PATENTS: DIGESTS

MANZANO v CA
278 SCRA 688
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.
FACTS:
Angelita Manzano filed PPO an action for the
cancellation of Letters Patent 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.
Testifying for herself petitioner narrated that her
husband Ong Bun Tua worked as a helper in the UNITED
FOUNDRY where respondent Melecia Madolaria used to be
affiliated with from 1965 to 1970; that Ong helped in the
casting of an LPG burner which was the same utility model
of a burner and that after her 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 two (2) other witnesses,
namely, her husband Ong Bun Tua and Fidel Francisco.
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.
Director of Patents Cesar C. Sandiego denied the
petition for cancellation and holding that the evidence of
petitioner was not able to establish convincingly that the
patented utility model of private respondent was
anticipated.
Petitioner elevated the decision of the Director of
Patents to the Court of Appeals which affirmed the decision
of the Director of Patents. Hence, this petition for review on
certiorari.
ISSUE:
Whether the dismissal is proper where the patent
applied for has no substantial difference between the model
to be patented and those sold by petitioner.
HELD:
The element of novelty is an essential requisite of the
patentability of an invention or discovery. If a device or
process has been known or used by others prior to its
invention or discovery by the applicant, an application for a
patent therefor should be denied; and if the application has
been granted, the court, in a judicial proceeding in which
the validity of the patent is drawn in question, will hold it
void and ineffective. It has been repeatedly held that an
invention must possess the essential elements of novelty,
originality and precedence, and for the patentee to be
entitled to the protection the invention must be new to the
world.

However, The validity of the patent issued by the

Philippine Patent Office in favor of private respondent and
the question over the inventiveness, novelty and usefulness
of the improved model of the LPG burner are matters which
are better determined by the Patent Office. The technical
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 and such
action must not be interfered with in the absence of
competent evidence to the contrary.
The rule is settled that the findings of fact of the
Director of Patents, especially when affirmed by the Court of
Appeals, are conclusive on this Court when supported by
substantial evidence.
Petitioner has failed to show
compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of Appeals.
Petition DISMISSED.
MAGUAN v CA
146 SCRA 107
FACTS:
Petitioner is doing business under the firm name
and style of SWAN MANUFACTURING" while private
respondent is likewise doing business under the firm name
and
style
of
"SUSANA
LUCHAN
POWDER
PUFF
MANUFACTURING. And holder
petitioner informed private respondent that the
powder puffs the latter is manufacturing and selling to
various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical
powder puffs of which the former is a patent holder under
Registration Certification Nos. Extension UM-109, Extension
UM-110 and Utility Model No. 1184; petitioner explained
such production and sale constitute infringement of said
patents and therefore its immediate discontinuance is
demanded, otherwise it will be compelled to take judicial
action
Private respondent replied stating that her products
are different and countered that petitioner's patents are void
because the utility models applied for were not new and
patentable and the person to whom the patents were issued
was not the true and actual author nor were her rights
derived from such author.
Petitioner filed a complaint for damages with
injunction and preliminary injunction against private
respondent with the then Court of First Instance of Rizal
The trial court issued an Order granting the
preliminary
injunction
prayed
for
by
petitioner.
Consequently, the corresponding writ was subsequently
issued.
In challenging these Orders private respondent
filed a petition for certiorari with the respondent court but
was denied. Hence this petition.
ISSUE:
(1) Whether or not in an action for infringement the Court a
quo had jurisdiction to determine the invalidity of the
patents at issue which invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse
of discretion in the issuance of a writ of preliminary
injunction.
(3) Whether or not certiorari is the proper remedy.
HELD:
1) The first issue has been laid to rest in a number of cases
where the Court ruled that "When a patent is sought to be

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PATENTS: DIGESTS
enforced, the questions of invention, novelty or prior use,
and each of them, are open to judicial examination."
Under the present Patent Law, there is even less
reason to doubt that the trial court has jurisdiction to
declare the patents in question invalid. A patentee shall
have the exclusive right to make, use and sell the patented
article or product and the making, using, or selling by any
person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee
whose rights have been infringed upon may bring an action
before the proper CFI now (RTC) and to secure an injunction
for the protection of his rights.
2) The burden of proof to substantiate a charge of
infringement is with the plaintiff. But where the plaintiff
introduces the patent in evidence, and the same is in due
form, there is created a prima facie presumption of its
correctness and validity. The decision of the Commissioner
(now Director) of Patent in granting the patent is presumed
to be correct. The burden of going forward with the evidence
(burden of evidence) then shifts to the defendant to
overcome by competent evidence this legal presumption.
The question then in the instant case is whether or
not the evidence introduced by private respondent herein is
sufficient to overcome said presumption.
After a careful review of the evidence consisting of
64 exhibits and oral testimonies of five witnesses presented
by private respondents before the Court of First Instance
before the Order of preliminary injunction was issued as well
as those presented by the petitioner, respondent Court of
Appeals was satisfied that there is a prima facie showing of
a fair question of invalidity of petitioner's patents on the
ground of lack of novelty. As pointed out by said appellate
court said evidence appeared not to have been considered
at all by the court a quo for alleged lack of jurisdiction, on
the mistaken notion that such question in within the
exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must
possess the essential elements of novelty , originality and
precedence and for the patentee to be entitled to
protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention
by a patentee for more than two years (now for more than
one year only under Sec. 9 of the Patent Law) before the
date of his application for his patent, will be fatal to, the
validity of the patent when issued.
It will be noted that the validity of petitioner's
patents is in question for want of novelty. Private respondent
contends that powder puffs Identical in appearance with
that covered by petitioner's patents existed and were
publicly known and used as early as 1963 long before
petitioner was issued the patents in question. (List of
Exhibits, Rollo, pp. 194-199). As correctly observed by
respondent Court of Appeals, "since sufficient proofs have
been introduced in evidence showing a fair question of the
invalidity of the patents issued for such models, it is but
right that the evidence be looked into, evaluated and
determined on the merits so that the matter of whether the
patents issued were in fact valid or not may be resolved."
(Rollo, pp. 286-287).
All these notwithstanding, the trial court
nonetheless issued the writ of preliminary injunction which
under the circumstances should be denied.
For failure to determine first the validity of the
patents before aforesaid issuance of the writ, the trial court
failed to satisfy the two requisites necessary if an injunction
is to issue, namely: the existence of the right to be
protected and the violation of said right. (Buayan Cattle Co.,
Inc. v. Quintillan, 128 SCRA 276).

Under the above established principles, it appears

obvious that the trial court committed a grave abuse of
discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the
injunctive order of the trial court is of so general a tenor that
petitioner may be totally barred from the sale of any kind of
powder puff. Under the circumstances, respondent appellate
court is of the view that ordinary appeal is obviously
inadequate.
VARGAS v YAPTICO & CO
40 PHIL 195
FACTS:
Angel Vargas, a farmer acquainted with local
conditions and alive to the commercial possibilities, took it
upon himself to produce, with the native plow as the model,
an improved, adjustable plow. He made application for a
United States patent to cover his so-called invention. The
letters patent were issued by the United States Patent Office
in favor of Vargas .Acertified copy of the patent was filed in
the Division of Patents, Copyrights, and Trademarks of the
Executive Bureau, Government of the Philippine Islands. The
patent and its registry was also published in the newspaper,
El Tiempo.
Since 1910, Vargas has engaged in the
manufacture of these plows in the city of Iloilo, Philippine
Islands. On the plows there was first stamped the words
"Patent Applied For," later after the patent had been
granted, changed to "Patented Mar. 12, 1912." Ninety per
cent of the plows in use in the Visayas (Iloilo and vicinity)
are said to be Vargas plows.
During this same period, the firm of F. M. Yaptico &
Co. (Ltd.), was engaged in the foundry business in the City
of Iloilo. It openly held itself out as a manufacturer of plow
parts. It has in fact produced points, shares, shoes, and heel
pieces in a considerable amount adapted to replace wornout parts of the Vargas plow.
Such was the existing situation when, in the early
part of 1918, the owner of the patent, and thus the proper
party to institute judicial proceedings, began action in the
Court of First Instance of Iloilo to enjoin the alleged
infringement of U.S. Patent No. 1020232 by the defendant F.
M Yaptico & Co. (Ltd.), and to recover the damages suffered
by reason of this infringement. The court issued the
preliminary injunction as prayed for. The defendant, in
addition to a general denial, alleged, as special defenses,
that the patent lacked novelty or invention, that there was
no priority of ideas or device in the principle and
construction of the plow, and that the plow, whose
manufacture it was sought to have enjoined by the plaintiff,
had already been in public use for more than two years
before the application of the plaintiff for his patent. The
parties subsequently entered into a stipulation that the
court should first resolve the question of whether or not
there had been an infraction of the patent, reserving the
resultant question of damages for later decision. After the
taking of evidence, including the presentation of exhibits,
the trial judge, the Honorable Antonio Villareal, in a very
exhaustive and learned decision, rendered judgment in
favor of the defendant and against the plaintiff, declaring
null and without effect the patent in question and dismissing
the suit with costs against the plaintiff. The preliminary
injunction theretofore issued was dissolved.
From this judgment the plaintiff has appealed.
ISSUE:
(1) The judgment of the trial court in finding the patent
granted plaintiff void for lack of novelty and invention
should be affirmed;

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PATENTS: DIGESTS
(2) The patent granted plaintiff is void from the public use of
his plow for over two years prior to his application for a
patent, and
(3) If the patent is valid, there has been no contributory
infringement by defendant.
HELD:
(1) When a patent is sought to be enforced, "the question of
invention, novelty, or prior use, and each of them, are open
to judicial examination." 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 then shifts to the defendant to
overcome by competent evidence this legal presumption
.With all due respect, therefore, for the critical and expert
examination of the invention by the United States Patent
Office, the question of the validity of the patent is one for
judicial determination, and since a patent has been
submitted, the exact question is whether the defendant has
assumed the burden of proof as to anyone of his defenses
As herein before stated, the defendant relies on
three special defenses. One such defense, on which the
judgment of the lower court is principally grounded, and to
which appellant devotes the major portion of his vigorous
argument, concerns the element of novelty, invention, or
discovery, that gives existence to the right to a patent. On
this point the trial court reached the conclusion that "the
patented plow of the plaintiff, Exhibit D, is not different from
the native plow, Exhibit 2, except in the material, in the
form, in the weight and the grade of the result, the said
differences giving it neither a new function nor a new result
distinct from the function and the result obtained from the
native plow; consequently, its production does not
presuppose the exercise of the inventive faculty but merely
of mechanical skill, which does not give a right to a patent
of an invention under the provisions of the Patent Law." In
thus finding, the court may have been right, since the
Vargas plow does not appear to be such a "combination" as
contains a novel assemblage of parts exhibiting invention.
A second line of defense relates to the fact that
defendant has never made a complete Vargas plow, but only
points, shares, shoes, and heel pieces, to serve as repairs.
Defendant's contention is, that in common with other
foundries, he has for years cast large numbers of plow
points and shares suitable for use either on the native
wooden plow, or on the Vargas plow. A difference has long
been recognized between repairing and reconstructing a
machine. If, for instance, partial injuries, whether they occur
from accident or from wear and tear, to a machine for
agricultural purposes, are made this is only re-fitting the
machine for use, and thus permissible. Even under the more
rigorous doctrine of Leeds & Catlin Co. vs. Victor Talking
Machine Co. ([1909], 213 U.S., 325), it may be possible that
all the defendant has done is to manufacture and sell
isolated parts to be used to replace worn-out parts.
The third defense is, that under the provisions of
the statute, an inventor's creation must not have been in
public use or on sale in the United States (and the Philippine
Islands) for more than two years prior to his application
.Without, therefore, committing ourselves as to the first two
defenses, we propose to base our decision on the one just
suggested as more easily disposing of the case. (See 20 R.
C. L., 1140-1142.) We do so with full consciousness of the
doubt which arose in the mind of the trial court, but with the
belief that since it has been shown that the invention was
used in public at Iloilo by others than Vargas, the inventor,

more than two years before the application for the patent,
the patent is invalid.
Although we have spent some time in arriving at
this point, yet having reached it, the question in the case is
single and can be brought to a narrow compass. Under the
English Statute of Monopolies (21 Jac. Ch., 3), and under the
United States Patent Act of February 21, 1793, later
amended to be as herein quoted, it was always the rule, as
stated by Lord Coke, Justice Story and other authorities, that
to entitle a man to a patent, the invention must be new to
the world. As said by the United States Supreme Court, "it
has been repeatedly held by this court that a single instance
of public use of the invention by a patentee for more than
two years before the date of his application for his patent
will be fatal to the validity of the patent when issued."
On the facts, we think the testimony shows such a
public use of the Vargas plow as to render the patent invalid
Nicolas Roces, a farmer, testified that he had bought twenty
Vargas plows, of which Exhibit 5 was one, in December,
1907; and Exhibit 5, the court found, was a plow completely
identical with that for which the plaintiff had received a
patent. The minor exception, and this in itself corroborative
of Roces' testimony, is that the handle of plow Exhibit 5 is
marked with the letters "A V" and not with the words "Patent
Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga,
a clerk in a business house, testified that he had received
plows similar to Exhibits D, 5, and 4, for sale on commission
on May, 1908, from Bonifacio Araneta, partner of Vargas in
the plow business. Ko Pao Ko, a blacksmith, testified that he
had made fifty plow frames in 1905 for Vargas and Araneta,
of which Exhibit 4 is one; Exhibit 4, the court found, is a
plow identical with that patented by Vargas, but without
share and mould-board. Alfred Berwin, an employee in the
office of Attorney John Bordman, testified that on September
21, 1908, he had knowledge of a transaction wherein Vargas
and Araneta desired to obtain money to invest in a plow
factory. George Ramon Saul, a mechanic of the "Taller
Visayas" of Strachan and MacMurray, testified that he had
made Vargas plow points and shares of the present form
upon order of Araneta and Vargas in 1906 and 1907 .William
MacMurray, proprietor of the "Taller Visayas," corroborated
the evidence of the witness Saul by the exhibition of the
account against Vargas and Araneta wherein, under date of
December 13, 1906, appears the item "12 new soft steel
plow shares forged and bored for rivets as per sample."
Against all this, was the testimony of the plaintiff Angel
Vargas who denied that Saul could have been seen the
Vargas plow in 1907 and 1907, who denied that Roces
purchased the Vargas plow in 1907, who denied that
Lizarraga could have acted as an agent to sell two plows in
November, 1908, who denied any remembrance of the loan
mentioned by Berwin as having been negotiated in
September, 1908, who denied that Ko Pao Ko made fifty
plows one of which is Exhibit 4, for Araneta and Vargas in
1905. Plaintiff introduced his books to substantiate his oral
testimony .It is hardly believable that five or six witnesses
for the defense would deliberately perjure themselves under
oath. One might, but that all together, of different
nationalities, would enter into such a conspiracy, is to
suppose the improbable.
Tested by the principles which go to make the law,
we think a preponderance of the evidence is to the effect
that for more than two years before the application for the
original letters patent, or before July 22, 1908, there was, by
the consent and allowance of Vargas, a public use of the
invention covered by them.
To conclude, we are not certain but that appellee
has proved every one of his defenses. We are certain that he
has at least demonstrated the public use of the Vargas plow

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PATENTS: DIGESTS
over two years prior to the application for a patent. Such
being the case, although on a different ground, we must
sustain the judgment of the lower court, without prejudice to
the determination of the damages resulting from the
granting of the injunction, with the costs of this instance
against the appellant. So ordered.
FRANK v KOSUYAMA
59 PHIL 206
FACTS:
Patent on improvement in hemp stripping
machines, issued by the United States Patent Office and
registered in the Bureau of Commerce and Industry of the
Philippine, was the origin of this action brought by the
plaintiffs herein who prayed that the judgment be rendered
against the defendant, ordering him thereby to refrain
immediately from the manufacture and sale of machines
similar to the one covered by the patent: to render an
accounting of the profits realized from the manufacture and
sale of the machines in question; that in case of refusal or
failure to render such accounting, the defendants be
ordered to pay the plaintiffs the sum of P60 as profit on each
machine manufactured or sold by him; that upon approval of
the required bond, said defendant be restrained from
continuing the manufacture and sale of the same kind of
machines; that after the trial the preliminary injunction
issued therein be declared permanent and, lastly, that the
said defendant be sentenced to pay the costs and whatever
damages the plaintiffs might be able to prove therein. The
action therefore was based upon alleged infringement by
the defendant of the rights and privileges acquired by the
plaintiffs over the aforesaid patent through the manufacture
and sale by the former of machines similar to that covered
by the aforesaid patent.
The plaintiffs appealed from the judgment rendered
by the trial court dismissing their complaint, with cost, as
well as the defendant's counterclaim of P10,000. The
defendant did not appeal.
In their amended complaint, the plaintiff alleged
that their hemp stripping machines, for which they obtained
a patent, have the following characteristics: "A stripping
head, a horizontal table, a stripping knife supported upon
such table, a tappering spindle, a rest holder adjustably
secured on the table portion, a lever and means of
compelling the knife to close upon the table, a pallet or rest
in the bottom of the table, a resilient cushion under such
palletor rest." In spite of the fact that they filed an amended
complaint from which the "spindle" or conical drum, which
was the only characteristic feature of the machine
mentioned in the original complaint, was eliminated, the
plaintiffs insisted that the said part constitutes the essential
difference between the machine in question and other
machines and that it was the principal consideration upon
which their patent was issued. The said plaintiffs sustained
their contention on this point even in their printed brief and
memorandum filed in this appeal.
During the trial, both parties presented voluminous
evidence from which the trial court concluded that in
constructing their machine the plaintiffs did nothing but
improve, to a certain degree, those that were already in
vogue and in actual us in hemp producing provinces. It
cannot be said that they have invented the "spindle"
inasmuch as this was already known since the year 1909 or
1910. Neither it can be said that they have invented the
stripping knife and the contrivance which controls the
movement and pressure thereof on the ground that
stripping knives together with their control sets were
already in actual use in the different stripping machines long
before their machine appeared.

ISSUE:

Whether there is an infringement on the patents

HELD:
The trial court did not decree the annulment of the
plaintiffs' patent and the herein defendant-appellee insists
that the patent in question should be declared null and void.
We are of the opinion that it would be improper and
untimely to render a similar judgment, in view of the nature
of the action brought by the plaintiffs and in the absence of
a cross-complaint to that effect. For the purposes of this
appeal, suffice it to hold that the defendant is not civilly
liable for alleged infringement of the patent in question.
In the light of sound logic, the plaintiffs cannot
insist that the "spindle" was a patented invention on the
ground that said part of the machine was voluntarily omitted
by them from their application, as evidenced by the
photographic copy thereof (Exhibit 41) wherein it likewise
appears that the patent on Improved Hemp Stripping
Machines was issued minus the "spindle" in question. Were
we to stress to this part of the machine, we would be giving
the patent obtained by the plaintiffs a wider range than it
actually has, which is contrary to the principles of
interpretation in matters relating to patents.
In support of their claim the plaintiffs invoke the
doctrine laid down by this court in the case of Frank and
Gohn vs. Benito (51 Phil., 712), wherein it was held that the
therein defendant really infringed upon the patent of the
therein plaintiffs. It may be noted that the plaintiffs in the
former and those of the latter case are the same and that
the patent then involved is the very same one upon which
the present action of the plaintiffs is based. The above-cited
case, however, cannot be invoked as a precedent to justify a
judgment in favor of the plaintiffs-appellants on the ground
that the facts in one case entirely different from those in the
other. In the former case the defendant did not set up the
same special defenses as those alleged by the herein
defendant in his answer and the plaintiffs therein confined
themselves to presenting the patent, or rather a copy
thereof, wherein the "spindle" was mentioned, and this court
took for granted their claim that it was one of the essential
characteristics thereof which was imitated or copied by the
then defendant. Thus it came to pass that the "spindle" in
question was insistently mentioned in the decision rendered
on appeal as the essential part of the plaintiffs' machine
allegedly imitated by the then defendant. In the case under
consideration, it is obvious that the "spindle" is not an
integral part of the machine patented by the plaintiffs on the
ground that it was eliminated from their patent inasmuch as
it was expressly excluded in their application, as evidenced
by the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot
be held civilly liable for alleged infringement of the patent
upon which the present action is based on the ground that
there is no essential part of the machine manufactured and
sold by him, which was unknown to the public in the
Province of Davao at the time the plaintiffs applied for and
obtained their patent for improved hemp stripping
machines, the judgment appealed from is hereby affirmed,
with the costs against the plaintiffs-appellants. So ordered.
VARGAS v CHUA
57 PHIL 784
FACTS:
Angel Vargas, the plaintiff herein, brought this
action to restrain the appellants and the other defendant
entity, Cham Samco & Sons, their agents and mandatories,
from continuing the manufacture and sale of plows similar to
his plow described in his patent No. 1,507,530 issued by the
United States Patent Office on September 2, 1924; and to

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PATENTS: DIGESTS
compel all of said defendants, after rendering an accounting
of the profits obtained by them from the sale of said plows
from September 2, 1924, to pay him damages equivalent to
double the amount of such profits.
The trial court rendered a judgement in favor of
plaintiffs and against the defendant.
It appears from the bill of exceptions that Cham
Samco & Sons did not appeal.
ISSUE:
Whether the plow, Exhibit F, constitutes a real
invention or an improvement for which a patent may be
obtained, or if, on the contrary, it is substantially the same
plow represented by Exhibit 3-Chua the patent for which
was declared null and void in the aforementioned case of
Vargas vs. F. M. Yaptico & Co., supra.
HELD:
The appellee is not entitled to the protection he
seeks for the simple reason that his plow, Exhibit F, does not
constitute an invention in the legal sense, and because,
according to the evidence, the same type of plows had been
manufactured in this country and had been in use in many
parts of the Philippine Archipelago, especially in the
Province of Iloilo, long before he obtained his last patent.
In the above mentioned case of Vargas vs. F. M.
Yaptico & Co., we said:
When a patent is sought to be enforced, "the
questions of invention, novelty, or prior use, and each of
them, are open to judicial examination." 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 the 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 then shifts to
the defendant to overcome by competent evidence this
legal presumption. With all due respects, therefore, for the
critical and expert examination of the invention by the
United States Patent Office, the question of the validity of
the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether
the defendant has assumed the burden of proof as to
anyone of his defenses.
We repeat that in view of the evidence presented,
and particularly of the examination we have made of the
plows, we cannot escape the conclusion that the plow upon
which the appellee's contention is based, does not
constitute an invention and, consequently, the privilege
invoked by him is untenable and the patent acquired by him
should be declared ineffective.
The judgment appealed from is hereby reversed
and the appellants are absolved from the complaint, with
costs of this instance against the appellee. So ordered.

FACTS:

AGUAS v DE LEON
111 SCRA 238

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.
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
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.
The court granted the injunction. And likewise held
in favor of the plaintiff and against the defendant.
ISSUE:

Whether the process, subject of said patent, is not

an invention or discovery, or an improvement of the old
system of making tiles.
HELD:
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
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.
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.
In view of the foregoing, this Court finds that Patent
No. 658 was legally issued, the process and/or improvement
being patentable.

FACTS:

PARKE DAVIS & CO v DOCTORS PHARMA

124 SCRA 115

Parke Davis & Company, petitioner herein, is a

foreign corporation is the owner of a patent entitled
"Process for the Manufacturing of Antibiotics" (Letters Patent
No. 50) The patent relates to a chemical compound
represented by a formula commonly called chloramphenicol.
The patent contains ten claims, nine of which are process
claims, and the other is a product claim to the chemical
substance chloramphenicol.
Respondent Doctors' Pharmaceuticals, Inc., on the
other hand, is a domestic corporation which applied for a

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PATENTS: DIGESTS
petition with the Director of Patents, which was later
amended, praying that it be granted a compulsory license
under Letters Patent No. 50 granted to Parke Davis &
Company based on the following grounds: (1) the patented
invention relates to medicine and is necessary for public
health and safety; (2) Parke Davis & Company is unwilling to
grant petitioner a voluntary license under said patent by
reason of which the production and manufacture of needed
medicine containing chloramphenicol has been unduly
restrained to a certain extent that it is becoming a
monopoly; (3) the demand for medicine containing
chloramphenicol is not being met to an adequate extent and
on reasonable prices; and (4) the patented invention is not
being worked in the Philippines on a commercial scale. In its
petition, Doctors' Pharmaceuticals, Inc. prayed that it be
authorized to manufacture, use, and sell its own products
containing chloramphenicol as well as choose its own brand
or trademark.
Parke Davis & Company filed a written opposition
setting up the following affirmative defenses: (1) a
compulsory license may only be issued to one who will work
the patent and respondent does not intend to work it itself
but merely to import the patented product; (2) respondent
has not requested any license to work the patented
invention in the Philippines; (3) respondent is not competent
to work the patented invention; (4) to grant respondent the
requested license would be against public interest and
would only serve its monetary interest; and (6) the patented
invention is not necessary for public health and safety.
the Director of Patents rendered a decision granting
to respondent the license prayed for .Hence this petition.
ISSUE:

Whether or not the Director of Patents erred jn

ordering the grant of compulsory license
HELD:

Each of the circumstances mentioned in the law as

grounds stands alone and is independent of the others. And
from them we can see that in order that any person may be
granted a license under a particular patented invention
relating to medicine under Section 34(d), it is sufficient that
the application be made after the expiration of three years
from the date of the grant of the patent and that the
Director should find that a case for granting such license has
been made out. Since in the instant case it is admitted by
petitioner that the chemical substance chloramphenicol is a
medicine, while Letters Patent No. 50 covering said
substance were granted to Parke Davis & Company on
February 9, 1950, and the instant application for license
under said patent was only filed in 1960, verily the period
that had elapsed then is more than three years, and so the
conditions for the grant of the license had been fulfilled. We
find, therefore, no error in the decision of the Director of
Patents on this aspect of the controversy.

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