INTELLECTUAL PROPERTY DIGESTS

A. PATENTS

A1 Tanada vs Angara, GR 118295, May 2, 1997

FACTS:
On April 15, 1994 Rizalino Navarro, the Secretary of Department of Trade and Industry representing
the Government of the Republic of the Philippines, signed the Final Act Embodying the results of the
Uruguay Round of Multilateral Negotiations. By signing the Final Act he bound the Philippines to
submit to its respective competent authorities the WTO Agreements to seek approval. On December
14, 1994, the Philippine Senate adopted Resolution No. 97 to ratify the WTO Agreement. The WTO
opens access to foreign markets, especially its major trading partners through the reduction of tariffs
on its exports, particularly agricultural and industrial products. Thus, provides new opportunities for
the service sector cost and uncertainty associated with exporting and more investment in the country.
These ate the predicted benefits as reflected in the agreement and as viewed by the signatory
senators, a free market espoused by WTO.

Sen. Wigberto Tanada, together with other lawmakers, taxpayers, and various NGO’s filed a petition
for certiorari, prohibition and mandamus under Rule 65 of the Rules of Court to nullify the Philippine
ratification of the World Trade Organization (WTO) Agreement.

Petitioners Contention:
 Petitioners seek to nullify an act of the Philippine senate on the ground that it contravenes the
constitution.
 The letter, spirit and intent of the constitution mandating “economic patriotism” are violated
by the so-called “parity provisions” and “national treatment” clauses scattered in various parts
not only of the WTO Agreement and its annexes but also in the Ministerial Decisions and
Declarations and in the Understanding and Commitments in Financial services.
 This undertaking unduly limits, restricts and impairs Philippine sovereignty, specifically the
legislative power vested in the Congress of the Phil.
 Petitioners aver that par 1 art. 34 of the General Provisions and Basic Principles of the
Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS) intrude on the
power of the SC to promulgate rules concerning pleading, practice and procedure.
 Petitioner alleged that the senate concurrence in the WTO Agreement and its annexes is
defective and insufficient and thus constitutes abuse of discretion. Petitioner submit that the
concurrence with the WTO Agreement alone is flawed because it is in effect a rejection of the
Final Act, which in turn was the document signed by Sec Navarro in representation of the
Republic upon the authority of the president

Respondent’s contention:
 Grave constitutional issues, expenditures of public funds and serious international
commitments of the nation are involved and that the transcendental public interest requires
that the substantive issues be met head on and decided on the merits.
 The charter provisions are not self-executing and merely set out general policies;
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 1
  These nationalistic portions of the constitution invoked by petitioners should not be read in
isolation but should be related to other relevant provisions of Art XII particularly sec 1 and 13
thereof;
 The cited WTO clauses do not conflict with the constitution and that the WTO agreement
contains sufficient provisions to protect developing countries like the Philippines from the
harshness of sudden trade liberalization.

ISSUES:
1. Does the petition involve a political question over which this court has no jurisdiction?
2. Do the provisions of the WTO agreement and its three annexes contravene Sec 19, Art II, and Sec
10, Art XII of the Philippine Constitution?
3. Do the provisions of said agreement and its annexes limit, restrict, or impair the exercise of
legislative power by congress?
4. Do said provisions unduly impair or interfere with the exercise of judicial power by this court in
promulgating rules on evidence?
5. Was the concurrence of the senate in the WTO Agreement and its annexes sufficient and/or valid,
considering that it did not include the final act, ministerial declarations and decisions, and the
understanding on commitments in financial services?

RULING:
1. Where an action of the legislative branch is seriously alleged to have infringed the Constitution, it
becomes not only the right but in fact the duty of the judiciary to settle the dispute. The question
posed is judicial rather than political. The duty (to adjudicate) remains to assure that the supremacy
of the constitution is upheld.
The jurisdiction of this court to adjudicate the matters raised in the petition is clearly set out in the
1987 constitution:

Judicial power includes the duty of the courts of justice to settle actual controversies involving rights
which are legally demandable and enforceable, and to determine whether or not there has been a
grave abuse of discretion amounting to lack or excess of jurisdiction on the part of any branch or
instrumentality of the government.

2. While the Constitution indeed mandates a bias in favor of Filipino goods, services, labor and
enterprises, at the same time, it recognizes the need for business exchange with the rest of the world
on the bases of equality and reciprocity and limits protection of Filipino enterprises only against
foreign competition and trade practices that are unfair. In other words, the Constitution did not
intend to pursue an isolationist policy. It did not shut out foreign investments, goods and services in
the development of the Philippine economy. While the Constitution does not encourage the
unlimited entry of foreign goods, services and investments into the country, it does not prohibit them
either. In fact, it allows an exchange on the basis of equality and reciprocity, frowning only on foreign
competition that is unfair.

3. By their inherent nature, treaties really limit or restrict the absoluteness of sovereignty. By their
voluntary act, nations may surrender some aspects of their state power in exchange for greater
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 2
benefits granted by or derived from a convention or pact. After all, states, like individuals, live with
coequals, and in pursuit of mutually covenanted objectives and benefits, they also commonly agree to
limit the exercise of their otherwise absolute rights. As shown by the foregoing treaties Philippines
has entered, a portion of sovereignty may be waived without violating the Constitution, based on the
rationale that the Philippines “adopts the generally accepted principles of international law as part of
the law of the land and adheres to the policy of cooperation and amity with all nations.”

4. Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of
the Supreme Court to promulgate rules concerning pleading, practice and procedures. xxx By and
large, the arguments adduced in connection with our disposition of the third issue -- derogation of
legislative power - will apply to this fourth issue also. Suffice it to say that the reciprocity clause more
than justifies such intrusion, if any actually exists. Besides, Article 34 does not contain an
unreasonable burden, consistent as it is with due process and the concept of adversarial dispute
settlement inherent in our judicial system. So too, since the Philippine is a signatory to most
international conventions on patents, trademarks and copyrights, the adjustment in legislation and
rules of procedure will not be substantial.
Hence, the “burden of proof” contemplated by Article 34 should actually be understood as the duty
of the alleged patent infringer to overthrow such presumption. Such burden, properly understood,
actually refers to the “burden of evidence” (burden of going forward) placed on the producer of the
identical (or fake) product to show that his product was produced without the use of the patented
process. The foregoing notwithstanding, the patent owner still has the “burden of proof” since,
regardless of the presumption provided under paragraph 1 of Article 34, such owner still has to
introduce evidence of the existence of the alleged identical product, the fact that it is “identical” to
the genuine one produced by the patented process and the fact of “newness” of the genuine product
or the fact of “substantial likelihood” that the identical product was made by the patented process.

5. The assailed Senate Resolution No. 97 expressed concurrence in exactly what the Final Act required
from its signatories, namely, concurrence of the Senate in the WTO Agreement. Moreover, the Senate
was well-aware of what it was concurring in as shown by the members’ deliberation on August 25,
1994. After reading the letter of President Ramos dated August 11, 1994, the senators of the Republic
minutely dissected what the Senate was concurring in.

In praying for the nullification of the Philippine ratification of the WTO Agreement, petitioners are
invoking this Court’s constitutionally imposed duty to determine whether or not there has been grave
abuse of discretion amounting to lack or excess of jurisdiction on the aprt of the senate in giving its
concurrence therein via Senate Reso No.97. this court cannot find any cogent reason to impute grave
abuse of discretion to the Senate’s exercise of its power of concurrence in the WTO Agreement
granted it by Sec 21 of Art VII of the Constitution.

Wherefore petition is dismissed for lack of merit.

A2 Co San vs Director of Patents, GR L-10563, February 23, 1961

Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 3
FACTS:
Respondent Jose Ong Lian Bio filed with the Philippine Patent Office two applications for the issuance
of letters patent on two designs for luggage. The Director of Patents issues Letters Patent Nos. 6 and 7
in his favor.

Petitioner Co San filed with the Patent Office a petition for cancellation of said letters patent on the
ground that (a) the design is not new or patentable in accordance with Sections 7, 8 and 9, Chapter II
of RA 165, and (b) the specification submitted by said party does not comply with the requirements of
Section 14, Chapter III of said Act.

The petition for cancellation was dismissed by the Director of Patents without hearing and reception
of evidence because of his lack of statutory authority to consider the cancellation of design patents.
Upon review, however, by the Supreme Court, the Director of Patents was ordered to hear the
petition for cancellation.

At the hearing, petitioner adduced only documentary evidence and relied heavily on the Court of
Appeals decision in GR No. 11277-R, People v. Co San, in which he was acquitted of the crime unfair
competition. The Director of Patents, after analyzing the decision of the CA, dismissed the petition for
cancellation for insufficiency of evidence.

Petitioner-appellant contends that the Director of Patents erred in not accepting as final and
conclusive the findings of fact of the CA, namely, that the petitioner was the prior user of the design
in question and the designs in Letters Patent Nos. 6 and 7 are not new and original. The Director of
Patents held that these findings are not “clear”, “satisfactory” and “free from doubt”

ISSUE:
W/N the Director of Patents is bound in the cancellation proceedings by the findings arrived by the CA
in the criminal case against petitioner.

RULING: No. The petition for cancellation should be dismissed for lack of sufficient evidence.

In the cancellation proceedings, the question refers to the validity of the design patents issued to
respondent Jose Ong Lian Bio, while in the criminal case; the inquiry is whether Co San unfairly
competed against the luggage of said respondent protected by design patent no. 7.
 The first is within the cognizance of the Patent Office (Sec. 28, RA 165, as amended); the
second, under the jurisdiction of the CFI (Art. 189, RPC, as amended by RA 172).
 The acquittal of petitioner by the CA was not based on cancellation of a patent, but on the
opinion that the accused (petitioner) had not deceived or defrauded complainant
(respondent).

“The failure of the trial court, in a civil suit, to admit in evidence a former judgment of acquittal in a
criminal action against the defendant is not error. The fact that the evidence in the criminal
prosecution was insufficient to show that the defendant was guilty of a crime does not bar the right of
the offended party to maintain a civil action for damages.” (Worcester v. Ocampo, 22 Phil. 42).
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 4
“A judgment of acquittal in a criminal action for fraudulent registration of a trademark in violation of
Section 18 of Act No. 666, cannot be invoked as res judicata in a civil action based on unfair and
malicious competition on the ground that the facts of the latter are different and have not been
passed upon in the judgment rendered in the former case.” (Ogura v. Chua and Confesor, 59 Phil.
471).

A3 Del Rosario vs CA, GR 11506, March 15, 1996

FACTS:
Roberto del Rosario filed a complaint for patent infringement against private respondent Janito
Corporation. Roberto alleged that he was a patentee of an audio equipment and improved audio
equipment commonly known as the singalong system or karaoke, and in the early part of 1990 he
learned that private respondent was manufacturing a sing-along system bearing the trademark
miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the
patents issued in his favor. Thus he sought from the trial court the issuance of a writ of preliminary
injunction to enjoin.

On 5 February 1993 the trial court temporarily restrained private respondent from manufacturing,
using and/or selling and advertising the miyata sing-along system or any sing-along system
substantially identical to the sing-along system patented by petitioner until further orders.

On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on the basis of
its finding that petitioner was a holder of a utility model patent for a sing-along system and that
without his approval and consent private respondent was admittedly manufacturing and selling its
own sing-along system under the brand name miyata which was substantially similar to the patented
utility model3 of petitioner.

Private respondent assailed the order directing the issuance of the writ by way of a petition for
certiorari with prayer for the issuance of a writ of preliminary injunction and a temporary restraining
order before respondent Court of Appeals.

On 15 November 1993 respondent appellate court granted the writ and set aside the questioned
order of the trial court. It expressed the view that there was no infringement of the patents of
petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio
system, and that the karaoke system was a universal product manufactured, advertised and marketed
in most countries of the world long before the patents were issued to petitioner. The motion to
reconsider the grant of the writ was denied; hence, the instant petition for review.

ISSUE:
WON the Court of Appeals erred in finding the trial court to have committed grave abuse of discretion
in enjoining private respondent from manufacturing, selling and advertising the miyata karaoke brand
sing-along system for being substantially similar if not identical to the audio equipment covered by
letters patent issued to petitioner.
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 5
RULING:
Injunction is a preservative remedy for the protection of substantive rights or interests. there are only
two requisites to be satisfied if an injunction is to issue, namely, the existence of the right to be
protected, and that the facts against which the injunction is to be directed are violative of said right.
For the writ to issue the interest of petitioner in the controversy or the right he seeks to be protected
must be a present right, a legal right which must be shown to be clear and positive.

Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued for a term
of five (5) years from the grant of a Utility Model described and again, on 14 November 1986
petitioner was granted Letters Patent No. UM-6237 for a term of five (5) years.

The Patent Law expressly acknowledges that any new model of implements or tools 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 utility model. Here, there is no dispute that the letters patents issued to petitioner are for
utility models of audio equipment.

In issuing, reissuing or withholding patents and extensions thereof, the Director of Patents
determines whether the patent is new and whether the machine or device is the proper subject of
patent. In passing on an application, the Director decides not only questions of law but also questions
of fact, i.e. whether there has been a prior public use or sale of the article sought to be patented.
Where petitioner introduces the patent in evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision of the Director of Patents in granting the
patent is always presumed to be correct, and the burden then shifts to respondent to overcome this
presumption by competent evidence.

Under Sec. 55 of The Patent Law 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. Respondent
corporation failed to present before the trial court competent evidence that the utility models
covered by the Letters Patents issued to petitioner were not new.

As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently established,
contrary to the findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37
of The Patent Law, petitioner as a patentee shall have the exclusive right to make, use and sell the
patented machine, article or product 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 authorization of the patentee constitutes infringement of his patent.

Petitioner established before the trial court that respondent Janito Corporation was manufacturing a
similar sing-along system bearing the trademark miyata which infringed his patented models.
Respondent Janito Corporation denied that there was any violation of petitioner’s patent rights, and
cited the differences between its miyata equipment and petitioner’s audio equipment.
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 6
It is elementary that a patent may be infringed where the essential or substantial features of the
patented invention are taken or appropriated, or the device, machine or other subject matter alleged
to infringe is substantially identical with the patented invention. In order to infringe a patent, a
machine or device must perform the same function, or accomplish the same result by identical or
substantially identical means and the principle or mode of operation must be substantially the same.

Clearly, therefore, both petitioner’s and respondent’s models involve substantially the same modes of
operation and produce substantially the same if not identical results when used. In view thereof, we
find that petitioner had established before the trial court prima facie proof of violation of his rights as
patentee to justify the issuance of a writ of preliminary injunction in his favor during the pendency of
the main suit for damages resulting from the alleged infringement.

WHEREFORE, the Decision of the Court of Appeals dated 15 November 1993 is REVERSED and SET
ASIDE and the Order of the trial court dated 24 February 1993 granting petitioner the writ of
injunction is REINSTATED. The trial court is directed to continue with the proceedings on the main
action pending before it in order to resolve with dispatch the issues therein presented. SO ORDERED.

A4 Samson vs Tarroza, GR L-20354, July 28, 1969

FACTS:
Petitioner Samson was awarded Utility Model Patent No. 27 for a Dumping and Detachable
Wheelbarrow, noted as: “consists of a wheeled carriage base and an upper pivoted and detachable
carrying tray. The carriage base is comprised of a wheel and two equal lengths of continuous pipes
bent to provide wheel forks at the front and at the rear to support the back portion of the tray, with
the ends of the pipes being adopted as the carrying handles for the wheelbarrow. The two pipes thus
bent are joined together by cross braces in the front and at the rear. The tray is removably pivoted at
its front end through hook catches at its bottom corners, to the forward cross brace, and its rear end
rests solidly over the rear portion of the legs. To dump the load the user pulls a dumping handle at
the back end to cause the tray to pivot upwardly about the front brace to a position of about 45
degrees with the horizontal and with its front end panel being supported by the wheel."

Meanwhile, respondent Tarroza was granted a Side Tilting-Dumping Wheelbarrow, which: “consists of
wheeled carriage made of tubular frames essentially as in petitioner's. Welded transversely to the
parallel frames are two brackets provided with holes designed to complement similar holes on
brackets provided on the tray. The brackets on the tray are so placed that with the provision of a bolt
through the
openings the tray may be tilted approximately 170 degrees to the left or to the right of the
wheelbarrow with its axis running longitudinally through the center of the bottom face of the tray."

ISSUE:
Whether or not respondent Tarroza is entitled to a patent for practical utility, as granted by
respondent Director of Patents.

Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 7

RULING: YES. Under Patent Law, 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 description of the side of tilting-dumping wheelbarrow, the product of 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. So it was held by the
Director of Patents. That
decision as already noted should stand.

In appeals from a decision of the Director of Patents, only questions of law may be reviewed, findings
of facts being conclusive unless supported by substantial evidence. It was not error then, to reiterate,
for the respondent Director of Patents to deny the cancellation of the utility patent granted
respondent Tarroza. Even on the sole issue alone, the petition for review must fail.

Petitioner's theory with respect to the second ground for cancellation, to wit: 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. But the testimonial evidence thus presented is not clear, satisfactory, and
free from doubt, in the face of allegations to the contrary by the respondent.

WHEREFORE, the decision of April 13, 1962 of respondent Director of Patents denying the petition for
the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Tarroza is hereby
affirmed. With costs against petitioner.

A5 Maguan vs CA, GR L-45101, November 28, 1986

FACTS:
Petitioner does business under firm name “Swan Manufacturing” while private respondent does
business under firm name “Susana Luchan Powder Puff Manufacturing”. Petitioner is a patent holder
of powder puff namely: UM-423, UM-450, UM-1184.

Petitioner sent a letter to private respondent that the powder puffs the latter manufactures and sells
to various enterprises, particularly those in the cosmetics industry, resembles identically or is
substantially identical to the former’s powder puffs which it is a patent holder of. Petitioner explained
such production and sale constitute infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled to take judicial action.

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

Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 8

to whom the patents were issued was not the true and actual author nor were her rights derived from
such author.

Later, private respondent assailed the validity of the patents involved and filed with the Philippine
Patent Office petitions for cancellation of: UM-109, UM-1184, UM-110. In view thereof, petitioner
filed a complaint for damages with injunction and preliminary injunction against private respondent
with the then CFI for infringing the aforesaid letters patent.

Trial Court granted the preliminary injunction, 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.

In a MR, private respondent questioned the propriety of the trial court's issuance of the Writ of
Preliminary Injunction arguing that since there is still a pending cancellation proceedings before the
Philippine Patent Office concerning petitioner's patents, such cannot be the basis for preliminary
injunction. However, the trial court denied such MR.

CA initially denied private respondent’s petition for certiorari, but later reversed itself upon
reconsideration. Respondent court gave weight to private respondent's allegation that the latter's
products are not identical or even only substantially identical to the products covered by petitioner's
patents.

ISSUES:
1) Whether or not in an action for infringement the Court a quo had jurisdiction to determine the
invalidity of the patents at issue which invalidity was still pending consideration in the patent
office
2) Whether or not the evidence introduced by private respondent is sufficient to overcome the
presumption of correctness and validity of the patent.

RULING:
1) YES. A regular court (RTC) has jurisdiction to determine the issue of novelty or prior use when
a patent is sought to be enforced, for the purpose of deciding whether or not to issue a writ
of preliminary injunction.

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). Defenses in an action for infringement are provided for in Section 45 of
the same law which in fact were availed of by private respondent in this case. As correctly stated by
the CA, Sec. 46 of the law provides that if the Court "shall find the patent or any claim thereof invalid,
the Director shall on certification of the final judgment x x x issue an order cancelling the patent or
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 9
the claims found invalid and shall publish a notice thereof in the Official Gazette." Upon such
certification, it is ministerial on the part of the patent office to execute the judgment.

2) YES. After a careful review of the evidence consisting of 64 exhibits and oral testimonies of 5
witnesses presented by private respondents before the CFI, as well as those presented by the
petitioner, respondent CA was satisfied that there is a prima facie showing of a fair question
of invalidity of petitioner's patents on the ground of lack of novelty.

As pointed out by said appellate court said evidence appeared not to have been considered at all by
the court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in within the
exclusive jurisdiction of the patent office.

The burden of proof to substantiate a charge of patent infringement lies with the plaintiff. But once
the patent is in evidence, there is created a prima facie presumption of its correctness and validity –
the burden of evidence is upon the defendant to overcome this presumption. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The burden
of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by
competent evidence this legal presumption.

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 (now for more than one year only under Sec. 9 of the Patent Law) before the
date of his application for his patent, will be fatal to the validity of the patent when issued.

The law provides:

"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."

Private respondent contends that powder puffs identical in appearance with that covered by
petitioner's patents existed and were publicly known and used as early as 1963 long before
petitioner was issued the patents in question. As correctly observed by respondent CA, "since
sufficient proofs have been introduced in evidence showing a fair question of the invalidity of the
patents issued for such models, it is but right that the evidence be looked into, evaluated and
determined on the merits so that the matter of whether the patents issued were in fact valid or not
may be resolved."

Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 10

For failure to determine first the validity of the patents before aforesaid issuance of the writ, the trial
court failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of
the right to be protected and the violation of said right. As found by respondent Court of Appeals, the
injunctive order of the trial court is of so general a tenor that petitioner may be totally barred from
the sale of any kind of powder puff.

Claim of prescription may be availed of by patent holder in petitions for cancellation at the Patent
Office, but not in ordinary civil actions for infringement of patent. As to petitioner's claim of
prescription, private respondent's contention that such refers to the filing of petitions for cancellation
in the Patent Office under Sec. 28 of the Patent Law and not to a defense against an action for
infringement under Sec. 45 thereof which may be raised anytime, is evident under aforesaid law.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby AFFIRMED.

A6 Manzano vs CA, GR L-113388, September 5, 1997

FACTS:
Petitioner Angelita Manzano filed with the Philippine Patent Office for the cancellation of Letters of
Patent of gas burner registered in the name of respondent Melecia Medolaria who subsequently
assigned the letters of patent to UNITED FOUNDRY. 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 165; (c)
respondent Medolaria 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.

Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the
UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970;
that Ong helped in the casting of an LPG burner which was the same utility model of a burner and that
after her husband’s separation from the shop she organized BESCO METAL for the casting of LPG
burners one of which had the configuration, form and component parts similar to those being
manufactured by UNITED FOUNDRY.

Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel Francisco.
Ong testified that he worked as a helper in the UNITED FOUNDRY from 1965-1970 where he helped in
the casting of LPG burners with the same form, configuration and mechanism as that model covered
by the Letters Patent issued to private respondent. Francisco testified that he had been employed
with the Manila Gas Corp. where he retired on 1969 as supervisor and that Manila Gas imported
“ransome” burners way back in 1965 which were advertised through brochures to promote sale.

Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who
testified, among others, that he was the General Supervisor of the UNITED FOUNDRY; that in his early
years with the company, UNITED FOUNDRY was engaged in the manufacture of different kinds of gas
stoves as well as burners; that the company manufactured early models of single-piece types of
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 11
burners where mouth and throat were not detachable; that in the latter part of 1978 respondent
Malencia Madolaria confided in him that complaints were being brought to her attention concerning
early models being manufactured; that he was then instructed by private respondent to case several
experimental models based on revised sketches and spcifications; that private respondent again
made some inovations and discovered the solution to all defects of the earlier models and based on
her latest sketches, he was able to cast several models incorporating the innovations introduced.
Various tests were conducted in the presence of Malencia Madolaria and obtained perfect results.
Rolando Madolaria testified that private responet decided to file her application for utility model
patent in December 1979.

On July 7, 1986, the Director of Patents Cesar C. Sandiego denied 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.

Petitioner elevated the decision of the Director of Patents to the Court of Appeals which affirmed the
decision of the Director of Patents. Hence, this petition for review on certiorari.

ISSUE:
Whether the dismissal is proper where the patent applied for has no substantial difference between
the model to be patented and those sold by petitioner.

RULING: YES
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.

However, the validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the improved model
of the LPG burner are matters which are better determined by the Patent Office. The technical staffs
of the Philippine Patent Office composed of experts in their field has accepted private respondent’s
model of gas burner as a discovery. There is a presumption that the Office has correctly determined
the patentability of the model and such action must not be interfered with in the absence of
competent evidence to the contrary.

The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the
Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner
has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent
Office and the Court of Appeals.

Petition DISMISSED.
Intellectual Property under Atty. Abelardo | 1st Sem 2019-2020 | 12