I.

G.R. No. 121867 July 24, 1997

patented product; and that private respondent was motivated by the

pecuniary gain attendant to the grant of a compulsory license. Petitioner
also maintained that it was capable of satisfying the demand of the local
market in the manufacture and marketing of the medicines covered by the
patented product. Finally, petitioner challenged the constitutionality of
Sections 34 and 35 of R.A. No. 165 for violating the due process and equal
protection clauses of the Constitution.

SMITH KLINE & FRENCH LABORATORIES, LTD., petitioner,

vs.
COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and DOCTORS PHARMACEUTICALS,
INC. respondents.

After appropriate proceedings, the BPTTT handed down its decision on 14

February 1994, with the dispositive portion thereof providing:
DAVIDE, JR., J.:

NOW, THEREFORE, by virtue of the powers vested in this Office by

Republic Act No. 165, as amended by Presidential Decree No. 1263,
there is hereby issued a license in favor of the herein [private
respondent], United Laboratories, Inc., [sic] under Letters Patent
No. 12207 issued on November 29, 1978, subject to the following
terms and conditions:

This is an appeal under Rule 45 of the Rules of Court from the decision 1 4
November 1994 of the Court of Appeals in CA-G.R. SP No. 33520, which
affirmed the 14 February 1994 decision 2 of the Director of the Bureau of
Patents, Trademarks and Technology Transfer (BPTTT) granting a
compulsory non-exclusive and non-transferable license to private
respondent to manufacture, use and sell in the Philippines its own brands
of pharmaceutical products containing petitioner's patented
pharmaceutical product known as Cimetidine.

1. That [private respondent] be hereby granted a non-exclusive

and non-transferable license to manufacture, use and sell in the
Philippines its own brands of pharmaceutical products containing
[petitioner's] patented invention which is disclosed and claimed in
Letters Patent No. 12207;

Petitioner is a foreign corporation with principal office at Welwyn Garden

City, England. It owns Philippine Letters Patent No. 12207 issued by the
BPTTT for the patent of the drug Cimetidine.

2. That the license granted herein shall be for the remaining life of
said Letters Patent No. 12207 unless this license is terminated in
the manner hereinafter provided and that no right or license is
hereby granted to [private respondent] under any patent to
[petitioner] or [sic] other than recited herein;

Private respondent is a domestic corporation engaged in the business of

manufacturing and distributing pharmaceutical products. On 30 March
1987, it filed a petition for compulsory licensing 3 with the BPTTT for
authorization to manufacture its own brand of medicine from the
drug Cimetidine and to market the resulting product in the Philippines. The
petition was filed pursuant to the provisions of Section 34 of Republic Act
No. 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties,
Regulating the Issuance of Patents, and Appropriating Funds Therefor),
which provides for the compulsory licensing of a particular patent after the
expiration of two years from the grant of the latter if the patented
invention relates to, inter alia, medicine or that which is necessary for
public health or public safety. Private respondent alleged that the grant of
Philippine Letters Patent No. 12207 was issued on 29 November 1978; that
the petition was filed beyond the two-year protective period provided in
Section 34 of R.A. No. 165; and that it had the capability to work the
patented product or make use of it in its manufacture of medicine.

5. By virtue of this license, [private respondent] shall pay

[petitioner] a royalty on all license products containing the
patented substance made and sold by [private respondent] in the
amount equivalent to TWO AND ONE HALF PERCENT (2.5%) of the
net sales in Philippine currency. The term "net scale" [sic] means
the gross amount billed for the product pertaining to Letters Patent
No. 12207, less
(a) Transportation charges or allowances, if any, included in such
amount;
(b) Trade, quantity or cash discounts and broker's or agent's or
distributor's commissions, if any, allowed or paid;

Petitioner opposed, arguing that private respondent had no cause of action

and lacked the capability to work the patented product; the petition failed
to specifically divulge how private respondent would use or improve the

(c) Credits or allowances, if any, given or made on account of

rejection or return of the patented product previously delivered;
and

7. [Private respondent] shall comply with the laws on drugs and

medicine requiring previous clinical tests and approval of proper
government authorities before selling to the public its own
products manufactured under the license;

(d) Any tax, excise or government charge included in such amount,

or measured by the production sale, transportation, use of delivery
of the products.

8. [Petitioner] shall have the right to terminate the license granted

to [private respondent] by giving the latter thirty (30) days notice
in writing to that effect, in the event that [private respondent]
default [sic] in the payment of royalty provided herein or if [private
respondent] shall default in the performance of other convenants
or conditions of this agreement which are to be performed by
[private respondent]:

In case [private respondent's] product containing the patented

substance shall contain one or more active ingredients admixed
therewith, said product hereinafter identified as admixed product,
the royalty to be paid shall be determined in accordance with the
following formula:

(a) [Private respondent] shall have the right

provided it is not in default to payment or royalties
or other obligations under this agreement, to
terminate the license granted to its, [sic] giving
[petitioner] thirty (30) days-notice in writing to that
effect;

Net Sales on Value of Patented

ROYALTY = Admixed Product x 0.025 x Substance

(b) Any termination of this license as provided for

above shall not in any way operate to deny
[petitioner] its rights or remedies, either at laws
[sic] or equity, or relieve [private respondent] of
the payment of royalties or satisfaction of other
obligations incurred prior to the effective date of
such termination; and

Value of Patented Value of Other

Substance Active Ingredients
4. The royalties shall be computed after the end of each calendar
quarter to all goods containing the patented substance herein
involved, made and sold during the precedent quarter and to be
paid by [private respondent] at its place of business on or before
the thirtieth day of the month following the end of each calendar
quarter. Payments should be made to [petitioner's] authorized
representative in the Philippines;

(c) Notice of termination of this license shall be

filed with the Bureau of Patents, Trademarks and
Technology Transfer.
9. In case of dispute as to the enforcement of the provisions of this
license, the matter shall be submitted for arbitration before the
Director of Bureau of Patents, Trademarks and Technology Transfer
or any ranking official of the Bureau of Patents, Trademarks and
Technology Transfer duly delegated by him.

5. [Private respondent] shall keep records in sufficient detail to

enable [petitioner] to determine the royalties payable and shall
further permit its books and records to be examined from time to
time at [private respondent's] premises during office hours, to the
extent necessary to be made at the expense of [petitioner] by a
certified public accountant appointed by [petitioner] and
acceptable to [private respondent].

10. This License shall inure to the benefit of each of the parties
herein, to the subsidiaries and assigns of [petitioner] and to the
successors and assigns of [private respondent]; and

6. [Private respondent] shall adopt and use its own trademark or

labels on all its products containing the patented substance herein
involved;

11. This license take [sic] effect immediately. 4

Petitioner then appealed to the Court of Appeals by way of a petition for

review, which was docketed as CA-G.R. SP No. 33520. Petitioner claimed
that the appealed decision was erroneous because:

competent personnel, machines and equipment as well as permit

to manufacture different drugs containing patented active
ingredients such as ethambutol of American Cyanamid and
Ampicillin and Amoxicillin of Beecham Groups, Ltd."

I
As to the claim by the petitioner that it has the capacity to work
the patented product although it was not shown that any
pretended abuse has been committed, thus the reason for granting
compulsory license "is intended not only to give a chance to others
to supply the public with the quantity of the patented article but
especially to prevent the building up of patent monopolities [sic]."
[Parke Davis v. Doctors Pharmaceuticals, Inc., 14 SCRA 1053].

. . . [IT] VIOLATES INTERNATIONAL LAW AS EMBODIED IN THE PARIS

CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY
AND MUST ACCORDINGLY BE SET ASIDE AND MODIFIED.
II
. . . [IT] IS AN INVALID EXERCISE OF POLICE POWER.

We find that the granting of compulsory license is not simply

because Sec. 34 (1) e, RA 165 allows it in cases where the
invention relates to food and medicine. The Director of Patents also
considered in determining that the applicant has the capability to
work or make use of the patented product in the manufacture of a
useful product. In this case, the applicant was able to show that
Cimetidine, (subject matter of latters Patent No. 12207) is
necessary for the manufacture of an anti-ulcer drug/medicine,
which is necessary for the promotion of public health. Hence, the
award of compulsory license is a valid exercise of police power.

III
CONCEDING ARGUENDO THE QUESTIONED DECISION'S VALIDITY,
THE BPTTT'S PRONOUNCEMENT FIXING THE ROYALTY AT 2.5% OF
THE NET WHOLESALE PRICE IN PHILIPPINE CURRENCY WAS
RENDERED WITHOUT ANY FACTUAL BASIS AND AMOUNTS TO
EXPROPRIATION OF PRIVATE PROPERTY WITHOUT JUST
COMPENSATION WHICH IS VIOLATE OF THE CONSTITUTION.

We do not agree to [sic] petitioner's contention that the fixing of

the royalty at 2.5% of the net wholesale price amounted to
expropriation of private property without just compensation.

IV
. . . [IT] SHOULD NOT HAVE PROCEEDED TO DECIDE THE CASE
BELOW FOR FAILURE OF PRIVATE RESPONDENT TO AFFIRMATIVELY
PROVE THE JURISDICTIONAL FACT OF PUBLICATION. 5

Paragraph 3, Section 35-B, R.A. No. 165, as amended by P.D. No.

1267, states:

In its decision of 4 November 1994, 6 the Court of Appeals affirmed in

toto the challenged decision. We quote its findings and conclusion upon
which the affirmance is anchored, viz.:

Sec. 35-B. Terms and Conditions of Compulsory License.

(1) . . .

An assiduous scrutiny of the impugned decision of the public

respondent reveals that the same is supported by substantial
evidence. It appears that at the time of the filing of the petition for
compulsory license on March 24, 1987, the subject letters Patent
No. 12207 issued on November 29, 1978 has been in effect for
more than two (2) years. The patented invention relates to
compound and compositions used in inhibiting certain actions of
the histamine, hence, it relates to medicine. Moreover, after
hearing and careful consideration of the evidence presented, the
Director of Patents ruled that "there is ample evidence to show
that [private respondent] possesses such capability, having

(2) . . .
(3) A compulsory license shall only be granted subject to the
payment of adequate royalties commensurate with the extent to
which the invention is worked. However, royalty payments shall not
exceed five percent (5%) of the net wholesale price (as defined in
Section 33-A) of the products manufactured under the license.
If the product, substance, or process subject of the compulsory
license is involved in an industrial project approved by the Board of

Investments, the royalty payable to the patentee or patentees shall

not exceed three percent (3%) of the net wholesale price (as
defined in Section 34-A) of the patented commodity and/or
commodity manufactured under the patented process, the same
rate of royalty shall be distributed to the patentees in rates
proportional to the extent of commercial use by the licensee giving
preferential values to the holder of the oldest subsisting product
patent.

well-entrenched jurisprudence sustaining the position of

respondents, We reiterate the rule in Basay Mining Corporation
vs.SEC, to the effect that
The legal presumption is that official duty has been
performed. And it is particularly strong as regards
administrative agencies vested with powers said to
be quasi-judicial in nature, in connection with the
enforcement of laws affecting particular fields of
activity, the proper regulation and/or promotion of
which requires a technical or special training, aside
from a good knowledge and grasp of the overall
conditions, relevant to said field, obtaining in the
nations. The policy and practice underlying our
Administrative Law is that courts of justice should
respect the findings of fact of said administrative
agencies, unless there is absolutely no evidence in
support thereof or such evidence is clearly,
manifestly and patently insubstantial. [G.R. No.
76695, October 3, 1988, Minute Resolution;
Beautifont, Inc., et al. v. Court of Appeals, et al.,
G.R. No. 50141, January 29, 1988]

The foregoing provision grants the Director of Patents the use of

his sound discretion in fixing the percentage for the royalty rate. In
the instant case, the Director of Patents exercised his discretion
and ruled that a rate of 2.5% of the net wholesale price is fair
enough for the parties. In Parke Davis & Co. vs. DPI and Tiburcio,
[L-27004, August 6, 1983, 124 SCRA 115] it was held that
"liberal treatment in trade relations should be afforded to local
industry for as reasoned out by respondent company, it is so
difficult to compete with the industrial grants [sic] of the drug
industry, among them being the petitioner herein, that it always is
necessary that the local drug companies should sell at much lower
(than) the prices of said foreign drug entities." Besides, foreign
produce licensor can later on ask for an increase in percentage rate
of royalty fixed by the Director of Patents if local sales of license
should increase. Further, in Price vs.UNILAB, the award of royalty
rate of 2.5% was deemed to be just and reasonable, to wit [166
SCRA 133]:

Its motion for reconsideration having been denied in the resolution 7 of 31

August 1995, petitioner filed the instant petition for review
on certiorari with the following assignment of errors:

Moreover, what UNILAB has with the compulsory

license is the bare right to use the patented
chemical compound in the manufacture of a
special product, without any technical assistance
from herein respondent-appellant. Besides, the
special product to be manufactured by UNILAB will
only be used, distributed, and disposed locally.
Therefore, the royalty rate of 2.5% is just and
reasonable.

I
THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE
BPTTT'S DECISION VIOLATES INTERNATIONAL LAW AS EMBODIED IN
(A) THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL
PROPERTY AND (B) THE GATT TREATY, URUGUAY ROUND, AND
MUST ACCORDINGLY BE SET ASIDE AND MODIFIED.
II

It appearing that herein petitioner will be paid royalties on the

sales of any products [sic] the licensee may manufacture using any
or all of the patented compounds, the petitioner cannot complain
of a deprivation of property rights without just compensation [Price
v. UNILAB, L-82542, September 19, 1988].

THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE

BPTTT'S DECISION IS AN INVALID EXERCISE OF POLICE POWER,
ABSENT ANY SHOWING BY EVIDENCE OF AN OVERWHELMING
PUBLIC NEED FOR A COMPULSORY LICENSE OVER CIMETIDINE IN
FAVOR OF PRIVATE RESPONDENT.

We take note of the well-crafted petition submitted by petitioner

albeit the legal milieu and a good number of decided cases militate
against the grounds posited by petitioner. In sum, considering the

III

THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE

BPTTT'S PRONOUNCEMENT FIXING THE ROYALTY FOR AN
INVOLUNTARY LICENSE AT 2.5% OF THE NET WHOLESALE PRICE IN
PHILIPPINE CURRENCY WAS RENDERED WITHOUT ANY FACTUAL
BASIS AND AMOUNTS TO EXPORTATION OF PRIVATE PROPERTY
WITHOUT JUST COMPENSATION AND IS IN VIOLATION OF THE
CONSTITUTIONAL RIGHT TO DUE PROCESS.

In is thus clear that Section A (2) of Article 5 above unequivocally and

explicitly respects the right of member countries to adopt legislative
measures to provide for the grant of compulsory licenses to prevent
abuses which might result from the exercise of the exclusive rights
conferred by the patent. An example provided of possible abuses is "failure
to work;" however, as such is merely supplied by way of an example, it is
plain that the treaty does not preclude the inclusion of other forms or
categories of abuses.

IV
Section 34 of R.A. No. 165, even if the Act was enacted prior to the
Philippines' adhesion to the Convention, fits well within the aforequoted
provisions of Article 5 of the Paris Convention. In the explanatory note of
Bill No. 1156 which eventually became R.A. No. 165, the legislative intent
in the grant of a compulsory license was not only to afford others an
opportunity to provide the public with the quantity of the patented product,
but also to prevent the growth of monopolies. 10 Certainly, the growth of
monopolies was among the abuses which Section A, Article 5 of the
Convention foresaw, and which our Congress likewise wished to prevent in
enacting R.A. No. 165.

THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THE

BPTTT'S ACTION WAS RENDERED NULL AND VOID FOR FAILURE OF
PRIVATE RESPONDENT TO AFFIRMATIVELY PROVE THE
JURISDICTIONAL FACT OF PUBLICATION AS REQUIRED BY LAW.
We resolved to give due course to the petition and required the parties to
submit their respective memoranda, which they did, with that of public
respondent filed only on 7 February 1997.
After a careful perusal of the pleadings and evaluation of the arguments
adduced by the parties, we find this petition to be without merit.

R.A. No. 165, as amended by Presidential Decree No. 1263, promulgated on

14 December 1977, provides for a system of compulsory licensing under a
particular patent. Sections 34 and 35, Article Two, of Chapter VIII read as
follows:

In its first assigned error, petitioner invokes Article 5 of the Paris

Convention for the Protection of Industrial Property, 8 or "Paris Convention,"
for short, of which the Philippines became a party thereto only in
1965. 9 Pertinent portions of said Article 5, Section A, provide:

Sec. 34. Grounds for Compulsory Licensing (1) Any person may
apply to the Director for the grant of a license under a particular
patent at any time after the expiration of two years from the date
of the grant of the patent, under any of the following
circumstances:

A. . . .
(2) Each country of the union shall have the right to take legislative
measures providing for the grant of compulsory licenses to prevent
the abuses which might result from the exercise of the exclusive
rights conferred by the patent, for example, failure to work.

(a) If the patented invention is not being worked within the

Philippines on a commercial scale, although capable of being so
worked, without satisfactory reason;

xxx xxx xxx

(b) If the demand for the patented article in the Philippines is not
being met to an adequate extent and on reasonable terms;

(4) A compulsory license may not be applied for on the ground of

failure to work or insufficient working before the expiration of a
period of four years from the date of filing of the patent application
or three years from the date of the grant of the patent, whichever
period expires last; it shall be refused if the patentee justifies his
inaction by legitimate reasons. Such a compulsory license shall be
non-exclusive and shall not be transferable, even in the form of the
grant of a sub-license, except with that part of the enterprise or
goodwill which exploits such license.

(c) If, by reason of refusal of the patentee to grant a license or

licenses on reasonable terms, or by reason of the conditions
attached by the patentee to licensee or to the purchase, lease or
use of the patented article or working of the patented process or
machine for production, the establishment of any new trade or
industry in the Philippines is prevented, or the trade or industry
therein is unduly restrained;

(d) If the working of the invention within the country is being

prevented or hindered by the importation of the patented article;
or

Parenthetically, it must be noted that paragraph (4) of Section A, Article 5

of the Paris Convention setting time limitations in the application for a
compulsory license refers only to an instance where the ground therefor is
"failure to work or insufficient working," and not to any ground or
circumstance as the treaty signatories may reasonably determine.

(e) If the patented invention or article relates to food or medicine

or manufactured products or substances which can be used as
food or medicine, or is necessary for public health or public safety.

Neither may petitioner validly invoke what it designates as the GATT

Treaty, Uruguay Round. This act is better known as the Uruguay Final Act
signed for the Philippines on 15 April 1994 by Trade and Industry Secretary
Rizalino Navarro. 11 Forming integral parts thereof are the Agreement
Establishing the World Trade Organization, the Ministerial Declarations and
Decisions, and the Understanding on Commitments in Financial
Services. 12 The Agreement establishing the World Trade Organization
includes various agreements and associated legal instruments. It was only
on 14 December 1994 that the Philippine Senate, in the exercise of its
power under Section 21 of Article VII of the Constitution, adopted Senate
Resolution No. 97 concurring in the ratification by the President of the
Agreement. The President signed the instrument of ratification on 16
December 1994. 13 But plainly, this treaty has no retroactive effect.
Accordingly, since the challenged BPTTT decision was rendered on 14
February 1994, petitioner cannot avail of the provisions of the GATT treaty.

(2) In any of the above cases, a compulsory license shall be

granted to the petitioner provided that he has proved his capability
to work the patented product or to make use of the patented
product in the manufacture of a useful product, or to employ the
patented process.
(3) The term "worked" or "working" as used in this section means
the manufacture and sale of the patented article, of the patented
machine, or the application of the patented process for production,
in or by means of a definite and substantial establishment or
organization in the Philippines and on a scale which is reasonable
and adequate under the circumstances. Importation shall not
constitute "working."

The second and third assigned errors relate more to the factual findings of
the Court of Appeals. Well-established is the principle that the findings of
facts of the latter are conclusive, unless: (1) the conclusion is a finding
grounded entirely on speculation or conjecture; (2) the inference made is
manifestly absurd; (3) there is grave abuse of discretion in the appreciation
of facts; (4) the judgment is premised on a misapprehension of facts; (5)
the findings of fact are conflicting; and (6) the Court of Appeals, in making
its findings, went beyond the issues of the case and the same is contrary
to the admissions of both the appellant and appellee. 14 Petitioner has not
convinced us that the instant case falls under any of the exceptions. On
the contrary, we find the findings of fact and conclusions of respondent
Court of Appeals and that of the BPTTT to be fully supported by the
evidence and the applicable law and jurisprudence on the matter.

xxx xxx xxx

Sec. 35. Grant of License. (1) If the Director finds that a case for
the grant is a license under Section 34 hereof has been made out,
he shall, within one hundred eighty days from the date the petition
was filed, order the grant of an appropriate license. The order shall
state the terms and conditions of the license which he himself
must fix in default of an agreement on the matter manifested or
submitted by the parties during the hearing.
(2) A compulsory license sought under Section 34-B shall be issued
within one hundred twenty days from the filing of the proponent's
application or receipt of the Board of Investment's endorsement.

Petitioner's claim of violations of the due process and eminent domain

clauses of the Bill of Rights are mere conclusions which it failed to
convincingly support. As to due the process argument, suffice it to say that
full-blown adversarial proceedings were conducted before the BPTTT
pursuant to the Patent Law. We agree with the Court of Appeals that the
BPTTT exhaustively studied the facts and its findings were fully supported
by substantial evidence.

The case at bar refers more particularly to subparagraph (e) of paragraph

1 of Section 34 the patented invention or article relates to food or
medicine or manufactured products or substances which can be used as
food or medicine, or is necessary for public health or public safety. And it
may not be doubted that the aforequoted provisions of R.A. No. 165, as
amended, are not in derogation of, but are consistent with, the recognized
right of treaty signatories under Article 5, Section A (2) of the Paris
Convention.

It cannot likewise be claimed that petitioner was unduly deprived of its

property rights, as R.A. No. 165 not only grants the patent holder a

protective period of two years to enjoy his exclusive rights thereto; but
subsequently, the law recognizes just compensation in the form of
royalties. 15

II.

In Parke, Davis & Co. v. Doctors' Pharmaceuticals, Inc., 16 we held:

SMITH

The right to exclude others from the manufacturing, using, or

vending an invention relating to, food or medicine should be
conditioned to allowing any person to manufacture, use, or vend
the same after a period of three [now two] years from the date of
the grant of the letters patent. After all, the patentee is not entirely
deprived of any proprietary right. In fact, he has been given the
period of three years [now two years] of complete monopoly over
the patent. Compulsory licensing of a patent on food or medicine
without regard to the other conditions imposed in Section 34 [now
Section 35] is not an undue deprivation of proprietary interests
over a patent right because the law sees to it that even after three
years of complete monopoly something is awarded to the inventor
in the form of bilateral and workable licensing agreement and a
reasonable royalty to be agreed upon by the parties and in default
of such an agreement, the Director of Patents may fix the terms
and conditions of the license.

[G. R. No. 126627. August 14, 2003]

KLINE
BECKMAN
CORPORATION, petitioner,
vs. THE
HONORABLE COURT OF APPEALS and TRYCO PHARMA
CORPORATION, respondents.
DECISION

CARPIO-MORALES, J.:
Smith Kline Beckman Corporation (petitioner), a corporation existing
by virtue of the laws of the state of Pennsylvania, United States of America
(U.S.) and licensed to do business in the Philippines, filed on October 8,
1976, as assignee, before the Philippine Patent Office (now Bureau of
Patents, Trademarks and Technology Transfer) an application for patent
over an invention entitled Methods and Compositions for Producing
Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. The application bore Serial No. 18989.
On September 24, 1981, Letters Patent No. 14561 [1] for the aforesaid
invention was issued to petitioner for a term of seventeen (17) years.

As to the fourth assigned error, we hold that petitioner can no longer assail
the jurisdiction of the BPTTT, raising this issue only for the first time on
appeal. In Pantranco North Express, Inc. v. Court of Appeals, 17 we ruled
that where the issue of jurisdiction is raised for the first time on appeal, the
party invoking it is so barred on the ground of laches or estoppel under the
circumstances therein stated. It is now settled that this rule applies with
equal force to quasi-judicial bodies 18 such as the BPTTT. Here, petitioner
have not furnished any cogent reason to depart from this rule.

The letters patent provides in its claims [2] that the patented invention
consisted of a new compound named methyl 5 propylthio-2-benzimidazole
carbamate and the methods or compositions utilizing the compound as an
active ingredient in fighting infections caused by gastrointestinal parasites
and lungworms in animals such as swine, sheep, cattle, goats, horses, and
even pet animals.
Tryco Pharma Corporation (private respondent) is a domestic
corporation that manufactures, distributes and sells veterinary products
including Impregon, a drug that has Albendazole for its active ingredient
and is claimed to be effective against gastro-intestinal roundworms,
lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.

WHEREFORE, the petition is hereby DENIED and the challenged decision of

the Court of Appeals in CA-G.R. SP No. 33520 is AFFIRMED in toto.

Petitioner sued private respondent for infringement of patent and

unfair competition before the Caloocan City Regional Trial Court (RTC). [3] It
claimed that its patent covers or includes the substance Albendazole such
that private respondent, by manufacturing, selling, using, and causing to
be sold and used the drug Impregon without its authorization,
infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 [4] as well as
committed unfair competition under Article 189, paragraph 1 of the
Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark
Law) for advertising and selling as its own the drug Impregon although the
same contained petitioners patented Albendazole. [5]

Costs against petitioner.

SO ORDERED.
Narvasa, C.J., Melo, Francisco and Panganiban, JJ., concur.

On motion of petitioner, Branch 125 of the Caloocan RTC issued a

temporary restraining order against private respondent enjoining it from
committing acts of patent infringement and unfair competition. [6] A writ of
preliminary injunction was subsequently issued. [7]

any infringement of the patent of petitioner in light of the latters failure to

show that Albendazole is the same as the compound subject of Letters
Patent No. 14561. Noting petitioners admission of the issuance by the
U.S. of a patent for Albendazole in the name of Smith Kline and French
Laboratories which was petitioners former corporate name, the appellate
court considered the U.S. patent as implying that Albendazole is different
from methyl 5 propylthio-2-benzimidazole carbamate. It likewise found
that private respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.

Private respondent in its Answer [8] averred that Letters Patent No.
14561 does not cover the substance Albendazole for nowhere in it does
that word appear; that even if the patent were to include Albendazole,
such substance is unpatentable; that the Bureau of Food and Drugs
allowed it to manufacture and market Impregon with Albendazole as its
known ingredient; that there is no proof that it passed off in any way its
veterinary products as those of petitioner; that Letters Patent No. 14561 is
null and void, the application for the issuance thereof having been filed
beyond the one year period from the filing of an application abroad for the
same invention covered thereby, in violation of Section 15 of Republic Act
No. 165 (The Patent Law); and that petitioner is not the registered patent
holder.

The appellate court, however, declared that Letters Patent No. 14561
was not void as it sustained petitioners explanation that Patent Application
Serial No. 18989 which was filed on October 8, 1976 was a divisional
application of Patent Application Serial No. 17280 filed on June 17, 1975
with the Philippine Patent Office, well within one year from petitioners
filing on June 19, 1974 of its Foreign Application Priority Data No. 480,646
in the U.S. covering the same compound subject of Patent Application
Serial No. 17280.

Private respondent lodged a Counterclaim against petitioner for such

amount of actual damages as may be proven; P1,000,000.00 in moral
damages; P300,000.00 in exemplary damages; and P150,000.00 in
attorneys fees.

Applying Section 17 of the Patent Law, the Court of Appeals thus ruled
that Patent Application Serial No. 18989 was deemed filed on June 17,
1995 or still within one year from the filing of a patent application abroad
in compliance with the one-year rule under Section 15 of the Patent
Law. And it rejected the submission that the compound in Letters Patent
No. 14561 was not patentable, citing the jurisprudentially established
presumption that the Patent Offices determination of patentability is
correct. Finally, it ruled that petitioner established itself to be the one and
the same assignee of the patent notwithstanding changes in its corporate
name. Thus the appellate court disposed:

Finding for private respondent, the trial court rendered a Decision

dated July 23, 1991,[9] the dispositive portion of which reads:
WHEREFORE, in view of the foregoing, plaintiffs complaint should be, as it
is hereby, DISMISSED. The Writ of injunction issued in connection with the
case is hereby ordered DISSOLVED.

WHEREFORE, the judgment appealed from

is AFFIRMED with the MODIFICATION that the
orders for the nullification of Letters Patent No.
14561 and for its cancellation are deleted
therefrom.

The Letters Patent No. 14561 issued by the then Philippine Patents Office is
hereby declared null and void for being in violation of Sections 7, 9 and 15
of the Patents Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is
hereby directed to cancel Letters Patent No. 14561 issued to the plaintiff
and to publish such cancellation in the Official Gazette.

SO ORDERED.
Petitioners motion for reconsideration of the Court of Appeals
decision having been denied[11] the present petition for review on
certiorari[12] was filed, assigning as errors the following:

Defendant Tryco Pharmaceutical Corporation is hereby awarded

P330,000.00 actual damages and P100,000.00 attorneys fees as prayed
for in its counterclaim but said amount awarded to defendant is subject to
the lien on correct payment of filing fees.

I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING

THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCOS
IMPREGON DRUG, IS INCLUDED IN PETITIONERS LETTERS
PATENT NO. 14561, AND THAT CONSEQUENTLY TRYCO IS
ANSWERABLE FOR PATENT INFRINGEMENT.

SO ORDERED. (Underscoring supplied)

[10]

On appeal, the Court of Appeals, by Decision of April 21, 1995,

upheld the trial courts finding that private respondent was not liable for

II. THE
COURT
OF
APPEALS
GRAVELY
ERRED
IN
AWARDING TO PRIVATE RESPONDENT TRYCO
PHARMA
CORPORATION
P330,000.00 ACTUAL
DAMAGES
AND
P100,000.00 ATTORNEYS FEES.

No. 14561 are different from each other; and that since it was on account
of a divisional application that the patent for methyl 5 propylthio-2benzimidazole carbamate was issued, then, by definition of a divisional
application, such a compound is just one of several independent inventions
alongside Albendazole under petitioners original patent application.

Petitioner argues that under the doctrine of equivalents for

determining patent infringement, Albendazole, the active ingredient it
alleges was appropriated by private respondent for its drug 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. It cites the unrebutted testimony of its
witness Dr. Godofredo C. Orinion (Dr. Orinion) that the chemical formula in
Letters Patent No. 14561 refers to the compound Albendazole. Petitioner
adds that the two substances substantially do the same function in
substantially the same way to achieve the same results, thereby making
them truly identical. Petitioner thus submits that the appellate court
should have gone beyond the literal wordings used in Letters Patent No.
14561, beyond merely applying the literal infringement test, for in spite of
the fact that the word Albendazole does not appear in petitioners letters
patent, it has ably shown by evidence its sameness with methyl 5
propylthio-2-benzimidazole carbamate.

As has repeatedly been held, only questions of law may be raised in a

petition for review on certiorari before this Court. Unless the factual
findings of the appellate court are mistaken, absurd, speculative,
conjectural, conflicting, tainted with grave abuse of discretion, or contrary
to the findings culled by the court of origin, [15] this Court does not review
them.
From an examination of the evidence on record, this Court finds
nothing infirm in the appellate courts conclusions with respect to the
principal issue of whether private respondent committed patent
infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent infringement
rests on the plaintiff.[16] In the case at bar, petitioners evidence consists
primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion,
its general manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the compound
methyl 5 propylthio-2-benzimidazole carbamate also covers the substance
Albendazole.

Petitioner likewise points out that its application with the Philippine
Patent Office on account of which it was granted Letters Patent No. 14561
was merely a divisional application of a prior application in the U. S. which
granted a patent for Albendazole. Hence, petitioner concludes that both
methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented
Albendazole are dependent on each other and mutually contribute to
produce a single result, thereby making Albendazole as much a part of
Letters Patent No. 14561 as the other substance is.

From a reading of the 9 claims of Letters Patent No. 14561 in relation

to the other portions thereof, no mention is made of the compound
Albendazole. All that the claims disclose are: the covered invention, that
is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the
compounds being anthelmintic but nontoxic for animals or its ability to
destroy parasites without harming the host animals; and the patented
methods, compositions or preparations involving the compound to
maximize its efficacy against certain kinds of parasites infecting specified
animals.

Petitioner concedes in its Sur-Rejoinder [13] that although methyl 5

propylthio-2-benzimidazole carbamate is not identical with Albendazole,
the former is an improvement or improved version of the latter thereby
making both substances still substantially the same.

When the language of its claims is clear and distinct, the patentee is
bound thereby and may not claim anything beyond them. [17] And so are the
courts bound which may not add to or detract from the claims matters not
expressed or necessarily implied, nor may they enlarge the patent beyond
the scope of that which the inventor claimed and the patent office allowed,
even if the patentee may have been entitled to something more than the
words it had chosen would include. [18]

With respect to the award of actual damages in favor of private

respondent in the amount of P330,000.00 representing lost profits,
petitioner assails the same as highly speculative and conjectural, hence,
without basis. It assails too the award of P100,000.00 in attorneys fees as
not falling under any of the instances enumerated by law where recovery
of attorneys fees is allowed.
In its Comment,[14] private respondent contends that application of
the doctrine of equivalents would not alter the outcome of the case,
Albendazole and methyl 5 propylthio-2-benzimidazole carbamate being
two different compounds with different chemical and physical
properties. It stresses that the existence of a separate U.S. patent for
Albendazole indicates that the same and the compound in Letters Patent

It bears stressing that the mere absence of the word Albendazole in

Letters Patent No. 14561 is not determinative of Albendazoles noninclusion in the claims of the patent. While Albendazole is admittedly a
chemical compound that exists by a name different from that covered in
petitioners letters patent, the language of Letter Patent No. 14561 fails to
yield anything at all regarding Albendazole. And no extrinsic evidence had

been adduced to prove that Albendazole inheres in petitioners patent in

spite of its omission therefrom or that the meaning of the claims of the
patent embraces the same.

a divisional application if a single patent could have been issued for it as

well as Albendazole.
The foregoing discussions notwithstanding, this Court does not sustain
the award of actual damages and attorneys fees in favor of private
respondent. The claimed actual damages ofP330,000.00 representing lost
profits or revenues incurred by private respondent as a result of the
issuance of the injunction against it, computed at the rate of 30% of its
allegedP100,000.00 monthly gross sales for eleven months, were
supported by the testimonies of private respondents President [25] and
Executive Vice-President that the average monthly sale of Impregon
was P100,000.00 and that sales plummeted to zero after the issuance of
the injunction.[26] While indemnification for actual or compensatory
damages covers not only the loss suffered (damnum emergens) but also
profits which the obligee failed to obtain (lucrum cessans or ganacias
frustradas), it is necessary to prove the actual amount of damages with a
reasonable degree of certainty based on competent proof and on the best
evidence obtainable by the injured party. [27] The testimonies of private
respondents officers are not the competent proof or best evidence
obtainable to establish its right to actual or compensatory damages for
such damages also require presentation of documentary evidence to
substantiate a claim therefor.[28]

While petitioner concedes that the mere literal wordings of its patent
cannot establish private respondents infringement, it urges this Court to
apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes
place when a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way to
achieve substantially the same result. [19] Yet again, a scrutiny of
petitioners evidence fails to convince this Court of the substantial
sameness of petitioners patented compound and Albendazole. While both
compounds have the effect of neutralizing parasites in animals,identity of
result does not amount to infringement of patent unless Albendazole
operates in substantially the same way or by substantially the same means
as the patented compound, even though it performs the same function and
achieves the same result.[20] In other words, the principle or mode of
operation must be the same or substantially the same.[21]
The doctrine of equivalents thus requires satisfaction of the functionmeans-and-result test, the patentee having the burden to show that all
three components of such equivalency test are met.[22]

In the same vein, this Court does not sustain the grant by the
appellate court of attorneys fees to private respondent anchored on Article
2208 (2) of the Civil Code, private respondent having been allegedly forced
to litigate as a result of petitioners suit. Even if a claimant is compelled to
litigate with third persons or to incur expenses to protect its rights, still
attorneys fees may not be awarded where no sufficient showing of bad
faith could be reflected in a partys persistence in a case other than an
erroneous conviction of the righteousness of his cause. [29] There exists no
evidence on record indicating that petitioner was moved by malice in suing
private respondent.

As stated early on, petitioners evidence fails to explain how

Albendazole is in every essential detail identical to methyl 5 propylthio-2benzimidazole carbamate. Apart from the fact that Albendazole is an
anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate,
nothing more is asserted and accordingly substantiated regarding the
method or means by which Albendazole weeds out parasites in animals,
thus giving no information on whether that method is substantially the
same as the manner by which petitioners compound works. The
testimony of Dr. Orinion lends no support to petitioners cause, he not
having been presented or qualified as an expert witness who has the
knowledge or expertise on the matter of chemical compounds.

This Court, however, grants private respondent temperate or

moderate damages in the amount of P20,000.00 which it finds reasonable
under the circumstances, it having suffered some pecuniary loss the
amount of which cannot, from the nature of the case, be established with
certainty.[30]

As for the concept of divisional applications proffered by petitioner, it

comes into play when two or more inventions are claimed in a single
application but are of such a nature that a single patent may not be issued
for them.[23] The applicant thus is required to divide, that is, to limit the
claims to whichever invention he may elect, whereas those inventions not
elected may be made the subject of separate applications which are called
divisional applications.[24] What this only means is that petitioners
methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct
from the other inventions claimed in the original application divided out,
Albendazole being one of those other inventions. Otherwise, methyl 5
propylthio-2-benzimidazole carbamate would not have been the subject of

WHEREFORE, the assailed decision of the Court of Appeals is hereby

AFFIRMED with MODIFICATION. The award of actual or compensatory
damages and attorneys fees to private respondent, Tryco Pharma
Corporation, is DELETED; instead, it is hereby awarded the amount
of P20,000.00 as temperate or moderate damages.
SO ORDERED.
Puno,
JJ., concur.

10

(Chairman),

Panganiban,

Sandoval-Gutierrez, and Corona,

____________________________________________________

III.

in public use or on sale in the Philippines for more than one (1) year before
the application for patent therefor was filed.
Petitioner
presented
the
following
documents
which
she
correspondingly marked as exhibits: (a) affidavit of petitioner alleging the
existence of prior art, marked Exh. A; (b) a brochure distributed by Manila
Gas Corporation disclosing a pictorial representation of Ransome Burner
made by Ransome Torch and Burner Company, USA, marked Exh. D; and,
(c) a brochure distributed by Esso Gasul or Esso Standard Eastern, Inc., of
the Philippines showing a picture of another similar burner with top
elevation view and another perspective view of the same burner, marked
Exh. E.

[G.R. No. 113388. September 5, 1997]

ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and

MELECIA MADOLARIA, as Assignor to NEW UNITED
FOUNDRY MANUFACTURING CORPORATION, respondents.

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
for which Letters Patent No. UM-4609 was issued, and that after her
husbands separation from the shop she organized Besco Metal
Manufacturing (BESCO METAL, for brevity) 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 in
evidence an alleged model of an LPG burner marked Exh. K and covered
by the Letters Patent of respondent, and testified that it was given to her in
January 1982 by one of her customers who allegedly acquired it from
UNITED FOUNDRY. Petitioner also presented in evidence her own model of
an LPG burner called Ransome burner marked Exh. L, which was
allegedly manufactured in 1974 or 1975 and sold by her in the course of
her business operation in the name of BESCO METAL. Petitioner claimed
that this Ransome burner (Exh. L) had the same configuration and
mechanism as that of the model which was patented in favor of private
respondent Melecia Madolaria. Also presented by petitioner was a burner
cup of an imported Ransome burner marked Exh M which was allegedly
existing even before the patent application of private respondent.

DECISION
BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of the
individual but the advancement of the arts and sciences. The function of a
patent is to add to the sum of useful knowledge and one of the purposes of
the patent system is to encourage dissemination of information concerning
discoveries and inventions. This is a matter which is properly within the
competence of the Patent Office the official action of which has the
presumption of correctness and may not be interfered with in the absence
of new evidence carrying thorough conviction that the Office has
erred. Since the Patent Office is an expert body preeminently qualified to
determine questions of patentability, its findings must be accepted if they
are consistent with the evidence, with doubts as to patentability resolved
in favor of the Patent Office.[1]
Petitioner Angelita Manzano filed with the Philippine Patent Office on
19 February 1982 an action for the cancellation of Letters Patent No. UM4609 for a gas burner registered in the name of respondent Melecia
Madolaria 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. In support of her petition for
cancellation 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

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 to 1970 where he helped in the casting
of LPG burners with the same form, configuration and mechanism as that
of the model covered by the Letters Patent issued to private
respondent. Francisco testified that he had been employed with the Manila
Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he
retired as supervisor and that Manila Gas Corporation imported Ransome
burners way back in 1965 which were advertised through brochures to
promote their 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 in the foundry, machine and buffing

11

section; 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 based on sketches and specifications furnished by customers; that
the company manufactured early models of single-piece types of burners
where the mouth and throat were not detachable; that in the latter part of
1978 respondent Melecia Madolaria confided in him that complaints were
being brought to her attention concerning the early models being
manufactured; that he was then instructed by private respondent to cast
several experimental models based on revised sketches and specifications;
that private respondent again made some innovations; 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, he 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 the supervision of Melecia Madolaria and they
obtained perfect results. Rolando Madolaria testified that private
respondent decided to file her application for utility model patent in
December 1979.

conjectures; (b) in rendering judgment based on misapprehension of facts;

(c) in relying mainly on the testimony of private respondents sole witness
Rolando Madolaria; and, (d) in not canceling Letters Patent No. UM-4609 in
the name of private respondent.
Petitioner submits that the differences cited by the Court of Appeals
between the utility model of private respondent and the models of Manila
Gas Corporation and Esso Standard Eastern, Inc., are more imaginary than
real. She alleges that based on Exhs. E, E-1, F and F-1 or the
brochures of Manila Gas Corporation and Esso Standard Eastern, Inc.,
presented by petitioner, the cup-shaped burner mouth and threaded hole
on the side are shown to be similar to the utility model of private
respondent. The exhibits also show a detachable burner mouth having a
plurality of upwardly existing undulations adopted to act as gas passage
when the cover is attached to the top of said cup-shaped mouth all of
which are the same as those in the patented model. Petitioner also denies
as substantial difference the short cylindrical tube of the burner mouth
appearing in the brochures of the burners being sold by Manila Gas
Corporation and the long cylindered tube of private respondents model of
the gas burner.

On 7 July 1986 the 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
decision also stated that even assuming that the brochures depicted
clearly each and every element of the patented gas burner device so that
the prior art and patented device became identical although in truth they
were not, they could not serve as anticipatory bars for the reason that they
were undated. The dates when they were distributed to the public were
not indicated and, therefore, were useless prior art references. The records
and evidence also do not support the petitioners contention that Letters
Patent No. UM-4609 was obtained by means of fraud and/or
misrepresentation. No evidence whatsoever was presented by petitioner
to show that the then applicant Melecia Madolaria withheld with intent to
deceive material facts which, if disclosed, would have resulted in the
refusal by the Philippine Patent Office to issue the Letters Patent under
inquiry.

Petitioner argues that the actual demonstration made during the

hearing disclosed the similarities in form, operation and mechanism and
parts between the utility model of private respondent and those depicted
in the brochures. The findings of the Patent Office and the Court of
Appeals that the brochures of Manila Gas Corporation and Esso Standard
Eastern, Inc., are undated cannot overcome the fact of their circulation
before private respondent filed her application for utility model
patent. Petitioner thus asks this Court to take judicial notice of the fact
that Esso Standard Eastern, Inc., disappeared before 1979 and reappeared
only during the Martial Law years as Petrophil Corporation. Petitioner also
emphasizes that the brochures indicated the telephone number of Manila
Gas Corporation as 5-79-81 which is a five (5) numbered telephone number
existing before 1975 because telephones in Metro Manila started to have
six (6) numbers only after that year.
Petitioner further contends that the utility model of private respondent
is absolutely similar to the LPG burner being sold by petitioner in 1975 and
1976, and also to the Ransome burner depicted in the old brochures of
Manila Gas Corporation and Esso Standard Eastern, Inc., fabricated by
Ransome Torch and Burner Company of Oakland, California, USA, especially
when considered through actual physical examination, assembly and
disassembly of the models of petitioner and private respondent. Petitioner
faults the Court of Appeals for disregarding the testimonies of Ong Bun Tua
and Fidel Francisco for their failure to produce documents on the alleged
importation by Manila Gas Corporation of Ransome burners in 1965
which had the same configuration, form and mechanism as that of the
private respondents patented model.

Petitioner elevated the decision of the Director of Patents to the Court

of Appeals which on 15 October 1993 affirmed the decision of the Director
of Patents. Hence, this petition for review on certiorari alleging that the
Court of Appeals erred (a) in relying on imaginary differences which in
actuality did not exist between the model of private respondent covered by
Letters Patent No. UM-4609 and the previously known model of Esso
Standard Eastern, Inc., and Manila Gas Corporation, making such
imaginary differences grounded entirely on speculation, surmises and

12

Finally, it is argued that the testimony of private respondents lone

witness Rolando Madolaria should not have been given weight by the
Patent Office and the Court of Appeals because it contained mere afterthoughts and pretensions.

As found by the Director of Patents, the standard of evidence

sufficient to overcome the presumption of legality of the issuance of UM4609 to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. Thus the Director of Patents
explained his reasons for the denial of the petition to cancel private
respondents patent -

We cannot sustain petitioner. Section 7 of RA No. 165, as amended,

which is the law on patents, expressly provides -

Scrutiny of Exhs. D and E readily reveals that the utility model (LPG
Burner) is not anticipated. Not one of the various pictorial representations
of burners clearly and convincingly show that the device presented therein
is identical or substantially identical in construction with the aforesaid
utility model. It is relevant and material to state that in determining
whether novelty or newness is negatived by any prior art, only one item of
the prior art may be used at a time. For anticipation to occur, the prior art
must show that each element is found either expressly or described or
under principles of inherency in a single prior art reference or that the
claimed invention was probably known in a single prior art device or
practice. (Kalman v. Kimberly Clark, 218 USPQ 781, 789)

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.
Further, Sec. 55 of the same law provides Sec. 55. Design patents and patents for utility models. - (a) Any new,
original and ornamental design for an article of manufacture and (b) any
new model of implements or tools or of any industrial product or of part of
the same, which does not possess the quality of invention, but which is of
practical utility by reason of its form, configuration, construction or
composition, may be protected by the author thereof, the former by a
patent for a design and the latter by a patent for a utility model, 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 herein provided.

Even assuming gratia arguendi that the aforesaid brochures do depict

clearly on all fours each and every element of the patented gas burner
device so that the prior art and the said patented device become identical,
although in truth they are not, they cannot serve as anticipatory bars for
the reason that they are undated. The dates when they were distributed to
the public were not indicated and, therefore, they are useless prior art
references.

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. [2] 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. [3]

xxxx
Furthermore, and more significantly, the model marked Exh. K does not
show whether or not it was manufactured and/or cast before the
application for the issuance of patent for the LPG burner was filed by
Melecia Madolaria.
With respect to Exh. L, petitioner claimed it to be her own model of LPG
burner allegedly manufactured sometime in 1974 or 1975 and sold by her
in the course of her business operation in the name of Besco Metal
Manufacturing, which burner was denominated as Ransome burner

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. [4] 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. [5]

xxxx
But a careful examination of Exh. L would show that it does not bear the
word Ransome which is the burner referred to as the product being sold
by the Petitioner. This is not the way to prove that Exh. L anticipates
Letters Patent No. UM-4609 through Exhs. C and D. Another factor

13

working against the Petitioners claims is that an examination of Exh. L

would disclose that there is no indication of the time or date it was
manufactured. This Office, thus has no way of determining whether Exh.
L was really manufactured before the filing of the aforesaid application
which matured into Letters Patent No. UM-4609, subject matter of the
cancellation proceeding.

show compelling grounds for a reversal of the findings and conclusions of

the Patent Office and the Court of Appeals.
The alleged failure of the Director of Patents and the Court of Appeals
to accord evidentiary weight to the testimonies of the witnesses of
petitioner showing anticipation is not a justification to grant the
petition. Pursuant to the requirement of clear and convincing evidence to
overthrow the presumption of validity of a patent, it has been held that
oral testimony to show anticipation is open to suspicion and if
uncorroborated by cogent evidence, as what occurred in this case, it may
be held insufficient.[9]

At this juncture, it is worthwhile to point out that petitioner also presented

Exh. M which is the alleged burner cup of an imported Ransome
burner. Again, this Office finds the same as unreliable evidence to show
anticipation. It observed that there is no date indicated therein as to when
it was manufactured and/or imported before the filing of the application for
issuance of patent of the subject utility model. What is more, some
component parts of Exh. M are missing, as only the cup was presented
so that the same could not be compared to the utility model (subject
matter of this case) which consists of several other detachable parts in
combination to form the complete LPG burner.

Finally, petitioner would want this Court to review all over again the
evidence she presented before the Patent Office. She argues that contrary
to the decision of the Patent Office and the Court of Appeals, the evidence
she presented clearly proves that the patented model of private
respondent is no longer new and, therefore, fraud attended the acquisition
of patent by private respondent.
It has been held that the question on priority of invention is one of
fact. Novelty and utility are likewise questions of fact. The validity of
patent is decided on the basis of factual inquiries. Whether evidence
presented comes within the scope of prior art is a factual issue to be
resolved by the Patent Office.[10] There is question of fact when the doubt
or difference arises as to the truth or falsehood of alleged facts or when
the query necessarily invites calibration of the whole evidence considering
mainly the credibility of witnesses, existence and relevance of specific
surrounding circumstances, their relation to each other and to the whole
and the probabilities of the situation.[11]

xxxx
It must likewise be pointed out that Ong Bun Tua testified on the brochures
allegedly of Manila Gas and of Esso Gasul marked Exhs. E and F and on
the alleged fact that Manila Gas Corporation was importing from the United
States Ransome burners. But the same could not be given credence
since he himself admitted during cross- examination that he has never
been connected with Manila Gas Corporation. He could not even present
any importation papers relating to the alleged imported ransome
burners. Neither did his wife.[6]

Time and again we have held that it is not the function of the Supreme
Court to analyze or weigh all over again the evidence and credibility of
witnesses presented before the lower tribunal or office. The Supreme
Court is not a trier of facts. Its jurisdiction is limited to reviewing and
revising errors of law imputed to the lower court, its findings of fact being
conclusive and not reviewable by this Court.

The above findings and conclusions of the Director of Patent were

reiterated and affirmed by the Court of Appeals.[7]
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
staff of the Philippine Patent Office composed of experts in their field has
by the issuance of the patent in question accepted private respondents
model of gas burner as a discovery. There is a presumption that the Office
has correctly determined the patentability of the model [8] and such action
must not be interfered with in the absence of competent evidence to the
contrary.

WHEREFORE, the Petition is DENIED. The Decision of the Court of

Appeals affirming that of the Philippine Patent Office is AFFIRMED. Costs
against petitioner.
SO ORDERED.
Vitug, Kapunan, and Hermosisima, Jr., JJ., concur.

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

14

IV.

G.R. No. L-27793

March 15, 1928

not, which has circulated or not in the Philippine Islands for the
sale thereof or its private exploitation.

PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffappellees,

vs.
CONSTANCIO BENITO, defendant-appellant.

Second. That not having had any knowledge of any kind of hempstripping machine supposed to have been invented by the
plaintiffs, it never occurred to the defendant to imitate the
unknown invention of the plaintiffs.

Abad Santos, Camus, Delgado and Recto for appellant.

J. W. Ferrier for appellees.

Third. That the hemp-stripping machine of the plaintiffs, known as

"La Constancia," patent of which is duly registered, has its
characteristics and original invention belonging to the defendant
which consist of two pinions with horizontal grooves which form
the tool for extracting the fibers between a straight knife upon
another which is cylindrical and provided with teeth and on the
center of said two pinions there is a flying wheel its transmission
belt connecting it with the motor.

STATEMENT
Plaintiffs allege that they are the owners of a patent covering hempstripping machine No. 1519579 issued to them by the United States Patent
Office of December 16, 1924, and duly registered in the Bureau of
Commerce and Industry of the Philippine Islands under the provisions of
Act No. 2235 of the Philippine Legislature on March 17, 1925. That the
important feature of the machine "is a spindle upon which the hemp to be
stripped is wound in the process of stripping." That plaintiffs have for some
time been manufacturing the machine under the patent. That the
defendant manufactured a hemp-stripping machine in which, without
authority from the plaintiffs, he has embodied and used such spindles and
their method of application and use, and is exhibiting his machine to the
public for the purpose of inducing its purchase. That the use by the
defendant of such spindles and the principle of their application to the
stripping of hemp is in violation of, and in conflict with, plaintiffs' patent,
together with its conditions and specifications. That the defendant's
machine is an infringement upon the patent granted the plaintiffs, and
plaintiffs pray for an injunction that the defendant be required to account
to plaintiffs for any profits he may have made by reason of such
infringement, and for a temporary injunction restraining him in the
manufacture of other machines of the same kind of its exhibition, and that
upon the final hearing, the injunction be made permanent.

As a counterclaim, the defendant alleges:

First. That he reproduces in this paragraph each and every
allegation contained in the preceding special defense, as though
the same were literally copied here.
Second. That by the filing of the complaint of the plaintiffs and the
issuance, as a consequence thereof, of a writ of injunction in this
case, unduly obtained by the said plaintiffs through false and
fraudulent representations, the defendant has suffered damages in
the sum of five thousand pesos (P5,000), Philippine currency.
Wherefore, the defendant prays this court that he be absolved
from the herein complaint, and that the plaintiffs be ordered jointly
and severally to pay the sum of five thousand pesos (P5,000),
Philippine currency, as damages, with legal interest thereon from
the filing of this action until fully paid; with the costs of this case,
as well as any other remedy that may be proper in law and equity.

The defendant demurred to the complaint upon the ground that the facts
alleged therein do not constitute a cause of action, that it is ambiguous
and vague, and that it was error to make William Henry Gohn plaintiff.

The lower court rendered judgment in legal effect granting the plaintiffs
the injunction prayed for in their complaint, and absolving them from
defendant's counterclaim, and judgment against the defendant for costs.

After the demurrer was overruled, the defendant filed an answer in which
he denied all of the material allegations of the complaint, except those
which are hereinafter admitted, and as a special defense alleges:

The defendant's motion for a new trial was overruled, and on appeal, he
contends that the court erred in holding the same spindles used by the
parties in this case, though different in material and form, have the same
utility and efficiency and that they are the same, and in finding that
spindles used by the defendant are an imitation of those of the plaintiffs,

First. That the defendant has never had at any time nor does he
have any knowledge of any suppose invention of the plaintiffs of
whatever kind of hemp-stripping machine, whether patented or

15

and in finding that the defendant infringed upon plaintiffs' patent, and in
not rendering judgment against the plaintiffs, requiring them to pay
defendant P5,000 as damages, and in enjoining the appellant from the
manufacture, use and sale of this hemp-stripping machine.

Citing a number of Federal decisions.

The plans and specifications upon which the patent was issued recite:
Our invention relates to hemp stripping machines and it consists in
the combinations, constructions and arrangements herein
described and claimed.

JOHNS, J.:

An object of our invention is to provide a machine affording

facilities whereby the operation of stripping hemp leaves may be
accomplished mechanically, thereby obviating the strain incident
to the performance of hemp stripping operations manually.

It is conceded that on December 16, 1924, the United States Patent Office
issued to the plaintiffs the patent in question No. 1519579, and it was duly
registered in the Bureau of Commerce and Industry of the Philippine
Islands on March 17, 1925. After such registration the patent laws, as they
exist in the United States for such patent, are then applied to and are in
force and effect in the Philippine Islands. (Vargas vs. F. M. Yaptico & Co., 40
Phil., 195.) In the instant case, the original patent is in evidence, and that
decision further holds that:

And on page 3 of the application for patent, it is said:

Obviously, our invention is susceptible of embodiment in forms
other than the illustrated herein and we therefore consider as our
own all modifications of the form of device herein disclosed which
fairly fall within the spirit and scope of our invention as claimed.

The burden of proof to substantiate a charge of infringement is

with the plaintiff. Where, however, the plaintiff 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 Commissioner of Patents in granting the patent is always
presumed to be correct. The burden the shifts to the defendant to
overcome by competent evidence this legal presumption.

We claim:
1. In a hemp stripping machine, a stripping head having a
supporting portion on which the hemp leaves may rest and having
also an upright bracket portion, a lever of angular formation
pivotally attached substantially at the juncture of the arms thereof
of the bracket portion of the stripping head, whereby one arm of
the lever overlies the supporting portion of the stripping head, a
blade carried by said one arm of the lever for cooperating with said
supporting, means connected with the other arm of the lever and
actuating the latter to continously urge the blade toward said
supporting portion of the stripping head, and a rotatable spindle
positioned adjacent to said stripping head, said spindle being
adapted to be engaged by hemp leaves extending across said
supporting portion of the stripping head underneath said blade and
being operable to draw said hemp leaves in the direction of their
length between said supporting portion of the stripping head and
said blade.

That is to say, the patent, which in the instant case is in due form,
having been introduced in evidence, "affords a prima
facie presumption of its correctness and validity." Hence, this is not
a case of a conflict between two different patents. In the recent of
Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the
Supreme Court of the United States on January 3, 1928, Advance
Sheet No. 5, p. 192, the syllabus says:
An improper cannot appropriate the basic patent of another, and if
he does so without license is an infringer, and may be used as
such.
And on page 195 of the opinion, it is said:

2. In a hemp stripping machine, a stripping head having a

horizontal table portion, a rest supported upon said table portion, a
stripping knife supported upon the table for movement into and
out of position to cooperate with the rest to strip hemp leaves
drawn between the knife and the rest, and power driven means
adapted to be engaged with said hemp leaves and to pull the latter

It is well established that an improver cannot appropriate the basic

patent of another and that the improver without a license is an
infringer and may be sued as such.

16

between the knife and rest, said power driven means including a
rotating spindle, said spindle being free at one end and tapering
regularly toward its free end.

Johnson, Malcolm, Villamor, Ostrand, Romualdez and Villa-Real, JJ., concur.

V.

3. In a hemp stripping machine, a stripping head having a

horizontal table portion and an upright bracket portion a rest
holder adjustably on the table portion, a rest resiliently supported
by the holder, a knife carrying lever of angular formation and being
pivotally attached substantially at the juncture of the arms thereof
to the bracket portion of the stripping head, whereby one arm of
the lever overlies the rest, a blade adjustably supported on said
one arm, for cooperating with said rest and gravity means
connected with the other arm of the lever and actuating the latter
to continously urge the blade toward the rest.

G.R. No. L-4720

January 19, 1909

CARLOS GSELL, plaintiff-appellee,

vs.
VALERIANO VELOSO YAP-JUE, defendant-appellant.
Chicote and Miranda, for appellant.
Haussermann and Cohn, for appellee.
CARSON, J.:
This an appeal from a final order of the Court of First Instance of the city of
Manila, in contempt proceedings prosecuted under the provisions of
section 172 of the Code of Civil Procedure. The principal case to which
these proceedings are ancillary, was an action to enjoin infringement of a
patented process for the manufacture of curved handles for canes,
parasols, and umbrellas. In that case plaintiff established his title to a valid
patent covering the process in question, and obtained against this
defendant a judgment, granting a perpetual injunction restraining its
infringement, which judgment was affirmed by this court on appeal (6 Phil.
Rep., 143.) The order was couched in the following terms:

The spindle upon which the patent was obtained, together with the spindle
upon which the defendant relies are exhibits in the record and were before
the court at the time this case was argued. The spindle of the plaintiffs was
made of wood, conical in shape and with a smooth surface. That of the
defendant was somewhat similar in shape, but was made of metal with
rough surface, and the defendant claims that his spindle was more
effective and would do better work than that of the plaintiffs. Be that as it
may, the plaintiffs have a patent for their machine, and the defendant does
not have a patent, and the basic principle of plaintiffs' patent is the spindle
upon which they rely, together with its specified manner and mode of
operation, and in the final analysis, it must be conceded that the basic
principle of the spindle upon which the defendant relies is founded upon
the basic principle of the spindle for which the plaintiffs have a patent.
Assuming, without deciding, that the defendant's spindle is an
improvement upon and is a better spindle than that of the plaintiffs, yet,
under the authority above cited, the defendant had no legal right to
appropriate the basic principle upon which the plaintiffs obtained their
patent. The plaintiffs having obtained their patent, which was duly
registered in the Philippines Islands, the defendant cannot infringe upon its
basic principle.

It is ordered that the defendant abstain from manufacturing canes

and umbrellas with a curved handle by means of a lamp or
blowpipe fed with mineral oil or petroleum, which process was
protected by patent No. 19228, issued in favor of Henry Gsell, and
by him transferred to Carlos Gsell
and the process therein mentioned is fully described in the following
statement which accompanied the application for the patent:
After the canes have been cut for cane or umbrella handles, the
outsides are thoroughly cleaned. This operation having been
performed, they are then trimmed and the interior cleaned by
means of a gimlet of about 15 centimeters in length operated by a
wheel, by means of which the knots inside are broken. There is
then introduced to a depth of about 15 centimeters a piece of very
clean bamboo, which completely fills the hole made by the gimlet,
thereby giving to the cane the necessary strength to resist the
heat of the lamp or blowpipe without breaking or cracking.

The defendant contends that the basic principle of the spindle was a very
old one in mechanics, and that there was nothing new or novel in the
application of it by the plaintiffs. Be that as it may, the plaintiffs applied for
and obtained their patent with its specifications which are attached to, and
made part of, the patent, and the proof is conclusive that the defendant is
infringing upon the basic principle of the spindle as it is defined and
specified in plaintiffs' patent.
The judgment of the lower court is affirmed, with costs. So ordered.

17

This operation having been performed, the cane, the end of which
is attached to a fixed point, is given the shape of a hook or some
other form by means of fire and pressure. Once the cane has been
shaped as desired, it is allowed to cool, and is then cleaned,
varnished, and ornamented at will.

parties have stipulated that the defendant did not use a coal or mineral oilburning lamp but an alcohol-burning lamp.
The question, however, arises as to whether that prohibition
included the substitution of alcohol for coal or mineral oil. In more
abstract and general terms, the appellant propounds this question
in his brief, as follows: "The question presented by this appeal is
whether or not the use of a patented process by a third person,
without license or authority therefor, constitutes an infringement
when the alleged infringer has substituted in lieu of
some unessential part of the patented process a well-known
mechanical equivalent." It has seen that by its very terms this
question implies in the present case the existence of two
fundamental facts which must first be duly established, viz: (1)
That the use of the lamp fed with petroleum or mineral oil was an
unessential part of the patented process the use of which by the
accused was prohibited by the said judgment; and (2) that alcohol
is an equivalent and proper substitute, well known as such, for
mineral oil or petroleum in connection with the said process. The
appellant has failed to affirmatively establish either of these two
essential facts. He has merely assumed their existence, without
proving the same, thus begging the whole question. Consequently
the contempt with which the accused is charged has not been fully
and satisfactorily proved, and the order appealed from should
accordingly be affirmed in so far as it holds that the defendant is
not guilty of contempt. (7 Phil. Rep., 130).

This industry requires skillful, handiwork, owing to the great risk

engendered by the treatment of such fragile material as a light
cane. On the other hand, however, it affords large profits to the
workman.
NOTE. The patent applied for shall be for the industrial product
"cane handles for walking sticks and umbrellas, curved by means
of a small lamp or blowpipe, fed by petroleum or mineral fuel."
Thereafter the defendant continued to manufacture curved cane handled
for walking sticks and umbrellas by a process in all respectes identical with
that used by the plaintiff under his patent, except only that he be
substituted for a lamp fed with petroleum or mineral oil, lamp fed with
alcohol, as appears from a stipulation entered into between plaintiff and
defendant in the following terms:
The plaintiff and defendant agree upon the fact that the defendant
has used and is still using a process for curving handles of canes
and umbrellas identical with that described in the application for
the patent by the plaintiff with the exception that he has
substituted for the lamp fed with all other lamp fed with alcohol.

Thereafter the plaintiff continued the use of the patented process, save
only for the substitutions of a lamp fed by alcohol for a lamp fed by
petroleum or mineral oil, and new proceedings were instituted under the
provisions of section 172 for the purpose of enforcing the original
injunction above cited. Substantially the same question is submitted in
these new proceedings as that submitted in the former case, but at the
trial of this case testimony was introduced which, in our opinion, leaves no
room for doubt, first, that alcohol is an equivalent or substitute, well known
as such at the time when the patent was issued, for mineral oil or
petroleum, in connection with blast lamps or blowpipes such as that which
plaintiff uses in the patented process, and, second, that 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 said judgment.

Contempt proceedings were instituted against the defendant in the month

of February, 1904, the plaintiff in the original action alleging that the
Defendant in disobediencce of the judgment of the same was and
is now engaged in the unlawful manufacture of umbrella handles
by the identical process described in and protected said patent, No.
19228, or a process so like the patented process as to be
indistinguishable.
The trial court found the defendant "not guilty" of contempt as charged;
and this court, on appeal, held that a character that it could be made
patent by the mere annunciation of the acts performed by the defendant,
which are alleged to constitute the said violation. These acts were not
clearly and manifestly contrary to the precise terms of the prohibition.
According to the express language of the judgment, the prohibition is
against the manufacture of canes and umbrellas with curved handles by
means of the use of a cool or mineral oil-burning lamp or blowpipe and the

It was clearly proven at the trial, that kerosene and alcohol blast lamps are
agencies for producing and applying heat, well known throughout the world
long prior to 1906, the date of the issue of the patent; that it is and for
many years has been known that one may for all ordinary purposes be
used in the place of the other, and especially for the purpose of applying

18

heat in the manner described in the patent; that the only consideration
which determines the employment of one in place of the other is the
convenience of the user and the question of relative cost; and that the
principle upon which both lamps work is substantially identical, the only
difference in construction being occasioned by the application of this
principle to oils of different physical and chemical composition.

jurisdiction, is of universal application, so that it matters not whether a

patent be issued by one sovereignty or another, the doctrine may properly
be invoked to protect 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. Our attention has not been called to any
provision of the patent law of Spain, which denies to patentees thereunder
the just and equitable protection of the doctrine; and indeed a patent law
which failed to recognize this doctrine would afford scant protection to
inventors, for it is difficult if not impossible to conceive an invention, which
is incapable of alteration or change in some unessential part, so as to bring
that part outside of the express terms of any form of language which might
be used in granting a patent for the invention; and has been well said by
counsel for plaintiff, 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."

The plaintiff does not and can not claim a patent upon the particular lamp
used by him. The patent, however, gives him the exclusive right to the use
of "la lamparilla o soplete, alimentada de petroleo o esencia mineral" (the
small lamp or blowpipe fed with petroleum or mineral oil) in manufacturing
curved handles for umbrellas and canes, to which reference is made in the
above-cited descriptive statement and annexed note. "The small lamp or
blowpipe" mentioned in the descriptive statement and annexed note which
accompanied the application for the patent, evidently referred to the
design of a blast lamp which was attached thereto; and in our opinion both
plaintiff and defendant make use of a blast lamp substantially similar, in
principle and design, to that referred to in the descriptive statement and
the annexed note, for the exclusive use of which in the manufacture of
curved handles, plaintiff holds a patent. True, defendant's blast lamp is fed
with alcohol, and its shape varies in unimportant details, for the purpose of
accommodating the principle, by which the flame is secured, to the
different physical and chemical composition of the fuel used therein; but
the principle on which it works, its mode of application, and its general
design distinguish it in no essential particular from that used by the
plaintiff. If the original design accompanying the statement had shown a
blast lamp made of brass or delf, he would be a reckless advocate who
would claim that the patent might lawfully be evaded by the use of a lamp
made of iron or tin; or if the original design had shown a blast lamp 6
inches high with a nozzle 4 inches long it would hardly be seriously
contended that the use of lamp 8 inches high with a nozzle 3 inches long
would protect the ingenious individual, who in all other respects borrowed
the patented process, from the consequences of an action for damages for
infringement. But in the light of the evidence of record in this case, the
reasoning upon which these hypothetical claims should be rejected applies
with equal force to the contentions of the defendant, the ground for the
rejection of the claims in each case being the same, and resting on the fact
that unessential changes, which do not affect the principle of the blast
lamp used in the patented process, or the mode of application of heat
authorized by the patent, are not sufficient to support a contention that the
process in one case is in any essential particular different from that used in
the other.

The following citations from various decisions of the Federal Courts of the
United States illustrate the application of the doctrine in that jurisdiction,
and clearly point the way to the proper solution of the questions involved
in the case at bar:
Can the defendant have the right of infringement, by substituting
in lieu of some parts of the combination well-known mechanical
equivalents? I am quite clear that be can not, both on principle and
authority. It is not to be disputed that the inventor of an ordinary
machine is, by his letters patent, protected against all mere formal
alterations and against the substitution of mere mechanical
equivalents. Why should not the inventor of a new combination
receive the same protection? If he can not, then will his patent not
be worth the parchment on which it is written.
If no one can be held to infringe a patent for a combination unless
he uses all the parts of the combination and the identical
machinery as that of the patentee, then will no patent for a
combination be infringed; for certainly no one capable of operating
a machine can be incapable of adopting some formal alteration in
the machinery, or of substituting mechanical equivalents. No one
infringes a patent for a combination who does not employ all of the
ingredients of the combination; but if he employs all the
ingredients, or adopts mere formal alterations, or substitutes, for
one ingredient another which was well known at the date of the
patent as a proper substitute for the one withdrawn, and which
performs substantially the same function as the one withdrawn, he
does infringe. (King vs. Louisville Cement Co., Fed. Cas., 7798.)

Counsel for plaintif invokes the doctrine of "mechanical equivalents" in

support of his contention, and indeed that doctrine is strikingly applicable
to the facts in this case. This doctrine is founded upon sound rules of
reason and logic, and unless restrained or modified by law in particular

19

Bona fide inventors of a combination are as much entitled to

equivalents as the inventors other patentable improvements; by
which is meant that a patentee in such a case may substitute
another ingredient for any one of the ingredients of his invention, if
the ingredient substituted performs the same function as the one
omitted and as well known at the date of his patent as a proper
substitute for the one omitted in the patented combination. Apply
that rule and it is clear that an alteration in a patented combination
which merely substitutes another old ingredient for one of the
ingredients in the patented combination, is an infringement of the
patent, if the substitute performs the same function and was well
known at the date of the patent as a proper substitute for the
omitted ingredient. (Gould vs. Rees, 82 U.S., 187, 194.)

can not invoke the doctrine of equivalents to suppress all other

improvements of the old machine, but he is entitled to treat
everyone as an infringer who makes, uses, or vends his patented
improvement without any other change than the employment of a
substitute for one of its elements, well known as such at the date
of his invention, and which any constructor acquainted with the art
will know how to comply. The reason for the qualification of the rule
as stated is, that such change that is, the mere substitution of a
well- known element for another where it appears that the
substituted element was well known as a usual substitute for the
element left out is merely a formal one, and nothing better than
a colorable evasion of the patent. (Union Sugar Refining
Co. vs. Matthieson, Fed. Cas., 14399.)

Mere formal alterations in a combination in letters patent are no

defense to the charge of infringement and the withdrawal of one
ingredient from the same and the substitution of another which
was well known at the date of the patent as a proper substitute for
the one withdrawn is a mere formal alteration of the combination if
the ingredient substituted performs substantially the same function
as the one withdrawn.

Counsel for the defendant insists that, under Spanish law, none of the
steps of the process described in the descriptive statement, save those
mentioned in the "note" thereto attached are included in the patent, and
that the patent rights secured thereunder are strictly limited to the precise
language of the "note" attached to the descriptive statement; while
counsel for plaintiff appears to think that the language of the patent covers
any process or device whereby wood or cane may be bent or curved by the
use of heat. But for the purpose of this decision it is not necessary to
consider these questions, further than to hold, as we do, that under the
doctrine of equivalents, the language of the note in the descriptive
statement applies to the operation of applying heat for the purpose of
curving handles or canes and umbrellas by means of a blast lamp fed with
alcohol, as well as by means of a blast lamp fed with petroleum or mineral
oil; and the defendant having admitted the fact that he applied heat for the
purpose of curving handles for canes and umbrellas by means of a blast
lamp fed with alcohol, he must be deemed to have contempt of violating
the terms and the injunction issued in the principal case, wherein plaintiff
was declared the owner of the patent in question, and defendant enjoined
from its infringement.

Bona fide inventors of a combination are as much entitled to

suppress every other combination of the same ingredients to
produce the same result, not substantially different from what they
have invented and caused to be patented as to any other class of
inventors. All alike have the right to suppress every colorable
invasion of that which is secured to them by letters patent.
(Seymour vs. Osborne, 78 U.S., 516, 556.)
A claim for the particular means and mode of operation described
in the specification extends, by operation of law, to the equivalent
of such means not equivalent simply because the same result is
thereby produced but equivalent as being substantially the
same device in structure, arrangement and mode of operation.
(Burden vs. Corning, Fed. Cas., 2143. Gottfried vs. Philip Best
Brewing Co., Fed. Cas., 5633.)

The argument of counsel for defendant and appellant, based on the theory
that the questions herein discussed and decided to have been heretofore
settled by this court, and that the subject-matter of this proceeding is res
adjudicata between the parties thereto is sufficiently refuted by the simple
reading of the decision of this court in the case relied upon.
(Gsell vs. Veloso, 7 Phil. Rep., 130.)

An equivalent device is such as a mechanic of ordinary skill in

construction of similar machinery, having the forms, specifications
and machine before him, could substitute in the place of the
mechanism described without the exercise of the inventive faculty.
(Burden vs. Corning, supra.)

The judgment of the lower court should be and is hereby affirmed, with the
costs of this instance against the appellant.
Arellano, C.J., Torres, Mapa, Willard, and Tracey, JJ., concur.

All the elements of the invention in this case are old, and the rule
in such cases, as before explained, undoubtedly is that a purpose

20

VI.

G.R. No. L-32160 January 30, 1982

engravings, castings and devices designed and intended of tiles

embodying plaintiff;s patented invention; that he has given direct and
personal notice to the defendants of their said acts of infringement and
requested them to desist, but nevertheless, defendants have refused and
neglected to desist and have disregarded such request, and continue to so
infringe causing great and irreparable damage to plaintiff; that if the
aforesaid infringement is permitted to continue, further losses and
damages and irreparable injury will be sustained by the plaintiff; that there
is an urgent need for the immediate issuance of a preliminary injunction;
that as a result of the defendants' wrongful conduct, plaintiff has suffered
and the defendants are liable to pay him, in addition to actual damages
and loss of profits which would be determined upon proper accounting,
moral and exemplary or corrective damages in the sum of P90,000.00; that
plaintiff has been compelled to go to court for the protection and
enforcement of his and to engage the service of counsel, thereby incurring
attorney's fees and expenses of litigation in the sum of P5,000.00. 2

DOMICIANO A. AGUAS, petitioner,

vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

FERNANDEZ, J.:
This is a petition for certiorari to review the decision of the Court of
Appeals in CA G.R. NO. 37824-R entitled "Conrado G. de Leon, plaintiffappelle vs. Dominciano Aguas and F.H. Aquino and Sons, defendantsappellants," the dispositive portion of which reads:
WHEREFORE, with the modification that plintiff-applee's
award of moral damages is hereby redured to P3,000.00,
the appealed judgment is hereby affirmed, in all othe
respects, with costs against appellants. 1

On April 14, 1962, an order granting the plaintiff's petition for a Writ of
Preliminary Injunction was issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer
denying the allegations of the plaintiff and alleging that: the plaintiff 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; that Letters Patent No. 658 was unlawfully
acquired by making it appear in the application in relation thereto that the
process is new and that the plaintiff is the 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 plaintiff Conrado G. de
Leon; that the registration of the alleged invention did not confer any right
on the plaintiff because the registration was unlawfully secured and was a
result of the gross misrepresentation on the part of the plaintiff that his
alleged invention is a new and inventive process; that the allegation of the
plaintiff that Patent No. 658 is of great value to plaintiff and of great benefit
to the public is a mere conclusion of the plaintiff, the truth being that a)
the invention of plaintiff is neither inventive nor new, hence, it is not
patentable, b) defendant has been granted valid patents (Patents No. 108,
109, 110 issued on December 21, 1961) on designs for concrete decorative
wall tiles; and c) that he can not be guilty of infringement because his
products are different from those of the plaintiff. 4

On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of
Rizal at Quezon City a complaint for infringement of patent against
Domiciano A. Aguas and F. H. Aquino and Sons alleging that being 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; that said invention
was new, useful, not known or used by others in this country before his
invention thereof, not patented or described in any printed publication
anywhere before his invention thereof, or more than one year prior to his
application for patent thereof, not patented in any foreign country by him
or his legal representatives on application filed more than one year prior to
his application in this country; that plaintiff has the exclusive license to
make, use and sell throughout the Philippines the improvements set forth
in said Patent No. 658; that the invention patented by said Patent No. 658
is of great utility and of great value to plaintiff and of great benefit to the
public who has demanded and purchased tiles embodying the said
invention in very large quantities and in very rapidly increasing quant ies;
that he has complied with the Philippine statues relating to marking
patented tiles sold by him; that the public has in general acknowledged the
validity of said Patent No. 658, and has respected plaintiff's right therein
and thereunder; that the defendant Domiciano A. Aguas infringed Letters
of Patent No. 658 by making, using and selling tiles embodying said patent
invention and that defendant F. H. Aquino & Sons is guilty of infringement
by making and furnishing to the defendant Domiciano A. Aguas the

The trial court rendered a decision dated December 29, 1965, the
dispositive portion of which reads:

21

WHEREFORE, judgment is hereby rendered in favor of

plaintiff and against the defendants:

AS THE SAME HAS ALREADY LONG BEEN USED BY TILE

MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.

1. Declaring plaintiff's patent valid and infringed:

II

2. Granting a perpetual injunction restraining defendants,

their officers, agents, employees, associates, confederates,
and any and all persons acting under their authority from
making and/or using and/or vending tiles embodying said
patented invention or adapted to be used in combination
embodying the same, and from making, manufacturing,
using or selling, engravings, castings and devises designed
and intended for use in apparatus for the making of tiles
embodying plaintiff's patented invention, and from offering
or advertising so to do, and from aiding and abetting or in
any way contributing to the infringement of said patent;

THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF

PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT OR
THE AGE-OLD TILE MAKING SYSTEM.

3. Ordering that each and all of the infringing tiles,

engravings, castings and devices, which are in the
possession or under the control of defendants be delivered
to plaintiff;

IV

III
THE TRIAL COURT ERRED IN NOT ORDERING THE
CANCELLATION OF PLAINTIFF-APPELLEE'S LETTERS PATENT
NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE PERTINENT
PROVISIONS OF THE PATENT LAW, REPUBLIC ACT 165.

THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT

DOMICIANO A. AGUAS IS GUILTY OF INFRINGEMENT
DESPITE THE FACT THAT PLAINTIFF'S PATENT IS NOT A
VALID ONE.

4. Ordering the defendants to jointly and severally pay to

the plaintiff the following sums of money, to wit:

V
(a) P10,020.99 by way of actual damages;

(d) P5,000.00 by way of attorney's fees and

THE TRIAL COURT ERRED IN NOT HOLDING THAT THE

DEFENDANT COULD NEVER BE GUILTY OF INFRINGEMENT
OF PLAINTIFF'S PATENT BECAUSE EVEN IN MATTERS NOT
PATENTED BY THE PLAINTIFF - LIKE THE COMPOSITION AND
PROPORTION OF INGREDIENTS USED AND THE
STRUCTURAL DESIGNS OF THE MOULD AND THE TILE
PRODUCED - THAT OF THE DEFENDANT ARE DIFFERENT.

(e) costs of suit.

VI

(b) P50,000.00 by way of moral damages;

(c) P5,000.00 by way of exemplary damages;

The defendant Domiciano Aguas appealed to the Court of Appeals,

assigning the following errors. 6

THE TRIAL COURT ERRED IN NOT DISMISSING THE

COMPLAINT AND IN HOLDING THE DEFENDANT, INSTEAD
OF THE PLAINTIFF, LIABLE FOR DAMAGES, AND
ATTORNEY'S FEES.

On August 5, 1969, the Court of Appeals affirmed the decision of the trial
court, with the modification that plaintiff-appellee's award of moral
damages was reduced to P3,000.00. 7

THE TRIAL COURT ERRED IN NOT HOLDING THAT

PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING
MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY

22

The petitioner assigns the following errors supposedly committed by the

Court of Appeals:

moulds; that engraver Enrique Aquino knew that the

moulds he was engraving for plaintiff were the latter's very
own, which possession the new features and
characteristics covered by plaintiff's parent; that defendant
Aguas personally, as a building contractor, purchased from
plaintiff, tiles shaped out of these moulds at the back of
which was imprinted plaintiff's patent number (Exhs., "A"
to "E"); that subsequently, through a representative, Mr.
Leonardo, defendant Aguas requested Aquino to make
engravings of the same type and bearing the
characteristics of plaintiff's moulds; that Mr. Aquino knew
that the moulds he was asked to engrave for defendant
Aguas would be used to produce cement tiles similar to
plaintiff's; that the moulds which F.H. Aquino & Sons
eventually engraved for Aguas and for which it charged
Aguas double the rate it charged plaintiff De Leon, contain
the very same characteristic features of plaintiff's mould
and that Aguas used these moulds in the manufacture of
his tiles which he actually put out for sale to the public
(Exhs. "1" to "3" and Exhs. "A" to "E"); that both plaintiff's
and defendant Aguas' tiles are sculptured pre-cast wall
tiles intended as a new feature of construction and wag
ornamentation substantially Identical to each other in size,
easement, lip width and critical depth of the deepest
depression; and that the only significant difference
between plaintiff's mould and that engraved by Aquino for
Aguas is that, whereas plaintiff's mould turns out tiles 4 x 4
inches in size, defendant Aguas' mould is made to fit a 41/4 x 4-1/4 inch tile. 9

It is now respectfully submitted that the Court of Appeals

committed the following errors involving questions of law,
to wit:
First error. When it did not conclude that the letters
patent of the respondent although entitled on the cover
page as a patent for improvements, was in truth and in
fact, on the basis of the body of the same, a patent for the
old and non-patentable process of making mosaic pre-cast
tiles;
Second error. When it did not conclude from the
admitted facts of the case, particularly the contents of the
letters patent, Exh. L and the pieces of physical evidence
introduced consisting of samples of the tiles and
catalouges, that the alleged improvements introduced by
the respondent in the manufacture of mosaic pre-cast tiles
are not patentable, the same being not new, useful and
inventive.
Third error. As a corollary, when it sentenced the herein
petitioner to pay the damages enumerated in the decision
of the lower court (Record on Appeal, pp. 74-75), as
confirmed by it (the Court of Appeals), but with the
modification that the amount of P50,000.00 moral
damages was reduced to P3,000.00. 8

The patent right of the private respondent expired on May 5, 1977. 10 The
errors will be discuss only to determine the right of said private respondent
to damages.

The facts, as found by the Court of Appeals, are:

The basic facts borne out by the record are to the effect
that on December 1, 1959 plaintiff-appellee filed a patent
application with the Philippine Patent Office, and on May 5,
1960, said office issued in his favor Letters Patent No. 658
for a "new and useful improvement in the process of
making mosaic pre-cast tiles" (Exh, "L"); that defendant
F.H. Aquino & Sons engraved the moulds embodying
plaintiff's patented improvement for the manufacture of
pre-cast tiles, plaintiff furnishing said defendant the actual
model of the tiles in escayola and explained to said
engraver the plans, specifications and the details of the
engravings as he wanted them to be made, including an
explanation of the lip width, artistic slope of easement and
critical depth of the engraving that plaintiff wanted for his

The petitioner questioned the validity of the patent of the private

respondent, Conrado G. de Leon, on the ground that the process, subject of
said patent, is not an invention or discovery, or an improvement of the old
system of making tiles. It should be noted that the private respondent does
not claim to be the discoverer or inventor of the old process of tile-making.
He only claims to have introduced an improvement of said process. In fact,
Letters Patent No. 658 was issued by the Philippine Patent Office to the
private respondent, Conrado G. de Leon, to protect his rights as the
inventor of "an alleged new and useful improvement in the process of
making mosaic pre-cast tiles." 11 Indeed, Section 7, Republic Act No. 165,
as amended provides: "Any invention of a new and useful machine,
manufactured product or substance, process, or an improvement of the
foregoing, shall be patentable.

23

The Court of Appeals found that the private respondent has introduced an
improvement in the process of tile-making because:

matters which are better determined by the Philippines Patent Office. The
technical staff of the Philippines Patent Office, composed of experts in their
field, have, by the issuance of the patent in question, accepted the
thinness of the private respondent's new tiles as a discovery. There is a
presumption that the Philippines Patent Office has correctly determined the
patentability of the improvement by the private respondent of the process
in question.

... we find that plaintiff-appellee has introduced an

improvement in the process of tile-making, which proceeds
not merely from mechanical skill, said improvement
consisting among other things, in the new critical depth, lip
width, easement and field of designs of the new tiles. The
improved lip width of appellee's tiles ensures the durability
of the finished product preventing the flaking off of the
edges. The easement caused by the inclination of the
protrusions of the patented moulds is for the purpose of
facilitating the removal of the newly processed tile from
the female die. Evidently, appellee's improvement consists
in the solution to the old critical problem by making the
protrusions on his moulds attain an optimum height, so
that the engraving thereon would be deep enough to
produce tiles for sculptured and decorative purposes,
strong optimum thickness of appellee's new tiles of only
1/8 of an inch at the deepest easement (Exhs. "D" and "D1") is a most critical feature, suggestive of discovery and
inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for
its intended purpose.

Anent this matter, the Court of Appeals said:

Appellant has not adduced evidence sufficient to overcome
the above established legal presumption of validity or to
warrant reversal of the findings of the lower court relative
to the validity of the patent in question. In fact, as we have
already pointed out, the clear preponderance of evidence
bolsters said presumption of validity of appellee's patent.
There is no indication in the records of this case and this
Court is unaware of any fact, which would tend to show
that concrete wall tiles similar to those produced by
appellee had ever been made by others before he started
manufacturing the same. In fact, during the trial, appellant
was challenged by appellee to present a tile of the same
kind as those produced by the latter, from any earlier
source but, despite the fact that appellant had every
chance to do so, he could not present any. There is,
therefore, no concrete proof that the improved process of
tile-making described in appellee's patent was used by, or
known to, others previous to his discovery thereof. 13

While it is true that the matter of easement, lip width,

depth, protrusions and depressions are known to some
sculptors, still, to be able to produce a new and useful wall
tile, by using them all together, amounts to an invention.
More so, if the totality of all these features are viewed in
combination with the Ideal composition of cement, sodium
silicate and screened fine sand.

The contention of the petitioner Aguas that the letters patent of de Leon
was actually a patent for the old and non-patentable process of making
mosaic pre-cast tiles is devoid of merit. De Leon never claimed to have
invented the process of tile-making. The Claims and Specifications of
Patent No. 658 show that although some of the steps or parts of the old
process of tile making were described therein, there were novel and
inventive features mentioned in the process. Some of the novel features of
the private respondent's improvements are the following: critical depth,
with corresponding easement and lip width to such degree as leaves the
tile as thin as 1/8 of an inch at its thinnest portion, Ideal composition of
cement and fine river sand, among other ingredients that makes possible
the production of tough and durable wall tiles, though thin and light; the
engraving of deep designs in such a way as to make the tiles decorative,
artistic and suitable for wall ornamentation, and the fact that the tiles can
be mass produced in commercial quantities and can be conveniently stockpiled, handled and packed without any intolerable incidence of
breakages. 14

By using his improved process, plaintiff has succeeded in

producing a new product - a concrete sculptured tile which
could be utilized for walling and decorative purposes. No
proof was adduced to show that any tile of the same kind
had been produced by others before appellee. Moreover, it
appears that appellee has been deriving considerable profit
from his manufacture and sale of such tiles. This
commercial success is evidence of patentability (Walker on
Patents, Dellers Edition, Vol. I, p. 237). 12
The validily of the patent issued by the Philippines Patent Office in favor of
the private respondent and the question over the inventiveness, novelty
and usefulness of the improved process therein specified and described are

24

The petitioner also contends that the improvement of respondent is not

patentable because it is not new, useful and inventive. This contention is
without merit.

Both the trial court and the Court of Appeals found as a fact that the
petitioner Domiciano A. Aguas 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. The only issue
then to be resolved is the amount of damages that should be paid by
Aguas.

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.
The old type of tiles were usually intended for floors although there is
nothing to prevent one from using them for walling purposes. These tiles
are neither artistic nor ornamental. They are heavy and massive.

In its decision the Court of Appeals affirmed the amount of damages

awarded by the lower court with the modification that the respondent is
only entitled to P3,000.00 moral damages. 21
The lower court awarded the following damages:

The respondent's improvement is indeed inventive and goes beyond the

exercise of mechanical skill. He has introduced a new kind of tile for a new
purpose. He has improved the old method of making tiles and pre-cast
articles which were not satisfactory because of an intolerable number of
breakages, especially if deep engravings are made on the tile. He has
overcome the problem of producing decorative tiles with deep engraving,
but with sufficient durability. 15 Durability inspite of the thinness and
lightness of the tile, is assured, provided that a certain critical depth is
maintained in relation to the dimensions of the tile. 16

22

a) P10,020.99 by way of actual damages;

b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;
d) P5,000.00 by way of attomey's fees and
e) Costs of suit

The petitioner also claims that changing the design from embossed to
engraved tiles is neither new nor inventive because the Machuca Tile
Factory and the Pomona Tile Manufacturing Company have been
manufacturing decorative wall tiles that are embossed as well as
engraved; 17 that these tiles have also depth, lip width, easement and field
of designs; 18 and that the private respondent had copied some designs of
Pomona. 19

because:
An examination of the books of defendant Aguas made
before a Commissioner reveals that during the period that
Aguas was manufacturing and selling tiles similar to
plaintiff's, he made a gross income of P3,340.33, which can
be safely be considered the amount by which he enriched
himself when he infringed plaintiff's patent. Under Sec. 42
of the Patent Law any patentee whose rights have been
infringed is entitled to damages which, according to the
circumstances of the case may be 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. Considering the wantonness of the
infringement committed by the defendants who knew all
the time about the existence of plaintiff's patent, the Court
feels there is reason to grant plaintiff maximum damages
in the sum of P10,020.99. And in order to discourage
patent infringements and to give more teeth to the
provisions of the patent law thus promoting a stronger
public policy committed to afford greater incentives and
protection to inventors, the Court hereby awards plaintiff

The Machuca tiles are different from that of the private respondent. The
designs are embossed and not engraved as claimed by the petitioner.
There may be depressions but these depressions are too shallow to be
considered engraved. Besides, the Machuca tiles are heavy and massive.
There is no similarity between the Pomona Tiles and de Leon's tiles. The
Pomona tiles are made of ceramics. 20The process involved in making
cement tiles is different from ceramic tiles. Cement tiles are made with the
use of water, while in ceramics fire is used. As regards the allegation of the
petitioner that the private respondent copied some designs of Pomona,
suffice it to say that what is in issue here is the process involved in tile
making and not the design.
In view of the foregoing, this Court finds that Patent No. 658 was legally
issued, the process and/or improvement being patentable.

25

exemplary damages in the sum of P5,000.00 to be paid

jointly and severally by defendants. Considering the status
of plaintiff as a reputable businessman, and owner of the
likewise reputed House of Pre-Cast, he is entitled to an
award of moral damages in the sum of P50,000.00. 23

VII.

G.R. No. L-22773 March 29, 1974

PITTSBURG PLATE GLASS COMPANY, petitioner,

vs.
THE DIRECTOR OF PATENTS and CHUA TUA HIAN AND COMPANY,
doing business as "SIN TECK HENG & CO.", respondents.

In reducing the amount of moral damages the Court of Appeals said:

Picazo and Agcaoili and Roque Recio for petitioner.
As regards the question of moral damages it has been
shown that as a result of the unlawful acts of infringment
committed by defendants, plaintiff was unstandably very
sad; he worried and became nervous and lost
concentration on his work in connection with his tile
business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition,
plaintiff's character and reputation have been
unnecessarily put in question because defendants, by their
acts of infringement have created a doubt or suspicion in
the public mind concerning the truth and honesty of
plaintiff's advertisements and public announcements of his
valid patent. Necessarily, said acts of defendants have
caused plaintiff considerable mental suffering, considering
especially, the fact that he staked everything on his precast tile business (p. 36, t.s.n., Id.) The wantonness and
evident bad faith characterizing defendants' prejudicial
acts against plaintiff justify the assessment of moral
damages in plaintiff's favor, though we do not believe the
amount of P50,000.00 awarded by the lower court is
warranted by the circumstances. We feel that said amount
should be reduced to P3,000.00 by way of compensating
appellee for his moral suffering. "Willful injury to property
may be a legal ground for awarding moral damages if the
court should find that, under the circumstances such
damages are justly due" (Art. 2219 NCC).

Nubla, Pedrosa and Associates for respondent Chua Tua Hian and
Company.
Office of the Solicitor General Antonio A. Alafriz and Solicitor Rosalio de
Leon for respondent Director of Patents.

CASTRO, J.:p
Before us is a petition for review of two resolutions of the Director of
Patents in Inter Partes Case 283, dismissing the opposition of the Pittsburg
Plate Glass Company (hereinafter referred to as the petitioner) to the
registration of a trademark applied for by Chua Tua Hian Company
(hereinafter referred to as the respondent).
On November 5, 1962, the law firm of Lichauco, Picazo and Agcaoili filed
with the Philippine Patent Office a petition for extension of 30 days from
November 8, 1962 within which to file in behalf of the petitioner a notice of
opposition to the respondent's application for registration of "Solex
Bluepane" as trademark for its glass products. The plea was made
pursuant to a cablegram from Langner, Parry, Card and Langner
International Patent and Trademark Agents, USA, asking that the
respondent's application be opposed. A copy of the cablegram was
attached to the request. 1 The extension was granted.

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.

On December 7, 1962 an unverified notice of opposition to the trademark

application was filed by Lichauco, Picazo and Agcaoili, pursuant to Rule
187(c) of the Rules of Practice before the Patent Office which authorizes
the filing of such a notice provided it is verified by the opposer within 60
days thereafter. 2 On the same day, the same counsel filed a duly
authenticated power of attorney executed by the petitioner on November
12, 1962 in favor of the former for the prosecution of its opposition. On
February 5, 1963 the petitioner's verified opposition to the respondent's
application was filed.

WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R

appealed from is hereby affirmed, without pronouncement as to costs.
SO ORDERED.
Makasiar, Guerrero, Melencio-Herrera and Plana, JJ., concur.
Teehankee, J., took no part.

26

On October 14, 1963 the Director of Patents, acting upon a motion of the
respondent, issued a resolution dismissing the petitioner's opposition on
the ground that on November 5, 1962 when the petitioner's counsel asked
for an extension of time to file a notice of opposition, the said counsel was
not yet authorized by the petitioner to file the said pleading as the
aforementioned power of attorney was executed only on November 12,
1962. 3

Makalintal, C.J., Teehankee, Makasiar, Esguerra and Muoz Palma, JJ.,

concur.
VIII.

G.R. No. 118708 February 2, 1998

CRESER PRECISION SYSTEMS, INC., petitioner,

vs.
COURT OF APPEALS AND FLORO INTERNATIONAL
CORP., respondents.

On November 14, 1963 the petitioner's counsel filed a motion for

reconsideration of the Director's resolution, attaching thereto an affidavit
of the petitioner which states that the cablegram from Langner, et al. was
duly authorized, as the latter has been entrusted the task of handling
foreign trademark matters involving the petitioner. The motion was,
however, denied in a resolution dated April 29, 1964.

MARTINEZ, J.:

The main issue before this Court is whether the law firm of Lichauco, Picazo
and Agcaoili was authorized to represent the petitioner before the
Philippine Patent Office on November 5, 1962 when the former pleaded for
an extension of time to register the petitioner's opposition to the
respondent's application.

This petition for review on certiorari assails the decision 1 of the Court of
Appeals dated November 9, 1994 in C.A.-G.R. SP No. 34425 entitled "Floro
International Corp. vs. Hon. Tirso D.C Cruz and Creser Precision System,
Inc.", the dispositive portion of which reads:
WHEREFORE, THE PETITION IS HEREBY GRANTED. THE
COMPLAINT FOR INJUNCTION AND DAMAGES, CIVIL CASE
NO. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY
ORDERED DISMISSED AND HIS ORDERS THEREIN OF
DECEMBER 29, 1993 AND MAY 11, 1994 ARE ORDERED SET
ASIDE.

It is our considered view that the said law firm was so properly authorized
by the petitioner. It should be noted that the petitioner does not deny, as in
fact it asserted in writing, that the said law firm was authorized to
represent it by virtue of the powers it had vested upon Langner, et al., a
correspondent of Lichauco, Picazo and Agcaoili, to handle all foreign
trademark matters affecting the petitioner. It bears emphasis that the
relationship between counsel and client is strictly a personal one. It is a
relationship the creation of which courts and administrative tribunals
cannot but recognize on the faith of the client's word, especially when no
substantial prejudice is thereby caused to any third party.

Private respondent is a domestic corporation engaged in the manufacture,

production, distribution and sale of military armaments, munitions,
airmunitions and other similar materials. 2

In the case at bar, the petitioner, which claims to be adversely affected by

the respondent's trademark application, seasonably informed the Director
of Patents that its counsel had the authority to represent it before the
latter's office. We see no valid reason to interpose chevaux-de frise upon
that claim and deny the petitioner its basic right to be heard.

On January 23, 1990, private respondent was granted by the Bureau of

Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent No.
UM-6938 3 covering an aerial fuze which was published in the SeptemberOctober-1990, Vol. III, No. 5 issue of the Bureau of Patent's Official
Gazette. 4

ACCORDINGLY, the questioned resolutions of the Director of Patents of

October 14, 1963 and April 29, 1964 are set aside, and the Director of
Patents is hereby directed to proceed with the determination of the
application and the opposition thereto with costs against Chua Tua Hian &
Company.

Sometime in November 1993, private respondent, through its president,

Mr. Gregory Floro, Jr., discovered that petitioner submitted samples of its
patented aerial fuze to the Armed Forces of the Philippines (AFP) for
testing. He 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. To protect its right,
private respondent on December 3, 1993, sent a letter 5 to petitioner
advising it of its existing patent and its rights thereunder, warning

27

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.

200,000.00, let the writ of preliminary injunction be issued

by the branch Clerk of this Court 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.

In response to private respondent's demand, petitioner filed on December

8, 1993 a complaint 6 for injunction and damages arising from the alleged
infringement before the Regional Trial Court of Quezon City, Branch 88. The
complaint alleged, among others: that petitioner is the first, true and
actual inventor of an aerial fuze denominated as "Fuze, PDR 77 CB4" which
it developed as early as December 1981 under the Self-Reliance Defense
Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner
began supplying the AFP with the said aerial fuze; that private
respondent's aerial fuze is identical in every respect to the petitioner's
fuze; and that the only difference between the two fuzes are miniscule and
merely cosmetic in nature. Petitioner prayed that a temporary restraining
order and/or writ of preliminary injunction be issued enjoining private
respondent including any and all persons acting on its behalf from
manufacturing, marketing and/or profiting therefrom, and/or from
performing any other act in connection therewith or tending to prejudice
and deprive it of any rights, privileges and benefits to which it is duly
entitled as the first, true and actual inventor of the aerial fuze.

Private respondent moved for reconsideration but this was denied by the
trial court in its Order 9 of May 11, 1994, pertinent portions of which read:
For resolution before this Court is the Motion for
Reconsideration filed by the defendant and the plaintiff's
Opposition thereto. The Court finds no sufficient cause to
reconsider its order dated December 29, 1993. During the
hearing for the issuance of the preliminary injunction, the
plaintiff has amply proven its entitlement to the relief
prayed for. It is undisputed that the plaintiff has developed
its aerial fuze way back in 1981 while the defendant began
manufacturing the same only in 1987. Thus, it is only
logical to conclude that it was the plaintiff's aerial fuze that
was copied or imitated which gives the plaintiff the right to
have the defendant enjoined "from manufacturing,
marketing and/or selling aerial fuzes identical to those of
the plaintiff, and from profiting therefrom and/or
performing any other act in connection therewith until
further orders from this Court." With regards to the
defendant's assertion that an action for infringement may
only be brought by "anyone possessing right, title or
interest to the patented invention," (Section 42, RA 165)
qualified by Sec. 10, RA 165 to include only "the first true
and actual inventor, his heirs, legal representatives or
assignees, "this court finds the foregoing to be untenable.
Sec. 10 merely enumerates the persons who may have an
invention patented which does not necessarily limit to
these persons the right to institute an action for
infringement. Defendant further contends that the order in
issue is disruptive of the status quo. On the contrary, the
order issued by the Court in effect maintained the status
quo. The last actual, peaceable uncontested status existing
prior to this controversy was the plaintiff manufacturing
and selling its own aerial fuzes PDR 77 CB4 which was
ordered stopped through the defendant's letter. With the
issuance of the order, the operations of the plaintiff
continue. Lastly, this court believes that the defendant will
not suffer irreparable injury by virtue of said order. The
defendant's claim is primarily hinged on its patent (Letters

On December 10, 1993, the trial court issued a temporary restraining

order. Thereafter, hearings were held on the application of petitioner for
the issuance of a writ of preliminary injunction, with both parties
presenting their evidence. After the hearings, the trial court directed the
parties to submit their respective memoranda in support of their positions.
On December 27, 1993, private respondent submitted its
memorandum 7 alleging that petitioner has no cause of action to file a
complaint for infringement against it since it has no patent for the aerial
fuze which it claims to have invented; that petitioner's available remedy is
to file a petition for cancellation of patent before the Bureau of Patents;
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 rights over its patent.
On December 29, 1993, the trial court issued an Order 8 granting the
issuance of a writ of preliminary injunction against private respondent the
dispositive portion of which reads:
WHEREFORE, plaintiffs application for the issuance of a writ
of preliminary injunction is granted and, upon posting of
the corresponding bond by plaintiff in the amount of PHP

28

Patent No. UM-6983) the validity of which is being

questioned in this case.

It is petitioner's contention that it can file, under Section 42 of the Patent

Law (R.A. 165), an action for infringement not as a patentee but as an
entity in possession of a right, title or interest in and to the patented
invention. It advances the theory that while the absence of a patent may
prevent one from lawfully suing another for infringement of said patent,
such absence does not bar the first true and actual inventor of the
patented invention from suing another who was granted a patent in a suit
for declaratory or injunctive relief recognized under American patent laws.
This remedy, petitioner points out, may be likened to a civil action for
infringement under Section 42 of the Philippine Patent Law.

WHEREFORE, premises considered, the Motion for

Reconsideration is hereby denied for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a petition
for certiorari, mandamus and prohibition 10 before respondent Court of
Appeals raising as grounds the following:

We find the above arguments untenable.

a. 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;

Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly

provides:
Sec. 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
(now Regional Trial court), to recover from the infringer
damages sustained by reason of the infringement and to
secure an injunction for the protection of his right. . . .

b. the case being an action for cancellation or invalidation

of private respondent's Letters Patent over its own aerial
fuze, the proper venue is the Office of the Director of
Patents;
c. The trial court acted in grave abuse of discretion and/or
in excess of jurisdiction in finding that petitioner has fully
established its clear title or right to preliminary injunction;

Under the aforequoted law, only the patentee or his successors-in-interest

may file an action for infringement. The phrase "anyone possessing any
right, title or interest in and to the patented invention" upon which
petitioner maintains its present suit, refers only to the patentee's
successors-in-interest, assignees or grantees since actions for infringement
of patent may be brought in the name of the person or persons interested,
whether as patentee, assignees, or as grantees, of the exclusive
right. 12 Moreover, there can be no infringement of a patent until a patent
has been issued, since whatever right one has to the invention covered by
the patent arises alone from the grant of patent. 13 In short, a person or
entity who has not been granted letters patent over an invention and has
not acquired any light or title thereto either as assignee or as licensee, has
no cause of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent. 14

d. The trial court acted in grave abuse of discretion and/or

in excess of jurisdiction in granting the preliminary
injunction, it being disruptive of the status quo; and
e. The trial court acted in grave abuse of discretion and/or
in excess of jurisdiction in granting the preliminary
injunction thereby depriving private respondent of its
property rights over the patentedaerial fuze and cause it
irreparable damages.
On November 9, 1994, the respondent court rendered the now assailed
decision reversing the trial court's Order of December 29, 1993 and
dismissing the complaint filed by petitioner.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no
legal basis or cause of action to institute the petition for injunction and
damages arising from the alleged infringement by private respondent.
While petitioner claims to be the first inventor of the aerial fuze, still it has
no right of property over the same upon which it can maintain a suit unless
it obtains a patent therefor. Under American jurisprudence, an inventor has
no common-law right to a monopoly of his invention. He has the right to

The motion for reconsideration was also denied on January 17,

1995. 11 Hence, this present petition.

29

make, use and vend his own invention, but if he voluntarily discloses it,
such as by offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude all
others. As a patentee, he has the exclusive right of making, using or selling
the invention. 15

In fine, in the absence of error or abuse of power or lack of jurisdiction or

grave abuse of discretion, we sustain the assailed decision of the
respondent Court of Appeal.
WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No
pronouncement as to costs.

Further, the remedy of declaratory judgment or injunctive suit on patent

invalidity relied upon by petitioner cannot be likened to the civil action for
infringement under Section 42 of the Patent Law. The reason for this is that
the said remedy is available only to the patent holder or his successors-ininterest. Thus, anyone who has no patent over an invention but claims to
have a right or interest thereto can not file an action for declaratory
judgment or injunctive suit which is not recognized in this jurisdiction. Said
person, however, is not left without any remedy. He can, under Section 28
of the aforementioned law, file a petition for cancellation of the patent
within three (3) years from the publication of said patent with the Director
of Patents and raise as ground therefor that the person to whom the patent
was issued is not the true and actual inventor. Hence, petitioner's remedy
is not to file an action for injunction or infringement but to file a petition for
cancellation of private respondent's patent. Petitioner however failed to do
so. As such, it can not now assail or impugn the validity of the private
respondent's letters patent by claiming that it is the true and actual
inventor of the aerial fuze.

SO ORDERED.
IX.

16

April 16, 2009

ROMA DRUG and ROMEO RODRIGUEZ, as Proprietor of ROMA

DRUG, Petitioners,
vs.
THE REGIONAL TRIAL COURT OF GUAGUA, PAMPANGA, THE
PROVINCIAL PROSECUTOR OF PAMPANGA, BUREAU OF FOOD &
DRUGS (BFAD) and GLAXO SMITHKLINE, Respondents.
DECISION
TINGA, J.:
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, a

Thus, as correctly ruled by the respondent Court of Appeals in its assailed

decision: "since the petitioner (private respondent herein) is the patentee
of the disputed invention embraced by letters of patent UM No. 6938
issued to it on January 23, 1990 by the Bureau of Patents, it has in its favor
not only the presumption of validity of its patent, but that of a legal and
factual first and true inventor of the invention."
In the case of Aguas vs. De Leon,

G.R. No. 149907

duly registered sole proprietorship of petitioner Romeo Rodriguez

(Rodriguez) operating a drug store located at San Matias, Guagua,
Pampanga. The raid was conducted pursuant to a search warrant 1 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.).2 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), a duly registered corporation
which is the local distributor of pharmaceutical products manufactured by
its parent London-based corporation. The local SmithKline has since
merged with Glaxo Wellcome Phil. Inc to form Glaxo SmithKline, private
respondent in this case. 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.

we stated that:

The validity of the patent issued by the Philippine Patent

Office in favor of the private respondent and the question
over the investments, novelty and usefulness of the
improved process therein specified and described are
matters which are better determined by the Philippines
Patent Office. The technical Staff of the Philippines Patent
Office, composed of experts in their field, have, by the
issuance of the patent in question, accepted the thinness
of the private respondent's new tiles as a discovery. There
is a presumption that the Philippine Patent Office has
correctly determined the patentability of the improvement
by the private respondent of the process in question.

30

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.

presumed constitutional, arguing that both Section 15, Article II and

Section 11, Article XIII "are not self-executing provisions, the disregard of
which can give rise to a cause of action in the courts." It adds that Section
11, Article XIII in particular cannot be work "to the oppression and unlawful
of the property rights of the legitimate manufacturers, importers or
distributors, who take pains in having imported drug products registered
before the BFAD." Glaxo Smithkline further claims that the SLCD does not
in fact conflict with the aforementioned constitutional provisions and in fact
are in accord with constitutional precepts in favor of the peoples right to
health.

In this case, there is no doubt that the subject seized drugs are identical in
content with their Philippine-registered counterparts. There is no claim that
they were adulterated in any way or mislabeled at least. Their classification
as "counterfeit" is based solely on the fact that they were imported from
abroad and not purchased from the Philippine-registered owner of the
patent or trademark of the drugs.

The Office of the Solicitor General casts the question as one of policy
wisdom of the law that is, beyond the interference of the judiciary. 5 Again,
the presumption of constitutionality of statutes is invoked, and the
assertion is made that there is no clear and unequivocal breach of the
Constitution presented by the SLCD.
II.

During preliminary investigation, Rodriguez challenged the constitutionality

of the SLCD. However, Assistant Provincial Prosecutor Celerina C. Pineda
skirted the challenge and issued a Resolution dated 17 August 2001
recommending that Rodriguez be charged with violation of Section 4(a) of
the SLCD. The recommendation was approved by Provincial Prosecutor
Jesus Y. Manarang approved the recommendation. 3

The constitutional aspect of this petition raises obviously interesting

questions. However, such questions have in fact been mooted with the
passage in 2008 of Republic Act No. 9502, also known as the "Universally
Accessible Cheaper and Quality Medicines Act of 2008". 6
Section 7 of Rep. Act No. 9502 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:

Hence, the present Petition for Prohibition questing the RTC-Guagua

Pampanga and the Provincial Prosecutor to desist from further prosecuting
Rodriguez, and that Sections 3(b)(3), 4 and 5 of the SLCD be declared
unconstitutional. In gist, Rodriguez asserts that the challenged provisions
contravene three provisions of the Constitution. The first is the equal
protection clause of the Bill of Rights. The two other provisions are Section
11, Article XIII, which mandates that the State make "essential goods,
health and other social services available to all the people at affordable
cost;" and Section 15, Article II, which states that it is the policy of the
State "to protect and promote the right to health of the people and instill
health consciousness among them."

Sec. 7. Section 72 of Republic Act No. 8293, otherwise known as the

Intellectual Property Code of the Philippines, is hereby amended to read as
follows:
"Sec. 72. Limitations of Patent Rights. The owner of a patent has no right
to prevent third parties from performing, without his authorization, the acts
referred to in Section 71 hereof in the following circumstances:

Through its Resolution dated 15 October 2001, the Court issued a

temporary restraining order enjoining the RTC from proceeding with the
trial against Rodriguez, and the BFAD, the NBI and Glaxo Smithkline from
prosecuting the petitioners.4

"72.1. Using 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,

Glaxo Smithkline and the Office of the Solicitor General (OSG) have
opposed the petition, the latter in behalf of public respondents RTC,
Provincial Prosecutor and Bureau of Food and Drugs (BFAD). On the
constitutional issue, Glaxo Smithkline asserts the rule that the SLCD is

31

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;

(i) Introduction in the Philippines or Anywhere Else in the World.

Using 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. (72.1)1avvphi1

"72.2. Where the act is done privately and on a non-commercial

scale or for a non-commercial purpose: Provided, That it does not
significantly prejudice the economic interests of the owner of the
patent;
"72.3. Where the act consists of making or using exclusively for
experimental use of the invention for scientific purposes or
educational purposes and such other activities directly related to
such scientific or educational experimental use;

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

"72.4. In the case of drugs and medicines, where the act includes
testing, using, making or selling the invention including any data
related thereto, solely for purposes reasonably related to the
development and submission of information and issuance of
approvals by government regulatory agencies required under any
law of the Philippines or of another country that regulates the
manufacture, construction, use or sale of any product: Provided,
That, in order to protect the data submitted by the original patent
holder from unfair commercial use provided in Article 39.3 of the
Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement), the Intellectual Property Office, in consultation
with the appropriate government agencies, shall issue the
appropriate rules and regulations necessary therein not later than
one hundred twenty (120) days after the enactment of this law;

It may be that Rep. Act No. 9502 did not expressly repeal any provision of
the SLCD. However, it is clear that the SLCOs classification of
"unregistered imported drugs" as "counterfeit drugs," and of corresponding
criminal penalties therefore are irreconcilably in the imposition conflict with
Rep. Act No. 9502 since the latter indubitably grants private third persons
the unqualified right to import or otherwise use such drugs. Where a
statute of later date, such as Rep. Act No. 9502, clearly reveals an
intention on the part of the legislature to abrogate a prior act on the
subject that intention must be given effect. 9 When a subsequent
enactment covering a field of operation coterminus with a prior statute
cannot by any reasonable construction be given effect while the prior law
remains in operative existence because of irreconcilable conflict between
the two acts, the latest legislative expression prevails and the prior law
yields to the extent of the conflict. 10 Irreconcilable inconsistency between
two laws embracing the same subject may exist when the later law nullifies
the reason or purpose of the earlier act, so that the latter loses all meaning
and function.11 Legis posteriors priores contrarias abrogant.

"72.5. Where the act consists of the preparation for individual

cases, in a pharmacy or by a medical professional, of a medicine in
accordance with a medical 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; xxx7

For the reasons above-stated, the prosecution of petitioner is no longer

warranted and the quested writ of prohibition should accordingly be issued.
III.

The unqualified right of private third parties such as petitioner to import or

possess "unregistered imported drugs" in the Philippines is further
confirmed by the "Implementing Rules to Republic Act No. 9502"
promulgated on 4 November 2008.8 The relevant provisions thereof read:

Had the Court proceeded to directly confront the constitutionality of the

assailed provisions of the SLCD, it is apparent that it would have at least
placed in doubt the validity of the provisions. As written, the law makes a
criminal of any person who imports an unregistered drug regardless of the
purpose, even if the medicine can spell life or death for someone in the
Philippines. It does not accommodate the situation where the drug is out of
stock in the Philippines, beyond the reach of a patient who urgently

Rule 9. Limitations on Patent Rights. The owner of a patent has no

right to prevent third parties from performing, without his authorization,
the acts referred to in Section 71 of the IP Code as enumerated hereunder:

32

depends on it. It does not allow husbands, wives, children, siblings, parents
to import the drug in behalf of their loved ones too physically ill to travel
and avail of the meager personal use exemption allotted by the law. It
discriminates, at the expense of health, against poor Filipinos without
means to travel abroad to purchase less expensive medicines in favor of
their wealthier brethren able to do so. Less urgently perhaps, but still
within the range of constitutionally protected behavior, it deprives Filipinos
to choose a less expensive regime for their health care by denying them a
plausible and safe means of purchasing medicines at a cheaper cost.

DANTE O. TINGAAssociate Justice

<p
WE CONCUR:
LEONARDO A. QUISUMBING
Associate Justice
Chairperson

The absurd results from this far-reaching ban extends to implications that
deny the basic decencies of humanity. The law would make criminals of
doctors from abroad on medical missions of such humanitarian
organizations such as the International Red Cross, the International Red
Crescent, Medicin Sans Frontieres, and other

CONCHITA CARPIO MORALES

Associate Justice

PRESBITERO J. VELASCO, JR.

Associate Justice

ARTURO D. BRION
Associate Justice

like-minded groups who necessarily bring their own pharmaceutical drugs

when they embark on their missions of mercy. After all, they are disabled
from invoking the bare "personal use" exemption afforded by the SLCD.

ATTESTATION
I attest that the conclusions in the above Decision had been reached in
consultation before the case was assigned to the writer of the opinion of
the Courts Division.

Even worse is the fact that the law is not content with simply banning, at
civil costs, the importation of unregistered drugs. It equates the importers
of such drugs, many of whom motivated to do so out of altruism or basic
human love, with the malevolents who would alter or counterfeit
pharmaceutical drugs for reasons of profit at the expense of public safety.
Note that the SLCD is a special law, and the traditional treatment of penal
provisions of special laws is that of malum prohibitumor punishable
regardless of motive or criminal intent. For a law that is intended to help
save lives, the SLCD has revealed itself as a heartless, soulless legislative
piece.

LEONARDO A. QUISUMBING
Associate Justice
Chairperson, Second Division
CERTIFICATION
Pursuant to Section 13, Article VIII of the Constitution, and the Division
Chairpersons Attestation, it is hereby certified that the conclusions in the
above Decision had been reached in consultation before the case was
assigned to the writer of the opinion of the Courts Division.

The challenged provisions of the SLCD apparently proscribe a range of

constitutionally permissible behavior. It is laudable that with the passage of
Rep. Act No. 9502, the State has reversed course and allowed for a
sensible and compassionate approach with respect to the importation of
pharmaceutical drugs urgently necessary for the peoples constitutionallyrecognized right to health.

REYNATO S. PUNO
Chief Justice

WHEREFORE, the petition is GRANTED in part. A writ of prohibition is

hereby ISSUED commanding respondents from prosecuting petitioner
Romeo Rodriguez for violation of Section 4 or Rep. Act No. 8203. The
Temporary Restraining Order dated 15 October 2001 is hereby made
PERMANENT. No pronouncements as to costs.

_________________________________________
X.

G.R. No. 115106 March 15, 1996

ROBERTO L. DEL ROSARIO, petitioner,

vs.
COURT OF APPEALS AND JANITO CORPORATION, respondents.

SO ORDERED.

33

Private respondent assailed the order of 24 February 1993 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.

BELLOSILLO, J.:p
Roberto del Rosario petitions this Court to review the decision of the Court
of Appeals 1 which set aside the order of the Regional Trial Court of Makati
granting a writ of preliminary injunction in his favor.

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; 4 hence, the instant petition for review.

The antecedents: On 18 January 1993 petitioner filed a complaint for

patent infringement against private respondent Janito
Corporation. 2 Roberto L. del Rosario alleged that he was a patentee of an
audio equipment and improved audio equipment commonly known as the
sing-along System or karaoke under Letters Patent No. UM-5269 dated 2
June 1983 as well as Letters Patent No. UM-6237 dated 14 November 1986
issued by the Director of Patents. The effectivity of both Letters Patents
was for five (5) years and was extended for another five (5) years starting
2 June 1988 and 14 November 1991, respectively. He described his singalong system as a handy multi-purpose compact machine which
incorporates an amplifier speaker, one or two tape mechanisms, optional
tuner or radio and microphone mixer with features to enhance one's voice,
such as the echo or reverb to stimulate an opera hall or a studio sound,
with the whole system enclosed in one cabinet casing.

This petition alleges that: (a) it was improper for the Court of Appeals to
consider questions of fact in a certiorariproceeding; (b) the Court of
Appeals erred in taking judicial notice of private respondent's self-serving
presentation of facts; (c) the Court of Appeals erred in disregarding the
findings of fact of the trial court; and, (d) there was no basis for the Court
of Appeals to grant a writ of preliminary injunction in favor of private
respondent. 5
Petitioner argues that in a certiorari proceeding questions of fact are not
generally permitted the inquiry being limited essentially to whether the
tribunal has acted without or in excess of jurisdiction or with grave abuse
of discretion; that respondent court should not have disturbed but
respected instead the factual findings of the trial court; that the movant
has a clear legal right to be protected and that there is a violation of such
right by private respondent. Thus, petitioner herein claims, he has satisfied
the legal requisites to justify the order of the trial court directing the
issuance of the writ of injunction. On the other hand, in the absence of a
patent to justify the manufacture and sale by private respondent of singalong systems, it is not entitled to the injunctive relief granted by
respondent appellate court.

In the early part of 1990 petitioner 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 private respondent, its officers and everybody elsewhere acting
on its behalf, from using, selling and advertising the miyata or miyata
karaoke brand, the injunction to be made permanent after trial, and
praying for damages, attorney's fees and costs of suit.
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.

The crux of the controversy before us hinges on whether respondent 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.

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 mode 3 of petitioner.

Injunction is a preservative remedy for the protection of substantive rights

or interests. It is not a cause of action in itself but merely a provisional
remedy, an adjunct to a main suit. The controlling reason for the existence
of the judicial power to issue the writ is that the court may thereby prevent

34

a threatened or continuous irremediable injury to some of the parties

before their claims can be thoroughly investigated and advisedly
adjudicated. It is to be resorted to only when there is a pressing necessity
to avoid injurious consequences which cannot be remedied under any
standard of compensation. The application of the writ rests upon an
alleged existence of an emergency or of a special reason for such an order
before the case can be regularly heard, and the essential conditions for
granting such temporary injunctive relief are that the complaint alleges
facts which appear to be sufficient to constitute a cause of action for
injunction and that on the entire showing from both sides, it appears, in
view of all the circumstances, that the injunction is reasonably necessary
to protect the legal rights of plaintiff pending the litigation. 6

The construction of an audio equipment comprising a

substantially cubical casing having a window at its rear and
upper corner fitted with a slightly inclined control panel,
said cubical (casing) having a vertical partition wall therein
defining a rear compartment and a front compartment, and
said front compartment serving as a speaker baffle; a
transistorized amplifier circuit having an echo section and
writhed in at least the printed circuit boards placed inside
said rear compartment of said casing and attached to said
vertical partition wall, said transistorized amplifier circuit
capable of being operated from outside, through various
controls mounted on said control panel of such casing; a
loud speaker fitted inside said front compartment of said
casing and connected to the output of the main audio
amplifier section of said transistorized amplifier circuit and
a tape player mounted on the top wall of said casing and
said tape player being connected in conventional manner
to said transistorized amplifier circuit. 8

A preliminary injunction may be granted at any time after the

commencement of the action and before judgment when it is established
that the defendant is doing, threatens, or is about to do, or is procuring or
suffering to be done, some act probably in violation of the plaintiff's rights.
Thus, 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. 7

Again, on 14 November 1986 petitioner was granted Letters Patent No. UM6237 for a term of five (5) years from the grant of a Utility Model described
as

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.

In an audio equipment consisting of a first cubical casing

having an opening at its rear and upper rear portion and a
partition therein forming a rear compartment and a front
compartment serving as a loud speaker baffle, a control
panel formed by vertical and horizontal sections, a
transistorized amplifier circuit wired in at least two printed
circuit boards attached at the back of said control panel, a
first loud speaker fitted inside said first compartment of
such first casing and connected to the output of said
transistorized amplifier circuit; the improvement wherein
said control panel being removably fitted to said first
cubical casing and further comprises a set of tape recorder
and tape player mounted on the vertical section of said
control panel and said recorder and player are likewise
connected to said transistorized amplifier circuit; a second
cubical casing having an opening at its rear, said second
cubical casing having (being?) provided with a vertical
partition therein defining a rear compartment and a front
compartment, said rear compartment being provided with
a door and enclosing therein a set of tape racks and said
front compartment serving as loud speaker baffle, said
second cubical casing being adapted to said first cubical
casing so that said first and second casings are secured
together in compact and portable form; and a second loud

In this regard Sec. 55 of R.A. 165 as amended, known as The Patent Law,
provides
Sec. 55. Design patents and patents for utility models.
(a) Any new, original, and ornamental design for an article
of manufacture and (b) new model or implements or tools
or of any industrial product or of part of the same, which
does not possess the quality of invention but which is of
practical utility by reason of its form, configuration,
construction or composition, may be protected by the
author thereof, the former by a patent for a design and the
latter by a patent for a utility model, 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 herein provide . . . .
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 herein described

35

speaker fitted inside said front compartment of said casing

and connected to the output of said amplifier circuit. 9

Q. Now do you recall that your lawyer filed

with this Honorable Court an Urgent Motion
to Lift Temporary Restraining Order of this
Honorable Court. I am sure you were the
one who provided him with the information
about the many other companies selling
the sing-along system, is that right? These
18 which you enumerated here.

The terms of both Letters Patents were extended for another five (5) years
each, the first beginning 2 June 1988 and the second, 14 November 1991.
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. 10Here, there is no dispute that the letters patent issued to
petitioner are for utility models of audio equipment.

A. More than that because. . . .

Q. Now you will agree with me that in your
statement Sharp you put the date as 1985
agreed?

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. 11 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. 12

A. No.
Q. You mean your lawyer was wrong when
he put the word Sharp 1985?
A. Maybe I informed him already.
xxx xxx xxx

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. This is evident from the testimony of Janito Cua,
President of respondent Janito Corporation, during the hearing on the
issuance of the injunction, to wit

Q. You mean your lawyer was wrong in

alleging to this Court that Sharp
manufactured and sold (in) 1985 as found
in the Urgent Motion?
A. Since it is urgent it is more or less.
Q. The same also with Sanyo 1985 which
you put, more or less?

Q. Mr. Cua, you testified that there are (sic)

so many other companies which already
have (sic) the sing-along system even
before the patent application of Mr. del
Rosario and as a matter of fact you
mentioned Sanyo, Sony and Sharp, is that
right?

A. Sanyo is wrong.
Q. It is not 1985?
A. Sanyo is 1979 I think.

A. Musicmate and Asahi.

Q. So this is also wrong. Panasonic 1986 is

also wrong?

36

A. Panasonic I think.

A. 95% sure.

Q. So you don't think this is also correct.

Q. Now you are sure 1981.

A. The date?

A. This one because. . . .

Q. So you don't think also that this

allegation here that they manufactured in
1986 is correct?

Q. Mr. Witness so you are now trying to tell

this Honorable Court that all your
allegations here of the dates in this Urgent
Motion except for Musicmate which you are
only 95% sure they are all wrong or they
are also more or less or not sure, is that
right?

A. Wrong. Earlier.
Q. National by Precision Electronic 1986
this is also wrong?

A. More or less.

A. I think earlier.

Q. Now do you have any proof, any

advertisement, anything in writing that
would show that all these instruments are
in the market, do you have it.

Q. So that means all your allegations here

from 2 to 5 are wrong? OK. By Philipps
Philippines 1986, this is also correct or
wrong?

A. No I don't have it because. . . .

A. More or less. We said more or less.

Q. No I am satisfied with your answer. Now

Mr. Witness, you don't also have a proof
that Akai instrument that you said was also
in the market before 1982? You don't have
any written proof, any advertisement?

Q. Nakabutshi by Asahi Electronics that is

also wrong?
A. No that is 1979.

A. I have the product.

Q. Electone by DICO 1989 is this correct or
wrong?

Q. But you have not brought the product in

(sic) this Honorable Court, right?

A. Correct. More or less.

A. No.

13

Q. Skylers 1985 is that correct or wrong?

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

A. It is more or less because it is urgent.

We don't have time to exact the date.
Q. Musicmate of G.A. Yupangco 1981 this is
more or less? You are not also sure?

37

without authorization of the patentee constitutes infringement of his

patent.

and 1 echo, while in the miyataequipment the amplifier is

mainly IC (Integrated Circuit) powered with 8 printed
circuit boards almost all of which are IC controlled, with 1
amplifier with power supply, 1 main tuner, 1 equalizer (3band), 1 IC controlled volume control, 1 echo IC, 1 tape
pream, 1 instrument and 1 wireless microphone.

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. He also alleged
that both his own patented audio equipment and respondent's sing-along
system were constructed in a casing with a control panel, the casing
having a vertical partition wall defining the rear compartment from the
front compartment, with the front compartment consisting of a loud
speaker baffle, both containing a transistorized amplifier circuit capable of
being operated from outside through various controls mounted on the
control panel, and that both had loud speakers fitted inside the front
compartment of the casing and connected to the output of the main audio
amplifier section both having a tape recorder and a tape player mounted
on the control panel with the tape recorder and tape player being both
connected to the transistorized amplifier circuit. 14

Fourth. Under Utility Model 5269, 4 printed circuits are

placed inside the compartment of its casing attached to
the vertical partition wall, while in the miyata, the 7 printed
circuit boards (PCB) are attached to the front panel and 1
attached to the horizontal divider.
Fifth. Under Utility Model 5269, there are various controls
mounted on the control panel of the casing, while
in miyata, the various controls are all separated from the
printed circuit boards and the various controls are all
attached thereto.

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. But, it must be emphasized,
respondent only confined its comparison to the first model, Utility Model
No. 5269, and completely disregarded Utility Model No. 6237 which
improved on the first. As described by respondent corporation, 15 these
differences are

Sixth. Under Utility Model 5269, a loud speaker fitted inside

the front compartment of the casing is connected to the
output of the main audio amplifier section of the
transistorized amplifier circuit, while in miyata, there is no
other way but to use 2 loud speakers connected to the
amplifier.

First. Under Utility Model 5269, the unit is a substantially

cubical casing with a window at its rear and upper corner
fitted with slightly inclined control panel, while
the miyata equipment is a substantially rectangular casing
with panel vertically positioned.

Seventh. Under Utility Model 5269, a tape player is

mounted on the top wall of the casing, while inmiyata, 2
tape players are used mounted side by side at the front.
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. 16

Second. Under Utility Model 5269, the cubical casing has a

vertical partition wall defining a rear compartment and a
front compartment serving as a speaker baffle, while
the miyata equipment has no rear compartment and front
compartment in its rectangular casing; it has only a front
compartment horizontally divided into 3 compartments like
a 3-storey building, the 1st compartment being a kit, the
2nd also the speaker, and the 3rd are kits.

It may be noted that respondent corporation failed to present before the

trial court a clear, competent and reliable comparison between its own
model and that of petitioner, and disregarded completely petitioner's utility
Model No. 6237 which improved on his first patented model.
Notwithstanding the differences cited by respondent corporation, it did not
refute and disprove the allegations of petitioner before the trial court that:
(a) both are used by a singer to sing and amplify his voice; (b) both are
used to sing with a minus-one or multiplex tapes, or that both are used to

Third. Under Utility Model No. 5269, a transistorized

amplifier circuit with an echo section wired in at least 2
printed circuit boards is placed inside the rear
compartment of the casing and attached to the vertical
partition wall, the printed circuit board having 1 amplifier

38

play minus-one or standard cassette tapes for singing or for listening to; (c)
both are used to sing with a minus-one tape and multiplex tape and to
record the singing and the accompaniment; (d) both are used to sing with
live accompaniment and to record the same; (e) both are used to enhance
the voice of the singer using echo effect, treble, bass and other controls;
(g) both are equipped with cassette tape decks which are installed with
one being used for playback and the other, for recording the singer and the
accompaniment, and both may also be used to record a speaker's voice or
instrumental playing, like the guitar and other instruments; (h) both are
encased in a box-like cabinets; and, (i) both can be used with one or more
microphones. 17
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.
Padilla, Vitug, Kapunan and Hermosisima, Jr., JJ., concur.

39