
4. ID.; INFRINGEMENT. — The defendant cannot be
made civilly liable for alleged infringement of the patent
on which the action is based on the ground that the
machines manufactured and sold by him did not have
any essential part unknown to the public in the Province
of Davao at the time the plaintiffs applied for and
obtained their patent for improved abaca stripping
machines.
5. APPLICABILITY OF THE DOCTRINE OF "STARE
DECISIS." — The doctrine laid down in the case of
Frank and Gohn v. Benito (51 Phil., 712), to the effect
that the defendant therein had actually infringed upon
the patent of the therein plaintiffs cannot be invoked in
this case. It is true that the then plaintiffs in the former
and those in the latter case are the same but the
defendant therein did not set up the special defenses as
alleged by the herein defendant. Furthermore, the
plaintiffs therein had only confined themselves to
presenting the patent, or rather, a copy thereof, wherein
mention of the "spindle" was made, and this court took
for granted their claim that it was one of the essential
characteristics thereof which had been imitated or copied
by the therein defendant.
DECISION
IMPERIAL, J.:
Patent No. 1519579 (Exhibit 117) on improvement in
hemp stripping machines, issued by the United States
Patent Office on December 16, 1924, and registered in
the Bureau of Commerce and Industry of the Philippine
Islands on March 17, 1925, was the origin of this action
brought by the plaintiffs herein who prayed that judgment
be rendered against the defendant, ordering him thereby
to refrain immediately from the manufacture and sale off
machines similar to the one covered by the patent; to
render an accounting of the profits realized from the
manufacture and sale of the machines in question; that
in case of refusal or failure to render such accounting,
the defendant be ordered to pay the plaintiffs the sum of
P60 as profit on each machine manufactured or sold by
him; that upon approval of the required bond, said
defendant be restrained from continuing the manufacture
and sale of the same kind of machines; that after the trial
the preliminary injunction issued therein be declared
permanent; and, lastly, that the said defendant be
sentenced to pay the costs and whatever damages the
plaintiffs might be able to prove therein. The action
therefore was based upon alleged infringement by the
defendant of the rights patent through the manufacture
and sale by the former of machines similar to that
covered by the aforesaid patent.
The plaintiffs appealed from the judgment rendered by
the trial court dismissing their complaint, with costs, as
well as the defendant’s counterclaim of P10,000. The
defendant did not appeal.
In their amended complaint, the plaintiffs alleged that
their hemp stripping machines, for which they obtained a
patent, have the following characteristics: "A stripping
head, a horizontal table, a stripping knife supported upon
such table, a tapering spindle, a rest holder adjustably
secured on the table portion, a lever and means of
compelling the knife to close upon the table, a pallet or
rest in the bottom of the table, a resilient cushion under
such pallet or rest." In spite of the fact that they filed an
amended complaint from which the "spindle’ or conical
drum, which was the only characteristic feature of the
machine mentioned in the original complaint, was
eliminated, the plaintiffs insisted that the said part
constitutes the essential differences between the
machine in question and other machines and it was the
principal consideration upon which their patent was
issued. The said plaintiffs sustained their contention on
this point even in their printed brief and memorandum
filed in this appeal.
During the trial, both parties presented voluminous
evidence from which the trial court arrived at the
following conclusions:jgc:chanrobles.com.ph
"In considering their machine the plaintiffs did nothing
but improve, to a certain degree, those that were already
in vogue and in actual use in hemp producing provinces.
It cannot be said that they have invented the ’spindle’
inasmuch as this was already known since the year 1909
or 1910. Neither can it be said that they have invented
the stripping knife and the contrivance which controls the
movement and pressure thereof on the ground that
stripping knives together with their control sets were
already in actual use in the different stripping machines
long before their machines appeared. Neither can it be
said that they invented the flywheel because that part or
piece thereof, so essential in every machine from time
immemorial, was already known and actually employed
in hemp stripping machines such as those of Riesgo
(Exhibit 4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A-
Suzara), Browne (Exhibit 28-A), McFie, etc., all of which
were in use for the benefit of hemp long before the
appearance of the plaintiffs’ machines in the market.
Much less can it be said that they invented the pedal to
raise the knife in order to allow the hemp to be stripped
to pass under it, on the ground that the use of such
contrivance has, likewise, been known since the
invention of the most primitive of hemp stripping
machines.
"On the other hand, although the plaintiffs alleged in their
original complaint that ’the principal and important
feature of said machine is a spindle upon which the
hemp to be stripped is wound in the process of stripping,’
nevertheless, in their amended complaint of March 3,
1928, which was filed after a portion of the evidence
therein had already been submitted and it was known
that the use of the spindle was nothing new, they still
made the allegations appearing in paragraph 3 of their
said amended complaint and reproduced on pages 2, 3,
4 and 5 hereof, copying the same from the application
which they filed with the United States Patent Office,
under which they obtained their patent in question. The
aforesaid application clearly shows that what they
applied for was not a patent for a ’pioneer or primary
invention’ but only for some ’new and useful
improvement in hemp stripping machines.’"
We have carefully reviewed the evidence presented and
have had the opportunity of ascertaining the truth of the
conclusions above stated. We agree with the trial court
that, strictly speaking, the hemp stripping machine of the
plaintiffs does not constitute an invention on the ground
that it lacks the elements of novelty, originality and
precedence (48 C. J., sec. 101, p. 97, and sec. 102, p.
98). In fact, before the plaintiffs herein obtained their
patent, they themselves had already publicly used the
same kind of machine for some months, at least, and,
various other machines, having in general, the same
characteristics and important parts as that of the said
plaintiffs, were known in the Province of Davao.
Machines known as Molo, Riesgo, Crumb, Icsiar,
Browne and McFie were already known in that locality
and used by the owners of hemp plantations before the
machine of the plaintiffs came into existence. It may also
be noted that Adrian de Icsiar applied for a patent on an
invention which resulted in the rejection by the United
States Patent Office of the plaintiffs’ original application
for a patent on the so-called "spindle" or conical drum
which was then in actual use in the Dringman and Icsiar
hemp stripping machines.
Notwithstanding the foregoing facts, the trial court did not
decree the annulment of the plaintiffs’ patent and the
herein defendant-appellee insists that the patent in
question should be declared null and void. We are of the
opinion that it would be improper and untimely to render
a similar judgment, in view of the nature of the action
brought by the plaintiffs and in the absence of a cross-
complaint to that effect. For the purposes of this appeal,
suffice it to hold that the defendant is not civilly liable for
alleged infringement of the patent in question.
In the light of sound logic, the plaintiffs cannot insists that
the "spindle" was a patented invention on the ground
that said part of the machine was voluntarily omitted by
them from their application, as evidenced by the
photographic copy thereof (Exhibit 41) wherein it likewise
appears that the patent on Improved Hemp Stripping
Machines was issued minus the "spindle" in question.
Were we to stress to this part of the machine, we would
be giving the patent obtained by the plaintiffs a wider
range than it actually has, which is contrary to the
principles of interpretation in matters to patents.
In support of their claim the plaintiffs invoke the doctrine
laid down by this court in the case of Frank and Gohn v.
Benito (51 Phil., 712), wherein it was held that the
therein defendant really infringed upon the patent of the
therein plaintiffs. It may be noted that the plaintiffs in the
former and those in the latter case are the same and that
the patent then involved is the very same one upon
which the present action of the plaintiffs is based. The
above-cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the plaintiffs-
appellants on the ground that the facts in one case are
entirely different from those in the other. In the former
case the defendant did not set up the same special
defenses as those alleged by the herein defendant in his
answer and the plaintiffs therein confined themselves to
presenting the patent, or rather a copy thereof, wherein
the "spindle’ was mentioned, and this court took for
granted their claim that it was one of the essential
characteristics thereof which was imitated or copied by
the then defendant. Thus it came to pass that the
"spindle" in question was insistently mentioned in the
decision rendered on appeal as the essential part of the
plaintiffs’ machine allegedly imitated by the then
defendant. In the case under consideration, it is obvious
that the "spindle" is not an integral part of the machine
patented by the plaintiffs on the ground that it was
eliminated from their patent inasmuch as it was
expressly excluded in their application, as evidenced by
the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held
civilly liable for alleged infringement of the patent upon
which the present action is based on the ground that
there is no essential part of the machine manufactured
and sold by him, which was unknown to the public in the
Province of Davao at the time the plaintiffs applied for an
obtained their patent for improved hemp stripping
machines, the judgment appealed from is hereby
affirmed, with costs against the plaintiffs-appellants. So
ordered.
G.R. No. L-32160 January 30, 1982
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF
APPEALS, respondents.
FERNANDEZ, J.:
This is a petition for certiorari to review the decision of
the Court of Appeals in CA G.R. NO. 37824-R entitled
"Conrado G. de Leon, plaintiff-appelle vs. Dominciano
Aguas and F.H. Aquino and Sons, defendants-
appellants," the dispositive portion of which reads:
WHEREFORE, with the modification
that plintiff-applee's award of moral
damages is hereby redured to
P3,000.00, the appealed judgment is
hereby affirmed, in all othe respects,
with costs against appellants. 1
On April 14, 1962, Conrado G. de Leon filed in the Court
of First Instance of Rizal at Quezon City a complaint for
infringement of patent against Domiciano A. Aguas and
F. H. Aquino and Sons alleging 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 said invention was new, useful, not known or
used by others in this country before his invention
thereof, not patented or described in any printed
publication anywhere before his invention thereof, or
more than one year prior to his application for patent
thereof, not patented in any foreign country by him or his
legal representatives on application filed more than one
year prior to his application in this country; that plaintiff
has the exclusive license to make, use and sell
throughout the Philippines the improvements set forth in
said Patent No. 658; that the invention patented by said
Patent No. 658 is of great utility and of great value to
plaintiff and of great benefit to the public who has
demanded and purchased tiles embodying the said
invention in very large quantities and in very rapidly
increasing quant ies; that he has complied with the
Philippine statues relating to marking patented tiles sold
by him; that the public has in general acknowledged the
validity of said Patent No. 658, and has respected
plaintiff's right therein and thereunder; that the defendant
Domiciano A. 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; that he has given direct and
personal notice to the defendants of their said acts of
infringement and requested them to desist, but
nevertheless, defendants have refused and neglected to
desist and have disregarded such request, and continue
to so infringe causing great and irreparable damage to
plaintiff; that if the aforesaid infringement is permitted to
continue, further losses and damages and irreparable confederates, and any and all persons
injury will be sustained by the plaintiff; that there is an acting under their authority from making
urgent need for the immediate issuance of a preliminary and/or using and/or vending tiles
injunction; that as a result of the defendants' wrongful embodying said patented invention or
conduct, plaintiff has suffered and the defendants are adapted to be used in combination
liable to pay him, in addition to actual damages and loss embodying the same, and from making,
of profits which would be determined upon proper manufacturing, using or selling,
accounting, moral and exemplary or corrective damages engravings, castings and devises
in the sum of P90,000.00; that plaintiff has been designed and intended for use in
compelled to go to court for the protection and apparatus for the making of tiles
enforcement of his and to engage the service of counsel, embodying plaintiff's patented invention,
thereby incurring attorney's fees and expenses of and from offering or advertising so to do,
litigation in the sum of P5,000.00. 2 and from aiding and abetting or in any
way contributing to the infringement of
On April 14, 1962, an order granting the plaintiff's said patent;
petition for a Writ of Preliminary Injunction was issued. 3
3. Ordering that each and all of the
On May 23, 1962, the defendant Domiciano A. Aguas infringing tiles, engravings, castings and
filed his answer denying the allegations of the plaintiff devices, which are in the possession or
and alleging that: the plaintiff is neither the original first under the control of defendants be
nor sole inventor of the improvements in the process of delivered to plaintiff;
making mosaic pre-cast tiles, the same having been
used by several tile-making factories in the Philippines 4. Ordering the defendants to jointly and
and abroad years before the alleged invention by de severally pay to the plaintiff the following
Leon; that Letters Patent No. 658 was unlawfully sums of money, to wit:
acquired by making it appear in the application in relation
thereto that the process is new and that the plaintiff is (a) P10,020.99 by way of actual
the owner of the process when in truth and in fact the damages;
process incorporated in the patent application has been
known and used in the Philippines by almost all tile (b) P50,000.00 by way of moral
makers long before the alleged use and registration of damages;
patent by plaintiff Conrado G. de Leon; that the
registration of the alleged invention did not confer any
right on the plaintiff because the registration was (c) P5,000.00 by way of exemplary
unlawfully secured and was a result of the gross damages;
misrepresentation on the part of the plaintiff that his
alleged invention is a new and inventive process; that (d) P5,000.00 by way of attorney's fees
the allegation of the plaintiff that Patent No. 658 is of and
great value to plaintiff and of great benefit to the public is
a mere conclusion of the plaintiff, the truth being that a) (e) costs of suit. 5
the invention of plaintiff is neither inventive nor new,
hence, it is not patentable, b) defendant has been The defendant Domiciano Aguas appealed to the Court
granted valid patents (Patents No. 108, 109, 110 issued of Appeals, assigning the following errors. 6
on December 21, 1961) on designs for concrete
decorative wall tiles; and c) that he can not be guilty of
I
infringement because his products are different from
those of the plaintiff. 4
THE TRIAL COURT ERRED IN NOT
HOLDING THAT PLAINTIFF'S PATENT
The trial court rendered a decision dated December 29,
FOR THE 'PROCESS OF MAKING
1965, the dispositive portion of which reads:
MOSAIC PRE-CAST TILE' IS INVALID
BECAUSE SAID ALLEGED PROCESS
WHEREFORE, judgment is hereby IS NOT AN INVENTION OR
rendered in favor of plaintiff and against DISCOVERY AS THE SAME HAS
the defendants: ALREADY LONG BEEN USED BY TILE
MANUFACTURERS BOTH ABROAD
1. Declaring plaintiff's patent valid and AND IN THIS COUNTRY.
infringed:
II
2. Granting a perpetual injunction
restraining defendants, their officers, THE TRIAL COURT ERRED IN
agents, employees, associates, HOLDING THAT THE PATENT OF
 PLAINTIFF IS VALID BECAUSE IT IS
AN IMPROVEMENT OR THE AGE-OLD
TILE MAKING SYSTEM.
III
THE TRIAL COURT ERRED IN NOT
ORDERING THE CANCELLATION OF
PLAINTIFF-APPELLEE'S LETTERS
PATENT NO. 658, EXHIBIT L, IN
ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE
PATENT LAW, REPUBLIC ACT 165.
IV
THE TRIAL COURT ERRED IN
HOLDING THAT DEFENDANT
DOMICIANO A. AGUAS IS GUILTY OF
INFRINGEMENT DESPITE THE FACT
THAT PLAINTIFF'S PATENT IS NOT A
VALID ONE.
V decision of the lower court (Record on
THE TRIAL COURT ERRED IN NOT
HOLDING THAT THE DEFENDANT
COULD NEVER BE GUILTY OF
INFRINGEMENT OF PLAINTIFF'S
PATENT BECAUSE EVEN IN
MATTERS NOT PATENTED BY THE
PLAINTIFF - LIKE THE COMPOSITION
AND PROPORTION OF INGREDIENTS
USED AND THE STRUCTURAL
DESIGNS OF THE MOULD AND THE
TILE PRODUCED - THAT OF THE
DEFENDANT ARE DIFFERENT.
VI
THE TRIAL COURT ERRED IN NOT
DISMISSING THE COMPLAINT AND IN
HOLDING THE DEFENDANT,
INSTEAD OF THE PLAINTIFF, LIABLE
FOR DAMAGES, AND ATTORNEY'S
FEES.
On August 5, 1969, the Court of Appeals affirmed the
decision of the trial court, with the modification that
plaintiff-appellee's award of moral damages was reduced
to P3,000.00. 7
The petitioner assigns the following errors supposedly
committed by the Court of Appeals:
It is now respectfully submitted that the
Court of Appeals committed the
following errors involving questions of
law, to wit:
First error. — When it did not conclude
that the letters patent of the respondent
although entitled on the cover page as a
patent for improvements, was in truth
and in fact, on the basis of the body of
the same, a patent for the old and non-
patentable process of making mosaic
pre-cast tiles;
Second error. — When it did not
conclude from the admitted facts of the
case, particularly the contents of the
letters patent, Exh. L and the pieces of
physical evidence introduced consisting
of samples of the tiles and catalouges,
that the alleged improvements
introduced by the respondent in the
manufacture of mosaic pre-cast tiles are
not patentable, the same being not new,
useful and inventive.
Third error. — As a corollary, when it
sentenced the herein petitioner to pay
the damages enumerated in the
Appeal, pp. 74-75), as confirmed by it
(the Court of Appeals), but with the
modification that the amount of
P50,000.00 moral damages was
reduced to P3,000.00. 8
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the record
are to the effect that on December 1,
1959 plaintiff-appellee filed a patent
application with the Philippine Patent
Office, and on May 5, 1960, said office
issued in his favor Letters Patent No.
658 for a "new and useful improvement
in the process of making mosaic pre-
cast tiles" (Exh, "L"); that defendant F.H.
Aquino & Sons engraved the moulds
embodying plaintiff's patented
improvement for the manufacture of pre-
cast tiles, plaintiff furnishing said
defendant the actual model of the tiles in
escayola and explained to said engraver
the plans, specifications and the details
of the engravings as he wanted them to
be made, including an explanation of the
lip width, artistic slope of easement and
critical depth of the engraving that
plaintiff wanted for his moulds; that
engraver Enrique Aquino knew that the
moulds he was engraving for plaintiff
were the latter's very own, which
possession the new features and
characteristics covered by plaintiff's
parent; that defendant Aguas personally,
as a building contractor, purchased from
 plaintiff, tiles shaped out of these
moulds at the back of which was
imprinted plaintiff's patent number
(Exhs., "A" to "E"); that subsequently,
through a representative, Mr. Leonardo,
defendant Aguas requested Aquino to
make engravings of the same type and
bearing the characteristics of plaintiff's
moulds; that Mr. Aquino knew that the
moulds he was asked to engrave for
defendant Aguas would be used to
produce cement tiles similar to plaintiff's;
that the moulds which F.H. Aquino &
Sons eventually engraved for Aguas and
for which it charged Aguas double the
rate it charged plaintiff De Leon, contain
the very same characteristic features of
plaintiff's mould and that Aguas used
these moulds in the manufacture of his
tiles which he actually put out for sale to
the public (Exhs. "1" to "3" and Exhs. "A"
to "E"); that both plaintiff's and
defendant Aguas' tiles are sculptured
pre-cast wall tiles intended as a new
feature of construction and wag
ornamentation substantially Identical to
each other in size, easement, lip width
and critical depth of the deepest
depression; and that the only significant
difference between plaintiff's mould and
that engraved by Aquino for Aguas is
that, whereas plaintiff's mould turns out
tiles 4 x 4 inches in size, defendant
Aguas' mould is made to fit a 4-1/4 x 4-
1/4 inch tile. 9
The patent right of the private respondent expired on
May 5, 1977. 10 The errors will be discuss only to
determine the right of said private respondent to
damages.
The petitioner questioned the validity of the patent of the
private respondent, Conrado G. de Leon, on the ground
that the process, subject of said patent, is not an
invention or discovery, or an improvement of the old
system of making tiles. It should be noted that the private
respondent does not claim to be the discoverer or
inventor of the 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 Philippine
Patent Office to the private respondent, Conrado G. de
Leon, to protect his rights as the inventor of "an alleged
new and useful improvement in the process of making
mosaic pre-cast tiles." 11 Indeed, 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.
The Court of Appeals found that the private respondent
has introduced an improvement in the process of tile-
making because:
... we find that plaintiff-appellee has
introduced an improvement in the
process of tile-making, which proceeds
not merely from mechanical skill, said
improvement consisting among other
things, in the new critical depth, lip
width, easement and field of designs of
the new tiles. The improved lip width of
appellee's tiles ensures the durability of
the finished product preventing the
flaking off of the edges. The easement
caused by the inclination of the
protrusions of the patented moulds is for
the purpose of facilitating the removal of
the newly processed tile from the female
die. Evidently, appellee's improvement
consists in the solution to the old critical
problem by making the protrusions on
his moulds attain an optimum height, so
that the engraving thereon would be
deep enough to produce tiles for
sculptured and decorative purposes,
strong optimum thickness of appellee's
new tiles of only 1/8 of an inch at the
deepest easement (Exhs. "D" and "D-1")
is a most critical feature, suggestive of
discovery and inventiveness, especially
considering that, despite said thinness,
the freshly formed tile remains strong
enough for its intended purpose.
While it is true that the matter of
easement, lip width, depth, protrusions
and depressions are known to some
sculptors, still, to be able to produce a
new and useful wall tile, by using them
all together, amounts to an invention.
More so, if the totality of all these
features are viewed in combination with
the Ideal composition of cement, sodium
silicate and screened fine sand.
By using his improved process, plaintiff
has succeeded in producing a new
product - a concrete sculptured tile
which could be utilized for walling and
decorative purposes. No proof was
adduced to show that any tile of the
same kind had been produced by others
before appellee. Moreover, it appears
that appellee has been deriving
considerable profit from his manufacture
and sale of such tiles. This commercial
success is evidence of patentability
(Walker on Patents, Dellers Edition, Vol.
I, p. 237). 12
The validily of the patent issued by the Philippines
Patent Office in favor of the private respondent and the
question over the inventiveness, novelty and usefulness
of the improved process therein specified and described
are matters which are better determined by the
Philippines Patent Office. The technical staff of the
Philippines Patent Office, composed of experts in their
field, have, by the issuance of the patent in question,
accepted the thinness of the private respondent's new
tiles as a discovery. There is a presumption that the
Philippines Patent Office has correctly determined the
patentability of the improvement by the private
respondent of the process in question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced evidence
sufficient to overcome the above
established legal presumption of validity
or to warrant reversal of the findings of
the lower court relative to the validity of
the patent in question. In fact, as we
have already pointed out, the clear
preponderance of evidence bolsters said
presumption of validity of appellee's
patent. There is no indication in the
records of this case and this Court is
unaware of any fact, which would tend
to show that concrete wall tiles similar to
those produced by appellee had ever
been made by others before he started
manufacturing the same. In fact, during
the trial, appellant was challenged by
appellee to present a tile of the same
kind as those produced by the latter,
from any earlier source but, despite the
fact that appellant had every chance to
do so, he could not present any. There
is, therefore, no concrete proof that the
improved process of tile-making
described in appellee's patent was used
by, or known to, others previous to his
discovery thereof. 13
The contention of the petitioner Aguas that the letters
patent of de Leon was actually a patent for the old and
non-patentable process of making mosaic pre-cast tiles
is devoid of merit. 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. 14
The petitioner also contends that the improvement of
respondent is not patentable because it is not new,
useful and inventive. This contention is without merit.
The records disclose that 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 tile, is
assured, provided that a certain critical depth is
maintained in relation to the dimensions of the tile. 16
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; 17 that these tiles have also depth, lip width,
easement and field of designs; 18 and that the private
respondent had copied some designs of Pomona. 19
The Machuca tiles are different from that of the private
respondent. The designs are embossed and not
engraved as claimed by the petitioner. There may be
depressions but these depressions are too shallow to be
considered engraved. Besides, the Machuca tiles are
heavy and massive.
There is no similarity between the Pomona Tiles and de
Leon's tiles. The Pomona tiles are made of
ceramics. 20 The process involved in making cement tiles
is different from ceramic tiles. Cement tiles are made
with the use of water, while in ceramics fire is used. As
regards the allegation of the petitioner that the private
respondent copied some designs of Pomona, suffice it to
say that what is in issue here is the process involved in
tile making and not the design.
In view of the foregoing, this Court finds that Patent No.
658 was legally issued, the process and/or improvement
being patentable.
Both the trial court and the Court of Appeals found as a
fact that the petitioner Domiciano A. Aguas did infringe
de Leon's patent. There is no showing that this case falls
under one of the exceptions when this Court may
overrule the findings of fact of the Court of Appeals. The
only issue then to be resolved is the amount of damages
that should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount
of damages awarded by the lower court with the
modification that the respondent is only entitled to
P3,000.00 moral damages. 21
The lower court awarded the following damages: 22
a) P10,020.99 by way of actual
damages;
b) P50,000.00 by way of moral
damages;
c) P5,000.00 by way of exemplary
damages;
d) P5,000.00 by way of attomey's fees
and
e) Costs of suit
because:
An examination of the books of
defendant Aguas made before a
Commissioner reveals that during the
period that Aguas was manufacturing
and selling tiles similar to plaintiff's, he
made a gross income of P3,340.33,
which can be safely be considered the
amount by which he enriched himself
when he infringed plaintiff's patent.
Under Sec. 42 of the Patent Law any
patentee whose rights have been
infringed is entitled to damages which,
according to the circumstances of the
case may be in a sum above the amount
found as actual damages sustained
provided the award does not exceed
three times the amount of such actual
damages. Considering the wantonness
of the infringement committed by the
defendants who knew all the time about
the existence of plaintiff's patent, the
Court feels there is reason to grant
plaintiff maximum damages in the sum
of P10,020.99. And in order to
discourage patent infringements and to
give more teeth to the provisions of the
patent law thus promoting a stronger
public policy committed to afford greater
incentives and protection to inventors,
the Court hereby awards plaintiff
exemplary damages in the sum of
P5,000.00 to be paid jointly and
severally by defendants. Considering
the status of plaintiff as a reputable
businessman, and owner of the likewise
reputed House of Pre-Cast, he is
entitled to an award of moral damages
in the sum of P50,000.00. 23
In reducing the amount of moral damages the Court of
Appeals said:
As regards the question of moral
damages it has been shown that as a
result of the unlawful acts of infringment
committed by defendants, plaintiff was
unstandably very sad; he worried and
became nervous and lost concentration
on his work in connection with his tile
business (pp. 28, 30, t.s.n., Feb. 28,
1964). In addition, plaintiff's character
and reputation have been unnecessarily
put in question because defendants, by
their acts of infringement have created a
doubt or suspicion in the public mind
concerning the truth and honesty of
plaintiff's advertisements and public
announcements of his valid patent.
Necessarily, said acts of defendants
have caused plaintiff considerable
mental suffering, considering especially,
the fact that he staked everything on his
pre-cast tile business (p. 36, t.s.n., Id.)
The wantonness and evident bad faith
characterizing defendants' prejudicial
acts against plaintiff justify the
assessment of moral damages in
plaintiff's favor, though we do not believe
the amount of P50,000.00 awarded by
the lower court is warranted by the
circumstances. We feel that said amount
should be reduced to P3,000.00 by way
of compensating appellee for his moral
suffering. "Willful injury to property may
be a legal ground for awarding moral
damages if the court should find that,
under the circumstances such damages
are justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages
and attorneys fees awarded by the trial court as modified
by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in
CA G.R. No. 37824-R appealed from is hereby affirmed,
without pronouncement as to costs.
SO ORDERED.

Diamond v. Chakrabarty, 447 U.S. 303 (1980)

CERTIORARI TO THE UNITED STATES COURT OF

CUSTOMS

AND PATENT APPEALS

Syllabus

Title 35 U.S.C. § 101 provides for the issuance of a

patent to a person who invents or discovers "any" new
and useful "manufacture" or "composition of matter."
Respondent filed a patent application relating to his
invention of a human-made, genetically engineered
bacterium capable of breaking down crude oil, a property
which is possessed by no naturally occurring bacteria. A
patent examiner's rejection of the patent application's
claims for the new bacteria was affirmed by the Patent
Office Board of Appeals on the ground that living things
are not patentable subject matter under § 101. The Court
of Customs and Patent Appeals reversed, concluding
that the fact that micro-organisms are alive is without
legal significance for purposes of the patent law.

Held: A live, human-made micro-organism is patentable

subject matter under § 101. Respondent's micro-
organism constitutes a "manufacture" or "composition of
matter" within that statute. Pp. 447 U. S. 308-318.

(a) In choosing such expansive terms as "manufacture"

and "composition of matter," modified by the
comprehensive "any," Congress contemplated that the
patent laws should be given wide scope, and the
relevant legislative history also supports a broad
construction. While laws of nature, physical phenomena,
and abstract ideas are not patentable, respondent's
claim is not to a hitherto unknown natural phenomenon,
but to a nonnaturally occurring manufacture or
composition of matter -- a product of human ingenuity
"having a distinctive name, character [and]
use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S.
615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333
U. S. 127, distinguished. Pp. 447 U. S. 308-310.

(b) The passage of the 1930 Plant Patent Act, which

afforded patent protection to certain asexually
reproduced plants, and the 1970 Plant Variety Protection
Act, which authorized protection for certain sexually
reproduced plants but excluded bacteria from its
protection, does not evidence congressional
understanding that the terms "manufacture" or
"composition of matter" in § 101 do not include living
things. Pp. 447 U. S. 310-314.
Page 447 U. S. 304
(c) Nor does the fact that genetic technology was
unforeseen when Congress enacted § 101 require the
conclusion that micro-organisms cannot qualify as
patentable subject matter until Congress expressly
authorizes such protection. The unambiguous language
of § 101 fairly embraces respondent's invention.
Arguments against patentability under § 101, based on
potential hazards that may be generated by genetic
research, should be addressed to the Congress and the
Executive, not to the Judiciary. Pp. 447 U. S. 314-318.
596 F.2d 952, affirmed.
BURGER, C J., delivered the opinion of the Court, in
which STEWART, BLACKMUN, REHNQUIST, and
STEVENS, JJ., joined. BRENNAN, J., filed a dissenting
opinion, in which WHITE, MARSHALL, and POWELL,
JJ., joined, post, p. 447 U. S. 318.
Page 447 U. S. 305
MR. CHIEF JUSTICE BURGER delivered the opinion of
the Court.
We granted certiorari to determine whether a live,
human-made micro-organism is patentable subject
matter under 35 U.S.C. § 101.
I
In 1972, respondent Chakrabarty, a microbiologist, filed
a patent application, assigned to the General Electric Co.
The application asserted 36 claims related to
Chakrabarty's invention of
"a bacterium from the genus Pseudomons containing
therein at least two stable energy-generating plasmids,
each of said plasmids providing a separate hydrocarbon
degradative pathway. [Footnote 1]"
This human-made, genetically engineered bacterium is
capable of breaking down multiple components of crude
oil. Because of this property, which is possessed by no
naturally occurring bacteria, Chakrabarty's invention is
believed to have significant value for the treatment of oil
spills. [Footnote 2]
Chakrabarty's patent claims were of three types: first,
process claims for the method of producing the bacteria;
Page 447 U. S. 306
second, claims for an inoculum comprised of a carrier
material floating on water, such as straw, and the new
bacteria; and third, claims to the bacteria themselves.
The patent examiner allowed the claims falling into the
first two categories, but rejected claims for the bacteria.
His decision rested on two grounds: (1) that micro-
organisms are "products of nature," and (2) that, as living
things, they are not patentable subject matter under 35
U.S.C. § 101.
Chakrabarty appealed the rejection of these claims to
the Patent Office Board of Appeals, and the Board
affirmed the examiner on the second ground. [Footnote
3] Relying on the legislative history of the 1930 Plant
Patent Act, in which Congress extended patent
protection to certain asexually reproduced plants, the
Board concluded that § 101 was not intended to cover
living things such as these laboratory created micro-
organisms.
The Court of Customs and Patent Appeals, by a divided
vote, reversed on the authority of its prior decision in In
re Bergy, 563 F.2d 1031, 1038 (1977), which held that
"the fact that micro-organisms . . . are alive . . . [is]
without legal significance" for purposes of the patent law.
[Footnote 4] Subsequently, we granted the Acting
Commissioner of Patents and Trademarks' petition for
certiorari in Bergy, vacated the judgment, and remanded
the case "for further consideration in light of Parker v.
Flook, 437 U. S. 584 (1978)." 438 U.S. 902 (1978). The
Court of Customs and Patent Appeals then vacated its
judgment in Chakrabarty and consolidated the case
with Bergy for reconsideration. After reexamining both
cases in the light of our holding in Flook, that court, with
one dissent, reaffirmed its earlier judgments. 596 F.2d
952 (1979).
Page 447 U. S. 307
The Commissioner of Patents and Trademarks again
sought certiorari, and we granted the writ as to both
Bergy and Chakrabarty. 444 U.S. 924 (1979). Since
then, Bergy has been dismissed as moot, 444 U.S. 1028
(1980), leaving only Chakrabarty for decision.
II
The Constitution grants Congress broad power to
legislate to
"promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and
Discoveries."
Art. I, § 8, cl. 8. The patent laws promote this progress
by offering inventors exclusive rights for a limited period
as an incentive for their inventiveness and research
efforts. Kewanee Oil Co. v. Bicron Corp., 416 U. S.
470, 416 U. S. 480-481 (1974); Universal Oil Co. v.
Globe Co., 322 U. S. 471, 322 U. S. 484 (1944). The
authority of Congress is exercised in the hope that
"[t]he productive effort thereby fostered will have a
positive effect on society through the introduction of new
products and processes of manufacture into the
economy, and the emanations by way of increased
employment and better lives for our citizens."
Kewanee, supra, at 416 U. S. 480.
The question before us in this case is a narrow one of
statutory interpretation requiring us to construe 35
U.S.C. § 101, which provides:
"Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and
requirements of this title."
Specifically, we must determine whether respondent's
micro-organism constitutes a "manufacture" or
"composition of matter" within the meaning of the statute.
[Footnote 5]
Page 447 U. S. 308
III
In cases of statutory construction we begin, of course,
with the language of the statute. Southeastern
Community College v. Davis, 442 U. S. 397, 442 U. S.
405 (1979). And "unless otherwise defined, words will be
interpreted as taking their ordinary, contemporary,
common meaning." Perrin v. United States, 444 U. S.
37, 444 U. S. 42 (1979). We have also cautioned that
courts "should not read into the patent laws limitations
and conditions which the legislature has not
expressed." United States v. Dubilier Condenser
Corp., 289 U. S. 178, 289 U. S. 199 (1933) .
Guided by these canons of construction, this Court has
read the term "manufacture" in § 101 in accordance with
its dictionary definition to mean
"the production of articles for use from raw or prepared
materials by giving to these materials new forms,
qualities, properties, or combinations, whether by hand
labor or by machinery."
American Fruit Growers, Inc. v. Brogdex Co., 283 U. S.
1, 283 U. S. 11 (1931). Similarly, "composition of matter"
has been construed consistent with its common usage to
include
"all compositions of two or more substances and . . . all
composite articles, whether they be the results of
chemical union, or of mechanical mixture, or whether
they be gases, fluids, powders or solids."
Shell Development Co. v. Watson, 149 F. Supp. 279,
280 (DC 1957) (citing 1 A. Deller, Walker on Patents §
14, p. 55 (1st ed.1937)). In choosing such expansive
terms as "manufacture" and "composition of matter,"
modified by the comprehensive "any," Congress plainly
contemplated that the patent laws would be given wide
scope.
The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by
Thomas Jefferson, defined statutory subject matter as
"any new and useful art, machine, manufacture, or
composition of matter, or any new or useful improvement
[thereof]." Act of Feb. 21, 1793, § 1, 1 Stat. 319. The Act
embodied Jefferson's philosophy that "ingenuity should
receive a liberal encouragement."
Page 447 U. S. 309
5 Writings of Thomas Jefferson 75-76 (Washington ed.
1871). See Graham v. John Deere Co., 383 U. S. 1, 383
U. S. 7-10 (1966). Subsequent patent statutes in 1836,
1870, and 1874 employed this same broad language. In
1052, when the patent laws were recodified, Congress
replaced the word "art" with "process," but otherwise left
Jefferson's language intact. The Committee Reports
accompanying the 1952 Act inform us that Congress
intended statutory subject matter to "include anything
under the sun that is made by man." S Rep. No 1979,
82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d
Cong., 2d Sess., 6 (1952). [Footnote 6]
This is not to suggest that § 101 has no limits, or that it
embraces every discovery. The laws of nature, physical
phenomena, and abstract ideas have been held not
patentable. See Parker v. Flook, 437 U. S.
584 (1978); Gottschalk v. Benson, 409 U. S. 63, 409 U.
S. 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant
Co., 333 U. S. 127, 333 U. S. 130 (1948); O'Reilly v.
Morse, 15 How. 62, 56 U. S. 112-121 (1854); Le Roy v.
Tatham, 14 How. 156, 55 U. S. 175 (1853). Thus, a new
mineral discovered in the earth or a new plant found in
the wild is not patentable subject matter. Likewise,
Einstein could not patent his celebrated law that E=mc2;
nor could Newton have patented the law of gravity. Such
discoveries are "manifestations of . . . nature, free to all
men and reserved exclusively to none." Funk,
supra at 333 U. S. 130.
Judged in this light, respondent's micro-organism plainly
qualifies as patentable subject matter. His claim is not to
a hitherto unknown natural phenomenon, but to a
nonnaturally occurring manufacture or composition of
matter -- a product of human ingenuity "having a
distinctive name, character [and]
Page 447 U. S. 310
use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S.
615 (1887). The point is underscored dramatically by
comparison of the invention here with that
in Funk. There, the patentee had discovered that there
existed in nature certain species of root nodule bacteria
which did not exert a mutually inhibitive effect on each
other. He used that discovery to produce a mixed culture
capable of inoculating the seeds of leguminous plants.
Concluding that the patentee had discovered "only some
of the handiwork of nature," the Court ruled the product
nonpatentable:
"Each of the species of root-nodule bacteria contained in
the package infects the same group of leguminous
plants which it always infected. No species acquires a
different use. The combination of species produces no
new bacteria, no change in the six species of bacteria,
and no enlargement of the range of their utility. Each
species has the same effect it always had. The bacteria
perform in their natural way. Their use in combination
does not improve in any way their natural functioning.
They serve the ends nature originally provided, and act
quite independently of any effort of the patentee."
333 U.S. at 333 U. S. 131. Here, by contrast, the
patentee has produced a new bacterium with markedly
different characteristics from any found in nature, and
one having the potential for significant utility. His
discovery is not nature's handiwork, but his own;
accordingly it is patentable subject matter under § 101.
IV
Two contrary arguments are advanced, neither of which
we find persuasive.
(A)
The petitioner's first argument rests on the enactment of
the 1930 Plant Patent Act, which afforded patent
protection to certain asexually reproduced plants, and
the 1970 Plant
Page 447 U. S. 311
Variety Protection Act, which authorized protection for
certain sexually reproduced plants but excluded bacteria
from its protection. [Footnote 7] In the petitioner's view,
the passage of these Acts evidences congressional
understanding that the terms "manufacture" or
"composition of matter" do not include living things; if
they did, the petitioner argues, neither Act would have
been necessary.
We reject this argument. Prior to 1930, two factors were
thought to remove plants from patent protection. The first
was the belief that plants, even those artificially bred,
were products of nature for purposes of the patent law.
This position appears to have derived from the decision
of the Patent Office in Ex parte Latimer, 1889
Dec.Com.Pat 123, in which a patent claim for fiber found
in the needle of the Pinus australis was rejected. The
Commissioner reasoned that a contrary result would
permit "patents [to] be obtained upon the trees of the
forest and the plants of the earth, which of course would
be unreasonable and impossible." Id. at 126.
The Latimer case, it seems, came to "se[t] forth the
general stand taken in these matters" that plants were
natural products not subject to patent protection. Thorne,
Relation of Patent Law to Natural Products, 6
J.Pat.Off.Soc. 23, 24
Page 447 U. S. 312
(1923). [Footnote 8] The second obstacle to patent
protection for plants was the fact that plants were
thought not amenable to the "written description"
requirement of the patent law. See 35 U.S.C. § 112.
Because new plants may differ from old only in color or
perfume, differentiation by written description was often
impossible. See Hearings on H.R. 11372 before the
House Committee on Patents, 71st Cong., 2d Sess., 7
(1930) (memorandum of Patent Commissioner
Robertson).
In enacting the Plant Patent Act, Congress addressed
both of these concerns. It explained at length its belief
that the work of the plant breeder "in aid of nature" was
patentable invention. S.Rep. No. 315, 71st Cong., 2d
Sess., 8 (1930); H.R.Rep. No. 1129, 71st Cong., 2d
Sess., 7-9 (1930). And it relaxed the written description
requirement in favor of "a description . . . as complete as
is reasonably possible." 35 U.S.C. § 162. No Committee
or Member of Congress, however, expressed the
broader view, now urged by the petitioner, that the terms
"manufacture" or "composition of matter" exclude living
things. The sole support for that position in the legislative
history of the 1930 Act is found in the conclusory
statement of Secretary of Agriculture Hyde, in a letter to
the Chairmen of the House and Senate Committees
considering the 1930 Act, that "the patent laws . . . at the
present time are understood to cover only inventions or
discoveries in the field of inanimate nature." See S.Rep.
No. 315, supra at Appendix A; H.R.Rep. No.
1129, supra at Appendix A. Secretary Hyde's opinion,
however, is not entitled to controlling weight. His views
were solicited on the administration of the new law. and
not on the scope of patentable
Page 447 U. S. 313
subject matter -- an area beyond his competence.
Moreover, there is language in the House and Senate
Committee Reports suggesting that, to the extent
Congress considered the matter, it found the Secretary's
dichotomy unpersuasive. The Reports observe:
"There is a clear and logical distinction between the
discovery of a new variety of plant and of certain
inanimate things, such, for example, as a new and useful
natural mineral. The mineral is created wholly by nature
unassisted by man. . . . On the other hand, a plant
discovery resulting from cultivation is unique, isolated,
and is not repeated by nature, nor can it be reproduced
by nature unaided by man. . . ."
S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at
7 (emphasis added). Congress thus recognized that the
relevant distinction was not between living and inanimate
things, but between products of nature, whether living or
not, and human-made inventions. Here, respondent's
micro-organism is the result of human ingenuity and
research. Hence, the passage of the Plant Patent Act
affords the Government no support.
Nor does the passage of the 1970 Plant Variety
Protection Act support the Government's position. As the
Government acknowledges, sexually reproduced plants
were not included under the 1930 Act because new
varieties could not be reproduced true-to-type through
seedlings. Brief for Petitioner 27, n. 31. By 1970,
however, it was generally recognized that true-to-type
reproduction was possible, and that plant patent
protection was therefore appropriate. The 1970 Act
extended that protection. There is nothing in its language
or history to suggest that it was enacted because § 101
did not include living things.
In particular, we find nothing in the exclusion of bacteria
from plant variety protection to support the petitioner's
position. See n 7, supra. The legislative history gives no
reason for this exclusion. As the Court of Customs and
Page 447 U. S. 314
Patent Appeals suggested, it may simply reflect
congressional agreement with the result reached by that
court in deciding In re Arzberger, 27 C.C.P.A.(Pat.)
1315, 112 F.2d 834 (1940), which held that bacteria
were not plants for the purposes of the 1930 Act. Or it
may reflect the fact that, prior to 1970, the Patent Office
had issued patents for bacteria under § 101. [Footnote 9]
In any event, absent some clear indication that Congress
"focused on [the] issues . . . directly related to the one
presently before the Court," SEC v. Sloan, 436 U. S.
103, 436 U. S. 120-121 (1978), there is no basis for
reading into its actions an intent to modify the plain
meaning of the words found in § 101. See TVA v.
Hill, 437 U. S. 153, 437 U. S. 189-193 (1978); United
States v. Price, 361 U. S. 304, 361 U. S. 313 (1960).
(B)
The petitioner's second argument is that micro-
organisms cannot qualify as patentable subject matter
until Congress expressly authorizes such protection. His
position rests on the fact that genetic technology was
unforeseen when Congress enacted § 101. From this it
is argued that resolution of the patentability of inventions
such as respondent's should be left to Congress. The
legislative process, the petitioner argues, is best
equipped to weigh the competing economic, social, and
scientific considerations involved, and to determine
whether living organisms produced by genetic
engineering should receive patent protection. In support
of this position, the petitioner relies on our recent holding
in Parker v. Flook, 437 U. S. 584 (1978), and the
statement that the judiciary "must proceed cautiously
when . . . asked to extend
Page 447 U. S. 315
patent rights into areas wholly unforeseen by
Congress." Id. at 437 U. S. 596.
It is, of course, correct that Congress, not the courts,
must define the limits of patentability; but it is equally
true that, once Congress has spoken, it is "the province
and duty of the judicial department to say what the law
is." Marbury v. Madison, 1 Cranch 137, 5 U. S.
177 (1803). Congress has performed its constitutional
role in defining patentable subject matter in § 101; we
perform ours in construing the language Congress has
employed. In so doing, our obligation is to take statutes
as we find them, guided, if ambiguity appears, by the
legislative history and statutory purpose. Here, we
perceive no ambiguity. The subject matter provisions of
the patent law have been cast in broad terms to fulfill the
constitutional and statutory goal of promoting "the
Progress of Science and the useful Arts" with all that
means for the social and economic benefits envisioned
by Jefferson. Broad general language is not necessarily
ambiguous when congressional objectives require broad
terms.
Nothing in Flook is to the contrary. That case applied our
prior precedents to determine that a "claim for an
improved method of calculation, even when tied to a
specific end use, is unpatentable subject matter under §
101." 437 U.S. at 437 U. S. 595, n. 18. The Court
carefully scrutinized the claim at issue to determine
whether it was precluded from patent protection under
"the principles underlying the prohibition against patents
for ideas' or phenomena of nature." Id.  at  437 U. S. 593.
We have done that here. Flook did not announce a new
principle that inventions in areas not contemplated by
Congress when the patent laws were enacted are
unpatentable  per se.
To read that concept into Flook would frustrate the
purposes of the patent law. This Court frequently has
observed that a statute is not to be confined to the
"particular application[s] . . . contemplated by the
legislators." Barr v. United States, 324 U. S. 83, 324 U.
S. 90 (1945). Accord, Browder v. United States, 312 U.
S. 335, 312 U. S. 339 (1941); Puerto Rico v. Shell Co.,
Page 447 U. S. 316
302 U. S. 253, 302 U. S. 257 (1937). This is especially
true in the field of patent law. A rule that unanticipated
inventions are without protection would conflict with the
core concept of the patent law that anticipation
undermines patentability. See Graham v. John Deere
Co., 383 U.S. at 383 U. S. 12-17. Mr. Justice Douglas
reminded that the inventions most benefiting mankind
are those that "push back the frontiers of chemistry.
physics, and the like." Great A. & P. Tea Co. v.
Supermarket Corp., 340 U. S. 147, 340 U. S. 154 (1950)
(concurring opinion). Congress employed broad general
language in drafting § 101 precisely because such
inventions are often unforeseeable. [Footnote 10]
To buttress his argument, the petitioner, with the support
of amicus, points to grave risks that may be generated
by research endeavors such as respondent's. The briefs
present a gruesome parade of horribles. Scientists,
among them Nobel laureates, are quoted suggesting that
genetic research may pose a serious threat to the
human race, or, at the very least, that the dangers are
far too substantial to permit such research to proceed
apace at this time. We are told that genetic research and
related technological developments may spread pollution
and disease, that it may result in a loss of genetic
diversity, and that its practice may tend to depreciate the
value of human life. These arguments are forcefully,
even passionately, presented; they remind us that, at
times, human ingenuity seems unable to control fully the
forces it creates -- that, with Hamlet, it is sometimes
better "to bear those ills we have than fly to others that
we know not of."
It is argued that this Court should weigh these potential
hazards in considering whether respondent's invention is
Page 447 U. S. 317
patentable subject matter under § 101. We disagree.
The grant or denial of patents on micro-organisms is not
likely to put an end to genetic research or to its attendant
risks. The large amount of research that has already
occurred when no researcher had sure knowledge that
patent protection would be available suggests that
legislative or judicial fiat as to patentability will not deter
the scientific mind from probing into the unknown any
more than Canute could command the tides. Whether
respondent's claims are patentable may determine
whether research efforts are accelerated by the hope of
reward or slowed by want of incentives, but that is all.
What is more important is that we are without
competence to entertain these arguments -- either to
brush them aside as fantasies generated by fear of the
unknown or to act on them. The choice we are urged to
make is a matter of high policy for resolution within the
legislative process after the kind of investigation,
examination, and study that legislative bodies can
provide and courts cannot. That process involves the
balancing of competing values and interests, which, in
our democratic system, is the business of elected
representatives. Whatever their validity, the contentions
now pressed on us should be addressed to the political
branches of the Government, the Congress and the
Executive, and not to the courts. [Footnote 11]
Page 447 U. S. 318
We have emphasized in the recent past that
"[o]ur individual appraisal of the wisdom or unwisdom of
a particular [legislative] course . . . is to be put aside in
the process of interpreting a statute."
TVA v. Hill, 437 U.S. at 437 U. S. 194. Our task, rather,
is the narrow one of determining what Congress meant
by the words it used in the statute; once that is done, our
powers are exhausted. Congress is free to amend § 101
so as to exclude from patent protection organisms
produced by genetic engineering. Cf. 42 U.S.C. §
2181(a), exempting from patent protection inventions
"useful solely in the utilization of special nuclear material
or atomic energy in an atomic weapon." Or it may
choose to craft a statute specifically designed for such
living things. But, until Congress takes such action, this
Court must construe the language of § 101 as it is. The
language of that section fairly embraces respondent's
invention.
Accordingly, the judgment of the Court of Customs and
Patent Appeals is
Affirmed.
[Footnote 1]
Plasmids are hereditary units physically separate from
the chromosomes of the cell. In prior research,
Chakrabarty and an associate discovered that plasmids
control the oil degradation abilities of certain bacteria. In
particular, the two researchers discovered plasmids
capable of degrading camphor and octane, two
components of crude oil. In the work represented by the
patent application at issue here, Chakrabarty discovered
a process by which four different plasmids, capable of
degrading four different oil components, could be
transferred to and maintained stably in a single
Pseudomonas bacterium, which itself has no capacity for
degrading oil.
[Footnote 2]
At present, biological control of oil spills requires the use
of a mixture of naturally occurring bacteria, each capable
of degrading one component of the oil complex. In this
way, oil is decomposed into simpler substances which
can serve as food for aquatic life. However, for various
reasons, only a portion of any such mixed culture
survives to attack the oil spill. By breaking down multiple
components of oil, Chakrabarty's microorganism
promises more efficient and rapid oil-spill control.
[Footnote 3]
The Board concluded that the new bacteria were not
"products of nature," because Pseudomonas bacteria
containing two or more different energy-generating
plasmids are not naturally occurring.
[Footnote 4]
Bergy involved a patent application for a pure culture of
the microorganism Streptomuces vellosus found to be
useful in the production of lincomycin, an antibiotic.
[Footnote 5]
This case does not involve the other "conditions and
requirements" of the patent laws, such as novelty and
nonobviousness. 35 U.S.C. §§ 102, 103.
[Footnote 6]
This same language was employed by P. J. Federico, a
principal draftsman of the 1952 recodification, in his
testimony regarding that legislation:
"[U]nder section 101, a person may have invented a
machine or a manufacture, which may include anything
under the sun that is made by man. . . ."
Hearings on H.R. 3760 before Subcommittee No. 3 of
the House Committee on the Judiciary, 82d Cong., 1st
Sess., 37 (1951).
[Footnote 7]
The Plant Patent Act of 1930, 35 U.S.C. § 161, provides
in relevant part:
"Whoever invents or discovers and asexually reproduces
any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings,
other than a tuber propagated plant or a plant found in
an uncultivated state, may obtain a patent therefor. . . ."
The Plant Variety Protection Act of 1970, provides in
relevant part:
"The breeder of any novel variety of sexually reproduced
plant (other than fungi, bacteria, or first generation
hybrids) who has so reproduced the variety, or his
successor in interest, shall be entitled to plant variety
protection therefor. . . ."
84 Stat. 1547, 7 U.S.C. § 2402(a). See generally 3 A.
Deller, Walker on Patents, ch. IX (2d ed.1964); R. Allyn,
The First Plant Patents (1934).
[Footnote 8]
Writing three years after the passage of the 1930 Act, R.
Cook, Editor of the Journal of Heredity, commented:
"It is a little hard for plant men to understand why [Art. I,
§ 8] of the Constitution should not have been earlier
construed to include the promotion of the art of plant
breeding. The reason for this is probably to be found in
the principle that natural products are not patentable."
Florists Exchange and Horticultural Trade World, July
15, 1933, p. 9.
[Footnote 9]
In 1873, the Patent Office granted Louis Pasteur a
patent on "yeast, free from organic germs of disease, as
an article of manufacture." And in 1967 and 1968,
immediately prior to the passage of the Plant Variety
Protection Act, that Office granted two patents which, as
the petitioner concedes, state claims for living micro-
organisms. See Reply Brief for Petitioner 3, and n. 2.
[Footnote 10]
Even an abbreviated list of patented inventions
underscores the point: telegraph (Morse, No. 1,647);
telephone (Bell, No. 174,465); electric lamp (Edison, No.
223,898); airplane (the Wrights, No. 821,393); transistor
(Bardeen & Brattain, No. 2,524,035); neutronic reactor
(Fermi & Szilard, No. 2,708,656); laser (Schawlow &
Townes, No. 2,929,922). See generally Revolutionary
Ideas, Patents & Progress in America, United States
Patent and Trademark Office (1976).
[Footnote 11]
We are not to be understood as suggesting that the
political branches have been laggard in the consideration
of the problems related to genetic research and
technology. They have already taken action. In 1976, for
example, the National Institutes of Health released
guidelines for NIH-sponsored genetic research which
established conditions under which such research could
be performed. 41 Fed.Reg. 27902. In 1978, those
guidelines were revised and relaxed. 43 Fed.Reg.
60080, 60108, 60134. And Committees of the Congress
have held extensive hearings on these matters. See,
e.g., Hearings on Genetic Engineering before the
Subcommittee on Health of the Senate Committee on
Labor and Public Welfare, 94th Cong., 1st Sess. (1975);
Hearings before the Subcommittee on Science,
Technology, and Space of the Senate Committee on
Commerce, Science, and Transportation, 95th Cong.,
1st Sess. (1977); Hearings on H.R. 4759 et al. before
the Subcommittee on Health and the Environment of the
House Committee on Interstate and Foreign Commerce,
95th Cong., 1st Sess. (1977).
MR. JUSTICE BRENNAN, with whom MR. JUSTICE
WHITE, MR. JUSTICE MARSHALL, and MR. JUSTICE
POWELL join, dissenting.
I agree with the Court that the question before us is a
narrow one. Neither the future of scientific research, nor
even the ability of respondent Chakrabarty to reap some
monopoly profits from his pioneering work, is at stake.
Patents on the processes by which he has produced and
employed the new living organism are not contested.
The only question we need decide is whether Congress,
exercising its authority under Art. I, § 8, of the
Constitution, intended that he be able to secure a
monopoly on the living organism itself, no matter how
produced or how used. Because I believe the Court has
misread the applicable legislation, I dissent.
Page 447 U. S. 319
The patent laws attempt to reconcile this Nation's deep-
seated antipathy to monopolies with the need to
encourage progress. Deepsouth Packing Co. v. Laitram
Corp., 406 U. S. 518, 406 U. S. 530-531 (1972); Graham
v. John Deere Co., 383 U. S. 1, 383 U. S. 7-10 (1966).
Given the complexity and legislative nature of this
delicate task, we must be careful to extend patent
protection no further than Congress has provided. In
particular, were there an absence of legislative direction,
the courts should leave to Congress the decisions
whether and how far to extend the patent privilege into
areas where the common understanding has been that
patents are not available. [Footnote 2/1] Cf. Deepsouth
Packing Co. v. Laitram Corp., supra.
In this case, however, we do not confront a complete
legislative vacuum. The sweeping language of the
Patent Act of 1793, as reenacted in 1952, is not the last
pronouncement Congress has made in this area. In
1930, Congress enacted the Plant Patent Act affording
patent protection to developers of certain asexually
reproduced plants. In 1970, Congress enacted the Plant
Variety Protection Act to extend protection to certain new
plant varieties capable of sexual reproduction. Thus, we
are not dealing -- as the Court would have it -- with the
routine problem of "unanticipated
inventions." Ante at 447 U.S. 316. In these two Acts,
Congress has addressed the general problem of
patenting animate inventions and has chosen carefully
limited language granting protection to some kinds of
discoveries, but specifically excluding others. These Acts
strongly evidence a congressional limitation that
excludes bacteria from patentability. [Footnote 2/2]
Page 447 U. S. 320
First, the Acts evidence Congress' 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 included in the scope of the 1930 and 1970 Acts
could have been patented without new legislation. Those
plants, like the bacteria involved in this case, were new
varieties not naturally occurring. [Footnote 2/3] Although
the Court, ante at 447 U. S. 311, rejects this line of
argument, it does not explain why the Acts were
necessary unless to correct a preexisting situation.
[Footnote 2/4] I cannot share the Court's implicit
assumption that Congress was engaged in either idle
exercises or mere correction of the public record when it
enacted the 1930 and 1970 Acts. And Congress
certainly thought it was doing something significant. The
Committee Reports contain expansive prose about the
previously unavailable benefits to be derived from
extending patent protection to plants. [Footnote 2/5]
H.R.Rep.
Page 447 U. S. 321
No. 91-1605, pp. 1-3 (1970); S.Rep. No. 315, 71st
Cong., 2d Sess., 1-3 (1930). Because Congress thought
it had to legislate in order to make agricultural "human-
made inventions" patentable, and because the
legislation Congress enacted is limited, it follows that
Congress never meant to make items outside the scope
of the legislation patentable.
Second, the 1970 Act clearly indicates that Congress
has included bacteria within the focus of its legislative
concern, but not within the scope of patent protection.
Congress specifically excluded bacteria from the
coverage of the 1970 Act. 7 U.S.C. § 2402(a). The
Court's attempts to supply explanations for this explicit
exclusion ring hollow. It is true that there is no mention in
the legislative history of the exclusion, but that does not
give us license to invent reasons. The fact is that
Congress, assuming that animate objects as to which it
had not specifically legislated could not be patented,
excluded bacteria from the set of patentable organisms.
The Court protests that its holding today is dictated by
the broad language of § 101, which cannot "be confined
to the particular application[s] . . . contemplated by the
legislators.'" Ante at 447 U. S. 315, quoting  Barr v.
United States, 324 U. S. 83, 324 U. S. 90 (1945). But as
I have shown, the Court's decision does not follow the
unavoidable implications of the statute. Rather, it
extends the patent system to cover living material
Page 447 U. S. 322
even though Congress plainly has legislated in the belief
that § 101 does not encompass living organisms. It is
the role of Congress, not this Court, to broaden or
narrow the reach of the patent laws. This is especially
true where, as here, the composition sought to be
patented uniquely implicates matters of public concern.
[Footnote 2/1]
I read the Court to admit that the popular conception,
even among advocates of agricultural patents, was that
living organisms were unpatentable. See ante at 447 U.
S. 311-312, and n. 8.
[Footnote 2/2]
But even if I agreed with the Court that the 1930 and
1970 Acts were not dispositive, I would dissent. This
case presents even more cogent reasons
than Deepsouth Packing Co. not to extend the patent
monopoly in the face of uncertainty. At the very least,
these Acts are signs of legislative attention to the
problems of patenting living organisms, but they give no
affirmative indication of congressional intent that bacteria
be patentable. The caveat of Parker v. Flook, 437 U. S.
584, 437 U. S. 596 (1978), an admonition to "proceed
cautiously when we are asked to extend patent rights
into areas wholly unforeseen by Congress," therefore
becomes pertinent. I should think the necessity for
caution is that much greater when we are asked to
extend patent rights into areas Congress has foreseen
and considered, but has not resolved.

[Footnote 2/3]

The Court refers to the logic employed by Congress in

choosing not to perpetuate the "dichotomy" suggested
by Secretary Hyde. Ante at 447 U. S. 313. But by this
logic, the bacteria at issue here are distinguishable from
a "mineral . . . created wholly by nature" in exactly the
same way as were the new varieties of plants. If a new
Act was needed to provide patent protection for the
plants, it was equally necessary for bacteria. Yet
Congress provided for patents on plants, but not on
these bacteria. In short, Congress decided to make only
a subset of animate "human-made
inventions," ibid., patentable.

[Footnote 2/4]

If the 1930 Act's only purpose were to solve the technical

problem of description referred to by the
Court, ante at 447 U. S. 312, most of the Act, and in
particular its limitation to asexually reproduced plants,
would have been totally unnecessary.

[Footnote 2/5]

Secretary Hyde's letter was not the only explicit

indication in the legislative history of these Acts that
Congress was acting on the assumption that legislation
was necessary to make living organisms patentable. The
Senate Judiciary Committee Report on the 1970 Act
states the Committee's understanding that patent
protection extended no further than the explicit
provisions of these Acts:

"Under the patent law, patent protection is limited to

those varieties of plants which reproduce asexually, that
is, by such methods as grafting or budding. No
protection is available to those varieties of plants which
reproduce sexually, that is, generally by seeds."

S.Rep. No. 91-1246, p. 3 (1970). Similarly,

Representative Poage, speaking for the 1970 Act, after
noting the protection accorded asexually developed
plants, stated that, "for plants produced from seed, there
has been no such protection." 116 Cong.Rec. 40295
(1970).