SMITH KLINE BECKMAN CORPORATION VS. THE HON. COURT OF APPEALS, ET AL.

G.R. No. 126627, 14 August 2003

Doctrine: 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.
The doctrine thus requires satisfaction of the function-means-and-result test, the patentee having the burden to
show that all three components of such equivalency test are met.

Facts: Petitioner Smith Kline Beckman is an American corporation licensed to do business in the Philippines. In
1976 it filed with the Philippine Patent Office a patent application over methyl 5 propylthio-2-benzimidazole
carbamate, a chemical compound that fought infections caused by gastrointestinal parasites in farm and pet
animals. In 1981 the PPO issued Letters Patent No. 14561 for the said invention for a term of 17 years.

Private respondent Tryco Pharma is a domestic corporation that dealt in veterinary products. It manufactured
and sold Impregon, a drug which fought gastrointestinal parasites in farm animals, and which contained the
compound Albendazole as active ingredient.

Claiming that Letters Patent No. 14561 covered the substance Albendazole, Smith Kline filed before the
Caloocan City Regional Trial Court a complaint against Tyco Pharma for patent infringement, and for unfair
competition under Article 189 of the Revised Penal Code and Section 29 of the Trademark Law.

In its Decision the RTC dismissed Smith Kline’s complaint, and ordered the cancellation of Letters Patent No.
14561 for being null and void. Smith Kline appealed to the Court of Appeals.

The CA affirmed that Tyco Pharma was not liable for patent infringement, but reversed the RTC’s finding that
Letters Patent No. 14561 was void. Smith Kline filed a petition for review with the Supreme Court.

Issue: Whether Tyco Pharma committed patent infringement to the prejudice of Smith Kline.

Ruling: No, Tyco Pharma did not

The claims of Letters Patent No. 14561 do not mention the compound Albendazole. All that the claims
disclose are: the covered invention, i.e., the compound methyl 5 propylthio-2-benzimidazole carbamate; the
compound’s ability to destroy parasites without harming the host animals; and the patented methods,
compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites
infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them. The courts are similarly bound: they may not add to or detract from the claims matters
not expressed or necessarily implied, nor may they enlarge the patent beyond the scope of that which the
inventor claimed and the patent office allowed, even if the patentee may have been entitled to something more
than the words it had chosen would include.
The mere absence of the word Albendazole in the patent is not determinative of Albendazole’s non-
inclusion in its claims. While Albendazole is admittedly a chemical compound that exists by a name different
from that covered in the patent, the language of the patent fails to yield anything at all regarding Albendazole.
No extrinsic evidence had been adduced to prove that Albendazole inheres in Smith Klein’s patent in spite of its
omission therefrom, or that the meaning of the claims of the patent embraces Albendazole.

Smith Klein has not met the requirements for the application of the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same result.
The doctrine thus requires satisfaction of the function-means-and-result test, the patentee having the burden to
show that all three components of such equivalency test are met.
The doctrine of equivalents does not apply in the case at bar because it requires that for infringement to
take place, the device should appropriate a prior invention by incorporating its innovative concept and although
there are some modifications and change they perform substantially the same results. Smith Kline’s evidence
failed to adduce that substantial sameness on both the chemicals they used. While both compounds produce
the same effects of neutralizing parasites in animals, the identity of result does not amount to infringement. The
principle or mode of operation must be the same or substantially the same. Smith Kline has the burden to show
that it satisfies the function-means-and-result-test required by the doctrine of equivalents. Nothing has been
substantiated on how Albendazole can weed the parasites out from animals which is similar to the manner used
by the petitioner in using their own patented chemical compound.
Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole
carbamate, nothing more is asserted and accordingly substantiated regarding the method or means by which
Albendazole weeds out parasites in animals, thus giving no information on whether that method is substantially
the same as the manner by which Smith Klein’s compound works.
As to the divisional applications by Smith Kline, it comes into play when two or more inventions are claimed
in a single application but are of such a nature that a single patent may not be issued for them. The applicant
thus is required to divide, that is, to limit the claims to whichever invention he may elect, whereas those
inventions not elected may be made the subject of separate applications which are called divisional applications.
What this only means is that methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct from the
other inventions claimed in the original application divided out, Albendazole being one of those other
inventions. Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not have been the subject of a
divisional application if a single patent could have been issued for it as well as Albendazole.