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FIRST DIVISION

[G.R. No. L-24919. January 28, 1980.]

JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs.THE DIRECTOR OF PATENTS,respondent.

Picazo & Agcaoilifor petition.

Office of the Solicitor Generalfor respondent.

D E C I S I O N

MELENCIO-HERRERA,J p:

Sought to be reviewed herein is the Decision of the Director of Patents, dated December

9, 1964, denying priority rights under section 15 of our Patent Law (Republic Act No.

165) to petitioners, as foreign applicants for Letters Patent, for their invention of

"Chemotherapeutic Materials and Methods of Preparing the same."

Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of

the United States, claim to be the inventors of a new antibiotic designated as

"tetracycline", a new derivative of chlortetracycline (popularly known as "aureomycin").

On February 19, 1954, petitioners applied for Letters Patent covering said invention to

respondent Director of Patents claiming the right of priority granted to foreign applicants

under section 15 of the Patent Law (RA 165). Receipt of petitioners' application was

acknowledged by respondent Director onMarch 5, 1954.

On April 14, 1954, petitioners filed with respondent Director a legalized copy of their

Application for Letters Patent in the United States for the same invention (U.S. Serial No.

342556). Said legalized copy indicated that the application in the United States was filedon March 16, 1963.1This latter date is of crucial importance to petitioners' cause under

section 15 of the Patent Law, which provides that:

"Section 15. Application previously filed abroad An application for patentfor an invention filed in this country by any person who has previously regularly

filed an application for a patent for the same invention in a foreign country,which by treaty, convention or law affords similar privileges to citizens of the

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Philippines, shall have the same force and effect as the same application wouldhave if filed in this country on the date on which the application for patent for

the same invention was first filed in such foreign country: Provided, That theapplication in this country is filed within twelve months from the earliest date

on which such foreign application was filed and a certified copy of the foreign

application together with a translation thereof into English, if not in the Englishlanguage, is filed within six months from the date of filing in the Philippines,unless the Director for good cause shown shall extend the time for filing such

certified copy: And provided, further, that no patent shall be granted on anapplication for patent for an invention which had been patented or described in a

printed publication in this or any foreign country more than one year before thedate of the actual filing of the application in this country, or which had been in

public use or sale in this country for more than one year prior to such filing."

Under the foregoing provision, petitioners would be entitled to the priority date of March

16, 1953 if their application is considered filed in the Philippines as of March 5, 1954,

since the latter date would fall within the one-year period prior to March 5, 1954.

On February 7, 1958, petitioners informed respondent Director that in interference

proceedings in the United States, Letters Patent for a similar invention as theirs was

awarded to Pfizer and Co., which had filed its application ahead and that they failed to

obtain any U.S. patent for their own invention. Petitioners, however, observed and

requested:

"In the Philippines, however, the situation is at least the reverse. Pfizer and Co.did not file or else filed an application after the above application has already

been filed. The said above application therefore is good and valid.

"We request, therefore, that the present application be granted on the basis of

the claims originally filed."2

On August 5, 1959, in Paper No. 6, 3Patent Examiner, Lydia Nueva Espaa, rejected all

of petitioners' claims in view of "Philippine Patent No. 254 - November 29, 1956",

apparently referring to a local Patent obtained by Pfizer and Co., presumably covering the

same invention. Additionally, petitioners were advised that the "Specification" they had

submitted was "incomplete" and that responsive action should be filed them four months

from date of mailing, which was also August 5, 1959. Paper No. 6 precipitated a series of

communications between the aforementioned Patent Examiner and petitioners, whoapparently failed to meet the deadline of four months for filing their responsive action.

On October 9, 1961, petitioners requested for clarification of Paper No. 6, particularly as

to why their Specification was considered incomplete.

In response, Supervising Patent Examiner Nelia de Castro is informed petitioners as

follows:

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"With respect to applicant's request for clarification as to the meaning of thesecond to the last sentence contained in Paper 6, attention is called to the fact

that the specification which was originally filed is incomplete and not inaccordance with Rule 62 of the Revised Rules. Said specification ends on Page

9 with the incomplete sentence "The refractive indices of this crystalline phase

were found

"

"It appears further from a comparison between the submitted 9 pages of the

specification and 2 pages of the claims on one hand and the correspondingpages of the legalized copy of the U.S. application on the other that the present

application does not correspond with said certified copy of the U.S. Application.The present application cannot therefore be granted priority date under section

15 as requested by applicant."4

On July 3, 1962, petitioners submitted two complete copies of the Specification, which

included nine additional pages, and reiterated their request for priority right in the

Philippines.5

On October 2, 1962, Chief Patent Examiner Nicanor Mapili issued Paper No. 20 rejecting

the additional nine pages of Specification submitted by petitioners, and ruling:

"xxx xxx xxx

"The filing of the alleged complete copy of the specification is an attempt to

effect a remedy to the previous finding of incompleteness as stated in the 2nd tothe last paragraph of Office Action mailed Aug. 5, 1959, marked Paper 6. This

cannot be allowed inasmuch as 9 pages of new matter are actually proposed to

be added to the specification.

This action is made final for purpose of appeal."6

Petitioners moved for reconsideration on the ground that their application falls under the

exception provided for in Rule 47 of the Revised Rules of Practice in Patent Cases in that

the missing nine pages submitted by them are not really new matter but a mere "minor

informality."

On February 5, 1963, Chief Patent Examiner Mapili issued Paper No. 22 denying

petitioners' Motion for Reconsideration and affirming the findings of Examiner de Castroas follows:Cdpr

"The basis of the examiner's finding is applicant's specification on file exclusive

of what is disclosed in an alleged corresponding application in the U.S. asevidenced by a certified copy of record. The only use of such a certified copy is

to give proof to an earlier filing date as provided for under section 15 of thePatent Law and to use the inventors' oath therein to complete the formal

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requirements relative to his Philippine application in accordance with theprovisions of section 13 (3) of the same law.

The provisions of section 15 of the Patent Law, under which the present

application was filed, provides for a deadline for filing. This deadline cannot be

extended directly or indirectly by the filing of an imperfect application whichcan be freely amended or rectified at a later date. If this can be done legally, the

restrictive provisions of section 15 will be nullified."7

Adversely affected, petitioners appealed to respondent Director of Patents.

In their Brief filed with respondent Director, petitioners prayed for 1) revocation of the

rulings of the Chief Patent Examiner; 82) admission of their Specification submitted on

July 3, 1962; and 3) allowable of their application on the merits.

On December 9, 1964, respondent Director rendered the questioned Decision, the

dispositive portion of which reads:

"WHEREFORE, the appeal is hereby sustained. The additional pages to thespecification are hereby admitted, but the application shall not be extended

priority rights under section 15 of the Patent Law. Let the filing date of thisapplication be changed from March 5, 1954 to April 14, 1954. The application

is hereby remanded to the Chief Patent Examiner for proper action and for

further examination on the merits."9

In reaching the foregoing conclusion, respondent Director opined that the portions

subsequently supplied in the local application are not new matter a comparison between

the foreign and local application showed that the foreign application included the missing

portions of the local one. However, respondent Direct qualified that petitioners'

application may be considered complete only on April 14, 1954 when the certified copy

of the foreign application was submitted. Consequently the instant application is to be

considered an ordinary application, not entitled to the right of priority granted by section

15 of the Patent Law, inasmuch as said application was not complete within the meaning

of Rules 47 and 48 of the Revised Rules of Practice in Patent Case when first filed on

March 5, 1954.

Petitioners filed a Motion for Partial Reconsideration of the above-mentioned Decision

questioning that portion of respondent Director's ruling barring them from entitlement tothe right of priority under section 15 of the Patent Law contending that their appeal

centered merely on the issue of whether or not the additional nine pages of Specification

they had submitted should be treated as new matter.

On June 10, 1965, respondent Director denied reconsideration for lack of merit, and

explained:

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". . . It should be emphasized that under Rule 262 (b) of the Revised Rules ofPractice in Patent Cases, it is stated that should the Director have any

knowledge of any ground not involved in the appeal for rejecting any claim, he

may include in his decision a statement to that effect with his reasons for soholding, which statement shall constitute a rejection of the claim. Priority claims

are covered by the rule."10

On June 11, 1965, petitioners filed a Second Motion for Reconsideration on the ground

that priority rights are governed by convention and treaty, while invention claims are

governed exclusively by the Statute and Rules of Practice. Respondent Director denied

that Motion for lack of merit on August 24, 1965.cdphil

Hence, this recourse.

On January 9, 1967, we deemed the case submitted for decision, after petitioners hadfiled their Brief on February 12, 1966, and respondent Director, through the Solicitor

General, his Brief on June 9, 1966.

On June 9, 1968, Republic Act No. 5434 was enacted providing that final Orders and

Decisions of the Director of Patents in ex parte and inter partes proceedings are

appealable to the Court of Appeals. Since no provision for retroactivity exists in said Act

this Tribunal has resolved to retain jurisdiction over this case.

Petitioners maintain before this Court that:

"RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT

PETITIONERS' APPLICATION, SERIAL NO. 952, MAY NOT BETREATED AS FILED UNDER SECTION 15 AS AMENDED, OF REPUBLIC

ACT NO. 165 KNOWN AS THE PATENT LAW."

and in support thereof stress that:

1) The Director had no jurisdiction to decide the question of whether or not the

Philippine Application should be treated as filed under Section 15 of the Act;

2) The Director had no jurisdiction to decide the question of whether or not thePhilippine Application was incomplete under Rules 47 and 48 of the RevisedRules of Practice in Patent Cases;

3) The Director misconstrued and misapplied Rules 47 and 48 of the Rules.

4) The Director misconstrued and misapplied Rule 262 (b) of the Rules.

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For resolution, therefore, are the following issues: the scope of the powers of the Director

of Patents in cases appealed to him, and the correctness of his application of Rules 47, 48

and 262 (b) of the Revised Rules of Practice in Patent Cases.

The facts unfolded call for an affirmance of respondent Director's rulings.

Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and

authority of respondent Director to decide petitioners' appeal in the manner that he did,

and we quote:LLphil

"262. Decision by the Director. (a) The Director, in his decision, may affirmor reverse the decision of the Principal Examiner in whole or in part on the

ground and on the claims specified by the Examiner. The affirmance of therejection of a claim on any of the grounds specified constitutes a general

affirmance of the decision of the Principal Examiner on that claim, except as toany ground specifically reversed.

(b) Should the Director have knowledge of any grounds not involved in the

appeal for rejecting any claim, he may include in his decision a statement to thateffect with his reasons for so holding which statement shall constitute a

rejection of the claims. . . ."

In other words, respondent Director is empowered to consider grounds which may have

come to his knowledge other than those specifically raised in an appeal. He need not

confine himself only to issues invoked. Besides, the question of new matter is

inextricably linked with the right of priority on which petitioners have anchored their

application. As early as Paper No. 18, supra, the Supervising Patent Examiner hadconcluded that inasmuch as the submitted pages did not correspond with the certified

copy of the U.S. application, "the present application cannot therefore be granted priority

date under section 15 as requested by applicant." Again, in Paper No. 22, supra, the Chief

Patent Examiner made mention of petitioners' imperfect application and the fact that the

deadline for filing required by section 15 of the Patent Law cannot be extended directly

or indirectly otherwise "the restrictive provisions of section 15 will be nullified."

It is also far-fetched for petitioners to claim that in ruling on petitioners' right of priority,

respondent Director had contravened Rule 254 of the Revised Rules of Practice in Patent

cases, which provides that the Director of Patents exercises no direct control, direction

and supervision over the Principal Examiner and the Executive Examiner. Whatrespondent Director exercised was his authority to review the decisions Patents

Examiners, as explicitly provided for in the last paragraph of the same Rule 254, as

follows:

"xxx xxx xxx

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"The only supervision which the Director of Patents may lawfully exercise overthe Principal Examiners and the Executive examiner is a general supervision,

exercised through a review recommendations they may make for the grant of apatent through a review of their decision by petition and appeal."

Similarly untenable is petitioners' contention that respondent Director had misconstruedand misapplied Rules 47 and 48 of the Revised Rules of Practice in Patent Cases. The

said Rules provide:

"47.Application accepted and filed for examination only when completeAnapplication for an invention patent will not be accepted and placed upon thefiles for examination until all its required parts, complying with the rules

relating thereto are received; except that certain minor informalities may bewaived subject to subsequent correction, whenever required.

If the papers and parts are incomplete, or so defective that they cannot be

accepted as a complete application for examination, the applicant will benotified; the papers will be held four months for completion and if not by then

completed, will be stored as an abandoned incomplete application andeventually destroyed or otherwise disposed of."

"48. Serial number and filing date of application Complete applications are

numbered in regular order, and the applicant will be informed of the serialnumber and filing date of the application by a filing receipt. The filing date of

the applicant is the date on which the complete application, acceptable forplacing on the files for examination, is received in the Patent Office; or the date

on which the last part completing such application is received, in the case of an

incomplete or defective application completed within four months. TheExecutive Examiner shall be in charge of fixing the filing date and serialnumber of an application."

Under the aforecited provisions, it is imperative that the application be complete in order

that it may be accepted. It is essential to the validity of Letters Patent that the

specifications be full, definite, and specific. 11The purpose of requiring a definite and

accurate description of the process is to apprise the public of what the patentee claims as

his invention, to inform the Courts as to what they are called upon to construe, and to

convey to competing manufacturers and the dealers information of exactly what they are

bound to avoid.12

The specification which petitioners submitted on March 5, 1954 was far from complete.

The defect was one of substance and not merely one of form. What petitioners claimed as

their invention was not complete determinable therefrom. Petitioners' application could

be deemed as complete only on July 2, 1963 when they submitted the additional pages on

the Specifications and Claims. Respondent Director, therefore, did not err in converting

petitioners' application into an ordinary application filed on April 14, 1954, not only for

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their having failed to complete their application within the four-month period provided

for by Rules 47 and 48, Revised Rules of Practice in Patent Cases, and as required of

them by paper No. 6, but also for their having failed to file a complete application within

twelve months from March 16, 1953, the date of the foreign application. For, to be

entitled to the filing date of the patent application, an invention disclosed in a previously

filed application must be described within the instant application in such a manner as toenable one skilled in the art to use the same for a legally adequate utility.13

All told, we sustain respondent Director's findings in the absence of error or abuse of

power or lack of jurisdiction or grave abuse of discretion. 14We have held that in the

absence of arbitrariness, and provided they are supported by substantial evidence, as in

the case, the conclusions reached by the Director of Patents are to be accorded respect

and must be upheld.15

WHEREFORE, we hereby affirm the Decision of respondent Director of Patents dated

December 9, 1964.

SO ORDERED.

Teehankee, Makasiar, Fernandez, GuerreroandDe Castro, JJ.,concur.

|||(Boothe v. Director of Patents, G.R. No. L-24919, [January 28, 1980], 184 PHIL 408-

418)

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FIRST DIVISION

[G.R. No. L-32160. January 30, 1982.]

DOMICIANO A. AGUAS, petitioner,vs.

CONRADO G. DE LEONand COURT OF APPEALS,respondents.

Estanislao Fernandezfor petitioner.

Cecilia P. de Leonfor respondents.

SYNOPSIS

Private respondent, who had been granted and issued Letters Patent No. 658 by thePhilippines Patent Office for his invention of certain new and useful improvements in the

process of making mosaic pre-cast tiles, filed a complaint for infringement of patent

against petitioner Domiciano Aguas and F. H. Aquino & Sons. Petitioner Aguas, in his

answer, alleged that respondent's patent was unlawfully secured through

misrepresentations as the latter's invention is neither inventive nor new and hence not

patentable; and that he cannot be held guilty of infringement because his products, which

had been duly patented, were different from those of the private respondent. The trial

court, finding respondent's patent valid and infringed, ordered petitioner Aguas and F. H.

Aquino & Sons to pay respondent jointly and severally actual, moral and exemplary

damages and attorney's fees. Petitioner appealed to the Court of Appeals questioning the

validity of the patent issued by the Philippines Patent Office and the patentability of

respondent's tile-making process. The Appellate Court, however, sustained the trial

court's decision but greatly reduced the award of moral damages. Meanwhile, private

respondent's patent right expired, hence, in this petition, only the right of said private

respondent to damages will be determined.

The Supreme Court, affirming the decision of the trial court as modified by the Court of

Appeals, held that petitioner's evidence has not overcome the legal presumption on the

validity of respondent's patent; and that based on the records, respondent's process is an

improvement of the old process of tile-making, hence, patentable.

Petition dismissed.

SYLLABUS

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1. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT NO. 165); MATTERS

PATENTABLE THEREUNDER; A CASE OF; IMPROVEMENT OF THE OLD

PROCESS OF TILE-MAKING IN CASE AT BAR. Under Section 7, Republic Act

No. 165, as amended, "Any invention of a new and useful machine, manufactured

product or substance, process or an improvement of the foregoing, shall be patentable."

In the case at bar, the contention of the petitioner that the letters-patent of privaterespondent was actually a patent for the old and non-patentable process of making mosaic

precast tiles is devoid of merit. It should be noted that private respondent does not claim

to be the discoverer or inventor of the old process of tile-making. He only claims to have

introduced an improvement of said process. In fact, Letters Patent No. 658 was issued by

the Philippines Patent Office to the private respondent, to protect his rights as the

inventor of "an alleged new and useful improvement in the process of making mosaic

precast tiles."

2. ID.; ID.; PATENTS; VALIDITY BETTER DETERMINED BY THE PHILIPPINES

PATENT OFFICE.

The validity of the patent issued by the Philippines Patent Officein 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.

3. ID.; ID.; ID.; WHAT CONSTITUTES A PATENTABLE PROCESS AND/OR

IMPROVEMENT; CASE AT BAR. Petitioner's contention that the improvement of

respondent is not patentable because it is not new and useful and inventive is without

merit, where the records disclose that private respondent's process is an improvement of

the old process of tile-making and that such improvement is indeed inventive and goes

beyond the exercise of mechanical skill by which private respondent has introduced a

new kind of tile for a new purpose.

4. REMEDIAL LAW; APPEAL; FINALITY OF THE FINDINGS OF FACT OF THE

TRIAL COURT AND OF THE COURT OF APPEALS; CASE AT BAR, NOT AN

EXCEPTION. Both the trial court and the Court of Appeals found as a fact that the

petitioner did infringe private respondent'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 theCourt of Appeals.

5. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT NO. 165); PATENTS;

DAMAGES AWARDED UNDER SECTION 42 OF THE PATENT LAW;

SUSTAINED IN CASE AT BAR. The Supreme Court finds no reason to reduce the

amount of damages and attorneys fee awarded by the trial court under Sec. 42 of the

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Patent Law which are as follows; (a) P10,020.99 by way of actual damages; (b) P50,000

by way of moral damages which was reduced by the Court of Appeals to P3,000 by way

of compensating appellee for his moral suffering; (c) P5,000 by way of exemplary

damages; (d) P5,000 by way of attorney's fees and (e) costs of suit.

D E C I S I O N

FERNANDEZ,J p:

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-appellee vs.Domiciano Aguas and

F. H. Aquino and Sons, defendants-appellants," the dispositive portion of which reads:

"WHEREFORE, with the modification that plaintiff-appellee's award of moraldamages is hereby reduced to P3,000.00, the appealed judgment is hereby

affirmed, in all other 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 Philippines Patent Office, Patent No. 658 was

lawfully granted and issued to him; that said invention was new, useful, not known orused 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 therefor, 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 Letters 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 quantities; that he has

complied with the Philippine statutes 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

patented 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 for use and actually used in apparatus for the making of

tiles embodying plaintiff's patented invention; that he has given direct and personal notice

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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

patent rights as against the defendants' act of infringement and to engage the services 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:LLpr

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"WHEREFORE, judgment is hereby rendered in favor of plaintiff and againstthe defendants:

"1. Declaring plaintiff's patent valid and infringed;

"2. Granting a perpetual injunction restraining defendants,

their officers, agents, employees, associates, confederates, and anyand all persons acting under their authority from making and/orusing and/or vending tiles embodying said patented invention or

adapted to be used in combination embodying the same, and frommaking, manufacturing, using or selling, engravings, castings and

devices designed and intended for use in apparatus for the makingof tiles embodying plaintiff's patented invention, and from offering

or advertising so to do, and from aiding and abetting or in any waycontributing 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 tothe 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 BEENUSED BY TILE MANUFACTURERS BOTH ABROAD AND IN

THIS COUNTRY.

"II

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"THE TRIAL COURT ERRED IN NOT HOLDING THAT

THE PATENT OF PLAINTIFF IS VALID BECAUSE IT IS AN

IMPROVEMENT OF 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 ANDTHE 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:

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"It is now respectfully submitted that the Court of Appeals committed thefollowing 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 non-patentable 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 catalogues, that thealleged improvements introduced by the respondent in the manufacture of

mosaic pre-cast tiles are not patentable, the same being not new, useful andinventive.

"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." 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-casttiles, plaintiff furnishing said defendant the actual model of the said tiles inescayola 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 thelip width, artistic slope of easement and critical depth of the engraving that

plaintiff wanted for his moulds; that engraver Enrique Aquino knew that themoulds he was engraving for plaintiff were the latter's very own, which

possessed the new features and characteristics covered by plaintiff's patent; thatdefendant Aguas personally, as a building contractor, purchased from plaintiff,

tiles shaped out of these moulds at the back of which was imprinted plaintiff'spatent number (Exhs. "A" to "E"); that subsequently, through a representative,

Mr. Leonardo, defendant Aguas requested Aquino to make engravings of thesame 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 beused 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 Aguasdouble the rate it charged plaintiff De Leon, contain the very same characteristic

features of plaintiff's mould and that Aguas used these moulds in themanufacture of his tiles which he actually put out for sale to the public (Exhs.

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"1" to "3" and Exh "A" to "E"); that both plaintiff's and defendant Aguas' tilesare sculptured pre-cast wall tiles intended as a new feature of construction and

wall ornamentation substantially identical to each other in size, easement, lipwidth and critica 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, defendantAguas' mould is made to 4-1/4 x 4-1/4 inch tile." 9

The patent right of the private respondent expired on May 5, 1977. 10The errors will be

discussed only to determine the right of said private respondent to damages. prLL

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 tile-making. 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 privaterespondent, 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 theprocess 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 theflaking off of the edges. The easement caused by the inclination of the

protrusions of the patented moulds is for the purpose of facilitating the removalof the newly processed tile from the female die. Evidently, appellee's

improvement consists in the solution to the old critical problem by making theprotrusions 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 enough, notwithstanding the deep engravings, to be utilized forwalling purposes. The optimum thickness of appellee's new tiles of only 1/8 ofan inch at the deepest easement (Exhs. "D" and "D-1") is a most critical feature,

suggestive of discovery and inventiveness, especially considering that, despitesaid thinness, the freshly formed tile remains strong enough for its intended

purpose.

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"While it is true that the matter of easement, lip width, depth, protrusions anddepressions 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, ifthe 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 newproduct a concrete sculptured tile which could be utilized for walling and

decorative purposes. No proof was adduced to show that any tile of the samekind had been produced by others before appellee. Moreover, it appears that

appellee has been deriving considerable profit from his manufacture and sale ofsuch tiles. This commercial success is evidence of patentability (Walker on

Patents, Deller's Edition, Vol. I, p. 237)." 12

The validity of the patent issued by the Philippines Patent Office in favor of the privaterespondent 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 findingsof 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 saidpresumption 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 tendto 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, duringthe 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 thatappellant had every chance to do so, he could not present any. There is,

therefore, no concrete proof that the improved process of tile-making describedin 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

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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 makespossible 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 stockpiled, 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 precast 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. 15Durability 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; 17that these tiles have also depth, lip width, easement and

field of designs; 18and 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.

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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. Cdpr

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 attorney'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 tilessimilar to plaintiff's, he made a gross income of P3,340.33, which can safely be

considered the amount by which he enriched himself when he infringedplaintiff's patent. Under Sec. 42 of the Patent Law any patentee whose rights

have been infringed is entitled to damages which, according to thecircumstances 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 amountof such actual damages. Considering the wantonness of the infringement

committed by the defendants who knew all the time about the existence ofplaintiff's patent, the Court feels there is reason to grant plaintiff maximum

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damages in the sum of P10,020.99. And in order to discourage patentinfringements and to give more teeth to the provisions of the patent law thus

promoting a stronger public policy committed to afford greater incentives andprotection 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 thelikewise 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 ofthe unlawful acts of infringement committed by defendants, plaintiff was

understandably very sad; he worried and became nervous and lost concentrationon 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 adoubt or suspicion in the public mind concerning the truth and honesty ofplaintiff's advertisements and public announcements of his valid patent.

Necessarily, said acts of defendants have caused plaintiff considerable mentalsuffering, 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 faithcharacterizing defendants' prejudicial acts against plaintiff justify the

assessment of moral damages in plaintiff's favor, though we do not believe theamount 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 wayof 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 attorney's 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.

Makasiar, Guerrero, Melencio-Herrera and Plana, JJ.,concur.

Teehankee (Chairman), J.,took no part.

|||(Aguas v. De Leon, G.R. No. L-32160, [January 30, 1982], 197 PHIL 225-239)

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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 amendedby 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 rightsfrom 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

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(b) applicant's claims in her applications, of "construction" or process ofmanufacturing the utility models applied for, with respect to UM-423 and UM-

450, were but a complicated and impractical version of an old, simple onewhich 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 UM-1184; her claim, in her application of a unitarypowder puff, was but an imitation of a product well known to the cosmeticsindustry since years previous to her filing 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 UtilityModel 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 motionfor 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 forreconsideration.

On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent

Court of Appeals as follows:

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"NOW, THEREFORE, you, respondents, and/or any person/persons acting onyour stead, are hereby ENJOINED to RESTRAIN from enforcing or continuing

to enforce, the proceedings complained of in the petition to wit: 1) Order datedSeptember 18, 1974, granting the preliminary injunction; 2) Writ of Preliminary

Injunction dated September 18, 1974; and Order dated September 11, 1976,

denying petitioner's motion for reconsideration, all issued in connection withCivil Case No. 19908, UNTIL FURTHER ORDERS FROM THIS COURT."(Annex "P", Rollo, p. 173)

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 ishereby set aside, with costs.

"SO ORDERED." (CA Decision, Rollo, p. 189).

In 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 quohas 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 PRIVATERESPONDENT'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

court's position that the court a quo had no jurisdiction to determine the question of

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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 quoissued the writ being questioned withoutlooking 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 isordered issued. Accordingly, the challenged orders, Exhibit H and H-1 and the

order denying the motion for reconsideration (Annex "K", Petition), are herebyset aside. The writ of preliminary injunction previously ordered by this Court

and ordered lifted by the Decision now being set aside is hereby reinstated andmade 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 quohad jurisdictionto determine the invalidity of the patents at issue which invalidity was still

pending consideration in the patent office.

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(2) Whether or not the Court a quocommitted grave abuse of discretion in theissuance 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 facie presumption 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.LLpr

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 prosecuted by the

petitioner, respondent Court of Appeals was satisfied that there is aprima facieshowing

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

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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 theinvention 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 notbe 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 inan 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 oneyear 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 apatent 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 applicationfor 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 thepatent is clear and beyond question. The issuance of letters patent, standing alone, is not

sufficient to support such dra