LOTHAR SCHUARTZ, etc. vs.

THE HONORABLE COURT OF APPEALS

(SPECIAL FIFTH DIVISION) and THE BUREAU OF PATENTS,
TRADEMARKS AND TECHNOLOGY TRANSFER
GR No. 113407, July 12, 2000

Facts:

Petitioners applied for registration of patents to the Bureau of Patents

& Trademark through the law firm Siguion Reyna, Montecillo and Ongsiako.

For lack of some requirements, the law firm was informed through
correspondence called “office actions.” However, for failure to respond to the
office actions within the prescribed time which is 4 months from the date of
the office action, notices of abandonment were sent to each applicant.

Said notices of abandonment were discovered when the law firm made
an inventory of documents from the lawyers entrusted with patent
application. By the time they filed a petition to revive the patent
applications, a period of more than 4 months had elapsed from the time of
the date of abandonment.

The Director of Bureau of Patents denied the petition for revival

because they were filed out of time. On appeal, the CA dismissed the
petition for review for it was filed beyond the 15-day reglementary period to
appeal.

Issue: Granting their appeal was done within the reglementary period,
can petitioners’ revival of their patent applications be given due course?

Ruling:

No. The petition to revive the patent applications should be denied.

The applicable Rules of Practice in Patent cases at that time provides:

“Section 111. Abandonment for failure to respond within time limit.

(a) If an applicant fails to prosecute his application within four months after
the date when the last official notice of any action by the Office was mailed
to him, or within such shorter time as may be fixed (Rule 112), the
application will become abandoned.”

Still, an abandoned application may be given due course as provided in

the said rule, to wit:
 “Section 113. Revival of abandoned application.- An application
abandoned for failure to prosecute may be revived as a pending application
within four months from the date of abandonment upon good cause shown,
upon the payment of the required fee and upon tender of the proposed
response to the last office action. An application not revived within the
specified period shall be deemed forfeited.”

In the case at bar, the patent lawyers failed to act on the office actions
sent to them and so their applications were deemed abandoned after the
lapse of 4 months from the sending of the office actions. They also failed to
revive the application within the 4-month period from the date of
abandonment. Hence, their applications are deemed forfeited by the time
they filed the petition to revive the applications.

PARKE DAVIS & CO v DOCTOR’S PHARMACEUTICALS

G.R. No. L-22221. August 31, 1965

FACTS:

Parke Davies and Company is an owner of a Patent entitled "Process

for the Manufacturing of Antibiotics" (Letters Patent No. 50) which was
issued by the Philippine Patent Office on February 9, 1950. The patent
relates to a chemical compound represented by a formula commonly called
chloramphenicol. The patent contains ten claims, nine of which are process
claims, and the other is a product claim to the chemical substance
chloramphenicol.

Doctors’ Pharmaceuticals Inc. requested that it be granted a voluntary

license to manufacture and produce our own brand of medicine, containing
chloramphenicol, and to use, sell, distribute, or otherwise dispose of the
same in the Philippines under such terms and conditions as may be deemed
reasonable and mutually satisfactory, which Parke Davies declined.

Doctors’ Pharmaceuticals Inc. filed a petition with the Director of

Patents requesting the Director to grant a compulsory license. After careful
evaluation and hearings, the Director granted the request of Doctors’
Pharmaceuticals.

ISSUE: Is the decision of the Director of Patents in granting Doctor’s

Pharmaceutical Inc. compulsory license to use the substance
chloramphenicol, valid?
HELD:

Yes the decision of the Director of Patents in granting Doctor’s

Pharmaceutical Inc. compulsory license to use the substance
chloramphenicol is valid. The Supreme Court says that patents issued to
foods and medicines are not exclusive so as not to prevent the building up of
patent monopolies. Public benefit is foremost. The Court dismissed the
contention of Parke Davies that the Director of Patents erred in granting
compulsory license. The decision appealed from is affirmed, with costs
against petitioner.

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner, vs.

THE HONORABLE COURT OF APPEALS and SUS ANA LUCHAN,
respondents.

No. L-45101. November 28, 1986

FACTS:

Maguan is doing business under the firm name and style of SWAN
MANUFACTURING" while Luchan islikewise doing business under the firm
name and style of "SUSANA LUCHAN POWDER PUFFMANUFACTURING.”

Maguan informed Luchan that the powder puffs Luchan is

manufacturing and selling to various enterprises particularly those in the
cosmetics industry, resemble Identical or substantially Identical powder
puffs of which she (Maguan) is a patent holder under Registration
Certification Nos. Extension UM-109, ExtensionUM-110 and Utility Model No.
1184; Maguan 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. Luchan replied stating
hat her products are different and countered that Maguan’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 thetrue and actual author
nor were her rights derived from such author. Maguan filed a complaint for
damages with injunction and preliminary injunction against Luchan with the
then Court of First Instance of Rizal. The trial court issued an Order granting
the preliminary injunction prayed for. Consequently, the corresponding writ
was subsequently issued.
Issue: Whether or not Maguan has a right to file an action before the CFI
for injunction due to infringement of her patent.

Ruling:

Yes. When a patent is sought to be enforced, the questions of

invention, novelty or prior use and each of them, are open to judicial
examination. 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

SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE

HONORABLE COURT OF APPEALS and TRYCO PHARMA
CORPORATION, respondents.

G.R. No. 126627. August 14, 2003

FACTS:

Petitioner is a foreign corporation licensed to do business in the

Philippines, it filed before the Philippine Patent Office an application for
patent over an invention entitled “Methods and Compositions for Producing
Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate.” The invention is a means to fight off gastrointestinal parasites
from various cattles and pet animals. The application bore Serial No. 18989.

Tryco Pharma is a local corporation engaged in the same business as

Smith Kline. Smith Kline sued Tryco Pharma because the latter was selling a
veterinary product called Impregon which contains a drug called Albendazole
which fights off gastro-intestinal roundworms, lungworms, tapeworms and
fluke infestation in carabaos, cattle and goats.

Smith Kline is claiming that Albendazole is covered in their patent

because it is substantially the same as methyl 5 propylthio-2-benzimidazole
carbamate covered by its patent since both of them are meant to combat
worm or parasite infestation in animals. And that Albendazole is actually
patented under Smith Kline in the US. Tryco Pharma averred that nowhere
in Smith Kline’s patent does it mention that Albendazole is present but even
if it were, the same is “unpatentable”.
 Smith Kline thus invoked the doctrine of equivalents, which implies
that the two substances substantially do the same function in substantially
the same way to achieve the same results, thereby making them truly
identical for in spite of the fact that the word Albendazole does not appear in
Tryco Paharma’s letters of patent, it has ably shown by evidence its
sameness with methyl 5 propylthio-2-benzimidazole carbamate.

ISSUE: Whether or not there is a patent infringement in this case

HELD:

None. Smith Kline failed to prove that Albendazole is a compound

inherent in the patented invention. Nowhere in the patent is the word
Albendazole found. When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything beyond them.
Further, there was a separate patent for Albendazole given by the US which
implies that Albendazole is indeed separate and distinct from the patented
compound here.

The doctrine of equivalents provides that an infringement also takes

place when a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way to
achieve substantially the same result. [19] Yet again, a scrutiny of petitioners’
evidence fails to convince this Court of the substantial sameness of
petitioners patented compound and Albendazole. While both compounds
have the effect of neutralizing parasites in animals, identity of result does
not amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as the
patented compound, even though it performs the same function and
achieves the same result.[20] In other words, the principle or mode of
operation must be the same or substantially the same.
Columbia Pictures, Inc. vs. Court of Appeals

G.R. No. 110318 August 28,1996

Facts:

Complainants lodged a formal complaint with the NBI for violation of

PD 49 and sought its assistance in their anti-film piracy drive. NBI and
private researchers then made discreet surveillance on various video
establishments in Metro Manila including Sunshine Home Video owned and
operated by Danilo Pelindario with address at No. 6 Mayfair Center,
Magallanes, Makati, Metro Manila.

On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a
search warrant with the court a quo against Sunshine seeking the seizure,
among others, of pirated video tapes of copyrighted films, which the court
granted.

In the course of the search of the premises indicated in the search

warrant, the NBI Agents found and seized various video tapes of duly
copyrighted motion pictures/films owned or exclusively distributed by
Columbia Pictures, Inc. et al.

Thereafter, the court has lifted the search warrant which it had
therefore issued after a series of motions, up until the CA.

In the SC, Sunshine challenged Columbia et al’s legal standing in our

courts, they being foreign corporations not licensed to do business in the
Philippines.

Issue: Whether or not there was infringement

Held:

To constitute infringement, it is not necessary that the whole or even a

large portion of the work shall have been copied.

In determining the question of infringement, the amount of matter

copied from the copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole or even a large
portion of the work shall have been copied. If so much is taken that the
value of the original is sensibly diminished, or the labors of the original
author are substantially and to an injurious extent appropriated by another,
that is sufficient in point of law to constitute a piracy.