IPL Digests – Week 10Parke Davis v. Doctor’s Frank v. Benito G. Sell v. Yap Jue Godines v. CA Del Rosario v. CA Smith Kline v. CA (2003) Phil Pharmawealth v. Pfizer Creser Precision v. CA Smith Kline v. CA Smith Kline v. CA Albana v. Director of Patents Parke, Davis & Pharmaceuticals, Inc. Corporation (1981) Abad Santos, J. Rights of Patentee Company v. Doctors' and V-Lab Drughouse FACTS On May 5, 1966, Parke, Davis & Company filed with the Court of First Instance of Rizal, Caloocan City a Complaint with Preliminary Injunction against Doctors' Pharmaceuticals, Inc. and V-Lab Drughouse Corporation o plaintiff is a foreign corporation organized and existing under the laws of the State of Michigan, U.S.A., with principal office situated in Detroit, Michigan, U.S.A o defendants are corporations organized and existing under the laws of the Philippines that on March 21, 1957, Letters Patent No. 279 was legally issued to plaintiff by the Patent Office of the Republic of the Philippines for an invention entitled "Therapeutically Valuable Esters and Method for Obtaining the Same" o plaintiff, through its wholly-owned local subsidiary, Parke, Davis & Company, Inc., a domestic corporation with main office at Mandaluyong, Rizal, has at great expense, established a market and a continuing demand for "Chloramphenicol Palmitate" in the Philippines and has for many years sold and is still selling this product in the Philippines defendant Doctors' Pharmaceuticals has knowingly infringed and is still knowingly infringing Claim 4 of said Letters Patent No. 279 of plaintiff o by selling, causing to be sold, using or causing to be used, "Chloramphenicol Palmitate", the substance covered by said Claim 4 of said plaintiff's Letters Patent No. 279, under the name "Venimicetin Suspension" o willfully and without the consent or authorization of plaintiff; defendant V-Lab has, likewise, knowingly infringed and is still knowingly infringing Claim 4 of said Letters Patent No. 279 by acting as distributor of defendant No. 1 of the latter's medicine called "Venimicetin Suspension" which contains "Chlorampenicol Palmitate" defendants have derived unlawful gains and profits from the aforesaid infringement to the great and irreparable injury, damage and prejudice of plaintiff, and have deprived plaintiff of legitimate returns which plaintiff would have otherwise received had it not been for defendants' infringing acts defendants, in advertising and selling the medicine of defendant No. 1 called "Venimicetin Suspension" have falsely and deceptively concealed that the same contains "Chloramphenicol Palmitate" and falsely and deceptively represented the same to contain "Chloramphenicol" o "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely different substances o defendants, in advertising and selling "Venimicetin Suspension", have falsely and deceptively used plaintiff's name and represented that defendant No. 1 holds a license from plaintiff for said medicine with, inter alia, the following words: "First Compulsory Licensee in the Philippines by Parke-Davis Company Detroit, Michigan, U.S.A." plaintiff has never granted defendant Doctors' Pharmaceutical any kind of license for any product o defendant Doctors' Pharmaceutical has not even applied for a compulsory license under plaintiff's Letters Patent No. 279, the only patent which covers "Chloramphenicol Palmitate" o the compulsory licensing case between plaintiff and Doctors' Pharmaceutical in the Philippine Patent Office (Inter Partes Case No. 181) dealt with plaintiff's Letters Patent No. 50 (which covers "Chloramphenicol") and not with plaintiff's Letters Patent No. 279 (which covers "Chloramphenicol Palmitate") o the resolution of the Director of Patents fixing the terms and conditions of the compulsory license for "Chloramphenicol" has not yet become final as the same is still subject to a pending motion for reconsideration o even if said resolution does become final, the compulsory license will not cover defendants' "Venimicetin Suspension" which actually contains "Chloramphenicol Palmitate" and, therefore, defendants' statement will still be false and misleading o defendants' use of the aforesaid false statement is designed to induce persons to purchase and physicians to prescribe the use of "Venimicetin Suspension" in the mistaken belief that it is identical with the "Chloramphenicol Palmitate" product manufactured and sold in the Philippines by plaintiff's subsidiary or that the active ingredient in said product has been obtained from plaintiff and/or that said product has been made under the supervision or control of plaintiff — thereby causing damage or loss to plaintiff. CFI Decision On May 6, 1966, the Court of First Instance issued an order which, among others, temporarily restrained the defendants "from directly or indirectly selling, using, causing to be sold or causing to be used any 'Chloramphenicol Palmitate' not manufactured by plaintiff or IPL: Digests | Week 10 | kb | 1 . 279. V-Lab Drughouse Corporation being merely a sales representative of the defendant. use and sell its own brands of medicinal preparation containing 'chloramphenicol. the substance is referred to as 'Chloramphenicol'. among others. Inc. For defendants would then be guilty of infringement of patent by selling. 1925. using or selling by any person without the authorization of the patentee." (Italics supplied. Benito FACTS: Plaintiffs allege that they are the owners of a patent covering hemp-stripping machine No.'" the Court of First Instance of Rizal issued the order dated August 22. 42. 1519579 issued to them by the United States Patent Office of December 16. 279 would be tantamount to preventing the defendant. he has embodied and used such spindles and their method of application and use." o That plaintiffs have for some time been manufacturing the machine under the patent.A. This is clearly an error considering that the said assumed fact cannot qualify as something which the court could take judicial notice of nor was it competent to so find in the absence of evidence formally presented to that effect.. o "The defendant. o "SEC. 279 is the same and that is. Inc. plaintiff's wholly-owned subsidiary. RIGHTS OF PATENTEES. or anyone possessing any right. — A patentee shall have the exclusive right to make. and the Court being of the opinion that there is no cause of action with respect to the principal defendant. That the defendant manufactured a hemp-stripping machine in which. 279. Doctors' Pharmaceuticals. without the consent or authority of the plaintiff as the holder of Letters Patent No. in Letters Patent No. Davis & Company. Claim 4 of which allegedly covers said substance. title or interest in and to the patented invention. use and sell the patented machine. because while under Letters Patent No. the allegations in the complaint that "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely different substances and that "Venimicetin Suspension" actually contains "Chloramphenicol Palmitate" and not "Chloramphenicol" as indicated in its package and label. Had the lower court hypothetically assumed as true. 50. without authority from the plaintiffs. the lower court had ruled against its veracity. 37. and duly registered in the Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235 of the Philippine Legislature on March 17. Inc. 50. causing to be sold. it necessarily would have to conclude that the complaint states causes of action for infringement of patent and for unfair competition. No." Order of dismissal by CFI set aside and the complaint for damages for infringement of patent and unfair competition reinstated. and such making. from exercising the right granted it by Letters Patent No. and to use the patented process for the purpose of industry or commerce. the difference being merely in the taste. throughout territory of the Philippines for the term of the patent. affirmed by the Supreme Court. Parke." defendants filed a Motion to Dismiss alleging. CIVIL ACTION FOR INFRINGEMENT . and this Court to state that there was infringement of Patent with respect to Letters Patent No. may bring a civil action before the proper Court of First Instance. THE SUBSTANCE HAS BEEN DENOMINATED AS 'Chloramphenicol Palmitate' yet it is the opinion of the Court that 'Chloramphenicol' and 'Chloramphenicol Palmitate' are the same. 1924. which dismissed the complaint on the ground of lack of cause of action: o "After a careful consideration of the arguments for and against the motion to dismiss. Frank vs." o "It would further render nugatory the decision of the Director of Patents. Doctors' Pharmaceuticals. o That the important feature of the machine "is a spindle upon which the hemp to be stripped is wound in the process of stripping. the substance known as 'Chloramphenicol'. 50 and Letters Patent No. 165 provide: o "SEC. is likewise of the opinion that there is no cause of action with respect to the defendant. and is IPL: Digests | Week 10 | kb | 2 . YES instead of hypothetically assuming the truth of the plaintiff's allegation that "Chloramphenicol" and "Chloramphenicol Palmitate" are two different substances. Sections 37 and 42 of R. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his rights. 1966. whose rights have been infringed. and in view of the fact that the substance covered by Letters Patent No. the right to use and import 'Chloramphenicol'. — Any patentee.).. Inc. article or product. V-Lab Drughouse Corporation. for the purpose of the motion to dismiss. Doctors' Pharmaceuticals. granting the defendant. The existence of two patents separately covering said substances simply militates against said factual assumption and requires the presentation of evidence sufficient to convince the court that said substances are indeed the same. constitutes infringement of the patent. using and causing to be used "Chloramphenicol Palmitate"." ISSUE AND RULING Whether the petitioner has a cause of action against respondents as a patentee. that the complaint states no cause of action against them since defendant Doctors' Pharmaceutical "was granted a compulsory license to manufacture. and for a temporary injunction restraining him in the manufacture of other machines of the same kind of its exhibition. are then applied to and are in force and effect in the Philippine Islands. which has circulated or not in the Philippine Islands for the sale thereof or its private exploitation. and the defendant does not have a patent. the defendant had no legal right to appropriate the basic principle upon which the plaintiffs obtained their patent. together with its conditions and specifications. and that there was nothing new or novel in the application of it by the plaintiffs. it affords a prima facie presumption of its correctness and validity. whether patented or not. it must be conceded that the basic principle of the spindle upon which the defendant relies is founded upon the basic principle of the spindle for which the plaintiffs have a patent. and the proof is conclusive that the defendant is infringing upon the basic principle of the spindle as it is defined and specified in plaintiffs' patent. and that decision further holds that: o The burden of proof to substantiate a charge of infringement is with the plaintiff. yet. exhibiting his machine to the public for the purpose of inducing its purchase. o That the defendant's machine is an infringement upon the patent granted the plaintiffs. Assuming. the plaintiff introduces the patent in evidence. the defendant cannot infringe upon its basic principle. The burden the shifts to the defendant to overcome by competent evidence this legal presumption. the United States Patent Office issued to the plaintiffs the patent in question No. that the defendant's spindle is an improvement upon and is a better spindle than that of the plaintiffs. 1519579. the patent. o That the defendant has never had at any time nor does he have any knowledge of any suppose invention of the plaintiffs of whatever kind of hemp-stripping machine. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. ISSUES + RULING: Whether or not the lower court erred in granted the injunction prayed for against the defendants with regard to the use of their machine—NO It is conceded that on December 16. The spindle of the plaintiffs was made of wood. has its characteristics and original invention belonging to the defendant which consist of two pinions with horizontal grooves which form the tool for extracting the fibers between a straight knife upon another which is cylindrical and provided with teeth and on the center of said two pinions there is a flying wheel its transmission belt connecting it with the motor. Be that as it may. together with the spindle upon which the defendant relies are exhibits in the record and were before the court at the time this case was argued. and the basic principle of plaintiffs' patent is the spindle upon which they rely. and made part of. The plaintiffs having obtained their patent. the original patent is in evidence. together with its specified manner and mode of operation. DISPOSITION: The judgment of the lower court is affirmed Carlos Gsell v Valeriano Veloso Yap-Jue IPL: Digests | Week 10 | kb | 3 . That of the defendant was somewhat similar in shape. 1924. After such registration the patent laws. Be that as it may. The lower court rendered judgment in legal effect granting the plaintiffs the injunction prayed for in their complaint. under the authority above cited. o That the use by the defendant of such spindles and the principle of their application to the stripping of hemp is in violation of. Where." patent of which is duly registered. The defendant demurred to the complaint upon the ground that the facts alleged therein do not constitute a cause of action. and in conflict with. and plaintiffs pray for an injunction that the defendant be required to account to plaintiffs for any profits he may have made by reason of such infringement. but was made of metal with rough surface. without deciding. which was duly registered in the Philippines Islands. and the defendant claims that his spindle was more effective and would do better work than that of the plaintiffs. the injunction be made permanent. o That the hemp-stripping machine of the plaintiffs. In the instant case. and that it was error to make William Henry Gohn plaintiff. and that upon the final hearing. plaintiffs' patent. and absolving them from defendant's counterclaim. conical in shape and with a smooth surface. 1925. it never occurred to the defendant to imitate the unknown invention of the plaintiffs. if it is in due form. The defendant contends that the basic principle of the spindle was a very old one in mechanics. as they exist in the United States for such patent. and judgment against the defendant for costs. the plaintiffs applied for and obtained their patent with its specifications which are attached to. and in the final analysis. known as "La Constancia. o That not having had any knowledge of any kind of hemp-stripping machine supposed to have been invented by the plaintiffs. and it was duly registered in the Bureau of Commerce and Industry of the Philippine Islands on March 17. that it is ambiguous and vague. The spindle upon which the patent was obtained. however. the plaintiffs have a patent for their machine. that kerosene and alcohol blast lamps are agencies for producing and applying heat. the plaintiff does not and cannot claim a patent upon the particular lamp used by him. o According to the express language of the judgment. then will no patent for a combination be IPL: Digests | Week 10 | kb | 4 . Principal case: Action to enjoin infringement of a patented process for the manufacture of curved handles for canes. 2) That alcohol is an equivalent and proper substitute. issued in favor of Henry Gsell. except only that he be substituted for a lamp fed with petroleum or mineral oil. is an unessential part of the patented process the use of which was prohibited by the said judgment. o Obtained a judgment against defendant. 19228. in connection with blast lamps or blowpipes such as that which plaintiff uses in the patented process AND 2) The use of a blast lamp or blowpipe fed with petroleum or mineral oil. well known as such.” Then the process of making the handles was fully described therein. On appeal. by which the flame is secured. That it is and for many years has been known that one may for all ordinary purposes be used in the place of the other. lamp fed with alcohol. Counsel for plaintiff invokes the doctrine of "mechanical equivalents. and especially for the purpose of applying heat in the manner described in the patent o THUS. “It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum. its mode of application. constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part of the patented process a well-known mechanical equivalent. rather than one fed with alcohol. o But the trial court says that this implies that in the present case the following were established: 1) That the use of the lamp fed with petroleum or mineral oil was an unessential part of the patented process the use of which by the accused was prohibited by the said judgment. o Plaintiff in that case established title to a patent covering such process in question. and by him transferred to Carlos Gsell…. and its general design distinguish it in no essential particular from that used by the plaintiff. and its shape varies in unimportant details. that: 1) Alcohol is an equivalent or substitute. thus begging the whole question. well known throughout the world long prior to 1906. gives him the exclusive right to the use of "la lamparilla o soplete. parasols and umbrellas. Thus. which do not affect the principle of the blast lamp used in the patented process. which was a perpetual injunction restraining its infringement. contempt proceedings were instituted against the defendant. Consequently the contempt with which the accused is charged has not been fully and satisfactorily proved. The defendant continued to manufacture curved cane handled for walking sticks and umbrellas by a process in all respectes identical with that used by the plaintiff under his patent.” o The Court recognizes that such doctrine is founded on sound rules of reason and logic. but the principle on which it works. o These acts were not clearly and manifestly contrary to the precise terms of the prohibition. without license or authority therefor. or the mode of application of heat authorized by the patent. o The Doctrine of Mechanical Equivalents: (citing various decisions of the US Federal Courts) o If no one can be held to infringe a patent for a combination unless he uses all the parts of the combination and the identical machinery as that of the patentee. well known as such at the time when the patent was issued. defendant's blast lamp is fed with alcohol. The patent. o The appellant has failed to affirmatively establish either of these two essential facts. are not sufficient to support a contention that the process in one case is in any essential particular different from that used in the other. the petitioner (appellant) asks the question: whether or not the use of a patented process by a third person. o It was clearly proven at the trial. and the order appealed from should accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt. and resting on the fact that unessential changes. for the purpose of accommodating the principle. to the different physical and chemical composition of the fuel used therein. however. Substantially the same question is submitted in these new proceedings as that submitted in the former case. alimentada de petroleo o esencia mineral" (the small lamp or blowpipe fed with petroleum or mineral oil) in manufacturing curved handles for umbrellas and canes o True. o The ground for the rejection of the claims in each case being the same. ISSUES + RULING: The Supreme Court rules that. without proving the same. for mineral oil or petroleum in connection with the said process. Trial Court: Found defendant NOT GUILTY. the date of the issue of the patent. for mineral oil or petroleum. the prohibition is against the manufacture of canes and umbrellas with curved handles by means of the use of a cool or mineral oil-burning lamp or blowpipe and the parties have stipulated that the defendant did not use a coal or mineral oil-burning lamp but an alcohol-burning lamp. based on testimony introduced in the trial courts. which process was protected by patent No. He has merely assumed their existence. and is of universal application such that it doesn’t matter which sovereignty issued the patent – the patent would still be covered. In 1979. (Weird because found the trial court mentioned defendant was not guilty.000 damages and P80. who subsequently assigned it to private respondent SV-Agro Enterprises. Court of Appeals (1993) Romero. IPL: Digests | Week 10 | kb | 5 . wherein plaintiff was declared the owner of the patent in question. SV-Agro Industries notified Godines about its patent and demanded that he stop manufacturing and selling similar power tillers. he could not be liable for infringement of patent and unfair competition. o That the defendant having admitted the fact that he applied heat for the purpose of curving handles for canes and umbrellas by means of a blast lamp fed with alcohol. No job orders were presented in evidence. hence.infringed. Godines did not comply. FACTS: Letters Patent No. and defendant enjoined from its infringement.000 as unrealized profits. (King v Louisville Cement) o Mere formal alterations in a combination in letters patent are no defense to the charge of infringement and the withdrawal of one ingredient from the same and the substitution of another which was well known at the date of the patent as a proper substitute for the one withdrawn is a mere formal alteration of the combination if the ingredient substituted performs substantially the same function as the one withdrawn. could substitute in the place of the mechanism described without the exercise of the inventive faculty. RTC: Godines liable. this petition. or of substituting mechanical equivalents. o Godines judicially admitted two (2) units of the turtle power tiller sold by him to Policarpio Berondo. selling and distributing them long before plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental. for one ingredient another which was well known at the date of the patent as a proper substitute for the one withdrawn. o Those made by him were different from those being manufactured and sold by SVAgro Industries. No one infringes a patent for a combination who does not employ all of the ingredients of the combination. UM-2236 was issued to one Magdalena Villaruz. and which performs substantially the same function as the one withdrawn. But the final judgment was that he was held in contempt. or adopts mere formal alterations. o It covers a utility model for a hand tractor or tiller. or substitutes. o It would be unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of plaintiff upon specifications of buyers without requiring a job order where the specification and designs of those ordered are specified. Godines’ defenses: o He was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his customers who gave their own specifications. Bona fide inventors of a combination are as much entitled to suppress every other combination of the same ingredients to produce the same result.) Godines v. CA: Affirmed. he does infringe. but upon his own specification and design. the language of the note in the descriptive statement applies to the operation of applying heat for the purpose of curving handles or canes and umbrellas by means of a blast lamp fed with alcohol. but if he employs all the ingredients. Hence. (Seymour v Osbourne) o An equivalent device is such as a mechanic of ordinary skill in construction of similar machinery. for certainly no one capable of operating a machine can be incapable of adopting some formal alteration in the machinery. SV-Agro Industries suffered a decline of more than 50% in sales in its Molave. ISSUES + RULING: WoN Godines is guilty of infringement. YES. Baka completely new proceeding ito. as well as by means of a blast lamp fed with petroleum or mineral oil. having the forms. o Ordered to pay P50. (Burden v Corning) o HELD: Under doctrine of equivalents. Upon investigation. The RTC made the following findings: o Petitioner admits in his Answer that he has been manufacturing power tillers or hand tractors. meaning that defendant is principally a manufacturer of power tillers. not upon specification and design of buyers. Judgment of Trial Court affirmed. he must be deemed to have contempt of violating the terms and the injunction issued in the principal case. The question of whether petitioner was manufacturing and selling power tillers is a question of fact better addressed to the lower courts. specifications and machine before him. thus. All alike have the right to suppress every colorable invasion of that which is secured to them by letters patent. it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner Pascual Godines. not substantially different from what they have invented and caused to be patented as to any other class of inventors. Zamboanga del Sur branch. contrary to the usual business and manufacturing practice. Inc. SV-Agro Industries filed a complaint for infringement and unfair competition before the RTC. J. which w those of a manufacturer or dealer other than the actual man appearance as shall deceive the public and defraud another DISPOSITION: Affirmed. The parts or components thereof are virtually the same. the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form. The RTC found that the literal infringement test was satisfied: o In appearance and form.R. o But a careful examination between the two power tillers will show that they will operate on the same fundamental principles. to determine whether there is exact identity of all material elements. 1996 Bellosillo. He sued Janito for infringement. Godines called his power tiller as a “floating power tiller. and such making. . or in any other feature of their appearance. Thus. Short Version: Del Rosario owned 2 letters patent for a utility model for karaoke. to the words of the claim. the harrow housing with its operating handle and the paddy wheel protective covering. J. Del Rosario v. 29. 37. . CA G. Right of Patentees. both the floating power tillers of Godines and the turtle power tiller of SV-Agro Industries are virtually the same. Godines’ welder of 11 years. petitioner is guilty of infringement under §37. it is not essential to show that the defendant adopted the device or process in every particular. RA 165: Sec. respectively. §29. o Doctrine of equivalents Recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. infringement is made out and that is the end of it. on the ground that the karaoke system was a universal product manufactured and marketed in most countries of the world. Facts: Roberto del Rosario filed a complaint for patent infringement against Janito Corporation. with effectivity having been extended for five (5) years starting 2 June 1988 and 14 November 1991. He prayed for prelim injunction. o To establish an infringement. Janito limited its comparison to the first letter patent of del Rosario. No.” The patent issued by the Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place. optional tuner or radio and microphone mixer with features to enhance ones voice. but CA reversed. o In infringement of patent. completely disregarding his second version of the karaoke machine covered by the second patent. design and appearance. and substantial. To determine whether the particular item falls within the literal meaning of the patent claims. In fine. TESTS TO DETERMINE INFRINGEMENT: o Literal infringement Resort must be had. o Moreover. in the first instance. despite citing differences between its machine and del Rosario. — A patentee shall have the ex or product. SC disagreed. committed by manufacturing a similar karaoke machine. If accused matter clearly falls within the claim. not by the names of things. RA 166 states: Sec. who in selling his goods shall give them the either as to the goods themselves or in the wrapping of the thereon. did not do enough to overturn this presumption. Janito. and granted the injunction. one or two tape mechanisms. alleging that he patented karaoke in the Philippines under 2 Letters Patent for Utility Models issued by the Director of Patents. and without in any way limiting the scope of u competition: (a) Any person. the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications. The issuance of letters patent by the Director are presumed correctly issued. configuration. Unfair competition. YES. Further. there is still infringement based on the doctrine of equivalents. infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and. rather than technical. Patentee constitutes infringement of the patent. and to use the patented process for the pur Philippines for the terms of the patent. identity in the test. 115106. xxx xxx xxx In particular. RTC granted. albeit with some modification and change. Despite these differences. He described his sing-along system as a handy multipurpose compact machine which incorporates an amplifier speaker. he learned that Janito was manufacturing a sing-along system bearing the trademark miyata or miyata IPL: Digests | Week 10 | kb | 6 ." Cañete. In early 1990. Proof of an adoption of the substance of the thing will be sufficient. such as the echo or reverb to stimulate an opera hall or a studio sound. according to this doctrine. — . but in the light of what elements do. with the whole system enclosed in one cabinet casing. performs substantially the same function in substantially the same way to achieve substantially the same result. WoN Godines is guilty of unfair competition. similarities or differences are to be determined. the operating handle. tried to show that the floating power tillers of the latter were different from SV-Agro Industries’. o Viewed from any perspective or angle. rights and remedies. March 15. there was prima facie proof of violation of his rights as patentee to justify the issuance of a writ of preliminary injunction in his favor during the pendency of the main suit for damages resulting from the alleged infringement. In issuing. for recording the singer and the accompaniment. use and sell the patented machine. using or selling by any person without authorization of the patentee constitutes infringement of his patent. both the models of del Rosario and Janito involve substantially the same modes of operation and produce substantially the same if not identical results when used. (h) both are encased in a box-like cabinets. reissuing or withholding patents and extensions thereof. under Sec. and the burden then shifts to respondent to overcome this presumption by competent evidence.karaoke substantially similar if not identical to the singalong system covered by the patents issued in his favor. (Yes) The grant of the writ of rests upon an alleged existence of an emergency or of a special reason for such an order before the case can be regularly heard. which involved an improved model of karaoke. threatens. if not identical to the audio equipment covered by the letters patent issued in favor of del Rosario. competent and reliable comparison between its own model present before the trial court and that of petitioner. the patentee is bound thereby and may not claim anything beyond them. and the essential conditions for granting such temporary injunctive relief are that the complaint alleges facts which appear to be sufficient to constitute a cause of action for injunction and that on the entire showing from both sides. Del Rosario’s rights as patentee have been sufficiently established. 55 of The Patent Law 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. or that both are used to play minus-one or standard cassette tapes for singing or for listening to. or if it is substantially similar to any other utility model so known. on the basis of its finding that petitioner was a holder of a utility model patent for a singalong system and that without his approval and consent private respondent was admittedly manufacturing and selling its own sing-along system under the brand name miyata which was substantially similar to the patented utility model of del Rosario On certiorari. Under Sec. then later issued a writ of preliminary injunction. it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice. such comparison was confined to the first model. and. and thus. Notwithstanding the differences cited by respondent corporation. The Patent Law expressly acknowledges that any new model of implements or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for utility model. CA (2003) Doctrine: When the language of its claims is clear and distinct. as assignee. some act probably in violation of the plaintiffs rights. and both may also be used to record a speakers voice or instrumental playing. it appears. Thus.” IPL: Digests | Week 10 | kb | 7 . that the injunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation. advertised and marketed in most countries of the world long before the patents were issued to del Rosario. In contrast a preliminary injunction may be granted at any time after the commencement of the action and before judgment when it is established that the defendant is doing. there is no dispute that the letters patent issued to petitioner are for utility models of audio equipment. WON Preliminary Injunction should lie. Hence this petition for review. and disregarded completely petitioners Utility Model No. Gabe. Thus. an application for patent over an invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity using Methyl 5 Propylthio-2Benzimidazole Carbamate. Consequently. like the guitar and other instruments. used or described within the country. and such making. throughout the territory of the Philippines for the term of the patent. Janito failed to present evidence that the utility models covered by the Letters Patents issued to petitioner were not new. bass and other controls. (d) both are used to sing with live accompaniment and to record the same. article or product for the purpose of industry or commerce. Jacinto to a clear. Del Rosario holds such a patent for karaoke. 6237 which improved on his first patented model. (e) both are used to enhance the voice of the singer using echo effect. (b) both are used to sing with a minus-one or multiplex tapes. Clearly. (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other. which does not possess the quality of invention but which is of practical utility. CA decision reversed. del Rosario has the exclusive right to make. the Director of Patents determines whether the patent is new and whether the machine or device is the proper subject of patent. He even holds another one. he sought from the trial court the issuance of a writ of preliminary injunction to enjoin Janito from using. the existence of the right to be protected. CA reversed. While Janito cited the differences between its miyata equipment and del Rosario’s audio equipment. in view of all the circumstances. which cover new models or implements or tools or of any Industrial product or of part of the same. 5269. or is procuring or suffering to be done. Trial court issued TRO. and that the facts against which the injunction is to be directed are violative of said right. or is about to do. Utility Model No. Here. and that the karaoke system was a universal product manufactured. 37 of The Patent law. Issue and Ratio: WON the Miyata Karaoke sing-along system is substantially similar. He proved that Janito was manufacturing a similar singalong system bearing the trademark miyata which infringed his patented models. The decision of the Director of Patents in granting the patent is always presumed to be correct. (i) both can be used with one or more microphones. and completely disregarded Utility Model No. on the ground that there was no infringement by the fact alone that Janito had manufactured the miyata karaoke or audio system. Thus. before the Philippine Patent Office. The Patent law provides for the issuance of patents for utility models. namely. Thus. (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment. Petition granted. SMITH KLINE v.. selling and advertising the miyata or miyata karaoke brand. there are only two requisites to be satisfied if an injunction is to issue. treble. 6237 which improved on the first. FACTS: Oct 8 1976: Smith Kline Beckman Corp filed. using. the application for the issuance thereof having been filed beyond the one year period from the filing of an application abroad for the same invention covered thereby. although with some modification and change. the Court finds nothing infirm in the appellate court’s conclusions with respect to the principal issue of whether Tycho Pharma committed patent infringement to the prejudice of SKBC. 14561 was issued. When the language of its claims is clear and distinct. o Smith Kline claimed that its patent covers or includes the substance Albendazole such that Tryco Pharma. a scrutiny of petitioners evidence fails to convince this Court of the substantial sameness of petitioners patented compound and Albendazole. 14561 in relation to the other portions thereof. goats. performs substantially the same function in substantially the same way to achieve substantially the same result. in violation of Section 15 of Republic Act No. horses. o Also averred that the Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole as its known ingredient. the patentee is bound thereby and may not claim anything beyond them. the IPL: Digests | Week 10 | kb | 8 . lungworms. 7. and even pet animals. sheep. RTC: Ruled in favor of Tryco Pharma. its general manager in the Philippines for its Animal Health Products Division. o Yet again. and that petition. o In other words. 14561 is null and void. identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound. that Letters Patent No. Smith Kline sued Tryco Pharma for infringement of patent and unfair competition. o Letters Patent No. CA: Affirmed RTC decision. paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. that there is no proof that it passed off in any way its veterinary products as those of petitioner. 3. 4. infringed Claims 2. 166 (The Trademark Law) for advertising and selling as its own the drug Impregon although the same contained petitioners patented Albendazole. RATIO: Whether or not the Court of Appeals erred in not finding that Albendazole is included in petitioners Letter Pattent No. a drug that has Albendazole for its active ingredient and is claimed to be effective against gastro-intestinal roundworms. o It bears stressing that the mere absence of the word Albendazole in Letters Patent No. even though it performs the same function and achieves the same result. cattle. Orinion. 14561 granted to petitioner SKBC does not include Albendazole for nowhere is such word found in the patent. 14561 does not cover the substance Albendazole for nowhere in it does that word appear. even if the patentee may have been entitled to something more than the words it had chosen would include. From an examination of the evidence on record. distributes and sells veterinary products including Impregon. 14561. enjoining it from committing acts of patent infringement and unfair competition. no mention is made of the compound Albendazole. 14561. o From a reading of the 9 claims of Letters Patent No. tapeworms and fluke infestation in carabaos. Sept 24 1981: Letter Patent No. 14561 “Doctrine of Equivalents” – provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and. for a term of 17 years. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. 14561. selling. o And so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied. cattle and goats. ISSUE: WON the Court of Appeals erred in not finding that Albendazole is included in petitioners Letter Pattent No. While both compounds have the effect of neutralizing parasites in animals. Tryco Pharma is a domestic corporation that manufactures. by manufacturing. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in SKBC’s letters patent. RTC issued a TRO against Tryco Pharma. petitioner’s evidence consists primarily of its Letters Patent No. the principle or mode of operation must be the same or substantially the same The doctrine of equivalents thus requires satisfaction of the function-means-and-result test. Tryco’s Answer: Letters Patent No. 165 (The Patent Law).benzimidazole carbamate also covers the substance Albendazole. and the testimony of Dr. o The letters patent provides in its claims that the patented invention consisted of a new compound named methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine. and causing to be sold and used the drug Impregon without its authorization. nor may they enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed. 14561 is not determinative of Albendazole’s non-inclusion in the claims of the patent. 8 and 9 of Letters Patent No. In the case at bar. Upon motion of Smith Kline. o Also alleged that Tryco Pharma committed unfair competition under Article 189. the patentee having the burden to show that all three components of such equivalency test are met. by which it sought to show that its patent for the compound methyl 5 propylthio-2. 1987 and valid until July 16. use and sell the patented machine. § 21 of RA 165 states that the life of a patent shall be 17 years for date of issuance (July 16. and (2) an urgent and paramount necessity for the writ to prevent serious damage. considering that its patent has expired. Pfizer and Pfizer (Phil. Pfizer demanded Phil Pharmawealth to stop and for the hospitals not to accept the bids but they ignored the demand and refused to comply. (RA) 165 (governing law at that time) states that: Section 37. CA: denied motion to dismiss. o Yet again. using. article or product.NO Phil Pharma: Pfizer’s exclusive right to monopolize the subject matter of the patent exists only within the term of the patent. 2004 The scope of the claims of the Patent extends to a combination of penicillin such as ampicillin sodium and beta lactam antibiotic like sulbactam sodium thus covering ampicillin sodium/sulbactam sodium (hereafter “Sulbactam Ampicillin”). The doctrine of equivalents thus requires satisfaction of the function-means-and-result test. Such fact was admitted by Pfizer and thus considered a judicial admission thus no evidence need be presented. although with some modification and change. The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and. performs substantially the same function in substantially the same way to achieve substantially the same result. Hence the present petition. identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound. 1986 . the principle or mode of operation must be the same or substantially the same. o And no extrinsic evidence had been adduced to prove that Albendazole inheres in SKBC’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. which come in oral and IV formulas. 2005.: FACTS: Pfizer is the registered owner of Philippine Letters Patent No. Pfizer filed special civil action for certiorari with the CA While case was pending with the CA.—A patentee shall have the exclusive right to make. language of Letter Patent No. Pfizer is marketing Sulbactam Ampicillin under the brand name “Unasyn. o While SKBC concedes that the mere literal wordings of its patent cannot establish Tyco Pharma’s infringement. it urges the Court to apply the doctrine of equivalents.” Phil Pharma filed Motion to Dismiss the petition filed with the CA for forum shopping.) filed a complaint for patent infringement against Phil Pharmawealth with the Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO). 14561 fails to yield anything at all regarding Albendazole. The sole and exclusive distributor of “Unasyn” products in the Philippines is Zuellig Pharma Corporation. Thus when the CA approved the bond on Jan. 2004). Case filed with the RTC has the same objective as the petition filed with the CA. the patentee having the burden to show that all three components of such equivalency test are met.” Pfizer’s “Unasyn” products. pursuant to a Distribution Services Agreement it executed with Pfizer Phils. namely: (1) the existence of a clear and unmistakable right that must be protected. are covered by Certificates of Product Registration (“CPR”) issued by the Bureau of Food and Drugs (“BFAD”) under the name of Pfizer. Phil Pharmawealth. throughout the territory of the Philippines for the term of the patent. vs. DISPOSITION: CA decision affirmed. Phil Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals.July 16. Pfizer filed a complaint with the RTC for infringement and unfair competition with damages with prayer for TRO. In other words. 18. distributing or selling Sulbactam Ampicillin products to any entity in the Philippines. Pfizer no longer had a right that must be protected. Without the consent of Pfizer. or selling by any person without the authorization of the patentee constitutes infringement of the patent. Inc. What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office? in case of interlocutory orders it is the CA IPL: Digests | Week 10 | kb | 9 . even though it performs the same function and achieves the same result. “prohibiting and restraining [petitioner]. Section 37 of Republic Act No. prayed for permanent injunction. a scrutiny of SKBC’s evidence fails to convince the Court of the substantial sameness of SKBC’s patented compound and Albendazole. Pfizer. use and sell a patented product. Phil Pharma filed Motion to Dismiss for the case being moot and academic since the patent of Pfizer has already lapsed. Patent already expired on July 16. and such making. which is to obtain an injunction CA: approved the bond filed and issued TRO. J. Inc. Two requisites must exist to warrant the issuance of an injunctive relief. BLA-IPO: issued a preliminary injunction which was effective for ninety days When it expired Pfizer asked for an extension of the injunction but was denied. and to use the patented process for the purpose of industry or commerce. RTC: Granted TRO. damages and the forfeiture and impounding of the alleged infringing products. ISSUE + RULING: Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed? . its agents. 21116 which was issued by this Honorable Office on July 16. Rights of patentees. (2010) Peralta. o While both compounds have the effect of neutralizing parasites in animals.” Hence the exclusive right of a patentee to make. representatives and assigns from importing. then subsequently issued preliminary injunction. article or process exists only during the term of the patent. 2004. However. (2) impoun documents sulbactam a products. its agents. selling or offering for sale Sulbactam Ampicillin products to the hospitals named in paragraph 9 of the Complaint or to any other entity in the Philippines. and (iv) making the injunction permanent. It is settled that one of the exceptions to the doctrine of primary jurisdiction is where the question involved is purely legal and will ultimately have to be decided by the courts of justice. knowledge and experience.YES The elements of forum shopping are: (a) identity of parties. representatives and assigns from importing. IPO RTC A. but an interlocutory order of the BLAIPO denying respondents’ motion to extend the life of the preliminary injunction issued in their favor.000. Hence.00 as exemplary damages. is to ask for damages for the alleged violation of their right to exclusively sell Sulbactam Ampicillin products and to permanently prevent or prohibit petitioner from selling said products to any entity.00 as actual damages.00 as attorney’s fees and litigation expenses. issue an ex parte order (a) temporarily restraining respondent. importi infringi various any ot otherw No. Rule 1 of the same Rules and Regulations. distributing.000. (iv) cos (3) ord forfeitur products the ma commiss such ma this Hon (4) ma It is clear from the foregoing that the ultimate objective which respondents seek to achieve in their separate complaints filed with the RTC and the IPO.000. and (b) impounding all the sales invoices and other documents evidencing sales by respondent of Sulbactam Ampicillin products. respondents seek substantially the same reliefs in their separate complaints with the IPO and the RTC for the purpose of accomplishing the same objective. the propriety of extending the life of the writ of preliminary injunction issued by the BLAIPO in the exercise of its quasijudicial power is no longer a matter that falls within the jurisdiction of the said administrative agency. However. There is no question as to the identity of parties in the complaints filed with the IPO and the RTC. what is being questioned before the CA is not a decision. (c) After tria (1) find Patent have no (2) ord followin (i) at l (ii) P50 P1. seizure or forfeiture of respondent’s infringing goods or products. Hence. 21116.000. experience and services in determining technical and intricate matters of fact. a (3) disposi channels of commerce. wherever they may be found. Owing to the substantial identity of parties. (ii) ordering respondent to pay complainants the following amounts: (a) at least P1. and C.000. reliefs and issues in the IPO and RTC cases. (c) identity of the two preceding particulars. its agents.’s Philippine Patent No. Is there forum shopping when a party files two actions with two seemingly different causes of action and yet pray for the same relief? . instead of the regular courts. or from otherwise infringing Pfizer Inc. selling or offering for sale Sulbactam Ampicillin products. After trial. 26810.000. 21116 and that respondent has no right whatsoever over complainant’s patent. in the absence of such a remedy. amount to res judicata in the action under consideration. render judgment: (i) declaring that respondent has infringed Pfizer Inc. (c) P1. After hearing. However.’s Philippine Patent No. regardless of which party is successful. issue a writ of preliminary injunction enjoining respondent. or at least such parties that represent the same interests in both actions. respondents correctly resorted to the filing of a special civil action for certiorari with the CA as they cannot appeal therefrom and they have no other plain.0 (iii) P3. in the present case. including the materials and implements used in the commission of infringement. such that any judgment rendered in the other action will. speedy and adequate remedy. As to Primary Jurisdiction: The initial filing of their complaint with the BLA IPO. to be disposed of in such manner as may be deemed appropriate by this Honorable Office. They claim that they have the exclusive right to make.Under RA 8293 (IPC Code) the Director General of the IPO exercises exclusive appellate jurisdiction over all decisions rendered by the Director of the BLAIPO. as provided under Section 3. respondents’ cause of action in their complaint filed with the IPO is the alleged act of petitioner in importing. a IPL: Digests | Week 10 | kb | 10 . acts that are supposedly violative of respondents’ right to the exclusive sale of the said products which are covered by the latter’s patent. 21116. or from otherwise infringing Pfizer Inc. is in keeping with the doctrine of primary jurisdiction owing to the fact that the determination of the basic issue of whether petitioner violated respondents’ patent rights requires the exercise by the IPO of sound administrative discretion which is based on the agency’s special competence. a careful reading of the complaint filed with the RTC of Makati City would show that respondents have the same cause of action as in their complaint filed with the IPO. the reliefs being founded on the same facts. representatives and assigns from importing. distributing. The resolution of this issue which was raised before the CA does not demand the exercise by the IPO of sound administrative discretion requiring special knowledge. use and sell Sulbactam Ampicillin products and that petitioner violated this right. particularly that of its Director General. selling or offering for sale Sulbactam Ampicillin products to the hospitals named in paragraph 9 of this Complaint or to any other entity in the Philippines. In the instant case. (a) Immedi an ex parte (1) tem agents. The Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights simply provides that interlocutory orders shall not be appealable. Immediately upon the filing of this action. (iii) ordering the condemnation. (b) P700. (b) identity of rights asserted and reliefs prayed for. distributing.’s Philippine Patent No. In fact. 268 (2) im docume sulbact (3) dis channe (b) Aft injuncti (1) enjo representat distributing sulbactam hospitals or Philippines. the provisions of the Rules of Court shall apply in a suppletory manner. and (d) costs of this suit. B. IPC Code is silent as to the remedy available in such case. o As to the argument that the order was disruptive of the status quo. 165. 1990: Floro Int’l was granted by BPTTT a Letters Patent covering an aerial fuze which was published in the Sept-Oct issue of the Bureau of Patents Official Gazette. warning Creser of a possible court action and/or application for injunction. and o Only difference between the two fuzes are miniscule and merely cosmetic in nature. Creser contends that it can file. x x x IPL: Digests | Week 10 | kb | 11 . title or interest to the patented invention. munitions. explicitly provides: o SECTION. The last actual . Civil action for infringement. Petition for certiorari filed with CA is DISMISSED for being moot and academic. thus subsequent case is dismissed w/o prejudice. production. RTC Case is likewise DISMISSED on the ground of litis pendentia. Floro Int’l alleged that: o Creser has no cause of action to file a complaint of infringement against it since it has no patent for the aerial fuze which it claims to have invented. may bring a civil action before the proper Court of First Instance (now Regional Trial court). Creser Precision Systems v. use and sell the same and that it stands to suffer irreparable damage and injury if it is enjoined from the exercise of its property right over its patent. MR denied. Floro Int’l sent a letter to Creser advising it of its existing patent and its rights thereunder. among others that: o Creser is the first. Floro Int’l will not suffer irreparable injury by virtue of said order. an action for infringement not as a patentee but as an entity in possession of a right. RA 165) qualified by Section 10. CA decision is REVERSED and SET ASIDE. distribution and sale of military armaments. the Court finds that respondents did not deliberately violate the rule on nonforum shopping. (Section 42. discovered that Creser Precision Systems submitted samples of its patented aerial fuze to the AFP for testing.decision in one case will necessarily amount to res judicata in the other action. otherwise known as the Patent Law. o Creser’s available remedy is to file a petition for cancellation of patent before the Bureau of Patents. the operations of Creser continue. 165). his heirs. whose rights have been infringed. peaceable uncontested status existing prior to this controversy was Creser manufacturing and selling its own aerial fuzes which was ordered stopped through the defendants letter. Sec. TC granted the issuance of WPI upon Creser’s posting of 200K bond. airmunitions and other similar materials. 42. TC held that it in effect maintained the status quo. and/or from performing any other act in connection therewith or tending to prejudice and deprive it of any rights. FACTS: Floro Int’l is a domestic corporation engaged in the manufacture. Floro Int’l as the patent holder cannot be stripped of its property right over the patented aerial fuze consisting of the exclusive right to manufacture. title or interest in and to the patented invention. Mr. On appeal. Creser prayed for TRO and/or WPI. Creser then filed a complaint for injunction and damages arising from the alleged infringement before RTC-QC. 1993: Floro Int’l. Hearing ensued. privileges and benefits to which it is duly entitled as the first. Any patentee. such absence does not bar the first true and actual inventor of the patented invention from suing another who was granted a patent in a suit for declaratory or injunctive relief recognized under American patent laws. title or interest in and to the patented invention. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his right. With issuance of the order. o In 1986.. RA 165 to include only the first true and actual inventor. Creser began supplying the AFP with the said aerial fuze. CA reversed and ruled in favor of Floro Int’l. NO. Gregory Floro. true and actual inventor of an aerial fuze which is developed as early as December 1981 under the SelfReliance Defense Posture Program (SRDP) of the AFP. The complaint alleged. Jr. o TC found untenable the assertion that an action for infringement may only be brought by anyone possessing right. TC ruled that Creser amply proved his right. To protect its right. marketing and/or profiting therefrom. He learned that Creser was claiming the aforesaid aerial fuze as its own and planning to bid and manufacture the same commercially without license or authority from Floro Int’l. through its president. 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. TC issued a TRO. should it proceed with the scheduled testing by the military. from manufacturing. It advances the theory that while the absence of a patent may prevent one from lawfully suing another for infringement of said patent. Floro Int’l’s MR denied. RATIO: Section 42 of R. In its memorandum. In response. or anyone possessing any right. under Section 42 of the Patent Law (R. CA & Floro Int’l (1998) MARTINEZ. DISPOSITION: Petition is PARTLY GRANTED. o Also. legal representatives to assignees. J. o Floro Int’ls aerial fuze is identical in every respect to the Cresers fuze.A. In the present case. This remedy may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law. true and actual inventor of the aerial fuze. o ISSUE + RULING: Whether or not Creser can file the complaint for injunction and damages.A. 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties. there can be no infringement of a patent until a patent has been issued. under Section 28 of the aforementioned law. On 30 March 1987. it filed a petition for compulsory licensing with the BPTTT for authorization to manufacture its own brand of medicine from the drug Cimetidine and to market the resulting product in the Philippines. such as by offering it for sale. The reason for this is that the said remedy is available only to the patent holder or his successors-in-interest. CA FACTS: Petitioner is a foreign corporation with principal office at Welwyn Garden City. 165. De Leon: The validity of the patent issued by the Philippine Patent Office and the question over the investments. anyone who has no patent over an invention but claims to have a right or interest thereto can not file an action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested. Private respondent is a domestic corporation engaged in the business of manufacturing and distributing pharmaceutical products. title or interest in and to the patented invention upon which Creser maintains its present suit. however. gives the inventor the right to exclude all others. that the petition was filed beyond the two-year protective period provided in Section 34 of R. since whatever right one has to the invention covered by the patent arises alone from the grant of patent. of the exclusive right. it has in its favor not only the presumption of validity of its patent. a person or entity who has not been granted letters patent over an invention and has not acquired any right or title thereto either as assignee or as licensee. which provides for the compulsory licensing of a particular patent after the expiration of two years from the grant of the latter if the patented invention relates to. England. The petition was filed pursuant to the provisions of Section 34 of Republic Act No. Cresers remedy is not to file an action for injunction or infringement but to file a petition for cancellation of Floro Int’l patent. has no cause of action for infringement because the right to maintain an infringement suit depends on the existence of the patent. only the patentee or his successors-in-interest may file an action for infringement. inter alia. however.\ o Private respondent alleged that the grant of Philippine Letters Patent No. use and vend his own invention. 12207 was issued on 29 November 1978. is not left without any remedy. but that of a legal and factual first and true inventor of the invention. It owns Philippine Letters Patent No. and \ o that it had the capability to work the patented product or make use of it in its manufacture of medicine. While Creser claims to be the first inventor of the aerial fuze. it has no legal basis or cause of action to institute the petition for injunction and damages. arguing that private respondent had no cause of action and lacked the capability to work the patented product. Petitioner opposed. the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon by Creser cannot be likened to the civil action for infringement under Section 42 of the Patent Law. As a patentee. Smith Kline vs. Thus. 165 for violating the due process and equal protection clauses of the Constitution. Inc. 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. Under American jurisprudence.A. CA: Since Floro Int’l is the patentee of the disputed invention embraced by letters of patent by the Bureau of Patents. Further. United Laboratories. Regulating the Issuance of Patents. novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office x x xThere is a presumption that the Philippine Patent Office has correctly determined the patentability of the improvement x x x. 12207 issued by the BPTTT for the patent of the drug Cimetidine. and that private respondent was motivated by the pecuniary gain attendant to the grant of a compulsory license. The phrase anyone possessing any right. he has the exclusive right of making. No. He has the right to make. BPTTT: hereby issued a license in favor of the herein [private respondent]. Said person. Under the aforequoted law. refers only to the patentees successors-in-interest. 12207 issued on IPL: Digests | Week 10 | kb | 12 . Aguas vs. In the absence of error or abuse of power or lack or jurisdiction or grave abuse of discretion. Hence. No. whether as patentee. A patent. assignees or grantees. DISPOSITION: CA affirmed.A. medicine or that which is necessary for public health or public safety. o Petitioner also maintained that it was capable of satisfying the demand of the local market in the manufacture and marketing of the medicines covered by the patented product. As such. and Appropriating Funds Therefor). [sic]under Letters Patent No. and inventor has no common-law right to a monopoly of his invention. Therefore. petitioner challenged the constitutionality of Sections 34 and 35 of R. In short. the world is free to copy and use it with impunity. using or selling the invention. the petition failed to specifically divulge how private respondent would use or improve the patented product. it can not now assail or impugn the validity of the Floro Int’ls letters patent by claiming that it is the true and actual inventor of the aerial fuze. Creser admits it has no patent over its aerial fuze. o Finally. we sustain CA decision. still it has no right of property over the same upon which it can maintain a suit unless it obtains a patent therefor.. Moreover. but if he voluntarily discloses it. Creser however failed to do so. WHAT IS CRESER’S REMEDY? He can. 5. In case [private respondent's] product containing the patented substance shall contain one or more active ingredients admixed therewith. That [private respondent] be hereby granted a non-exclusive and non-transferable license to manufacture. 6. This License shall inure to the benefit of each of the parties herein. included in such amount. 12207. Section A. [Private respondent] shall comply with the laws on drugs and medicine requiring previous clinical tests and approval of proper government authorities before selling to the public its own products manufactured under the license. The royalties shall be computed after the end of each calendar quarter to all goods containing the patented substance herein involved. said product hereinafter identified as admixed product. 1987. Trademarks and Technology Transfer duly delegated by him. AND MUST ACCORDINGLY BE SET ASIDE AND MODIFIED. if any. if any.— NO Pertinent portions of said Article 5. 12207 issued on November 29. In case of dispute as to the enforcement of the provisions of this license.5%) of the net sales in Philippine currency. or measured by the production sale. (b) Any termination of this license as provided for above shall not in any way operate to deny [petitioner] its rights or remedies.there is ample evidence to show that [private respondent] possesses such capability. The term "net scale" [sic] means the gross amount billed for the product pertaining to Letters Patent No. transportation. and 11. the royalty to be paid shall be determined in accordance with the following formula: Net Sales on Value of Patented ROYALTY = Admixed Product x 0. to the subsidiaries and assigns of [petitioner] and to the successors and assigns of [private respondent]. the matter shall be submitted for arbitration before the Director of Bureau of Patents. [private respondent] shall pay [petitioner] a royalty on all license products containing the patented substance made and sold by [private respondent] in the amount equivalent to TWO AND ONE HALF PERCENT (2. Trademarks and Technology Transfer. Ltd. Payments should be made to [petitioner's] authorized representative in the Philippines. after hearing and careful consideration of the evidence presented. November 29. made and sold during the precedent quarter and to be paid by [private respondent] at its place of business on or before the thirtieth day of the month following the end of each calendar quarter. (b) Trade. ISSUES + RULING: WHETHER OR NOT COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S DECISION VIOLATES INTERNATIONAL LAW AS EMBODIED IN (A) THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND (B) THE GATT TREATY. use and sell in the Philippines its own brands of pharmaceutical products containing [petitioner's] patented invention which is disclosed and claimed in Letters Patent No.2. [Private respondent] shall adopt and use its own trademark or labels on all its products containing the patented substance herein involved. By virtue of this license. x x x (2) Each country of the union shall have the right to take legislative to prevent the abuses which might result from the exercise of the failure to work. in the event that [private respondent] default [sic] in the payment of royalty provided herein or if [private respondent] shall default in the performance of other covenants or conditions of this agreement which are to be performed by [private respondent]: o o An assiduous scrutiny of the impugned decision of the public respondent reveals that the same is supported by substantial evidence. [sic] giving [petitioner] thirty (30) days-notice in writing to that effect. to terminate the license granted to its. quantity or cash discounts and broker's or agent's or distributor's commissions. having competent personnel. the Director of Patents ruled that . Moreover. less -(a) Transportation charges or allowances. It appears that at the time of the filing of the petition for compulsory license on March 24. and (d) Any tax. 8. or relieve [private respondent] of the payment of royalties or satisfaction of other obligations incurred prior to the effective date of such termination. it relates to medicine. either at laws [sic] or equity. [Private respondent] shall keep records in sufficient detail to enable [petitioner] to determine the royalties payable and shall further permit its books and records to be examined from time to time at [private respondent's] premises during office hours. 9. the subject letters Patent No. provide: A. hence. Trademarks and Technology Transfer or any ranking official of the Bureau of Patents. 12207. subject to the following terms and conditions1 CA: affirmed. excise or government charge included in such amount. That the license granted herein shall be for the remaining life of said Letters Patent No. allowed or paid. xxx (4) A compulsory license may not be applied for on the ground of fa (a) [Private respondent] shall have the right provided it is not in default to payment or royalties or other obligations under this agreement. if any. [Petitioner] shall have the right to terminate the license granted to [private respondent] by giving the latter thirty (30) days notice in writing to that effect. to the extent necessary to be made at the expense of [petitioner] by a certified public accountant appointed by [petitioner] and acceptable to [private respondent]. 3. This license take [sic] effect immediately. URUGUAY ROUND. machines and equipment as well as permit to manufacture different drugs containing patented active ingredients such as ethambutol of American Cyanamid and Ampicillin and Amoxicillin of Beecham Groups.025 x Substance Value of Patented Value of Other Substance Active Ingredients 4. 1978. and (c) Notice of termination of this license shall be filed with the Bureau of Patents. (c) Credits or allowances. 7. The patented invention relates to compound and compositions used in inhibiting certain actions of the histamine. 10. use of delivery of the products. IPL: Digests | Week 10 | kb | 13 . given or made on account of rejection or return of the patented product previously delivered. o 1 1. 12207 unless this license is terminated in the manner hereinafter provided and that no right or license is hereby granted to [private respondent] under any patent to [petitioner] or [sic] other than recited herein. 1978 has been in effect for more than two (2) years. promulgated on 14 December 1977. grant ofAnd a sub-license. evidence. or is necessary for public health or public safety. he shall. violated--NO In the explanatory note of Bill No.A. years by from date of the grant of the (d) If the working of the invention within the country is being prevented or hindered thethe importation of the patented letters patent. or the application of the patented process for production. the establishment of any new trade or industry in the Philippines is prevented. used In fact. 165. findings were fully supported by substantial 165. it shall be refused if the patentee justifies inaction by reasons. period of two years to enjoy his exclusive rights Article Two. An example provided of possible abuses is ratification on 16 December 1994.product. under any of the In Parke. Uruguay Round. although capable of being so o The right to exclude others from the worked. three years [now two complete (2) In any of the above cases. or the trade same after a period of three [now two] or industry therein is unduly restrained. No. fits well within the aforequoted \Whether or not petitioner’s right of due process was provisions of Article 5 of the Paris Convention. R. No. use. the patentee is not article. following circumstances: (a) If the patented invention is not being worked within the Philippines onInc: a commercial scale. 35. using. a compulsory license shall be granted to the petitioner provided that years] he hasofproved his over the patent. manufacturing. it is plain that the effect. as R. Article 5 of the Law. by reason of refusal of the patentee to grant a license or licenses on reasonable terms. theoflaw recognizes just SEC.A.relating or by reason of the should article be conditioned any attached by the patentee to licensee or to the purchase. The case at bar refers more particularly to subparagraph (e) of paragraph 1 of Section 34 -. Grounds for Compulsory Licensing.[13] But "failure to work. exercise of the exclusive rights conferred by the o The President signed the instrument of patent. but are consistent with. even if the Act was the provisions of the GATT treaty. 1263. provide for the grant of compulsory licenses to Neither may petitioner validly invoke what it prevent abuses which might result from the designates as the GATT Treaty. and which our Congress BPTTT exhaustively studied the facts and its likewise wished to prevent in enacting R. except doubted that the aforequoted provisions of with that part of the enterprise or goodwill which exploits such license.A. No. or vend the process or machine for production. this treaty has no retroactive supplied by way of an example. Doctors' Pharmaceuticals. within one hundred eighty days from the date the petition was filed.A. even in theorform of thesafety. Compulsory capability to work the patented product or to make use of the patented product in monopoly the manufacture of a useful or to licensing of a patent on food or medicine employ the patented process. provides for a system of compulsory licensing 165 not only grants the patent holder a protective under a particular patent. of Chapter VIII read as follows: but subsequently. Grant of License. whichever period expires last. No. public with the quantity of the patented product. in or by means of a definite and substantial notand anadequate undue deprivation of proprietary establishment or organization in the Philippines and on a scale which is reasonable under the circumstances. or legitimate is necessary for Such public patent. or of anywhich proprietary (e) If the patented invention or article relates to food or medicine or manufactured entirely productsdeprived or substances can be right. Sections 34 and 35.A. Accordingly. R. -. the legislative and eminent domain clauses of the Bill of Rights intent in the grant of a compulsory license was not are mere conclusions which it failed to convincingly only to afford others an opportunity to provide the support.or substances which be used as of a period of four years from the date of filing of the patent applicationproducts or three years from the date of can the grant of the food orhis medicine.the patented invention or article relates to food or medicine or manufactured Whether or not petitioner can assail the jurisdiction of the BPTTT—NO IPL: Digests | Week 10 | kb | 14 . Davies & Co. The order shall state the terms and conditions of the license which he himself fix in default of an agreement on upon by the parties and in default of such the matter manifested or submitted by the parties during the hearing. Director of Patents (2) A compulsory license sought under Section 34-B shall be issued within one hundred twenty the days from the filing ofmay the fix the terms and conditions of the license. that full-blown adversarial proceedings were Certainly. unduly deprived of its property rights. as amended. proponent's application or receipt of the Board of Investment's endorsement. are not in derogation of. lease or use of the patented or workingto of allowing the patented person to manufacture. 1156 which Petitioners claim of violations of the due process eventually became R." however. No. enacted prior to the Philippines adhesion to the Convention. a health public it may not be compulsory license shall be non-exclusive and shall not be transferable. After all. 165. food or conditions medicine (c) If. February 1994. Section A(2) of the Paris member countries to adopt legislative measures to Convention. -. without satisfactory reason. the It is thus clear that Section A(2) of Article 5 above recognized right of treaty signatories under unequivocally and explicitly respects the right of Article 5. suffice it to say but also to prevent the growth of monopolies. 34. to the Director for the grant a license under a in the of royalties. without regard topatented the other conditions (3) The term "worked" or "working" as used in this section means the manufacture and sale of the article." law sees to it that even after three years xxx of complete monopoly something is to the inventor in thehas form of SEC. he has been given the period of as food or medicine. the growth of monopolies was among conducted before the BPTTT pursuant to the Patent the abuses which Section A. as such is merely plainly.(1) If the Director finds that a case for the grant is a awarded license under Section 34 hereof been bilateral and workable licensing agreement made out. As to due the process argument. since the challenged treaty does not preclude the inclusion of other BPTTT decision was rendered on 14 forms or categories of abuses. petitioner cannot avail of Section 34 of R. an agreement. 165. No. particular patent at any time after the expiration of two years from the compensation date of the grant of form the patent. v.A. interests over a patent right because the Importation shall not constitute "working. as amended by Presidential Decree It cannot likewise be claimed that petitioner was No. order the grant of an appropriate and must a reasonable royalty to be agreed license. of the imposed in Section 34 [now Section 35] is patented machine. or vending (b) If the demand for the patented article in the Philippines is not being met to an adequate extent and on reasonable terms. 165.(1) Any person may applythereto. We agree with the Court of Appeals that the Convention foresaw.an invention to. (b) If the demand of the patented article in the Philippines is not bein (c) If. as well as marketing of Cimetidine. SMITH KLINE v CA (2001) Petitioner Smith Kline is the assignee of Letters Patent No. without satisfactory reason. or the application of the patented process for production. lease or process or machine for production. by reason of refusal of the patentee to grant a license or licen attached by the patentee to licensee or to the purchase. 12207 covering pharmaceutical product Cimetidine. Private respondent Danlex Research Labs filed with the BPTTT a petition for compulsory license to manufacture and produce its own brand of medicines using Cimetidine. a compulsory license shall b proved his capability to work the patented product or to mak of a useful product. Smith Kline filed an MR and a Motion for issuance of a TRO but both were denied. the party invoking it is so barred on the ground of laches or estoppel under the circumstances therein stated. Thus. o Contends that the grant of a compulsory license to private respondent is an invalid exercise of police power since it was not shown that there is an overwhelming public necessity for such grant. or manufactured substances which can be used as food or medicine. petitioner have not furnished any cogent reason to depart from this rule. or to employ the patented process. and ordered the payment by private respondent to petitioner of royalties at the rate of 2. time and other resources in the research and development. o Held that grant is in accord with the Patent Law since the product is medicinal in nature. 1978. IPL: Digests | Week 10 | kb | 15 . o That is manufacture satisfied the needs of the Philippine market. o That such would not promote public safety and was only motivated by pecuniary gain. o The patent was issued by the BPTTT to Graham John Durant. The grant is in accord with Sec. saying that respondent had no cause of action and failed to allege how it intended to work the patented product. o Contends that such license will allow the manufacture and sale of products without even extending to petitioner due recognition for pioneering the invention of the medicine. Smith Kline filed with the CA a petition for review of the decision of the BPTTT. raising this issue only for the first time on appeal. (d) If the working of the invention within the country is being pre article. Petition has no merit. (e) If the patented invention or article relates to food or me used as food or medicine. o Ground: Section 34 (1) (e) of Republic Act No. John Collin Emmett and Robin Genellin on November 29. DISPOSITION: Dismissed. considering that petitioner is able to provide an adequate supply of Cimetidine to satisfy the needs of the Philippine market. It is now settled that this rule applies with equal force to quasi-judicial bodies such as the BPTTT. CA Decision: Petition denied. or is necessary for public health or (2) In any of the above cases. (3) The term worked or working as used in this section means the m machine. ureas or guanadines. unduly oppressive and not reasonably necessary. the establishment of any new trad or industry therein is unduly restrained. taking into consideration its huge investments of money. and that private respondent is capable of using the patented product in the manufacture of a useful product. we ruled that where the issue of jurisdiction is raised for the first time on appeal. Thus. in or organization in the Philippines and on a scale which is reasonable not constitute working. Inc. and thus there was no need for compulsory licensing. Court of Appeals. Petitioner Smith Kline opposed the petition. 34 of the Patent Law which says: Grounds for Compulsory Licensing. o That the rate of royalty fixed by BPTT is grossly inadequate. Decision of the BPTTT affirmed. which relatves to derivatives of heterocyclicthio or lower alkoxy or amino lower alkyl thiourea. OR on the ground of failure to work or insufficient working of the patented product. 165 which states that an application for the grant of a compulsory license under a particular patent may be filed with the BPTTT at any time after the lapse of two (2) years from the date of grant of such patent. BPTTT Decision: Directing the issuance of a compulsory license to Danlex for Cimetidine. Petitioner can no longer assail the jurisdiction of the BPTTT. (1) Any person may apply to the Director for the grant of a l the expiration of two years from the date of the grant of the (a) If the patented invention is not being worked within the Philippin worked. and necessary for the promotion of public health and safety. Here. Smith Kline’s present petition. or is necessary for public health or public safety. whichever expires last. that the provisions of the Patent Law permitting the grant of a compulsory license are intended not only to give a chance to others to supply the public with the quantity of the patented article but especially to prevent the building up of patent monopolies.5% of net sales in Philippine currency. In Pantranco North Express. o Contends also that such contravenes the Paris Convention which allegedly permits the granting of a compulsory license over a patented product only to: Prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. o Petition for compulsory license cites that that Cimetidine is useful as an antihistamine and in the treatment of ulcers. v. o Did the CA err in affirming the validity of the grant by the BPTT of a compulsory license to Danlex? NO. within four years from the date of filing of the patent application or three years from the date of grant of the patent. if the patented invention or article relates to food or medicine. 12207. he shall. o 3) A compulsory license shall only be granted subject to the payment of It is thus clear that Section A(2) of Article 5 [of the Paris adequate royalties commensurate with Convention] unequivocally and explicitly respects the the extent to which the invention is right of member countries to adopt legislative worked. Feliciano and Maximo Even if other entities like private respondent are Tapinio are herein applying. respondent is for the use. both the appellate court and the BPTTT has been made out. fits of the royalty payable to the licensor. license. o Certainly. petitioners Dolorito M.000 in installments cash and Even assuming arguendo that such confusion may P300.patented invention by virtue of a compulsory license.A. claiming that think that Cimetidine is the invention of private the applicant-inventors had "sold and/or bartered respondent and not petitioner – UNFOUNDED. including the rate prior to the Philippines adhesion to the Convention. with respect to a compulsory license. use Maximo Tapinio of the undivided part interest in the and sell Cimetidine for at least two years from its grant invention for whose letter-patent the named in November. WHEREFORE. 1156 which merit and the Decision of the Court of Appeals is hereby eventually became R. products containing Cimetidine. the growth of monopolies was among the abuses which Section A. predecessors-in-interest. . Terms of Compulsory prevent the abuses which might result from the exercise of the exclusive rights conferred byand the Conditions patent. and which our Dolorito M. As to the perceived inadequacy of 2. No. . manufacture and sale of a Sec. the matter manifested or submitted by the Article 5. o Failure to work is merely supplied by way of In the absence of any agreement between the parties example.5% royalty – NO The compulsory license applied for by private BASIS. Article 5 of FACTS: the Convention foresaw. the terms and conditions of the license which he As to the issue of WON it contravenes the Paris himself must fix in default of an agreement on Convention – IT DOES NOT." and praying that Tapinio be the benefits resulting from the grant of the compulsory compelled to sign a contract (Appendix I) and. private Guard and Detector to or though the Corporation respondent as licensee explicitly acknowledges that that they were then organizing under his direction petitioner is the source of the patented and to fix and decide on the purchase price of it to product Cimetidine. to work. J. use and sell the IPL: Digests | Week 10 | kb | 16 .” Pending examination of the application. No. the Director of Section 34 of R. within one hundred eighty found that private respondent had the capability to days from the date the petition was filed. 165. license. SUCH IS CONSISTENT WITH THE PATENT LAW. 165. and the consequent to acknowledge it and another contract (Appendix reduction in the prices thereof II) before a notary public. well within the aforequoted provisions of Article 5 of the Paris Convention. Feliciano and Maximo B. Tapinio filed an Congress likewise wished to prevent in application for patent for the “Fel-Tap Meter Guard enacting R. order the work Cimetidine or to make use thereof in the grant of an appropriate license. 165. Feliciano and already enjoyed exclusive rights to manufacture. the legislative intent AFFIRMED. case for the grant of a license under Section 34 hereof Furthermore.(1) If the Director finds that a medicinal product. such as an increased supply of pharmaceutical together with Feliciano who had already signed it. failure License. Each country of the union shall have the right to take legislative measures providing grant of compulsory licenses to Section 35-B. compensation – NO BASIS. Director of Patents (1953) prevent the growth of Padilla. However. for example. to have both contracts recorded in the Patent Office and in the Office of As to the allegation that the grant of a compulsory the Register of Deeds. petitioner had the assignee of inventors Dolorito M." subsequently allowed to manufacture. petitioner as owner of the patent would still receive More than ten years have passed since the patent remuneration for the use of such product in the form of for Cimetidine was issued to petitioner and its royalties. royalty payments shall measures to provide for the grant of compulsory not exceed five percent (5%) of the net licenses to prevent abuses which might result from the wholesale price (as defined in Section 33-A) exercise of the exclusive rights conferred by the of the products manufactured under the patent. Meliton D.A. Grant of License. 35. 1978. even if the Act was enacted the BPTTT may fix the terms thereof.000 in shares of stock of said indeed occur. The order shall state manufacture of a useful product.A. Albaña amended his motion claiming "that he is As owner of Letters Patent No. Director of Patents: Denied for lack of jurisdiction. the disadvantage is far outweighed by Corporation . the petition is hereby DENIED for lack of In the explanatory note of Bill No. No. but also to Albaña v. at least P200. As to issue of WON grant would lead the public to Albaña filed a motion to intervene. and Detector. in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product. and assigned to him their right to contract or deal the sale of their invention called Fel-Tap Meter By the grant of the compulsory license. and that the patent for the license to private respondent results in the invention be issued in his name and in the name of deprivation of petitioners property without just the inventors. Section A(2) of the Paris Convention states: parties during for thethe hearing. . o What he seeks is for the Director to compel the inventor Tapinio to sign the contract and for both Tapinio and Feliciano to acknowledge minutes of the incorporators’ meeting of the Manufacturing Corporation. Albaña . . the agreement is not in due form.000 installments cash purchase . ." "We are now organizing a Corporation under direction of Mr. states: o This is essentially a judicial function which which would the determination or "Fel-Tap "We (the inventors) . that it is just an authority to act as the selling agent for the inventors of the patent. . has rendered and is rendering us . .. . IPL: Digests | Week 10 | kb | 17 .. . if granted. . we hereby promise pay to said Mr. as totowhether there was a meeting ofletter-patent the Albaña) to exploit and industrialize the invention . . ISSUE + RULING: Under the provisions of the Patent Law (Republic WoN the Director of Patents erred in denying Albaña’s Act No. The above quoted terms and stipulations of the executory contract clearly show that it was not an assignment of the invention and the patent applied for. Albaña does not seek the recording because in the first place. jurisdiction Albaña (Meliton D. and the invention covered thereby and to receive compensation therefor. 165). . looking for subscribers and perform whatand the actually appellant prays the court prayers to the capital stocks (stock) of said Corporation to be . o Here.000) of said P200. Appendix I. Albaña in to order themprice to do. . . which we promise hereby sell to said Corporation with its minds of the contracting parties before . hereby declare and ratify that both of us are the co-inventors andrequire joint fifty-fifty owners of the finding by a the court of competent Electric Meter Guard & Detector' . Director of Patents: Denied. Assignments of patents and inventions covered thereby may be recorded in books and records kept for the purpose in the Patent Office if presented in due form. . installment fifty thousand pesos (P50. . of approaching. could interesting compel theand applicant-inventors to Meliton D. use the sell the electrical contrivance for which a patent is applied for. NO. o He is not entitled to have his name included as one of the patentees. hence this appeal. . and authority to compel the applicant-inventors to do what the appellant is asking them to perform." "For and in consideration of the monetary and other helps (help) thatit said Mr. . . . The contract. DISPOSITION: Affirmed. except the Royalty Right of the same. The assignment made to the movant is not one of exclusive right to make. the Director of Patent has no power motion for lack of jurisdiction. MR denied. .