Case Title 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.

Relevant Facts 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.

Petitioner filed a complaint for damages

with injunction and preliminary injunction
against private respondent with the then
Court of First Instance of Rizal, Pasig
Branch for infringing the patent of powder
puff, and prayed, among others, that a
writ of preliminary injunction be
immediately issued.

Private respondent assailed the validity of

the patents involved and filed with the
Philippine Patent Office petitions for
cancellation of the following:

(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); and

(3) Utility Model Letters Patent Extension

No. UM-110 (Inter Partes Case No. 840,
Susana Luchan v. Rosario C. Tan.
Argument/s of the Petitioner Petitioner informed through a letter the
private respondent that the powder puffs
the latter is manufacturing and selling to
various enterprises particularly those in
the cosmetics industry are substantially
Identical powder puffs of which the
petitioner is a patent holder. Petitioner
explained such production and sale
constitute infringement of said patents
and therefore its immediate
discontinuance is demanded.

Argument/s of the Respondent 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.

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.

Decision of the Trial Court and/or Director
of Patents
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.
The trial court issued an Order granting
the preliminary injunction prayed for by
petitioner. Consequently, the
corresponding writ was subsequently
issued enjoining the herein private
respondent 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

Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
Relevance to the Topic (include relevant SEC. 9. Invention not considered new or
provisions of the IPL)
Model No. 1184 or from infringement
upon or violating said letters patent in any
way whatsoever.
The trial court also denied private
respondent's motion for reconsideration.
The Writ of Preliminary Injunction was
issued by the respondent Court of
Appeals and ordered to ENJOINED to
RESTRAIN from enforcing or continuing
to enforce the proceedings complained of
in the petition until further orders from this
court.
Respondent court promulgated a decision
and finding no merit in the petition, the
same is hereby dismissed and the
preliminary injunction previously issued
by this Court is hereby set aside, with
costs.
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
before the date of his application for his
patent will be fatal to the validity of the
patent when issued.
The assailed resolutions of the Court of
Appeals are affirmed.
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.

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).

Section 45. Defenses in action for

infringement. - In an action for
infringement the defendant, in addition to
other defenses available to him, may
show the invalidity of the patent or any
claim thereof on any of the grounds on
which a petition of cancellation can be
brought under section twenty-eight,
Chapter VII hereof.

Section 46. Patent found invalid to be

cancelled. - If the court shall find the
patent or any claim thereof invalid, the
Director shall, on certification of the final
judgment to the Office, issue an order
cancelling the patent or the claims found
invalid, and shall publish a notice thereof
in the Official Gazette.
Case Title G.R. No. 14101 September 24,
1919

ANGEL VARGAS, plaintiff-appellant,

vs.
F. M. YAPTICO & CO. (Ltd.), defendant-
appellee.
Relevant Facts 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. He made application for a United
States patent to cover his so-called
invention and letters patent were issued
by the United States Patent Office in
favor of Vargas. 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.

The petitioner has engaged in the

manufacture of these plows in the city of
Iloilo wherein 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.

In the early part of 1918, petitioner

institute judicial proceedings at the First

Argument/s of the Petitioner
Argument/s of the Respondent
Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
Instance of Iloilo to enjoin the alleged
infringement of U.S. Patent No. 1020232
by the respondent and to recover the
damages suffered by reason of this
infringement.
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.
The petitioner 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.
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 court issued the preliminary
injunction as prayed for.
The trial judge, the Honorable Antonio
Villareal, in a very exhaustive and learned
decision, rendered judgment in favor of
the defendant 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.
Tested by the principles which go to
make the law, we think a preponderance
of the evidence is to the effect that for

Relevance to the Topic (include relevant Section 4886 of the United States
provisions of the IPL)
more than two years before the
application for the original letters patent,
or before July 22, 1908, there was, by the
consent and allowance of Vargas, a
public use of the invention covered by
them.
To conclude, we are not certain but that
appellee has proved every one of his
defenses. We are certain that he has at
least demonstrated the public use of the
Vargas plow over two years prior to the
application for a patent. Such being the
case, although on a different ground, we
must sustain the judgment of the lower
court, without prejudice to the
determination of the damages resulting
from the granting of the injunction, with
the costs of this instance against the
appellant.
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 and 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.)
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."

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.

Case Title G.R. No. L-36650 January 27,

1933

ANGEL VARGAS, plaintiff-appellee,

Relevant Facts
Argument/s of the Petitioner
vs.
PETRONILA CHUA, ET AL., defendants-
appellants.
Angel Vargas 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.
Petitioner argued that he is the registered

Argument/s of the Respondent
Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
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.
He 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.
It does not 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 and the
subject patent was declared null and void
in the aforementioned case of Vargas vs.
F. M. Yaptico & Co., supra.
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.
The Court carefully examined all the
plows presented as exhibits as well as
the designs of those covered by the
patent, and 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 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
the 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, the
Court have seen that the same results
can be had with the old implement.

In view of the foregoing, the Court 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.

The judgment appealed from is hereby

reversed and the appellants are absolved
from the complaint, with costs of this
instance against the appellee.
Relevance to the Topic (include relevant Section 4886 of the United States
provisions of the IPL) 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 and 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.)

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.

Case Title G.R. No. L-38010 December 21,

1933

PATRICK HENRY FRANK and WILLIAM

HENRY GOHN, plaintiffs-appellants,
vs.
G. KOSUYAMA, defendant-appellee.
Relevant Facts The petitioners are the owner of Patent
No. 1519579 on improvement in hemp

Argument/s of the Petitioner
Argument/s of the Respondent
stripping machines, issued by the United
States Patent Office and registered in the
Bureau of Commerce and Industry of the
Philippine Islands.
Petitioners filed an action sought the
respondents to refrain immediately from
the manufacture and sale of 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, to pay the petitioners the sum
of P60 as profit on each machine
manufactured or sold by respondent; that
upon approval of the required bond, said
respondent 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 respondent be sentenced to pay the
costs and whatever damages the
petitioners might be able to prove therein.
The petitioners alleged that there is
infringement by the respondent of the
rights and privileges acquired by them
over the aforesaid patent through the
manufacture and sale by the former of
machines similar to that covered by the
aforesaid patent.
They 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 tappering 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 palletor rest."
Respondent contends that he had no
prior knowledge of the existence of the

Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
Relevance to the Topic (include relevant SEC. 9. Invention not considered new or
provisions of the IPL)
hemp-stripping invention of the petitioners
nor had any intent to imitate the Frank’s
product.
The Trial Court ruled in favor of the
petitioners.
The Court of Appeals affirmed the
decision of the lower court.
The Court reiterate that the respondent
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 and obtained their
patent for improved hemp stripping
machines, the judgment appealed from is
hereby affirmed, with the costs against
the plaintiffs-appellants.
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.
Case Title G.R. No. L-32160 January 30, 1982

DOMICIANO A. AGUAS, petitioner,

vs.
CONRADO G. DE LEON and COURT OF
APPEALS, respondents.
Relevant Facts De Leon filed in the Court of First
Instance of Rizal at Quezon City a
complaint for infringement of patent
against Aguas and F. H. Aquino and
Sons alleging that he is 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.

De Leon gave direct and personal notice

Argument/s of the Petitioner
to the petitioners of their said acts of
infringement and requested them to
desist but they refused and neglected to
desist and have disregarded such
request, and continue to so infringe
causing great and irreparable damage to
him.
He alleged that De Leon is neither the
original first nor sole inventor of the
improvements in the process of making
mosaic pre-cast tiles, the same having
been used by several tile-making
factories in the Philippines and abroad
years before the alleged invention by de
Leon.

He also alleged Letters Patent No. 658

was unlawfully acquired by making it
appear in the application that the process
is new and that the respondent is the

Argument/s of the Respondent
Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
owner of the process when in truth and in
fact the process incorporated in the
patent application has been known and
used in the Philippines by almost all tile
makers long before the alleged use and
registration of patent by de Leon.
The registration of the alleged invention
did not confer any right on the respondent
because the registration was unlawfully
secured and was a result of the gross
misrepresentation on the part of De Leon
and his alleged invention is a new and
inventive process.
Lastly, that the allegation of the
respondent that Patent No. 658 is of great
value to him and of great benefit to the
public is a mere conclusion of the De
Leon.
The respondent alleged that him being
the true owner and inventor of the said
patent, the petitioner infringed Letters of
Patent No. 658 by making, using and
selling tiles embodying said patent
invention and that F. H. Aquino & Sons is
guilty of infringement by making and
furnishing to Aguas the engravings,
castings and devices designed and
intended of tiles embodying his patented
invention.
The court issued an order granting the De
Leon’s petition for a Writ of Preliminary
Injunction.
The trial court rendered decision in favor
of the respondent and declaring
respondent’s patent valid and infringed.
The Court of Appeals affirmed the
decision of the trial court, with the
modification on the award of moral
damages to be reduced to P3,000.00.
The contention of the petitioner is devoid
of merit. De Leon never claimed to have

Relevance to the Topic (include relevant Section 7. Inventions patentable. - Any
provisions of the IPL)
invented the process of tile-making.
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.
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 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.
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. The decision of the Court of
Appeals in CA G.R. No. 37824-R
appealed from is hereby affirmed, without
pronouncement as to costs.
invention of a new and useful machine,
manufactured product or substance,
process, or an improvement of any of the
foregoing, shall be patentable.
Section 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 validly issued patent in the
Philippines granted on an application filed
before the filing of the application for
patent therefor.

Section 42. Civil action for

infringement. - Any patentee, or anyone
possessing any right, title or interest in
and to the patented invention, whose
rights have been infringed, may bring a
civil action before the proper Court of
First Instance, to recover from the
infringer damages sustained by reason of
the infringement and to secure an
injunction for the protection of his rights.

If the damages are inadequate or cannot

be readily ascertained with reasonable
certainty, the court may award as
damages a sum amounting to a
reasonable royalty.

The court may, according to the

circumstances of the case, award
damages 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.

Case Title G.R. No. 113388. September 5, 1997

ANGELITA
MANZANO, Petitioner, v. COURT OF
APPEALS, and MELECIA MADOLARIA,
as Assignor to NEW UNITED FOUNDRY
MANUFACTURING

Relevant Facts
Argument/s of the Petitioner
CORPORATION, Respondents.
Petitioner filed with the Philippine Patent
Office an action for the cancellation of
Letters Patent No. UM-4609 for a gas
burner registered in the name of the
respondent 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.
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

Argument/s of the Respondent
Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
for patent therefor was filed.
The respondent alleged that together with
one of the employee of the company,
they cast several experimental models
based on revised sketches and
specifications and made some
innovations. It was alleged also 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, she
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
her supervision and they obtained perfect
results. Private respondent decided to file
her application for utility model patent in
December 1979.
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 Court of Appeals affirmed the
decision of the Director of Patents.
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. 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.

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. 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.

The Court denied the petition and

affirmed the Decision of the Court of
Appeals affirming that of the Philippine
Patent Office.
Relevance to the Topic (include relevant Section 14. The specification. - The
provisions of the IPL) specification shall include:

(a) The title of the invention;

(b) A brief statement of its nature

and purpose;

(c) A brief explanation of the

drawings, where there are
drawings;
 (d) A complete and detailed
description of the invention in such
full, clear, concise and exact terms
as to enable any person skilled in
the art or science to which the
invention relates to make and
practice the invention; and

(e) A distinct and explicit claim or

claims of the subject matter which
the applicant claims as new and
seeks to have patented.

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.

Section 55. Industrial designs. - Any new

and original creation relating to the
features of shape, pattern, configuration,
ornamental, or artistic appearance of an
article or industrial product may be
protected as an industrial design by the
author 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
hereinafter provided.

Case Title G.R. No. L-20354. July 28, 1969.

GERARDO SAMSON, JR., Petitioner, v.

FELIPE TARROZA and DIRECTOR OF
PATENTS, Respondents.
Relevant Facts The petitioner filed a petition for the
cancellation of a utility model patent for a
Side Tilting- Dumping Wheelbarrow
granted to respondent.

Argument/s of the Petitioner
Argument/s of the Respondent
Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
He was awarded Utility Model Patent No.
27 for the above type of wheelbarrow
which consists of a wheeled carriage
base and an upper pivoted and
detachable carrying tray.
He alleged that the respondent infringed
his wheelbarrow. That respondent is not
the true and actual inventor or designer of
the utility model is premised on the fact
that because of the proximity of the two,
the petitioner and the respondent being
brothers-in-law, and living in adjoining
residential lots, the latter has had ample
time and opportunity to observe and copy
the former’s wheelbarrow.
Respondent alleged that he is the actual
inventor or designer of the utility model of
his wheelbarrow.
The Director of Patents denied the
petition.
The requirement explicitly set forth in the
statute has thus been met. Respondent
Tarroza is entitled to its benefits. The
grant to him of a patent for a utility model
is in accordance with law. There was no
reason, therefore, for its cancellation.
There is an express recognition under the
Patent Law, as already noted, that any
new model of implements or tools or of
any industrial product even if not
possessed of the quality of invention but
which is of "practical utility" is entitled to a
"patent for a utility model." From the
above description of the side tilting-
dumping wheelbarrow, the product of
respondent’s ingenuity and industry, it is
quite apparent that it has a place in the
market and possesses what the statute
refers to as "practical utility." The
requirement explicitly set forth in the
statute has thus been met. Respondent
Tarroza is entitled to its benefits. The
 grant to him of a patent for a utility model
is in accordance with law. There was no
reason, therefore, for its cancellation.

The decision of respondent Director of

Relevance to the Topic (include relevant Section 55. Industrial designs. - Any new
provisions of the IPL)
Patents denying the petition for the
cancellation of Utility Model Letters
Patent No. 62 in favor of respondent
Tarroza is hereby affirmed.
and original creation relating to the
features of shape, pattern, configuration,
ornamental, or artistic appearance of an
article or industrial product may be
protected as an industrial design by the
author 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
hereinafter provided.

Case Title G.R. No. 161295 June 29, 2005

JESSIE G. CHING, petitioner,

vs.
WILLIAM M. SALINAS, SR., WILLIAM M.
SALINAS, JR., JOSEPHINE L. SALINAS,
JENNIFER Y. SALINAS, ALONTO
SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE
PRODUCT
CORPORATION), respondents.
Relevant Facts Ching is the owner and general manager
of Jeshicris Manufacturing Co., the maker
and manufacturer of a Utility Model,
described as "Leaf Spring Eye Bushing
for Automobile" made up of plastic and
were issued by the National Library
Certificates of Copyright Registration and
Deposit of the said work described
therein as "Leaf Spring Eye Bushing for
Automobile."

Argument/s of the Petitioner
Argument/s of the Respondent
Petitioner requested the National Bureau
of Investigation for police/investigative
assistance for the apprehension and
prosecution of illegal manufacturers,
producers and/or distributors of the
works. After due investigation, the NBI
filed applications for search warrants in
the RTC of Manila against William
Salinas, Sr. and the officers and
members of the Board of Directors of
Wilaware Product Corporation.
The RTC granted the application and
issued Search Warrant for the seizure of
the articles. In the inventory submitted by
the NBI agent, it appears that the
following articles/items were seized
based on the search warrants:
Leaf Spring eye bushing
Budder for C190 mold
Diesel Mold
The respondents filed a motion to quash
the search warrants.
The petitioner alleged that the respondent
is one of the illegal manufacturers,
producers and/or distributors of their
original works which were mentioned
above.
He alleged that his works are covered by
Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner
averred that the copyright certificates
are prima facie evidence of its validity.
The respondents alleged that the works
covered by the certificates issued by the
National Library are not artistic in nature;
they are considered automotive spare
parts and pertain to technology. They
also alleged that the models are not
original, and as such are the proper
subject of a patent, not copyright.
Decision of the Trial Court and/or Director
of Patents
Decision of the Court of Appeals, if
applicable
Relevant Ruling of the Supreme Court
Relevance to the Topic (include relevant 171.10. A "work of applied art" is an
provisions of the IPL)
The trial court issued an Order granting
the motion, and quashed the search
warrant on its finding that there was no
probable cause for its issuance. The court
ruled that the work covered by the
certificates issued to the petitioner
pertained to solutions to technical
problems, not literary and artistic as
provided in Article 172 of the Intellectual
Property Code.
His motion for reconsideration was
denied also by the RTC.
CA rendered judgment dismissing the
petition on its finding that the RTC did not
commit any grave abuse of its discretion
in issuing the assailed order.
The petition has no merit.
It is worthy to state that the works
protected under the Law on Copyright
are: literary or artistic works (Sec. 172)
and derivative works (Sec. 173). The Leaf
Spring Eye Bushing and Vehicle Bearing
Cushion fall on neither classification.
Accordingly, if, in the first place, the item
subject of the petition is not entitled to be
protected by the law on copyright.
In this case, the bushing and cushion are
not works of art. They are, as the
petitioner himself admitted, utility models
which may be the subject of a patent.
The instant petition is hereby DENIED for
lack of merit. The assailed Decision and
Resolution of the Court of Appeals in CA-
G.R. SP No. 70411 are AFFIRMED.
Search Warrant Nos. 01-2401 and 01-
2402 issued on October 15, 2001 are
ANNULLED AND SET ASIDE.
artistic creation with utilitarian functions or
incorporated in a useful article, whether
made by hand or produced on an
industrial scale.

Section 172. Literary and Artistic Works. -

172.1. Literary and artistic works,
hereinafter referred to as "works", are
original intellectual creations in the literary
and artistic domain protected from the
moment of their creation and shall include
in particular:

(a) Books, pamphlets, articles and

other writings;

(b) Periodicals and newspapers;

(c) Lectures, sermons, addresses,

dissertations prepared for oral
delivery, whether or not reduced in
writing or other material form;

(d) Letters;

(e) Dramatic or dramatico-musical

compositions; choreographic
works or entertainment in dumb
shows;

(f) Musical compositions, with or

without words;

(g) Works of drawing, painting,

architecture, sculpture, engraving,
lithography or other works of art;
models or designs for works of art;

(h) Original ornamental designs or

models for articles of manufacture,
whether or not registrable as an
industrial design, and other works
of applied art;

(i) Illustrations, maps, plans,

sketches, charts and three-
dimensional works relative to
geography, topography,
 architecture or science;

(j) Drawings or plastic works of a

scientific or technical character;

(k) Photographic works including

works produced by a process
analogous to photography; lantern
slides;

(l) Audiovisual works and

cinematographic works and works
produced by a process analogous
to cinematography or any process
for making audio-visual recordings;

(m) Pictorial illustrations and

advertisements;

(n) Computer programs; and

(o) Other literary, scholarly,

scientific and artistic works.

172.2. Works are protected by the sole

fact of their creation, irrespective of their
mode or form of expression, as well as of
their content, quality and purpose. (Sec.
2, P.D. No. 49a)

Section 173. Derivative Works. - 173.1.

The following derivative works shall also
be protected by copyright:

(a) Dramatizations, translations,

adaptations, abridgments,
arrangements, and other
alterations of literary or artistic
works; and

(b) Collections of literary, scholarly

or artistic works, and compilations
of data and other materials which
are original by reason of the
selection or coordination or
 arrangement of their contents.
(Sec. 2, [P] and [Q], P.D. No. 49)

173.2. The works referred to in

paragraphs (a) and (b) of Subsection
173.1 shall be protected as new works:
Provided however, That such new work
shall not affect the force of any subsisting
copyright upon the original works
employed or any part thereof, or be
construed to imply any right to such use
of the original works, or to secure or
extend copyright in such original works.
(Sec. 8, P.D. 49; Art. 10, TRIPS)

Section 174. Published Edition of Work. -

In addition to the right to publish granted
by the author, his heirs, or assigns, the
publisher shall have a copyright
consisting merely of the right of
reproduction of the typographical
arrangement of the published edition of
the work. (n)

Case Title G.R. No. L-5943 April 12, 1954

CO SAN alias KING CHONG, recurrente-

apelante, vs. CELEDONIO AGRAVA,
como Director de la Oficina de Patentes,
y JOSE ONG LIAN BIO, recurridos-
apelados.
Relevant Facts

Argument/s of the Petitioner

Argument/s of the Respondent

Decision of the Trial Court and/or Director

of Patents

Decision of the Court of Appeals, if

applicable
Relevant Ruling of the Supreme Court

Relevance to the Topic (include relevant

provisions of the IPL)