Inp Patent Cases

8/12/2019 Inp Patent Cases

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SEHWANI, INCORPORATED and/or BENITA'S FRITES, INC.,

vs

IN-N-OUT BURGER, INCPe!!oners

FACTS:

Petitioner Sehwani, Inc. alleged that respondent lack the legal capacity to sue because it was notdoingbusiness in the Philippines and that it has no cause of action because its ark is not registered orused inthe Philippines. They claied that as the registered owner of the !I"#"#$%T! ark, it en&oysthepresuption that the sae was 'alidly ac(uired and that it has the e)clusi'e right to use theark.*oreo'er, petitioners argued that other than the bare allegation of fraud in the registration of theark,respondent failed to show the e)istence of any of the grounds for cancellation thereof under the IPCode.

+espondents contended thatpetitioners coitted a 'iolation of intellectual property rights when theyrefused to accede to the deandin desisting fro claiing ownership of the ark !I"#"#$%T! and to'oluntarily cancelling its

Tradeark +egistration. They argued that they ha'e been the owner of thetradenae !I"#"#$%T! andtradearks !I"#"#$%T,! !I"#"#$%T urger - Arrow esign! and !I"#"#$%Turger /ogo,! whichare used in its business since 0123 up to the present. These tradenae andtradearks were registered inthe %nited States as well as in other parts of the worldissue 45nrespondent has the legal capacity to sue for the protection of its tradearks, albeit it is notdoing businessin the Philippinesheld67S.Section 089 in relation to Section of +.A. "o. 3;1, pro'ides for the +ight of Foreign CorporationtoSue in Tradeark or Ser'ice *ark 7nforceent Action. In addition, Articles 8 that !A tradenaeshallbe protected in all countries of the %nion without the obligation of filing or registration whether or notitfors part of a tradeark.!Article 8bis which go'erns the protection of well#known tradearks, is a self#

e)ecuting pro'ision and doesnot re(uire legislati'e enactent to gi'e it effect in the eber country. The(uestion of whether or notrespondent


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prayed the court to order the Paglinawan to withdraw fro sale all stock of the work of Paglinawan to payhi the su of D09,999, with costs.Paglinawan in his answer denied generally each and e'ery allegation of the coplaint and prayed thecourt to absol'e hi fro the coplaint."a$

Article of the /aw of Banuary 09, 031, on Intellectual Property:

"obody ay reproduce another persons work without the owners consent, e'en erely to annotate oradd anything to it, or ipro'e any edition thereof.Iss0e

4hether or not Paglinawan 'iolated Article of the Intellectual Property /aw >031?EHe&d

6es, Paglinawan 'iolated Article of Intellectual Property /aw.It is not necessary that a work should be an iproper copy of another work pre'iously published. It isenough that anothers work has been reproduced without the consent of the owner, e'en though it be onlyto annotate, add soething to it, or ipro'e any edition thereof.+ P01&!s(ed Ed!!on o2 Wor#

Se. 3

Section 02. Published 7dition of 4ork. # In addition to the right to publish granted by the author, his

heirs, or assigns, the publisher shall ha'e a copyright consisting erely of the right of reproduction of thetypographical arrangeent of the published edition of the work. >n?"ote: Separate right of the publisher e)clusi'ely on typographical arrangeent.+*Wor#s No Proeed

Se. 3*

+aUn4roeed S015e 6aer

Se. 3*

Section 0. %nprotected Sub&ect *atter. # "otwithstanding the pro'isions of Sections 0; and 0, no

protection shall e)tend, under this law, to any idea, procedure, syste, ethod or operation, concept,

principle, disco'ery or ere data as such, e'en if they are e)pressed, e)plained, illustrated or ebodied in

a workG news of the day and other iscellaneous facts ha'ing the character of ere ites of press

inforationG or any official te)t of a legislati'e, adinistrati'e or legal nature, as well as any officialtranslation thereof >n?

Intellectual Property Law on Copyright Copyrightable Subject

Pearl and ean Inc. is a corporation engaged in the anufacture of ad'ertising display unitscalled light bo)es. In Banuary 0130, Pearl and ean was able to ac(uire copyrights o'er thedesigns of the display units. In 0133, their tradeark application for HPoster Ads was appro'edGthey used the sae tradeark to ad'ertise their light bo)es.

In 013, Pearl and ean negotiated with Shoeart Inc. >S*? so that the forer ay becontracted to install light bo)es in the ad spaces of S*. 7'entually, S* re&ected Pearl andean


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infringe on Pearl and eana? the utility odelco'ered by the letters patent, in this case, an /PK gas

burner, was not in'enti'e, new or usefulG >b? thespecification of the letters patent did not coply with there(uireents of Sec. 02, +A "o. 08, as aendedG >c?respondent *elecia *adolaria was not the original, true andactual in'entor nor did she deri'e her rights fro theoriginal, true and actual in'entor of the utility odelco'ered by the letters patentG and, >d? the letters patentwas secured by eans of fraud or isrepresentation.Testifying for herself petitioner narrated that herhusband $ng un Tua worked as a helper in the %"IT7F$%"+6 where respondent *elecia *adolaria used to beaffiliated with fro 018 to 019G that $ng helped in thecasting of an /PK burner which was the sae utility odelof a burner and that after her husband7SC$*7TA/, for bre'ity? for the casting of /PK burners one ofwhich had the configuration, for and coponent partssiilar to those being anufactured by %"IT7 F$%"+6.Petitioner presented two >;? other witnesses,naely, her husband $ng un Tua and Fidel Francisco.Pri'ate respondent, on the other hand, presentedonly one witness, +olando *adolaria, who testified, aong

others, that he was the Keneral Super'isor of the %"IT7F$%"+6.irector of Patents Cesar C. Sandiego denied the

petition for cancellation and holding that the e'idence ofpetitioner was not able to establish con'incingly that thepatented utility odel of pri'ate respondent wasanticipated.Petitioner ele'ated the decision of the irector ofPatents to the Court of Appeals which affired the decisionof the irector of Patents. =ence, this petition for re'iew oncertiorari.

ISS%7:4hether the disissal is proper where the patentapplied for has no substantial difference between the odelto be patented and those sold by petitioner.=7/:The eleent of no'elty is an essential re(uisite of the

patentability of an in'ention or disco'ery. If a de'ice orprocess has been known or used by others prior to itsin'ention or disco'ery by the applicant, an application for a

patent therefor should be deniedG and if the application hasbeen granted, the court, in a &udicial proceeding in whichthe 'alidity of the patent is drawn in (uestion, will hold it'oid and ineffecti'e. It has been repeatedly held that anin'ention ust possess the essential eleents of no'elty,originality and precedence, and for the patentee to beentitled to the protection the in'ention ust be new to theworld.=owe'er, The 'alidity of the patent issued by thePhilippine Patent $ffice in fa'or of pri'ate respondent andthe (uestion o'er the in'enti'eness, no'elty and usefulnessof the ipro'ed odel of the /PK burner are atters whichare better deterined by the Patent $ffice. The technicalstaff of the Philippine Patent $ffice coposed of e)perts intheir field has by the issuance of the patent in (uestionaccepted pri'ate respondent


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copetent e'idence to the contrary.The rule is settled that the findings of fact of theirector of Patents, especially when affired by the Court ofAppeals, are conclusi'e on this Court when supported bysubstantial e'idence. Petitioner has failed to show

copelling grounds for a re'ersal of the findings andconclusions of the Patent $ffice and the Court of Appeals.Petition IS*ISS7.

LL#######################################################################################################################################################################LL

AGUAS v DE "EON

SCRA 9;)

FACTS:Conrado K. de /eon filed in the Court of FirstInstance of +iJal at MueJon City a coplaint forinfringeent of patent against oiciano A. Aguas and F. =.A(uino and Sons alleging that being the original first andsole in'entor of certain new and useful ipro'eents in the

process of aking osaic pre#cast tiles, he lawfully filed andprosecuted an application for Philippine patent, and ha'ingcoplied in all respects with the statute and the rules of thePhilippine Patent $ffice, Patent "o. 83 was lawfully grantedand issued to hiG that said in'ention was new, useful, notknown or used by others in this country before his in'entionthereof.That the defendant oiciano A. Aguas infringed

/etters of Patent "o. 83 by aking, using and selling tilesebodying said patent in'ention and that defendant F. =.A(uino - Sons is guilty of infringeent by aking andfurnishing to the defendant oiciano A. Aguas theengra'ings, castings and de'ices designed and intended oftiles ebodying plaintiffGs patented in'entionG that he hasgi'en direct and personal notice to the defendants of theirsaid acts of infringeent and re(uested the to desist, butne'ertheless, defendants ha'e refused and neglected todesist and ha'e disregarded such re(uest, and continue toso infringe causing great and irreparable daage to

plaintiffG that if the aforesaid infringeent is peritted tocontinue, further losses and daages and irreparable in&urywill be sustained by the plaintiffG that there is an urgentneed for the iediate issuance of a preliinary in&unction.

The court granted the in&unction. And likewise heldin fa'or of the plaintiff and against the defendant.ISS%7:4hether the process, sub&ect of said patent, is notan in'ention or disco'ery, or an ipro'eent of the oldsyste of aking tiles.=7/:The 'alidily of the patent issued by the PhilippinesPatent $ffice in fa'or of the pri'ate respondent and the(uestion o'er the in'enti'eness, no'elty and usefulness ofthe ipro'ed process therein specified and described areatters which are better deterined by the PhilippinesPatent $ffice. The technical staff of the Philippines Patent$ffice, coposed of e)perts in their field, ha'e, by theissuance of the patent in (uestion, accepted the thinness ofthe pri'ate respondents new tiles as a disco'ery. There is a

presuption that the Philippines Patent $ffice has correctlydeterined the patentability of the ipro'eent by the

pri'ate respondent of the process in (uestion.The contention of the petitioner Aguas that theletters patent of de /eon was actually a patent for the oldand non#patentable process of aking osaic pre#cast tilesis de'oid of erit. e /eon ne'er claied to ha'e in'entedthe process of tile#aking. The Clais and Specifications ofPatent "o. 83 show that although soe of the steps or

parts of the old process of tile aking were describedtherein, there were no'el and in'enti'e features entionedin the process.In 'iew of the foregoing, this Court finds that Patent

"o. 83 was legally issued, the process and5or ipro'eentbeing patentable.

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Intellectual Property Law Law on Patents - Doctrine of Equialents

Sith @line is a %S corporation licensed to do business in the Philippines. In 0130, a patent was issued toit for its in'ention entitled H*ethods and Copositions for Producing iphasic Parasiticide Acti'ity%sing *ethyl Propylthio#;#enJiidaJole Carbaate. The in'ention is a eans to fight offgastrointestinal parasites fro 'arious cattles and pet anials.

Tryco Phara is a local corporation engaged in the sae business as Sith @line.

Sith @line sued Tryco Phara because the latter was selling a 'eterinary product called Ipregonwhich contains a drug called AlbendaJole which fights off gastro#intestinal roundwors, lungwors,tapewors and fluke infestation in carabaos, cattle and goats.

Sith @line is claiing that AlbendaJole is co'ered in their patent because substantially the sae asethyl propylthio#;#benJiidaJole carbaate co'ered by its patent since both of the are eant tocobat wor or parasite infestation in anials. And that AlbendaJole is actually patented under Sith@line by the %S.


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Tryco Phara a'erred that nowhere in Ipregon;99;?

Facts:

Festo Corporation>petitioner? possessed patents for an industrial de'ice. After Festo began arketing itsde'ice, Shoketsu @inJoku @ogyo @abushiki Co. >S*C, respondents? entered the arket with a de'icethat used one two-way sealing ringand a non!agneti"able sleee. Festo Corporation already owned twosiilar patents >although their initial patent application was re&ected? for this industrial de'ice. Festo filedsuit, claiing that S*Cs de'ice was sufficiently siilar that it infringed Festos patents under thedoctrine of e(ui'alents. Festos clai had been aended during prosecution for, at the 'ery least,copliance with %.S.C. N00;, and thus Shoketsu claied that prosecution history estoppel should barFesto fro asserting e(ui'alents.

The %nited States istrict Court for the istrict of *assachusetts held that Festos aendents were notade to a'oid prior art, and therefore the aendents were not the kind that gi'e rise to estoppel. A

panel of the Federal Circuitaffired. ; F. d 3 >011?. The Supree Courtgrantedcertiorari, 'acated,and reanded in light of an inter'ening decision in #arner-$en%inson . &ilton Dais Che!ical Co..After a decision by the original panel on reand, 0; F. d 080 >0111?, the Federal Circuit orderedrehearing en banc, 03 F. d 030 >0111?. The court sitting en bancheld that clai aendents ade forcopliance with the Patent Act presented a coplete bar to claiing e(ui'alents.

Issue:
http://en.wikipedia.org/wiki/Festohttp://en.wikipedia.org/wiki/Doctrine_of_equivalentshttp://en.wikipedia.org/wiki/United_States_District_Court_for_the_District_of_Massachusettshttp://en.wikipedia.org/wiki/United_States_Court_of_Appeals_for_the_Federal_Circuithttp://en.wikipedia.org/wiki/Supreme_Court_of_the_United_Stateshttp://en.wikipedia.org/wiki/Certiorarihttp://en.wikipedia.org/wiki/Warner-Jenkinson_v._Hilton_Davis_Chemical_Co.http://en.wikipedia.org/wiki/Festohttp://en.wikipedia.org/wiki/Doctrine_of_equivalentshttp://en.wikipedia.org/wiki/United_States_District_Court_for_the_District_of_Massachusettshttp://en.wikipedia.org/wiki/United_States_Court_of_Appeals_for_the_Federal_Circuithttp://en.wikipedia.org/wiki/Supreme_Court_of_the_United_Stateshttp://en.wikipedia.org/wiki/Certiorarihttp://en.wikipedia.org/wiki/Warner-Jenkinson_v._Hilton_Davis_Chemical_Co.


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4hether any aendent to a patent application that narrowed a patent clai to coply with the PatentAct creates an absolute bar to e(ui'alents for the particular clai liitation that was narrowed by theaendent.

+uling:

The Supree Court 'acated the ruling ade by theFederal Circuit, holding that such aendents do notcreate an absolute bar, but instead ust be e)ained in light of the reason for the change. In theunanious opinion, Bustice @ennedye)plained that it was not whether prosecution history estoppelapplied to aendents, but to what e)tent the aendent surrendered co'erage of the clai. If thechange was ade to clarify a translation, for e)aple, the in'entorshould suffer no reduction in rights.ut if the change was ade to keep the patent fro o'erlapping with another patent, then the applicantwill be presued to ha'e gi'en up the right to coplain about anything broader than the patent claiitself.

In particular, the Court held that patentees decision to narrow clais through aendent in order tocoply with the Patent Act autoatically assues surrender of the territory between the original claiand the aended clai, i.e., a presuption of surrendering all e(ui'alents for the particular clailiitation that was narrowed by the aendent. The Court thus placed theburdenon the applicant as toshowing what e(ui'alents were not surrendered.

Still, the Court conceded, howe'er, that there are soe cases where the aendent cannot be 'iewed assurrendering a particular e(ui'alent. !The e(ui'alent ay ha'e been unforeseeable at the tie of theapplicationG the rationale underlying the aendent ay bear no ore than a tangential relation to thee(ui'alent in (uestionG or there ay be soe other reason suggesting that the patentee could notreasonably be e)pected to ha'e described the insubstantial substitute in (uestion. In those cases thepatentee can o'ercoe the presuption that prosecution history estoppel bars a finding of e(ui'alence.!

$ther rulings:

The doctrine of e(ui'alents allows a patentee to pro'e infringeent e'en when there are inordifferences between the patented apparatus and the allegedly infringing apparatus. A patentee ayprospecti'ely depri'e herself of access to the doctrine of e(ui'alents through a doctrine known asprosecution history estoppel, by aending her patent clais during the prosecution of her patentapplication to narrow the scope of her clais in such a way as to e)clude the infringing apparatus. In turn,there are three e)ceptions to prosecution history estoppel:

>0? the e(ui'alent was Hunforeseeable at the tie of the application, >;? Hthe rationale underlying theaendent Obears no ore than a tangential relation to the e(ui'alent in (uestion, or >? . . . Hsoeother reason suggestOs that the patentee could not reasonably be e)pected to ha'e described theinsubstantial substitute in (uestion.

G.R. No. 3;; Se4e


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THE HONORAB"E COURT OF APPEA"S, SPECIA" FOURTH DI=ISION and S=-AGRO

ENTERPRISES, INC., respondents.

$esus S. 'nonat for petitioner.

'rturo (. 'linio for priate respon)ent.

RO6ERO,J.:

Through this petition for re'iew in certiorariof a decision of the Court of Appeals affiring the decisionof the trial court, petitioner Pascual Kodines seeks to re'erse the ad'erse decision of the Court a quothathe was liable for infringeent of patent and unfair copetition. The dispositi'e portion of the assaileddecision is hereby (uoted to wit:

4=7+7F$+7, with the eliination of the award for attorneys fees, the &udgentappealed fro is hereby AFFI+*7, with costs against appellant.

The patent in'ol'ed in this case is /etters Patent "o. %*#;;8 issued by the Philippine Patent $ffice toone *agdalena S. QillaruJ on Buly 0, 018. It co'ers a utility odel for a hand tractor or power tiller,the ain coponents of which are the following: !>0? a 'acuuatic house floatG >;? a harrow withad&ustable operating handleG >? a pair of paddy wheelsG >2? a protecti'e water co'ering for the engineain dri'eG >? a transission caseG >8? an operating handleG >? an engine foundation on the topidportion of the 'acuuatic housing float to which the ain engine dri'e is detachedly installedG >3? afrontal frae e)tension abo'e the (uarter R circularly shaped water co'ering hold >sic? in place thetransission caseG >1? a Q#belt connection to the engine ain dri'e with transission gear through thepulley, and >09? an idler pulley installed on the engine foundation.!9The patented hand tractor works inthe following anner: !the engine dri'es the transission gear thru the Q#belt, a dri'en pulley and atransission shaft. The engine dri'es the transission gear by tensioning of the Q#belt which iscontrolled by the idler pulley. The Q#belt dri'es the pulley attached to the transission gear which in turn

dri'es the shaft where the paddy wheels are attached. The operator handles the hand tractor through ahandle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a %#shaped K.I. pipe at the Q#shaped end.!;

The abo'e entioned patent was ac(uired by SQ#Agro Industries 7nterprises, Inc., herein pri'aterespondent, fro *agdalena QillaruJ, its chairan and president, by 'irtue of a eed of Assignente)ecuted by the latter in its fa'or. $n $ctober 0, 011, SQ#Agro Industries caused the publication of thepatent in ulletin Today, a newspaper of general circulation.

In accordance with the patent, pri'ate respondent anufactured and sold the patented power tillers withthe patent iprinted on the. In 011, SQ#Agro Industries suffered a decline of ore than 9 in salesin its *ola'e, aboanga del Sur branch. %pon in'estigation, it disco'ered that power tillers siilar to

those patented by pri'ate respondent were being anufactured and sold by petitioner herein.Conse(uently, pri'ate respondent notified Pascual Kodines about the e)isting patent and deanded thatthe latter stop selling and anufacturing siilar power tillers. %pon petitioners failure to coply with thedeand, SQ#Agro Industries filed before the +egional Trial Court a coplaint for infringeent of patentand unfair copetition.

After trial, the court held Pascual Kodines liable for infringeent of patent and unfair copetition. Thedispositi'e portion of the decision reads as follows:


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4=7+7F$+7, preises considered, B%K*7"T is hereby rendered in fa'or of theplaintiff SQ#Agro Industries 7nterprises, Inc., and against defendant Pascual Kodines:

0. eclaring the writ of preliinary in&unction issued by this Court against defendant asperanentG

;. $rdering defendant Pascual Kodines to pay plaintiff the su of Fifty Thousand Pesos>P9,999.99? as daages to its business reputation and goodwill, plus the further su of7ighty Thousand Pesos >P39,999.99? for unrealiJed profits during the period defendantwas anufacturing and selling copied or iitation floating power tillerG

. $rdering the defendant to pay the plaintiff, the further su of 7ight Thousand Pesos>P3,999.99? as reiburseent of attorneys fees and other e)penses of litigationG and topay the costs of the suit.

S$ $+7+7.

The decision was affired by the appellate court.

Thereafter, this petition was filed. Petitioner aintains the defenses which he raised before the trial andappellate courts, to wit: that he was not engaged in the anufacture and sale of the power tillers as heade the only upon the special order of his custoers who ga'e their own specificationsG hence, hecould not be liable for infringeent of patent and unfair copetitionG and that those ade by hi weredifferent fro those being anufactured and sold by pri'ate respondent.

4e find no erit in his arguents. The (uestion of whether petitioner was anufacturing and sellingpower tillers is a (uestion of fact better addressed to the lower courts. In disissing the first arguent ofpetitioner herein, the Court of Appeals (uoted the findings of the court, to wit:

It is the contention of defendant that he did not anufacture or ake iitations or copiesof plaintiffs turtle power tiller as what he erely did was to fabricate his floating powertiller upon specifications and designs of those who ordered the. =owe'er, thiscontention appears untenable in the light of the following circustances: 0? he adits inhis Answer that he has been anufacturing power tillers or hand tractors, selling anddistributing the long before plaintiff started selling its turtle power tiller in aboangadel Sur and *isais $ccidental, eaning that defendant is principally a anufacturer ofpower tillers, not upon specification and design of buyers, but upon his own specificationand designG ;? it would be unbelie'able that defendant would fabricate power tillerssiilar to the turtle power tillers of plaintiff upon specifications of buyers withoutre(uiring a &ob order where the specification and designs of those ordered are specified."o docuent was >sic? e'er been presented showing such &ob orders, and it is rather

unusual for defendant to anufacture soething without the specification and designs,considering that he is an engineer by profession and proprietor of the $Jais7ngineering shop. $n the other hand, it is also highly unusual for buyers to order thefabrication of a power tiller or hand tractor and allow defendant to anufacture theerely based on their 'erbal instructions. This is contrary to the usual business andanufacturing practice. This is not only tie consuing, but costly because it in'ol'es atrial and error ethod, repeat &obs and aterial wastage. efendant &udicially adittedtwo >;? units of the turtle power tiller sold by hi to Policarpio erondo. *


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Petitioners arguent that his power tillers were different fro pri'ate respondents is that of a drowningan clutching at straws.

+ecogniJing that the logical fallback position of one in the place of defendant is to a'er that his product isdifferent fro the patented one, courts ha'e adopted the doctrine of e(ui'alents which recogniJes thatinor odifications in a patented in'ention are sufficient to put the ite beyond the scope of literal

infringeent. 9Thus, according to this doctrine, !>a?n infringeent also occurs when a de'iceappropriates a prior in'ention by incorporating its inno'ati'e concept and, albeit with soe odificationand change, perfors substantially the sae function in substantially the sae way to achie'esubstantially the sae result.! ;The reason for the doctrine of e(ui'alents is that to perit the iitationof a patented in'ention which does not copy any literal detail would be to con'ert the protection of thepatent grant into a hollow and useless thing. Such iitation would lea'e roo for R indeed encourage Rthe unscrupulous copyist to ake uniportant and insubstantial changes and substitutions in the patentwhich, though adding nothing, would be enough to take the copied atter outside the clai, and henceoutside the reach of the law.

In this case, the trial court obser'ed:

efendants witness 7duardo CaUete, eployed for 00 years as welder of the $Jais7ngineering, and therefore actually in'ol'ed in the aking of the floating power tillers ofdefendant tried to e)plain the difference between the floating power tillers ade by thedefendant. ut a careful e)aination between the two power tillers will show that theywill operate on the sae fundaental principles. And, according to establish&urisprudence, in infringeent of patent, siilarities or differences are to be deterined,not by the naes of things, but in the light of what eleents do, and substantial, ratherthan technical, identity in the test. *ore specifically, it is necessary and sufficient toconstitute e(ui'alency that the sae function can be perfored in substantially the saeway or anner, or by the sae or substantially the sae, principle or ode of operationGbut where these tests are satisfied, ere differences of for or nae are iaterial. . . . *

It also stated:

To establish an infringeent, it is not essential to show that the defendant adopted thede'ice or process in e'ery particularG Proof of an adoption of the substance of the thingwill be sufficient. !In one sense,! said Bustice rown, !it ay be said that no de'ice canbe ad&udged an infringeent that does not substantially correspond with the patent. utanother construction, which would liit these words to e)act echanis described in thepatent, would be so ob'iously un&ust that no court could be e)pected to adopt it. . . .

The law will protect a patentee against iitation of his patent by other fors andproportions. If two de'ices do the sae work in substantially the sae way, and

accoplish substantially the sae result, they are the sae, e'en though they differ innae, for, or shape. :

4e pronounce petitioner liable for infringeent in accordance with Section of +epublic Act "o. 08,as aended, pro'iding, inter alia:

Sec. .*ight of Patentees. R A patentee shall ha'e the e)clusi'e right to ake, use andsell the patented achine, article or product, and to use the patented process for thepurpose of industry or coerce, throughout the territory of the Philippines for the ters


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of the patentG an) such !a%ing+ using+ or selling by any person without the authori"ationof the Patentee constitutes infringe!ent of the patent. >7phasis ours?

As far as the issue regarding unfair copetition is concerned, suffice it to say that +epublic Act "o. 088,as aended, pro'ides, inter alia:

Sec. ;1. ,nfair co!petition+ rights an) re!e)ies. R . . .

))) ))) )))

In particular, and without in any way liiting the scope of unfair copetition, thefollowing shall be deeed guilty of unfair copetition:

>a? Any person, who in selling his goods shall gi'e the the general appearance of goodsof another anufacturer or dealer, either as to the goods thesel'es or in the wrapping ofthe packages in which they are contained, or the de'ices or words thereon, or in any otherfeature of their appearance, which would be likely to influence purchasers that the goods

offered are those of a anufacturer or dealer other than the actual anufacturer or dealer,or who otherwise clothes the goods with such appearance as shall decei'e the public anddefraud another of his legitiate trade. . . .

))) ))) )))

Considering the foregoing, we find no re'ersible error in the decision of the Court of Appeals affiringwith odification the decision of the trial court.

4=7+7F$+7, preises considered, the decision of the Court of Appeals is hereby AFFI+*7 and thispetition 7"I7 for lack of erit.

S

Petitioner Sith @line eckan is an Aerican corporation licensed to do business in the Philippines.In018 it filed with the Philippine Patent $ffice a patent application o'er ethyl propylthio#;#benJiidaJolecarbaate, a cheical copound that fought infections caused by gastrointestinal parasitesin far and petanials. In 0130 the PP$ issued /etters Patent "o. 0280 for the said in'ention for a terof 0 years.Pri'ate respondent Tryco Phara is a doestic corporation that dealt in 'eterinary products. Itanufactured andsold Ipregon, a drug which fought gastrointestinal parasites in far anials, andwhich contained the copoundAlbendaJole as acti'e ingredient.Claiing that /etters Patent "o. 0280co'ered the substance AlbendaJole, Sith @line filed before the CaloocanCity +egional Trial Court acoplaint against Tyco Phara for patent infringeent, and for unfair copetitionunder Article 031 ofthe +e'ised Penal Code and Section ;1 of the Tradeark /aw.In its ecision the +TC disissed Sith

@line


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propylthio#;#benJiidaJole carbaateG thecopound


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published in the Septeber#$ctober 0119, Qol. III, "o. issue of the ureau of PatentS+P? of the AFPG that soetie in 0138, petitionerbegan supplying the AFP with the said aerial fuJeG that pri'ate respondent


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HFor resolution before this Court is the *otion for +econsideration filed by the defendant and theplaintiff


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The otion for reconsideration was also denied on Banuary 0, 011.)iO00 =ence, this present petition.

It is petitioner+.A. 08?, an action forinfringeent not as a patentee but as an entity in possession of a right, title or interest in and to thepatented in'ention. It ad'ances the theory that while the absence of a patent ay pre'ent one frolawfully suing another for infringeent of said patent, such absence does not bar the first true and actual

in'entor of the patented in'ention fro suing another who was granted a patent in a suit for declaratory orin&uncti'e relief recogniJed under Aerican patent laws. This reedy, petitioner points out, ay belikened to a ci'il action for infringeent under Section 2; of the Philippine Patent /aw.

4e find the abo'e arguents untenable.

Section 2; of +.A. 08, otherwise known as the Patent /aw, e)plicitly pro'ides:

S7CTI$". 2;. Ciil action for infringe!ent.V Any patentee, or anyone possessing any right, title orinterest in and to the patented in'ention, whose rights ha'e been infringed, ay bring a ci'il action beforethe proper Court of First Instance >now +egional Trial court?, to reco'er fro the infringer daagessustained by reason of the infringeent and to secure an in&unction for the protection of his right. ) ) )

%nder the afore(uoted law, only the patentee or his successors#in#interest ay file an action forinfringeent. The phrase Hanyone possessing any right+ title or interest in an) to the patente) inentionupon which petitioner aintains its present suit, refers only to the patentee? years fro the publication of said patent with theirector of Patents and raise as ground therefor that the person to who the patent was issued is not thetrue and actual in'entor. =ence, petitioner


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such, it can not now assail or ipugn the 'alidity of the pri'ate respondentn?

Keneral Agreeent on Tariffs and Trade >GATT? was a collection of treaties go'erning access to theeconoies of treaty adherents with no institutionaliJed body adinistering the agreeents or dependable

syste of dispute settleent. >Tanada 's. Angara?

Ta@ada vs. An%ara, G.R. No. )9*, 6a 9, 3

The Philippines &oined 4T$ as a founding eber with the goal, as articulated by PresidentFidel Q. +aos in two letters to the Senate of ipro'ing !Philippine access to foreign arkets, especiallyits a&or trading partners, through the reduction of tariffs on its e)ports, particularly agricultural andindustrial products.! The President also saw in the 4T$ the opening of !new opportunities for the


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ser'ices sector . . . , >the reduction of? costs and uncertainty associated with e)porting . . . , and >theattraction of? ore in'estents into the country.! Although the Chief 7)ecuti'e did not e)presslyention it in his letter, the Philippines R and this is of special interest to the legal profession R willbenefit fro the 4T$ syste of dispute settleent by &udicial ad&udication through the independent4T$ settleent bodies called >0? ispute Settleent Panels and >;? Appellate Tribunal. =eretofore,trade disputes were settled ainly through negotiations where solutions were arri'ed at fre(uently on the

basis of relati'e bargaining strengths, and where naturally, weak and underde'eloped countries were at adisad'antage.

+ D!d RA )9; re4ea& e!s!n% &a$s on !ne&&e0a& 4ro4er

/8. *epublic 'ct 3412 Section 421.5 'll 'cts an) parts of 'cts inconsistent herewith+ !ore particularly

*epublic 'ct /o. 509+ as a!en)e): *epublic 'ct /o. 500+ as a!en)e): an) 'rticles 533 an) 531 of the

*eise) Penal Co)e: Presi)ential Decree /o. ;1+ inclu)ing Presi)ential Decree /o. 439+ as a!en)e)+

are hereby repeale).

>*Fas

Bessie K. Ching is the owner and general anager of Beshicris *anufacturing Co., the aker andanufacturer of a %tility *odel, described as H/eaf Spring 7ye ushing for Autoobile ade up ofplastic.$n Septeber 2, ;990, Ching and Boseph 6u were issued by the "ational /ibrary Certificates ofCopyright +egistration and eposit of the said work described therein as H/eaf Spring 7ye ushing forAutoobile.$n Septeber ;9, ;990, Ching re(uested the "ational ureau of In'estigation >"I? forpolice5in'estigati'e assistance for the apprehension and prosecution of illegal anufacturers, producersand5or distributors of the works.After due in'estigation, the "I filed applications for search warrants in the +TC of *anila against

4illia Salinas, Sr. and the officers and ebers of the oard of irectors of 4ilaware ProductCorporation. It was alleged that the respondents therein reproduced and distributed the said odelspenaliJed under Sections 0.0 and 0. of +epublic Act >+.A.? "o. 3;1.Iss0es

4hether or not the sub&ect atter is co'ered by the Copyright of the Intellectual Property CodeEHe&d

It is worthy to state that the works protected under the /aw on Copyright are: literary or artistic works>Sec. 0;? and deri'ati'e works >Sec. 0?. The /eaf Spring 7ye ushing and Qehicle earing Cushionfall on neither classification.eing plain autooti'e spare parts that ust confor to the original structural design of the coponentsthey seek to replace, the /eaf Spring 7ye ushing and Qehicle earing Cushion are not ornaental. Theylack the decorati'e (uality or 'alue that ust characteriJe authentic works of applied art. They are not

e'en artistic creations with incidental utilitarian functions or works incorporated in a useful article. Inactuality, the personal properties described in the search warrants are echanical works, the principalfunction of which is utility sans any aesthetic ebellishent."either are we to regard the /eaf Spring 7ye ushing and Qehicle earing Cushion as included in the

catch#all phrase Hother literary, scholarly, scientific and artistic works in Section 0;.0>a? of +.A. "o.

3;1. Applying the principle of e&usde generis which states that Hwhere a statute describes things of a

particular class or kind accopanied by words of a generic character, the generic word will usually be

liited to things of a siilar nature with those particularly enuerated, unless there be soething in the


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conte)t of the state which would repel such inference,O28 the /eaf Spring 7ye ushing and Qehicle

earing Cushion are not copyrightable, being not of the sae kind and nature as the works enuerated in

Section 0; of +.A. "o. 3;1.

DE" ROSARIO = CA

Intellectual Property Law Law on Patents Infringe!ent =arao%e (achine

FACTS7 el +osario was granted a patent for his inno'ation called the H*inus $ne karaoke. The patentwas issued in Bune 0133 for fi'e years and was renewed in "o'eber 0110 for another fi'e years as therewere ipro'eent introduced to his Hinus one karaoke. In 011, while the patent was still effecti'e,el +osario sued Banito Corporation, a Bapanese copany owned by Banito Cua, for allegedly infringingupon the patent of el +osario. el +osario alleged that Banito was anufacturing a sing#along systeunder the brand Hiyata karaoke which is substantially if not identical to his Hinus one karaoke. Thelower court ruled in fa'or of el +osario but the Court of Appeals ruled that there was no infringeentbecause the karaoke syste was a uni'ersal product anufactured, ad'ertised and arketed all o'er theworld long before el +osario was issued his patents.

ISSUE7 4hether or not the Court of Appeals erred in its ruling.

HE"D7 6es. The Patent /aw e)pressly acknowledges that any new odel of ipleents or tools of any

industrial product e'en if not possessed of the (uality of in'ention but which is of practical utility is

entitled to a patent for utility odel. =ere, there is no dispute that the letters patent issued to el +osario

are for utility odels of audio e(uipent. It is eleentary that a patent ay be infringed where the

essential or substantial features of the patented in'ention are taken or appropriated, or the de'ice, achine

or other sub&ect atter alleged to infringe is substantially identical with the patented in'ention. In order to

infringe a patent, a achine or de'ice ust perfor the sae function, or accoplish the sae result by

identical or substantially identical eans and the principle or ode of operation ust be substantially the

sae. In the case at bar, iyata karaoke was pro'en to ha'e substantial if not identical functionality as

that of the inus one karaoke which was co'ered by the second patent issued to el +osario. Further,

Banito failed to present copetent e'idence that will show that el +osario


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patentability of the odel andsuch action ust not be interfered with, in the absence of copetent

e'idence to the contrary. *aguan '. CAAn in'ention ust possess the essential eleents of no'elty,

originality, and precedence and for the patentee to beentitled to protection, the in'ention ust be new to

the world. A single instance of public use of the in'ention by apatentee for ore than two years>now

ore than 0 year under Sec.1 of Patent /aw? before the date of application forhis patent will be fatal to

the 'alidity of the patent when issued.


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