G.R. No.172835 December 13, 2007 AIR PHILIPPINES CORPORATION, Petitioner, vs. PENNSWELL, INC. Respondent. Facts: Petitioner Air Philippines Corporation is a domestic corporation engaged in the business of air transportation services. On the other hand, respondent Pennswell, Inc. was organized to engage in the business of manufacturing and selling industrial chemicals, solvents, and special lubricants. Respondent sold to petitioner its products. For failure of the petitioner to comply with its obligation under said contracts, respondent filed a Complaint for a Sum of Money. Petitioner contended that its refusal to pay was not without valid and justifiable reasons. o In particular, petitioner alleged that the subject items/products were misrepresented by respondent as belonging to a new line, but were in truth and in fact, identical with products petitioner had previously purchased from respondent. o Merely altered the names and labels of such goods. During the pendency of the trial, petitioner filed a Motion to Compel respondent to give a detailed list of the ingredients and chemical components of the subject products. Respondent opposed the said motion. o It cannot be compelled to disclose the chemical components sought because the matter is confidential. o The said list of ingredients and chemical components is a trade secret which respondent cannot be forced to divulge. o its products are specialized lubricants, and if their components were revealed, its business competitors may easily imitate and market the same types of products, in violation of its proprietary rights and to its serious damage and prejudice. RTC denied the motion. CA affirmed the order of the RTC Hence, this petition for review. Issue: Whether petitioner can compel respondent to divulge the list of ingredients and chemical components of their products. Held: NO. It is considered as a trade secret. Page 1 of 24 A trade secret is defined as a plan or process, tool, mechanism or compound known only to its owner and those of his employees to whom it is necessary to confide it. The definition also extends to a secret formula or process not patented, but known only to certain individuals using it in compounding some article of trade having a commercial value. A trade secret may consist of any formula, pattern, device, or compilation of information that: o (1) is used in one's business; and o (2) gives the employer an opportunity to obtain an advantage over competitors who do not possess the information. Generally, a trade secret is a process or device intended for continuous use in the operation of the business, for example, a machine or formula, but can be a price list or catalogue or specialized customer list. It is indubitable that trade secrets constitute proprietary rights. The inventor, discoverer, or possessor of a trade secret or similar innovation has rights therein which may be treated as property, and ordinarily an injunction will be granted to prevent the disclosure of the trade secret by one who obtained the information "in confidence" or through a "confidential relationship." American jurisprudence has utilized the following factors 21 to determine if an information is a trade secret, to wit: (1) the extent to which the information is known outside of the employer's business; (2) the extent to which the information is known by employees and others involved in the business; (3) the extent of measures taken by the employer to guard the secrecy of the information; (4) the value of the information to the employer and to competitors; (5) the amount of effort or money expended by the company in developing the information; and (6) the extent to which the information could be easily or readily obtained through an independent source. In the case at bar, the chemical composition, formulation, and ingredients of respondent’s special lubricants are trade secrets within the contemplation of the law. Respondent was established to engage in the business of general manufacturing and selling of, and to deal in, distribute, sell or otherwise dispose of goods, wares, merchandise, products, including but not limited to Page 2 of 24 custody or control. The ingredients constitute the very fabric of respondent’s production and business. Our conclusion is that the detailed ingredients sought to be revealed have a commercial value to respondent. accounts. photographs. By and large. Such a condition is in addition to the requisite that the items be specifically described. colors. oils. because of their confidential and privileged character. respondent expended efforts. Respondent’s proprietary interest over the ingredients which it had developed and expended money and effort on is incontrovertible. On the ground of public policy. The documents must not be privileged against disclosure. solvents. lubricants. pigments and similar preparations. Not only do we acknowledge the fact that the information grants it a competitive advantage. This would result in nothing less than the probable demise of respondent’s business. To compel its disclosure is to cripple respondent’s business. and must constitute or contain evidence material to any matter involved in the action and which are in the party’s possession. industrial chemicals. What it had achieved by virtue of its investments may not be wrested from respondent on the mere pretext that it is necessary for petitioner’s defense against a collection for a sum of money. the value of the information to respondent is crystal clear. research. varnishes. Page 3 of 24 . could not be received in evidence. Rule 27 sets an unequivocal proviso that the documents. objects or tangible things that may be produced and inspected should not be privileged. skills. paints. It is unmistakable to our minds that the manufacture and production of respondent’s products proceed from a formulation of a secret list of ingredients. Modes of Discovery under the ROC is not without limitations. and resources. and to place it at an undue disadvantage. (NOTE) No doubt. acids. books and papers which. If the chemical composition of respondent’s lubricants are opened to public scrutiny. the information is also valuable to respondent’s competitors. we also find that there is clearly a glaring intent on the part of respondent to keep the information confidential and not available to the prying public. among others. books. salts. In the creation of its lubricants. that is. the rules providing for production and inspection of books and papers do not authorize the production or inspection of privileged matter. papers. it will stand to lose the backbone on which its business is founded. letters. alkalies. Section 24 of Rule 130 draws the types of disqualification by reason of privileged communication. employee or workman of any manufacturing or industrial establishment who. — The penalty of arresto mayor and a fine not exceeding 500 pesos shall be imposed upon any manager. (b) voters may not be compelled to disclose for whom they voted. or commercial information belonging to the debtor. penalizing the revelation thereof by internal revenue officers or employees under Section 278. shall learn the secrets of his principal or master and shall reveal such secrets. (d) information contained in tax census returns. Other laws that affords protection to trade secrets: The Interim Rules of Procedure on Government Rehabilitation expressly provides that the court may issue an order to protect trade secrets or other confidential research. has a restrictive provision on trade secrets. 291. — The penalty of prision correccional in its minimum and medium periods and a fine not exceeding 500 pesos shall be imposed upon the person in charge. employee or servant who. to the prejudice of the owner thereof. to wit: (a) communication between husband and wife. and (e) public officers and public interest. other privileged matters that are not mentioned by Rule 130. Among them are the following: (a) editors may not be compelled to disclose the source of published news. There are. Revealing secrets with abuse of office. Revelation of industrial secrets. and (d) bank deposits. however. (c) communication between physician and patient. Page 4 of 24 . (c) trade secrets.The Rules on Evidence also provides exemption in divulging trade secrets. development. 292. Securities Regulation Code is explicit that the Securities and Exchange Commission is not required or authorized to require the revelation of trade secrets or processes in any application. (d) communication between priest and penitent. National Internal Revenue Code of 1997. Art. in such capacity. (b) communication between attorney and client. report or document filed with the Commission. Revised Penal Code endows a cloak of protection to trade secrets under the following articles: Art. shall reveal the secrets of the industry of the latter. re-packer and distributor of Chin Chun Su products manufactured by Shun Yi factory of Taiwan. 379 SCRA 410) FACTS: Petitioner‘s allegations are that they are doing business under the name and style of KEC Cosmetics Laboratory. on the other hand. and alleges that she also has patent rights on Chin Chun Su and Device and Chin Chun Su Medicated Cream after purchasing the same from Quintin Cheng. March 19. (2) that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Cu Medicated Cream with the Philippine Patent office and Other appropriate governmental agencies. and. 2002.Bona fide occupational qualifications. manufacture. assignee of the patent registration certificate. enacted to implement the policy of the state to regulate. distribution. The respondents. also contains a provision that limits the right of the public to have access to records. Jurispridence on Labor Law.R. (4) that the authority of Quintin Cheng. reports or information concerning chemical substances and mixtures including safety data submitted and data on emission or discharge into the environment. processor or distributor. processor or distributor. processing. restrict or prohibit the importation. Kho vs. Toxic Substances and Hazardous and Nuclear Wastes Control Act of 1990. and. that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner. to Page 5 of 24 . use and disposal of chemical substances and mixtures that present unreasonable risk and/or injury to health or the environment. or methods. sale. alleged as their defense that (1) Summerville is the exclusive and authorized importer. the registered owner thereof in the supplemental register of the Philippine Patent Office and that Summerville advertised and sold petitioner’s cream products under the brand name Chin Chun Su. Court of Appeals. or would otherwise tend to affect adversely the competitive position of such manufacturer. 115758. No. thereby misleading the public. Summerville General Merchandising Company and Ang Tiam Chay (G. Elidad C. registered owner of Chin Chun Su and oval facial cream container/case. production or sales figures. if the matter is confidential such that it would divulge trade secrets. and resulting in the decline in the petitioner’s business sales and income. (3) that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification. in similar containers that petitioner uses. production or processes unique to such manufacturer. on the other hand. The name and container of a beauty cream product are proper subjects of a trademark in as much as the same falls squarely within its definition. The petitioner’s copyright and patent registration of the name and container would not guarantee her the right to exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. These are specialty printed posters with plastic sheets and illuminated back lights that are mainly used as stationeries. involves an inventive step and is industrial applicable. 1988. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container goods. Meanwhile. the user must sufficiently prove that she registered or used it before anybody else did. 2003 Facts: Plaintiff P and D is engaged in manufacturing advertising display units called as light boxes. and patents are different intellectual property rights that cannot be interchanged with one another. They secure copyright registration over these advertising light boxes and marketed using the trademark “poster ads. In 1986 the counsel of Shoemart informed P and D that it is rescinding its contract for SM Makati due to non-performance of the terms thereof. Page 6 of 24 . v Shoemart Inc. the Metro Industrial Services. In order to be entitled to exclusively use the same in the sale of the beauty cream product. the scope of copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. In relation thereto. ISSUE: Whether or not Kho has the sole right using the package of Chin Chun Su products. 148222. Consequently. GR No. P and D negotiated with the defendant Shoemart for the lease and installation of the light boxes in SM City North Edsa but was given an alternative to have them leased to SM Makati and SM Cubao while the said branch was under construction. Patentable inventions. NOTE: Trademark. a trade name means the name or designation identifying or distinguishing an enterprise. Trademark and Technology Transfer which was approved on September 12. copyright. Two years later. August 15. Pearl and Dean Inc.distribute and market Chin Chun Su products in the Philippines had already terminated by the said Taiwanese manufacturing company. Only the contract with SM Makati was returned with signature. RULING: Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container.” They applied for the registration of trademark before the Bureau of Patents. a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others. refer to any technical solution of a problem in any field of human activity which is new. not having proven that she has registered a trademark thereto or used the same before anyone did. it investigated and found out that North Edsa Marketing Inc (NEMI). Since the copyright was classified under class "O" works.D. SM suspended the lease of light boxes in its branches while NEMI took down its advertisement for posterads. tags and box wraps. labels. A lightbox.the same company contracted by the plaintiff to fabricate their display units offered to construct light boxes for the Shoemart chain of stores wherein 10 light boxes were created for them. 49." and does not include the light box itself. Claiming both failed to meet its demand P and D filed a case for infringement of trademark. subject to the terms and conditions specified in the statute. the P and D’s exclusive right to use “poster ads” is limited to what is written on its certificate of registration which is stationaries. it can only cover the works falling within the statutory enumeration or description. In its judgment its stand is that the copyright of the plaintiff is limited to its technical drawings only and not the light boxes itself. It also demanded to discontinue the use of its trademark “poster ads” with compensatory damages of 20M. unfair competition and damages. even admitted Page 7 of 24 . The RTC decided in favor of P and D but on appeal the Court of Appeals reversed its decision. (1) Copyright is a statutory right. When a drawing is technical. It further contends that “poster ads” is a generic name that cannot be appropriated for a trademark and that P and D’s advertising display units contained no copyright notice in violation of Section 27 of P. which includes "prints. copyright. SM denied the charges against it and noted that the registration of mark “poster ads” is limited to stationeries like letterhead and envelope. ISSUES: (1) (2) (3) (4) Whether Whether Whether Whether there there there there was was was was a copyright infringement a patent infringement a trademark infringement unfair competition RULING: No to all. Thus the CA is constrained to adopt the view of the respondents that the “poster ads” is a generic poster term ads and in the absence of convincing proof that such wording acquired secondary meaning. Therefore. to make light boxes. Upon the termination of contract with Metro Industrial Service. installed or advertised the display units. SM hired EYD Rainbow Advertising Co. NEMI likewise repleaded the averments of SM and denied to have manufactured. advertising copies. sister company of SM was primarily selling ad space in lighted display units. pictorial illustrations. the copyright over the drawing does not extend to actual object. When P and D knew about the exact copies of its light boxes installed at SM City branches in 1989. P and D sent letter to both NEMI and SM enjoining them to cease from using the subject light boxes and remove them from SM establishments. It further stresses that it independently develop its own poster panels using techniques and available technology without notice to P and D copyright. Patent has a three-fold purpose: a) to foster and reward invention. thus not included under a copyright. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. It cannot prevent others to use the same trademark with a different description. Since petitioner was not able to go through such examination.R. as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION. Page 8 of 24 . 113388 September 5. b) promotes disclosures of invention and permit public to use the same upon expiration. it cannot exclude others from manufacturing. Doctrine: The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. No. thus it cannot be considered to use such term to be unfair competition against the petitioner. (4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean. (2) Petitioner was not able to secure a patent for its lightboxes. and MELECIA MADOLARIA. G. and cannot legally prevent anyone from manufacturing or commercially using the same. No patent. no protection. (3) The certificate of registration issued by the Director of Patents gives exclusive right to use its own symbol only to the description specified in the certificate. vs. respondents. COURT OF APPEALS. was neither a literary nor an artistic work but an engineering or marketing invention. 1997 ANGELITA MANZANO. petitioner. This is a matter which is properly within the competence of the Patent Office the official action of which has the presumption of correctness and may not be interfered with in the absence of new evidence carrying thorough conviction that the Office has erred. c) stringent requirements for patent protection to ensure in the public domain remain there for free use of the public.by the president of petitioner company. or selling such lightboxes. was secured by means of fraud or Petitioner presented the following pieces of evidence: o Brochure distributed by Manila Gas Corporation and Esso Gasul disclosing a pictorial representation of Ransome Burner made by Ransome Torch and Burner Company. o (d) the letters patent misrepresentation. Facts: Petitioner Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of a Letters Patent for a gas burner registered in the name of respondent Madolaria who subsequently assigned the letters patent to UNITED FOUNDRY. true and actual inventor nor did she derive her rights from the original. and o Brochure distributed by Esso Gasul Philippines showing a picture of another similar burner with top elevation view and another perspective view of the same burner. true and actual inventor of the utility model covered by the letters patent. with doubts as to patentability resolved in favor of the Patent Office. USA. Page 9 of 24 . o (e) the utility model covered by the letters patent had been known or used and produced and on sale by others in the Philippines for more than 1 year before she filed her application for letters patent on 9 December 1979. RA No. was not inventive. Since the Patent Office is an expert body preeminently qualified to determine questions of patentability. an LPG gas burner. 14. Petitioner alleged that: o (a) the utility model covered by the letters patent. and. in this case. new or useful. its findings must be accepted if they are consistent with the evidence. o (c) respondent was not the original. o (b) the specification of the letters patent did not comply with the requirements of Sec. 165. as amended. Inventians patentable. process or an improvement of any of the foregoing. construction or composition. Private respondent presented Rolando Madolaria. 55 of the same law provides — Sec. Any invention of a new and useful machine. Issue: Whether there is sufficient basis to cancel the subject Letters of Patent. o Rolando Madolaria testified that private respondent decided to file her application for utility model patent in December 1979. o Various tests were conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. Design patents and patents for utility models. original and ornamental design for an article of manufacture and (b) any new model of implements or tools or of any industrial product or of part of the same. Held: NO. as amended. which is the law on patents. who testified. shall be patentable. o The evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. based on her latest sketches and specifications. but which is of practical utility by reason of its form. expressly provides — Sec. Section 7 of RA No. configuration. he was able to cast several models incorporating the additions to the innovations introduced in the models. 7. manufactured product or substance. which does not possess the quality of invention. 55. may be protected by the author thereof. — (a) Any new. We cannot sustain petitioner. 165. machine and buffing section. Director of Patents denied the petition for cancellation. among others. Sec. the former by a Page 10 of 24 . o Private respondent discovered the solution to all the defects of the earlier models and. that he was the General Supervisor of the UNITED FOUNDRY in the foundry. Further. CA affirmed the ruling of the Director of Patents. in the same manner and subject to the same provisions and requirements as relate to patents for inventions insofar as they are applicable except as otherwise herein provided.patent for a design and the latter by a patent for a utility model. the court. Hence. and for the patentee to be entitled to the protection the invention must be new to the world. or if it is substantially similar to any other utility model so known. the standard of evidence sufficient to overcome the presumption of legality of the issuance of UM-4609 to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the patent. The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is met only by clear and satisfactory proof which overcomes every reasonable doubt. The element of novelty is an essential requisite of the patentability of an invention or discovery. an application for a patent therefor should be denied. and if the application has been granted. in a judicial proceeding in which the validity of the patent is drawn in question. It has been repeatedly held that an invention must possess the essential elements of novelty. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor. used or described within the country. If a device or process has been known or used by others prior to its invention or discovery by the applicant. As found by the Director of Patents. a utility model shall not be considered "new" if before the application for a patent it has been publicly known or publicly used in this country or has been described in a printed publication or publications circulated within the country. Thus the Director of Patents explained his reasons for the denial of the petition to cancel private respondent's patent — o Not one of the various pictorial representations of burners clearly and convincingly show that the device presented Page 11 of 24 . originality and precedence. will hold it void and ineffective. 1982 Page 12 of 24 . Neither did his wife. No. only one item of the prior art may be used at a time. G. o The dates when they were distributed to the public were not indicated and. o For anticipation to occur. o There is no way of determining whether the “Ransome” burner was really manufactured before the filing of the aforesaid application.therein is identical or substantially identical in construction with the aforesaid utility model. But the same could not be given credence since he himself admitted during cross-examination that he has never been connected with Manila Gas Corporation. o It must likewise be pointed out that Ong Bun Tua testified on the brochures allegedly of Manila Gas and of Esso Gasul and on the alleged fact that Manila Gas Corporation was importing from the United States "Ransome" burners. they are useless prior art references. (NOTE) o A careful examination of the alleged “Ransome” burner would show that it does not bear the word "Ransome" which is the burner referred to as the product being sold by the Petitioner. the prior art must show that each element is found either expressly or described or under principles of inherency in a single prior art reference or that the claimed invention was probably known in a single prior art device or practice. o It is relevant and material to state that in determining whether novelty or newness is negatived by any prior art. He could not even present any importation papers relating to the alleged imported ransome burners. therefore. o There is no indication of the time or date it was manufactured. L-32160 January 30.R. whereas plaintiff's mould Page 13 of 24 . Aguas requested Aquino to make engravings of the same type and bearing the characteristics of plaintiff's MOULDS (NOTE) Aquino & Sons eventually engraved for Aguas. 658 for a "new and useful improvement in the process of making mosaic pre-cast tiles. Aquino & Sons engraved the moulds embodying plaintiff's patented improvement for the manufacture of pre-cast tiles. AGUAS.DOMICIANO A. 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. tiles shaped out of these moulds at the back of which was imprinted plaintiff's patent number. 1959 plaintiff-appellee filed a patent application with the Philippine Patent Office. plaintiff furnishing said defendant the actual model of the tiles in escayola and explained to said engraver the plans. The tiles produced by the respective moulds were substantially Identical to each other in size. Defendant Aguas personally. respondents. 1960. easement. which possess the new features and characteristics covered by plaintiff's parent. the same moulds as that of De Leon covered by the patent and for which it charged Aguas double the rate it charged plaintiff De Leon. specifications and the details of the engravings as he wanted them to be made. Defendant F. Subsequently. artistic slope of easement and critical depth of the engraving that plaintiff wanted for his moulds The engraver Enrique Aquino knew that the moulds he was engraving for plaintiff were the latter's very own. vs. said office issued in his favor Letters Patent No.H. 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. as a building contractor. petitioner. including an explanation of the lip width. Facts: On December 1. DE LEON and COURT OF APPEALS. purchased from plaintiff. CONRADO G. and on May 5. and having complied in all respects with the statute and the rules of the Philippine Patent Office.turns out tiles 4 x 4 inches in size. H. Conrado G. Aguas the engravings. using and selling tiles embodying said patent invention. Aguas filed an answer stating that: o Plaintiff is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast tiles. Page 14 of 24 . On April 14. Alleging that being the original first and sole inventor of certain new and useful IMPROVEMENTS in the process of making mosaic pre-cast tiles. o The patent was secured through gross misrepresentation. defendant Aguas' mould is made to fit a 41/4 x 4-1/4 inch tile. Aguas and F. castings and devices designed and intended of tiles embodying plaintiffs patented invention. Trial Court ruled in favour of De Leon patent and its infringement by petitioner. 658 was lawfully granted and issued to him. CA affirmed the ruling of the trial court. Aquino and Sons. Held: YES. the same having been used by several tile-making factories in the Philippines and abroad years before the alleged invention by de Leon. de Leon filed in the CFI a complaint for infringement of patent against Domiciano A. Defendant F. 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. H. 658 by making. he lawfully filed and prosecuted an application for Philippine patent. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. Issue: Whether there was patent infringement committed by petitioner. Patent No. Aguas infringed Letters of Patent No. 1962. which previously had not been achieved by tiles made out of the old process of tile making. 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. The records disclose that de Leon's process is an improvement of the old process of tile making. artistic and suitable for wall ornamentation. Page 15 of 24 . o These tiles are neither artistic nor ornamental. The old type of tiles were usually intended for floors although there is nothing to prevent one from using them for walling purposes. The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill. and o the fact that the tiles can be mass produced in commercial quantities and can be conveniently stock-piled. among other ingredients that makes possible the production of tough and durable wall tiles. The tiles produced from de Leon's process are suitable for construction and ornamentation. handled and packed without any intolerable incidence of breakages. though thin and light. De Leon never claimed to have invented the process of tile-making. Some of the novel features of the private respondent's improvements are the following: o critical depth. o Ideal composition of cement and fine river sand. o the engraving of deep designs in such a way as to make the tiles decorative. The Claims and Specifications of Patent No. there were novel and inventive features mentioned in the process. o They are heavy and massive. De Leon's invention has therefore brought about a new and useful kind of tile. 658 show that although some of the steps or parts of the old process of tile making were described therein. o The Machuca tiles are different from that of the private respondent. and that the private respondent had copied some designs of Pomona. o Besides. but with sufficient durability. o Cement tiles are made with the use of water. He has improved the old method of making tiles and pre-cast articles which were not satisfactory because of an intolerable number of breakages. that these tiles have also depth. suffice it to say that what is in issue here is the process involved in tile making and not the design. the Machuca tiles are heavy and massive. easement and field of designs. o The Pomona tiles are made of ceramics. o The designs are embossed and not engraved as claimed by the petitioner. He has introduced a new kind of tile for a new purpose. o There may be depressions but these depressions are too shallow to be considered engraved. As regards the allegation of the petitioner that the private respondent copied some designs of Pomona. o Durability inspite of the thinness and lightness of the tile. Page 16 of 24 . 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. while in ceramics fire is used. especially if deep engravings are made on the tile. is assured. o The process involved in making cement tiles is different from ceramic tiles. provided that a certain critical depth is maintained in relation to the dimensions of the tile. lip width. There is no similarity between the Pomona Tiles and de Leon's tiles. o He has overcome the problem of producing decorative tiles with deep engraving. The plaintiff is now and has been engaged. Cristo Street. Defendant Coo Teng Hee. issued by the United States Patent Office on September 2. has been manufacturing and selling plows of the kind. L-36650 January 27. Petronila Chua. Page 17 of 24 .507. Ma. PETRONILA CHUA. the defendant. CFI ruled in favour of plaintiff. 1924. 90 plows of the form. has been selling to his customers in his store on J. Iloilo. in the manufacture and sale of plows of the kind. 1. brought this action to restrain the appellants and the other defendant entity.. That. since the filing of the complaint to date. B-1 and B-2. Also. 2. No.530 on certain plow improvements. B-1 and B-2 which it has been selling in its store on Sto. having bought said plows from his codefendant. Plaintiff is the registered owner and possessor of United States Patent No. Basa Street in Iloilo. vs. defendant Cham Samco & Sons. plaintiff-appellee. ET AL.530 issued by the United States Patent Office on September 2. the plaintiff herein. 4 and 5. who manufactures them in her factory on Iznart Street. Facts: Angel Vargas.507. said plows being of different sizes and numbered in accordance therewith from 1 to 5. Cham Samco & Sons.R. 1924. Manila.. plows of the kind. bought of its co-defendant Coo Kun & Sons Hardware Co. their agents and mandatories. 1933 ANGEL VARGAS. 1. since the issuance of his patent. type and design of Exhibits B.G. of different sizes. defendants-appellants. designated by Nos. Petronila Chua. type and design covered by the aforementioned patent. from continuing the manufacture and sale of plows similar to his plow described in his patent No. type and design represented by Exhibits B. Issue: Whether the plow (Exhibit F) constitutes a real invention or an improvement for which a patent may be obtained. B-1 and B-2. type and design represented by Exhibits B. perhaps. F. the same type of plows had been manufactured in this country and had been in use in many parts of the Philippine Archipelago. and because. Exhibits B. for which Patent No. we are firmly convinced that the appellee is not entitled to the protection he seeks for the simple reason that his plow. Vargas. does not constitute an invention in the legal sense. that its graduation could be carried through with more certainty by the use of the bolt which as has already been stated. and the plow. manufactures. that deeper furrows can be made with the new model. In view of the foregoing. on March 12. Exhibit 3-Chua which was originally patented by the appellee. which was declared null and void by the Supreme Court in the case of Vargas vs. was issued in his favor. according to the evidence. we have seen that the same results can be had with the old implement. have been manufacturing since 1918.530. M. upon which much emphasis was laid. No substantial difference exists between the plow. o Not only is there no fundamental difference between the two plows but no improvement whatever has been made on the latest model. As to the fact.507. for the same working and movement of the beam existed in the original model with the advantage. long before he obtained his last patent.Held: NO. Exhibit F. Coo Pao and Petronila Chua. the plaintiff obtained a patent from the United States Patent Office. 1. especially in the Province of Iloilo. 1912. Page 18 of 24 . Exhibit F. (NOTE) o These holes and bolt with its nut were suppressed in Exhibit F in which the beam is movable as in the original plow. Yap Tico & Co. The only difference noted by us is the suppression of the bolt and the three holes on the metal strap attached to the handle bar. and Exhibit 3-Chua represents the plow for which.. B-1 and B-2 are samples of the plows which the herein appellants. The evidence shows that Exhibit F is the kind of plows the plaintiff. was adjustable and movable. Angel Vargas. we cannot escape the conclusion Page 19 of 24 . the plaintiff introduces the patent in evidence. and each of them. F. Justice Story and other authorities. Yaptico & Co. o The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. o Where." o The burden of proof to substantiate a charge of infringement is with the plaintiff. it affords a prima facie presumption of its correctness and validity. however. or prior use. the exact question is whether the defendant has assumed the burden of proof as to anyone of his defenses. 1793.. we said: o When a patent is sought to be enforced. it was always the rule. having reached it. "it has been repeatedly held by this court that a single instance of public use of the invention by a patentee of more than two years before the date of his application for his patent will be fatal to the validity of the patent when issued. are open to judicial examination. and since a patent has been submitted. and particularly of the examination we have made of the plows. as stated by Lord Coke. the question of the validity of the patent is one for judicial determination. o As said by the United States Supreme Court. that to entitle a man to a patent. later amended to be as herein quoted. if it is the due form. for the critical and expert examination of the invention by the United States Patent Office. yet. o Under the English Statute of Monopolies and under the United States Patent Act of February 21. novelty. therefore. o Although we spent some time in arriving at this point. "the questions of invention. the invention must be new to the world. In the above mentioned case of Vargas vs. M. o With all due respects. the question in the case is single and can be brought to a narrow compass." We repeat that in view of the evidence presented. o The burden then shifts to the defendant to overcome by competent evidence this legal presumption. Sometime in November 1993. vs. private respondent sent a letter to petitioner advising it of its existing patent and its rights thereunder. G. petitioner. No. should it proceed with the scheduled testing by the military. 118708 February 2. The complaint alleged. private respondent was granted by the Bureau of Patents. PDR 77 CB4" which it developed as early as December 1981 under the Self-Reliance Defense Posture Program (SRDP) of the AFP. warning petitioner of a possible court action and/or application for injunction... No. respondents. a Letters Patent covering an aerial fuze which was published in the SeptemberOctober-1990. production. Petitioner filed a complaint for injunction and damages arising from the alleged infringement before the RTC. 1998 CRESER PRECISION SYSTEMS. does not constitute an invention and. COURT OF APPEALS AND FLORO INTERNATIONAL CORP. private respondent. Trademarks and Technology Transfer (BPTTT). consequently. 1990. distribution and sale of military armaments. III. Facts: Private respondent is a domestic corporation engaged in the manufacture. the privilege invoked by him is untenable and the patent acquired by him should be declared ineffective.that the plow upon which the appellee's contention is based. true and actual inventor of an aerial fuze denominated as "Fuze. munitions. To protect its right. INC. Vol. On January 23.R. 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. airmunitions and other similar materials. among others: o that petitioner is the first. discovered that petitioner submitted samples of its patented aerial fuze to the AFP for testing. 5 issue of the Bureau of Patent's Official Gazette. Page 20 of 24 . petitioner began supplying the AFP with the said aerial fuze." (Section 42. RTC issued a TRO. RA 165 to include only "the first true and actual inventor. o Sec. such absence Page 21 of 24 . RA 165) qualified by Sec. 165). Petitioner’s Contention: It can file. MR denied. title or interest in and to the patented invention. o Private respondent's aerial fuze is identical in every respect to the petitioner's fuze and that the only difference between the two fuzes are miniscule and merely cosmetic in nature. CA reversed the ruling of the RTC. title or interest to the patented invention. RTC issued the WPI prayed for by the petitioner. an action for infringement not as a patentee but as an entity in possession of a right. "this court finds the foregoing to be untenable. Private respondent submitted its memorandum alleging that petitioner has no cause of action to file a complaint for infringement against it.A. under Section 42 of the Patent Law (R. o since it has no patent for the aerial fuze which it claims to have invented.o Sometime in 1986. his heirs. o With regards to the defendant's assertion that an action for infringement may only be brought by "anyone possessing right. Hence. this petition. o that petitioner's available remedy is to file a petition for cancellation of patent before the Bureau of Patents. 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. 10. legal representatives or assignees. It advances the theory that while the absence of a patent may prevent one from lawfully suing another for infringement of said patent. a person or entity who has not been granted letters patent over an invention and has not acquired any light or title thereto either as assignee or as licensee. Under the aforequoted law. only the patentee or his successors-ininterest may file an action for infringement. assignees. whether as patentee. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his right. In short.A. Held: NO. Civil action for infringement.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. The phrase "anyone possessing any right. — Any patentee. refers only to the patentee's successors-in-interest. whose rights have been infringed. This remedy may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law. Section 42 of R. Moreover. . of the exclusive right. . 165. Issue: Whether contention of petitioner is correct. or anyone possessing any right. may bring a civil action before the proper Court of First Instance (now Regional Trial court). . title or interest in and to the patented invention. explicitly provides: Sec. 42. Petitioner admits it has no patent over its aerial fuze. or as grantees. has no cause of action for infringement because the right to maintain an infringement suit depends on the existence of the patent. title or interest in and to the patented invention" upon which petitioner maintains its present suit. since whatever right one has to the invention covered by the patent arises alone from the grant of patent. there can be no infringement of a patent until a patent has been issued. assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested. Page 22 of 24 . otherwise known as the Patent Law. Petitioner however failed to do so. gives the inventor the right to exclude all others. 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. such as by offering it for sale. As a patentee. Further. o The reason for this is that the said remedy is available only to the patent holder or his successors-in-interest. Under American jurisprudence. use and vend his own invention. 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. the world is free to copy and use it with impunity. an inventor has no common-law right to a monopoly of his invention. o Thus. Hence. however. Therefore. but if he voluntarily discloses it. 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. he has the exclusive right of making. still it has no right of property over the same upon which it can maintain a suit unless it obtains a patent therefor. using or selling the invention. anyone who has no patent over an invention but claims to have a right or interest thereto cannot file an action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. While petitioner claims to be the first inventor of the aerial fuze. A patent. petitioner's remedy is not to file an action for injunction or infringement but to file a petition for cancellation of private respondent's patent. under Section 28 of the aforementioned law. o He can. Page 23 of 24 . He has the right to make. 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. by the issuance of the patent in question. accepted the thinness of the private respondent's new tiles as a discovery. it cannot now assail or impugn the validity of the private respondent's letters patent by claiming that it is the true and actual inventor of the aerial fuze. As such. In the case of Aguas vs. novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office. we stated that: The validity of the patent issued by the Philippine Patent Office in favor of the private respondent and the question over the investments. De Leon. in the absence of error or abuse of power or lack of jurisdiction or grave abuse of discretion. composed of experts in their field. In fine. Page 24 of 24 . The technical Staff of the Philippines Patent Office. we sustain the assailed decision of the respondent Court of Appeal. have.