GSELL v.

YAP-JUE
G.R. No. 4720, Jan. 19, 1909

FACTS:
Gsell obtained a patent for manufacturing canes and umbrellas with a curved handle by means of a lamp or
blowpipe fed with mineral oil or petroleum. Yap-Jue made similar products using the same process but
instead of using “a lamp or blowpipe fed with mineral oil or petroleum,” he used a lamp fed with alcohol.

ISSUE:
Whether or not Yap-Jue infringed on the patent of Gsell.

HELD:
Yes, he did. The Court held that alcohol is an equivalent or substitute for mineral oil or petroleum, in
connection with blast lamps or blowpipes. It is a well-known fact at the time when the patent was issued to
Gsell. The use of a blast lamp or blowpipe fed with petroleum or mineral oil, rather than one fed with alcohol,
is an unessential part of the patented process the use of which was prohibited by the court in a prior
proceeding.

The Doctrine of “Mechanical Equivalents” provides that the inventor of an ordinary machine is protected
against all mere formal alterations and against the substitution of mere mechanical equivalents. It protects
the patentee from colorable invasions of his patent under the guise of substitution of some part of his
invention by some well-known mechanical equivalent.

Human ingenuity would be taxed beyond its powers in preparing a grant of a patent so comprehensive in its
terms, "as to include within the express terms of its detailed description every possible alternative of form,
size, shape, material, location, color, weight, etc., of every wheel, rod, bolt, nut, screw, plate, and other
component parts of an invention."

CRESER PRECISION SYSTEM, INC. v. CA

GR No. 118708, Feb. 2, 1998

FACTS:
Ø January 23, 1990- Private respondent was granted by the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT), a Letters Patent covering an aerial fuze which was published in the
September-October 1990.

Ø November 1993- Private respondent that petitioner submitted samples of its patented aerial fuze to
the Armed Forces of the Philippines (AFP) for testing. They learned that petitioner was claiming the aforesaid
aerial fuze as its own and planning to bid and manufacture the same commercially without license or
authority from private respondent.

Ø December 3, 1993- To protect its right, private respondent sent a letter to petitioner advising it for
its existing patent and its rights thereunder, warning petitioner of a possible court action and/or application
for injunction, should it proceed with the scheduled testing by the military on December 7, 1993.

Ø December 8, 1993- In response to private respondent’s demand, petitioner filed a complaint for
injunction and damages arising from the alleged infringement before the Regional Trial Court of Quezon City.

CRESER PRECISION SYSTEMS’ CONTENTION:

1. They are the first, true and actual inventor of an aerial fuze which is developed as early as December
1981 under the Self-Reliance Defense Posture Program (SRDP) of the AFP;
2. That sometime in 1986, petitioner began supplying the AFP with the said aerial fuze;
3. That private respondents aerial fuze is identical in every respect to the petitioners fuze; and
4. That the only difference between the two fuzes are miniscule and merely cosmetic in nature.
FLORO INTERNATIONAL CORP’S CONTENTION
December 27, 1993, private respondent submitted its memorandum alleging that:
1. Petitioner has no cause of action to file a complaint of infringement against it since it has no patent
for the aerial fuze which it claims to have invented;
2. That petitioners available remedy is to file a petition for cancellation of patent before the Bureau of
Patents;
3. That private respondent as the patent holder cannot be stripped of its property right over the
patented aerial fuze consisting of the exclusive right to manufacture, use and sell the same and that it stands
to suffer irreparable damage and injury if it is enjoined from the exercise of its property right over its patent.
RTC: Issued of a writ of preliminary enjoining the defendant and any and all persons acting on its behalf or by
and under its authority, from manufacturing, marketing and/or selling aerial fuzes identical, to those of
plaintiff, and from profiting therefrom, and/or from performing any other act in connection therewith until
further orders from this Court.
Aggrieved, private respondent filed a petition for certiorari, mandamus and prohibition before respondent
Court of Appeals contending the petitioner has no cause of action for infringement against private
respondent, the latter not having any patent for the aerial fuze which it claims to have invented and
developed and allegedly infringed by private respondent.

ISSUE:
Whether or not the petitioner has the right to assail the validity of the patented work of the respondent?

HELD:
YES. The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA 165)
provides that only the patentee or his successors-in-interest may file an action against infringement. What the
law contemplates in the phrase “anyone possessing any right, title or interest in and to the patented
invention” refers only to the patentee’s successors-in-interest, assignees or grantees since the action on
patent infringement may be brought only in the name of the person granted with the patent. There can be no
infringement of a patent until a patent has been issued since the right one has over the invention covered by
the patent arises from the grant of the patent alone.

Therefore, a person who has not been granted letter of patent over an invention has not acquired right or title
over the invention and thus has no cause of action for infringement. Petitioner admitted to have no patent
over his invention. Respondent’s aerial fuze is covered by letter of patent issued by the Bureau of Patents thus
it has in his favor not only the presumption of validity of its patent but that of a legal and factual first and true
inventor of the invention.

PHIL PHARMAWEALTH v. PFIZER

GR No. 167715, Nov. 15, 2010

FACTS:
Pfizer is a registered owner of a patent covering the use of Sulbactam Ampicillin and under the brand name
Unasyn which has validity from 1987 until July 16, 2004. Sometime in 2003, Pfizer discovered that
PhilPharma had submitted bids for the supply of Sulbactam Ampicillin to several hospitals without the
consent of Pfizer and in violation of the latter’s intellectual property rights. Thereafter, Pfizer filed an action
before the IPO for permanent injunction, damages and the forfeiture and impounding of the alleged infringing
products. Further, they also asked for the issuance of a TRO and a preliminary injunction that would prevent
PhilPharma or its assigns from importing, distributing, selling or offering the product for sale in the
Philippines.

After securing a preliminary injunction in its favor in the IPO, Pfizer then filed before the RTC an action for
infringement and unfair competition against PhillPharma. The RTC granted a TRO against Philpharma which
was confirmed by the CA on January 2005. PhilPharma then filed a motion to dismiss the case as it has
become moot and academic as Pfizer’s patent had already lapsed.
ISSUE:
Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly
infringed has already lapsed?

RULING:
The Court ruled in the negative.

The Court cited Section 37, RA 165 (which was the governing law at the time of issuance of Pfizer’s patent)
which provides:

Section 37. Rights of patentees. A patentee shall have the exclusive right to make, use and sell the patented
machine, article or product, and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent; and such making, using, or selling by
any person without the authorization of the patentee constitutes infringement of the patent.

Under RA 165, the term of a patent shall be 17 years from the date of its issuance and since Pfizer’s patent
was issued on July 16, 1987, its validity should only be until 2004 of the same date; beyond that, Pfizer no
longer possess the exclusive right to make, use and sell the articles or products covered by its patent.

Based on the RoC, the requisites for the issuance of an injunctive relief are as follows;
1. The existence of a clear and unmistakable right that must be protected; and
2. urgent and paramount necessity for the writ to prevent serious damage.

In this case, when the CA issued a TRO against PhilPharma on 2005, Pfizer no longer had the clear and
unmistakable right that must be protected. Hence, the issuance of such TRO was not proper. JOM

ROMA DRUG v. RTC

G.R. No. 149907, April 16, 2009

FACTS:

On 14 August 2000, a team composed of the National Bureau of Investigation (NBI) operatives and inspectors
of the Bureau of Food and Drugs (BFAD) conducted a raid on petitioner Roma Drug pursuant to a search
warrant issued by the Regional Trial Court (RTC), Branch 57, Angeles City.

The raiding team seized several imported medicines, including Augmentin (375mg.) tablets, Orbenin
(500mg.) capsules, Amoxil (250mg.) capsules and Ampiclox (500mg.).

It appears that Roma Drug is one of six drug stores which were raided on or around the same time upon the
request of SmithKline Beecham Research Limited (SmithKline) which is the local distributor of
pharmaceutical products manufactured by its parent London-based corporation. The seized medicines, which
were manufactured by SmithKline, were imported directly from abroad and not purchased through the local
SmithKline, the authorized Philippine distributor of these products.

The NBI subsequently filed a complaint against Rodriguez for violation of Section 4 (in relation to Sections 3
and 5) of Republic Act No. 8203, also known as the Special Law on Counterfeit Drugs (SLCD), with the Office
of the Provincial Prosecutor in San Fernando, Pampanga. The section prohibits the sale of counterfeit drugs,
which under Section 3(b)(3), includes “an unregistered imported drug product.” The term “unregistered”
signifies the lack of registration with the Bureau of Patent, Trademark and Technology Transfer of a
trademark, tradename or other identification mark of a drug in the name of a natural or juridical person, the
process of which is governed under Part III of the Intellectual Property Code.

ISSUE:
Whether or not Roma Drug is allowed to import the said drugs or medicine.

HELD:
Yes. Section 7 of Rep. Act No. 9502 also known as the Universally Accessible Cheaper and Quality Medicines
Act of 2008, amends Section 72 of the Intellectual Property Code in that the later law unequivocally grants
third persons the right to import drugs or medicines whose patent were registered in the Philippines by the
owner of the product.

The owner of a patent has no right to prevent third parties from performing or using, without his
authorization, a patented product which has been put on the market in the Philippines by the owner of the
product, or with his express consent, insofar as such use is performed after that product has been so put on
the said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights shall
apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the
patent owner, or by any party authorized to use the invention: Provided, further, That the right to import the
drugs and medicines contemplated in this section shall be available to any government agency or any private
third party.

The drugs and medicines are deemed introduced when they have been sold or offered for sale anywhere else
in the world.

SMITH KLINE BECKMAN CORP. v CA & TRYCO PHARMA

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

FACTS:
Smith Kline Beckman Corp (Smith Kline) filed an application for the patent over a product that fights off
gastrointestinal parasites from various cattles and pet animals with Methyl 5 Propylthio-2-Benzimidazole
Carbamate as its active ingredient. The application was approved by virtue of Letters Patent No. 14561. On
the other hand, Tryco Pharma Corporation is a domestic corporation that manufactures, distributes and sells
veterinary products including Impregon, a drug that has Albendazole as its active ingredient and is effective
against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and
goats.

Smith Kline sued Tryco Pharma for infringement of patent and unfair competition as it claims that its patent
covers the substance Albendazole and by manufacturing, selling, using, and causing to be sold, Trycho
Pharma used the drug Impregon without its authorization. On their defense, Tryco Pharma claimed that
Patent 14561 does not cover the substance Albendazole for nowhere in it does that word appear and, even if
it was included, there is no proof that Tryco Pharma passed off in any way its veterinary products as those of
Smith Kline.

Both the RTC and CA dismissed the complaint and held that Tryco Pharma was not liable for any infringement
of the patent of Smith Kline in light of the latter’s failure to show that Albendazole is the same as the
compound subject of Patent 14561
However, Smith Kline still asserted that there was indeed an infringement as, under the Doctrine of
Equivalents, Impregon is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered
by its patent since both of them are meant to combat worm or parasite infestation in animals. Basically, it
claims that two substances substantially do the same function in substantially the same way to achieve the
same results, thereby making them truly identical.

ISSUE:
Was Trycho Pharma liable for patent infringement?

RULING:
The Court ruled in the negative.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same
result. In other words, the principle or mode of operation must be the same or substantially the same. It
requires satisfaction of the function-means-and-result test; with the patentee having the burden to show that
all three components of such equivalency test are met.

In this case, aside from the proven fact that both substances are anthelmintic, nothing more is asserted and
substantiated regarding the method or means by which Albendazole weeds out parasites in animals.
Providing no information on whether that method is substantially the same as the manner by which Smith
Kline’s compound works, Smith Kline failed to satisfy the requirement under the doctrine of equivalents. JOM