A utility model is a statutory monopoly granted for a limited time in exchange for an

inventor providing sufficient teaching of his or her invention to permit a person of

ordinary skill in the relevant art to perform the invention. The rights conferred by utility

model laws are very similar to those granted by patent laws, but are more suited to what

may be considered as "incremental inventions".[3] Terms such as "petty patent",

"innovation patent", "minor patent", and "small patent" may also be considered to fall

within the definition of "utility model. 7 years

Registered Design refers to the configuration, pattern, or ornamentation which when applied to a product gives the product a unique appearance. You can register a design but it must be new and distinctive.Example: The Coca Cola bottle, even without any text or branding was recently registered in Japan being the first of its kind.

CRESER PRECISION SYSTEMS, INC., vs. COURT OF APPEALS AND FLORO INTERNATIONAL CORP

Petitioners claim:It is Cresers contention that it can file, under Section 42 of the Patent Law (R.A. 165),an action for infringement not as apatentee but as an entity in possession of a right, title or interest in and to the patented invention. It advances thetheory that while the absence of apatent may prevent one from lawfully suing another for infringement of said patent,suchabsence does not bar the first true and actual inventor of the patented invention from suinganother who wasgranted a patent in a suit for declaratory or injunctive relief recognized under American patent laws. This remedy,petitioner points out, may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law.Respondents claim:Private respondent Floro International submitted its memorandum alleging thatpetitioner has no cause of action to file acomplaint for infringement against it since Creser hasno patent for theaerial fuzewhich it claims to have invented; thatpetitioner's available remedyis to file a petition for cancellation of patent before the Bureau of Patents; thatprivaterespondent as the patent holder cannot be stripped of its property right over the patented aerial fuzeconsistingof the exclusive right to manufacture, use and sell the same and that it stands tosuffer irreparable damage and injury if itis enjoined from the exercise of its property rights over its patent.

Issue:

Whether Creser can file an action for infringement being not as patentee

Ruling:

NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides: Sec. 42Civil action forinfringement Any patentee, or anyone possessing anyright, title or interest in and to the patented invention, whoserights have beeninfringed, may bring a civil action before the proper Court of First Instance (nowRegional Trial court), torecover from the infringer damages sustained by reasonof the infringement and to secure an injunction for theprotection of his right. . . .Under the aforequoted law, only the patentee or his successors-in-interest may file anactionfor infringement. The phrase "anyone possessing any right, title or interest in and to the patented invention " uponwhich petitioner maintains its present suit, refers only to the patentee'ssuccessors-in-interest, assignees or granteessince actions for infringement of patent may bebrought in the name of the person or persons interested, whether aspatentee, assignees, or asgrantees, of the exclusive right.Petitioner admits it has no patent over its aerial fuze.Therefore, it has no legal basis or cause of action to institute the petition for injunction and damages arising from theallegedinfringement by private respondent.

Smith Kline Beckman Corporation vs Court of Appeals

on November 8, 2011

Intellectual Property Law Law on Patents - Doctrine of Equivalents

Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued to it for its invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The invention is a means to fight off gastrointestinal parasites from various cattles and pet animals.

Tryco Pharma is a local corporation engaged in the same business as Smith Kline.

Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.

Smith Kline is claiming that Albendazole is covered in their patent because substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. And that Albendazole is actually patented under Smith Kline by the US.

Tryco Pharma averred that nowhere in Impregons packaging does it mention that Albendazole is present but even if it were, the same is unpatentable.

Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical for in spite of the fact that the word Albendazole does not appear in petitioners letters patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.

ISSUE: Whether or not there is patent infringement in this case

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere in the patent does the word Albendazole found. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. Further, there was a separate patent for Albendazole given by the US which implies that Albendazole is indeed separate and distinct from the patented compound here.

A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met.

plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental, meaning that defendant isprincipally a manufacturer of power tillers, not upon specification and design of buyers, but upon his own specificationand 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 thoseordered are specified. No document was (

sic

) ever been presented showing such job orders, and it is rather unusual fordefendant to manufacture something without the specification and designs, considering that he is an engineer byprofession and proprietor of the Ozamis Engineering shop. On the other hand, it is also highly unusual for buyers toorder the fabrication of a power tiller or hand tractor and allow defendant to manufacture them merely based on theirverbal 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 admittedtwo (2) units of the turtle power tiller sold by him to Policarpio Berondo.

5

Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of the Supreme Court in casesbrought to it from the Court of Appeals in a petition for

certiorari

under Rule 45 of the Rules of Court is limited to thereview of errors of law, and that said appellate court's findings of fact are conclusive upon this Court."

6

The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been establishedby 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 theclaim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it."

8

To determinewhether 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 whetherthere is exact identity of all material elements.

9

The 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 thatof the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power tillersof the defendant and the turtle power tiller of the plaintiff are virtually the same. Defendant admitted to the Court thattwo (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, andon both sides thereof were the floating power tillers of defendant

(Exhibits H to H-2). Witness Rodrigo took photographsof the same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H-28). Viewedfrom any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power tillerof plaintiff in form, configuration, design and appearance. The parts or components thereof are virtually the same. Bothhave the circularly-shaped vacuumatic housing float, a paddy in front, a protective water covering, a transmission boxhousing the transmission gears, a handle which is V-shaped and inclined upwardly, attached to the side of thevacuumatic housing float and supported by the upstanding G.I. pipes and an engine base at the top midportion of thevacuumatic housing float to which the engine drive may be attached. In operation, the floating power tiller of thedefendant operates also in similar manner as the turtle power tiller of plaintiff. This was admitted by the defendanthimself in court that they are operating on the same principles. (TSN, August 19, 1987, p. 13)

10

Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued bythe Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatichousing float on which the engine drive is held in place, the operating handle, the harrow housing with its operatinghandle and the paddy wheel protective covering."

11

It appears from the foregoing observation of the trial court thatthese claims of the patent and the features of the patented utility model were copied by petitioner. We are compelledto 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 clutchingat straws.Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different fromthe patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in apatented 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 innovativeconcept and, albeit with some modification and change, performs substantially the same function in substantially thesame way to achieve substantially the same result."

13

The reason for the doctrine of equivalents is that to permit theimitation of a patented invention which does not copy any literal detail would be to convert the protection of the patentgrant into a hollow and useless thing. Such imitation would leave room for

indeed encourage

the unscrupulouscopyist 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.

14

In this case, the trial court observed:Defendant's witness Eduardo Caete, employed for 11 years as welder of the Ozamis Engineering, and therefore actuallyinvolved in the making of the floating power tillers of defendant tried to explain the difference between the floatingpower tillers made by the defendant. But a careful examination between the two power tillers will show that they willoperate 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, andsubstantial, rather than technical, identity in the test. More specifically, it is necessary and sufficient to constituteequivalency that the same function can be performed in substantially the same way or manner, or by the same orsubstantially the same, principle or mode of operation; but where these tests are satisfied, mere differences of form orname are immaterial. . . .

15

It also stated:To establish an infringement, it is not essential to show that the defendant adopted the device or process in everyparticular; Proof of an adoption of the substance of the thing will be sufficient. "In one sense," said Justice

Brown, "itmay be said that no device can be adjudged an infringement that does not substantially correspond with the patent. Butanother construction, which would limit these words to exact mechanism described in the patent, would be so obviouslyunjust 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 thesame work in substantially the same way, and accomplish substantially the same result, they are the same, even thoughthey differ in name, form, or shape.

16

We 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 ordealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devicesor words thereon, or in any other feature of their appearance, which would be likely to influence purchasers that thegoods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwiseclothes 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 modificationthe decision of the trial court.

WHEREFORE, premises considered, the decision of the Court of Appeals is hereby AFFIRMED and this petition DENIEDfor lack of merit.

Cresser Precision Systems v. CAOnly the patentee may file for infringement. There can be no infringement of a patentuntil a patent has been issuedsince whatever right one has to the invention conferred by the patent arises alone from agrant of patent.Smith Kline v. CAArticle 5 of the Paris Convention unequivocally and explicitly respects the right of themember countries to adoptlegislative measures to provide for grant of compulsory licenses to prevent abuses whichmight result from the exerciseof the exclusive rights conferred by the patent.Parke Davis v. Doctors PharmaceuticalsFactof existence of 2 different substances of medicine of which the court could not take judicial notice of norcompetent toso find in the absence of evidence, and the existence of two patents require presentation of evidence toshow whetherthe substances are the same or not.Godinez v. CATests to determine infringement are; 1) Doctrine of LiteralInfringement 2) Doctrine of Equivalents. The reason for thedoctrine of equivalents is that to permit the imitation of apatented invention which does not copy any literal detailwould be to convert the protection of the patent grant intohollow and useless thing.Smith Kline Beckman v. CAThe doctrine of equivalents thus requires satisfaction of thefunctions-means-and-result test, the patentee having theburden to show that all three components of such equivalencytest are met.Manzano v. CAThere is a presumption that the Philippine Patent Office has correctly determined thepatentability of the model andsuch action must not be interfered with, in the absence of competent evidence to thecontrary.

Maguan v. CAAn invention must possess the essential elements of novelty, originality, and precedence andfor 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 dateof application forhis patent will be fatal to the validity of the patent when issued