ANGELITA MANZANO, petitioner, vs.

COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION, respondents. [G.R. No. 113388 September 5, 1997, BELLOSILLO, J.:] FACTS: 1. 19 February 1982: Manzano filed with the Philippine Patent Office an action for the cancellation of Letters Patent for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). a. She alleged that Madolaria wasnt able to meet the requirements to be granted the Letters Patent i. As proof she presented the following: 1. affidavit of petitioner alleging the existence of prior art, 2. brochure distributed by Manila Gas Corporation disclosing a pictorial representation of Ransome Burner made by Ransome Torch and Burner Company, USA, 3. 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, b. Madolaria denied, alleging that : i. 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 ii. Melecia Madolaria confided in him that complaints were being brought to her attention concerning the early models being manufactured iii. he was able to cast several models incorporating the additions to the innovations introduced in the models 2. Director of Patents Cesar C. Sandiego issued a decision denying the petition for cancellation a. the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. b. 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. c. dates when they were distributed to the public were not indicated and, therefore, were useless prior art references d. 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. 3. Manzano elevated the case to CA a. CA affirmed the decision of the Director of Patents ISSUE:W/N the Letters Patent issued to Madolaria should be cancelled. HELD: NO. Petition denied. 1. element of novelty is an essential requisite of the patentability of an invention or discovery. a. 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 2. 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 THE CASE: issuance of letters patent to Melecia creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor. a. 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. 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.
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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\ O'Reilly vs Morse 56 US 62 Supreme Court (1853) The problem that would-be telegraphers faced in the early 19th century is explained in the Court's opinion:"The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect, after a certain distance had been traversed. To send a signal from Baltimore to Washington would require thousands of volts and high currents not feasible at a time when managing to make a pickled frogs legs twitch, as Luigi Galvani and Alessandro Volta did, was the major achievement of the electro-galvanic force. Samuel Morses plan [was] combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electromagnetism in long circuits. The concept is illustrated in the figure shown at the right. Morse inserted the relays (or repeaters as the opinion terms them) at intervals sufficiently short (say, every 15 to 20 miles) that the signal was restored regularly to substantially its initial level before the noise could swamp it out. Morse's claim 8 While the case concerned a number of other issues, such as whether Morse was indeed first to invent the telegraph, the issue of lasting importance concerned Morse's eighth claim, which was directed to a method of communicating intelligible information to any distance by means of exploiting the electro-magnetic force: Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer. What did Morse invent? As Justice Taney, speaking for the majority of the Court, explained it, "He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing in telligible characters, signs, or letters at a distance." Although "it required the highest order of mechanical skill to execute and adjust the nice and delicate work necessary to put the telegraph into operation," Morse did not "invent" what he claimed: "Professor Morse has not discovered that the electric or galvanic current will always print at a distance, no matter what may be the form of the machinery or mechanical contrivances through which it passes." Morse did not enable others to do more than make the repeater system that he described. Other persons may discover and disclose to the public other ways to use electromagnetic force to transmit messages, and the other ways may be cheaper or work better. "In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law." Enablement and "abstract idea" In reaching the conclusion that Morse's claim 8 was too broad and thus not subject to patent protection, the Court considered not only the fact that Morse did not teach and enable other ways to communicate information at a great distance by using the electromagnetic force,[2] but also whether the claim was at such a high level of generality and abstraction that it claimed an "idea" rather than a practical application and implementation of an idea. In analyzing this aspect of the case, the Court looked to a recent English decision, Neilson v. Harford. [3] Neilson upheld a patent on using heated air to oxidize carbon in cast iron in a Bessemer Converter against the claim that it was just a patent on the idea or principle that heating the injected air makes a blast furnace
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work better. The court pointed to the apparatus that Neilson used to preheat the air, which made the patent one on an implementation of the principle, not one on the principle itself. Morse, of course, disclosed apparatus only for the repeater system and no other. The language of the English court, picked up by the Supreme Court, was important in 20th century computer software cases:[4] We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this the interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated, by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which before was of cold air, in a heated state to the furnace. Dissent Justice Grier, dissenting in Morse, asked, "What is meant by a claim [specifically, Morse's claim 8] being too broad?" Grier said, "It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally." That is, a claim is overbroad only if it encroaches beyond the frontiers of the prior art (covers prior art devices). Of course, that completely ignores the enablement requirement of what is now section 112 of the patent code. SECOND SOURCE Facts: Morse (as in code) held a series of patents on the electric telegraph. O'Reilly had constructed an electric telegraph without a licence, claiming inter alia that:

Morse was not the first inventor; His telegraph was substantially different; That the patent was void; or That the patent term had expired.

The judgement as reported includes a detailed history of the invention. Outcome: Held that Morse was the first inventor; that the patent was valid, except for the eighth claim (void for being overbroad); that O'Reilly's telegraph was not substantially different and was thus infringing. Ratio: An overbroad claim should be construed as invalid because of its negative effect on science in the area, and the unjust advantage which such a claim gives the patentee over future improvements which they did not invent. Relevance: Of little direct relevance to software patenting, although the history of the case outlines the traditional notion of invention for which patents are awarded (the solitary inventor, locked away for many years perfecting his invention, and the patent's issue as a just reward for his hard work). The telegraph itself is also cited as an example of a new application of known properties and hence is the great grandfather of modern process patents. The court in the case directly consider the policy considerations of the effect of a patent's progress on the 'onward march of science'. The dissenting judgement also covers some quotable material on the nature of the arts and the application of known principles. Note also the use of the concept of 'pirating' of an invention - as far back as 1853! Quotes: Taney CJ (majority) At 113: "If this claim can be maintained, it matters not by what process or machinery the result is
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accomplished. For aught that we know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it without the permission of this patentee. Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light... And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office... In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent." At 115 (quoting Baron Parke in Neilson and others v Harford and others): "It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of the court much difficulty; but after full consideration we think that the plaintiff does not merely claim a principle, but a machine, embodying a principle, and a very valuable one." At 119: "Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more... And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described." Grier J (dissenting): At 130: "A new and useful art or a new and useful improvement on any known art is as much entitled to the protection of the law as a machine or manufacture. The English patent acts are confined to 'manufactures' in terms; but the courts have construed them to cover and protect arts as well as machines, yet without using the term art. Here we are not required to make any latitudinous construction of our statute for the sake of equity or policy; and surely we have no right, even if we had the disposition, to curtail or narrow its liberal policy by astute or fanciful construction. It is not easy to give a precise definition of what is meant by the term "art," as used in the acts of Congress -some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, art stated with clearness and accuracy by Mr Curtis, in his Treatise on Patents. 'The term art applies,' says he, 'to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect or manufacture." Curt on Pat 80. At 130: "An art may employ many different machines, devices, processes, and manipulations, to [131] produce some useful result. In a previously known art a man may discover some new process, or new application of known principle, element or power of nature, to the advancement of that art, and will be entitled to a patent for the same, as 'an improvement in the art,' or he may invent a machine to perform a given function, and then he will be entitled to a patent only for his machine." At 131: "In England, were their statute does not protect an art in direct terms, they have made no clear distinction between an art or an improvement in an art, and a process, machine or manufacture. They were hampered and confied by the narrowness of the phraseology of their patent acts. In this country, the statute is as broad as language can make it."
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At 132: "The mere discovery of a new element, or law, or principle of nature, without any valuable application oof it to the arts, is not the subject of a patent. But he who takes this new element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of man; who applies it to the perfecting of a new and useful art, or to the improvement of one already [133] known, is the benefactor to whom the patent law tenders its protection." At 133: "When a new and hitherto unknown product or result, beneficial to mankind, is effected by a new application of any element of nature, and by means of machines and devices, whether new or old, it cannot be denied that such invention or discovery is entitled to the denomination of a 'new and useful art'. The statute gives the inventor of an art a monopoly in the exercise of it as fully as it does to the inventor of a mere machine". At 132: "The court, by decided that this claim is too broad, virtually declares that such an inventor of an improvement may pirate the art he improves, because it is contrary to public policy to restrain the progress of invention."

Diamond v. Chakrabarty Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed a bacterium (derived from the Pseudomonas genus and now known as Pseudomonas putida)[2] capable of breaking down crude oil, which he proposed to use in treating oil spills. General Electric filed a patent application for the bacterium in the United States listing Chakrabarty as the inventor,[3] but the application was rejected by a patent examiner, because under patent law at that time it was generally understood that living things were not patentable subject matter under Section 101 of Title 35 U.S.C..[4] The Board of Patent Appeals and Interferences agreed with the original decision; however, the United States Court of Customs and Patent Appealsoverturned the case in Chakrabarty's favor, writing that "the fact that micro-organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court. DECISION The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980. The patent was granted by the USPTO on Mar 31, 1981 In a 54 ruling, the court ruled in favor of Chakrabarty, holding that: A live, human-made micro-organism is patentable subject matter under 35 U.S.C. 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute. Ruling Chief Justice Warren E. Burger wrote the decision, and was joined by Potter Stewart, Harry Blackmun, William Rehnquist, and John Paul Stevens. Burger wrote that the question before the court was a narrow onethe interpretation of 35 U.S.C. 101, which says: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title." He wrote that: We have cautioned that courts "should not read into the patent laws limitations and conditions which the legislature has not expressed." United States v. Dubilier Condenser Corp, 289 U.S.178 (1933). Regarding the scope of the original legislation, he wrote:
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In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope. Finding that Congress had intended patentable subject matter to "include anything under the sun that is made by man," he concluded that: Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim is ... to a nonnaturally occurring manufacture or composition of mattera product of human ingenuity. Dissent The dissenting opinion was written by William J. Brennan, who was joined by Byron White, Thurgood Marshall, and Lewis Franklin Powell. Brennan's dissent focused on the argument that there is evidence in the legislative record that the United States Congress did not intend living organisms to be patented. We must be careful to extend patent protection no further than Congress has provided. Brennan noted that "we do not confront a complete legislative vacuum", and commented on the 1930 Plant Patent Act and 1970 Plant Variety Protection Act, which explicitly allow patents for plants in certain cases: The Acts evidence Congress' understanding, at least since 1930, that 101 does not include living organisms. If newly developed living organisms not naturally occurring had been patentable under 101, the plants included in the scope of the 1930 and 1970 Acts could have been patented without new legislation. Therefore: Because Congress thought it had to legislate in order to make agricultural "human-made inventions" patentable and because the legislation Congress enacted is limited, it follows that Congress never meant to make items outside the scope of the legislation patentable. And with regard to the specifics of the 1970 act: Congress specifically excluded bacteria from the coverage of the 1970 Act ... The fact is that Congress, assuming that animate objects as to which it had not specifically legislated could not be patented, excluded bacteria from the set of patentable organisms.

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