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 respondent 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 Dec 1979. 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:Whether or not 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.

Aguas vs. De Leon111 SCRA 238 (1982)

FACTS:

This is a petition for certiorari to review the decision of the Court of Appeals.

On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of patent against petitioner Domiciano Aguas and F.H. Aquino and Sons alleging among others that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No. 658, the latter infringed the same by making, using and selling tiles embodying said patent invention. A writ of Preliminary Injuction was subsequently issued.

Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia that respondent De Leon 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 both here and abroad years before the alleged invention by De Leon; hence, it is not patentable.

The trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon. Thus, this petition.

ISSUE:

Whether or not the alleged invention or discovery of respondent is patentable.

HELD:

Yes. x x x 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 pre-cast tiles. 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.ROSARIO C. MAGUAN vs. COURT OF APPEALSG.R. L-45101, November 28, 1986, SECOND DIVISION, PARAS, J.

Petitioner Rosario C. Maguan is doing business under the firm name and style of SWAN MANUFACTURING" while private respondent Susana Luchan is likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING." The 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. Maguan filed a complaint for damages with injunction and preliminary injunction against Luchan with the then Court of First Instance of Rizal. The trial court issued an Order granting the preliminary injunction prayed for. Consequently, the corresponding writ was subsequently issued. It having denied the Motion for Reconsideration, the private respondent filed a petition for certiorari before the Court of Appeals. The Preliminary injunction issued by the trial court was affirmed by the CA but it later on dismissed the petition and set aside the preliminary injunction previously issued by the trial court.

ISSUE:Whether Maguan has a right to file an action before the CFI for injunction due to infringement of her patent.

HELD: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.

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 (Sec. 42, R.A. 165).

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. 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 is 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. SEC. 9. Invention not considered new or patentable. An invention shall not be considered new or capable of being patented if it was known or used by others in the Philippines before the invention thereof by the inventor named in an application for patent for the invention; or if it was patented or described in any printed publication in the Philippines or any foreign country more than one year before the application for a patent therefor; or if it had been in public use or on sale in the Philippines for more than one year before the application for a patent therefor; or if it is the subject matter of a validity issued patent in the Philippines granted on an application filed before the filing of the application for patent therefor.

Thus, more specifically, under American Law from which our Patent Law was derived it is generally held that in patent cases a preliminary injunction will not issue for patent infringement unless the validity of the patent is clear and beyond question. The issuance of letters patent, standing alone, is not sufficient to support such drastic relief. In cases of infringement of patent no preliminary injunction will be granted unless the patent is valid and infringed beyond question and the record conclusively proves the defense is sham.

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.

GODINEZ V CAThrough this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court, petitioner Pascual Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringement of patent and unfair competition. The dispositive portion of the assailed decision is hereby quoted to wit:WHEREFORE, with the elimination of the award for attorney's fees, the judgment appealed from is hereby AFFIRMED, with costs against appellant. 1The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller, the main components of which are the following: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a protective water covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an engine foundation on the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed; (8) a frontal frame extension above the quarter circularly shaped water covering hold (sic) in place the transmission case; (9) a V-belt connection to the engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on the engine foundation." 2 The patented hand tractor works in the following manner: "the engine drives the transmission gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt drives the pulley attached to the transmission gear which in turn drives the shaft where the paddy wheels are attached. The operator handles the hand tractor through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a U-shaped G.I. pipe at the V-shaped end." 3The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its chairman and president, by virtue of a Deed of Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of general circulation.In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair competition.After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The dispositive portion of the decision reads as follows:WHEREFORE, premises considered, JUDGMENT is hereby rendered in favor of the plaintiff SV-Agro Industries Enterprises, Inc., and against defendant Pascual Godines:1. Declaring the writ of preliminary injunction issued by this Court against defendant as permanent;2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50,000.00) as damages to its business reputation and goodwill, plus the further sum of Eighty Thousand Pesos (P80,000.00) for unrealized profits during the period defendant was manufacturing and selling copied or imitation floating power tiller;3. Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand Pesos (P8,000.00) as reimbursement of attorney's fees and other expenses of litigation; and to pay the costs of the suit.SO ORDERED. 4The decision was affirmed by the appellate court.Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition; and that those made by him were different from those being manufactured and sold by private respondent.We find no merit in his arguments. The question of whether petitioner was manufacturing and selling power tillers is a question of fact better addressed to the lower courts. In dismissing the first argument of petitioner herein, the Court of Appeals quoted the findings of the court, to wit:It is the contention of defendant that he did not manufacture or make imitations or copies of plaintiff's turtle power tiller as what he merely did was to fabricate his floating power tiller upon specifications and designs of those who ordered them. However, this contention appears untenable in the light of the following circumstances: 1) he admits in his Answer that he has been manufacturing power tillers or hand tractors, selling and distributing them long before plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental, meaning that defendant is principally a manufacturer of power tillers, not upon specification and design of buyers, but upon his own specification and design; 2) it would be unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of plaintiff upon specifications of buyers without requiring a job order where the specification and designs of those ordered are specified. No document was (sic) ever been presented showing such job orders, and it is rather unusual for defendant to manufacture something without the specification and designs, considering that he is an engineer by profession and proprietor of the Ozamis Engineering shop. On the other hand, it is also highly unusual for buyers to order the fabrication of a power tiller or hand tractor and allow defendant to manufacture them merely based on their verbal instructions. This is contrary to the usual business and manufacturing practice. This is not only time consuming, but costly because it involves a trial and error method, repeat jobs and material wastage. Defendant judicially admitted two (2) units of the turtle power tiller sold by him to Policarpio Berondo. 5Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of the Supreme Court in cases brought to it from the Court of Appeals in a petition for certiorari under Rule 45 of the Rules of Court is limited to the review of errors of law, and that said appellate court's findings of fact are conclusive upon this Court." 6The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been established by the courts despite petitioner's claims to the contrary.The question now arises: Did petitioner's product infringe upon the patent of private respondent?Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 7 In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it." 8 To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements. 9The trial court made the following observation:Samples of the defendant's floating power tiller have been produced and inspected by the court and compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. Defendant admitted to the Court that two (2) of the power inspected on March 12, 1984, were manufactured and sold by him (see TSN, March 12, 1984, p. 7). The three power tillers were placed alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof were the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H-28). Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or components thereof are virtually the same. Both have the circularly-shaped vacuumatic housing float, a paddy in front, a protective water covering, a transmission box housing the transmission gears, a handle which is V-shaped and inclined upwardly, attached to the side of the vacuumatic housing float and supported by the upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to which the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff. This was admitted by the defendant himself in court that they are operating on the same principles. (TSN, August 19, 1987, p. 13) 10Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued by the Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place, the operating handle, the harrow housing with its operating handle and the paddy wheel protective covering." 11 It appears from the foregoing observation of the trial court that these claims of the patent and the features of the patented utility model were copied by petitioner. We are compelled to arrive at no other conclusion but that there was infringement.Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutching at straws.Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result." 13 The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such imitation would leave room for indeed encourage the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law. 14In this case, the trial court observed:Defendant's witness Eduardo Caete, employed for 11 years as welder of the Ozamis Engineering, and therefore actually involved in the making of the floating power tillers of defendant tried to explain the difference between the floating power tillers made by the defendant. But a careful examination between the two power tillers will show that they will operate on the same fundamental principles. And, according to establish jurisprudence, in infringement of patent, similarities or differences are to be determined, not by the names of things, but in the light of what elements do, and substantial, rather than technical, identity in the test. More specifically, it is necessary and sufficient to constitute equivalency that the same function can be performed in substantially the same way or manner, or by the same or substantially the same, principle or mode of operation; but where these tests are satisfied, mere differences of form or name are immaterial. . . . 15It also stated:To establish an infringement, it is not essential to show that the defendant adopted the device or process in every particular; Proof of an adoption of the substance of the thing will be sufficient. "In one sense," said Justice Brown, "it may be said that no device can be adjudged an infringement that does not substantially correspond with the patent. But another construction, which would limit these words to exact mechanism described in the patent, would be so obviously unjust that no court could be expected to adopt it. . . .The law will protect a patentee against imitation of his patent by other forms and proportions. If two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape. 16We pronounce petitioner liable for infringement in accordance with Section 37 of Republic Act No. 165, as amended, providing, inter alia:Sec. 37. Right of Patentees. A patentee shall have the exclusive right to make, use and sell the patented machine, article or product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines for the terms of the patent; and such making, using, or selling by any person without the authorization of the Patentee constitutes infringement of the patent. (Emphasis ours)As far as the issue regarding unfair competition is concerned, suffice it to say that Republic Act No. 166, as amended, provides, inter alia:Sec. 29. Unfair competition, rights and remedies. . . .xxx xxx xxxIn particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition:(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. . . .xxx xxx xxxConsidering the foregoing, we find no reversible error in the decision of the Court of Appeals affirming with modification the decision of the trial court.WHEREFORE, premises considered, the decision of the Court of Appeals is hereby AFFIRMED and this petition DENIED for lack of merit.Cresser Precision Systems v. CAOnly the patentee may file for infringement. There can be no infringement of a patent until a patent has been issuedsince whatever right one has to the invention conferred by the patent arises alone from a grant of patent.Smith Kline v. CAArticle 5 of the Paris Convention unequivocally and explicitly respects the right of the member countries to adoptlegislative measures to provide for grant of compulsory licenses to prevent abuses which might result from the exerciseof the exclusive rights conferred by the patent.Parke Davis v. Doctors PharmaceuticalsFact of existence of 2 different substances of medicine of which the court could not take judicial notice of norcompetent to so find in the absence of evidence, and the existence of two patents require presentation of evidence toshow whether the substances are the same or not.Godinez v. CATests to determine infringement are; 1) Doctrine of Literal Infringement 2) Doctrine of Equivalents. The reason for thedoctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detailwould be to convert the protection of the patent grant into hollow and useless thing.Smith Kline Beckman v. CAThe doctrine of equivalents thus requires satisfaction of the functions-means-and-result test, the patentee having theburden to show that all three components of such equivalency test are met.Manzano v. CAThere is a presumption that the Philippine Patent Office has correctly determined the patentability of the model andsuch action must not be interfered with, in the absence of competent evidence to the contrary. Maguan v. CAAn invention must possess the essential elements of novelty, originality, and precedence and for the patentee to beentitled to protection, the invention must be new to the world. A single instance of public use of the invention by apatentee for more than two years(now more than 1 year under Sec.9 of Patent Law) before the date of application forhis patent will be fatal to the validity of the patent when issued.

GREAVES, CHEN WOO CHIN, YOSHIMI IWASAKI, FABIO CARLI, MORTIMER THOMPSON, MALCOLM JOHN LAW, MICHIBAZU OCHI, KENJISHIGEMATSU, ENI SHINOZAKI, ROBERT CABI-AKMAN,ARTHUR SPRENGER, REMY SIMOND and HEINRICH EVBERGGER, petitioners,vs. THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER,respondents.R E S O L U T I O NPARDO,J.:Petitioners appealvia certiorarifrom the decision[1]of the Court of Appeals dismissing their appeal from the resolution of the Director ofPatents that denied with finality their petition for revival of patent applications.On different dates, petitioners applied to the Bureau of Patents, Trademarks and Technology Transfer for registration of patents.They hired the law firm Siguion Reyna, Montecillo and Ongsiako to process their patent applications in the Philippines, respectively identified as follows:ApplicantSerial No.(1) Michibazu Ochi, Kenji Shigematsu and23354[2]EniShinozaki- Issuance of letters patentfor Hackling DrumRoom or Chamberat the Self-Feeding Equipment forThreshing of Upper Hackling System(2) Robert Cabi-Akman, Arthur Sprenger29630[3]and Remy Simond- Issuance of letterspatent for Colour Value Measurement(3) Heinrich Evbergger- Issuance of letters29898[4]patent for Tool for Moulding the Top Pastof a Plastic Container(4) Mortimer Thompson- Issuance of30112[5]letters patent for Tamper Evident Closuresand Packages(5) Yoshimi Iwasaki- Issuance of letters30548[6]patentfor Method Generation for Hot Gasby Incinerators(6 )John Bernard Watkins, Harry Greaves30819[7]and Chen Woo Chin- Issuance of letterspatent for Preservation Composition(7) Fabio Carli- Issuance of letters patent31968[8]for Pharmaceutical Compositions(8) Lothar Schuartz, Friedel Verderberg,31974[9]Rudolf Kuehne, and Dieter Fischer- Issuanceofletters patent for Process for ProducingCopper-Laminated Base Material for PrintedCircuit Boards(9) Malcolm John Law- Issuance of letters32050[10]patent for Electrodeposition of Chromium andChromium Bearing Alloys.[11]Petitioners patent applications lacked certain requirements and the Bureau informed the law firm about it, through correspondences called Office Actions.As petitioners law firm did not respond to these office actions within the prescribed time, notices of abandonment were sent on the following dates:Serial Nos.Date of Office ActionDate of Abandonment(1) 23354March 20, 1987July 21, 1987(2) 29630June 18, 1986October 21, 1986(3) 29898June 11, 1987June 22, 1987(4) 30112June 3, 1987August 6, 1987(5) 30548June 10, 1987August 18, 1987(6) 30819January 28, 1987July 28, 1987(7) 31968January 14, 1987July 15, 1987(8) 31974July 23, 1987September 24, 1987(9) 32050March 31, 1987June 1, 1987[12]On December 7, 1987, two employees of the law firm, George Bangkas and Rafael Rosas were dismissed from employment.Prior to the dismissal, these employees worked with the patent group of the law firm and had the duty, among others, of getting the firms letters and correspondence from the Bureau of Patents.Immediately after their dismissal, the law firm conducted an inventory of all the documents entrusted to them.It was then that the firm learned about the notices of abandonment.Thereafter, petitioners, through the law firm, filed with the Bureau of Patents separate petitions for revival of the patent applications on the following dates:Serial Nos.Date Petition Filed(1) 23354March 3, 1988(2) 29630March 3, 1988(3) 30122January 15, 1988/February 29, 1988(4) 30548January 25, 1988/March 1, 1988(5) 30819May 27, 1988/July 15, 1988(6) 31968January 21, 1988/March 1, 1988(7) 31974March 14, 1988(8) 32050March 17, 1988For Serial No. 29898, the applicant abandoned his application, for which reason no petition for revival was filed.[13]On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau ofPatentsdenied allthe petitions for revival because they were filed out of time. The dispositive portion specifically provides:WHEREFORE, in consideration of the foregoing premises, all the petitions for revival of the above-captioned abandoned applications bearingSerialNos.23354,29630, 29898, 30112, 30548, 30819, 31968, 31974, and 32050, are hereby denied and no further petitions nor requests for reconsideration hereof shall be entertained hereafter.SO ORDERED.Makati, Metro Manila, Philippines, this 31st day of January 1991.LUIS M. DUKA, JR.Director III[14]On February 14, 1991, petitioners appealed the above resolution of the Bureau of Patents to the Court of Appeals.[15]On August 13, 1992, the Court of Appeals dismissed the consolidated appeal for being filed beyond the 15-day reglementary period to appeal. There was an unreasonable delay before the petitions to revive applications were filed. Moreover, petitioners patent applications could not be a proper subject of a consolidated appeal because they covered separate and distinct subjects and had beentreatedby the Bureau of Patents as separate and individual applications.Specifically the decision provides:WHEREFORE, for reasons above stated and in the light of the applicable law on the matter, this petition for review on appeal from the order/decision of the Director of Bureau of Patents is hereby DISMISSED with costs against the appellants.SO ORDERED.[16]On September 14, 1992, petitioners moved for reconsideration of the Court of Appeals decision, which the court denied on January 7, 1994.The appellate court found no cogent reason to justify the reversal or modification of its decision.[17]Aggrieved, petitioners filed the instant petition for review oncertiorari.[18]At issue is the validity of the Court of Appeals dismissal of the consolidated appeal of petitioners from the Director of Patents denial of the revival of their patent applications.Petitioners contend that the Court of Appeals committed grave abuse of discretion when it held that the consolidated appeal was filed out of time.They were appealing from the resolution of the Director of Patents dated January 31, 1991, which denied the petitionforrevivalofthepatentapplications.They received a copy of the resolution, through their patent attorneys, on February 7, 1991, and filed the consolidated appeal seven (7) days after, or on February 14, 1991.According to petitioners, these dates clearly established that their appeal was seasonably filed.The contention is not meritorious.If the facts above-mentioned were the sole basis of determining whether the appeal was filed on time, petitioners argument would be correct.However, petitioners lost sight of the fact that the petition could not be granted because of laches.Prior to the filing of the petition for revival of the patent application with the Bureau ofPatents, an unreasonable period of time had lapsed due to the negligence of petitioners counsel.By such inaction, petitioners were deemed to have forfeited their right to revive their applications for patent.Facts show that the patent attorneys appointed to follow up the applications for patent registration had been negligent in complying with the rules of practice prescribed by the Bureau of Patents.The firm had been notified about the abandonment as early as June 1987, but it was only after December 7, 1987, when their employees Bangkas and Rosas had been dismissed, that they came to know about it.This clearly showed that petitioners counsel had been remiss in the handling of their clients applications.[19]A lawyers fidelity to the cause of his client requires him to be ever mindful of the responsibilities that should be expected of him.A lawyer shall not neglect a legal matter entrusted to him.[20]In the instant case, petitioners patent attorneys not only failed to take notice of the notices of abandonment, but they failed to revive the application within the four-month period, as provided in the rules of practice in patent cases. These applications are deemed forfeited upon the lapse of such period.[21]Hence, we can not grant the present petition.[22]The Court of Appeals did not err or gravely abuse its discretion in dismissing the petition for review.WHEREFORE,the Court DENIES the petition for lack of merit.The Court AFFIRMS the decision of the Court of Appeals in CA-G. R. SP No. 24175.No costs.SO ORDERED.Davide, Jr., C.J., (Chairman), Puno, Kapunan,andYnares-Santiago, JJ.,concur.

FIRST DIVISION[G.R. No. 113407.July 12, 2000]LOTHAR SCHUARTZ, FRIEDEL VERDERBERG, UDOLF KUEHNE, DIETER FISCHER, JOHN BERNARD WATKINS, HARRY GREAVES, CHEN WOO CHIN, YOSHIMI IWASAKI, FABIO CARLI, MORTIMER THOMPSON, MALCOLM JOHN LAW, MICHIBAZU OCHI, KENJISHIGEMATSU, ENI SHINOZAKI, ROBERT CABI-AKMAN,ARTHUR SPRENGER, REMY SIMOND and HEINRICH EVBERGGER, petitioners,vs. THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER,respondents.R E S O L U T I O NPARDO,J.:Petitioners appealvia certiorarifrom the decision[1]of the Court of Appeals dismissing their appeal from the resolution of the Director ofPatents that denied with finality their petition for revival of patent applications.On different dates, petitioners applied to the Bureau of Patents, Trademarks and Technology Transfer for registration of patents.They hired the law firm Siguion Reyna, Montecillo and Ongsiako to process their patent applications in the Philippines, respectively identified as follows:ApplicantSerial No.(1) Michibazu Ochi, Kenji Shigematsu and23354[2]EniShinozaki- Issuance of letters patentfor Hackling DrumRoom or Chamberat the Self-Feeding Equipment forThreshing of Upper Hackling System(2) Robert Cabi-Akman, Arthur Sprenger29630[3]and Remy Simond- Issuance of letterspatent for Colour Value Measurement(3) Heinrich Evbergger- Issuance of letters29898[4]patent for Tool for Moulding the Top Pastof a Plastic Container(4) Mortimer Thompson- Issuance of30112[5]letters patent for Tamper Evident Closuresand Packages(5) Yoshimi Iwasaki- Issuance of letters30548[6]patentfor Method Generation for Hot Gasby Incinerators(6 )John Bernard Watkins, Harry Greaves30819[7]and Chen Woo Chin- Issuance of letterspatent for Preservation Composition(7) Fabio Carli- Issuance of letters patent31968[8]for Pharmaceutical Compositions(8) Lothar Schuartz, Friedel Verderberg,31974[9]Rudolf Kuehne, and Dieter Fischer- Issuanceofletters patent for Process for ProducingCopper-Laminated Base Material for PrintedCircuit Boards(9) Malcolm John Law- Issuance of letters32050[10]patent for Electrodeposition of Chromium andChromium Bearing Alloys.[11]Petitioners patent applications lacked certain requirements and the Bureau informed the law firm about it, through correspondences called Office Actions.As petitioners law firm did not respond to these office actions within the prescribed time, notices of abandonment were sent on the following dates:Serial Nos.Date of Office ActionDate of Abandonment(1) 23354March 20, 1987July 21, 1987(2) 29630June 18, 1986October 21, 1986(3) 29898June 11, 1987June 22, 1987(4) 30112June 3, 1987August 6, 1987(5) 30548June 10, 1987August 18, 1987(6) 30819January 28, 1987July 28, 1987(7) 31968January 14, 1987July 15, 1987(8) 31974July 23, 1987September 24, 1987(9) 32050March 31, 1987June 1, 1987[12]On December 7, 1987, two employees of the law firm, George Bangkas and Rafael Rosas were dismissed from employment.Prior to the dismissal, these employees worked with the patent group of the law firm and had the duty, among others, of getting the firms letters and correspondence from the Bureau of Patents.Immediately after their dismissal, the law firm conducted an inventory of all the documents entrusted to them.It was then that the firm learned about the notices of abandonment.Thereafter, petitioners, through the law firm, filed with the Bureau of Patents separate petitions for revival of the patent applications on the following dates:Serial Nos.Date Petition Filed(1) 23354March 3, 1988(2) 29630March 3, 1988(3) 30122January 15, 1988/February 29, 1988(4) 30548January 25, 1988/March 1, 1988(5) 30819May 27, 1988/July 15, 1988(6) 31968January 21, 1988/March 1, 1988(7) 31974March 14, 1988(8) 32050March 17, 1988For Serial No. 29898, the applicant abandoned his application, for which reason no petition for revival was filed.[13]On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau ofPatentsdenied allthe petitions for revival because they were filed out of time. The dispositive portion specifically provides:WHEREFORE, in consideration of the foregoing premises, all the petitions for revival of the above-captioned abandoned applications bearingSerialNos.23354,29630, 29898, 30112, 30548, 30819, 31968, 31974, and 32050, are hereby denied and no further petitions nor requests for reconsideration hereof shall be entertained hereafter.SO ORDERED.Makati, Metro Manila, Philippines, this 31st day of January 1991.LUIS M. DUKA, JR.Director III[14]On February 14, 1991, petitioners appealed the above resolution of the Bureau of Patents to the Court of Appeals.[15]On August 13, 1992, the Court of Appeals dismissed the consolidated appeal for being filed beyond the 15-day reglementary period to appeal. There was an unreasonable delay before the petitions to revive applications were filed. Moreover, petitioners patent applications could not be a proper subject of a consolidated appeal because they covered separate and distinct subjects and had beentreatedby the Bureau of Patents as separate and individual applications.Specifically the decision provides:WHEREFORE, for reasons above stated and in the light of the applicable law on the matter, this petition for review on appeal from the order/decision of the Director of Bureau of Patents is hereby DISMISSED with costs against the appellants.SO ORDERED.[16]On September 14, 1992, petitioners moved for reconsideration of the Court of Appeals decision, which the court denied on January 7, 1994.The appellate court found no cogent reason to justify the reversal or modification of its decision.[17]Aggrieved, petitioners filed the instant petition for review oncertiorari.[18]At issue is the validity of the Court of Appeals dismissal of the consolidated appeal of petitioners from the Director of Patents denial of the revival of their patent applications.Petitioners contend that the Court of Appeals committed grave abuse of discretion when it held that the consolidated appeal was filed out of time.They were appealing from the resolution of the Director of Patents dated January 31, 1991, which denied the petitionforrevivalofthepatentapplications.They received a copy of the resolution, through their patent attorneys, on February 7, 1991, and filed the consolidated appeal seven (7) days after, or on February 14, 1991.According to petitioners, these dates clearly established that their appeal was seasonably filed.The contention is not meritorious.If the facts above-mentioned were the sole basis of determining whether the appeal was filed on time, petitioners argument would be correct.However, petitioners lost sight of the fact that the petition could not be granted because of laches.Prior to the filing of the petition for revival of the patent application with the Bureau ofPatents, an unreasonable period of time had lapsed due to the negligence of petitioners counsel.By such inaction, petitioners were deemed to have forfeited their right to revive their applications for patent.Facts show that the patent attorneys appointed to follow up the applications for patent registration had been negligent in complying with the rules of practice prescribed by the Bureau of Patents.The firm had been notified about the abandonment as early as June 1987, but it was only after December 7, 1987, when their employees Bangkas and Rosas had been dismissed, that they came to know about it.This clearly showed that petitioners counsel had been remiss in the handling of their clients applications.[19]A lawyers fidelity to the cause of his client requires him to be ever mindful of the responsibilities that should be expected of him.A lawyer shall not neglect a legal matter entrusted to him.[20]In the instant case, petitioners patent attorneys not only failed to take notice of the notices of abandonment, but they failed to revive the application within the four-month period, as provided in the rules of practice in patent cases. These applications are deemed forfeited upon the lapse of such period.[21]Hence, we can not grant the present petition.[22]The Court of Appeals did not err or gravely abuse its discretion in dismissing the petition for review.WHEREFORE,the Court DENIES the petition for lack of merit.The Court AFFIRMS the decision of the Court of Appeals in CA-G. R. SP No. 24175.No costs.SO ORDERED.Davide, Jr., C.J., (Chairman), Puno, Kapunan,andYnares-Santiago, JJ.,concur

Creser Precision Systems Inc. v CA and Floro International Co. GR NO. 118708, February 2, 1998Facts:

Respondent was granted by the Bureau of Patents, Trademarksand TechnologyTransfer (BPTTT) a Letter ofpatentfor 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 protectitsright, respondent sentletterof 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 thefuzeof 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 1981thsuit concludes that it is the petitioners aerialfuzethat was copied by the respondent. Moreover, the claim ofrespondentis solely based on its letter of patent which validity is being questioned. On appeal,respondentargued that the petitioner has nocause of actionsince he has no right to assert there being no patent issued to his aerial fuze. The Court ofAppealsreversed the decision of the trial court dismissing the complaint of the petitioner. It was the contention of the petitioner that itcan fileunder 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 ofa patentprevents one from lawfully suing another for infringement of said patent, such absence does notbarthe true and actual inventor of the patented invention from suing another in the same nature asa civil actionfor 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 actiononpatent infringement may be brought only in the name of the person granted with the patent. There can be no infringement ofa patentuntila patenthas been issuedsincethe 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 grantedletterof patent overan inventionhas not acquired right or title over the invention and thus has nocause of actionfor infringement. Petitioner admitted to have no patent over his invention.Respondents aerial fuzeis covered byletterof 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.

CASE DIGEST: CARLOS GSELL vs. VALERIANO VELOSO YAP-JUEFACTS:

The principal case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process for manufacture of curved handles for canes, parasols, and umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question, and obtained against this defendant a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by this Court on appeal. The order was couched in the following terms:

It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell.

Thereafter the defendant continued to manufacture curved cane handles for walking sticks and umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol.

The trial court found the defendant not guilty of contempt as charged; and this court, on appeal, held that The violation, if there has been any, was not of such a character that it could be made patent by the mere annunciation of the acts performed by the defendant, which are alleged to constitute the said violation. Consequently, the contempt with which the accused is charged has not been fully and satisfactorily proved, and the order appealed from should accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt.

Substantially, the same question is submitted in these new proceedings as that submitted in the former case.

ISSUE:

Whether the use of a patented process by a third person, without license or authority therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part of the patented process a well-known mechanical equivalent.

HELD:

Counsel for plaintiff invokes the doctrine of mechanical equivalents in support of his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded upon sound rules of reason and logic, and unless restrained or modified by law in particular jurisdiction, is of universal application, so that it matters not whether a patent be issued by one sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of a substitution of some part of his invention by some well-known mechanical equivalent.

The use of a process in all respects identical with a process protected by a valid patent, save only that a well-known mechanical equivalent is substituted in lieu of some particular part of the patented process is an infringement upon the rights of the owner of the patent, which will be enjoined in appropriate proceeding, and the use of such process, after the order enjoining its use has been issued, is a contempt, under the provision of section 172 of the Code of Civil Procedure.Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No. 126627, August 14, 2003Facts:

PetitionerSmithKline Beckman Co., licensed to dobusiness inthe Philippines, filed on October 8, 1976 as assignee before the Bureau of Patents an application for patent on its invention called Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate. A Letters of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2-BenzimidazoleCarbanateused as anactive ingredientin treating gastrointestinalparasitesand lung worms in animals. The respondent Tryco Pharma manufactures, distributes and sellsveterinary product, one of which is theImpregon, a drug having Albendazole as itsactive ingredienteffective against gastrointestinal worms in animals. Petitionernow suesthe respondent for patent infringement and unfair competition before the RTC as it claims that their patent includes the substance Albendazole used by the respondent and they sold and used the drug Impregon without the petitionersauthorizationand committed unfair competition for selling as its own the drug that substantially functions to achieve the same result. Petitioner further contends that under the doctrine of equivalents in determining patent infringement, the active substance Albendazole used by the respondent is substantially the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by its patent with the same use of combating worm infestations in animals. It prodded thecourtto go beyond the literal words used in the Letter of Patent issued to them to consider that the words Methyl 5 Propylthio-2-BenzimidazoleCarbanateand Albendazole are the same. Respondent avers that the Letter of Patents issued to petitioner does not cover Albendazole in that the word does not appear on it. Even if thepatentwere to include Albendazole it isunpatentable. They securedapprovalfrom the Bureau of Foods and Drugs to manufacture and market Impregon with the Albendazole as itsactive ingredients. The petitioner has no proof that they passed their veterinary products as that of the petitioner.

Issue:

Whether or not respondent is guilty of patent infringement?

Ruling:

The SupremeCourtheld that it did not. When the language of the claim is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. The language of the Letter of Patents issued to the petitioner failed to yield anything that it includes Albendazole. The doctrine of equivalents does notapply inthe case at bar because it requires that for infringement to take place, the device should appropriate a prior invention by incorporating its innovative concept and although there are some modifications and change they perform substantially the same results. The petitioners evidence failed to adduce that substantial sameness on both the chemicals they used. While both compounds produce the same effects of neutralizingparasitesin animals, the identity of result does not amount to infringement. The petitioner has the burden to show that it satisfies the function-means-and-result-test required by the doctrine of equivalents. Nothing has been substantiated on how Albendazole can weed theparasitesout from animals which is similar to the manner used by the petitioner in using their own patented chemical compound.