Licensing

Prince vs. United Laboratories, Inc.,166 SCRA 133 (1988)

Summary of Conflict:
Facts:
1. Barry John Price, John Watson Clitheron, and John Bradshaw are the owners-assignees
of Philippine Patent No. 13540, granted on June 26, 1980, for a pharmaceutical
compound known as "aminoalkyl furan derivatives."
2. United Laboratories, Inc. (UNILAB) filed a petition in the Philippine Patent Office on
October 1, 1982, seeking a compulsory license to use the patented compound in its own
medicines and pharmaceuticals.
3. UNILAB claimed it had the capability to use the patented compound in manufacturing.
Issues:
1. Whether the Director of Patents was authorized to unilaterally determine the terms and
conditions of the compulsory license.
2. Whether UNILAB had the necessary capability to use the patented compound in
manufacturing.
3. Whether the entire patent could be granted as a compulsory license, even if only one
claim of the patent was contested.
4. Whether UNILAB's capability to use the compound was acquired before or after filing
the petition for compulsory licensing.
Rulings:
1. The Director of Patents was authorized to fix the terms and conditions of the
compulsory license in the absence of an agreement between the parties (based on Section
36 of Republic Act No. 165 and Section 35 of P.D. 1263).
2. The Director found that UNILAB possessed the required capability to use the patented
compound, and this finding was supported by substantial evidence.
3. The entire patent could be granted as a compulsory license, as there was no requirement
in the law to limit the license to a specific embodiment or claim of the invention.
4. The court held that even if UNILAB's capability to use the patented compound was
acquired after filing the petition, the crucial point was that this capability existed during
the hearing of the petition.
Key Points in Patent Law:
 1. The Director of Patents has the authority to determine the terms and conditions of a
compulsory license if the parties cannot reach an agreement.
2. A compulsory license may be granted if the patentee is found to be withholding the use
of the invention to the detriment of public health or if the licensee can demonstrate the
capability to use the patented compound.
3. The royalty rate for a compulsory license must be reasonable and commensurate with the
extent to which the invention is worked, and it should not exceed certain limits defined
by law.
Final Decision: The petition for review by the patentees was denied due to lack of merit,
upholding the decision of the Court of Appeals affirming the grant of a compulsory license
to UNILAB.

Defenses in Action for Infringement

G. Sell v. Yap Jue, 12 Phil 519, 1909
Summary of Conflict:
Facts:
1. Carlos Gsell, the plaintiff, was the owner of a valid patent covering a process for
manufacturing curved handles for canes, parasols, and umbrellas.
2. Valeriano Veloso Yap-Jue, the defendant, was found to have violated the injunction
against using a lamp fed with petroleum or mineral oil for the same process. Instead, he
used a lamp fed with alcohol, which he argued was a substitute and not an infringement.
Issues:
1. Whether the use of a lamp fed with alcohol, instead of petroleum or mineral oil,
constituted an infringement of the patented process.
2. Whether alcohol was a well-known mechanical equivalent for petroleum or mineral oil in
this context.
3. Whether the defendant's actions violated the terms of the injunction.
Rulings:
1. The court ruled that the defendant's use of a lamp fed with alcohol was a substantial
infringement of the patented process.
2. The court found that alcohol was a well-known mechanical equivalent for petroleum or
mineral oil in this context.
 3. The defendant's actions were deemed to have violated the terms of the injunction, as he
continued to manufacture curved handles using a substituted but substantially equivalent
process.
Key Legal Points:
1. The case revolves around the concept of "mechanical equivalents," which allows for
substitutions of parts or elements of a patented process as long as they perform the same
function and were well-known equivalents at the time of the patent's issuance.
2. The plaintiff's exclusive right was to use a "small lamp or blowpipe fed with petroleum or
mineral oil" in the patented process, allowing him to claim infringement when a similar
process was used with a substitute like alcohol.
Final Decision: The court affirmed the lower court's judgment, ruling in favor of Carlos Gsell.
Valeriano Veloso Yap-Jue's use of alcohol as a substitute for petroleum or mineral oil in the
patented process was considered an infringement, and he was found to have violated the terms of
the injunction. The costs of the case were imposed on the appellant.

Case Summary: Creser Precision Systems, Inc. v. Floro International Corp. (G.R. No.
118708)
Facts:
 Creser Precision Systems, Inc. (petitioner) and Floro International Corp. (private
respondent) are two domestic corporations involved in the manufacturing and distribution
of military armaments and munitions.
 Private respondent obtained a Letters Patent No. UM-69383 for an aerial fuze from the
Bureau of Patents.
 In November 1993, a private respondent discovered that the petitioner submitted samples
of a similar fuze to the Armed Forces of the Philippines for testing. The private
respondent alleged that the petitioner was claiming the fuze as its own and planning to
manufacture it without proper authorization.
Issues:
1. Can a party file an action for infringement even if it does not possess a patent for the
invention in question?
2. Is the proper venue for a case involving the cancellation or invalidation of a patent the
Office of the Director of Patents, rather than a civil court?
Rulings:
1. Issue 1: Cause of Action for Infringement
  The Court ruled that, under Section 42 of the Philippine Patent Law, only the
patentee or those possessing rights to the patented invention (e.g., successors-in-
interest, assignees, or grantees) can file an action for infringement.
 Since the petitioner did not possess a patent for the aerial fuze, it lacked legal
basis or cause of action for the suit against the private respondent. The right to
maintain an infringement suit depends on the existence of a patent.
2. Issue 2: Proper Venue for Patent Cancellation
 The Court stated that a person or entity without a patent over an invention, but
claiming a right or interest in it, cannot file an action for declaratory judgment or
injunctive relief. Such remedies are only available to the patent holder or
successors-in-interest.
 The proper remedy for the petitioner was to file a petition for cancellation of the
private respondent's patent with the Director of Patents within three years from
the patent's publication.
Summary: The case revolves around the issue of whether a party without a patent can file an
action for infringement. The Court held that only the patentee or those possessing rights to the
patented invention may do so. Since the petitioner did not possess a patent for the aerial fuze, it
lacked the legal basis for the suit. Additionally, the Court clarified that the proper venue for a
case involving patent cancellation is the Office of the Director of Patents, not a civil court. The
decision affirmed the Court of Appeals' ruling in favor of private respondent, Floro International
Corp.

Case Summary: Lothar Schuartz, et al. v. Court of Appeals and Bureau of Patents
Facts:
 Petitioners, a group of individuals, filed separate applications for patents covering various
inventions.
 The law firm hired to process their patent applications failed to respond to Office
Actions, leading to notices of abandonment being issued by the Bureau of Patents.
 After two employees of the law firm were dismissed, an inventory revealed the notices of
abandonment, prompting petitioners to file separate petitions for revival of their patent
applications.
Issues:
1. Were the petitions for revival of patent applications filed within the prescribed time?
 2. Did the petitioners’ counsel display negligence in handling the patent applications?
Rulings:
1. Issue 1: Timeliness of Petitions for Revival
 The Court of Appeals found that petitioners' applications were abandoned due to
unreasonable delay before the petitions for revival were filed, rendering them
untimely.
 The Court held that an unreasonable period of time had lapsed due to the
negligence of petitioners’ counsel, forfeiting their right to revive the applications
for patent.
2. Issue 2: Negligence of Petitioners’ Counsel
 The Court affirmed that the petitioners’ counsel displayed negligence by failing to
respond to the notices of abandonment and failing to revive the applications
within the prescribed period.
 The Court emphasized a lawyer’s duty to be mindful of their responsibilities and
not to neglect legal matters entrusted to them.
Summary: The case revolves around the failure of petitioners' counsel to respond to Office
Actions, leading to the abandonment of their patent applications. Despite efforts to revive the
applications, the Court found that an unreasonable period had lapsed due to counsel's negligence.
This negligence forfeited the petitioners' right to revive their applications for patents. The Court
of Appeal’s dismissal of the petition for review was upheld.

Case Summary: Rosario C. Maguan (formerly Rosario C. Tan) vs. The Honorable Court of
Appeals and Susana Luchan
Facts:
 Rosario C. Maguan (petitioner) is the holder of patents for certain powder puff products.
 Susana Luchan (respondent) is also in the business of manufacturing similar powder puff
products.
Maguan alleged that Luchan's products infringed on her patents. She demanded Luchan to cease
production and sale of these products, and warned of legal action if she didn't comply.
Luchan responded by claiming that her products were different from those covered by Maguan's
patents. She also challenged the validity of Maguan's patents, arguing that they were not new and
patentable.
Luchan filed petitions with the Philippine Patent Office seeking the cancellation of Maguan's
patents. In response, Maguan filed a complaint against Luchan in the Court of First Instance for
damages with injunction and preliminary injunction for patent infringement.
Issue 1: Jurisdiction to Determine Patent Validity
 The main issue was whether the trial court had the jurisdiction to decide on the validity of
the patents in question, given that there were pending cancellation proceedings in the
patent office.
Ruling 1:
 The court held that in cases of patent infringement, questions of invention, novelty, or
prior use are open to judicial examination. The trial court had jurisdiction to determine
the validity of the patents.
Issue 2: Preliminary Injunction
 The second issue was whether the trial court's issuance of a writ of preliminary injunction
was proper.
Ruling 2:
 The court stated that for a preliminary injunction to be issued, the right to be protected
must be clear and unmistakable. In this case, the validity of Maguan's patents was in
question, and Luchan presented evidence suggesting a fair question of invalidity.
Therefore, the trial court's issuance of the preliminary injunction was improper.
Issue 3: Proper Remedy
 Lastly, there was a contention regarding whether certiorari was the appropriate remedy.
Ruling 3:
 The court held that since the trial court's injunctive order was of broad application,
potentially barring Maguan from selling any kind of powder puff, an ordinary appeal
would be inadequate. Certiorari was deemed an appropriate remedy.
Conclusion:
 The Court of Appeals' resolutions were affirmed, which set aside the trial court's decision
and reinstated the preliminary injunction.
Doctrine of Equivalents
Title: Pascual Godines v. The Honorable Court of Appeals, Special Fourth Division and
SV-AGRO Enterprises, Inc. G.R. No.: 97343 Date: September 13, 1993
Parties:
 Petitioner: Pascual Godines
  Respondents: The Honorable Court of Appeals, Special Fourth Division, and SV-AGRO
Enterprises, Inc.
Facts:
1. Magdalena S. Villaruz was granted Letters Patent No. UM-2236 by the Philippine Patent
Office on July 15, 1976. This patent covered a utility model for a hand tractor or power
tiller with specific components.
2. SV-AGRO Enterprises, Inc. acquired the patent from Magdalena Villaruz through a Deed
of Assignment and published it on October 31, 1979.
3. SV-AGRO manufactured and sold power tillers with the patent imprint. However, they
experienced a significant decline in sales, leading to the discovery that similar power
tillers were being produced and sold by Pascual Godines without authorization.
4. SV-AGRO filed a complaint for infringement of patent and unfair competition against
Pascual Godines.
Issues:
1. Whether Pascual Godines was engaged in the manufacture and sale of power tillers,
infringing on the patent held by SV-AGRO.
2. Whether Pascual Godines' power tillers were substantially similar to the patented ones,
thus constituting infringement.
3. Whether the doctrine of equivalents applies, allowing for a finding of infringement based
on minor modifications.
Rulings:
1. The lower courts found that Pascual Godines was indeed manufacturing and selling
power tillers without authorization.
2. The trial court observed substantial similarity between the power tillers of Pascual
Godines and those patented by SV-AGRO. This was further confirmed by Pascual
Godines' admission that he sold two units of the patented power tiller.
3. The court applied the doctrine of equivalents, noting that similarities or differences
should be determined by function, operation, and substantial identity, rather than mere
technical distinctions. It concluded that Pascual Godines' power tillers operated on the
same fundamental principles as the patented ones.
Conclusion: Pascual Godines was held liable for patent infringement and unfair competition. The
decision of the Court of Appeals affirming the trial court's judgment was upheld, with Pascual
Godines ordered to pay damages, unrealized profits, attorney's fees, and other expenses of
litigation to SV-AGRO Enterprises, Inc.
Case Summary: Smith Kline Beckman Corporation v. Tryco Pharma Corporation
Facts:
 Smith Kline Beckman Corporation (petitioner) applied for a patent for an invention
named "Methods and Compositions for Producing Biphasic Parasiticide Activity Using
Methyl 5 Propylthio-2-Benzimidazole Carbamate."
 Letters Patent No. 145611 was granted for a term of 17 years.
 Tryco Pharma Corporation (private respondent) produced Impregon, a drug containing
Albendazole as its active ingredient, claiming it was effective against various parasites in
animals.
 Petitioner sued private respondent for patent infringement and unfair competition,
alleging that Impregon contained their patented Albendazole.
Issues:
1. Whether Albendazole, the active ingredient in Impregon, is included in the petitioner's
Letters Patent No. 145611.
2. Whether the private respondent is liable for patent infringement.
3. Whether the award of damages and attorney's fees to a private respondent is justified.
Rulings:
1. The Court held that Albendazole is not included in the petitioner's patent claims. The
language of the patent did not mention Albendazole, and no extrinsic evidence proved its
inclusion.
2. The Court ruled that the private respondent is not liable for patent infringement since
Albendazole and the patented compound were not substantially the same in function,
means, and result. The doctrine of equivalents was not applicable.
3. The award of actual damages and attorney's fees to the private respondent was deleted
due to insufficient evidence of bad faith on the petitioner's part. Instead, the private
respondent was awarded temperate or moderate damages amounting to ₱20,000.
Doctrine of Equivalents:
 The doctrine of equivalents applies when a device appropriates a prior invention by
incorporating its innovative concept and, with some modification, performs substantially
the same function in substantially the same way to achieve substantially the same result.
Key Takeaways:
 The burden of proof for patent infringement lies with the plaintiff.
  The mere absence of a word in the patent does not necessarily imply its inclusion.
 To establish patent infringement under the doctrine of equivalents, the plaintiff must
demonstrate substantial identity in function, means, and result.
E. Patent Infringement
a. Tests in Patent Infringement
a.i. Literal Infringement –
Pascual Godines vs. Court of Appeals, G.R. No. 97343, September 13, 1993
The case involves a dispute over the infringement of a utility model patent for a hand tractor or
power tiller. The patent was issued to Magdalena S. Villaruz and subsequently acquired by SV-
Agro Enterprises, Inc. The petitioner, Pascual Godines, was accused of manufacturing and
selling similar power tillers without authorization.
Facts:
1. Magdalena S. Villaruz was granted Letters Patent No. UM-2236 for a utility model of a
hand tractor with specific components.
2. SV-Agro Enterprises, Inc. acquired the patent from Magdalena Villaruz.
3. SV-Agro manufactured and sold power tillers with the patented design, imprinted with
the patent number.
Issues:
1. Whether Pascual Godines engaged in the manufacture and sale of power tillers similar to
the patented design.
2. Whether Godines' power tillers infringed upon the patented design.
Rulings:
1. The trial court found that Godines had indeed been manufacturing and selling power
tillers before SV-Agro, and that he did so based on his own specifications. This
contradicted Godines' claim that he only produced power tillers upon specific customer
orders.
2. The trial court observed that the power tillers produced by Godines were virtually
identical to those patented by SV-Agro. They shared key components and operated on the
same principles. The Court ruled that Godines' power tillers infringed upon the patented
design.
Ultimately, the Court affirmed the decisions of the lower courts, holding Godines liable for
infringement of patent and unfair competition. The Court emphasized that the doctrine of
equivalents applied, as Godines' power tillers performed substantially the same function in
substantially the same way and achieved substantially the same result as the patented design,
despite some differences in form or name.
Rights Conferred by a Patent
-Roma Drug and Romeo Rodriguez v. RTC of Guagua, Pampanga, BFAD and Glaxo
SmithKline GR No. 149907
The case involves a constitutional challenge to specific provisions of Republic Act No. 8203,
also known as the Special Law on Counterfeit Drugs (SLCD). The petitioner, Romeo
Rodriguez, was charged with violating Section 4 of the SLCD for the sale of unregistered
imported drugs. Rodriguez argued that these provisions were unconstitutional, asserting that they
contravened the equal protection clause and impeded the right to health of the people.
Facts:
1. Romeo Rodriguez, proprietor of Roma Drug, was charged with violating Section 4 of the
SLCD for selling unregistered imported drugs.
2. Rodriguez challenged the constitutionality of the SLCD, arguing that it violated the equal
protection clause and the right to health.
Issues:
1. Whether the provisions of the SLCD violate the equal protection clause of the
Constitution.
2. Whether the SLCD infringes upon the right to health, as enshrined in Section 11, Article
XIII, and Section 15, Article II of the Constitution.
Rulings:
1. The Court found that the provisions of the SLCD, which classified unregistered imported
drugs as counterfeit and imposed criminal penalties for their sale, were irreconcilably
inconsistent with the later-enacted Republic Act No. 9502. The latter law allowed private
third parties to import such drugs, rendering the SLCD's provisions inoperative and moot.
2. The Court did not directly address the constitutionality of the challenged provisions due
to the passage of Republic Act No. 9502. However, it pointed out that the SLCD's
restrictions on importing unregistered drugs posed constitutional problems, including
potential violations of the right to health. It highlighted the law's potential to criminalize
behavior motivated by altruism and basic human love, and its failure to accommodate
situations of urgent medical need.
Ultimately, the Court granted the petition in part, issuing a writ of prohibition to prevent further
prosecution of Romeo Rodriguez under Section 4 of Republic Act No. 8203. The Temporary
Restraining Order dated 15 October 2001 was made permanent. No costs were pronounced.
Philippine Pharmawealth, Inc.,vs. Pfizer, Inc., G.R. No. 167715, November 17, 2010
Summary of Conflicts, Facts, Issues, and Rulings:
1. Raid and Seizure of Medicines (August 14, 2000):
 The NBI and BFAD conducted a raid on Roma Drug, seizing imported medicines
including Augmentin, Orbenin, Amoxil, and Ampiclox.
 These medicines were manufactured by SmithKline, imported directly from
abroad, and not purchased through the local authorized distributor.
2. Complaint and Preliminary Investigation:
 The NBI filed a complaint against Romeo Rodriguez for violating Section 4 of
Republic Act No. 8203 (Special Law on Counterfeit Drugs).
 Rodriguez challenged the constitutionality of the law during the preliminary
investigation.
3. Legal Issues Raised:
 Rodriguez challenged the constitutionality of Sections 3(b)(3), 4, and 5 of the
SLCD, asserting that they violated:
 The equal protection clause of the Bill of Rights.
 Section 11, Article XIII, mandating accessible essential goods, health, and
services.
 Section 15, Article II, promoting the right to health and health
consciousness.
4. Resolution and Recommendation (August 17, 2001):
 Assistant Provincial Prosecutor Celerina C. Pineda recommended charging
Rodriguez with violation of Section 4(a) of the SLCD.
 The recommendation was approved by Provincial Prosecutor Jesus Y. Manarang.
5. Petition for Prohibition (October 15, 2001):
 Petitioners sought to prohibit the RTC-Guagua Pampanga and the Provincial
Prosecutor from further prosecuting Rodriguez, and to declare certain SLCD
provisions unconstitutional.
6. Temporary Restraining Order (October 15, 2001):
 The Court issued a temporary restraining order, halting further proceedings
against Rodriguez.
7. Opposition by Glaxo Smithkline and OSG:
  Glaxo Smithkline argued that the SLCD is presumed constitutional, emphasizing
that certain constitutional provisions are not self-executing.
 OSG asserted that the issue pertains to policy wisdom beyond judicial
interference, invoking the presumption of constitutionality.
8. Mooted Constitutional Issues (2008):
 The passage of Republic Act No. 9502 (Universally Accessible Cheaper and
Quality Medicines Act of 2008) effectively mooted the constitutional issues.
9. Amendment to Intellectual Property Code (Section 72):
 Republic Act No. 9502 amended Section 72 of the Intellectual Property Code,
granting third parties the right to import drugs or medicines with registered
patents.
10. Confirmation of Right to Import (Implementing Rules - November 4, 2008):

 The Implementing Rules to Republic Act No. 9502 confirmed the unqualified
right of private third parties to import or possess "unregistered imported drugs" in
the Philippines.
11. Conflict and Repeal of SLCD:
 Although Republic Act No. 9502 did not expressly repeal any provision of the
SLCD, it irreconcilably conflicted with the SLCD's classification of "unregistered
imported drugs" as "counterfeit drugs" and its corresponding criminal penalties.
12. Granting of the Writ of Prohibition (Decision):
 The Court granted the petition in part, issuing a writ of prohibition to prevent
further prosecution of Romeo Rodriguez under Section 4 of Republic Act No.
8203. The Temporary Restraining Order dated October 15, 2001, was made
permanent.
In summary, the conflicts revolved around the constitutionality of certain provisions of the
SLCD, particularly in relation to the right conferred by a patent under the patent law of the
Philippines. These conflicts were ultimately mooted by the passage of Republic Act No. 9502,
which provided explicit rights for third parties to import drugs with registered patents.
Philippine Pharmawealth, Inc.,vs. Pfizer, Inc., G.R. No. 167715, November 17, 2010
This case involves a dispute over a patent for a method of increasing the effectiveness of a
certain antibiotic. Here's a summary of the conflicts, along with specific facts, issues, and
rulings:
Facts:
1. Pfizer, Inc. and Pfizer (Phil.) Inc. (respondents) hold a patent (Philippine Letters Patent
No. 21116) for a method involving a combination of antibiotics.
2. This patent was issued on July 16, 1987, and was valid until July 16, 2004.
3. The patent covers the combination of ampicillin sodium and sulbactam sodium.
Issues:
1. Expiration of Patent: The main issue is whether the patent had already expired, which
would affect the respondents' right to enforce it.
2. Jurisdiction: There's a dispute regarding which tribunal has the authority to review
decisions of the Director of Legal Affairs of the Intellectual Property Office (BLA-IPO).
3. Forum Shopping: The petitioner (Phil Pharmawealth, Inc.) alleges that the respondents
engaged in forum shopping by filing separate actions in different venues seeking similar
relief.
Rulings:
1. Expiration of Patent: The Court determined that the patent had indeed expired on July
16, 2004. As a result, the respondents no longer had the exclusive rights conferred by the
patent after this date. The Court ruled in favor of Phil Pharmawealth, Inc. on this issue.
2. Jurisdiction: The Court held that the Court of Appeals (CA) had jurisdiction to review
the interlocutory orders of the BLA-IPO. While the Director General of the IPO had
exclusive appellate jurisdiction over final decisions, there was no specific remedy for
questioning interlocutory orders.
3. Forum Shopping: The Court found that the respondents were indeed guilty of forum
shopping. Despite the complaints being based on different patents, the ultimate objective
and reliefs sought were essentially the same.
Conclusion: The main conflict in this case was whether the patent had expired, affecting the
respondents' right to enforce it. Additionally, there were disputes regarding jurisdiction and
allegations of forum shopping. The Court ruled in favor of Phil Pharmawealth, Inc. on the patent
expiration issue, clarified the jurisdiction, and concluded that the respondents engaged in forum
shopping.
Case Summary: Smith Kline Beckman Corporation v. Tryco Pharma Corporation
Facts:
  Smith Kline Beckman Corporation (petitioner) filed a patent application in the
Philippines for a compound named "methyl 5 propylthio-2-benzimidazole carbamate"
used to combat infections in animals. The patent was granted under Letters Patent No.
145611 for a term of 17 years.
 Tryco Pharma Corporation (private respondent) produced a veterinary drug named
Impregon, containing Albendazole as the active ingredient. Petitioner alleged that
Albendazole was covered by its patent, thus private respondent's production of Impregon
was an infringement.
Issues:
1. Infringement of Patent: The primary issue was whether Albendazole, the active
ingredient in Impregon, was included in petitioner's patented compound, methyl 5
propylthio-2-benzimidazole carbamate.
2. Validity of Patent: The validity of Letters Patent No. 145611 was also challenged by the
private respondent on the grounds of violations of Sections 7, 9, and 15 of the Patent
Law.
3. Damages and Attorney's Fees: The trial court awarded damages to the private respondent
for lost profits and attorney's fees, a decision contested by the petitioner.
Rulings:
1. Infringement of Patent:
 The court held that Albendazole and methyl 5 propylthio-2-benzimidazole
carbamate were distinct compounds with different properties and functions, and
thus, Albendazole was not included in the petitioner's patent. The function-
means-and-result test for patent infringement was not met.
 Decision: The court ruled in favor of the private respondent, stating that no patent
infringement had occurred.
2. Validity of Patent:
 The court determined that the divisional application filed by the petitioner was
proper, and Letters Patent No. 145611 was not void for violations of the Patent
Law. It was a valid patent.
 Decision: The court ruled that the patent was valid.
3. Damages and Attorney's Fees:
 The appellate court's award of actual damages and attorney's fees to the private
respondent was deemed unsupported by sufficient evidence. It was therefore
deleted.
  Decision: The court awarded temperate damages of ₱20,000 to the private
respondent.

Conflict Summary:
 The main conflict revolved around whether Albendazole was covered by petitioner's
patent. The court found that it was not, as the compounds were distinct in chemical and
functional properties.
 Another dispute concerned the validity of the patent. The court affirmed the validity,
stating that the divisional application was appropriately filed.
 There was a conflict regarding the damages and attorney's fees awarded to the private
respondent. The court found the evidence insufficient and reduced the award to temperate
damages.
Overall, the court upheld the validity of the patent but ruled that there was no infringement by
the private respondent. The damages initially awarded were reduced due to lack of proper
evidence.
Del Rosario vs. Court of Appeals, 255 SCRA 152 (1996)
This case, G.R. No. 115106, involves a dispute between Roberto L. del Rosario, the petitioner,
and Janito Corporation, the respondent. The main issue revolves around the alleged infringement
of del Rosario's utility model patents for an audio equipment system, commonly known as a
karaoke or sing-along system.
Here are the key conflicts, specific facts, issues, and rulings:
1. Patent Ownership:
 Fact: Roberto del Rosario holds two utility model patents (No. UM-5269 and
UM-6237) for his audio equipment system.
 Issue: Whether Janito Corporation's sing-along system, marketed under the brand
"miyata," infringes on del Rosario's patents.
 Ruling: The Court found that del Rosario's utility model patents were valid and
enforceable.
2. Comparison of the Products:
 Fact: Janito Corporation argued that their miyata system had significant
differences from del Rosario's patented models. They presented a list of
differences.
  Issue: Whether the differences presented by Janito Corporation were substantial
enough to avoid infringement.
 Ruling: The Court found that, despite some differences, both systems involved
substantially similar modes of operation and produced similar results when used.
3. Public Knowledge and Use:
 Fact: Janito Corporation claimed that various other companies, such as Sanyo,
Sony, Sharp, and others, were manufacturing similar systems even before del
Rosario's patent application.
 Issue: Whether these pre-existing similar systems could invalidate del Rosario's
patent.
 Ruling: The Court found that Janito Corporation failed to provide sufficient
evidence to prove that these pre-existing systems were substantially similar to del
Rosario's patented models.
4. Prima Facie Proof:
 Fact: Del Rosario presented evidence before the trial court, including a detailed
description of the similarities between the systems and their functionalities.
 Issue: Whether del Rosario's evidence constituted prima facie proof of
infringement.
 Ruling: The Court found that del Rosario had established prima facie proof of
infringement, justifying the issuance of a preliminary injunction.
5. Role of the Court of Appeals:
 Fact: The Court of Appeals set aside the trial court's decision to grant a writ of
preliminary injunction.
 Issue: Whether the Court of Appeals erred in its assessment of the case.
 Ruling: The Supreme Court reversed the decision of the Court of Appeals and
reinstated the trial court's order granting the preliminary injunction.
In summary, the conflicts in this case primarily revolved around whether Janito Corporation's
sing-along system, marketed as "miyata," infringed on Roberto del Rosario's utility model
patents. The Court ultimately ruled in favor of del Rosario, finding that he had established a
prima facie case of infringement, and the preliminary injunction was justified.
Precision Systems, Inc.,vs. Court of Appeals, G.R. No. 118708, February 2, 1998
In the case of Creser Precision Systems, Inc. vs. Floro International Corp., the main conflicts
revolve around the issue of patent rights under the Philippine Patent Law (R.A. 165). Here are
the specific facts, issues, and rulings:
1. Facts:
 Floro International Corp. (Floro) is a domestic corporation engaged in the
manufacture of military armaments, including an aerial fuze, for which they were
granted a patent.
 Creser Precision Systems, Inc. (Creser) submitted samples of a similar aerial fuze
to the Armed Forces of the Philippines (AFP) for testing, claiming it as their own
invention.
 Floro warned Creser of possible legal action and application for injunction if
Creser proceeded with the testing.
2. Issue:
 Whether Creser, who did not have a patent for the aerial fuze, could bring an
action for infringement against Floro.
3. Ruling:
 The court ruled that under Section 42 of the Philippine Patent Law, only the
patentee or those possessing any right, title, or interest in and to the patented
invention may bring an action for infringement. Creser, lacking a patent, did not
have a cause of action.
4. Legal Interpretation:
 The court emphasized that a person or entity must possess a patent to maintain a
suit for infringement. The absence of a patent precludes such a suit.
5. Rationale:
 The court reasoned that a patent grants the inventor the exclusive right to make,
use, and sell the invention, and without a patent, there is no legal basis for
claiming infringement.
6. Alternative Remedy:
 The court pointed out that if someone believes they are the true and actual
inventor, their remedy is to file a petition for cancellation of the patent within
three years from its publication with the Director of Patents, rather than filing an
action for infringement.
7. Presumption of Validity:
 The court emphasized that once a patent is granted, there is a presumption of its
validity, and it is better left to the expertise of the Patent Office to determine
patentability.
8. Final Ruling:
  The Court of Appeals' decision dismissing Creser's complaint for injunction and
damages was affirmed.
In summary, the key conflict in this case revolves around whether a party without a patent can
bring an action for infringement. The court emphasized that only patentees or those with a legal
interest in the patent can do so. This decision upholds the principle that patent rights are
conferred by the issuance of a patent, and without it, there is no basis for claiming infringement.

Manzano vs. Court of Appeals, G.R. No. 113388, September 5, 1997

In the case of Angelita Manzano v. Court of Appeals and Melecia Madolaria (G.R. No. 113388,
September 5, 1997), the conflict revolves around the validity of a patent for a gas burner issued
by the Philippine Patent Office. Here are the specific facts, issues, and rulings of the court:
Facts:
1. Angelita Manzano filed a petition for the cancellation of Letters Patent No. UM-4609 for
a gas burner registered in the name of Melecia Madolaria, who subsequently assigned the
patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY).
2. Manzano alleged that the patented gas burner was not inventive, new, or useful. She also
claimed that Madolaria was not the original inventor and that the patent was secured
through fraud.
Issues:
1. Whether the patented gas burner was novel, inventive, and useful.
2. Whether Madolaria was the original inventor.
3. Whether the patent was obtained through fraud or misrepresentation.
Rulings:
1. The Director of Patents issued Decision No. 86-56, denying Manzano's petition for
cancellation. The Director found that Manzano's evidence did not convincingly establish
that the patented gas burner was anticipated by prior art.
2. The Court of Appeals affirmed the decision of the Director of Patents, holding that
Manzano's evidence did not sufficiently prove anticipation or lack of novelty. The court
also found no evidence of fraud or misrepresentation in obtaining the patent.
3. The Supreme Court affirmed the decisions of the Director of Patents and the Court of
Appeals. The Court emphasized that the technical expertise of the Patent Office in
determining patentability should be respected, and that the burden of proving lack of
novelty was on the petitioner.
In summary, the conflicts in the case revolved around the validity of the patented gas burner,
specifically whether it met the requirements of novelty, inventiveness, and usefulness. Manzano
alleged that the patent was invalid due to lack of novelty and inventorship issues. However, both
the Director of Patents and the Court of Appeals found in favor of Madolaria, and the Supreme
Court upheld their decisions, emphasizing the expertise of the Patent Office in patent matters.
Domiciano Aguas vs. Conrado De Leon, G.R. No. L-32160, January 30, 1982
This legal case, G.R. No. L-32160, revolves around a patent infringement dispute between Conrado G.
de Leon (respondent) and Domiciano A. Aguas (petitioner) regarding improvements in the process of
making mosaic pre-cast tiles.

Facts:
1. On December 1, 1959, Conrado G. de Leon filed a patent application for a "new and
useful improvement in the process of making mosaic pre-cast tiles."
2. On May 5, 1960, the Philippines Patent Office granted him Letters Patent No. 658.
3. De Leon alleged that Aguas, a building contractor, infringed upon his patent by making
and using tiles embodying his patented invention.
Issues Raised:
1. The petitioner, Aguas, challenged the validity of de Leon's patent, arguing that it covered
an old and non-patentable process.
2. Aguas contended that de Leon's process was neither new, useful, nor inventive.
Court's Rulings:
1. The Court found that de Leon's patent was valid. It acknowledged that while some steps
of the old process were included, there were also novel and inventive features that made
the process patentable. These included critical depth, lip width, easement, and field of
designs, which collectively resulted in a new and useful kind of tile suitable for
construction and ornamentation.
2. The Court determined that de Leon's improvement was indeed inventive, going beyond
mere mechanical skill. It introduced a new type of tile for a new purpose, and addressed
problems of durability and breakage that were associated with the old process.
3. The Court rejected the petitioner's argument that similar tiles were produced by Machuca
Tile Factory and Pomona Tile Manufacturing Company. It found significant differences
in the materials, process, and characteristics of their products, distinguishing them from
de Leon's tiles.
Damages Awarded:
The trial court initially awarded de Leon the following damages:
 Actual damages: P10,020.99
  Moral damages: P50,000.00
 Exemplary damages: P5,000.00
 Attorney's fees: P5,000.00
The Court of Appeals modified the award, reducing the moral damages to P3,000.00 while
affirming the other amounts.
Final Decision:
The Supreme Court affirmed the decision of the Court of Appeals. It upheld the validity of de
Leon's patent, acknowledged his entitlement to damages for infringement by Aguas, and
confirmed the modified amounts awarded by the appellate court.
In summary, the conflicts in this case revolved around the validity of de Leon's patent, the
inventiveness and novelty of his improvement in the tile-making process, and the determination
of damages to be awarded for patent infringement. The court ultimately upheld the validity of the
patent and affirmed the damages awarded to de Leon, with some modifications.
C. Ownership of a Patent
C.1. Right to a Patent
Case Name: Pearl & Dean (Phils.), Inc. v. Shoemart, Inc. and North Edsa Marketing, Inc.
(SMI/NEMI)
Facts:
 Pearl & Dean (P&D) claimed copyright protection for technical drawings of their
advertising display unit, commonly known as a "light box."
 They did not obtain a patent for the light box.
 P&D also registered the term "Poster Ads" as a trademark, but only for stationery goods,
which was not their primary business.
Issues:
1. Copyright Infringement: Whether the copyright protection extended to the light box itself
based on the engineering drawings.
2. Patent Infringement: Whether SMI/NEMI could be held liable for patent infringement
even though P&D did not secure a patent for the light box.
3. Trademark Infringement: Whether SMI/NEMI infringed on P&D's trademark "Poster
Ads" for stationeries.
4. Unfair Competition: Whether there was a case of unfair competition, considering the
circumstances.
Rulings:
 1. Copyright Infringement: The court ruled in favor of SMI/NEMI. Copyright protection
only covered the technical drawings and not the actual light box. The protection was
limited to what was specified in the copyright certificate.
2. Patent Infringement: The court ruled in favor of SMI/NEMI. P&D did not obtain a
patent for the light box, so they had no legal basis to prevent others from manufacturing
or using it.
3. Trademark Infringement: The court ruled in favor of SMI/NEMI. P&D's trademark
registration for "Poster Ads" only covered stationeries, not the advertising units they
produced.
4. Unfair Competition: The court did not find SMI/NEMI liable for unfair competition,
and P&D did not appeal this decision.
Key Points:
 Copyright protection is limited to what is specified in the copyright certificate. In this
case, it covered only the technical drawings, not the actual light box.
 To prevent others from manufacturing or using an invention, a patent is required. P&D's
failure to obtain a patent for the light box meant they had no legal basis for claiming
infringement.
 Trademark protection is specific to the goods or services listed in the trademark
registration. P&D's trademark registration only covered stationeries, not the advertising
units they produced.
 Unfair competition was not established in this case. P&D's use of "Poster Ads" was not
distinctive or well-known, and it was considered too generic to be associated exclusively
with their company.

Unilab, Inc. vs. Bureau of Patents, Merck & Co., Inc. and Merck Sharp & Dohme
Facts:
 Unilab filed a petition to revive a previously abandoned patent application (Philippine
Patent Application No. 35526) for its losartan products, Cozaar and Hyzaar.
 The application was initially filed in 1987, but it was deemed abandoned in 1988 due to
the applicant's failure to respond within the required period.
 Unilab argued that it was not negligent and that it complied with all requirements for
revival.
Issues:
 1. Whether the revival of an abandoned patent application is possible under Philippine IP
law.
2. Whether Unilab was inexcusably negligent in the prosecution of its patent application.
3. Whether Unilab's right to priority from a U.S. patent application has any bearing on this
case.
Rulings:
Issue 1: Revival of Abandoned Patent Application
 The court acknowledged that the Intellectual Property Code of the Philippines allows for
the revival of an abandoned patent application within a specified period (four months)
from the date of abandonment.
 However, in this case, Unilab filed for revival 13 years after the date of abandonment,
which exceeded the allowable period.
Issue 2: Negligence in Prosecution of Patent Application
 Unilab's resident agent, Atty. Mapili, was found negligent in handling the application. He
failed to respond to official notices, leading to the application's abandonment.
 Unilab's claim of being uninformed about the abandonment and Atty. Mapili's death was
deemed insufficient, as they only requested a status update after an eight-year lapse.
Issue 3: Right to Priority
 The court clarified that a right of priority in a patent application is relevant when there are
conflicting applications for the same invention. It does not automatically grant a patent.
 The right to priority does not remove the invention from the public domain in the absence
of an actual patent.
Additional Notes:
 The court emphasized the purpose of patents, which is to foster and reward invention
while ensuring that inventions eventually become part of the public domain.
 The court also highlighted the social objective of patents and the existence of compulsory
licensing for inventions related to food or medicine.
Conclusion: The court denied Unilab's petition for revival of the abandoned patent application,
citing inexcusable negligence and failure to comply with the prescribed revival period.
Additionally, it clarified the nature of a right to priority and emphasized the balance between
rewarding inventors and benefiting the public.
III. LAW ON PATENTS
A. Patentable Inventions –
Jessie Ching vs. William Salinas, et. al., G.R. No. 161295, June 29, 2005

1. The case involves a dispute over the copyright protection of two automotive spare parts:
the Leaf Spring Eye Bushing for Automobiles and the Vehicle Bearing Cushion.
2. The petitioner claims copyright protection for these parts based on their originality and
technical innovations, arguing that they are works of applied art.
Issues:
1. Whether the Leaf Spring Eye Bushing and Vehicle Bearing Cushion qualify for copyright
protection under the Intellectual Property Law of the Philippines.
2. Whether utility models, which are technical solutions to problems in a specific field of
human activity, can be considered works of applied art and therefore eligible for
copyright protection.
Rulings:
1. The court holds that for a work to be protected by copyright, it must be a work of applied
art with artistic or decorative value. The Leaf Spring Eye Bushing and Vehicle Bearing
Cushion, considered utility models, lack the necessary artistic or decorative value.
2. Utility models, being technical solutions to problems in specific fields, are distinct from
patents. They do not require the same level of inventive step and have a shorter protection
period. The court emphasizes that utility models do not automatically qualify for
copyright protection.
3. The court refers to the Mazer v. Stein case, which established a distinction between
copyright protection for the aesthetic aspects of a work and design patents for the original
and ornamental design. In the Mazer case, statuettes were deemed copyrightable because
of their artistic value, despite being used as lamp bases.
Conclusion: The court denies the petitioner's claim for copyright protection for
the Leaf Spring Eye Bushing and Vehicle Bearing Cushion, as they are
considered utility models lacking significant artistic or decorative value. The
court affirms that utility models do not automatically qualify for copyright
protection under the Intellectual Property Law of the Philippines.

B. Utility Models -
Jessie G. Ching v. William M. Salinas et al., GR No. 161295 (ibid.

Case Summary: Copyrightability of Utility Models

Facts: The case revolves around utility models, specifically a Leaf Spring Eye Bushing for
Automobile and a Vehicle Bearing Cushion. These models were described as mechanical parts
designed for automobiles, made of specific plastics for durability. The petitioner sought
copyright protection for these utility models.
 Issues:
1. Whether the utility models could qualify for copyright protection under Philippine law.
2. Whether the search warrants issued to investigate potential copyright infringement were
valid.
Rulings:
1. The court determined that the utility models in question were not eligible for copyright
protection. While copyright law can apply to various forms of creative expression, utility
models, which are essentially functional mechanical inventions, do not qualify for
copyright protection. Copyright primarily pertains to artistic or literary works.
2. The court ruled that the search warrants issued for potential copyright infringement were
invalid. This was based on the finding that the utility models did not fall under the scope
of copyright protection, and therefore, any claims related to copyright infringement were
not applicable.
Key Legal Principles:
 Utility models are technical solutions to problems in various fields of human activity, and
they differ from inventions eligible for patents.
 Copyright protection applies to original intellectual creations in the literary and artistic
domain. It does not extend to utility models or functional mechanical designs.
Outcome: The court affirmed that the utility models in question were not eligible
for copyright protection, and as a result, the search warrants issued for potential
copyright infringement were annulled and set aside.