G.R. No.

L-32160 January 30, 1982

DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

FERNANDEZ, J.:
This is a petition for certiorari to review the decision of the Court of Appeals in CA G.R. NO.
37824-R entitled "Conrado G. de Leon, plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino
and Sons, defendants-appellants," the dispositive portion of which reads:
WHEREFORE, with the modification that plintiff-applee's award of moral
damages is hereby redured to P3,000.00, the appealed judgment is hereby
affirmed, in all othe respects, with costs against appellants. 1
On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City
a complaint for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons
alleging that being the original first and sole inventor of certain new and useful improvements in
the process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an application for
Philippine patent, and having complied in all respects with the statute and the rules of the
Philippine Patent Office, Patent No. 658 was lawfully granted and issued to him; that said
invention was new, useful, not known or used by others in this country before his invention
thereof, not patented or described in any printed publication anywhere before his invention
thereof, or more than one year prior to his application for patent thereof, not patented in any
foreign country by him or his legal representatives on application filed more than one year prior
to his application in this country; that plaintiff has the exclusive license to make, use and sell
throughout the Philippines the improvements set forth in said Patent No. 658; that the
invention patented by said Patent No. 658 is of great utility and of great value to plaintiff and of
great benefit to the public who has demanded and purchased tiles embodying the said invention
in very large quantities and in very rapidly increasing quant ies; that he has complied with the
Philippine statues relating to marking patented tiles sold by him; that the public has in general
acknowledged the validity of said Patent No. 658, and has respected plaintiff's right therein and
thereunder; that the defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by
making, using and selling tiles embodying said patent invention and that defendant F. H.
Aquino & Sons is guilty of infringement by making and furnishing to the defendant
Domiciano A. Aguas the engravings, castings and devices designed and intended of tiles
embodying plaintiff;s patented invention; that he has given direct and personal notice to the
defendants of their said acts of infringement and requested them to desist, but nevertheless,
defendants have refused and neglected to desist and have disregarded such request, and
continue to so infringe causing great and irreparable damage to plaintiff; that if the aforesaid
infringement is permitted to continue, further losses and damages and irreparable injury will be
sustained by the plaintiff; that there is an urgent need for the immediate issuance of a preliminary
injunction; that as a result of the defendants' wrongful conduct, plaintiff has suffered and the
defendants are liable to pay him, in addition to actual damages and loss of profits which would
be determined upon proper accounting, moral and exemplary or corrective damages in the sum
of P90,000.00; that plaintiff has been compelled to go to court for the protection and enforcement

of his and to engage the service of counsel, thereby incurring attorney's fees and expenses of
litigation in the sum of P5,000.00. 2
On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary Injunction was
issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the allegations of
the plaintiff and alleging that: the plaintiff is neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast tiles, the same having been used by
several tile-making factories in the Philippines and abroad years before the alleged invention by
de Leon; that Letters Patent No. 658 was unlawfully acquired by making it appear in the
application in relation thereto that the process is new and that the plaintiff is the owner of
the process when in truth and in fact the process incorporated in the patent application
has been known and used in the Philippines by almost all tile makers long before the
alleged use and registration of patent by plaintiff Conrado G. de Leon; that the registration
of the alleged invention did not confer any right on the plaintiff because the registration was
unlawfully secured and was a result of the gross misrepresentation on the part of the plaintiff
that his alleged invention is a new and inventive process; that the allegation of the plaintiff that
Patent No. 658 is of great value to plaintiff and of great benefit to the public is a mere conclusion
of the plaintiff, the truth being that a) the invention of plaintiff is neither inventive nor new, hence,
it is not patentable, b) defendant has been granted valid patents (Patents No. 108, 109, 110
issued on December 21, 1961) on designs for concrete decorative wall tiles; and c) that he can
not be guilty of infringement because his products are different from those of the plaintiff. 4
The trial court rendered a decision dated December 29, 1965, the dispositive portion of which
reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the
defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their officers, agents,
employees, associates, confederates, and any and all persons acting under their
authority from making and/or using and/or vending tiles embodying said patented
invention or adapted to be used in combination embodying the same, and from
making, manufacturing, using or selling, engravings, castings and devises
designed and intended for use in apparatus for the making of tiles embodying
plaintiff's patented invention, and from offering or advertising so to do, and from
aiding and abetting or in any way contributing to the infringement of said patent;
3. Ordering that each and all of the infringing tiles, engravings, castings and
devices, which are in the possession or under the control of defendants be
delivered to plaintiff;
4. Ordering the defendants to jointly and severally pay to the plaintiff the following
sums of money, to wit:
(a) P10,020.99 by way of actual damages;

(b) P50,000.00 by way of moral damages;

(c) P5,000.00 by way of exemplary damages;
(d) P5,000.00 by way of attorney's fees and
(e) costs of suit. 5
The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the following
errors. 6
I
THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF'S PATENT
FOR THE 'PROCESS OF MAKING MOSAIC PRE-CAST TILE' IS INVALID
BECAUSE SAID ALLEGED PROCESS IS NOT AN INVENTION OR
DISCOVERY AS THE SAME HAS ALREADY LONG BEEN USED BY TILE
MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.
II
THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF PLAINTIFF IS
VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGE-OLD TILE MAKING
SYSTEM.
III
THE TRIAL COURT ERRED IN NOT ORDERING THE CANCELLATION OF
PLAINTIFF-APPELLEE'S LETTERS PATENT NO. 658, EXHIBIT L, IN
ACCORDANCE WITH THE PERTINENT PROVISIONS OF THE PATENT LAW,
REPUBLIC ACT 165.
IV
THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT DOMICIANO A.
AGUAS IS GUILTY OF INFRINGEMENT DESPITE THE FACT THAT
PLAINTIFF'S PATENT IS NOT A VALID ONE.
V
THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT
COULD NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF'S PATENT
BECAUSE EVEN IN MATTERS NOT PATENTED BY THE PLAINTIFF - LIKE
THE COMPOSITION AND PROPORTION OF INGREDIENTS USED AND THE
STRUCTURAL DESIGNS OF THE MOULD AND THE TILE PRODUCED - THAT
OF THE DEFENDANT ARE DIFFERENT.
VI

THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND IN

HOLDING THE DEFENDANT, INSTEAD OF THE PLAINTIFF, LIABLE FOR
DAMAGES, AND ATTORNEY'S FEES.
On August 5, 1969, the Court of Appeals affirmed the decision of the trial court, with the
modification that plaintiff-appellee's award of moral damages was reduced to P3,000.00. 7
The petitioner assigns the following errors supposedly committed by the Court of Appeals:
It is now respectfully submitted that the Court of Appeals committed the following
errors involving questions of law, to wit:
First error. When it did not conclude that the letters patent of the respondent
although entitled on the cover page as a patent for improvements, was in truth
and in fact, on the basis of the body of the same, a patent for the old and nonpatentable process of making mosaic pre-cast tiles;
Second error. When it did not conclude from the admitted facts of the case,
particularly the contents of the letters patent, Exh. L and the pieces of physical
evidence introduced consisting of samples of the tiles and catalouges, that the
alleged improvements introduced by the respondent in the manufacture of
mosaic pre-cast tiles are not patentable, the same being not new, useful and
inventive.
Third error. As a corollary, when it sentenced the herein petitioner to pay the
damages enumerated in the decision of the lower court (Record on Appeal, pp.
74-75), as confirmed by it (the Court of Appeals), but with the modification that
the amount of P50,000.00 moral damages was reduced to P3,000.00. 8
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the record are to the effect that on December 1,
1959 plaintiff-appellee filed a patent application with the Philippine Patent Office,
and on May 5, 1960, said office issued in his favor Letters Patent No. 658 for a
"new and useful improvement in the process of making mosaic pre-cast tiles"
(Exh, "L"); that defendant F.H. Aquino & Sons engraved the moulds embodying
plaintiff's patented improvement for the manufacture of pre-cast tiles, plaintiff
furnishing said defendant the actual model of the tiles in escayola and explained
to said engraver the plans, specifications and the details of the engravings as he
wanted them to be made, including an explanation of the lip width, artistic slope
of easement and critical depth of the engraving that plaintiff wanted for his
moulds; that engraver Enrique Aquino knew that the moulds he was engraving for
plaintiff were the latter's very own, which possession the new features and
characteristics covered by plaintiff's parent; that defendant Aguas personally, as a
building contractor, purchased from plaintiff, tiles shaped out of these moulds at
the back of which was imprinted plaintiff's patent number (Exhs., "A" to "E"); that
subsequently, through a representative, Mr. Leonardo, defendant Aguas
requested Aquino to make engravings of the same type and bearing the
characteristics of plaintiff's moulds; that Mr. Aquino knew that the moulds he was
asked to engrave for defendant Aguas would be used to produce cement tiles

similar to plaintiff's; that the moulds which F.H. Aquino & Sons eventually
engraved for Aguas and for which it charged Aguas double the rate it charged
plaintiff De Leon, contain the very same characteristic features of plaintiff's mould
and that Aguas used these moulds in the manufacture of his tiles which he
actually put out for sale to the public (Exhs. "1" to "3" and Exhs. "A" to "E"); that
both plaintiff's and defendant Aguas' tiles are sculptured pre-cast wall tiles
intended as a new feature of construction and wag ornamentation substantially
Identical to each other in size, easement, lip width and critical depth of the
deepest depression; and that the only significant difference between plaintiff's
mould and that engraved by Aquino for Aguas is that, whereas plaintiff's mould
turns out tiles 4 x 4 inches in size, defendant Aguas' mould is made to fit a 4-1/4 x
4-1/4 inch tile. 9
The patent right of the private respondent expired on May 5, 1977.
only to determine the right of said private respondent to damages.

10

The errors will be discuss

The petitioner questioned the validity of the patent of the private respondent, Conrado G. de
Leon, on the ground that the process, subject of said patent, is not an invention or discovery, or
an improvement of the old system of making tiles. It should be noted that the private
respondent does not claim to be the discoverer or inventor of the old process of tilemaking. He only claims to have introduced an improvement of said process. In fact, Letters
Patent No. 658 was issued by the Philippine Patent Office to the private respondent, Conrado G.
de Leon, to protect his rights as the inventor of "an alleged new and useful improvement in the
process of making mosaic pre-cast tiles." 11 Indeed, Section 7, Republic Act No. 165, as amended
provides: "Any invention of a new and useful machine, manufactured product or substance, process,
or an improvement of the foregoing, shall be patentable.
The Court of Appeals found that the private respondent has introduced an improvement in the
process of tile-making because:
... we find that plaintiff-appellee has introduced an improvement in the process of
tile-making, which proceeds not merely from mechanical skill, said improvement
consisting among other things, in the new critical depth, lip width, easement and
field of designs of the new tiles. The improved lip width of appellee's tiles
ensures the durability of the finished product preventing the flaking off of
the edges. The easement caused by the inclination of the protrusions of the
patented moulds is for the purpose of facilitating the removal of the newly
processed tile from the female die. Evidently, appellee's improvement
consists in the solution to the old critical problem by making the
protrusions on his moulds attain an optimum height, so that the engraving
thereon would be deep enough to produce tiles for sculptured and
decorative purposes, strong optimum thickness of appellee's new tiles of
only 1/8 of an inch at the deepest easement (Exhs. "D" and "D-1") is a most
critical feature, suggestive of discovery and inventiveness, especially considering
that, despite said thinness, the freshly formed tile remains strong enough for its
intended purpose.
While it is true that the matter of easement, lip width, depth, protrusions and
depressions are known to some sculptors, still, to be able to produce a new and
useful wall tile, by using them all together, amounts to an invention. More so, if

the totality of all these features are viewed in combination with the Ideal
composition of cement, sodium silicate and screened fine sand.
By using his improved process, plaintiff has succeeded in producing a new
product - a concrete sculptured tile which could be utilized for walling and
decorative purposes. No proof was adduced to show that any tile of the same
kind had been produced by others before appellee. Moreover, it appears that
appellee has been deriving considerable profit from his manufacture and sale of
such tiles. This commercial success is evidence of patentability (Walker on
Patents, Dellers Edition, Vol. I, p. 237). 12
The validily of the patent issued by the Philippines Patent Office in favor of the private
respondent and the question over the inventiveness, novelty and usefulness of the
improved process therein specified and described are matters which are better
determined by the Philippines Patent Office. The technical staff of the Philippines Patent
Office, composed of experts in their field, have, by the issuance of the patent in question,
accepted the thinness of the private respondent's new tiles as a discovery. There is a
presumption that the Philippines Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced evidence sufficient to overcome the above
established legal presumption of validity or to warrant reversal of the findings of
the lower court relative to the validity of the patent in question. In fact, as we have
already pointed out, the clear preponderance of evidence bolsters said
presumption of validity of appellee's patent. There is no indication in the records
of this case and this Court is unaware of any fact, which would tend to show that
concrete wall tiles similar to those produced by appellee had ever been made by
others before he started manufacturing the same. In fact, during the trial,
appellant was challenged by appellee to present a tile of the same kind as those
produced by the latter, from any earlier source but, despite the fact that appellant
had every chance to do so, he could not present any. There is, therefore, no
concrete proof that the improved process of tile-making described in appellee's
patent was used by, or known to, others previous to his discovery thereof. 13
The contention of the petitioner Aguas that the letters patent of de Leon was actually a patent for
the old and non-patentable process of making mosaic pre-cast tiles is devoid of merit. De Leon
never claimed to have invented the process of tile-making. The Claims and Specifications of
Patent No. 658 show that although some of the steps or parts of the old process of tile making
were described therein, there were novel and inventive features mentioned in the process. Some
of the novel features of the private respondent's improvements are the following: critical depth,
with corresponding easement and lip width to such degree as leaves the tile as thin as 1/8 of an
inch at its thinnest portion, Ideal composition of cement and fine river sand, among other
ingredients that makes possible the production of tough and durable wall tiles, though thin and
light; the engraving of deep designs in such a way as to make the tiles decorative, artistic and
suitable for wall ornamentation, and the fact that the tiles can be mass produced in commercial
quantities and can be conveniently stock-piled, handled and packed without any intolerable
incidence of breakages. 14

The petitioner also contends that the improvement of respondent is not patentable because it is
not new, useful and inventive. This contention is without merit.
The records disclose that de Leon's process is an improvement of the old process of tile making.
The tiles produced from de Leon's process are suitable for construction and ornamentation,
which previously had not been achieved by tiles made out of the old process of tile making. De
Leon's invention has therefore brought about a new and useful kind of tile. The old type of tiles
were usually intended for floors although there is nothing to prevent one from using them for
walling purposes. These tiles are neither artistic nor ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical
skill. He has introduced a new kind of tile for a new purpose. He has improved the old method of
making tiles and pre-cast articles which were not satisfactory because of an intolerable number
of breakages, especially if deep engravings are made on the tile. He has overcome the problem
of producing decorative tiles with deep engraving, but with sufficient durability. 15 Durability inspite
of the thinness and lightness of the tile, is assured, provided that a certain critical depth is maintained
in relation to the dimensions of the tile. 16
The petitioner also claims that changing the design from embossed to engraved tiles is neither
new nor inventive because the Machuca Tile Factory and the Pomona Tile Manufacturing
Company have been manufacturing decorative wall tiles that are embossed as well as
engraved; 17 that these tiles have also depth, lip width, easement and field of designs; 18 and that the
private respondent had copied some designs of Pomona. 19
The Machuca tiles are different from that of the private respondent. The designs are embossed
and not engraved as claimed by the petitioner. There may be depressions but these depressions
are too shallow to be considered engraved. Besides, the Machuca tiles are heavy and massive.
There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona tiles are made
of ceramics. 20The process involved in making cement tiles is different from ceramic tiles. Cement
tiles are made with the use of water, while in ceramics fire is used. As regards the allegation of the
petitioner that the private respondent copied some designs of Pomona, suffice it to say that what is in
issue here is the process involved in tile making and not the design.
In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process
and/or improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the petitioner Domiciano A.
Aguas did infringe de Leon's patent. There is no showing that this case falls under one of the
exceptions when this Court may overrule the findings of fact of the Court of Appeals. The only
issue then to be resolved is the amount of damages that should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages awarded by the lower court
with the modification that the respondent is only entitled to P3,000.00 moral damages. 21
The lower court awarded the following damages: 22
a) P10,020.99 by way of actual damages;
b) P50,000.00 by way of moral damages;

c) P5,000.00 by way of exemplary damages;

d) P5,000.00 by way of attomey's fees and
e) Costs of suit
because:
An examination of the books of defendant Aguas made before a Commissioner
reveals that during the period that Aguas was manufacturing and selling tiles
similar to plaintiff's, he made a gross income of P3,340.33, which can be safely
be considered the amount by which he enriched himself when he infringed
plaintiff's patent. Under Sec. 42 of the Patent Law any patentee whose rights
have been infringed is entitled to damages which, according to the circumstances
of the case may be in a sum above the amount found as actual damages
sustained provided the award does not exceed three times the amount of such
actual damages. Considering the wantonness of the infringement committed by
the defendants who knew all the time about the existence of plaintiff's patent, the
Court feels there is reason to grant plaintiff maximum damages in the sum of
P10,020.99. And in order to discourage patent infringements and to give more
teeth to the provisions of the patent law thus promoting a stronger public policy
committed to afford greater incentives and protection to inventors, the Court
hereby awards plaintiff exemplary damages in the sum of P5,000.00 to be paid
jointly and severally by defendants. Considering the status of plaintiff as a
reputable businessman, and owner of the likewise reputed House of Pre-Cast, he
is entitled to an award of moral damages in the sum of P50,000.00. 23
In reducing the amount of moral damages the Court of Appeals said:
As regards the question of moral damages it has been shown that as a result of
the unlawful acts of infringment committed by defendants, plaintiff was
unstandably very sad; he worried and became nervous and lost concentration on
his work in connection with his tile business (pp. 28, 30, t.s.n., Feb. 28, 1964). In
addition, plaintiff's character and reputation have been unnecessarily put in
question because defendants, by their acts of infringement have created a doubt
or suspicion in the public mind concerning the truth and honesty of plaintiff's
advertisements and public announcements of his valid patent. Necessarily, said
acts of defendants have caused plaintiff considerable mental suffering,
considering especially, the fact that he staked everything on his pre-cast tile
business (p. 36, t.s.n., Id.) The wantonness and evident bad faith characterizing
defendants' prejudicial acts against plaintiff justify the assessment of moral
damages in plaintiff's favor, though we do not believe the amount of P50,000.00
awarded by the lower court is warranted by the circumstances. We feel that said
amount should be reduced to P3,000.00 by way of compensating appellee for his
moral suffering. "Willful injury to property may be a legal ground for awarding
moral damages if the court should find that, under the circumstances such
damages are justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages and attorneys fees awarded by the trial
court as modified by the Court of Appeals.

WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed from is
hereby affirmed, without pronouncement as to costs.
SO ORDERED.

CRESER PRECISION SYSTEMS, INC., petitioner, vs. COURT OF

APPEALS AND FLORO INTERNATIONAL CORP., respondents.
DECISION
MARTINEZ, J.:

This petition for review on certiorari assails the decision . The decision of the
Court of Appeals was penned by Justice Gloria C. Paras and concurred in by Justice
Salome A. Montoya and Justice Hector L. Hofilea.
[1]

1 of the Court of Appeals dated November 9, 1994 in C.A.-G.R. SP. No. 34425
entitled Floro International Corp. vs. Hon. Tirso D.C Cruz and Creser Precision
System, Inc., the dispositive portion of which reads:

WHEREFORE, THE PETITION IS HEREBY GRANTED. THE COMPLAINT

FOR INJUNCTION AND DAMAGES, CIVIL CASE NO. 93-1856 BEFORE THE
RESPONDENT JUDGE IS HEREBY ORDERED DISMISSED AND HIS
ORDERS THEREIN OF DECEMBER 29, 1993 AND MAY 11, 1994 ARE
ORDERED SET ASIDE.
Private respondent is a domestic corporation engaged in the manufacture,
production, distribution and sale of military armaments, munitions, airmunitions
and other similar materials.
[2]

On January 23, 1990, private respondent was granted by the Bureau of

Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent No.
UM-6938 covering an aerial fuze which was published in the SeptemberOctober 1990, Vol. III, No. 5 issue of the Bureau of Patents Official Gazette.
[3]

[4]

Sometime in November 1993, private respondent, through its president, Mr.

Gregory Floro, Jr., discovered that petitioner submitted samples of its
patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing.
He learned that petitioner was claiming the aforesaid aerial fuze as its own and
planning to bid and manufacture the same commercially without license or
authority from private respondent. To protect its right, private respondent on
December 3, 1993, sent a letter to petitioner advising it fro its existing patent
and its rights thereunder, warning petitioner of a possible court action and/or
application for injunction, should it proceed with the scheduled testing by the
military on December 7, 1993.
[5]

In response to private respondents demand, petitioner filed on December 8,

1993 a complaint for injunction and damages arising from the alleged infringement
[6]

before the Regional Trial Court of Quezon City, Branch 88. The complaint alleged,
among others: that petitioner is the first, true and actual inventor of an aerial
fuze denominated as Fuze, PDR 77 CB4 which is developed as early as
December 1981 under the Self-Reliance Defense Posture Program (SRDP) of
the AFP; that sometime in 1986, petitioner began supplying the AFP with the
said aerial fuze; that private respondents aerial fuze is identical in every
respect to the petitioners fuze; and that the only difference between the two
fuzes are miniscule and merely cosmetic in nature. Petitioner prayed that a
temporary restraining order and/or writ of preliminary injunction be issued
enjoining private respondent including any and all persons acting on its behalf
from manufacturing, marketing and/or profiting therefrom, and/or from
performing any other act in connection therewith or tending to prejudice and deprive
it of any rights, privileges and benefits to which it is duly entitled as the first, true and
actual inventor of the aerial fuze.
On December 10, 1993, the trial court issued a temporary restraining order.
Thereafter, hearings were held on the application of petitioner for the issuance of a
writ of preliminary injunction, with both parties presenting their evidence. After the
hearings, the trial court directed the parties to submit their respective memoranda in
support of their positions.
On December 27, 1993, private respondent submitted its memorandum alleging
that petitioner has no cause of action to file a complaint of infringement against it
since it has no patent for the aerial fuze which it claims to have invented; that
petitioners available remedy is to file a petition for cancellation of patent before the
Bureau of Patents; that private respondent as the patent holder cannot be stripped of
its property right over the patented aerial fuze consisting of the exclusive right to
manufacture, use and sell the same and that it stands to suffer irreparable damage
and injury if it is enjoined from the exercise of its property right over its patent.
[7]

On December 29, 1993, the trial court issued an Order granting the issuance of
a writ of preliminary injunction against private respondent the dispositive portion of
which reads:
[8]

WHEREFORE, plaintiffs application for the issuance of a writ of preliminary

injunction is granted and, upon posting of the corresponding bond by plaintiff in
the amount of PHP 200,000.00, let the writ of preliminary injunction be issued by
the branch Clerk of this Court enjoining the defendant and any and all persons
acting on its behalf or by and under its authority, from manufacturing, marketing
and/or selling aerial fuzes identical, to those of plaintiff, and from profiting
therefrom, and/or from performing any other act in connection therewith until
further orders from this Court.

Private respondent moved for reconsideration but this was denied by the trial
courts in its Order of May 11, 1994, pertinent portions of which read:
[9]

For resolution before this Court is the Motion for Reconsideration filed by the
defendant and the plaintiffs Opposition thereto. The Court finds no sufficient cause
to reconsider its order dated December 29, 1993. During the hearing for the
issuance of the preliminary injunction, the plaintiff has amply proven its
entitlement to the relief prayed for. It is undisputed that the plaintiff has developed
its aerial fuze way back in 1981 while the defendant began manufacturing the same
only in 1987. Thus, it is only logical to conclude that it was the plaintiffs aerial
fuze that was copied or imitated which gives the plaintiff the right to have the
defendant enjoined from manufacturing, marketing and/or selling aerial fuzes
identical to those of the plaintiff, and from profiting therefrom and/or performing
any other act in connection therewith until further orders from this Court. With
regards to the defendants assertion that an action for infringement may only be
brought by anyone possessing right, title or interest to the patented invention,
(Section 42, RA 165) qualified by Section 10, RA 165 to include only the first true
and actual inventor, his heirs, legal representatives to assignees, this court finds the
foregoing to be untenable. Sec. 10 merely enumerates the persons who may have
an invention patented which does not necessarily limit to these persons the right to
institute an action for infringement. Defendant further contends that the order in
issue is disruptive of the status quo. On the contrary, the order issued by the Court
in effect maintained the status quo. The last actual , peaceable uncontested status
existing prior to this controversy was the plaintiff manufacturing and selling its
own aerial fuzes PDR 77 CB4 which was ordered stopped through the defendants
letter. With issuance of the order, the operations of the plaintiff continue. Lastly,
this court believes that the defendant will not suffer irreparable injury by virtue of
said order. The defendants claim is primarily hinged on its patent (Letters Patent
No. UM-6983) the validity of which is being questioned in this case.
WHEREFORE, premises considered, the Motion for Reconsideration is hereby
denied for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a petition for certiorari,
mandamus and prohibition before respondent Court of Appeals raising as grounds
the following:
[10]

a. Petitioner has no cause of action for infringement against private

respondent, the latter not having any patent for the aerial fuze which
it claims to have invented and developed and allegedly infringed by
private respondent;
b. The case being an action for cancellation or invalidation of private
respondents Letters Patent over its own aerial fuze, the proper venue
is the Office of the Director of Patents;
c. The trial court acted in grave abuse of discretion and or in excess of
jurisdiction in finding that petitioner has fully established its clear
title or right to preliminary injunction;
d. The trial court acted in grave abuse of discretion and/or in excess of
jurisdiction in granting the preliminary injunction, it being disruptive
of the status quo; and
e. The trial court acted in grave abuse of discretion and/or in excess of
jurisdiction in granting the preliminary injunction thereby depriving
private respondent of its property rights over the patented aerial fuze
and cause it irreparable damages.
On November 9, 1994, the respondent court rendered the now assailed decision
reversing the trial courts Order of December 29, 1993 and dismissing the
complaint filed by petitioner.
The motion for reconsideration was also denied on January 17, 1995. Hence,
this present petition.
[11]

It is petitioners contention that it can file, under Section 42 of the Patent Law
(R.A. 165), an action for infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the patented invention. It advances
the theory that while the absence of a patent may prevent one from lawfully
suing another for infringement of said patent, such absence does not bar the
first true and actual inventor of the patented invention from suing another who
was granted 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.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:

SECTION. 42. Civil action for infringement. Any patentee, or anyone possessing
any right, title or interest in and to the patented invention, whose rights have been
infringed, may bring a civil action before the proper Court of First Instance (now
Regional Trial court), to recover from the infringer damages sustained by reason of
the infringement and to secure an injunction for the protection of his right. x x x
Under the aforequoted law, only the patentee or his successors-in-interest may
file an action for infringement. The phrase anyone possessing any right, title or
interest in and to the patented invention upon which petitioner maintains its present
suit, refers only to the patentees successors-in-interest, assignees or grantees since
actions for infringement of patent may be brought in the name of the person or
persons interested, whether as patentee, assignees or grantees, of the exclusive
right. Moreover, there can be no infringement of a patent until a patent has
been issued, since whatever right one has to the invention covered by the
patent arises alone from the grant of patent. In short, a person or entity who has
not been granted letters patent over an invention and has not acquired any right or
title thereto either as assignee or as licensee, has no cause of action for infringement
because the right to maintain an infringement suit depends on the existence of
the patent.
[12]

[13]

[14]

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 the alleged infringement by private respondent. While petitioner claims to be the
first inventor of the aerial fuze, still it has no right of property over the same upon
which it can maintain a suit unless it obtains a patent therefor. Under American
jurisprudence, and inventor has no common-law right to a monopoly of his invention.
He has the right to make, use and vend his own invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the invention.
[15]

Further, the remedy of declaratory judgment or injunctive suit on patent invalidity

relied upon by petitioner cannot be likened to the civil action for infringement under
Section 42 of the Patent Law. The reason for this is that the said remedy is available
only to the patent holder or his successors-in-interest. Thus, anyone who has no
patent over an invention but claims to have a right or interest thereto can not file an
action for declaratory judgment or injunctive suit which is not recognized in this
jurisdiction. Said person, however, is not left without any remedy. He can, under
Section 28 of the aforementioned law, file a petition for cancellation of the patent
within three (3) years from the publication of said patent with the Director of Patents
and raise as ground therefor that the person to whom the patent was issued is not
the true and actual inventor. Hence, petitioners remedy is not to file an action for
injunction or infringement but to file a petition for cancellation of private respondent

patent. Petitioner however failed to do so. As such, it can not now assail or impugn
the validity of the private respondents letters patent by claiming that it is the true and
actual inventor of the aerial fuze.
Thus, as correctly ruled by the respondent Court of Appeals in its assailed
decision: since the petitioner (private respondent herein) is the patentee of the
disputed invention embraced by letters of patent UM No. 6938 issued to it on
January 23, 1990 by the Bureau of Patents, it has in its favor not only the
presumption of validity of its patent, but that of a legal and factual first and true
inventor of the invention.
In the case of Aguas vs. De Leon, we stated that:
[16]

The validity of the patent issued by the Philippine Patent Office in favor of the
private respondent and the question over the investments, novelty and usefulness
of the improved process therein specified and described are matters which are
better determined by the Philippines patent Office, composed of experts in their
field, have, by the issuance of the patent in question, accepted the thinness of the
private respondents new tiles as a discovery. There is a presumption that the
Philippine Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question.
In fine, in the absence of error or abuse of power or lack or jurisdiction or grave
abuse of discretion, we sustain the assailed decision of the respondent Court of
Appeal.
WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No
pronouncement as to costs.
SO ORDERED.

SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE

HONORABLE COURT OF APPEALS and TRYCO PHARMA
CORPORATION, respondents.
DECISION
CARPIO-MORALES, J.:

Smith Kline Beckman Corporation (petitioner), a corporation existing by

virtue of the laws of the state of Pennsylvania, United States of America
(U.S.) and licensed to do business in the Philippines, filed on October 8,
1976, as assignee, before the Philippine Patent Office (now Bureau of
Patents, Trademarks and Technology Transfer) an application for patent
over an invention entitled Methods and Compositions for Producing
Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2Benzimidazole Carbamate. The application bore Serial No. 18989.
On September 24, 1981, Letters Patent No. 14561 for the aforesaid
invention was issued to petitioner for a term of seventeen (17) years.
[1]

The letters patent provides in its claims that the patented invention
consisted of a new compound named methyl 5 propylthio-2benzimidazole carbamate and the methods or compositions utilizing
the compound as an active ingredient in fighting infections caused by
gastrointestinal parasites and lungworms in animals such as swine,
sheep, cattle, goats, horses, and even pet animals.
[2]

Tryco Pharma Corporation (private respondent) is a domestic

corporation that manufactures, distributes and sells veterinary
products including Impregon, a drug that has Albendazole for its
active ingredient and is claimed to be effective against gastrointestinal roundworms, lungworms, tapeworms and fluke infestation
in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair
competition before the Caloocan City Regional Trial Court (RTC). It
claimed that its patent covers or includes the substance Albendazole such
that private respondent, by manufacturing, selling, using, and causing to be
sold and used the drug Impregon without its authorization, infringed Claims
2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 as well as committed unfair
[3]

[4]

competition under Article 189, paragraph 1 of the Revised Penal Code and
Section 29 of Republic Act No. 166 (The Trademark Law) for advertising
and selling as its own the drug Impregon although the same contained
petitioners patented Albendazole.
[5]

On motion of petitioner, Branch 125 of the Caloocan RTC issued a

temporary restraining order against private respondent enjoining it from
committing acts of patent infringement and unfair competition. A writ of
preliminary injunction was subsequently issued.
[6]

[7]

Private respondent in its Answer averred that Letters Patent No. 14561
does not cover the substance Albendazole for nowhere in it does that word
appear; that even if the patent were to include Albendazole, such
substance is unpatentable; that the Bureau of Food and Drugs allowed it to
manufacture and market Impregon with Albendazole as its known
ingredient; that there is no proof that it passed off in any way its veterinary
products as those of petitioner; that Letters Patent No. 14561 is null and
void, the application for the issuance thereof having been filed beyond the
one year period from the filing of an application abroad for the same
invention covered thereby, in violation of Section 15 of Republic Act No.
165 (The Patent Law); and that petitioner is not the registered patent
holder.
[8]

Private respondent lodged a Counterclaim against petitioner for such

amount of actual damages as may be proven; P1,000,000.00 in moral
damages; P300,000.00 in exemplary damages; and P150,000.00 in
attorneys fees.
Finding for private respondent, the trial court rendered a Decision dated
July 23, 1991, the dispositive portion of which reads:
[9]

WHEREFORE, in view of the foregoing, plaintiffs complaint should be, as it is

hereby, DISMISSED. The Writ of injunction issued in connection with the case is
hereby ordered DISSOLVED.
The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby
declared null and void for being in violation of Sections 7, 9 and 15 of the Patents
Law.

Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby
directed to cancel Letters Patent No. 14561 issued to the plaintiff and to publish
such cancellation in the Official Gazette.
Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00
actual damages and P100,000.00 attorneys fees as prayed for in its
counterclaim but said amount awarded to defendant is subject to the lien on correct
payment of filing fees.
SO ORDERED. (Underscoring supplied)
On appeal, the Court of Appeals, by Decision of April 21, 1995, upheld
the trial courts finding that private respondent was not liable for any
infringement of the patent of petitioner in light of the latters failure to show
that Albendazole is the same as the compound subject of Letters Patent
No. 14561. Noting petitioners admission of the issuance by the U.S. of a
patent for Albendazole in the name of Smith Kline and French Laboratories
which was petitioners former corporate name, the appellate court
considered the U.S. patent as implying that Albendazole is different from
methyl 5 propylthio-2-benzimidazole carbamate. It likewise found that
private respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.
[10]

The appellate court, however, declared that Letters Patent No. 14561
was not void as it sustained petitioners explanation that Patent Application
Serial No. 18989 which was filed on October 8, 1976 was a divisional
application of Patent Application Serial No. 17280 filed on June 17, 1975
with the Philippine Patent Office, well within one year from petitioners filing
on June 19, 1974 of its Foreign Application Priority Data No. 480,646 in the
U.S. covering the same compound subject of Patent Application Serial No.
17280.
Applying Section 17 of the Patent Law, the Court of Appeals thus ruled
that Patent Application Serial No. 18989 was deemed filed on June 17,
1995 or still within one year from the filing of a patent application abroad in
compliance with the one-year rule under Section 15 of the Patent Law. And
it rejected the submission that the compound in Letters Patent No. 14561
was not patentable, citing the jurisprudentially established presumption that
the Patent Offices determination of patentability is correct. Finally, it ruled
that petitioner established itself to be the one and the same assignee of the

patent notwithstanding changes in its corporate name. Thus the appellate

court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED
with the MODIFICATION that the orders for the nullification
of Letters Patent No. 14561 and for its cancellation are
deleted therefrom.
SO ORDERED.
Petitioners motion for reconsideration of the Court of Appeals decision
having been denied the present petition for review on certiorari was filed,
assigning as errors the following:
[11]

[12]

I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT

ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCOS IMPREGON DRUG,
IS INCLUDED IN PETITIONERS LETTERS PATENT NO. 14561, AND THAT
CONSEQUENTLY TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT.
II. THE
COURT
OF
APPEALS
GRAVELY
ERRED
IN
AWARDING TO PRIVATE RESPONDENT TRYCO PHARMA CORPORATION
P330,000.00 ACTUAL DAMAGES AND P100,000.00 ATTORNEYS FEES.

Petitioner argues that under the doctrine of equivalents for determining

patent infringement, Albendazole, the active ingredient it alleges was
appropriated by private respondent for its drug Impregon, is 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. It cites the unrebutted testimony of its witness Dr. Godofredo C.
Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561
refers to the compound Albendazole.Petitioner adds that the two
substances substantially do the same function in substantially the same
way to achieve the same results, thereby making them truly
identical. Petitioner thus submits that the appellate court should have gone
beyond the literal wordings used in Letters Patent No. 14561, beyond
merely applying the literal infringement test, 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.
Petitioner likewise points out that its application with the Philippine
Patent Office on account of which it was granted Letters Patent No. 14561

was merely a divisional application of a prior application in the U. S. which

granted a patent for Albendazole. Hence, petitioner concludes that both
methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented
Albendazole are dependent on each other and mutually contribute to
produce a single result, thereby making Albendazole as much a part of
Letters Patent No. 14561 as the other substance is.
Petitioner concedes in its Sur-Rejoinder that although methyl 5
propylthio-2-benzimidazole carbamate is not identical with Albendazole, the
former is an improvement or improved version of the latter thereby making
both substances still substantially the same.
[13]

With respect to the award of actual damages in favor of private

respondent in the amount of P330,000.00 representing lost profits,
petitioner assails the same as highly speculative and conjectural, hence,
without basis. It assails too the award of P100,000.00 in attorneys fees as
not falling under any of the instances enumerated by law where recovery of
attorneys fees is allowed.
In its Comment, private respondent contends that application of
the doctrine of equivalents would not alter the outcome of the case,
Albendazole and methyl 5 propylthio-2-benzimidazole carbamate being two
different compounds with different chemical and physical properties. It
stresses that the existence of a separate U.S. patent for Albendazole
indicates that the same and the compound in Letters Patent No. 14561 are
different from each other; and that since it was on account of a divisional
application that the patent for methyl 5 propylthio-2-benzimidazole
carbamate was issued, then, by definition of a divisional application, such a
compound is just one of several independent inventions alongside
Albendazole under petitioners original patent application.
[14]

As has repeatedly been held, only questions of law may be raised in a

petition for review on certiorari before this Court. Unless the factual findings
of the appellate court are mistaken, absurd, speculative, conjectural,
conflicting, tainted with grave abuse of discretion, or contrary to the findings
culled by the court of origin, this Court does not review them.
[15]

From an examination of the evidence on record, this Court finds nothing

infirm in the appellate courts conclusions with respect to the principal issue

of whether private respondent committed patent infringement to the

prejudice of petitioner.
The burden of proof to substantiate a charge for patent infringement
rests on the plaintiff. In the case at bar, petitioners evidence consists
primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion,
its general manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the compound methyl
5 propylthio-2-benzimidazole carbamate also covers the substance
Albendazole.
[16]

From a reading of the 9 claims of Letters Patent No. 14561 in relation to

the other portions thereof, no mention is made of the compound
Albendazole. All that the claims disclose are:the covered invention, that is,
the compound methyl 5 propylthio-2-benzimidazole carbamate; the
compounds being anthelmintic but nontoxic for animals or its ability to
destroy parasites without harming the host animals; and the patented
methods, compositions or preparations involving the compound to
maximize its efficacy against certain kinds of parasites infecting specified
animals.
When the language of its claims is clear and distinct, the patentee is
bound thereby and may not claim anything beyond them. And so are the
courts bound which may not add to or detract from the claims matters not
expressed or necessarily implied, nor may they enlarge the patent beyond
the scope of that which the inventor claimed and the patent office allowed,
even if the patentee may have been entitled to something more than the
words it had chosen would include.
[17]

[18]

It bears stressing that the mere absence of the word Albendazole in

Letters Patent No. 14561 is not determinative of Albendazoles noninclusion in the claims of the patent. While Albendazole is admittedly a
chemical compound that exists by a name different from that covered in
petitioners letters patent, the language of Letter Patent No. 14561 fails to
yield anything at all regarding Albendazole. And no extrinsic evidence had
been adduced to prove that Albendazole inheres in petitioners patent in
spite of its omission therefrom or that the meaning of the claims of the
patent embraces the same.

While petitioner concedes that the mere literal wordings of its patent
cannot establish private respondents infringement, it urges this Court to
apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes
place when a device appropriates a prior invention by incorporating its
innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way to
achieve substantially the same result. Yet again, a scrutiny of petitioners
evidence fails to convince this Court of the substantial sameness of
petitioners 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.
[19]

[20]

[21]

The doctrine of equivalents thus requires satisfaction of the functionmeans-and-result test, the patentee having the burden to show that all
three components of such equivalency test are met.
[22]

As stated early on, petitioners evidence fails to explain how

Albendazole is in every essential detail identical to methyl 5 propylthio-2benzimidazole carbamate. Apart from the fact that Albendazole is an
anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate,
nothing more is asserted and accordingly substantiated regarding the
method or means by which Albendazole weeds out parasites in animals,
thus giving no information on whether that method is substantially the same
as the manner by which petitioners compound works. The testimony of Dr.
Orinion lends no support to petitioners cause, he not having been
presented or qualified as an expert witness who has the knowledge or
expertise on the matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, it
comes into play when two or more inventions are claimed in a single
application but are of such a nature that a single patent may not be issued
for them. The applicant thus is required to divide, that is, to limit the claims
to whichever invention he may elect, whereas those inventions not elected
may be made the subject of separate applications which are called
[23]

divisional applications. What this only means is that petitioners methyl 5

propylthio-2-benzimidazole carbamate is an invention distinct from the
other inventions claimed in the original application divided out, Albendazole
being one of those other inventions. Otherwise, methyl 5 propylthio-2benzimidazole carbamate would not have been the subject of a divisional
application if a single patent could have been issued for it as well as
Albendazole.
[24]

The foregoing discussions notwithstanding, this Court does not sustain

the award of actual damages and attorneys fees in favor of private
respondent. The claimed actual damages ofP330,000.00 representing lost
profits or revenues incurred by private respondent as a result of the
issuance of the injunction against it, computed at the rate of 30% of its
allegedP100,000.00 monthly gross sales for eleven months, were
supported by the testimonies of private respondents President and
Executive Vice-President that the average monthly sale of Impregon
was P100,000.00 and that sales plummeted to zero after the issuance of
the injunction. While indemnification for actual or compensatory damages
covers not only the loss suffered (damnum emergens) but also profits
which the obligee failed to obtain (lucrum cessans or ganacias frustradas),
it is necessary to prove the actual amount of damages with a reasonable
degree of certainty based on competent proof and on the best evidence
obtainable by the injured party. The testimonies of private respondents
officers are not the competent proof or best evidence obtainable to
establish its right to actual or compensatory damages for such damages
also require presentation of documentary evidence to substantiate a claim
therefor.
[25]

[26]

[27]

[28]

In the same vein, this Court does not sustain the grant by the appellate
court of attorneys fees to private respondent anchored on Article 2208 (2)
of the Civil Code, private respondent having been allegedly forced to
litigate as a result of petitioners suit. Even if a claimant is compelled to
litigate with third persons or to incur expenses to protect its rights, still
attorneys fees may not be awarded where no sufficient showing of bad faith
could be reflected in a partys persistence in a case other than an erroneous
conviction of the righteousness of his cause. There exists no evidence on
record indicating that petitioner was moved by malice in suing private
respondent.
[29]

This Court, however, grants private respondent temperate or moderate

damages in the amount of P20,000.00 which it finds reasonable under the
circumstances, it having suffered some pecuniary loss the amount of which
cannot, from the nature of the case, be established with certainty.
[30]

WHEREFORE, the assailed decision of the Court of Appeals is hereby

AFFIRMED with MODIFICATION. The award of actual or compensatory
damages and attorneys fees to private respondent, Tryco Pharma
Corporation, is DELETED; instead, it is hereby awarded the amount
of P20,000.00 as temperate or moderate damages.
SO ORDERED.

Republic of the Philippines

Supreme Court
Manila
SECOND DIVISION
PHIL PHARMAWEALTH, INC.,
Petitioner,

- versus -

G.R. No. 167715

Present:
CARPIO, J., Chairperson,
NACHURA,
PERALTA,
ABAD, and
MENDOZA, JJ.

Promulgated:
PFIZER, INC. and PFIZER (PHIL.)
INC.,
November 17, 2010
Respondents.
x--------------------------------------------------x
DECISION
PERALTA, J.:

Before the Court is a petition for review on certiorari seeking to annul and set
aside the Resolutions dated January 18, 2005[1] and April 11, 2005[2] by the
Court of Appeals (CA) in CA-G.R. SP No. 82734.
The instant case arose from a Complaint [3] for patent infringement filed against
petitioner Phil Pharmawealth, Inc. by respondent companies, Pfizer, Inc. and
Pfizer (Phil.), Inc., with the Bureau of Legal Affairs of the Intellectual Property
Office (BLA-IPO). The Complaint alleged as follows:
xxxx
6. Pfizer is the registered owner of Philippine Letters Patent No.
21116 (the Patent) which was issued by this Honorable Office on July
16, 1987. The patent is valid until July 16, 2004. The claims of this
Patent are directed to a method of increasing the effectiveness of a
beta-lactam antibiotic in a mammalian subject, which comprises coadministering to said subject a beta-lactam antibiotic effectiveness
increasing amount of a compound of the formula IA. The scope of the
claims of the Patent extends to a combination of penicillin such as
ampicillin sodium and beta-lactam antibiotic like sulbactam sodium.
7. Patent No. 21116 thus covers ampicillin sodium/sulbactam sodium
(hereafter Sulbactam Ampicillin). Ampicillin sodium is a specific
example of the broad beta-lactam antibiotic disclosed and claimed in
the Patent. It is the compound which efficacy is being enhanced by
co-administering the same with sulbactam sodium. Sulbactam
sodium, on the other hand, is a specific compound of the formula IA
disclosed and claimed in the Patent.
8. Pfizer is marketing Sulbactam Ampicillin under the brand name
Unasyn. Pfizer's Unasyn products, which come in oral and IV
formulas, are covered by Certificates of Product Registration (CPR)
issued by the Bureau of Food and Drugs (BFAD) under the name of
complainants. The sole and exclusive distributor of Unasyn products
in the Philippines is Zuellig Pharma Corporation, pursuant to a
Distribution Services Agreement it executed with Pfizer Phils. on
January 23, 2001.
9. Sometime in January and February 2003, complainants came to
know that respondent [herein petitioner] submitted bids for the supply
of Sulbactam Ampicillin to several hospitals without the consent of
complainants and in violation of the complainants' intellectual
property rights. x x x

xxxx
10. Complainants thus wrote the above hospitals and demanded that
the latter immediately cease and desist from accepting bids for the
supply [of] Sulbactam Ampicillin or awarding the same to entities
other than complainants. Complainants, in the same letters sent
through undersigned counsel, also demanded that respondent
immediately withdraw its bids to supply Sulbactam Ampicillin.
11. In gross and evident bad faith, respondent and the hospitals named
in paragraph 9 hereof, willfully ignored complainants' just, plain and
valid demands, refused to comply therewith and continued to infringe
the Patent, all to the damage and prejudice of complainants. As
registered owner of the Patent, Pfizer is entitled to protection under
Section 76 of the IP Code.
x x x x[4]
Respondents prayed for permanent injunction, damages and the forfeiture and
impounding of the alleged infringing products. They also asked for the issuance
of a temporary restraining order and a preliminary injunction that would prevent
herein petitioner, its agents, representatives and assigns, from importing,
distributing, selling or offering the subject product for sale to any entity in the
Philippines.
In an Order[5] dated July 15, 2003 the BLA-IPO issued a preliminary injunction
which was effective for ninety days from petitioner's receipt of the said Order.

Prior to the expiration of the ninety-day period, respondents filed a Motion for
Extension of Writ of Preliminary Injunction[6] which, however, was denied by
the BLA-IPO in an Order[7] dated October 15, 2003.
Respondents filed a Motion for Reconsideration but the same was also denied
by the BLA-IPO in a Resolution[8] dated January 23, 2004.
Respondents then filed a special civil action for certiorari with the CA assailing
the October 15, 2003 and January 23, 2004 Resolutions of the BLA-IPO.
Respondents also prayed for the issuance of a preliminary mandatory injunction
for the reinstatement and extension of the writ of preliminary injunction issued
by the BLA-IPO.
While the case was pending before the CA, respondents filed a
Complaint[9] with the Regional Trial Court (RTC) of Makati City for

infringement and unfair competition with damages against herein petitioner. In

said case, respondents prayed for the issuance of a temporary restraining order
and preliminary injunction to prevent herein petitioner from importing,
distributing, selling or offering for sale sulbactam ampicillin products to any
entity in the Philippines. Respondents asked the trial court that, after trial,
judgment be rendered awarding damages in their favor and making the
injunction permanent.
On August 24, 2004, the RTC of Makati City issued an Order [10] directing the
issuance of a temporary restraining order conditioned upon respondents' filing
of a bond.
In a subsequent Order[11] dated April 6, 2005, the same RTC directed the
issuance of a writ of preliminary injunction prohibiting and restraining
[petitioner], its agents, representatives and assigns from importing, distributing
or selling Sulbactam Ampicillin products to any entity in the Philippines.
Meanwhile, on November 16, 2004, petitioner filed a Motion to Dismiss [12] the
petition filed with the CA on the ground of forum shopping, contending that the
case filed with the RTC has the same objective as the petition filed with the CA,
which is to obtain an injunction prohibiting petitioner from importing,
distributing and selling Sulbactam Ampicillin products.
On January 18, 2005, the CA issued its questioned Resolution [13] approving the
bond posted by respondents pursuant to the Resolution issued by the appellate
court on March 23, 2004 which directed the issuance of a temporary restraining
order conditioned upon the filing of a bond. On even date, the CA issued a
temporary restraining order[14] which prohibited petitioner from importing,
distributing, selling or offering for sale Sulbactam Ampicillin products to any
hospital or to any other entity in the Philippines, or from infringing Pfizer Inc.'s
Philippine Patent No. 21116 and impounding all the sales invoices and other
documents evidencing sales by [petitioner] of Sulbactam Ampicillin products.
On February 7, 2005, petitioner again filed a Motion to Dismiss[15] the case for
being moot and academic, contending that respondents' patent had already
lapsed. In the same manner, petitioner also moved for the reconsideration of the
temporary restraining order issued by the CA on the same basis that the patent
right sought to be protected has been extinguished due to the lapse of the patent

license and on the ground that the CA has no jurisdiction to review the order of
the BLA-IPO as said jurisdiction is vested by law in the Office of the Director
General of the IPO.
On April 11, 2005, the CA rendered its presently assailed Resolution denying
the Motion to Dismiss, dated November 16, 2004, and the motion for
reconsideration, as well as Motion to Dismiss, both dated February 7, 2005.
Hence, the present petition raising the following issues:
a) Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the
Director of Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two
seemingly different causes of action and yet pray for the same relief?
[16]

In the first issue raised, petitioner argues that respondents' exclusive right to
monopolize the subject matter of the patent exists only within the term of the
patent. Petitioner claims that since respondents' patent expired on July 16, 2004,
the latter no longer possess any right of monopoly and, as such, there is no more
basis for the issuance of a restraining order or injunction against petitioner
insofar as the disputed patent is concerned.
The Court agrees.
Section 37 of Republic Act No. (RA) 165,[17] which was the governing law at
the time of the issuance of respondents' patent, provides:
Section 37. Rights 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 term of
the patent; and such making, using, or selling by any person without
the authorization of the patentee constitutes infringement of the
patent.[18]

It is clear from the above-quoted provision of law that the exclusive right of a
patentee to make, use and sell a patented product, article or process exists only
during the term of the patent. In the instant case, Philippine Letters Patent No.
21116, which was the basis of respondents in filing their complaint with the
BLA-IPO, was issued on July 16, 1987. This fact was admitted by respondents
themselves in their complaint. They also admitted that the validity of the said
patent is until July 16, 2004, which is in conformity with Section 21 of RA 165,
providing that the term of a patent shall be seventeen (17) years from the date of
issuance thereof. Section 4, Rule 129 of the Rules of Court provides that an
admission, verbal or written, made by a party in the course of the proceedings in
the same case, does not require proof and that the admission may be
contradicted only by showing that it was made through palpable mistake or that
no such admission was made. In the present case, there is no dispute as to
respondents' admission that the term of their patent expired on July 16, 2004.
Neither is there evidence to show that their admission was made through
palpable mistake. Hence, contrary to the pronouncement of the CA, there is no
longer any need to present evidence on the issue of expiration of respondents'
patent.
On the basis of the foregoing, the Court agrees with petitioner that after July 16,
2004, respondents no longer possess the exclusive right to make, use and sell
the articles or products covered by Philippine Letters Patent No. 21116.
Section 3, Rule 58, of the Rules of Court lays down the requirements for the
issuance of a writ of preliminary injunction, viz:
(a) That the applicant is entitled to the relief demanded, and the
whole or part of such relief consists in restraining the commission or
continuance of the acts complained of, or in requiring the
performance of an act or acts, either for a limited period or
perpetually;
(b) That the commission, continuance or non-performance of
the act or acts complained of during the litigation would probably
work injustice to the applicant; or
(c) That a party, court, or agency or a person is doing,
threatening, or attempting to do, or is procuring or suffering to be
done, some act or acts probably in violation of the rights of the

applicant respecting the subject of the action or proceeding, and

tending to render the judgment ineffectual.

In this connection, pertinent portions of Section 5, Rule 58 of the same Rules

provide that if the matter is of extreme urgency and the applicant will suffer
grave injustice and irreparable injury, a temporary restraining order may be
issued ex parte.
From the foregoing, it can be inferred that two requisites must exist to warrant
the issuance of an injunctive relief, namely: (1) the existence of a clear and
unmistakable right that must be protected; and (2) an urgent and paramount
necessity for the writ to prevent serious damage.[19]
In the instant case, it is clear that when the CA issued its January 18, 2005
Resolution approving the bond filed by respondents, the latter no longer had a
right that must be protected, considering that Philippine Letters Patent No.
21116 which was issued to them already expired on July 16, 2004. Hence, the
issuance by the CA of a temporary restraining order in favor of the respondents
is not proper.
In fact, the CA should have granted petitioner's motion to dismiss the petition
for certiorari filed before it as the only issue raised therein is the propriety of
extending the writ of preliminary injunction issued by the BLA-IPO. Since the
patent which was the basis for issuing the injunction, was no longer valid, any
issue as to the propriety of extending the life of the injunction was already
rendered moot and academic.
As to the second issue raised, the Court, is not persuaded by petitioner's
argument that, pursuant to the doctrine of primary jurisdiction, the Director
General of the IPO and not the CA has jurisdiction to review the questioned
Orders of the Director of the BLA-IPO.
It is true that under Section 7(b) of RA 8293, otherwise known as
the Intellectual Property Code of the Philippines, which is the presently
prevailing law, the Director General of the IPO exercises exclusive appellate
jurisdiction over all decisions rendered by the Director of the BLA-IPO.
However, what is being questioned before the CA is not a decision, but an

interlocutory order of the BLA-IPO denying respondents' motion to extend the

life of the preliminary injunction issued in their favor.
RA 8293 is silent with respect to any remedy available to litigants who intend to
question an interlocutory order issued by the BLA-IPO. Moreover, Section 1(c),
Rule 14 of the Rules and Regulations on Administrative Complaints for
Violation of Laws Involving Intellectual Property Rights simply provides that
interlocutory orders shall not be appealable. The said Rules and Regulations do
not prescribe a procedure within the administrative machinery to be followed in
assailing orders issued by the BLA-IPO pending final resolution of a case filed
with them. Hence, in the absence of such a remedy, the provisions of the Rules
of Court shall apply in a suppletory manner, as provided under Section 3, Rule 1
of the same Rules and Regulations. Hence, in the present case, respondents
correctly resorted to the filing of a special civil action for certiorari with the CA
to question the assailed Orders of the BLA-IPO, as they cannot appeal
therefrom and they have no other plain, speedy and adequate remedy in the
ordinary course of law. This is consistent with Sections 1 [20] and 4,[21] Rule 65 of
the Rules of Court, as amended.
In the first place, respondents' act of filing their complaint originally with the
BLA-IPO is already in consonance with the doctrine of primary jurisdiction.
This Court has held that:
[i]n cases involving specialized disputes, the practice has been to refer
the same to an administrative agency of special competence in
observance of the doctrine of primary jurisdiction. The Court has
ratiocinated that it cannot or will not determine a controversy
involving a question which is within the jurisdiction of the
administrative tribunal prior to the resolution of that question by the
administrative tribunal, where the question demands the exercise of
sound administrative discretion requiring the special knowledge,
experience and services of the administrative tribunal to determine
technical and intricate matters of fact, and a uniformity of ruling is
essential to comply with the premises of the regulatory statute
administered. The objective of the doctrine of primary jurisdiction is
to guide a court in determining whether it should refrain from
exercising its jurisdiction until after an administrative agency has
determined some question or some aspect of some question arising in
the proceeding before the court. It applies where the claim is
originally cognizable in the courts and comes into play whenever
enforcement of the claim requires the resolution of issues which,

under a regulatory scheme, has been placed within the special

competence of an administrative body; in such case, the judicial
process is suspended pending referral of such issues to the
administrative body for its view.[22]

Based on the foregoing, the Court finds that respondents' initial filing of their
complaint with the BLA-IPO, instead of the regular courts, is in keeping with
the doctrine of primary jurisdiction owing to the fact that the determination of
the basic issue of whether petitioner violated respondents' patent rights requires
the exercise by the IPO of sound administrative discretion which is based on the
agency's special competence, knowledge and experience.
However, the propriety of extending the life of the writ of preliminary
injunction issued by the BLA-IPO in the exercise of its quasi-judicial power is
no longer a matter that falls within the jurisdiction of the said administrative
agency, particularly that of its Director General. The resolution of this issue
which was raised before the CA does not demand the exercise by the IPO of
sound administrative discretion requiring special knowledge, experience and
services in determining technical and intricate matters of fact. It is settled that
one of the exceptions to the doctrine of primary jurisdiction is where the
question involved is purely legal and will ultimately have to be decided by the
courts of justice.[23] This is the case with respect to the issue raised in the
petition filed with the CA.
Moreover, as discussed earlier, RA 8293 and its implementing rules and
regulations do not provide for a procedural remedy to question interlocutory
orders issued by the BLA-IPO. In this regard, it bears to reiterate that the
judicial power of the courts, as provided for under the Constitution, includes the
authority of the courts to determine in an appropriate action the validity of the
acts of the political departments.[24] Judicial power also includes the duty of the
courts of justice to settle actual controversies involving rights which are legally
demandable and enforceable, and to determine whether or not there has been a
grave abuse of discretion amounting to lack or excess of jurisdiction on the part
of any branch or instrumentality of the Government. [25] Hence, the CA, and not
the IPO Director General, has jurisdiction to determine whether the BLA-IPO
committed grave abuse of discretion in denying respondents' motion to extend
the effectivity of the writ of preliminary injunction which the said office earlier
issued.

Lastly, petitioner avers that respondents are guilty of forum shopping for having
filed separate actions before the IPO and the RTC praying for the same relief.
The Court agrees.
Forum shopping is defined as the act of a party against whom an adverse
judgment has been rendered in one forum, of seeking another (and possibly
favorable) opinion in another forum (other than by appeal or the special civil
action of certiorari), or the institution of two (2) or more actions or proceedings
grounded on the same cause on the supposition that one or the other court would
make a favorable disposition.[26]
The elements of forum shopping are: (a) identity of parties, or at least such
parties that represent the same interests in both actions; (b) identity of rights
asserted and reliefs prayed for, the reliefs being founded on the same facts; (c)
identity of the two preceding particulars, such that any judgment rendered in the
other action will, regardless of which party is successful, amount to res
judicata in the action under consideration.[27]
There is no question as to the identity of parties in the complaints filed with the
IPO and the RTC.
Respondents argue that they cannot be held guilty of forum shopping because
their complaints are based on different causes of action as shown by the fact that
the said complaints are founded on violations of different patents.
The Court is not persuaded.
Section 2, Rule 2 of the Rules of Court defines a cause of action as the act or
omission by which a party violates a right of another. In the instant case,
respondents' cause of action in their complaint filed with the IPO is the alleged
act of petitioner in importing, distributing, selling or offering for sale Sulbactam
Ampicillin products, acts that are supposedly violative of respondents' right to
the exclusive sale of the said products which are covered by the latter's patent.
However, a careful reading of the complaint filed with the RTC of Makati City
would show that respondents have the same cause of action as in their
complaint filed with the IPO. They claim that they have the exclusive right to
make, use and sell Sulbactam Ampicillin products and that petitioner violated
this right. Thus, it does not matter that the patents upon which the complaints

were based are different. The fact remains that in both complaints the rights
violated and the acts violative of such rights are identical.
In fact, respondents seek substantially the same reliefs in their separate
complaints with the IPO and the RTC for the purpose of accomplishing the
same objective.
It is settled by this Court in several cases that the filing by a party of two
apparently different actions but with the same objective constitutes forum
shopping.[28] The Court discussed this species of forum shopping as follows:
Very simply stated, the original complaint in the court a
quo which gave rise to the instant petition was filed by the buyer
(herein private respondent and his predecessors-in-interest)
against the seller (herein petitioners) to enforce the alleged
perfected sale of real estate. On the other hand, the complaint in
the Second Case seeks to declare such purported sale involving
the same real property as unenforceable as against the Bank,
which is the petitioner herein. In other words, in the Second
Case, the majority stockholders, in representation of the Bank,
are seeking to accomplish what the Bank itself failed to do in the
original case in the trial court. In brief, the objective or the
relief being sought, though worded differently, is the same,
namely, to enable the petitioner Bank to escape from the
obligation to sell the property to respondent.[29]

In Danville Maritime, Inc. v. Commission on Audit,[30] the Court ruled as

follows:
In the attempt to make the two actions appear to be different,
petitioner impleaded different respondents therein PNOC in the case
before the lower court and the COA in the case before this Court and
sought what seems to be different reliefs. Petitioner asks this Court to
set aside the questioned letter-directive of the COA dated October 10,
1988 and to direct said body to approve the Memorandum of
Agreement entered into by and between the PNOC and petitioner,
while in the complaint before the lower court petitioner seeks to
enjoin the PNOC from conducting a rebidding and from selling to
other parties the vessel T/T Andres Bonifacio, and for an extension of
time for it to comply with the paragraph 1 of the memorandum of
agreement and damages.One can see that although the relief prayed
for in the two (2) actions are ostensibly different, the ultimate

objective in both actions is the same, that is, the approval of the
sale of vessel in favor of petitioner, and to overturn the letter
directive of the COA of October 10, 1988 disapproving the sale.[31]

In the instant case, the prayer of respondents in their complaint filed with the
IPO is as follows:
A. Immediately upon the filing of this action, issue an ex parte order
(a) temporarily restraining respondent, its agents, representatives and
assigns from importing, distributing, selling or offering for sale
Sulbactam Ampicillin products to the hospitals named in paragraph 9
of this Complaint or to any other entity in the Philippines, or from
otherwise infringing Pfizer Inc.'s Philippine Patent No. 21116; and (b)
impounding all the sales invoices and other documents evidencing
sales by respondent of Sulbactam Ampicillin products.
B. After hearing, issue a writ of preliminary injunction enjoining
respondent, its agents, representatives and assigns from importing,
distributing, selling or offering for sale Sulbactam Ampicillin
products to the hospitals named in paragraph 9 of the Complaint or to
any other entity in the Philippines, or from otherwise infringing Pfizer
Inc.'s Philippine Patent No. 21116; and
C. After trial, render judgment:
(i)

declaring that respondent has infringed Pfizer

Inc.'s Philippine Patent No. 21116 and that
respondent has no right whatsoever over
complainant's patent;

(ii) ordering respondent to pay complainants the following amounts:

(a) at least P1,000,000.00 as actual damages;
(b) P700,000.00 as attorney's fees and litigation expenses;
(d) P1,000,000.00 as exemplary damages; and
(d) costs of this suit.
(iii) ordering the condemnation, seizure or forfeiture
of respondent's infringing goods or products, wherever
they may be found, including the materials and
implements used in the commission of infringement, to
be disposed of in such manner as may be deemed
appropriate by this Honorable Office; and
(iv) making the injunction permanent.[32]

In an almost identical manner, respondents prayed for the following in their

complaint filed with the RTC:
(a) Immediately upon the filing of this action, issue an ex
parte order:
(1) temporarily
restraining
Pharmawealth,
its agents,
representatives and assigns from importing, distributing,
selling or offering for sale infringing sulbactam
ampicillin products
to
various
government
and
private hospitals or to any other entity in the Philippines, or
from otherwise infringing Pfizer Inc.'s Philippine Patent No.
26810.
(2) impounding all the sales invoices and other
documents
evidencing
sales
by
pharmawealth of sulbactam ampicillin
products; and
(3) disposing of the infringing goods outside the
channels of commerce.
(b) After hearing, issue a writ of preliminary injunction:
(1) enjoining
Pharmawealth,
its
agents,
representatives
and
assigns
from
importing, distributing, selling or offering
for sale infringing sulbactam ampicillin
products to various government hospitals
or to any other entity in the Philippines, or
from otherwise infringing Patent No.
26810;
(2) impounding all the sales invoices and
other documents
evidencing
sales
by Pharmawealth
of
sulbactam
ampicillin products; and
(3) disposing of the infringing goods outside the channels of
commerce.
(c) After trial, render judgment:

(1) finding
Pharmawealth
to
infringed Patent
No.
26810
declaring Pharmawealth to have no
whatsoever over plaintiff's patent;

have
and
right

(2) ordering Pharmawealth to pay plaintiffs

the following amounts:
(i) at least P3,000,000.00 as actual
damages;
(ii) P500,000.00 as attorney's
fees and P1,000,000.00
as
litigation expenses;
(iii) P3,000,000.00 as exemplary damages;
and
(iv) costs of this suit.
(3) ordering the condemnation, seizure or
forfeiture of Pharmawealth's infringing
goods or products, wherever they may be
found, including the materials and
implements used in the commission of
infringement, to be disposed of in such
manner as may be deemed appropriate by
this Honorable Court; and
(4) making the injunction permanent.[33]

It is clear from the foregoing that the ultimate objective which respondents seek
to achieve in their separate complaints filed with the RTC and the IPO, is to ask
for damages for the alleged violation of their right to exclusively sell Sulbactam
Ampicillin products and to permanently prevent or prohibit petitioner from
selling said products to any entity.Owing to the substantial identity of parties,
reliefs and issues in the IPO and RTC cases, a decision in one case will
necessarily amount to res judicata in the other action.
It bears to reiterate that what is truly important to consider in determining
whether forum shopping exists or not is the vexation caused the courts and
parties-litigant by a party who asks different courts and/or administrative
agencies to rule on the same or related causes and/or to grant the same or
substantially the same reliefs, in the process creating the possibility of
conflicting decisions being rendered by the different fora upon the same issue.
[34]

Thus, the Court agrees with petitioner that respondents are indeed guilty of
forum shopping.
Jurisprudence holds that if the forum shopping is not considered willful and
deliberate, the subsequent case shall be dismissed without prejudice, on the
ground of either litis pendentia or res judicata.[35] However, if the forum
shopping is willful and deliberate, both (or all, if there are more than two)
actions shall be dismissed with prejudice.[36] In the present case, the Court finds
that respondents did not deliberately violate the rule on non-forum shopping.
Respondents may not be totally blamed for erroneously believing that they can
file separate actions simply on the basis of different patents. Moreover, in the
suit filed with the RTC of Makati City, respondents were candid enough to
inform the trial court of the pendency of the complaint filed with the BLA-IPO
as well as the petition for certiorari filed with the CA. On these bases, only
Civil Case No. 04-754 should be dismissed on the ground of litis pendentia.
WHEREFORE, the petition is PARTLY GRANTED. The assailed
Resolutions of the Court of Appeals, dated January 18, 2005 and April 11, 2005,
in CA-G.R. No. 82734, areREVERSED and SET ASIDE. The petition
for certiorari filed with the Court of Appeals is DISMISSED for being moot
and academic.
Civil Case No. 04-754, filed with the Regional Trial Court of Makati City,
Branch 138, is likewise DISMISSED on the ground of litis pendentia.
SO ORDERED.

G.R. No. 97343 September 13, 1993

PASCUAL
GODINES, petitioner,
vs.
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO
ENTERPRISES, INC.,respondents.
Jesus S. Anonat for petitioner.
Arturo M. Alinio for private respondent.
ROMERO, J.:
Through this petition for review in certiorari of a decision of the Court of Appeals affirming the
decision of the trial court, petitioner Pascual Godines seeks to reverse the adverse decision of
the Court a quo that he was liable for infringement of patent and unfair competition. The
dispositive portion of the assailed decision is hereby quoted to wit:
WHEREFORE, with the elimination of the award for attorney's fees, the judgment
appealed from is hereby AFFIRMED, with costs against appellant. 1
The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent
Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor
or power tiller, the main components of which are the following: "(1) a vacuumatic house float; (2)
a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a protective water
covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an
engine foundation on the top midportion of the vacuumatic housing float to which the main
engine drive is detachedly installed; (8) a frontal frame extension above the quarter circularly
shaped water covering hold (sic) in place the transmission case; (9) a V-belt connection to the
engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on
the engine foundation." 2 The patented hand tractor works in the following manner: "the engine drives
the transmission gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives the
transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt drives
the pulley attached to the transmission gear which in turn drives the shaft where the paddy wheels are
attached. The operator handles the hand tractor through a handle which is inclined upwardly and
supported by a pair of substanding pipes and reinforced by a U-shaped G.I. pipe at the V-shaped
end." 3
The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private
respondent, from Magdalena Villaruz, its chairman and president, by virtue of a Deed of
Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused
the publication of the patent in Bulletin Today, a newspaper of general circulation.
In accordance with the patent, private respondent manufactured and sold the patented power
tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered a decline of more
than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it discovered
that power tillers similar to those patented by private respondent were being manufactured and
sold by petitioner herein. Consequently, private respondent notified Pascual Godines about the
existing patent and demanded that the latter stop selling and manufacturing similar power tillers.

Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the Regional
Trial Court a complaint for infringement of patent and unfair competition.
After trial, the court held Pascual Godines liable for infringement of patent and unfair competition.
The dispositive portion of the decision reads as follows:
WHEREFORE, premises considered, JUDGMENT is hereby rendered in favor of
the plaintiff SV-Agro Industries Enterprises, Inc., and against defendant Pascual
Godines:
1. Declaring the writ of preliminary injunction issued by this Court against
defendant as permanent;
2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand
Pesos (P50,000.00) as damages to its business reputation and goodwill, plus the
further sum of Eighty Thousand Pesos (P80,000.00) for unrealized profits during
the period defendant was manufacturing and selling copied or imitation floating
power tiller;
3. Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand
Pesos (P8,000.00) as reimbursement of attorney's fees and other expenses of
litigation; and to pay the costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before the
trial and appellate courts, to wit: that he was not engaged in the manufacture and sale of the
power tillers as he made them only upon the special order of his customers who gave their own
specifications; hence, he could not be liable for infringement of patent and unfair competition;
and that those made by him were different from those being manufactured and sold by private
respondent.
We find no merit in his arguments. The question of whether petitioner was manufacturing and
selling power tillers is a question of fact better addressed to the lower courts. In dismissing the
first argument of petitioner herein, the Court of Appeals quoted the findings of the court, to wit:
It is the contention of defendant that he did not manufacture or make imitations or
copies of plaintiff's turtle power tiller as what he merely did was to fabricate his
floating power tiller upon specifications and designs of those who ordered them.
However, this contention appears untenable in the light of the following
circumstances: 1) he admits in his Answer that he has been manufacturing power
tillers or hand tractors, selling and distributing them long before plaintiff started
selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental,
meaning that defendant is principally a manufacturer of power tillers, not upon
specification and design of buyers, but upon his own specification and design; 2)
it would be unbelievable that defendant would fabricate power tillers similar to the
turtle power tillers of plaintiff upon specifications of buyers without requiring a job
order where the specification and designs of those ordered are specified. No

document was (sic) ever been presented showing such job orders, and it is rather
unusual for defendant to manufacture something without the specification and
designs, considering that he is an engineer by profession and proprietor of the
Ozamis Engineering shop. On the other hand, it is also highly unusual for buyers
to order the fabrication of a power tiller or hand tractor and allow defendant to
manufacture them merely based on their verbal instructions. This is contrary to
the usual business and manufacturing practice. This is not only time consuming,
but costly because it involves a trial and error method, repeat jobs and material
wastage. Defendant judicially admitted two (2) units of the turtle power tiller sold
by him to Policarpio Berondo. 5
Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of the
Supreme Court in cases brought to it from the Court of Appeals in a petition for certiorari under
Rule 45 of the Rules of Court is limited to the review of errors of law, and that said appellate
court's findings of fact are conclusive upon this Court." 6
The fact that petitioner herein manufactured and sold power tillers without patentee's authority
has been established by the courts despite petitioner's claims to the contrary.
The question now arises: Did petitioner's product infringe upon the patent of private respondent?
Tests have been established to determine infringement. These are (a) literal infringement; and (b)
the doctrine of equivalents. 7 In using literal infringement as a test, ". . . resort must be had, in the first
instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is
made out and that is the end of it." 8 To determine whether the particular item falls within the literal
meaning of the patent claims, the court must juxtapose the claims of the patent and the accused
product within the overall context of the claims and specifications, to determine whether there is exact
identity of all material elements. 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 that of the turtle power tiller of the
plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power
tillers of the defendant and the turtle power tiller of the plaintiff are virtually the
same. Defendant admitted to the Court that two (2) of the power inspected on
March 12, 1984, were manufactured and sold by him (see TSN, March 12, 1984,
p. 7). The three power tillers were placed alongside with each other. At the center
was the turtle power tiller of plaintiff, and on both sides thereof were the floating
power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs
of the same power tillers (front, side, top and back views for purposes of
comparison (see Exhibits H-4 to H-28). Viewed from any perspective or angle,
the power tiller of the defendant is identical and similar to that of the turtle power
tiller of plaintiff in form, configuration, design and appearance. The parts or
components thereof are virtually the same. Both have the circularly-shaped
vacuumatic housing float, a paddy in front, a protective water covering, a
transmission box housing the transmission gears, a handle which is V-shaped
and inclined upwardly, attached to the side of the vacuumatic housing float and
supported by the upstanding G.I. pipes and an engine base at the top midportion
of the vacuumatic housing float to which the engine drive may be attached. In

operation, the floating power tiller of the defendant operates also in similar
manner as the turtle power tiller of plaintiff. This was admitted by the defendant
himself in court that they are operating on the same principles. (TSN, August 19,
1987, p. 13) 10
Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller.
The patent issued by the Patent Office referred to a "farm implement but more particularly to a
turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place,
the operating handle, the harrow housing with its operating handle and the paddy wheel
protective covering." 11 It appears from the foregoing observation of the trial court that these claims of
the patent and the features of the patented utility model were copied by petitioner. We are compelled
to arrive at no other conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from private respondent's is that of a
drowning man clutching at straws.
Recognizing that the logical fallback position of one in the place of defendant is to aver that his
product is different from the patented one, courts have adopted the doctrine of equivalents which
recognizes that minor modifications in a patented invention are sufficient to put the item beyond
the scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also occurs
when a device appropriates a prior invention by incorporating its innovative concept and, albeit with
some modification and change, performs substantially the same function in substantially the same
way to achieve substantially the same result." 13 The reason for the doctrine of equivalents is that to
permit the imitation of a patented invention which does not copy any literal detail would be to convert
the protection of the patent grant into a hollow and useless thing. Such imitation would leave room for
indeed encourage the unscrupulous copyist to make unimportant and insubstantial changes and
substitutions in the patent which, though adding nothing, would be enough to take the copied matter
outside the claim, and hence outside the reach of the law. 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 actually involved in the making of the floating
power tillers of defendant tried to explain the difference between the floating
power tillers made by the defendant. But a careful examination between the two
power tillers will show that they will operate on the same fundamental principles.
And, according to establish jurisprudence, in infringement of patent, similarities or
differences are to be determined, not by the names of things, but in the light of
what elements do, and substantial, rather than technical, identity in the test. More
specifically, it is necessary and sufficient to constitute equivalency that the same
function can be performed in substantially the same way or manner, or by the
same or substantially the same, principle or mode of operation; but where these
tests are satisfied, mere differences of form or name are immaterial. . . . 15
It also stated:
To establish an infringement, it is not essential to show that the defendant
adopted the device or process in every particular; Proof of an adoption of the
substance of the thing will be sufficient. "In one sense," said Justice Brown, "it
may be said that no device can be adjudged an infringement that does not

substantially correspond with the patent. But another construction, which would
limit these words to exact mechanism described in the patent, would be so
obviously unjust that no court could be expected to adopt it. . . .
The law will protect a patentee against imitation of his patent by other forms and
proportions. If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even though they
differ in name, form, or shape. 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 xxx
In particular, and without in any way limiting the scope of unfair competition, the
following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general appearance
of goods of another manufacturer or dealer, either as to the goods themselves or
in the wrapping of the packages in which they are contained, or the devices or
words thereon, or in any other feature of their appearance, which would be likely
to influence purchasers that the goods offered are those of a manufacturer or
dealer other than the actual manufacturer or dealer, or who otherwise clothes the
goods with such appearance as shall deceive the public and defraud another of
his legitimate trade. . . .
xxx xxx xxx
Considering the foregoing, we find no reversible error in the decision of the Court of Appeals
affirming with modification the decision of the trial court.
WHEREFORE, premises considered, the decision of the Court of Appeals is hereby AFFIRMED
and this petition DENIED for lack of merit.
Bidin, Melo and Vitug, JJ., concur.
Feliciano, J., is on leave.

G.R. L-45101 November 28, 1986

ROSARIO
C.
MAGUAN
(formerly
ROSARIO
C.
TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.
Ambrosio Padilla Law Offices for petitioner.

PARAS, J.:p
Submitted on December 9, 1977 for Our decision is this petition for review on certiorari of
the two Resolutions of the Court of Appeals, the first dated July 6, 1976, setting aside its
Decision of February 16, 1976 in CA-G.R. No. SP-04706, titled "SUSANA LUCHAN v. Hon.
HONRADO, et al." wherein it ruled for the dismissal of the petition for lack of merit and at
the same time nullifying the writ of preliminary injunction it had previously issued; and
the second, dated November 4, 1976, denying the motion for reconsideration of the first
resolution above-mentioned.
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING"
while private respondent is likewise doing business under the firm name and style of
"SUSANA LUCHAN POWDER PUFF MANUFACTURING."
It is undisputed that petitioner is a patent holder of powder puff namely:
1. UM-423 (extended and/or renewed under Extension No.
UM-109 for a period of 5 years from October 6, 1971)
2. UM-450 (extended and/or renewed under Extension No.
UM110 for a period of 5 years from January 26, 1972)
3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition,
Rollo, pp. 6-7).
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private
respondent that the powder puffs the latter is manufacturing and selling to various
enterprises particularly those in the cosmetics industry, resemble Identical or
substantially Identical powder puffs of which the former is a patent holder under
Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility Model No.
1184; petitioner explained such production and sale constitute infringement of said
patents and therefore its immediate discontinuance is demanded, otherwise it will be
compelled to take judicial action. (Rollo, pp. 7-8).
Private respondent replied stating that her products are different and countered that
petitioner's patents are void because the utility models applied for were not new and
patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author. (Taken from allegations in the
Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private respondent assailed the validity
of the patents involved and filed with the Philippine Patent Office petitions for cancellation

of (1) Utility Model Letter Patent Extension No. UM-109 (Inter Partes Case No. 838, Susana
Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case
No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No.
UM-110 (Inter Partes Case No. 840, Susana Luchan v. Rosario C. Tan. (Taken from
allegations in the Answer, par. 10, Rollo, pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with
injunction and preliminary injunction against private respondent with the then Court of
First Instance of Rizal, Pasig Branch, docketed as Civil Case No. 19908, for infringing the
aforesaid letters patent, and prayed, among others, that a writ of preliminary injunction be
immediately issued (Complaint, Rollo, p. 90).
In her answer, private respondent alleged that the products she is manufacturing and
offering for sale are not Identical, or even only substantially Identical to the products
covered by petitioner's patents and, by way of affirmative defenses, further alleged that
petitioner's patents in question are void on the following grounds:
(1) at the time of filing of application for the patents involved,
the utility models applied for were not new and patentable
under Sec. 55 of R.A. 165, as amended by R.A. 864; and
(2) the person to whom the patents were issued was not the
true and actual author of the utility models applied for, and
neither did she derive her rights from any true and actual
author of these utility models.
for the following reasons:
(a) since years prior to the filing of applications for the
patents involved, powder puffs of the kind applied for were
then already existing and publicly being sold in the market;
both in the Philippines and abroad; and
(b) applicant's claims in her applications, of "construction"
or process of manufacturing the utility models applied for,
with respect to UM-423 and UM-450, were but a complicated
and impractical version of an old, simple one which has been
well known to the cosmetics industry since years previous to
her filing of applications, and which belonged to no one
except to the general public; and with respect to UM1184; her
claim in her application of a unitary powder puff, was but an
limitation of a product well known to the cosmetics industry
since years previous to her firing of application, and which
belonged to no one except to the general public; (Answer,
Rollo, pp. 93-94).
On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125) granting
the preliminary injunction prayed for by petitioner. Consequently, the corresponding writ
was subsequently issued (Annex "K-1", Rollo, p. 131) enjoining the herein private
respondent (then defendant) and all other persons employed by her, her agents, servants

and employees from directly or indirectly manufacturing, making or causing to be made,

selling or causing to be sold, or using or causing to be used in accordance with, or
embodying the utility models of the Philippine Patent Office Utility Model Letters Patent
Nos. 423 (Extension No. UM-109), No. 450 (Extension No. UM-110), and Utility Model No.
1184 or from infringement upon or violating said letters patent in any way whatsoever
(Annex " K-1 ", Rollo, p. 131).
Private respondent questioned the propriety of the trial court's issuance of the Writ of
Preliminary Injunction arguing that since there is still a pending cancellation proceedings
before the Philippine Patent Office concerning petitioner's patents, such cannot be the
basis for preliminary injunction (Motion for Reconsideration, Rollo, p. 132).
In an Order dated September 11, 1975, the trial court denied private respondent's motion
for reconsideration (Annex "N", Rollo, p. 142).
In challenging these Orders private respondent filed a petition for certiorari with the
respondent court on September 29, 1975 (Annex "D", Rollo, pp. 148-171) reiterating
among other things the invalidity of petitioner's patents and prayed that the trial court be
restrained from enforcing or continuing to enforce the following:
(1) Order dated September 18, 1974, granting the preliminary
injunction;
(2) Writ of preliminary injunction dated September 18, 1974;
and
(3) Order dated September 11, 1974 denying petitioner's
motion petition for reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent
Court of Appeals as follows:
NOW, THEREFORE, you, respondents, and/or any person/persons acting on
your stead, are hereby ENJOINED to RESTRAIN from enforcing or
continuing to enforce, the proceedings complained of in the petition to wit:
1) Order dated September 18, 1974, granting the preliminary injunction; 2)
Writ of Preliminary Injunction dated September 18, 1974; and Order dated
September 11, 1975, denying petitioner's motion for reconsideration, all
issued in connection with Civil Case No. 19908, UNTIL FURTHER ORDERS
FROM THIS COURT. (Annex "P", Rollo, p. 1.73)
On February 16, 1976, respondent court promulgated a decision the dispositive portion of
which reads:
WHEREFORE, finding no merit in the herein petition, the same is hereby
dismissed and the preliminary injunction previously issued by this Court is
hereby set aside, with costs.
SO ORDERED. (CA Decision, Rollo, p. 189).

ln said decision respondent court stated that in disposing of the petition it tackled only
the issue of whether the court a quo acted with grave abuse of discretion in issuing the
challenged orders. It made clear the question of whether the patents have been infringed
or not was not determined considering the court a quo has yet to decide the case on the
merits (Ibid., p. 186).
Feeling aggrieved, private respondent moved to reconsider the afore-mentioned Decision
based on the following grounds:
I
THAT THIS HONORABLE COURT ERRED IN NOT
APPRECIATING THE EXISTENCE OF A FAIR QUESTION OF
INVALIDITY OF PRIVATE RESPONDENT'S PATENTS.
II
THAT THIS HONORABLE COURT ERRED IN NOT REJECTING
THE THEORY OF RESPONDENT JUDGE THAT HE HAS NO
JURISDICTION TO INVALIDATE THE PATENTS UPON
GROUND OF LACK OF NOVELTY OF THE PRODUCTS
PATENTED. (Motion for Reconsideration, Rollo, p. 190).
Reviewing on reconsideration, respondent court gave weight to private respondent's
allegation that the latter's products are not identical or even only substantially identical to
the products covered by petitioner's patents. Said court noticed that contrary to the lower
courts position that the court a quohad no jurisdiction to determine the question of
invalidity of the patents, Section 45 and 46 of the Patent Law allow the court to make a
finding on the validity or invalidity of patents and in the event there exists a fair question
of its invalidity, the situation calls for a denial of the writ of preliminary injunction pending
the evaluation of the evidence presented (Rollo, pp. 218-226). Thus, finding the lower
court's position to have been opposed to Patent Law, respondent court considered it a
grave abuse of discretion when the court a quo issued the writ being questioned without
looking into the defenses alleged by herein private respondent. Further, it considered the
remedy of appeal, under the circumstances, to be inadequate.
Thus, on July 6, 1976, respondent court made a complete turnabout from its original
decision and promulgated a Resolution, the dispositive portion of which reads:
WHEREFORE, our decision is hereby set aside. The writ of certiorari is
ordered issued. Accordingly, the challenged orders, Exhibit H and H-1 and
the order denying the motion for reconsideration (Annex "K", Petition), are
hereby set aside. The writ of preliminary injunction previously ordered by
this Court and ordered lifted by the Decision now being set aside is hereby
reinstated and made permanent. Without pronouncement as to costs.
SO ORDERED. (CA Resolution, Rollo, p. 226).
In a Resolution dated November 4, 1976, respondent court, not persuaded by the grounds
embodied in the motion for reconsideration filed by herein petitioner (Annex "V ", Rollo, p.

227), denied the same for lack of merit, thereby maintaining the same stand it took in its
July 6, 1976 Resolution (Rollo, p. 281). Hence, this petition.
On December 3, 1976, without giving due course to the petition, this Court required
respondent to file her Comment (Rollo, p. 290) which was filed on December 16, 1976
(Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and on May 30,
1977, the petition was given due course (Rollo, p. 345). Petitioner filed her brief on July 14,
1977 (Rollo, p. 351) while private respondent filed her brief on August 25, 1977 (Rollo, p.
359). Thereafter, petitioner having failed to file reply brief, the Court resolved to declare
the case submitted for decision on December 9, 1977 (Rollo, p. 359).
The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16) may be
reduced to three main issues:
(1) Whether or not in an action for infringement the Court a
quo had jurisdiction to determine the invalidity of the patents
at issue which invalidity was still pending consideration in
the patent office.
(2) Whether or not the Court a quo committed grave abuse of
discretion in the issuance of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
The first issue has been laid to rest in a number of cases where 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." (Vargas v. F.M. Yaptico & Co. 40 Phil.
199 [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v. Kosuyana 59 Phil.
207 [1933]).
Under the present Patent Law, there is even less reason to doubt that the trial court has
jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive
right to make, use and sell the patented article or product and the making, using, or
selling by any person without the authorization of the patentee constitutes infringement of
the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may
bring an action before the proper CFI now (RTC) and to secure an injunction for the
protection of his rights (Sec. 42, R.A. 165). 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 ... issue an order cancelling the patent or the claims found 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. (Rollo, pp. 221-222).
II.
The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form, there is
created a prima faciepresumption of its correctness and validity. The decision of the

Commissioner (now Director) of Patent in granting the patent is presumed to be correct.

The burden of going forward with the evidence (burden of evidence) then shifts to the
defendant to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced by private
respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five
witnesses presented by private respondents before the Court of First Instance before the
Order of preliminary injunction was issued as well as those presented by the petitioner,
respondent Court of Appeals was satisfied that there is a prima facie showing of a fair
question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed
out by said appellate court said evidence appeared not to have been considered at all by
the court a quo for alleged lack of jurisdiction, on the mistaken notion that such question
in within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements of
novelty , originality and precedence and for the patentee to be entitled to protection, the
invention must be new to the world. Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now for more than one year only under
Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to,
the validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico &
Co. and Vargas v. Chua, et al., supra).
The law provides:
SEC. 9. Invention not considered new or patentable. An invention shall
not be considered new or capable of being patented if it was known or used
by others in the Philippines before the invention thereof by the inventor
named in an application for patent for the invention; or if it was patented or
described in any printed publication in the Philippines or any foreign
country more than one year before the application for a patent therefor; or if
it had been in public use or on sale in the Philippines for more than one
year before the application for a patent therefor; or if it is the subject matter
of a validity issued patent in the Philippines granted on an application filed
before the filing of the application for patent therefor.
Thus, more specifically, under American Law from which our Patent Law was derived
(Vargas v. F.M. Yaptico & Co. supra) it is generally held that in patent cases a preliminary
injunction will not issue for patent infringement unless the validity of the patent is clear
and beyond question. The issuance of letters patent, standing alone, is not sufficient to
support such drastic relief (8 Deller's Walker on Patents p. 406). In cases of infringement
of patent no preliminary injunction will be granted unless the patent is valid and infringed
beyond question and the record conclusively proves the defense is sham. (Ibid., p. 402)
In the same manner, under our jurisprudence, as a general rule because of the injurious
consequences a writ of injunction may bring, the right to the relief demanded must be
clear and unmistakable. (Sangki v. Comelec, 21 SCRA 1392; December 26, 1967) and the
dissolution of the writ is proper where applicant has doubtful title to the disputed
property. (Ramos v. C.A., 95 SCRA 359).

III.
It will be noted that the validity of petitioner's patents is in question for want of novelty.
Private respondent contends that powder puffs Identical in appearance with that covered
by petitioner's patents existed and were publicly known and used as early as 1963 long
before petitioner was issued the patents in question. (List of Exhibits, Rollo, pp. 194-199).
As correctly observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents issued for
such models, it is but right that the evidence be looked into, evaluated and determined on
the merits so that the matter of whether the patents issued were in fact valid or not may
be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary
injunction which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to
issue, namely: the existence of the right to be protected and the violation of said right.
(Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed a
grave abuse of discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of so
general a tenor that petitioner may be totally barred from the sale of any kind of powder
puff. Under the circumstances, respondent appellate court is of the view that ordinary
appeal is obviously inadequate. (Rollo, p. 288). A parallel was drawn from a decision of the
Supreme Court in the case of Sanchez v. Hon. Court of Appeals, 69 SCRA 328 [1976]
where the First Division of the Supreme Court ruled that "The prerogative writ of certiorari
may be applied for by proper petition notwithstanding the existence of the regular remedy
of an appeal in due cause when among other reasons, the broader interests of justice so
require or an ordinary appeal is not an adequate remedy."
Private respondent maintains the position that the resolutions sought to be appealed from
had long become final and executory for failure of Hon. Reynaldo P. Honrado, the trial
court judge, to appeal by certiorari from the resolutions of respondent Court of Appeals.
(Rollo, pp. 291-292).
Such contention is untenable.
There is no dispute that petitioner has seasonably petitioned. On the other hand, it is
elementary that the trial judge is a mere nominal party as clearly provided in Section 5,
Rule 65 of the Revised Rules of Court where it shall be the duty of such person or persons
interested in sustaining the proceedings in court, "to appear and defend, both in his or
their own behalf and in behalf of the court or judge affected by the proceedings."
Relative thereto "the judge whose order is under attack is merely a nominal party;
wherefore, a judge in his official capacity should not be made to appear as a party seeking
reversal of a decision that is unfavorable to the action taken by him." (Hon. Alcasid v.

Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v. Argel, 70 SCRA
378).
As to petitioner's claim of prescription, private respondent's contention that such refers
to the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent
Law and not to a defense against an action for infringement under Sec. 45 thereof which
may be raised anytime, is evident under aforesaid law.
PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby
AFFIRMED.
SO ORDERED.
Feria (Chairman), Fernan, Gutierrez, Jr., and Feliciano, * JJ., concur.
Alampay, J., took no part.