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FIRST DIVISION [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
FACTS:
The petitioner filed an action for the cancellation of Letters of Patent covering a gas burner registered
in the name of responded Melecia Madolaria who subsequently assigned the letter of patent to United
Foundry. Petitioner alleged that the private respondent 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 letter of patent; further alleged that the utility model covered by the subject letter of patent had
been known or used by others in the Philippines for than one (1) year before she filed her application
for letter of patent on Dec1979. For failure to present substantive proof of her allegations, the lower
court and Court of Appeals denied the action for cancellation. Hence, the present petition.
ISSUE: WON the respondent court wrongfully denied the cancellation of letter of patent registered
under the private respondent.
HELD: No. 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. Clearly enough, the petitioner failed to
present clear and satisfactory proof to overcome every reasonable doubt to afford the cancellation of
the patent to the private respondent.
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. UM-4609 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 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.
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.
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
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.

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.

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

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.

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 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 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.
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 after-thoughts and
pretensions.
We cannot sustain petitioner. Section 7 of RA No.

165, as amended, which is the law on patents, expressly


provides 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.
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]
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]
As found by the Director of Patents, the standard of
evidence sufficient to overcome the presumption of legality
of the issuance of UM-4609 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 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)
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.


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 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 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.
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.
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 crossexamination 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.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.
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.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

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


AGUAS v. DE LEON 1982
FACTS:
Conrado G. de Leon filed a complaint for
infringement of patent against Domiciano
A. Aguas and F. H. Aquino and Sons alleging

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. 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]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.
WHEREFORE, the Petition is DENIED. The Decision of the
Court of Appeals affirming that of the Philippine Patent Office
is AFFIRMED. Costs against petitioner

that being the original first and sole inventor of


certain new and useful improvements in the
process of making mosaic pre-cast tiles. He
claims that Aguas infringed his patent by
making, using and selling tiles embodying
said patent invention and that Aquino &

Sons is guilty of infringement by making


and furnishing to the defendant Aguas the
engravings, castings and devices designed
and intended of tiles embodying De Leon 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;
Aguas on the other hand contended that
plaintiffs patent for the process of making
mosaic pre-cast tiles is invalid because
said alleged process is not an invention or
discovery as the same has already been
used
by
tile
manufacturers
both
abroadand in this country. Trial court favored
De Leon, an appeal was brought to CA which
affirmed the same. Hence this petition was filed
by Aguas.
ISSUE: WON a process pertaining to an
improvement of the old process of tile making is
patentable; and if such, was there an
infringement?
HELD: De Leon never claimed to have
invented the process of tile-making.
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. The records
said patent invention

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. De Leons 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.
Durability in spite 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. What is in issue here is
the process involved in tile making and not the
design, the processand/or improvement is
indeed patentable. As shown by the facts,
both the trial court and the Court of
Appeals found as a fact that the petitioner
Domiciano A. Aguas did infringe de Leon'
spatent by making, using and selling tiles
embodying

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,
plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino and Sons,
defendants-appellants," 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, 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
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
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
The trial court rendered a decision dated December 29, 1965, the
dispositive portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and
against the defendants:
1.

Declaring plaintiff's patent valid and infringed:

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;
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;
4.
Ordering the defendants to jointly and severally pay to the
plaintiff the following sums of money, to wit:
(a)
(b)
(c)
(d)
(e)

P10,020.99 by way of actual damages;


P50,000.00 by way of moral damages;
P5,000.00 by way of exemplary damages;
P5,000.00 by way of attorney's fees and
costs of suit. 5

The defendant Domiciano Aguas appealed to the Court of Appeals,


assigning the following errors. 6
I 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 AS THE SAME HAS ALREADY LONG BEEN USED BY
TILE MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.

II THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF


PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGEOLD TILE MAKING SYSTEM.
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.
IV 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.
V 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.
VI 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. The petitioner
assigns the following errors supposedly committed by the Court of
Appeals:
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.

mould turns out tiles 4 x 4 inches in size, defendant Aguas' mould


is made to fit a 4-1/4 x 4-1/4 inch tile. 9

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 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 precast 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

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.
The Court of Appeals found that the private respondent has
introduced an improvement in the process of tile-making because:
... 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 "D-1") 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.
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.
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 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.
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 tilemaking described in appellee's patent was used by, or known to,
others previous to his discovery thereof. 13

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 stock-piled, handled and packed
without any intolerable incidence of breakages. 14
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.
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.
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
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
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. 20 The 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.
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.
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: 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

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 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
In reducing the amount of moral damages the Court of Appeals
said:
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
pre-cast 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).

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.
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.

SEC 5 RA9502
SEC. 5. Section 22 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, is hereby amended to read as follows:
"SEC. 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:
"22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines,
the mere discovery of a new form or new property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere discovery of any new property or new
use for a known substance, or the mere use of a known process unless such known process results in a
new product that employs at least one new reactant.
"For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall
be considered to be the same substance, unless they differ significantly in properties with regard to
efficacy;
RA 9168
Section 4. The Certificate of Plant Variety Protection shall be granted for varieties that are:
a) New;
b) Distinct;
c) Uniform; and
d) Stable.
Section 5. Newness. - A variety shall be deemed new if the propagating or harvested material of the
variety has not been sold, offered for sale or otherwise disposed of to others, by or with the consent of the
breeder, for purposes of exploitation of the variety;
a) In the Philippines for more than one (1) year before the date of filing of an application for plant variety
protection; or
b) In other countries or territories in which the application has been filed, for more than four (4) years or, in
the case of vines or tress, more than six (6) years before the date of filing of an application for Plant
Variety Protection.
However, the requirement of novelty provided for in this Act shall not apply to varieties sold, offered for
sale or disposed of to others for a period of five (5) years before the approval of this Act. Provided, That
application for PVP shall be filed within one (1) year from the approval of this act.
Section 6. Distinctness. - A variety shall be deemed distinct if it is clearly distinguishable from any
commonly known variety. The filing of an application for the granting of a plant variety protection or for the
entering of a new variety in an official register of variety in the Philippines or in any country, shall render
the said variety a matter of public knowledge from the date of the said application: Provided, That the
application leads to the granting of a Certificate of Plant Variety Protection or the entering of the said other
variety in the official register of variety as the case may be.
Section 7. Uniformity. - The variety shall be deemed uniform if, subject to the variation that may be
expected from the particular features of its propagation, it is sufficiently uniform in its relevant
characteristics.
Section 8. Stability. - The variety shall be deemed stable if its relevant characteristics remain unchanged
after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such
cycle.

VARGAS v CHUA57 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 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,
G.R. No. L-36650
January 27,
1933
ANGEL VARGAS, plaintiff-appellee,
vs.
PETRONILA CHUA, ET AL., defendantsappellants.
Jose F. Orozco for appellants.
Jose Yulo for appellee.
IMPERIAL, J.:
The defendants Petronila Chua, Coo Pao and
Coo Teng Hee, appeal from the judgment of
the Court of First Instance of Manila, the
dispositive part of which reads as follows:
Wherefore judgment is rendered in favor of
the plaintiff and against the defendants,
ordering each and every one of them, their
agents, mandatories and attorneys, to

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
henceforth
abstain
from
making,
manufacturing, selling or offering for a
sale plows of the type of those
manufactured
by
the
plaintiff,
and
particularly plows of the model of Exhibits B,
B-1 and B-2, and to render to the plaintiff
a detailed accounting of the profits
obtained by them from the manufacture
and sale of said type of plows within
thirty (30) days from the date of the
receipt by them of notice of this decision,
with costs against all of the defendants.
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 compel all of
said defendants, after rendering an
accounting of the profits obtained by
them from the sale of said plows from
September 2, 1924, to pay him damages
equivalent to double the amount of
such profits.
It appears from the bill of exceptions that
Cham Samco & Sons did not appeal.
In addition to the evidence presented, the
parties submitted the following stipulation of
facts:
The parties agree on the following facts:
1. That the plaintiff, Angel Vargas, is of age
and a resident of the municipality of Iloilo,
Iloilo, Philippine Islands.
2. That the defendant, Petronila Chua, is also
of age, and is married to Coo Pao alias Coo
Paoco, and resides in Iloilo.
3. That the defendant, Coo Teng Hee, is also
of age and a resident of Iloilo, and is the sole
owner of the business known as Coo Kun &
Sons Hardware Co. established in Iloilo.
4. That the defendant, Cham Samco & Sons,
is a commercial partnership duly organized
under the laws of the Philippine Islands, with
their principal office in the City of Manila, and
that the defendants Cham Samco, Cham
Siong E, Cham Ai Chia and Lee Cham Say, all
of age and residents of the City of Manila, are
the partners of the firm Cham Samco & Sons.
5. The parties take for granted that the
complaint in this case is amended in the
sense that it includes Coo Paoco as party
defendant in his capacity as husband of the
defendant, Petronila Chua, with Attorney Jose
F. Orozco also representing him, and that he
renounces his rights to receive summons in
this case by reproducing the answer of his
codefendant, Petronila Chua.
6. That the plaintiff is the registered
owner and possessor of United States
Patent No. 1,507,530 on certain plow
improvements, issued by the United States
Patent Office on September 2, 1924, a

certified copy of which was registered in the


Bureau of Commerce and industry of the
Government of the Philippine Islands on
October 17, 1924. A certified copy of said
patent is attached to this stipulation of facts
as Exhibit A.
7. That the plaintiff is now and has been
engaged, since the issuance of his patent, in
the manufacture and sale of plows of the
kind, type and design covered by the
aforementioned patent, said plows being of
different sizes and numbered in accordance
therewith from 1 to 5.
8. That, since the filing of the complaint to
date, the defendant, Petronila Chua, has
been manufacturing and selling plows
of the kind, type and design represented by
Exhibits B, B-1 and B-2, of different sizes,
designated by Nos. 2, 4 and 5.
9. That, since the filing of the complaint to
date, the defendant, Coo Teng Hee, doing
business in Iloilo under the name of Coo Kun
& Sons Hardware Co., has been obtaining his
plows, of the form and size of Exhibits B, B-1
and B-2, from the defendant Petronila Chua.
10. Without prejudice to the plaintiff's right
to ask the defendants to render an
accounting in case the court deem it proper,
the parties agree that the defendant Coo
Teng Hee, doing business under the name of
Coo Kun & Sons Hardware Co., has been
selling to his customers in his store on J. Ma.
Basa Street in Iloilo, plows of the kind, type
and design represented by Exhibits B, B-1
and B-2, having bought said plows from his
codefendant,
Petronila
Chua,
who
manufactures them in her factory on Iznart
Street, Iloilo.
11. That, according to the invoices marked
Exhibits C and C-2 dated March 13, 1928,
and June 19, 1928, respectively, the
defendant Cham Samco & Sons, on the dates
mentioned, had, in the ordinary course of
business, bought of its codefendant Coo Kun
& Sons Hardware Co., 90 plows of the form,
type and design of Exhibits B, B-1 and B-2
which it has been selling in its store on Sto.
Cristo Street, Manila.
12. That the same defendant Cham Samco &
Sons, in the ordinary course of business,

bought on March 17, 1928, of the store "El


Progreso" owned by Yao Ki & Co., of Iloilo, a
lot of 50 plows, of the form, type and design
of Exhibit B-1, as shown by Invoice C-1, and
that it has been selling them in its store on
Sto. Cristo St., Manila.
13. That, on September 19, 1928, the
defendant Cham Samco & Sons, sold in its
store on Sto. Cristo St., Manila, the plow
Exhibit B-1, for the sale of which invoice
Exhibit D was issued.
14. That, on December 20, 1927, the plaintiff
herein, through his attorneys Paredes,
Buencamino & Yulo, sent by registered mail
to the herein defendant, Coo Kun & Sons
Hardware Co., at Iloilo, the original of the
letter Exhibit E, which was received by it on
September 28, 1927, according to the receipt
marked Exhibit E-1 attached hereto.
15. That the plows manufactured by the
plaintiff in accordance with his patent,
Exhibit A, are commonly known to the trade
in Iloilo, as well as in other parts of the
Philippines, as "Arados Vargas", and that the
plaintiff is the sole manufacturer of said
plows. A sample of these plows is presented
as Exhibit F.
16. That the document, Exhibit 1-Chua, is a
certified copy of the amended complaint, the
decision of the Court of First Instance of Iloilo
and that of the Supreme Court (R. G. No.
14101) in civil case No. 3044 of Iloilo,
entitled "Angel Vargas", plaintiff, vs. F. M.
Yaptico & Co., Ltd., defendant", and that
Exhibit 2-Chua et al. is a certified copy of
Patent No. 1,020,232, to which the
aforementioned complaint and decision refer,
issued in favor of Angel Vargas by the United
States Patent Office on March 12, 1912, and
that Exhibit 3-Chua et al., represents the
plow manufactured by Angel Vargas in
accordance with his Patent marked Exhibit 2Chua et al.
The appellants assign the following errors:
FIRST ERROR
The trial court erred in declaring that
the Vargas plow, Exhibit F (covered by
Patent No. 1,507,530) is distinct from
the old model Vargas plow, Exhibit 2-

Chua, covered by the former Patent No.


1,020,232, which had been declared null and
void by this court.
SECOND ERROR The trial court erred in
mistaking the improvement on the plow for
the plow itself.
THIRD ERROR The trial court erred in
rendering judgment in favor of the plaintiff
and against the defendants.
FOURTH ERROR The trial court erred in not
dismissing the complaint with costs against
the plaintiff.
The evidence shows that Exhibit F is the kind
of plows the plaintiff, Angel Vargas,
manufactures,
for
which
Patent
No.
1,507,530, Exhibit A, was issued in his favor.
Exhibits B, B-1 and B-2 are samples of the
plows which the herein appellants, Coo Pao
and
Petronila
Chua,
have
been
manufacturing since 1918, and Exhibit 3Chua represents the plow for which, on
March 12, 1912, the appellee obtained a
patent from the United States Patent Office,
which was declared null and void by the
Supreme Court in the case of Vargas vs. F. M.
Yap Tico & Co. (40 Phil., 195).
With these facts in view, the principal and
perhaps the only question we are called upon
to decide is 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.
We have carefully examined all the plows
presented as exhibits as well as the designs
of those covered by the patent, and we are
convinced that no substantial difference
exists between the plow, Exhibit F, and
the plow, Exhibit 3-Chua which was
originally patented by the appellee,
Vargas. The only difference noted by us
is the suppression of the bolt and the
three holes on the metal strap attached
to the handle bar. These holes and bolt
with its nut were suppressed in Exhibit F in
which the beam is movable as in the original
plow. The members of this court, with the
plows in view, arrived at the conclusion that

not only is there no fundamental difference


between the two plows but no improvement
whatever has been made on the latest
model, for the same working and movement
of the beam existed in the original model
with the advantage, perhaps, that its
graduation could be carried through with
more certainty by the use of the bolt which
as has already been stated, was adjustable
and movable.
As to the fact, upon which much emphasis
was laid, that deeper furrows can be made
with the new model, we have seen that the
same results can be had with the old
implement.
In view of the foregoing, we are firmly
convinced that the appellee is not
entitled to the protection he seeks for
the simple reason that his plow, Exhibit
F, does not constitute an invention in
the legal sense, and because, according to
the evidence, the same type of plows had
been manufactured in this country and had
been in use in many parts of the Philippine
Archipelago, especially in the Province of
Iloilo, long before he obtained his last patent.
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. (See Agawan
Co. vs. Jordan [1869], 7 Wall., 583; Blanchard

vs. Putnam [1869], 8 Wall., 420; Seymour vs.


Osborne [1871], 11 Wall., 516; Reckendorfer
vs. Faber [1876], 92 U. S., 347; 20 R. C. L.,
1112, 1168, 1169.)
Although we 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.
(Pennock and Sellers vs. Dialogue [1829], 2
Pet., 1.) 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 of more
than two years before the date of his
application for his patent will be fatal to the
validity of the patent when issued." (Worley
vs. Lower Tobacco Co. [1882], 104 U. S., 340;
McClurg vs. Kingsland [1843], 1 How., 202;
Consolidated Fruit Jar Co. vs. Wright [1877],
94 U. S., 92; Egbert vs. Lippmann [1881],
104 U. S., 333; Coffin vs. Ogden [1874], 18
Wall., 120; Manning vs. Cape Ann Isinglass
and Glue Co. [1883], 108 U. S., 462; Andrews
vs. Hovey [1887], 123 U. S., 267; Campbell
vs. City of New York [1888], 1 L. R. A., 48.)
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.
Avancea, C.J., Street, Villamor, Ostrand,
Villa-Real, Abad Santos, Hull, Vickers and
Butte,
JJ.,
concur.
PLOW
NOT
AN
INVENTION ACCORDING TO THE COURT
CRESCENT PRECISION SYSTEMS INC v.
COURT OF APPEALS
Facts:

Respondent was granted by the Bureau of


Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze
on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner
submitted samples of its patented aerial fuze
to the AFP for testing claiming to be his own.
To protect its right, respondent sent letter of
warning to petitioner on a possible court
action should it proceed its testing by the
AFP. In response the petitioner filed a
complaint for injunction and damages arising
from alleged infringement before the RTC
asserting that it is the true and actual
inventor of the aerial fuze which it developed
on 1981 under the Self Reliance Defense
Posture Program of the AFP.
It has been supplying the military of the
aerial fuze since then and that the fuze of
the respondent is similar as that of the
petitioner. Petitioner prayed for restraining
order and injunction from marketing,
manufacturing and profiting from the said
invention by the respondent. The trial court
ruled in favor of the petitioner citing the fact
that it was the first to develop the aerial fuze
since 1981 thsu it concludes that it is the
petitioners aerial fuze that was copied by
the respondent. Moreover, the claim of
respondent is solely based on its letter of
patent which validity is being questioned. On
appeal,
respondent
argued
that
the
petitioner has no cause of action since he
has no right to assert there being no patent
issued to his aerial fuze.
The Court of Appeals reversed the decision
of the trial court dismissing the complaint of
the petitioner. It was the contention of the
petitioner that it can file under Section 42 of
the Patent Law an action for infringement not
as a patentee but as an entity in possession

of a right, title or interest to the patented


invention. It theorizes that while the absence
of a patent prevents one from lawfully suing
another for infringement of said patent, such
absence does not bar the true and actual
inventor of the patented invention from suing
another in the same nature as a civil action
for infringement.
Issue:
Whether or not the petitioner has the right to
assail the validity of the patented work of the
respondent?
Ruling:
The court finds the argument of the
petitioner untenable. Section 42 of the Law
on Patent (RA 165) provides that only the
patentee or his successors-in-interest may
file an action against infringement. What the
law contemplates in the phrase anyone
possessing any right, title or interest in and
to the patented invention refers only to the
patentees successors-in-interest, assignees
or grantees since the action on patent
infringement may be brought only in the
name of the person granted with the patent.
There can be no infringement of a patent
until a patent has been issued since the right
one has over the invention covered by the
patent arises from the grant of the patent
alone. Therefore, a person who has not been
granted letter of patent over an invention
has not acquired right or title over the
invention and thus has no cause of action for
infringement. Petitioner admitted to have no
patent over his invention. Respondents
aerial fuze is covered by letter of patent
issued by the Bureau of Patents thus it has in
his favor not only the presumption of validity
of its patent but that of a legal and factual
first and true inventor of the invention.

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