Co San vs Director of Patents

Facts:

Respondent Jose Ong Lian Bio filed with the Philippine Patent Office applications for
the issuance of letters patent on two designs for luggages.

Subsequently, the Director of Patents issued Letters Patent in his favor.

Petitioner Co San, however, filed with the Patent Office a petition for cancellation of
said letters patent on the grounds that the said party does not comply with the
requirements of Intellectual Property Act.

The petition for cancellation was dismissed by the Director of Patents. The petitioner
adduced only documentary evidence and relied heavily on the decision of the Court of
Appeals in which he was acquitted of the crime of unfair competition.

ISSUE

whether or not the Director of Patents is bound in the cancellation proceedings by the
findings arrived at by the Court of Appeals in the Criminal case against petitioner.

HELD:

The answer is in negative. The proceeding for the cancellation of letters patent,
involving the question of the validity of the design patents issued to the respondent, is
within the cognizance of the Patent Office, while the criminal case, where the inquiry
was whether petitioner unfairly competed against the luggage of respondent, comes
under the jurisdiction of the Court First Instance.
The acquittal of the petitioner by the Court of Appeals was not based on the
cancellation of the patent, but on the ground that the petitioner (the accused) had not
deceived or defrauded the respondent. That acquittal does not bind the Director of
Patents in the cancellation proceeding-.

DEL ROSARIO VS CA

FACTS:

On 18 January 1993 petitioner filed a

complaint for patent infringement against private

respondent Janito Corporation.

2

Roberto L. del Rosario

alleged that he was a patentee of an audio equipment and

improved audio equipment commonly known as the singalong system or

karaoke under Letters Patent issued by the Director of

Patents. The effectivity of both Letters Patents was for five

(5) years and was extended for another five (5) years

starting 2 June 1988 and 14 November 1991, respectively.

In the early part of 1990 petitioner learned that private

respondent was manufacturing a sing-along system

bearing the trademark miyata or miyata karaoke

substantially similar if not identical to the sing-along

system covered by the patents issued in his favor. Thus he

sought from the trial court the issuance of a writ of

preliminary injunction to enjoin private respondent, its officers and

everybody elsewhere
acting on its behalf, from using, selling and advertising the

miyata or miyata karaoke brand, the injunction to be made

permanent after trial, and praying for damages, attorney’s

fees and costs of suit.

ISSUE:

Whether or not the utility models were “new” as contemplated under the Patent Law.

HELD:

Respondent corporation failed to

present before the trial court competent evidence that the utility
models covered by the Letters Patents issued to petitioner were
not new.

Under Sec. 55 of The Patent Law a

utility model shall not be considered “new” if before the
application for a patent it has been publicly known or publicly
used in this country or has been described in a printed publication
or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or
described within the country.

Under the Patent Law, petitioner as a

patentee shall have the exclusive right to make, use and sell the
patented machine, article or product for the purpose of industry or
commerce, throughout the territory of the Philippines for the term
of the patent, and such making, using or selling by any person
without authorization of the patentee constitutes infringement of
his patent.

SAMSON VS. TARROZA

FACTS:

This petition for the cancellation of a utility model

patent for a Side Tilting-Dumping Wheelbarrow granted to

respondent Felipe A. Tarroza.

Petitioner Samson was, on May 22, 1958, awarded Utility Model

Patent No. 27 for the above type of wheelbarrow.

Respondent's Side Tilting-Dumping Wheelbarrow, on

the other hand, consists "of a wheeled carriage made of

tubular frames essentially as in petitioner's.

There is an express recognition under the Patent Law,

as already noted, that any new model of implements or

tools, or of any industrial product even if not possessed of

the quality of invention but which is of "practical utility" is

entitled to a "patent for a ultility model." From the above

description of the side tilting-dumping wheelbarrow, the

product of respondent's ingenuity and industry, it is quite

apparent that it has a place in the market and possesses

what the statute refers to as "practical utility."

 The

requirement explicitly set forth in the statute has thus

been met. Respondent Tarroza is entitled to its benefits.

The grant to him of a patent for a utility model is in

accordance with law. There was no reason, therefore, for its

cancellation. So it was held by the Director of Patents.

ISSUE:

Whether or not the petition for patent cancellation of the petitioner is correctly
denied by the Director of Patents.

HELD:

There is an express recognition under the Patent Law that any

new model of implements or tools or of any industrial product

even if not possessed of the quality of invention but which is of

"practical utility" is entitled to a "patent for a utility model." From

the description of the side of tiltingdumping wheelbarrow, the

product of ingenuity and industry, it is quite apparent that it has

a place in the market and possesses what the statute refers to as

"practical utility."

this petition for the cancellation of a utility model

patent for a Side Tilting-Dumping Wheelbarrow granted to

respondent Felipe A. Tarroza was correctly denied by

respondent Director of Patents.

MAGUAN VS. CA

FACTS:

petitioner is a patent holder of

powder puff.

In a letter dated July 10, 1974,

petitioner informed private respondent that the powder

Puff s the latter is manufacturing and selling to various

enterprises particularly those in the cosmetics industry,

resemble identical or substantially identical powder puff s

of which the former is a patent holder.

respondent assailed the validity of the patents involved and

filed with the Philippine Patent Office petitions for

cancellation of Patent.

In view thereof, petitioner, on August 24, 1974, filed a

complaint for damages with injunction and preliminary

injunction against private respondent.

ISSUE:

Whether or not in an action for infringement the

RTC had jurisdiction to determine the

invalidity of the patents at issue which invalidity was still pending

consideration in the patent office

HELD:

the Court ruled that "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 (RTC) and to secure

an injunction for the protection of his rights. (Sec. 42, R.A.

165) .
166)
167)
168) Defenses in an action for infringement are provided

for in Section 45 of the same law which in fact were availed

of by private respondent in this case. Then, as correctly

stated by respondent Court of Appeals, this conclusion is

reinforced by Sec. 46 of the same law which provides that if

the Court "shall find the patent or any claim thereof

invalid, the Director shall on certification of the final

judgment x x x issue an order cancelling the patent or the

claims f ound invalid and shall publish a notice thereof in

the Official Gazette." Upon such certification, it is ministerial on the part

of the patent office to execute the

judgment.

FACTS:

Petitioner Angelita Manzano filed with the Philippine

Patent Office on 19 February 1982 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

United Foundry. 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, (d) the letters

patent was secured by means of fraud or

misrepresentation.

Testifying for herself petitioner narrated the circumstances.

ISSUE:

Whether or not the Director of Patents is correct in disregarding the

testimony of the petitioner in the petition for cancellation of patents.

HELD:

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

as amended, which is the law on patents, expressly

provides—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

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

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 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.
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