[G.R. No. 148222.

August 15, 2003]

PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED, and NORTH
EDSA MARKETING, INCORPORATED,respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner Pearl &
[1]
Dean (Phil.) Inc. (P & D) assails the May 22, 2001 decision of the Court of Appeals reversing the
[2]
October 31, 1996 decision of the Regional Trial Court of Makati, Branch 133, in Civil Case No. 92-516
which declared private respondents Shoemart Inc. (SMI) and North Edsa Marketing Inc. (NEMI) liable for
infringement of trademark and copyright, and unfair competition.
FACTUAL ANTECEDENTS
[3]
The May 22, 2001 decision of the Court of Appeals contained a summary of this dispute:
Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising
display units simply referred to as light boxes. These units utilize specially printed posters sandwiched
between plastic sheets and illuminated with back lights. Pearl and Dean was able to secure a Certificate
of Copyright Registration dated January 20, 1981 over these illuminated display units. The advertising
light boxes were marketed under the trademark Poster Ads. The application for registration of the
trademark was filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983,
but was approved only on September 12, 1988, per Registration No. 41165. From 1981 to about 1988,
Pearl and Dean employed the services of Metro Industrial Services to manufacture its advertising
displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the
lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and
Dean agreed. On September 11, 1985, Pearl and Deans General Manager, Rodolfo Vergara, submitted
for signature the contracts covering SM Cubao and SM Makati to SMIs Advertising Promotions and
Publicity Division Manager, Ramonlito Abano. Only the contract for SM Makati, however, was returned
signed. On October 4, 1985, Vergara wrote Abano inquiring about the other contract and reminding him
that their agreement for installation of light boxes was not only for its SM Makati branch, but also for SM
Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs house counsel informed Pearl and Dean that it was
rescinding the contract for SM Makati due to non-performance of the terms thereof. In his reply dated
February 17, 1986, Vergara protested the unilateral action of SMI, saying it was without basis. In the
same letter, he pushed for the signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light boxes for Shoemarts chain of stores. SMI approved
the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its
contract with Metro Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising
Corporation to make the light boxes. Some 300 units were fabricated in 1991. These were delivered on a
staggered basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at
SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that
aside from the two (2) reported SM branches, light boxes similar to those it manufactures were also
installed in two (2) other SM stores. It further discovered that defendant-appellant North Edsa Marketing
Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell
advertising space in lighted display units located in SMIs different branches. Pearl and Dean noted that
NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and
NEMI enjoining them to cease using the subject light boxes and to remove the same from SMIs
establishments. It also demanded the discontinued use of the trademark Poster Ads, and the payment to
Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light
boxes and NEMI took down its advertisements for Poster Ads from the lighted display units in SMIs
stores. Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean filed this instant
case for infringement of trademark and copyright, unfair competition and damages.
In denying the charges hurled against it, SMI maintained that it independently developed its poster panels
using commonly known techniques and available technology, without notice of or reference to Pearl and
Deans copyright. SMI noted that the registration of the mark Poster Ads was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word Poster Ads is a generic term
which cannot be appropriated as a trademark, and, as such, registration of such mark is invalid. It also
stressed that Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its advertising
display units contained no copyright notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl
and Dean had no cause of action against it and that the suit was purely intended to malign SMIs good
name. On this basis, SMI, aside from praying for the dismissal of the case, also counterclaimed for moral,
actual and exemplary damages and for the cancellation of Pearl and Deans Certification of Copyright
Registration No. PD-R-2558 dated January 20, 1981 and Certificate of Trademark Registration No. 4165
dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed or used any advertising display units, nor having
engaged in the business of advertising. It repleaded SMIs averments, admissions and denials and prayed
for similar reliefs and counterclaims as SMI.
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of copyright
under Section 2 of PD 49, as amended, and infringement of trademark under Section 22 of RA No. 166,
as amended, and are hereby penalized under Section 28 of PD 49, as amended, and Sections 23 and 24
of RA 166, as amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - P16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiffs copyright
from 1991 to 1992
(b) moral damages - P1,000.000.00
(c) exemplary damages - P1,000,000.00
(d) attorneys fees - P1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the National Library, all light boxes of SMI which
were fabricated by Metro Industrial Services and EYD Rainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library, all filler-posters using the trademark Poster
Ads, for destruction; and
(4) to permanently refrain from infringing the copyright on plaintiffs light boxes and its trademark
Poster Ads.
Defendants counterclaims are hereby ordered dismissed for lack of merit.
[4]
SO ORDERED.
On appeal, however, the Court of Appeals reversed the trial court:
Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable
class O work, we have to agree with SMI when it posited that what was copyrighted were the technical
drawings only, and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over the drawings like plaintiff-
appellants will not extend to the actual object. It has so been held under jurisprudence, of which the
leading case is Baker vs. Selden (101 U.S. 841 (1879). In that case, Selden had obtained a copyright
protection for a book entitled Seldens Condensed Ledger or Bookkeeping Simplified which purported to
explain a new system of bookkeeping. Included as part of the book were blank forms and illustrations
consisting of ruled lines and headings, specially designed for use in connection with the system explained
in the work. These forms showed the entire operation of a day or a week or a month on a single page, or
on two pages following each other. The defendant Baker then produced forms which were similar to the
forms illustrated in Seldens copyrighted books. The Court held that exclusivity to the actual forms is not
extended by a copyright. The reason was that to grant a monopoly in the underlying art when no
examination of its novelty has ever been made would be a surprise and a fraud upon the public; that is
the province of letters patent, not of copyright. And that is precisely the point. No doubt aware that its
alleged original design would never pass the rigorous examination of a patent application, plaintiff-
appellant fought to foist a fraudulent monopoly on the public by conveniently resorting to a copyright
registration which merely employs a recordal system without the benefit of an in-depth examination of
novelty.
The principle in Baker vs. Selden was likewise applied in Muller vs. Triborough Bridge Authority [43 F.
Supp. 298 (S.D.N.Y. 1942)]. In this case, Muller had obtained a copyright over an unpublished drawing
entitled Bridge Approach the drawing showed a novel bridge approach to unsnarl traffic congestion. The
defendant constructed a bridge approach which was alleged to be an infringement of the new design
illustrated in plaintiffs drawings. In this case it was held that protection of the drawing does not extend to
the unauthorized duplication of the object drawn because copyright extends only to the description or
expression of the object and not to the object itself. It does not prevent one from using the drawings to
construct the object portrayed in the drawing.
In two other cases, Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox,
379 F. 2d 84, it was held that there is no copyright infringement when one who, without being authorized,
uses a copyrighted architectural plan to construct a structure. This is because the copyright does not
extend to the structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and Deans copyright over the technical drawings of
the latters advertising display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge, Incorporated vs. Intermediate Appellate Court that the
protective mantle of the Trademark Law extends only to the goods used by the first user as specified in
the certificate of registration, following the clear mandate conveyed by Section 20 of Republic Act 166, as
amended, otherwise known as the Trademark Law, which reads:
SEC. 20. Certification of registration prima facie evidence of validity.- A certificate of registration of a mark
or trade-name shall be prima facie evidence of the validity of the registration, the registrants ownership of
the mark or trade-name, and of the registrants exclusive right to use the same in connection with the
goods, business or services specified in the certificate, subject to any conditions and limitations stated
therein. (underscoring supplied)
The records show that on June 20, 1983, Pearl and Dean applied for the registration of the trademark
Poster Ads with the Bureau of Patents, Trademarks, and Technology Transfer. Said trademark was
recorded in the Principal Register on September 12, 1988 under Registration No. 41165 covering the
following products: stationeries such as letterheads, envelopes and calling cards and newsletters.
With this as factual backdrop, we see no legal basis to the finding of liability on the part of the defendants-
appellants for their use of the words Poster Ads, in the advertising display units in suit. Jurisprudence has
interpreted Section 20 of the Trademark Law as an implicit permission to a manufacturer to venture into
the production of goods and allow that producer to appropriate the brand name of the senior registrant on
goods other than those stated in the certificate of registration. The Supreme Court further emphasized the
restrictive meaning of Section 20 when it stated, through Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be deemed as including goods not specified therein, then a
situation may arise whereby an applicant may be tempted to register a trademark on any and all goods
which his mind may conceive even if he had never intended to use the trademark for the said goods. We
believe that such omnibus registration is not contemplated by our Trademark Law.
While we do not discount the striking similarity between Pearl and Deans registered trademark and
defendants-appellants Poster Ads design, as well as the parallel use by which said words were used in
the parties respective advertising copies, we cannot find defendants-appellants liable for infringement of
trademark. Poster Ads was registered by Pearl and Dean for specific use in its stationeries, in contrast to
defendants-appellants who used the same words in their advertising display units. Why Pearl and Dean
limited the use of its trademark to stationeries is simply beyond us. But, having already done so, it must
stand by the consequence of the registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-appellants that the words Poster Ads are a simple
contraction of the generic term poster advertising. In the absence of any convincing proof that Poster Ads
has acquired a secondary meaning in this jurisdiction, we find that Pearl and Deans exclusive right to the
use of Poster Ads is limited to what is written in its certificate of registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for infringement of the trademark Poster Ads.
There being no finding of either copyright or trademark infringement on the part of SMI and NEMI, the
monetary award granted by the lower court to Pearl and Dean has no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed decision is REVERSED and SET ASIDE, and another
[5]
is rendered DISMISSING the complaint and counterclaims in the above-entitled case for lack of merit.
Dissatisfied with the above decision, petitioner P & D filed the instant petition assigning the following
errors for the Courts consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT
INFRINGEMENT WAS COMMITTED BY RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT
OF PEARL & DEANS TRADEMARK POSTER ADS WAS COMMITTED BY
RESPONDENTS SM AND NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THE
TRIAL COURT, DESPITE THE LATTERS FINDING, NOT DISPUTED BY THE
HONORABLE COURT OF APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS
NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL & DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM
AND NEMI LIABLE TO PEARL & DEAN FOR ACTUAL, MORAL & EXEMPLARY
[6]
DAMAGES, ATTORNEYS FEES AND COSTS OF SUIT.
ISSUES
In resolving this very interesting case, we are challenged once again to put into proper perspective
four main concerns of intellectual property law patents, copyrights, trademarks and unfair competition
arising from infringement of any of the first three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising display unit (light box) are granted
copyright protection (copyright certificate of registration) by the National Library, is the light box
depicted in such engineering drawings ipso facto also protected by such copyright?
(2) or should the light box be registered separately and protected by a patent issued by the
Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Office) in
addition to the copyright of the engineering drawings?
(3) can the owner of a registered trademark legally prevent others from using such trademark if
it is a mere abbreviation of a term descriptive of his goods, services or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes when SMI
had the units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously,
petitioners position was premised on its belief that its copyright over the engineering drawings
extended ipso facto to the light boxes depicted or illustrated in said drawings. In ruling that there was no
copyright infringement, the Court of Appeals held that the copyright was limited to the drawings alone and
not to the light box itself. We agree with the appellate court.
First, petitioners application for a copyright certificate as well as Copyright Certificate No. PD-R2588
issued by the National Library on January 20, 1981 clearly stated that it was for a class O work under
Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. Said
Section 2 expressly enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any
of the following works:
xxxxxxxxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxxxxxxxx
Although petitioners copyright certificate was entitled Advertising Display Units (which depicted the
box-type electrical devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the
rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the
[7]
subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can
[8]
cover only the works falling within the statutory enumeration or description.
P & D secured its copyright under the classification class O work. This being so, petitioners copyright
protection extended only to the technical drawings and not to the light box itself because the latter was
not at all in the category of prints, pictorial illustrations, advertising copies, labels, tags and box
wraps. Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could
have referred only to the technical drawings within the category of pictorial illustrations. It could not have
[9]
possibly stretched out to include the underlying light box. The strict application of the laws enumeration
in Section 2 prevents us from giving petitioner even a little leeway, that is, even if its copyright certificate
was entitled Advertising Display Units. What the law does not include, it excludes, and for the good
reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright
law. And no less clearly, neither could the lack of statutory authority to make the light box copyrightable
be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as
Advertising Display Units.
In fine, if SMI and NEMI reprinted P & Ds technical drawings for sale to the public without license
from P & D, then no doubt they would have been guilty of copyright infringement. But this was not the
case. SMIs and NEMIs acts complained of by P & D were to have units similar or identical to the light box
illustrated in the technical drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out
to different advertisers. Was this an infringement of petitioners copyright over the technical drawings? We
do not think so.
During the trial, the president of P & D himself admitted that the light box was neither a literary not an
[10]
artistic work but an engineering or marketing invention. Obviously, there appeared to be some
confusion regarding what ought or ought not to be the proper subjects of copyrights, patents and
[11]
trademarks. In the leading case of Kho vs. Court of Appeals, we ruled that these three legal rights are
completely distinct and separate from one another, and the protection afforded by one cannot be used
interchangeably to cover items or works that exclusively pertain to the others:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of the light
boxes without license from petitioner, private respondents cannot be held legally liable for infringement of
P & Ds copyright over its technical drawings of the said light boxes, should they be liable instead for
infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It therefore
acquired no patent rights which could have protected its invention, if in fact it really was.And because it
had no patent, petitioner could not legally prevent anyone from manufacturing or commercially using the
[12]
contraption. In Creser Precision Systems, Inc. vs. Court of Appeals, we held that there can be no
infringement of a patent until a patent has been issued, since whatever right one has to the invention
covered by the patent arises alone from the grant of patent. x x x (A)n inventor has no common law right
to a monopoly of his invention. He has the right to make use of and vend his invention, but if he
voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. A
patent, however, gives the inventor the right to exclude all others. As a patentee, he has the exclusive
[13]
right of making, selling or using the invention. On the assumption that petitioners advertising units were
patentable inventions, petitioner revealed them fully to the public by submitting the engineering drawings
thereof to the National Library.
To be able to effectively and legally preclude others from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to
[14]
bring new designs and technologies into the public domain through disclosure. Ideas, once disclosed to
the public without the protection of a valid patent, are subject to appropriation without significant
[15]
restraint.
On one side of the coin is the public which will benefit from new ideas; on the other are the inventors
[16]
who must be protected. As held in Bauer & Cie vs. ODonnel, The act secured to the inventor the
exclusive right to make use, and vend the thing patented, and consequently to prevent others from
exercising like privileges without the consent of the patentee. It was passed for the purpose of
encouraging useful invention and promoting new and useful inventions by the protection and stimulation
given to inventive genius, and was intended to secure to the public, after the lapse of the exclusive
privileges granted the benefit of such inventions and improvements.
The law attempts to strike an ideal balance between the two interests:
(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and
disclosure of new useful and non-obvious advances in technology and design, in return for the exclusive
right to practice the invention for a number of years. The inventor may keep his invention secret and reap
its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the
patent is granted. An exclusive enjoyment is guaranteed him for 17 years, but upon the expiration of that
period, the knowledge of the invention inures to the people, who are thus enabled to practice it and profit
[17]
by its use.
The patent law has a three-fold purpose: first, patent law seeks to foster and reward invention;
second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to
practice the invention once the patent expires; third, the stringent requirements for patent protection seek
[18]
to ensure that ideas in the public domain remain there for the free use of the public.
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-
depth investigation is required because in rewarding a useful invention, the rights and welfare of the
community must be fairly dealt with and effectively guarded. To that end, the prerequisites to obtaining a
patent are strictly observed and when a patent is issued, the limitations on its exercise are equally strictly
enforced. To begin with, a genuine invention or discovery must be demonstrated lest in the constant
demand for new appliances, the heavy hand of tribute be laid on each slight technological advance in
[19]
art.
There is no such scrutiny in the case of copyrights nor any notice published before its grant to the
effect that a person is claiming the creation of a work. The law confers the copyright from the moment of
[20]
creation and the copyright certificate is issued upon registration with the National Library of a sworn ex-
parte claim of creation.
Therefore, not having gone through the arduous examination for patents, the petitioner cannot
exclude others from the manufacture, sale or commercial use of the light boxes on the sole basis of its
copyright certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the patent office
(IPO) to scrutinize the light boxs eligibility as a patentable invention. The irony here is that, had petitioner
secured a patent instead, its exclusivity would have been for 17 years only. But through the simplified
procedure of copyright-registration with the National Library without undergoing the rigor of defending the
patentability of its invention before the IPO and the public the petitioner would be protected for 50
years. This situation could not have been the intention of the law.
[21]
In the oft-cited case of Baker vs. Selden , the United States Supreme Court held that only the
expression of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the
copyright of a book which expounded on a new accounting system he had developed. The publication
illustrated blank forms of ledgers utilized in such a system. The defendant reproduced forms similar to
those illustrated in the plaintiffs copyrighted book. The US Supreme Court ruled that:
There is no doubt that a work on the subject of book-keeping, though only explanatory of well known
systems, may be the subject of a copyright; but, then, it is claimed only as a book. x x x. But there is a
clear distinction between the books, as such, and the art, which it is, intended to illustrate. The mere
statement of the proposition is so evident that it requires hardly any argument to support it. The same
distinction may be predicated of every other art as well as that of bookkeeping. A treatise on the
composition and use of medicines, be they old or new; on the construction and use of ploughs or watches
or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing
lines to produce the effect of perspective, would be the subject of copyright; but no one would contend
that the copyright of the treatise would give the exclusive right to the art or manufacture described
therein. The copyright of the book, if not pirated from other works, would be valid without regard to the
novelty or want of novelty of its subject matter. The novelty of the art or thing described or explained has
nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in
the art described therein, when no examination of its novelty has ever been officially made, would be
a surprise and a fraud upon the public. That is the province of letters patent, not of copyright. The claim to
an invention of discovery of an art or manufacture must be subjected to the examination of the Patent
Office before an exclusive right therein can be obtained; and a patent from the government can only
secure it.
The difference between the two things, letters patent and copyright, may be illustrated by reference to the
subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in
the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians
generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to
the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new
art, manufacture or composition of matter. He may copyright his book, if he pleases; but that only secures
to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,
gives no exclusive right to the modes of drawing described, though they may never have been known or
used before. By publishing the book without getting a patent for the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book
intended to convey instruction in the art, any person may practice and use the art itself which he has
described and illustrated therein. The use of the art is a totally different thing from a publication of the
book explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make,
sell and use account books prepared upon the plan set forth in such book. Whether the art might or might
not have been patented, is a question, which is not before us. It was not patented, and is open and free to
the use of the public. And, of course, in using the art, the ruled lines and headings of accounts must
necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in the books, which have been made the subject of
copyright. In describing the art, the illustrations and diagrams employed happened to correspond more
closely than usual with the actual work performed by the operator who uses the art. x x x The description
of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to
the art itself. The object of the one is explanation; the object of the other is use. The former may be
secured by copyright. The latter can only be secured, if it can be secured at all, by letters
patent. (underscoring supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark Poster Ads which petitioners president said
was a contraction of poster advertising. P & D was able to secure a trademark certificate for it, but one
where the goods specified were stationeries such as letterheads, envelopes, calling cards and
[22]
newsletters. Petitioner admitted it did not commercially engage in or market these goods. On the
contrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces
thereon, which, however, were not at all specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs. Intermediate
[23]
Appellate Court, where we, invoking Section 20 of the old Trademark Law, ruled that the certificate of
registration issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its
own symbol only to those goods specified in the certificate, subject to any conditions and limitations
specified in the certificate x x x. One who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others for products which are of a
[24]
different description. Faberge, Inc. was correct and was in fact recently reiterated in Canon Kabushiki
[25]
Kaisha vs. Court of Appeals.
Assuming arguendo that Poster Ads could validly qualify as a trademark, the failure of P & D to
secure a trademark registration for specific use on the light boxes meant that there could not have been
any trademark infringement since registration was an essential element thereof.
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair competition, a situation which was possible
[26]
even if P & D had no registration. However, while the petitioners complaint in the RTC also cited unfair
competition, the trial court did not find private respondents liable therefor. Petitioner did not appeal this
particular point; hence, it cannot now revive its claim of unfair competition.
But even disregarding procedural issues, we nevertheless cannot hold respondents guilty of unfair
competition.
By the nature of things, there can be no unfair competition under the law on copyrights although it is
applicable to disputes over the use of trademarks. Even a name or phrase incapable of appropriation as a
trademark or tradename may, by long and exclusive use by a business (such that the name or phrase
becomes associated with the business or product in the mind of the purchasing public), be entitled to
 [27]
protection against unfair competition. In this case, there was no evidence that P & Ds use of Poster
Ads was distinctive or well-known. As noted by the Court of Appeals, petitioners expert witnesses himself
had testified that Poster Ads was too generic a name. So it was difficult to identify it with any company,
[28]
honestly speaking. This crucial admission by its own expert witness that Poster Ads could not be
associated with P & D showed that, in the mind of the public, the goods and services carrying the
trademark Poster Ads could not be distinguished from the goods and services of other entities.
This fact also prevented the application of the doctrine of secondary meaning. Poster Ads was
generic and incapable of being used as a trademark because it was used in the field of poster advertising,
the very business engaged in by petitioner. Secondary meaning means that a word or phrase originally
incapable of exclusive appropriation with reference to an article in the market (because it is
geographically or otherwise descriptive) might nevertheless have been used for so long and so
exclusively by one producer with reference to his article that, in the trade and to that branch of the
[29]
purchasing public, the word or phrase has come to mean that the article was his property. The
admission by petitioners own expert witness that he himself could not associate Poster Ads with petitioner
P & D because it was too generic definitely precluded the application of this exception.
Having discussed the most important and critical issues, we see no need to belabor the rest.
All told, the Court finds no reversible error committed by the Court of Appeals when it reversed the
Regional Trial Court of Makati City.
WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May
22, 2001 is AFFIRMED in toto.
[G.R. No. 115758. March 19, 2002]
ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS
LABORATORY, petitioner, vs. HON. COURT OF APPEALS, SUMMERVILLE GENERAL
MERCHANDISING and COMPANY, and ANG TIAM CHAY, respondents.
DECISION
DE LEON, JR., J.:
[1]
Before us is a petition for review on certiorari of the Decision dated May 24, 1993 of the Court of
[2]
Appeals setting aside and declaring as null and void the Orders dated February 10, 1992 and March 19,
1992 of the Regional Trial Court, Branch 90, of Quezon City granting the issuance of a writ of preliminary
injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages with a
prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case No. Q-91-10926, against
the respondents Summerville General Merchandising and Company (Summerville, for brevity) and Ang
Tiam Chay.
The petitioners complaint alleges that petitioner, doing business under the name and style of KEC
Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream
Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; that she
also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of
the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529; that respondent
Summerville advertised and sold petitioners cream products under the brand name Chin Chun Su, in
similar containers that petitioner uses, thereby misleading the public, and resulting in the decline in the
petitioners business sales and income; and, that the respondents should be enjoined from allegedly
infringing on the copyrights and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi
Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to register its
trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate
governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent
registration certificate, to distribute and market Chin Chun Su products in the Philippines had already
been terminated by the said Taiwanese Manufacturing Company.
After due hearing on the application for preliminary injunction, the trial court granted the same in an
Order dated February 10, 1992, the dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business under the style of KEC
Cosmetic Laboratory, for preliminary injunction, is hereby granted. Consequentially, plaintiff is required to
file with the Court a bond executed to defendants in the amount of five hundred thousand pesos
(P500,000.00) to the effect that plaintiff will pay to defendants all damages which defendants may sustain
by reason of the injunction if the Court should finally decide that plaintiff is not entitled thereto.
[3]
SO ORDERED.
The respondents moved for reconsideration but their motion for reconsideration was denied by the trial
[4]
court in an Order dated March 19, 1992.
On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals, docketed
as CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary injunction issued by
the trial court. After the respondents filed their reply and almost a month after petitioner submitted her
comment, or on August 14 1992, the latter moved to dismiss the petition for violation of Supreme Court
Circular No. 28-91, a circular prohibiting forum shopping. According to the petitioner, the respondents did
not state the docket number of the civil case in the caption of their petition and, more significantly, they
did not include therein a certificate of non-forum shopping. The respondents opposed the petition and
submitted to the appellate court a certificate of non-forum shopping for their petition.
On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor
of the respondents, the dispositive portion of which reads:
WHEREFORE, the petition is hereby given due course and the orders of respondent court dated
February 10, 1992 and March 19, 1992 granting the writ of preliminary injunction and denying petitioners
motion for reconsideration are hereby set aside and declared null and void. Respondent court is directed
to forthwith proceed with the trial of Civil Case No. Q-91-10926 and resolve the issue raised by the parties
on the merits.
[5]
SO ORDERED.
In granting the petition, the appellate court ruled that:
The registration of the trademark or brandname Chin Chun Su by KEC with the supplemental register of
the Bureau of Patents, Trademarks and Technology Transfer cannot be equated with registration in the
principal register, which is duly protected by the Trademark Law.
xxx xxx xxx
As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, 393:
Registration in the Supplemental Register, therefore, serves as notice that the registrant is using or has
appropriated the trademark. By the very fact that the trademark cannot as yet be on guard and there are
certain defects, some obstacles which the use must still overcome before he can claim legal ownership of
the mark or ask the courts to vindicate his claims of an exclusive right to the use of the same. It would be
deceptive for a party with nothing more than a registration in the Supplemental Register to posture before
courts of justice as if the registration is in the Principal Register.
The reliance of the private respondent on the last sentence of the Patent office action on application
Serial No. 30954 that registrants is presumed to be the owner of the mark until after the registration is
declared cancelled is, therefore, misplaced and grounded on shaky foundation. The supposed
presumption not only runs counter to the precept embodied in Rule 124 of the Revised Rules of Practice
before the Philippine Patent Office in Trademark Cases but considering all the facts ventilated before us
in the four interrelated petitions involving the petitioner and the respondent, it is devoid of factual basis.
As even in cases where presumption and precept may factually be reconciled, we have held that the
presumption is rebuttable, not conclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30, 1958,
Unreported). One may be declared an unfair competitor even if his competing trademark is registered
(Parke, Davis & Co. v. Kiu Foo & Co., et al., 60 Phil 928; La Yebana Co. v. chua Seco & Co., 14 Phil
[6]
534).
The petitioner filed a motion for reconsideration. This she followed with several motions to declare
respondents in contempt of court for publishing advertisements notifying the public of the promulgation of
the assailed decision of the appellate court and stating that genuine Chin Chun Su products could be
obtained only from Summerville General Merchandising and Co.
In the meantime, the trial court went on to hear petitioners complaint for final injunction and
[7]
damages. On October 22, 1993, the trial court rendered a Decision barring the petitioner from using the
trademark Chin Chun Su and upholding the right of the respondents to use the same, but recognizing the
copyright of the petitioner over the oval shaped container of her beauty cream. The trial court did not
award damages and costs to any of the parties but to their respective counsels were awarded Seventy-
Five Thousand Pesos (P75,000.00) each as attorneys fees. The petitioner duly appealed the said
decision to the Court of Appeals.
[8]
On June 3, 1994, the Court of Appeals promulgated a Resolution denying the petitioners motions
for reconsideration and for contempt of court in CA-G.R. SP No. 27803.
Hence, this petition anchored on the following assignment of errors:
I
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF
DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO RULE ON
PETITIONERS MOTION TO DISMISS.
II
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF
DISCRETION AMOUNTING TO LACK OF JURISDICTION IN REFUSING TO PROMPTLY
RESOLVE PETITIONERS MOTION FOR RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF PETITIONERS MOTION FOR RECONSIDERATION,
THE HONORABLE COURT OF APPEALS DENIED PETITIONERS RIGHT TO SEEK TIMELY
APPELLATE RELIEF AND VIOLATED PETITIONERS RIGHT TO DUE PROCESS.
IV
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF
DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO CITE THE
[9]
PRIVATE RESPONDENTS IN CONTEMPT.
 The petitioner faults the appellate court for not dismissing the petition on the ground of violation of
Supreme Court Circular No. 28-91. Also, the petitioner contends that the appellate court violated Section
6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on her motion for
reconsideration within ninety (90) days from the time it is submitted for resolution. The appellate court
ruled only after the lapse of three hundred fifty-four (354) days, or on June 3, 1994. In delaying the
resolution thereof, the appellate court denied the petitioners right to seek the timely appellate relief.
Finally, petitioner describes as arbitrary the denial of her motions for contempt of court against the
respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the grounds for the
issuance of a writ of preliminary injunction is a proof that the applicant is entitled to the relief demanded,
and the whole or part of such relief consists in restraining the commission or continuance of the act or
acts complained of, either for a limited period or perpetually. Thus, a preliminary injunction order may be
granted only when the application for the issuance of the same shows facts entitling the applicant to the
[10]
relief demanded. This is the reason why we have ruled that it must be shown that the invasion of the
right sought to be protected is material and substantial, that the right of complainant is clear and
unmistakable, and, that there is an urgent and paramount necessity for the writ to prevent serious
[11]
damage.
In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the
ground that she is entitled to the use of the trademark on Chin Chun Su and its container based on her
copyright and patent over the same. We first find it appropriate to rule on whether the copyright and
patent over the name and container of a beauty cream product would entitle the registrant to the use and
ownership over the same to the exclusion of others.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked container
[12]
of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing
[13]
an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their
[14]
creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
[15]
field of human activity which is new, involves an inventive step and is industrially applicable.
Petitioner has no right to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used
it before anybody else did. The petitioners copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a clear right over the said name and
container to the exclusion of others, not having proven that she has registered a trademark thereto or
used the same before anyone did.
We cannot likewise overlook the decision of the trial court in the case for final injunction and
damages. The dispositive portion of said decision held that the petitioner does not have trademark rights
on the name and container of the beauty cream product. The said decision on the merits of the trial court
rendered the issuance of the writ of a preliminary injunction moot and academic notwithstanding the fact
that the same has been appealed in the Court of Appeals. This is supported by our ruling in La Vista
[16]
Association, Inc. v. Court of Appeals , to wit:
Considering that preliminary injunction is a provisional remedy which may be granted at any time after the
commencement of the action and before judgment when it is established that the plaintiff is entitled to the
relief demanded and only when his complaint shows facts entitling such reliefs xxx and it appearing that
the trial court had already granted the issuance of a final injunction in favor of petitioner in its decision
rendered after trial on the merits xxx the Court resolved to Dismiss the instant petition having been
rendered moot and academic. An injunction issued by the trial court after it has already made a clear
pronouncement as to the plaintiffs right thereto, that is, after the same issue has been decided on the
merits, the trial court having appreciated the evidence presented, is proper, notwithstanding the fact that
the decision rendered is not yet final xxx. Being an ancillary remedy, the proceedings for preliminary
injunction cannot stand separately or proceed independently of the decision rendered on the merit of the
main case for injunction. The merit of the main case having been already determined in favor of the
applicant, the preliminary determination of its non-existence ceases to have any force and effect. (italics
supplied)
La Vista categorically pronounced that the issuance of a final injunction renders any question on the
preliminary injunctive order moot and academic despite the fact that the decision granting a final
injunction is pending appeal. Conversely, a decision denying the applicant-plaintiffs right to a final
injunction, although appealed, renders moot and academic any objection to the prior dissolution of a writ
of preliminary injunction.
The petitioner argues that the appellate court erred in not dismissing the petition for certiorari for
non-compliance with the rule on forum shopping. We disagree. First, the petitioner improperly raised the
technical objection of non-compliance with Supreme Court Circular No. 28-91 by filing a motion to dismiss
the petition for certiorari filed in the appellate court. This is prohibited by Section 6, Rule 66 of the Revised
Rules of Civil Procedure which provides that (I)n petitions for certiorari before the Supreme Court and the
Court of Appeals, the provisions of Section 2, Rule 56, shall be observed. Before giving due course
thereto, the court may require the respondents to file their comment to, and not a motion to dismiss, the
petition xxx (italics supplied). Secondly, the issue was raised one month after petitioner had filed her
answer/comment and after private respondent had replied thereto. Under Section 1, Rule 16 of the
Revised Rules of Civil Procedure, a motion to dismiss shall be filed within the time for but before filing the
answer to the complaint or pleading asserting a claim. She therefore could no longer submit a motion to
dismiss nor raise defenses and objections not included in the answer/comment she had earlier tendered.
Thirdly, substantial justice and equity require this Court not to revive a dissolved writ of injunction in favor
of a party without any legal right thereto merely on a technical infirmity. The granting of an injunctive writ
based on a technical ground rather than compliance with the requisites for the issuance of the same is
contrary to the primary objective of legal procedure which is to serve as a means to dispense justice to
the deserving party.
The petitioner likewise contends that the appellate court unduly delayed the resolution of her motion
for reconsideration. But we find that petitioner contributed to this delay when she filed successive
contentious motions in the same proceeding, the last of which was on October 27, 1993, necessitating
counter-manifestations from private respondents with the last one being filed on November 9, 1993.
Nonetheless, it is well-settled that non-observance of the period for deciding cases or their incidents does
[17]
not render such judgments ineffective or void. With respect to the purported damages she suffered due
to the alleged delay in resolving her motion for reconsideration, we find that the said issue has likewise
been rendered moot and academic by our ruling that she has no right over the trademark and,
consequently, to the issuance of a writ of preliminary injunction.
Finally, we rule that the Court of Appeals correctly denied the petitioners several motions for
contempt of court. There is nothing contemptuous about the advertisements complained of which, as
regards the proceedings in CA-G.R. SP No. 27803 merely announced in plain and straightforward
language the promulgation of the assailed Decision of the appellate court. Moreover, pursuant to Section
4 of Rule 39 of the Revised Rules of Civil Procedure, the said decision nullifying the injunctive writ was
immediately executory.
WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals dated
May 24, 1993 and June 3, 1994, respectively, are hereby AFFIRMED. With costs against the petitioner.
SO ORDERED.
Bellosillo, (Chairman), Mendoza, Quisumbing, and Buena, JJ., concur.
U. S. Supreme Court
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
Diamond v. Chakrabarty
No. 79-136
Argued March 17, 1980
Decided June 16, 1980
447 U.S. 303
CERTIORARI TO THE UNITED STATES COURT OF CUSTOMS
AND PATENT APPEALS
Syllabus
Title 35 U.S.C. 101 provides for the issuance of a patent to a person who invents or discovers "any"
new and useful "manufacture" or "composition of matter." Respondent filed a patent application relating to
his invention of a human-made, genetically engineered bacterium capable of breaking down crude oil, a
property which is possessed by no naturally occurring bacteria. A patent examiner's rejection of the
patent application's claims for the new bacteria was affirmed by the Patent Office Board of Appeals on the
ground that living things are not patentable subject matter under 101. The Court of Customs and Patent
Appeals reversed, concluding that the fact that micro-organisms are alive is without legal significance for
purposes of the patent law.
Held: A live, human-made micro-organism is patentable subject matter under 101. Respondent's micro-
organism constitutes a "manufacture" or "composition of matter" within that statute. Pp. 447 U. S. 308-
318.
(a) In choosing such expansive terms as "manufacture" and "composition of matter," modified by the
comprehensive "any," Congress contemplated that the patent laws should be given wide scope, and the
relevant legislative history also supports a broad construction. While laws of nature, physical phenomena,
and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown natural
phenomenon, but to a nonnaturally occurring manufacture or composition of matter -- a product of human
ingenuity "having a distinctive name, character [and] use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U.
S. 615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, distinguished. Pp. 447 U. S. 308-
310.
(b) The passage of the 1930 Plant Patent Act, which afforded patent protection to certain asexually
reproduced plants, and the 1970 Plant Variety Protection Act, which authorized protection for certain
sexually reproduced plants but excluded bacteria from its protection, does not evidence congressional
understanding that the terms "manufacture" or "composition of matter" in 101 do not include living
things. Pp. 447 U. S. 310-314.
Page 447 U. S. 304
(c) Nor does the fact that genetic technology was unforeseen when Congress enacted 101 require the
conclusion that micro-organisms cannot qualify as patentable subject matter until Congress expressly
authorizes such protection. The unambiguous language of 101 fairly embraces respondent's invention.
Arguments against patentability under 101, based on potential hazards that may be generated by
genetic research, should be addressed to the Congress and the Executive, not to the Judiciary. Pp. 447
U. S. 314-318.
596 F.2d 952, affirmed.
BURGER, C J., delivered the opinion of the Court, in which STEWART, BLACKMUN, REHNQUIST, and
STEVENS, JJ., joined. BRENNAN, J., filed a dissenting opinion, in which WHITE, MARSHALL, and
POWELL, JJ., joined, post, p. 447 U. S. 318.
Page 447 U. S. 305
MR. CHIEF JUSTICE BURGER delivered the opinion of the Court.
We granted certiorari to determine whether a live, human-made micro-organism is patentable subject
matter under 35 U.S.C. 101.
I
In 1972, respondent Chakrabarty, a microbiologist, filed a patent application, assigned to the General
Electric Co. The application asserted 36 claims related to Chakrabarty's invention of
"a bacterium from the genus Pseudomons containing therein at least two stable energy-generating
plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway. [Footnote 1]"
This human-made, genetically engineered bacterium is capable of breaking down multiple components of
crude oil. Because of this property, which is possessed by no naturally occurring bacteria, Chakrabarty's
invention is believed to have significant value for the treatment of oil spills. [Footnote 2]
Chakrabarty's patent claims were of three types: first, process claims for the method of producing the
bacteria;
Page 447 U. S. 306
second, claims for an inoculum comprised of a carrier material floating on water, such as straw, and the
new bacteria; and third, claims to the bacteria themselves. The patent examiner allowed the claims falling
into the first two categories, but rejected claims for the bacteria. His decision rested on two grounds: (1)
that micro-organisms are "products of nature," and (2) that, as living things, they are not patentable
subject matter under 35 U.S.C. 101.
Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals, and the Board
affirmed the examiner on the second ground. [Footnote 3] Relying on the legislative history of the 1930
Plant Patent Act, in which Congress extended patent protection to certain asexually reproduced plants,
the Board concluded that 101 was not intended to cover living things such as these laboratory created
micro-organisms.
The Court of Customs and Patent Appeals, by a divided vote, reversed on the authority of its prior
decision in In re Bergy, 563 F.2d 1031, 1038 (1977), which held that "the fact that micro-organisms . . .
are alive . . . [is] without legal significance" for purposes of the patent law. [Footnote 4] Subsequently, we
granted the Acting Commissioner of Patents and Trademarks' petition for certiorari in Bergy, vacated the
judgment, and remanded the case "for further consideration in light of Parker v. Flook, 437 U. S.
584 (1978)." 438 U.S. 902 (1978). The Court of Customs and Patent Appeals then vacated its judgment
in Chakrabarty and consolidated the case with Bergy for reconsideration. After reexamining both cases in
the light of our holding in Flook, that court, with one dissent, reaffirmed its earlier judgments. 596 F.2d
952 (1979).
Page 447 U. S. 307
The Commissioner of Patents and Trademarks again sought certiorari, and we granted the writ as to both
Bergy and Chakrabarty. 444 U.S. 924 (1979). Since then, Bergy has been dismissed as moot, 444 U.S.
1028 (1980), leaving only Chakrabarty for decision.
II
The Constitution grants Congress broad power to legislate to
"promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and Discoveries."
Art. I, 8, cl. 8. The patent laws promote this progress by offering inventors exclusive rights for a limited
period as an incentive for their inventiveness and research efforts. Kewanee Oil Co. v. Bicron Corp., 416
U. S. 470, 416 U. S. 480-481 (1974); Universal Oil Co. v. Globe Co., 322 U. S. 471, 322 U. S. 484 (1944).
The authority of Congress is exercised in the hope that
"[t]he productive effort thereby fostered will have a positive effect on society through the introduction of
new products and processes of manufacture into the economy, and the emanations by way of increased
employment and better lives for our citizens."
Kewanee, supra, at 416 U. S. 480.
The question before us in this case is a narrow one of statutory interpretation requiring us to construe 35
U.S.C. 101, which provides:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title."
Specifically, we must determine whether respondent's micro-organism constitutes a "manufacture" or
"composition of matter" within the meaning of the statute. [Footnote 5]
Page 447 U. S. 308
III
In cases of statutory construction we begin, of course, with the language of the statute. Southeastern
Community College v. Davis, 442 U. S. 397, 442 U. S. 405 (1979). And "unless otherwise defined, words
will be interpreted as taking their ordinary, contemporary, common meaning." Perrin v. United States, 444
U. S. 37, 444 U. S. 42 (1979). We have also cautioned that courts "should not read into the patent laws
limitations and conditions which the legislature has not expressed." United States v. Dubilier Condenser
Corp., 289 U. S. 178, 289 U. S. 199 (1933) .
Guided by these canons of construction, this Court has read the term "manufacture" in 101 in
accordance with its dictionary definition to mean
"the production of articles for use from raw or prepared materials by giving to these materials new forms,
qualities, properties, or combinations, whether by hand labor or by machinery."
American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. 1, 283 U. S. 11 (1931). Similarly, "composition of
matter" has been construed consistent with its common usage to include
"all compositions of two or more substances and . . . all composite articles, whether they be the results of
chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids."
Shell Development Co. v. Watson, 149 F.Supp. 279, 280 (DC 1957) (citing 1 A. Deller, Walker on Patents
14, p. 55 (1st ed.1937)). In choosing such expansive terms as "manufacture" and "composition of
matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would
be given wide scope.
The relevant legislative history also supports a broad construction. The Patent Act of 1793, authored by
Thomas Jefferson, defined statutory subject matter as "any new and useful art, machine, manufacture, or
composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21, 1793, 1, 1 Stat. 319.
The Act embodied Jefferson's philosophy that "ingenuity should receive a liberal encouragement."
Page 447 U. S. 309
5 Writings of Thomas Jefferson 75-76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U. S.
1, 383 U. S. 7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874 employed this same broad
language. In 1052, when the patent laws were recodified, Congress replaced the word "art" with
"process," but otherwise left Jefferson's language intact. The Committee Reports accompanying the 1952
Act inform us that Congress intended statutory subject matter to "include anything under the sun that is
made by man." S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d
Sess., 6 (1952). [Footnote 6]
This is not to suggest that 101 has no limits, or that it embraces every discovery. The laws of nature,
physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U. S.
584 (1978); Gottschalk v. Benson, 409 U. S. 63, 409 U. S. 67 (1972); Funk Brothers Seed Co. v. Kalo
Inoculant Co., 333 U. S. 127, 333 U. S. 130 (1948); O'Reilly v. Morse, 15 How. 62, 56 U. S. 112-121
(1854); Le Roy v. Tatham, 14 How. 156, 55 U. S. 175 (1853). Thus, a new mineral discovered in the earth
or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his
celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are
"manifestations of . . . nature, free to all men and reserved exclusively to none." Funk, supra at 333 U. S.
130.
Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim
is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or
composition of matter -- a product of human ingenuity "having a distinctive name, character [and]
Page 447 U. S. 310
use." Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887). The point is underscored dramatically
by comparison of the invention here with that in Funk. There, the patentee had discovered that there
existed in nature certain species of root nodule bacteria which did not exert a mutually inhibitive effect on
each other. He used that discovery to produce a mixed culture capable of inoculating the seeds of
leguminous plants. Concluding that the patentee had discovered "only some of the handiwork of nature,"
the Court ruled the product nonpatentable:
"Each of the species of root-nodule bacteria contained in the package infects the same group of
leguminous plants which it always infected. No species acquires a different use. The combination of
species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the
range of their utility. Each species has the same effect it always had. The bacteria perform in their natural
way. Their use in combination does not improve in any way their natural functioning. They serve the ends
nature originally provided, and act quite independently of any effort of the patentee."
333 U.S. at 333 U. S. 131. Here, by contrast, the patentee has produced a new bacterium with markedly
different characteristics from any found in nature, and one having the potential for significant utility. His
discovery is not nature's handiwork, but his own; accordingly it is patentable subject matter under 101.
IV
Two contrary arguments are advanced, neither of which we find persuasive.
(A)
The petitioner's first argument rests on the enactment of the 1930 Plant Patent Act, which afforded patent
protection to certain asexually reproduced plants, and the 1970 Plant
Page 447 U. S. 311
Variety Protection Act, which authorized protection for certain sexually reproduced plants but excluded
bacteria from its protection. [Footnote 7] In the petitioner's view, the passage of these Acts evidences
congressional understanding that the terms "manufacture" or "composition of matter" do not include living
things; if they did, the petitioner argues, neither Act would have been necessary.
We reject this argument. Prior to 1930, two factors were thought to remove plants from patent protection.
The first was the belief that plants, even those artificially bred, were products of nature for purposes of the
patent law. This position appears to have derived from the decision of the Patent Office in Ex parte
Latimer, 1889 Dec.Com.Pat 123, in which a patent claim for fiber found in the needle of the Pinus
australis was rejected. The Commissioner reasoned that a contrary result would permit "patents [to] be
obtained upon the trees of the forest and the plants of the earth, which of course would be unreasonable
and impossible." Id. at 126. The Latimer case, it seems, came to "se[t] forth the general stand taken in
these matters" that plants were natural products not subject to patent protection. Thorne, Relation of
Patent Law to Natural Products, 6 J.Pat.Off.Soc. 23, 24
Page 447 U. S. 312
(1923). [Footnote 8] The second obstacle to patent protection for plants was the fact that plants were
thought not amenable to the "written description" requirement of the patent law. See 35 U.S.C. 112.
Because new plants may differ from old only in color or perfume, differentiation by written description was
often impossible. See Hearings on H.R. 11372 before the House Committee on Patents, 71st Cong., 2d
Sess., 7 (1930) (memorandum of Patent Commissioner Robertson).
In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its
belief that the work of the plant breeder "in aid of nature" was patentable invention. S.Rep. No. 315, 71st
Cong., 2d Sess., 8 (1930); H.R.Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the
written description requirement in favor of "a description . . . as complete as is reasonably possible." 35
U.S.C. 162. No Committee or Member of Congress, however, expressed the broader view, now urged
by the petitioner, that the terms "manufacture" or "composition of matter" exclude living things. The sole
support for that position in the legislative history of the 1930 Act is found in the conclusory statement of
Secretary of Agriculture Hyde, in a letter to the Chairmen of the House and Senate Committees
considering the 1930 Act, that "the patent laws . . . at the present time are understood to cover only
inventions or discoveries in the field of inanimate nature." See S.Rep. No. 315, supra at Appendix A;
H.R.Rep. No. 1129, supra at Appendix A. Secretary Hyde's opinion, however, is not entitled to controlling
weight. His views were solicited on the administration of the new law. and not on the scope of patentable
Page 447 U. S. 313
subject matter -- an area beyond his competence. Moreover, there is language in the House and Senate
Committee Reports suggesting that, to the extent Congress considered the matter, it found the
Secretary's dichotomy unpersuasive. The Reports observe:
"There is a clear and logical distinction between the discovery of a new variety of plant and of certain
inanimate things, such, for example, as a new and useful natural mineral. The mineral is created wholly
by nature unassisted by man. . . . On the other hand, a plant discovery resulting from cultivation is unique,
isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man. . . ."
S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at 7 (emphasis added). Congress thus recognized
that the relevant distinction was not between living and inanimate things, but between products of nature,
whether living or not, and human-made inventions. Here, respondent's micro-organism is the result of
human ingenuity and research. Hence, the passage of the Plant Patent Act affords the Government no
support.
Nor does the passage of the 1970 Plant Variety Protection Act support the Government's position. As the
Government acknowledges, sexually reproduced plants were not included under the 1930 Act because
new varieties could not be reproduced true-to-type through seedlings. Brief for Petitioner 27, n. 31. By
1970, however, it was generally recognized that true-to-type reproduction was possible, and that plant
patent protection was therefore appropriate. The 1970 Act extended that protection. There is nothing in its
language or history to suggest that it was enacted because 101 did not include living things.
In particular, we find nothing in the exclusion of bacteria from plant variety protection to support the
petitioner's position.See n 7, supra. The legislative history gives no reason for this exclusion. As the Court
of Customs and
Page 447 U. S. 314
Patent Appeals suggested, it may simply reflect congressional agreement with the result reached by that
court in deciding In re Arzberger, 27 C.C.P.A.(Pat.) 1315, 112 F.2d 834 (1940), which held that bacteria
were not plants for the purposes of the 1930 Act. Or it may reflect the fact that, prior to 1970, the Patent
Office had issued patents for bacteria under 101. [Footnote 9] In any event, absent some clear
indication that Congress "focused on [the] issues . . . directly related to the one presently before the
Court," SEC v. Sloan, 436 U. S. 103, 436 U. S. 120-121 (1978), there is no basis for reading into its
actions an intent to modify the plain meaning of the words found in 101. See TVA v. Hill, 437 U. S.
153, 437 U. S. 189-193 (1978); United States v. Price, 361 U. S. 304, 361 U. S. 313 (1960).
(B)
The petitioner's second argument is that micro-organisms cannot qualify as patentable subject matter
until Congress expressly authorizes such protection. His position rests on the fact that genetic technology
was unforeseen when Congress enacted 101. From this it is argued that resolution of the patentability
of inventions such as respondent's should be left to Congress. The legislative process, the petitioner
argues, is best equipped to weigh the competing economic, social, and scientific considerations involved,
and to determine whether living organisms produced by genetic engineering should receive patent
protection. In support of this position, the petitioner relies on our recent holding in Parker v. Flook, 437 U.
S. 584 (1978), and the statement that the judiciary "must proceed cautiously when . . . asked to extend
Page 447 U. S. 315
patent rights into areas wholly unforeseen by Congress." Id. at 437 U. S. 596.
It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally
true that, once Congress has spoken, it is "the province and duty of the judicial department to say what
the law is." Marbury v. Madison, 1 Cranch 137, 5 U. S. 177 (1803). Congress has performed its
constitutional role in defining patentable subject matter in 101; we perform ours in construing the
language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided,
if ambiguity appears, by the legislative history and statutory purpose. Here, we perceive no ambiguity.
The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional
and statutory goal of promoting "the Progress of Science and the useful Arts" with all that means for the
social and economic benefits envisioned by Jefferson. Broad general language is not necessarily
ambiguous when congressional objectives require broad terms.
Nothing in Flook is to the contrary. That case applied our prior precedents to determine that a "claim for
an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter
under 101." 437 U.S. at 437 U. S. 595, n. 18. The Court carefully scrutinized the claim at issue to
determine whether it was precluded from patent protection under "the principles underlying the prohibition
against patents for ideas' or phenomena of nature." Id. at 437 U. S. 593. We have done that
here. Flook did not announce a new principle that inventions in areas not contemplated by Congress
when the patent laws were enacted are unpatentable per se.
To read that concept into Flook would frustrate the purposes of the patent law. This Court frequently has
observed that a statute is not to be confined to the "particular application[s] . . . contemplated by the
legislators." Barr v. United States, 324 U. S. 83, 324 U. S. 90 (1945). Accord, Browder v. United
States, 312 U. S. 335, 312 U. S. 339 (1941); Puerto Rico v. Shell Co.,
Page 447 U. S. 316
302 U. S. 253, 302 U. S. 257 (1937). This is especially true in the field of patent law. A rule that
unanticipated inventions are without protection would conflict with the core concept of the patent law that
anticipation undermines patentability. See Graham v. John Deere Co., 383 U.S. at 383 U. S. 12-17. Mr.
Justice Douglas reminded that the inventions most benefiting mankind are those that "push back the
frontiers of chemistry. physics, and the like." Great A. & P. Tea Co. v. Supermarket Corp., 340 U. S.
147, 340 U. S. 154 (1950) (concurring opinion). Congress employed broad general language in drafting
101 precisely because such inventions are often unforeseeable. [Footnote 10]
To buttress his argument, the petitioner, with the support of amicus, points to grave risks that may be
generated by research endeavors such as respondent's. The briefs present a gruesome parade of
horribles. Scientists, among them Nobel laureates, are quoted suggesting that genetic research may pose
a serious threat to the human race, or, at the very least, that the dangers are far too substantial to permit
such research to proceed apace at this time. We are told that genetic research and related technological
developments may spread pollution and disease, that it may result in a loss of genetic diversity, and that
its practice may tend to depreciate the value of human life. These arguments are forcefully, even
passionately, presented; they remind us that, at times, human ingenuity seems unable to control fully the
forces it creates -- that, with Hamlet, it is sometimes better "to bear those ills we have than fly to others
that we know not of."
It is argued that this Court should weigh these potential hazards in considering whether respondent's
invention is
Page 447 U. S. 317
patentable subject matter under 101. We disagree. The grant or denial of patents on micro-organisms is
not likely to put an end to genetic research or to its attendant risks. The large amount of research that has
already occurred when no researcher had sure knowledge that patent protection would be available
suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into
the unknown any more than Canute could command the tides. Whether respondent's claims are
patentable may determine whether research efforts are accelerated by the hope of reward or slowed by
want of incentives, but that is all.
What is more important is that we are without competence to entertain these arguments -- either to brush
them aside as fantasies generated by fear of the unknown or to act on them. The choice we are urged to
make is a matter of high policy for resolution within the legislative process after the kind of investigation,
examination, and study that legislative bodies can provide and courts cannot. That process involves the
balancing of competing values and interests, which, in our democratic system, is the business of elected
representatives. Whatever their validity, the contentions now pressed on us should be addressed to the
political branches of the Government, the Congress and the Executive, and not to the courts. [Footnote
11]
Page 447 U. S. 318
We have emphasized in the recent past that
"[o]ur individual appraisal of the wisdom or unwisdom of a particular [legislative] course . . . is to be put
aside in the process of interpreting a statute."
TVA v. Hill, 437 U.S. at 437 U. S. 194. Our task, rather, is the narrow one of determining what Congress
meant by the words it used in the statute; once that is done, our powers are exhausted. Congress is free
to amend 101 so as to exclude from patent protection organisms produced by genetic
engineering. Cf. 42 U.S.C. 2181(a), exempting from patent protection inventions "useful solely in the
utilization of special nuclear material or atomic energy in an atomic weapon." Or it may choose to craft a
statute specifically designed for such living things. But, until Congress takes such action, this Court must
construe the language of 101 as it is. The language of that section fairly embraces respondent's
invention.
Accordingly, the judgment of the Court of Customs and Patent Appeals is
Affirmed.
[Footnote 1]
Plasmids are hereditary units physically separate from the chromosomes of the cell. In prior research,
Chakrabarty and an associate discovered that plasmids control the oil degradation abilities of certain
bacteria. In particular, the two researchers discovered plasmids capable of degrading camphor and
octane, two components of crude oil. In the work represented by the patent application at issue here,
Chakrabarty discovered a process by which four different plasmids, capable of degrading four different oil
components, could be transferred to and maintained stably in a single Pseudomonas bacterium, which
itself has no capacity for degrading oil.
[Footnote 2]
At present, biological control of oil spills requires the use of a mixture of naturally occurring bacteria, each
capable of degrading one component of the oil complex. In this way, oil is decomposed into simpler
substances which can serve as food for aquatic life. However, for various reasons, only a portion of any
such mixed culture survives to attack the oil spill. By breaking down multiple components of oil,
Chakrabarty's microorganism promises more efficient and rapid oil-spill control.
[Footnote 3]
The Board concluded that the new bacteria were not "products of nature," because Pseudomonas
bacteria containing two or more different energy-generating plasmids are not naturally occurring.
[Footnote 4]
Bergy involved a patent application for a pure culture of the microorganism Streptomuces vellosus found
to be useful in the production of lincomycin, an antibiotic.
[Footnote 5]
This case does not involve the other "conditions and requirements" of the patent laws, such as novelty
and nonobviousness. 35 U.S.C. 102, 103.
[Footnote 6]
This same language was employed by P. J. Federico, a principal draftsman of the 1952 recodification, in
his testimony regarding that legislation:
"[U]nder section 101, a person may have invented a machine or a manufacture, which may include
anything under the sun that is made by man. . . ."
Hearings on H.R. 3760 before Subcommittee No. 3 of the House Committee on the Judiciary, 82d Cong.,
1st Sess., 37 (1951).
[Footnote 7]
The Plant Patent Act of 1930, 35 U.S.C. 161, provides in relevant part:
"Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including
cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a
plant found in an uncultivated state, may obtain a patent therefor. . . ."
The Plant Variety Protection Act of 1970, provides in relevant part:
"The breeder of any novel variety of sexually reproduced plant (other than fungi, bacteria, or first
generation hybrids) who has so reproduced the variety, or his successor in interest, shall be entitled to
plant variety protection therefor. . . ."
84 Stat. 1547, 7 U.S.C. 2402(a). See generally 3 A. Deller, Walker on Patents, ch. IX (2d ed.1964); R.
Allyn, The First Plant Patents (1934).
[Footnote 8]
Writing three years after the passage of the 1930 Act, R. Cook, Editor of the Journal of Heredity,
commented:
"It is a little hard for plant men to understand why [Art. I, 8] of the Constitution should not have been
earlier construed to include the promotion of the art of plant breeding. The reason for this is probably to
be found in the principle that natural products are not patentable."
Florists Exchange and Horticultural Trade World, July 15, 1933, p. 9.
[Footnote 9]
In 1873, the Patent Office granted Louis Pasteur a patent on "yeast, free from organic germs of disease,
as an article of manufacture." And in 1967 and 1968, immediately prior to the passage of the Plant Variety
Protection Act, that Office granted two patents which, as the petitioner concedes, state claims for living
micro-organisms. See Reply Brief for Petitioner 3, and n. 2.
[Footnote 10]
Even an abbreviated list of patented inventions underscores the point: telegraph (Morse, No. 1,647);
telephone (Bell, No. 174,465); electric lamp (Edison, No. 223,898); airplane (the Wrights, No. 821,393);
transistor (Bardeen & Brattain, No. 2,524,035); neutronic reactor (Fermi & Szilard, No. 2,708,656); laser
(Schawlow & Townes, No. 2,929,922). See generally Revolutionary Ideas, Patents & Progress in
America, United States Patent and Trademark Office (1976).
[Footnote 11]
We are not to be understood as suggesting that the political branches have been laggard in the
consideration of the problems related to genetic research and technology. They have already taken
action. In 1976, for example, the National Institutes of Health released guidelines for NIH-sponsored
genetic research which established conditions under which such research could be performed. 41
Fed.Reg. 27902. In 1978, those guidelines were revised and relaxed. 43 Fed.Reg. 60080, 60108, 60134.
And Committees of the Congress have held extensive hearings on these matters. See, e.g., Hearings on
Genetic Engineering before the Subcommittee on Health of the Senate Committee on Labor and Public
Welfare, 94th Cong., 1st Sess. (1975); Hearings before the Subcommittee on Science, Technology, and
Space of the Senate Committee on Commerce, Science, and Transportation, 95th Cong., 1st Sess.
(1977); Hearings on H.R. 4759 et al. before the Subcommittee on Health and the Environment of the
House Committee on Interstate and Foreign Commerce, 95th Cong., 1st Sess. (1977).
On 7 October 2015, the High Court of Australia unanimously allowed Ms DArcys appeal from the Full
Federal Court decision in DArcy v Myriad Genetics Inc (2014) 224 FCR 479 (DArcy), holding that
Myriads claims to isolated nucleic acids were not patentable subject matter.
The decision relates to Australian Patent 686004, which includes claims to methods of diagnosing a
predisposition for breast and ovarian cancer, as well as claims to isolated nucleic acids related to those
methods. The claims to the methods, probes, cloning and expression vectors, and host cells, were not in
issue. The High Court, whose decision relates to whether under Australian law, claims directed to isolated
nucleic acids were a manner of manufacture, and therefore patentable subject matter.
Prior to the High Court decision, a Full Federal Court had held that isolated nucleic acids were different to
the gene comprising the nucleic acid sequence as it exists in nature, and that the isolation of the nucleic
acid lead to an economically useful result the treatment of breast and ovarian cancers. The Full Court
concluded that the isolated nucleic acid, including cDNA, was an artificially created state of affairs of
economic benefit, and was therefore patentable.
While the patent expired on 11 August 2015 at the end of its term, the High Court held that the invention
claimed in the relevant claims (a nucleic acid coding for a BCRA1 protein with one or more specified
variations indicative of susceptibility to breast cancer and ovarian cancer) did not fall within the concept of
a manner of manufacture.
In making this finding the Court focussed on the significance of the genetic information in the nucleotides
of the claims rather than the isolated nucleotides being a tangible product per se, stating:
Despite the formulation of the claimed invention as a class of product, its substance is information
embodied in arrangements of nucleotides. The information is not made by human action. It is discerned.
That feature of the claims raises a question about how they fit within the concept of a manner of
manufacture. As appears from s 6 of the Statute of Monopolies, an invention is something which involves
making. It must reside in something. It may be a product. It may be a process. It may be an outcome
which can be characterised, in the language of NRDC, as an artificially created state of affairs.
Whatever it is, it must be something brought about by human action.

DArcy v Myriad Genetics Inc.

Consideration was also given to whether the isolated nucleic acids were an artificially created state of
affairs, in relation to which the Court commented:
Ms DArcy also engaged with the finding by the Full Court that the isolated nucleic acids were patentable
as an artificially created state of affairs. Engaging with that criterion in this case places the question of
patentability in too narrow a frame. It invites debates about the application of categories such as
products of nature versus artificially created products which may be distracting from the central issue,
that is whether an essential integer of the claims, the genetic information, takes them outside the category
of that which can be made. But even if the criterion of an artificially created state of affairs were to
define the area of discourse in this case, the fact of the existence of the requisite mutations or
polymorphisms is a matter of chance. It is not something made. It is not artificially created.
The Court held that while the invention claimed might strictly be classified as a product of human action, it
was the existence of the information stored in the relevant sequences that was an essential element of
the invention as claimed:
Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic
acids, embodies a product created by human action, that is not sufficient to support its characterisation
as a manner of manufacture. The substance of the invention as claimed and the considerations flowing
from its substance militate against that characterisation. To include it within the scope of a manner of
manufacture involves an extension of that concept, which is not appropriate for judicial determination.
The finding that the features of the claims and their substance as an invention, related to sequence
information, led to the conclusion that patentability would not serve the purposes of the concept of
manner of manufacture. The Court also attached the same informational characteristics to cDNA.
It was initially unclear whether the decision would have a broad or narrow impact on the biotechnology
industry.
On 16 October 2015, IP Australia issued their proposed practice for applying Myriad for public
consultation.
The proposed practice indicates that on the basis of the decision, the Commissioner considers the
following are not patent eligible and will not accept claims for:
> Naturally occurring (human or nonhuman) nucleic acid sequences encoding polypeptides or functional
fragments thereof either isolated or synthesised cDNA
> Naturally occurring human and nonhuman coding RNA either isolated or synthesised.
The Commissioner proposes the following remain patent eligible on the basis that they do not merely
represent information coding for a polypeptide:
> Naturally occurring isolated regulatory DNA (e.g. promoters, enhancers, inhibitors, intergenic DNA)
> Isolated non-coding (e.g. Junk) DNA and isolated non-coding RNA (e.g. miRNA)
> Naturally occurring isolated bacteria
> Naturally occurring isolated virus
> Isolated polypeptides, including isolated polyclonal antibodies
> Synthesised/modified polypeptides
> Chemical molecules purified from natural sources (e.g. new chemical entities, antibiotics, small
molecules)
> Isolated cells, including isolated stem cells
> Probes
> Primers
> Isolated interfering/inhibitory nucleic acids (e.g. antisense, ribozymes)
> Monoclonal antibodies
> Fusion/chimeric nucleic acids
> Transgenes comprising naturally occurring gene sequences
> Vectors/microorganisms/animals/plants comprising a transgene.
Given the practice is focused on nucleic acids that merely represent information coding for a polypeptide,
the practical impact of the decision is likely to be less of a concern to the Biotechnology sector than some
feared.
Consultation on the proposed practice closed on Friday 6 November 2015, and we are awaiting issuance
of the final practice.
Interim measures
IP Australia has also begun issuing correspondence in relation to patent applications with claims to
isolated nucleic acids that are under examination.
For applications approaching their acceptance deadline with claims to isolated nucleic acids, the
Commissioner has indicated that she is still considering how the technology is impacted by the decision
of the High Court, and depending on the outcome of this consideration it may be necessary to raise an
objection to these claims. The correspondence proposes options for the applicant to consider in the
interim:
file amendments to the application to clearly remove any subject matter of concern,
allow the application to remain pending in its present form (noting that the application will lapse if the final
date for acceptance is reached), or
file a divisional application in order to keep this matter pending and the applicant may consider applying
for fee waivers for such applications.
Oppositions
In the case of Oppositions to grant involving applications with claims to isolated nucleic acids, IP Australia
have been issuing correspondence indicating that the High Court decision in DArcy may be relevant to
the determination of the opposition and inviting both parties to provide written submissions on the
relevance of the decision to the claims. The correspondence indicates the hearing officer will take into
consideration any submissions made in coming to a decision. We are yet to have any opposition
decisions issue on such claims following the decision in DArcy.
Interestingly, the Office has also begun citing DArcy in support of the approach taken in Research
Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, of examining the substance of the
invention in considering the patentability of a scheme or abstract idea implemented on a computer
(see General Electric Company v Ausrail Technologies Pty Ltd [2015] APO 67 at paragraph 103):
The Full Court decided that the implementation of a scheme or abstract idea, which itself would not be
considered to be patentable subject matter, would not be rendered patentable subject matter through
implementation on a computer. The substance of the invention is determined not as a matter of form but
involves an analysis of the alleged inventive step compared to the prior art. This approach of examining
the substance of the invention was also mentioned in DArcy .
It appears that examination of the substance of the invention, rather than just the form of the claims, will
be an important part of considering whether an invention as claimed can be characterised as a manner of
manufacture.
ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor
to NEW UNITED FOUNDRY MANUFACTURING CORPORATION, respondents.
DECISION
BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of the individual but the advancement of
the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the
purposes of the patent system is to encourage dissemination of information concerning discoveries and
inventions. This is a matter which is properly within the competence of the Patent Office the official action
of which has the presumption of correctness and may not be interfered with in the absence of new
evidence carrying thorough conviction that the Office has erred. Since the Patent Office is an expert body
preeminently qualified to determine questions of patentability, its findings must be accepted if they are
[1]
consistent with the evidence, with doubts as to patentability resolved in favor of the Patent Office.
Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for
the cancellation of Letters Patent No. UM-4609 for a gas burner registered in the name of respondent
Melecia Madolaria who subsequently assigned the letters patent to New United Foundry and
Manufacturing Corporation (UNITED FOUNDRY, for brevity). Petitioner alleged that (a) the utility model
covered by the letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the
specification of the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as
amended; (c) respondent Melecia Madolaria was not the original, true and actual inventor nor did she
derive her rights from the original, true and actual inventor of the utility model covered by the letters
patent; and, (d) the letters patent was secured by means of fraud or misrepresentation. In support of her
petition for cancellation petitioner further alleged that (a) the utility model covered by the letters patent of
respondent had been known or used by others in the Philippines for more than one (1) year before she
filed her application for letters patent on 9 December 1979; (b) the products which were produced in
accordance with the utility model covered by the letters patent had been in public use or on sale in the
Philippines for more than one (1) year before the application for patent therefor was filed.
Petitioner presented the following documents which she correspondingly marked as exhibits: (a)
affidavit of petitioner alleging the existence of prior art, marked Exh. A; (b) a brochure distributed by
Manila Gas Corporation disclosing a pictorial representation of Ransome Burner made by Ransome
Torch and Burner Company, USA, marked Exh. D; and, (c) a brochure distributed by Esso Gasul or Esso
Standard Eastern, Inc., of the Philippines showing a picture of another similar burner with top elevation
view and another perspective view of the same burner, marked Exh. E.
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the
UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970;
that Ong helped in the casting of an LPG burner which was the same utility model of a burner for which
Letters Patent No. UM-4609 was issued, and that after her husbands separation from the shop she
organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners one of
which had the configuration, form and component parts similar to those being manufactured by UNITED
FOUNDRY. Petitioner presented in evidence an alleged model of an LPG burner marked Exh. K and
covered by the Letters Patent of respondent, and testified that it was given to her in January 1982 by one
of her customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also presented in
evidence her own model of an LPG burner called Ransome burner marked Exh. L, which was allegedly
manufactured in 1974 or 1975 and sold by her in the course of her business operation in the name of
BESCO METAL. Petitioner claimed that this Ransome burner (Exh. L) had the same configuration and
mechanism as that of the model which was patented in favor of private respondent Melecia
Madolaria. Also presented by petitioner was a burner cup of an imported Ransome burner marked Exh M
which was allegedly existing even before the patent application of private respondent.
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel
Francisco. Ong testified that he worked as a helper in the UNITED FOUNDRY from 1965 to 1970 where
he helped in the casting of LPG burners with the same form, configuration and mechanism as that of the
model covered by the Letters Patent issued to private respondent.Francisco testified that he had been
employed with the Manila Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he retired
as supervisor and that Manila Gas Corporation imported Ransome burners way back in 1965 which were
advertised through brochures to promote their sale.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who
testified, among others, that he was the General Supervisor of the UNITED FOUNDRY in the foundry,
machine and buffing section; that in his early years with the company, UNITED FOUNDRY was engaged
in the manufacture of different kinds of gas stoves as well as burners based on sketches and
specifications furnished by customers; that the company manufactured early models of single-piece types
of burners where the mouth and throat were not detachable; that in the latter part of 1978 respondent
Melecia Madolaria confided in him that complaints were being brought to her attention concerning the
early models being manufactured; that he was then instructed by private respondent to cast several
experimental models based on revised sketches and specifications; that private respondent again made
some innovations; that after a few months, private respondent discovered the solution to all the defects of
the earlier models and, based on her latest sketches and specifications, he was able to cast several
models incorporating the additions to the innovations introduced in the models. Various tests were
conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they
obtained perfect results. Rolando Madolaria testified that private respondent decided to file her
application for utility model patent in December 1979.
On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56 denying the
petition for cancellation and holding that the evidence of petitioner was not able to establish
convincingly that the patented utility model of private respondent was anticipated. Not one of the various
pictorial representations of business clearly and convincingly showed that the devices presented by
petitioner was identical or substantially identical with the utility model of the respondent. The decision also
stated that even assuming that the brochures depicted clearly each and every element of the patented
gas burner device so that the prior art and patented device became identical although in truth they were
not, they could not serve as anticipatory bars for the reason that they were undated. The dates when they
were distributed to the public were not indicated and, therefore, were useless prior art references. The
records and evidence also do not support the petitioners contention that Letters Patent No. UM-4609 was
obtained by means of fraud and/or misrepresentation. No evidence whatsoever was presented by
petitioner to show that the then applicant Melecia Madolaria withheld with intent to deceive material facts
which, if disclosed, would have resulted in the refusal by the Philippine Patent Office to issue the Letters
Patent under inquiry.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which on 15
October 1993 affirmed the decision of the Director of Patents. Hence, this petition for review
on certiorari alleging that the Court of Appeals erred (a) in relying on imaginary differences which in
actuality did not exist between the model of private respondent covered by Letters Patent No. UM-4609
and the previously known model of Esso Standard Eastern, Inc., and Manila Gas Corporation, making
such imaginary differences grounded entirely on speculation, surmises and conjectures; (b) in rendering
judgment based on misapprehension of facts; (c) in relying mainly on the testimony of private
respondents sole witness Rolando Madolaria; and, (d) in not canceling Letters Patent No. UM-4609 in the
name of private respondent.
Petitioner submits that the differences cited by the Court of Appeals between the utility model of
private respondent and the models of Manila Gas Corporation and Esso Standard Eastern, Inc., are more
imaginary than real. She alleges that based on Exhs. E, E-1, F and F-1 or the brochures of Manila Gas
Corporation and Esso Standard Eastern, Inc., presented by petitioner, the cup-shaped burner mouth and
threaded hole on the side are shown to be similar to the utility model of private respondent. The exhibits
also show a detachable burner mouth having a plurality of upwardly existing undulations adopted to act
as gas passage when the cover is attached to the top of said cup-shaped mouth all of which are the same
as those in the patented model. Petitioner also denies as substantial difference the short cylindrical tube
of the burner mouth appearing in the brochures of the burners being sold by Manila Gas Corporation and
the long cylindered tube of private respondents model of the gas burner.
Petitioner argues that the actual demonstration made during the hearing disclosed the similarities in
form, operation and mechanism and parts between the utility model of private respondent and those
depicted in the brochures. The findings of the Patent Office and the Court of Appeals that the brochures
of Manila Gas Corporation and Esso Standard Eastern, Inc., are undated cannot overcome the fact of
their circulation before private respondent filed her application for utility model patent. Petitioner thus asks
this Court to take judicial notice of the fact that Esso Standard Eastern, Inc., disappeared before 1979
and reappeared only during the Martial Law years as Petrophil Corporation. Petitioner also emphasizes
that the brochures indicated the telephone number of Manila Gas Corporation as 5-79-81 which is a five
(5) numbered telephone number existing before 1975 because telephones in Metro Manila started to
have six (6) numbers only after that year.
 Petitioner further contends that the utility model of private respondent is absolutely similar to the LPG
burner being sold by petitioner in 1975 and 1976, and also to the Ransome burner depicted in the old
brochures of Manila Gas Corporation and Esso Standard Eastern, Inc., fabricated by Ransome Torch and
Burner Company of Oakland, California, USA, especially when considered through actual physical
examination, assembly and disassembly of the models of petitioner and private respondent. Petitioner
faults the Court of Appeals for disregarding the testimonies of Ong Bun Tua and Fidel Francisco for their
failure to produce documents on the alleged importation by Manila Gas Corporation of Ransome burners
in 1965 which had the same configuration, form and mechanism as that of the private respondents
patented model.
Finally, it is argued that the testimony of private respondents lone witness Rolando Madolaria should
not have been given weight by the Patent Office and the Court of Appeals because it contained mere
after-thoughts and pretensions.
We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is the law on patents,
expressly provides -
Sec. 7. Inventions patentable. Any invention of a new and useful machine, manufactured product or
substance, process or an improvement of any of the foregoing, shall be patentable.
Further, Sec. 55 of the same law provides -
Sec. 55. Design patents and patents for utility models. - (a) Any new, original and ornamental design for
an article of manufacture and (b) any new model of implements or tools or of any industrial product or of
part of the same, which does not possess the quality of invention, but which is of practical utility by reason
of its form, configuration, construction or composition, may be protected by the author thereof, the former
by a patent for a design and the latter by a patent for a utility model, in the same manner and subject to
the same provisions and requirements as relate to patents for inventions insofar as they are applicable
except as otherwise herein provided.
The element of novelty is an essential requisite of the patentability of an invention or discovery. If a
device or process has been known or used by others prior to its invention or discovery by the applicant,
an application for a patent therefor should be denied; and if the application has been granted, the court, in
a judicial proceeding in which the validity of the patent is drawn in question, will hold it void and
[2]
ineffective. It has been repeatedly held that an invention must possess the essential elements of
novelty, originality and precedence, and for the patentee to be entitled to the protection the invention must
[3]
be new to the world.
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an LPG Burner on 22 July 1981, the
Philippine Patent Office found her invention novel and patentable. The issuance of such patent creates a
presumption which yields only to clear and cogent evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one
[4]
which is met only by clear and satisfactory proof which overcomes every reasonable doubt. Hence, 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 if it is substantially similar to any other utility model so known, used or described
[5]
within the country.
As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption
of legality of the issuance of UM-4609 to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. Thus the Director of Patents explained his reasons for the denial
of the petition to cancel private respondents patent -
Scrutiny of Exhs. D and E readily reveals that the utility model (LPG Burner) is not anticipated. Not one of
the various pictorial representations of burners clearly and convincingly show that the device presented
therein is identical or substantially identical in construction with the aforesaid utility model. It is relevant
and material to state that in determining whether novelty or newness is negatived by any prior art, only
one item of the prior art may be used at a time. For anticipation to occur, the prior art must show that
each element is found either expressly or described or under principles of inherency in a single prior art
reference or that the claimed invention was probably known in a single prior art device or
practice. (Kalman v. Kimberly Clark, 218 USPQ 781, 789)
Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each and every
element of the patented gas burner device so that the prior art and the said patented device become
identical, although in truth they are not, they cannot serve as anticipatory bars for the reason that they are
undated. The dates when they were distributed to the public were not indicated and, therefore, they are
useless prior art references.
xxxx
Furthermore, and more significantly, the model marked Exh. K does not show whether or not it was
manufactured and/or cast before the application for the issuance of patent for the LPG burner was filed by
Melecia Madolaria.
With respect to Exh. L, petitioner claimed it to be her own model of LPG burner allegedly manufactured
sometime in 1974 or 1975 and sold by her in the course of her business operation in the name of Besco
Metal Manufacturing, which burner was denominated as Ransome burner
xxxx
But a careful examination of Exh. L would show that it does not bear the word Ransome which is the
burner referred to as the product being sold by the Petitioner. This is not the way to prove that Exh. L
anticipates Letters Patent No. UM-4609 through Exhs. C and D. Another factor working against the
Petitioners claims is that an examination of Exh. L would disclose that there is no indication of the time or
date it was manufactured. This Office, thus has no way of determining whether Exh. L was really
manufactured before the filing of the aforesaid application which matured into Letters Patent No. UM-
4609, subject matter of the cancellation proceeding.
At this juncture, it is worthwhile to point out that petitioner also presented Exh. M which is the alleged
burner cup of an imported Ransome burner. Again, this Office finds the same as unreliable evidence to
show anticipation. It observed that there is no date indicated therein as to when it was manufactured
and/or imported before the filing of the application for issuance of patent of the subject utility model. What
is more, some component parts of Exh. M are missing, as only the cup was presented so that the same
could not be compared to the utility model (subject matter of this case) which consists of several other
detachable parts in combination to form the complete LPG burner.
xxxx
It must likewise be pointed out that Ong Bun Tua testified on the brochures allegedly of Manila Gas and
of Esso Gasul marked Exhs. E and F and on the alleged fact that Manila Gas Corporation was importing
from the United States Ransome burners. But the same could not be given credence since he himself
admitted during cross- examination that he has never been connected with Manila Gas Corporation. He
could not even present any importation papers relating to the alleged imported ransome burners. Neither
[6]
did his wife.
The above findings and conclusions of the Director of Patent were reiterated and affirmed by the
[7]
Court of Appeals.
The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the
question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are
matters which are better determined by the Patent Office. The technical staff of the Philippine Patent
Office composed of experts in their field has by the issuance of the patent in question accepted private
respondents model of gas burner as a discovery. There is a presumption that the Office has correctly
[8]
determined the patentability of the model and such action must not be interfered with in the absence of
competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the
Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and
the Court of Appeals.
The alleged failure of the Director of Patents and the Court of Appeals to accord evidentiary weight
to the testimonies of the witnesses of petitioner showing anticipation is not a justification to grant the
petition. Pursuant to the requirement of clear and convincing evidence to overthrow the presumption of
validity of a patent, it has been held that oral testimony to show anticipation is open to suspicion and if
[9]
uncorroborated by cogent evidence, as what occurred in this case, it may be held insufficient.
Finally, petitioner would want this Court to review all over again the evidence she presented before
the Patent Office. She argues that contrary to the decision of the Patent Office and the Court of Appeals,
the evidence she presented clearly proves that the patented model of private respondent is no longer new
and, therefore, fraud attended the acquisition of patent by private respondent.
It has been held that the question on priority of invention is one of fact. Novelty and utility are
likewise questions of fact. The validity of patent is decided on the basis of factual inquiries.Whether
evidence presented comes within the scope of prior art is a factual issue to be resolved by the Patent
 [10]
Office. There is question of fact when the doubt or difference arises as to the truth or falsehood of
alleged facts or when the query necessarily invites calibration of the whole evidence considering mainly
the credibility of witnesses, existence and relevance of specific surrounding circumstances, their relation
[11]
to each other and to the whole and the probabilities of the situation.
Time and again we have held that it is not the function of the Supreme Court to analyze or weigh all
over again the evidence and credibility of witnesses presented before the lower tribunal or office. The
Supreme Court is not a trier of facts. Its jurisdiction is limited to reviewing and revising errors of law
imputed to the lower court, its findings of fact being conclusive and not reviewable by this Court.
WHEREFORE, the Petition is DENIED. The Decision of the Court of Appeals affirming that of the
Philippine Patent Office is AFFIRMED. Costs against petitioner.
SO ORDERED.
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.
Ambrosio Padilla Law Offices for petitioner.

PARAS, J.:p
Submitted on December 9, 1977 for Our decision is this petition for review on certiorari of the two
Resolutions of the Court of Appeals, the first dated July 6, 1976, setting aside its Decision of February 16,
1976 in CA-G.R. No. SP-04706, titled "SUSANA LUCHAN v. Hon. HONRADO, et al." wherein it ruled for
the dismissal of the petition for lack of merit and at the same time nullifying the writ of preliminary
injunction it had previously issued; and the second, dated November 4, 1976, denying the motion for
reconsideration of the first resolution above-mentioned.
Petitioner is doing business under the firm name and style of SWAN MANUFACTURING" while private
respondent is likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER
PUFF MANUFACTURING."
It is undisputed that petitioner is a patent holder of powder puff namely:
1. UM-423 (extended and/or renewed under Extension No. UM-109 for a
period of 5 years from October 6, 1971)
2. UM-450 (extended and/or renewed under Extension No. UM110 for a
period of 5 years from January 26, 1972)
3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp.
6-7).
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private respondent that the
powder puffs the latter is manufacturing and selling to various enterprises particularly those in the
cosmetics industry, resemble Identical or substantially Identical powder puffs of which the former is a
patent holder under Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility
Model No. 1184; petitioner explained such production and sale constitute infringement of said patents and
therefore its immediate discontinuance is demanded, otherwise it will be compelled to take judicial action.
(Rollo, pp. 7-8).
Private respondent replied stating that her products are different and countered that petitioner's patents
are void because the utility models applied for were not new and patentable and the person to whom the
patents were issued was not the true and actual author nor were her rights derived from such author.
(Taken from allegations in the Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private respondent
assailed the validity of the patents involved and filed with the Philippine Patent Office petitions for
cancellation of (1) Utility Model Letter Patent Extension No. UM-109 (Inter Partes Case No. 838, Susana
Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter Partes Case No. 839,
Susana Luchan v. Rosario C. Tan), (3) Utility Model Letters Patent Extension No. UM-110 (Inter Partes
Case No. 840, Susana Luchan v. Rosario C. Tan. (Taken from allegations in the Answer, par. 10, Rollo,
pp. 94-95).
In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with injunction and
preliminary injunction against private respondent with the then Court of First Instance of Rizal, Pasig
Branch, docketed as Civil Case No. 19908, for infringing the aforesaid letters patent, and prayed, among
others, that a writ of preliminary injunction be immediately issued (Complaint, Rollo, p. 90).
In her answer, private respondent alleged that the products she is manufacturing and offering for sale are
not Identical, or even only substantially Identical to the products covered by petitioner's patents and, by
way of affirmative defenses, further alleged that petitioner's patents in question are void on the following
grounds:
(1) at the time of filing of application for the patents involved, the utility
models applied for were not new and patentable under Sec. 55 of R.A.
165, as amended by R.A. 864; and
(2) the person to whom the patents were issued was not the true and
actual author of the utility models applied for, and neither did she derive
her rights from any true and actual author of these utility models.
for the following reasons:
 (a) since years prior to the filing of applications for the patents involved,
powder puffs of the kind applied for were then already existing and
publicly being sold in the market; both in the Philippines and abroad; and
(b) applicant's claims in her applications, of "construction" or process of
manufacturing the utility models applied for, with respect to UM-423 and
UM-450, were but a complicated and impractical version of an old,
simple one which has been well known to the cosmetics industry since
years previous to her filing of applications, and which belonged to no one
except to the general public; and with respect to UM1184; her claim in
her application of a unitary powder puff, was but an limitation of a
product well known to the cosmetics industry since years previous to her
firing of application, and which belonged to no one except to the general
public; (Answer, Rollo, pp. 93-94).
On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125) granting the preliminary
injunction prayed for by petitioner. Consequently, the corresponding writ was subsequently issued (Annex
"K-1", Rollo, p. 131) enjoining the herein private respondent (then defendant) and all other persons
employed by her, her agents, servants and employees from directly or indirectly manufacturing, making or
causing to be made, selling or causing to be sold, or using or causing to be used in accordance with, or
embodying the utility models of the Philippine Patent Office Utility Model Letters Patent Nos. 423
(Extension No. UM-109), No. 450 (Extension No. UM-110), and Utility Model No. 1184 or from
infringement upon or violating said letters patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).
Private respondent questioned the propriety of the trial court's issuance of the Writ of Preliminary
Injunction arguing that since there is still a pending cancellation proceedings before the Philippine Patent
Office concerning petitioner's patents, such cannot be the basis for preliminary injunction (Motion for
Reconsideration, Rollo, p. 132).
In an Order dated September 11, 1975, the trial court denied private respondent's motion for
reconsideration (Annex "N", Rollo, p. 142).
In challenging these Orders private respondent filed a petition for certiorari with the respondent court on
September 29, 1975 (Annex "D", Rollo, pp. 148-171) reiterating among other things the invalidity of
petitioner's patents and prayed that the trial court be restrained from enforcing or continuing to enforce
the following:
(1) Order dated September 18, 1974, granting the preliminary injunction;
(2) Writ of preliminary injunction dated September 18, 1974; and
(3) Order dated September 11, 1974 denying petitioner's motion petition
for reconsideration.
On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent Court of Appeals
as follows:
NOW, THEREFORE, you, respondents, and/or any person/persons acting on your stead,
are hereby ENJOINED to RESTRAIN from enforcing or continuing to enforce, the
proceedings complained of in the petition to wit: 1) Order dated September 18, 1974,
granting the preliminary injunction; 2) Writ of Preliminary Injunction dated September 18,
1974; and Order dated September 11, 1975, denying petitioner's motion for
reconsideration, all issued in connection with Civil Case No. 19908, UNTIL FURTHER
ORDERS FROM THIS COURT. (Annex "P", Rollo, p. 1.73)
On February 16, 1976, respondent court promulgated a decision the dispositive portion of which reads:
WHEREFORE, finding no merit in the herein petition, the same is hereby dismissed and
the preliminary injunction previously issued by this Court is hereby set aside, with costs.
SO ORDERED. (CA Decision, Rollo, p. 189).
ln said decision respondent court stated that in disposing of the petition it tackled only the issue of
whether the court a quo acted with grave abuse of discretion in issuing the challenged orders. It made
clear the question of whether the patents have been infringed or not was not determined considering the
court a quo has yet to decide the case on the merits (Ibid., p. 186).
Feeling aggrieved, private respondent moved to reconsider the afore-mentioned Decision based on the
following grounds:
I
 THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING
THE EXISTENCE OF A FAIR QUESTION OF INVALIDITY OF PRIVATE
RESPONDENT'S PATENTS.
II
THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE
THEORY OF RESPONDENT JUDGE THAT HE HAS NO
JURISDICTION TO INVALIDATE THE PATENTS UPON GROUND OF
LACK OF NOVELTY OF THE PRODUCTS PATENTED. (Motion for
Reconsideration, Rollo, p. 190).
Reviewing on reconsideration, respondent court gave weight to private respondent's allegation that the
latter's products are not identical or even only substantially identical to the products covered by
petitioner's patents. Said court noticed that contrary to the lower courts position that the court a quo had
no jurisdiction to determine the question of invalidity of the patents, Section 45 and 46 of the Patent Law
allow the court to make a finding on the validity or invalidity of patents and in the event there exists a fair
question of its invalidity, the situation calls for a denial of the writ of preliminary injunction pending the
evaluation of the evidence presented (Rollo, pp. 218-226). Thus, finding the lower court's position to have
been opposed to Patent Law, respondent court considered it a grave abuse of discretion when the court a
quo issued the writ being questioned without looking into the defenses alleged by herein private
respondent. Further, it considered the remedy of appeal, under the circumstances, to be inadequate.
Thus, on July 6, 1976, respondent court made a complete turnabout from its original decision and
promulgated a Resolution, the dispositive portion of which reads:
WHEREFORE, our decision is hereby set aside. The writ of certiorari is ordered issued.
Accordingly, the challenged orders, Exhibit H and H-1 and the order denying the motion
for reconsideration (Annex "K", Petition), are hereby set aside. The writ of preliminary
injunction previously ordered by this Court and ordered lifted by the Decision now being
set aside is hereby reinstated and made permanent. Without pronouncement as to costs.
SO ORDERED. (CA Resolution, Rollo, p. 226).
In a Resolution dated November 4, 1976, respondent court, not persuaded by the grounds embodied in
the motion for reconsideration filed by herein petitioner (Annex "V ", Rollo, p. 227), denied the same for
lack of merit, thereby maintaining the same stand it took in its July 6, 1976 Resolution (Rollo, p. 281).
Hence, this petition.
On December 3, 1976, without giving due course to the petition, this Court required respondent to file her
Comment (Rollo, p. 290) which was filed on December 16, 1976 (Rollo, pp. 291-316). Thereafter,
petitioner filed her Reply (Rollo, p. 323) and on May 30, 1977, the petition was given due course (Rollo, p.
345). Petitioner filed her brief on July 14, 1977 (Rollo, p. 351) while private respondent filed her brief on
August 25, 1977 (Rollo, p. 359). Thereafter, petitioner having failed to file reply brief, the Court resolved to
declare the case submitted for decision on December 9, 1977 (Rollo, p. 359).
The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16) may be reduced to three
main issues:
(1) Whether or not in an action for infringement the Court a quo had
jurisdiction to determine the invalidity of the patents at issue which
invalidity was still pending consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion
in the issuance of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.
The first issue has been laid to rest in a number of cases where the Court ruled that "When a patent is
sought to be enforced, the questions of invention, novelty or prior use, and each of them, are open to
judicial examination." (Vargas v. F.M. Yaptico & Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 Phil. 790-791
[1933]; Frank and Gohn v. Kosuyana 59 Phil. 207 [1933]).
Under the present Patent Law, there is even less reason to doubt that the trial court has jurisdiction to
declare the patents in question invalid. A patentee shall have the exclusive right to make, use and sell the
patented article or product and the making, using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
infringed upon may bring an action before the proper CFI now (RTC) and to secure an injunction for the
protection of his rights (Sec. 42, R.A. 165). Defenses in an action for infringement are provided for in
Section 45 of the same law which in fact were availed of by private respondent in this case. Then, as
correctly stated by respondent Court of Appeals, this conclusion is reinforced by Sec. 46 of the same law
which provides that if the Court shall find the patent or any claim thereof invalid, the Director shall on
certification of the final judgment ... issue an order cancelling the patent or the claims found invalid and
shall publish a notice thereof in the Official Gazette." Upon such certification, it is ministerial on the part of
the patent office to execute the judgment. (Rollo, pp. 221-222).
II.
The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff
introduces the patent in evidence, and the same is in due form, there is created a prima
facie presumption of its correctness and validity. The decision of the Commissioner (now Director) of
Patent in granting the patent is presumed to be correct. The burden of going forward with the evidence
(burden of evidence) then shifts to the defendant to overcome by competent evidence this legal
presumption.
The question then in the instant case is whether or not the evidence introduced by private respondent
herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses
presented by private respondents before the Court of First Instance before the Order of preliminary
injunction was issued as well as those presented by the petitioner, respondent Court of Appeals was
satisfied that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the
ground of lack of novelty. As pointed out by said appellate court said evidence appeared not to have been
considered at all by the court a quo for alleged lack of jurisdiction, on the mistaken notion that such
question in within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements of novelty , originality
and precedence and for the patentee to be entitled to protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a patentee for more than two years (now
for more than one year only under Sec. 9 of the Patent Law) before the date of his application for his
patent, will be fatal to, the validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. F.M.
Yaptico & Co. and Vargas v. Chua, et al., supra).
The law provides:
SEC. 9. Invention not considered new or patentable. An invention shall not be
considered new or capable of being patented if it was known or used by others in the
Philippines before the invention thereof by the inventor named in an application for patent
for the invention; or if it was patented or described in any printed publication in the
Philippines or any foreign country more than one year before the application for a patent
therefor; or if it had been in public use or on sale in the Philippines for more than one
year before the application for a patent therefor; or if it is the subject matter of a validity
issued patent in the Philippines granted on an application filed before the filing of the
application for patent therefor.
Thus, more specifically, under American Law from which our Patent Law was derived (Vargas v. F.M.
Yaptico & Co. supra) it is generally held that in patent cases a preliminary injunction will not issue for
patent infringement unless the validity of the patent is clear and beyond question. The issuance of letters
patent, standing alone, is not sufficient to support such drastic relief (8 Deller's Walker on Patents p. 406).
In cases of infringement of patent no preliminary injunction will be granted unless the patent is valid and
infringed beyond question and the record conclusively proves the defense is sham. (Ibid., p. 402)
In the same manner, under our jurisprudence, as a general rule because of the injurious consequences a
writ of injunction may bring, the right to the relief demanded must be clear and unmistakable. (Sangki v.
Comelec, 21 SCRA 1392; December 26, 1967) and the dissolution of the writ is proper where applicant
has doubtful title to the disputed property. (Ramos v. C.A., 95 SCRA 359).
III.
It will be noted that the validity of petitioner's patents is in question for want of novelty. Private respondent
contends that powder puffs Identical in appearance with that covered by petitioner's patents existed and
were publicly known and used as early as 1963 long before petitioner was issued the patents in question.
(List of Exhibits, Rollo, pp. 194-199). As correctly observed by respondent Court of Appeals, "since
sufficient proofs have been introduced in evidence showing a fair question of the invalidity of the patents
issued for such models, it is but right that the evidence be looked into, evaluated and determined on the
merits so that the matter of whether the patents issued were in fact valid or not may be resolved." (Rollo,
pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction which under
the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance of the writ, the trial court
failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of the right
to be protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed a grave abuse of
discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is of so general a tenor
that petitioner may be totally barred from the sale of any kind of powder puff. Under the circumstances,
respondent appellate court is of the view that ordinary appeal is obviously inadequate. (Rollo, p. 288). A
parallel was drawn from a decision of the Supreme Court in the case of Sanchez v. Hon. Court of
Appeals, 69 SCRA 328 [1976] where the First Division of the Supreme Court ruled that "The prerogative
writ of certiorari may be applied for by proper petition notwithstanding the existence of the regular remedy
of an appeal in due cause when among other reasons, the broader interests of justice so require or an
ordinary appeal is not an adequate remedy."
Private respondent maintains the position that the resolutions sought to be appealed from had long
become final and executory for failure of Hon. Reynaldo P. Honrado, the trial court judge, to appeal by
certiorari from the resolutions of respondent Court of Appeals. (Rollo, pp. 291-292).
Such contention is untenable.
There is no dispute that petitioner has seasonably petitioned. On the other hand, it is elementary that the
trial judge is a mere nominal party as clearly provided in Section 5, Rule 65 of the Revised Rules of Court
where it shall be the duty of such person or persons interested in sustaining the proceedings in court, "to
appear and defend, both in his or their own behalf and in behalf of the court or judge affected by the
proceedings."
Relative thereto "the judge whose order is under attack is merely a nominal party; wherefore, a judge in
his official capacity should not be made to appear as a party seeking reversal of a decision that is
unfavorable to the action taken by him." (Hon. Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67
SCRA 508, 524; Lim Se v. Argel, 70 SCRA 378).
As to petitioner's claim of prescription, private respondent's contention that such refers to the filing of
petitions for cancellation in the Patent Office under Sec. 28 of the Patent Law and not to a defense
against an action for infringement under Sec. 45 thereof which may be raised anytime, is evident under
aforesaid law.
PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby AFFIRMED.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs-appellants,
vs.
G. KOSUYAMA, defendant-appellee.
J.W. Ferrier for appellants.
Pablo Lorenzo for appellee.

IMPERIAL, J.:
Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping machines, issued by the United
States Patent Office on December 16,1924, and registered in the Bureau of Commerce and Industry of
the Philippine Islands on March 17,1925, was the origin of this action brought by the plaintiffs herein who
prayed that the judgment be rendered against the defendant, ordering him thereby to refrain immediately
from the manufacture and sale of machines similar to the one covered by the patent: to render an
accounting of the profits realized from the manufacture and sale of the machines in question; that in case
of refusal or failure to render such accounting, the defendants be ordered to pay the plaintiffs the sum of
P60 as profit on each machine manufactured or sold by him; that upon approval of the required bond,
said defendant be restrained from continuing the manufacture and sale of the same kind of machines;
that after the trial the preliminary injunction issued therein be declared permanent and, lastly, that the said
defendant be sentenced to pay the costs and whatever damages the plaintiffs might be able to prove
therein. The action therefore was based upon alleged infringement by the defendant of the rights and
privileges acquired by the plaintiffs over the aforesaid patent through the manufacture and sale by the
former of machines similar to that covered by the aforesaid patent.
The plaintiffs appealed from the judgment rendered by the trial court dismissing their complaint, with cost,
as well as the defendant's counterclaim of P10,000. The defendant did not appeal.
In their amended complaint, the plaintiff alleged that their hemp stripping machines, for which they
obtained a patent, have the following characteristics: "A stripping head, a horizontal table, a stripping
knife supported upon such table, a tappering spindle, a rest holder adjustably secured on the table
portion, a lever and means of compelling the knife to close upon the table, a pallet or rest in the bottom of
the table, a resilient cushion under such palletor rest." In spite of the fact that they filed an amended
complaint from which the "spindle" or conical drum, which was the only characteristic feature of the
machine mentioned in the original complaint, was eliminated, the plaintiffs insisted that the said part
constitutes the essential difference between the machine in question and other machines and that it was
the principal consideration upon which their patent was issued. The said plaintiffs sustained their
contention on this point even in their printed brief and memorandum filed in this appeal.
During the trial, both parties presented voluminous evidence from which the trial court arrived at the
following conclusions:
In constructing their machine the plaintiffs did nothing but improve, to a certain degree, those that
were already in vogue and in actual us in hemp producing provinces. It cannot be said that they
have invented the "spindle" inasmuch as this was already known since the year 1909 or 1910.
Neither it can be said that they have invented the stripping knife and the contrivance which
controls the movement and pressure thereof on the ground that stripping knives together with
their control sets were already in actual use in the different stripping machines long before their
machine appeared. Neither can it be said that they invented the fly wheel because that part or
piece thereof, so essential in every machine from time immemorial, was already known and
actually employed in hemp stripping machines such as those of Riesgo (Exhibit 4-A), Crumb
(Exhibit 1-A), Icsiar (Exhibit A-Suzara), Browne (Exhibit 28-A), McFie, etc., all of which were in
use for the benefit of hemp long before the appearance of the plaintiffs' machines in the market.
Much less can it be said that they invented the pedal to raise the knife in order to allow the hemp
to be stripped to pass under it, on the ground that the use of such contrivance has, likewise, been
known since the invention of the most primitive of hemp stripping machines.
On the other hand, although the plaintiffs alleged in their original complaint that "the principal and
important feature of said machine is a spindle upon which the hemp to be stripped is wound in the
process of stripping," nevertheless, in their amended complaint of March 3, 1928, which was filed
after a portion of the evidence therein had already been submitted and it was known that the use
of the spindle was nothing new, they still made the allegations appearing in paragraph 3 of their
said amended complaint and reproduced on pages 2,3,4 and 5 hereof, copying the same from
the application which they filed with the United States Patent Office, under which they obtained
 their patent in question. The aforesaid application clearly shows that what they applied for was
not a patent for a "pioneer or primary invention" but only for some "new and useful improvement
in hemp stripping machines."
We have carefully reviewed the evidence presented and have had the opportunity of ascertaining the
truth of the conclusions above stated. We agree with the trial court that, strictly speaking, the hemp
stripping machine of the plaintiffs does not constitute an invention on the ground that it lacks the elements
of novelty, originality and precedence (48 C.J., sec. 101, p. 97, and 102, p. 98). In fact, before the
plaintiffs herein obtained their patent, they themselves had already publicly used the same kind of
machine for some months, at least, and, various other machines, having in general, the same
characteristics and important parts as that of the said plaintiffs, were known in the Province of Davao.
Machines known as Molo, Riesgo, Crumb, Icsiar, Browne and McFie were already known in that locality
and used by the owners of hemp plantations before the machine of the plaintiffs came into existence. It
may also be noted that Adrian de Icsiar applied for a patent on an invention which resulted in the rejection
by the United States Patent Office of the plaintiffs' original application for a patent on the so called
"spindle" or conical drum which was then in actual use in the Dringman and Icsiar hemp stripping
machines.
Notwithstanding the foregoing facts, the trial court did not decree the annulment of the plaintiffs' patent
and the herein defendant-appellee insists that the patent in question should be declared null and void. We
are of the opinion that it would be improper and untimely to render a similar judgment, in view of the
nature of the action brought by the plaintiffs and in the absence of a cross-complaint to that effect. For the
purposes of this appeal, suffice it to hold that the defendant is not civilly liable for alleged infringement of
the patent in question.
In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a patented invention on the
ground that said part of the machine was voluntarily omitted by them from their application, as evidenced
by the photographic copy thereof (Exhibit 41) wherein it likewise appears that the patent on Improved
Hemp Stripping Machines was issued minus the "spindle" in question. Were we to stress to this part of
the machine, we would be giving the patent obtained by the plaintiffs a wider range than it actually has,
which is contrary to the principles of interpretation in matters relating to patents.
In support of their claim the plaintiffs invoke the doctrine laid down by this court in the case of Frank and
Gohn vs. Benito (51 Phil., 712), wherein it was held that the therein defendant really infringed upon the
patent of the therein plaintiffs. It may be noted that the plaintiffs in the former and those of the latter case
are the same and that the patent then involved is the very same one upon which the present action of the
plaintiffs is based. The above-cited case, however, cannot be invoked as a precedent to justify a
judgment in favor of the plaintiffs-appellants on the ground that the facts in one case entirely different
from those in the other. In the former case the defendant did not set up the same special defenses as
those alleged by the herein defendant in his answer and the plaintiffs therein confined themselves to
presenting the patent, or rather a copy thereof, wherein the "spindle" was mentioned, and this court took
for granted their claim that it was one of the essential characteristics thereof which was imitated or copied
by the then defendant. Thus it came to pass that the "spindle" in question was insistently mentioned in the
decision rendered on appeal as the essential part of the plaintiffs' machine allegedly imitated by the then
defendant. In the case under consideration, it is obvious that the "spindle" is not an integral part of the
machine patented by the plaintiffs on the ground that it was eliminated from their patent inasmuch as it
was expressly excluded in their application, as evidenced by the aforesaid Exhibit 41.
Wherefore, reiterating that the defendant cannot be held civilly liable for alleged infringement of the patent
upon which the present action is based on the ground that there is no essential part of the machine
manufactured and sold by him, which was unknown to the public in the Province of Davao at the time the
plaintiffs applied for and obtained their patent for improved hemp stripping machines, the judgment
appealed from is hereby affirmed, with the costs against the plaintiffs-appellants. So ordered.
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

FERNANDEZ, J.:
This is a petition for certiorari to review the decision of the Court of Appeals in CA G.R. NO. 37824-R
entitled "Conrado G. de Leon, plaintiff-appelle vs. Dominciano Aguas and F.H. Aquino and Sons,
defendants-appellants," the dispositive portion of which reads:
WHEREFORE, with the modification that plintiff-applee's award of moral damages is
hereby redured to P3,000.00, the appealed judgment is hereby affirmed, in all othe
1
respects, with costs against appellants.
On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a
complaint for infringement of patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that
being the original first and sole inventor of certain new and useful improvements in the process of making
mosaic pre-cast tiles, he lawfully filed and prosecuted an application for Philippine patent, and having
complied in all respects with the statute and the rules of the Philippine Patent Office, Patent No. 658 was
lawfully granted and issued to him; that said invention was new, useful, not known or used by others in
this country before his invention thereof, not patented or described in any printed publication anywhere
before his invention thereof, or more than one year prior to his application for patent thereof, not patented
in any foreign country by him or his legal representatives on application filed more than one year prior to
his application in this country; that plaintiff has the exclusive license to make, use and sell throughout the
Philippines the improvements set forth in said Patent No. 658; that the invention patented by said Patent
No. 658 is of great utility and of great value to plaintiff and of great benefit to the public who has
demanded and purchased tiles embodying the said invention in very large quantities and in very rapidly
increasing quant ies; that he has complied with the Philippine statues relating to marking patented tiles
sold by him; that the public has in general acknowledged the validity of said Patent No. 658, and has
respected plaintiff's right therein and thereunder; that the defendant Domiciano A. Aguas infringed Letters
of Patent No. 658 by making, using and selling tiles embodying said patent invention and that defendant
F. H. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A.
Aguas the engravings, castings and devices designed and intended of tiles embodying plaintiff;s patented
invention; that he has given direct and personal notice to the defendants of their said acts of infringement
and requested them to desist, but nevertheless, defendants have refused and neglected to desist and
have disregarded such request, and continue to so infringe causing great and irreparable damage to
plaintiff; that if the aforesaid infringement is permitted to continue, further losses and damages and
irreparable injury will be sustained by the plaintiff; that there is an urgent need for the immediate issuance
of a preliminary injunction; that as a result of the defendants' wrongful conduct, plaintiff has suffered and
the defendants are liable to pay him, in addition to actual damages and loss of profits which would be
determined upon proper accounting, moral and exemplary or corrective damages in the sum of
P90,000.00; that plaintiff has been compelled to go to court for the protection and enforcement of his and
to engage the service of counsel, thereby incurring attorney's fees and expenses of litigation in the sum of
2
P5,000.00.
3
On April 14, 1962, an order granting the plaintiff's petition for a Writ of Preliminary Injunction was issued.
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the allegations of the
plaintiff and alleging that: the plaintiff is neither the original first nor sole inventor of the improvements in
the process of making mosaic pre-cast tiles, the same having been used by several tile-making factories
in the Philippines and abroad years before the alleged invention by de Leon; that Letters Patent No. 658
was unlawfully acquired by making it appear in the application in relation thereto that the process is new
and that the plaintiff is the owner of the process when in truth and in fact the process incorporated in the
patent application has been known and used in the Philippines by almost all tile makers long before the
alleged use and registration of patent by plaintiff Conrado G. de Leon; that the registration of the alleged
invention did not confer any right on the plaintiff because the registration was unlawfully secured and was
a result of the gross misrepresentation on the part of the plaintiff that his alleged invention is a new and
inventive process; that the allegation of the plaintiff that Patent No. 658 is of great value to plaintiff and of
great benefit to the public is a mere conclusion of the plaintiff, the truth being that a) the invention of
plaintiff is neither inventive nor new, hence, it is not patentable, b) defendant has been granted valid
patents (Patents No. 108, 109, 110 issued on December 21, 1961) on designs for concrete decorative
wall tiles; and c) that he can not be guilty of infringement because his products are different from those of
4
the plaintiff.
The trial court rendered a decision dated December 29, 1965, the dispositive portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the
defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their officers, agents,
employees, associates, confederates, and any and all persons acting under their
authority from making and/or using and/or vending tiles embodying said patented
invention or adapted to be used in combination embodying the same, and from making,
manufacturing, using or selling, engravings, castings and devises designed and intended
for use in apparatus for the making of tiles embodying plaintiff's patented invention, and
from offering or advertising so to do, and from aiding and abetting or in any way
contributing to the infringement of said patent;
3. Ordering that each and all of the infringing tiles, engravings, castings and devices,
which are in the possession or under the control of defendants be delivered to plaintiff;
4. Ordering the defendants to jointly and severally pay to the plaintiff the following sums
of money, to wit:
(a) P10,020.99 by way of actual damages;
(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;
(d) P5,000.00 by way of attorney's fees and
5
(e) costs of suit.
6
The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the following errors.
I
THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF'S PATENT FOR THE
'PROCESS OF MAKING MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY AS THE SAME HAS
ALREADY LONG BEEN USED BY TILE MANUFACTURERS BOTH ABROAD AND IN
THIS COUNTRY.
II
THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF PLAINTIFF IS VALID
BECAUSE IT IS AN IMPROVEMENT OR THE AGE-OLD TILE MAKING SYSTEM.
III
THE TRIAL COURT ERRED IN NOT ORDERING THE CANCELLATION OF PLAINTIFF-
APPELLEE'S LETTERS PATENT NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE PATENT LAW, REPUBLIC ACT 165.
IV
THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT DOMICIANO A. AGUAS
IS GUILTY OF INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF'S PATENT IS
NOT A VALID ONE.
V
THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT COULD
NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF'S PATENT BECAUSE EVEN
IN MATTERS NOT PATENTED BY THE PLAINTIFF - LIKE THE COMPOSITION AND
PROPORTION OF INGREDIENTS USED AND THE STRUCTURAL DESIGNS OF THE
MOULD AND THE TILE PRODUCED - THAT OF THE DEFENDANT ARE DIFFERENT.
VI
THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND IN HOLDING
THE DEFENDANT, INSTEAD OF THE PLAINTIFF, LIABLE FOR DAMAGES, AND
ATTORNEY'S FEES.
On August 5, 1969, the Court of Appeals affirmed the decision of the trial court, with the modification that
7
plaintiff-appellee's award of moral damages was reduced to P3,000.00.
The petitioner assigns the following errors supposedly committed by the Court of Appeals:
It is now respectfully submitted that the Court of Appeals committed the following errors
involving questions of law, to wit:
 First error. When it did not conclude that the letters patent of the respondent although
entitled on the cover page as a patent for improvements, was in truth and in fact, on the
basis of the body of the same, a patent for the old and non-patentable process of making
mosaic pre-cast tiles;
Second error. When it did not conclude from the admitted facts of the case, particularly
the contents of the letters patent, Exh. L and the pieces of physical evidence introduced
consisting of samples of the tiles and catalouges, that the alleged improvements
introduced by the respondent in the manufacture of mosaic pre-cast tiles are not
patentable, the same being not new, useful and inventive.
Third error. As a corollary, when it sentenced the herein petitioner to pay the damages
enumerated in the decision of the lower court (Record on Appeal, pp. 74-75), as
confirmed by it (the Court of Appeals), but with the modification that the amount of
8
P50,000.00 moral damages was reduced to P3,000.00.
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the record are to the effect that on December 1, 1959
plaintiff-appellee filed a patent application with the Philippine Patent Office, and on May
5, 1960, said office issued in his favor Letters Patent No. 658 for a "new and useful
improvement in the process of making mosaic pre-cast tiles" (Exh, "L"); that defendant
F.H. Aquino & Sons engraved the moulds embodying plaintiff's patented improvement for
the manufacture of pre-cast tiles, plaintiff furnishing said defendant the actual model of
the tiles in escayola and explained to said engraver the plans, specifications and the
details of the engravings as he wanted them to be made, including an explanation of the
lip width, artistic slope of easement and critical depth of the engraving that plaintiff
wanted for his moulds; that engraver Enrique Aquino knew that the moulds he was
engraving for plaintiff were the latter's very own, which possession the new features and
characteristics covered by plaintiff's parent; that defendant Aguas personally, as a
building contractor, purchased from plaintiff, tiles shaped out of these moulds at the back
of which was imprinted plaintiff's patent number (Exhs., "A" to "E"); that subsequently,
through a representative, Mr. Leonardo, defendant Aguas requested Aquino to make
engravings of the same type and bearing the characteristics of plaintiff's moulds; that Mr.
Aquino knew that the moulds he was asked to engrave for defendant Aguas would be
used to produce cement tiles similar to plaintiff's; that the moulds which F.H. Aquino &
Sons eventually engraved for Aguas and for which it charged Aguas double the rate it
charged plaintiff De Leon, contain the very same characteristic features of plaintiff's
mould and that Aguas used these moulds in the manufacture of his tiles which he actually
put out for sale to the public (Exhs. "1" to "3" and Exhs. "A" to "E"); that both plaintiff's
and defendant Aguas' tiles are sculptured pre-cast wall tiles intended as a new feature of
construction and wag ornamentation substantially Identical to each other in size,
easement, lip width and critical depth of the deepest depression; and that the only
significant difference between plaintiff's mould and that engraved by Aquino for Aguas is
that, whereas plaintiff's mould turns out tiles 4 x 4 inches in size, defendant Aguas' mould
9
is made to fit a 4-1/4 x 4-1/4 inch tile.
10
The patent right of the private respondent expired on May 5, 1977. The errors will be discuss only to
determine the right of said private respondent to damages.
The petitioner questioned the validity of the patent of the private respondent, Conrado G. de Leon, on the
ground that the process, subject of said patent, is not an invention or discovery, or an improvement of the
old system of making tiles. It should be noted that the private respondent does not claim to be the
discoverer or inventor of the old process of tile-making. He only claims to have introduced an
improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to
the private respondent, Conrado G. de Leon, to protect his rights as the inventor of "an alleged new and
11
useful improvement in the process of making mosaic pre-cast tiles." Indeed, Section 7, Republic Act
No. 165, as amended provides: "Any invention of a new and useful machine, manufactured product or
substance, process, or an improvement of the foregoing, shall be patentable.
The Court of Appeals found that the private respondent has introduced an improvement in the process of
tile-making because:
 ... we find that plaintiff-appellee has introduced an improvement in the process of tile-
making, which proceeds not merely from mechanical skill, said improvement consisting
among other things, in the new critical depth, lip width, easement and field of designs of
the new tiles. The improved lip width of appellee's tiles ensures the durability of the
finished product preventing the flaking off of the edges. The easement caused by the
inclination of the protrusions of the patented moulds is for the purpose of facilitating the
removal of the newly processed tile from the female die. Evidently, appellee's
improvement consists in the solution to the old critical problem by making the protrusions
on his moulds attain an optimum height, so that the engraving thereon would be deep
enough to produce tiles for sculptured and decorative purposes, strong optimum
thickness of appellee's new tiles of only 1/8 of an inch at the deepest easement (Exhs.
"D" and "D-1") is a most critical feature, suggestive of discovery and inventiveness,
especially considering that, despite said thinness, the freshly formed tile remains strong
enough for its intended purpose.
While it is true that the matter of easement, lip width, depth, protrusions and depressions
are known to some sculptors, still, to be able to produce a new and useful wall tile, by
using them all together, amounts to an invention. More so, if the totality of all these
features are viewed in combination with the Ideal composition of cement, sodium silicate
and screened fine sand.
By using his improved process, plaintiff has succeeded in producing a new product - a
concrete sculptured tile which could be utilized for walling and decorative purposes. No
proof was adduced to show that any tile of the same kind had been produced by others
before appellee. Moreover, it appears that appellee has been deriving considerable profit
from his manufacture and sale of such tiles. This commercial success is evidence of
12
patentability (Walker on Patents, Dellers Edition, Vol. I, p. 237).
The validily of the patent issued by the Philippines Patent Office in favor of the private respondent and the
question over the inventiveness, novelty and usefulness of the improved process therein specified and
described are matters which are better determined by the Philippines Patent Office. The technical staff of
the Philippines Patent Office, composed of experts in their field, have, by the issuance of the patent in
question, accepted the thinness of the private respondent's new tiles as a discovery. There is a
presumption that the Philippines Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced evidence sufficient to overcome the above established legal
presumption of validity or to warrant reversal of the findings of the lower court relative to
the validity of the patent in question. In fact, as we have already pointed out, the clear
preponderance of evidence bolsters said presumption of validity of appellee's patent.
There is no indication in the records of this case and this Court is unaware of any fact,
which would tend to show that concrete wall tiles similar to those produced by appellee
had ever been made by others before he started manufacturing the same. In fact, during
the trial, appellant was challenged by appellee to present a tile of the same kind as those
produced by the latter, from any earlier source but, despite the fact that appellant had
every chance to do so, he could not present any. There is, therefore, no concrete proof
that the improved process of tile-making described in appellee's patent was used by, or
13
known to, others previous to his discovery thereof.
The contention of the petitioner Aguas that the letters patent of de Leon was actually a patent for the old
and non-patentable process of making mosaic pre-cast tiles is devoid of merit. De Leon never claimed to
have invented the process of tile-making. The Claims and Specifications of Patent No. 658 show that
although some of the steps or parts of the old process of tile making were described therein, there were
novel and inventive features mentioned in the process. Some of the novel features of the private
respondent's improvements are the following: critical depth, with corresponding easement and lip width to
such degree as leaves the tile as thin as 1/8 of an inch at its thinnest portion, Ideal composition of cement
and fine river sand, among other ingredients that makes possible the production of tough and durable wall
tiles, though thin and light; the engraving of deep designs in such a way as to make the tiles decorative,
artistic and suitable for wall ornamentation, and the fact that the tiles can be mass produced in
commercial quantities and can be conveniently stock-piled, handled and packed without any intolerable
14
incidence of breakages.
The petitioner also contends that the improvement of respondent is not patentable because it is not new,
useful and inventive. This contention is without merit.
The records disclose that de Leon's process is an improvement of the old process of tile making. The tiles
produced from de Leon's process are suitable for construction and ornamentation, which previously had
not been achieved by tiles made out of the old process of tile making. De Leon's invention has therefore
brought about a new and useful kind of tile. The old type of tiles were usually intended for floors although
there is nothing to prevent one from using them for walling purposes. These tiles are neither artistic nor
ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill. He
has introduced a new kind of tile for a new purpose. He has improved the old method of making tiles and
pre-cast articles which were not satisfactory because of an intolerable number of breakages, especially if
deep engravings are made on the tile. He has overcome the problem of producing decorative tiles with
15
deep engraving, but with sufficient durability. Durability inspite of the thinness and lightness of the tile,
16
is assured, provided that a certain critical depth is maintained in relation to the dimensions of the tile.
The petitioner also claims that changing the design from embossed to engraved tiles is neither new nor
inventive because the Machuca Tile Factory and the Pomona Tile Manufacturing Company have been
17
manufacturing decorative wall tiles that are embossed as well as engraved; that these tiles have also
18
depth, lip width, easement and field of designs; and that the private respondent had copied some
19
designs of Pomona.
The Machuca tiles are different from that of the private respondent. The designs are embossed and not
engraved as claimed by the petitioner. There may be depressions but these depressions are too shallow
to be considered engraved. Besides, the Machuca tiles are heavy and massive.
There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona tiles are made of
20
ceramics. The process involved in making cement tiles is different from ceramic tiles. Cement tiles are
made with the use of water, while in ceramics fire is used. As regards the allegation of the petitioner that
the private respondent copied some designs of Pomona, suffice it to say that what is in issue here is the
process involved in tile making and not the design.
In view of the foregoing, this Court finds that Patent No. 658 was legally issued, the process and/or
improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the petitioner Domiciano A. Aguas did
infringe de Leon's patent. There is no showing that this case falls under one of the exceptions when this
Court may overrule the findings of fact of the Court of Appeals. The only issue then to be resolved is the
amount of damages that should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages awarded by the lower court with the
21
modification that the respondent is only entitled to P3,000.00 moral damages.
22
The lower court awarded the following damages:
a) P10,020.99 by way of actual damages;
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;
d) P5,000.00 by way of attomey's fees and
e) Costs of suit
because:
An examination of the books of defendant Aguas made before a Commissioner reveals
that during the period that Aguas was manufacturing and selling tiles similar to plaintiff's,
he made a gross income of P3,340.33, which can be safely be considered the amount by
which he enriched himself when he infringed plaintiff's patent. Under Sec. 42 of the
Patent Law any patentee whose rights have been infringed is entitled to damages which,
according to the circumstances of the case may be in a sum above the amount found as
actual damages sustained provided the award does not exceed three times the amount
of such actual damages. Considering the wantonness of the infringement committed by
the defendants who knew all the time about the existence of plaintiff's patent, the Court
feels there is reason to grant plaintiff maximum damages in the sum of P10,020.99. And
in order to discourage patent infringements and to give more teeth to the provisions of the
patent law thus promoting a stronger public policy committed to afford greater incentives
 and protection to inventors, the Court hereby awards plaintiff exemplary damages in the
sum of P5,000.00 to be paid jointly and severally by defendants. Considering the status
of plaintiff as a reputable businessman, and owner of the likewise reputed House of Pre-
23
Cast, he is entitled to an award of moral damages in the sum of P50,000.00.
In reducing the amount of moral damages the Court of Appeals said:
As regards the question of moral damages it has been shown that as a result of the
unlawful acts of infringment committed by defendants, plaintiff was unstandably very sad;
he worried and became nervous and lost concentration on his work in connection with his
tile business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition, plaintiff's character and
reputation have been unnecessarily put in question because defendants, by their acts of
infringement have created a doubt or suspicion in the public mind concerning the truth
and honesty of plaintiff's advertisements and public announcements of his valid patent.
Necessarily, said acts of defendants have caused plaintiff considerable mental suffering,
considering especially, the fact that he staked everything on his pre-cast tile business (p.
36, t.s.n., Id.) The wantonness and evident bad faith characterizing defendants'
prejudicial acts against plaintiff justify the assessment of moral damages in plaintiff's
favor, though we do not believe the amount of P50,000.00 awarded by the lower court is
warranted by the circumstances. We feel that said amount should be reduced to
P3,000.00 by way of compensating appellee for his moral suffering. "Willful injury to
property may be a legal ground for awarding moral damages if the court should find that,
under the circumstances such damages are justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages and attorneys fees awarded by the trial court as
modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed from is hereby
affirmed, without pronouncement as to costs.
Graham v. John Deere Co., 383 U.S. 1 (1966)
Graham v. John Deere Co. of Kansas City
No. 11
Argued October 14, 1965
Decided February 21, 1966*
383 U.S. 1
CERTIORARI TO THE UNITED STATES COURT OF APPEALS
FOR THE EIGHTH CIRCUIT
Syllabus
In No. 11, petitioners sued for infringement of a patent, consisting of a combination of old mechanical
elements, for a device designed to absorb shock from plow shanks in rocky soil to prevent damage to the
plow. In 1955, the Fifth Circuit held the patent valid, ruling that a combination is patentable when it
produces an "old result in a cheaper and otherwise more advantageous way." Here, the Eighth Circuit
held that, since there was no new result in the combination, the patent was invalid. Petitioners in Nos. 37
and 43 filed actions for declaratory judgments declaring invalid respondent's patent relating to a plastic
finger sprayer with a "hold-down" cap used as a built-in dispenser for containers with liquids, principally
insecticides. By cross-action, respondent claimed infringement. The District Court and the Court of
Appeals sustained the patent. Held: The patents do not meet the test of the "nonobvious" nature of the
"subject matter sought to be patented" to a person having ordinary skill in the pertinent art, set forth in
103 of the Patent Act of 1952, and are therefore invalid. Pp. 383 U. S. 3-37.
Page 383 U. S. 2
(a) In carrying out the constitutional command of Art. I, 8, that a patent system "promote the Progress of
. . . useful Arts," Congress established the two statutory requirements of novelty and utility in the Patent
Act of 1793. Pp. 383 U. S. 3, 383 U. S. 6, 383 U. S. 12.
(b) This Court, in Hotchkis v. Greenoood, 11 How. 248 (1851), additionally conditioned the issuance of a
patent upon the evidence of more ingenuity and skill than that possessed by an ordinary mechanic
acquainted with the business. P. 383 U. S. 11.
(c) In 103 of the 1952 Patent Act, Congress added the statutory nonobvious subject matter requirement,
originally expounded in Hotchkis, which merely codified judicial precedents requiring a comparison of the
subject matter sought to be patented and the prior art, tying patentable inventions to advances in the art.
Although 103 places emphasis upon inquiries into obviousness, rather than into "invention," the general
level of innovation necessary to sustain patentability remains unchanged under the 1952 Act. Pp. 383 U.
S. 14-17.
(d) This section permit a more practical test of patentability. The determination of "nonobviousness" is
made after establishing the scope and content of prior art, the differences between the prior art and the
claims at issue, and the level of ordinary skill in the pertinent art. P. 383 U. S. 17.
(e) With respect to each patent involved here, the differences between the claims in issue and the
pertinent prior art would have been obvious to a person reasonably skilled in that art. Pp. 383 U. S. 25-26,
37.
333 F.2d 529, affirmed; 336 F.2d 110, reversed and remanded.
Page 383 U. S. 3
MR. JUSTICE CLARK delivered the opinion of the Court.
After a lapse of 15 years, the Court again focuses its attention on the patentability of inventions under the
standard of Art. I, 8, cl. 8, of the Constitution and under the conditions prescribed by the laws of the
United States. Since our last expression on patent validity, Great A. & P. Tea Co. v. Supermarket
Equipment Corp., 340 U. S. 147 (1950), the Congress has, for the first time, expressly added a third
statutory dimension to the two requirements of novelty and utility that had been the sole statutory test
since the Patent Act of 1793. This is the test of obviousness, i.e., whether
"the subject matter sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains. Patentability shall not be negatived by the manner in which the
invention was made."
103 of the Patent Act of 1952, 35 U.S.C. 103 (1964 ed.).
The questions, involved in each of the companion cases before us, are what effect the 1952 Act had upon
traditional statutory and judicial tests of patentability and what definitive tests are now required. We have
concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago
Page 383 U. S. 4
announced by this Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), and that, while the clear
language of 103 places emphasis on an inquiry into obviousness, the general level of innovation
necessary to sustain patentability remains the same.
I
The Cases
(a) No. 11, Graham v. John Deere Co., an infringement suit by petitioners, presents a conflict between
two Circuits over the validity of a single patent on a "Clamp for vibrating Shank Plows." The invention, a
combination of old mechanical elements, involves a device designed to absorb shock from plow shanks
as they plow through rocky soil, and thus to prevent damage to the plow. In 1955, the Fifth Circuit had
held the patent valid under its rule that, when a combination produces an "old result in a cheaper and
otherwise more advantageous way," it is patentable. Jeoffroy Mfg., Inc. v. Graham,219 F.2d 511, cert.
denied, 350 U.S. 826. In 1964, the Eighth Circuit held, in the case at bar, that there was no new result in
the patented combination, and that the patent was therefore not valid. 333 F.2d 529, reversing 216
F.Supp. 272. We granted certiorari, 379 U.S. 956. Although we have determined that neither Circuit
applied the correct test, we conclude that the patent is invalid under 103, and therefore we affirm the
judgment of the Eighth Circuit.
(b) No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook Chemical
Co., both from the Eighth Circuit, were separate declaratory judgment actions, but were filed
contemporaneously. Petitioner in Calmar is the manufacturer of a finger-operated sprayer with a "hold-
down" cap of the type commonly seen on grocers' shelves inserted in bottles of insecticides and other
liquids prior to shipment. Petitioner in Colgate-Palmolive is a purchaser of the sprayers, and
Page 383 U. S. 5
uses them in the distribution of its products. Each action sought a declaration of invalidity and
noninfringement of a patent on similar sprayers issued to Cook Chemical as assignee of Baxter I.
Scoggin, Jr., the inventor. By cross-action, Cook Chemical claimed infringement. The actions were
consolidated for trial, and the patent was sustained by the District Court. 220 F.Supp. 414. The Court of
Appeals affirmed, 336 F.2d 110, and we granted certiorari, 380 U.S. 949. We reverse.
Manifestly, the validity of each of these patents turns on the facts. The basic problems, however, are the
same in each case, and require initially a discussion of the constitutional and statutory provisions
covering the patentability of the inventions.
II
At the outset, it must be remembered that the federal patent power stems from a specific constitutional
provision which authorizes the Congress "To promote the Progress of . . . useful Arts, by securing for
limited Times to . . . Inventors the exclusive Right to their . . . Discoveries." Art. I, 8, cl. 8. [Footnote 1]
The clause is both a grant of power and a limitation. This qualified authority, unlike the power often
exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of
advances in the "useful arts." It was written against the backdrop of the practices -- eventually curtailed by
the Statute of Monopolies -- of the Crown in granting monopolies to court favorites in goods or businesses
which had long before been enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp.
30-35 (London, 1946). The Congress in the
Page 383 U. S. 6
exercise of the patent power may not overreach the restraints imposed by the stated constitutional
purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social
benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are
to remove existent knowledge from the public domain, or to restrict free access to materials already
available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent
requisites in a patent system which, by constitutional command, must "promote the Progress of . . . useful
Arts." This is the standard expressed in the Constitution, and it may not be ignored. And it is in this light
that patent validity "requires reference to a standard written into the Constitution." Great A. & P. Tea Co.
v. Supermarket Equipment Corp., supra, at 340 U. S. 154 (concurring opinion).
Within the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of
the Framers by selecting the policy which, in its judgment, best effectuates the constitutional aim. This is
but a corollary to the grant to Congress of any Article I power. Gibbons v. Ogden, 9 Wheat. 1. Within the
scope established by the Constitution, Congress may set out conditions and tests for
patentability. McClurg v. Kingsland, 1 How. 202, 42 U. S. 206. It is the duty of the Commissioner of
Patents and of the courts in the administration of the patent system to give effect to the constitutional
standard by appropriate application, in each case, of the statutory scheme of the Congress.
Congress quickly responded to the bidding of the Constitution by enacting the Patent Act of 1790 during
the second session of the First Congress. It created an agency in the Department of State headed by the
Secretary of State, the Secretary of the Department of War
Page 383 U. S. 7
and the Attorney General, any two of whom could issue a patent for a period not exceeding 14 years to
any petitioner that "hath . . . invented or discovered any useful art, manufacture, . . . or device, or any
improvement therein not before known or used" if the board found that "the invention or discovery [was]
sufficiently useful and important. . . ." 1 Stat. 110. This group, whose members administered the patent
system along with their other public duties, was known by its own designation as "Commissioners for the
Promotion of Useful Arts."
Thomas Jefferson, who as Secretary of State was a member of the group, was its moving spirit, and
might well be called the "first administrator of our patent system." See Federico, Operation of the Patent
Act of 1790, 18 J.Pat.Off.Soc. 237, 238 (1936). He was not only an administrator of the patent system
under the 1790 Act, but was also the author of the 1793 Patent Act. In addition, Jefferson was himself an
inventor of great note. His unpatented improvements on plows, to mention but one line of his inventions,
won acclaim and recognition on both sides of the Atlantic. Because of his active interest and influence in
the early development of the patent system, Jefferson's views on the general nature of the limited patent
monopoly under the Constitution, as well as his conclusions as to conditions for patentability under the
statutory scheme, are worthy of note.
Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a monopoly on tea that
sparked the Revolution, and Jefferson certainly did not favor an equivalent form of monopoly under the
new government. His abhorrence of monopoly extended initially to patents as well. From France, he
wrote to Madison (July, 1788) urging a Bill of Rights provision restricting monopoly, and as against the
argument that
Page 383 U. S. 8
limited monopoly might serve to incite "ingenuity," he argued forcefully that "the benefit even of limited
monopolies is too doubtful to be opposed to that of their general suppression," V Writings of Thomas
Jefferson at 47 (Ford ed., 1895).
His views ripened, however, and, in another letter to Madison (Aug., 1789) after the drafting of the Bill of
Rights, Jefferson stated that he would have been pleased by an express provision in this form:
"Art. 9. Monopolies may be allowed to persons for their own productions in literature, & their own
inventions in the arts, for a term not exceeding ___ years, but for no longer term & no other purpose."
Id. at 113. And he later wrote:
"Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time. . . .
Nobody wishes more than I do that ingenuity should receive a liberal encouragement."
Letter to Oliver Evans (May, 1807), V Writings of Thomas Jefferson at 75-76 (Washington ed.).
Jefferson's philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac
McPherson (Aug., 1813), a portion of which we set out in the margin. [Footnote 2] He rejected a natural
rights theory in
Page 383 U. S. 9
intellectual property rights and clearly recognized the social and economic rationale of the patent system.
The patent monopoly was not designed to secure to the inventor his natural right in his discoveries.
Rather, it was a reward, an inducement, to bring forth new knowledge. The grant of an exclusive right to
an invention was the creation of society -- at odds with the inherent free nature of disclosed ideas -- and
was not to be freely given. Only inventions and discoveries which furthered human knowledge, and were
new and useful, justified the special inducement of a limited private monopoly. Jefferson did not believe in
granting patents for small details, obvious improvements, or frivolous devices. His writings evidence his
insistence upon a high level of patentability.
As a member of the patent board for several years, Jefferson saw clearly the difficulty in "drawing a line
between the things which are worth to the public the embarrassment of an exclusive patent, and those
which are not." The board on which he served sought to draw such a line and formulated several rules
which are preserved in
Page 383 U. S. 10
Jefferson's correspondence. [Footnote 3] Despite the board's efforts, Jefferson saw "with what slow
progress a system of general rules could be matured." Because of the "abundance" of cases and the fact
that the investigations occupied
"more time of the members of the board than they could spare from higher duties, the whole was turned
over to the judiciary, to be matured into a system under which every one might know when his actions
were safe and lawful."
Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with Jefferson and the board that
the courts should develop additional conditions for patentability. Although the Patent Act was amended,
revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of
requirements other than the bare novelty and utility tests reformulated in Jefferson's draft of the 1793
Patent Act.
III
The difficulty of formulating conditions for patentability was heightened by the generality of the
constitutional grant and the statutes implementing it, together with the underlying policy of the patent
system that "the things which are worth to the public the embarrassment
Page 383 U. S. 11
of an exclusive patent," as Jefferson put it, must outweigh the restrictive effect of the limited patent
monopoly. The inherent problem was to develop some means of weeding out those inventions which
would not be disclosed or devised but for the inducement of a patent.
This Court formulated a general condition of patentability in 1851 in Hotchkiss v. Greenwood, 11 How.
248. The patent involved a mere substitution of materials -- porcelain or clay for wood or metal in
doorknobs -- and the Court condemned it, holding: [Footnote 4]
"[U]nless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic
acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute
essential elements of every invention. In other words, the improvement is the work of the skilful mechanic,
not that of the inventor."
At p. 52 U. S. 267.
Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and skill than
that possessed by an ordinary mechanic acquainted with the business, merely distinguished between
new and useful innovations that were capable of sustaining a patent and those that were not.
The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson and left to the
courts by Congress. The language in the case, and in those which followed, gave birth to "invention" as a
word of legal art signifying patentable inventions. Yet, as this Court has observed,
"[t]he truth is, the word ['invention'] cannot be defined in such manner as to afford any substantial aid in
determining whether a particular device involves an exercise of the inventive faculty
Page 383 U. S. 12
or not."
McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 427 (1891); Great A. & P. Tea Co. v. Supermarket
Equipment Corp., supra, at 340 U. S. 151. Its use as a label brought about a large variety of opinions as
to its meaning both in the Patent Office, in the courts, and at the bar. The Hotchkiss formulation, however,
lies not in any label, but in its functional approach to questions of patentability. In practice, Hotchkiss has
required a comparison between the subject matter of the patent, or patent application, and the
background skill of the calling. It has been from this comparison that patentability was in each case
determined.
IV
The 1952 Patent Act
The Act sets out the conditions of patentability in three sections. An analysis of the structure of these
three sections indicates that patentability is dependent upon three explicit conditions: novelty and utility,
as articulated and defined in 101 and 102, and nonobviousness, the new statutory formulation, as set
out in 103. The first two sections, which trace closely the 1874 codification, express the "new and
useful" tests which have always existed in the statutory scheme and, for our purposes here, need no
clarification. [Footnote 5] The pivotal
Page 383 U. S. 13
section around which the present controversy centers is 103. It provides:
" 103. Conditions for patentability; non-obvious subject matter"
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall
not be negatived by the manner in which the invention was made. "
Page 383 U. S. 14
The section is cast in relatively unambiguous terms. Patentability is to depend, in addition to novelty and
utility, upon the "non-obvious" nature of the "subject matter sought to be patented" to a person having
ordinary skill in the pertinent art.
The first sentence of this section is strongly reminiscent of the language in Hotchkiss. Both formulations
place emphasis on the pertinent are existing at the time the invention was made, and both are implicitly
tied to advances in that art. The major distinction is that Congress has emphasized "nonobviousness" as
the operative test of the section, rather than the less definite "invention" language of Hotchkiss that
Congress thought had led to "a large variety" of expressions in decisions and writings. In the title itself,
the Congress used the phrase "Conditions for patentability; non-obvious subject matter" (italics added),
thus focusing upon "nonobviousness," rather than "invention." [Footnote 6] The Senate and House
Reports, S.Rep. No. 1979, 82d Cong., 2d Sess. (1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess. (1952),
reflect this emphasis in these terms:
"Section 103, for the first time in our statute, provides a condition which exists in the law and has existed
for more than 100 years, but only by reason of decisions of the courts. An invention which has been
made, and which is new in the sense that the same thing has not been made before, may still not be
patentable if the difference between the new thing and what was known before is not considered
sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of
Page 383 U. S. 15
the courts and in writings. Section 103 states this requirement in the title. It refers to the difference
between the subject matter sought to be patented and the prior art, meaning what was known before as
described in section 102. If this difference is such that the subject matter as a whole would have been
obvious at the time to a person skilled in the art, then the subject matter cannot be patented."
"That provision paraphrases language which has often been used in decisions of the courts, and the
section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect
and minimize great departures which have appeared in some cases."
H.R.Rep., supra, at 7; S.Rep., supra, at 6.
It is undisputed that this section was, for the first time, a statutory expression of an additional requirement
for patentability, originally expressed in Hotchkiss. It also seems apparent that Congress intended by the
last sentence of 103 to abolish the test it believed this Court announced in the controversial phrase
"flash of creative genius," used in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S.
84 (1941). [Footnote 7]
Page 383 U. S. 16
It is contended, however, by some of the parties and by several of the amici that the first sentence of
103 was intended to sweep away judicial precedents and to lower the level of patentability. Others
contend that the Congress intended to codify the essential purpose reflected in existing judicial
precedents -- the rejection of insignificant variations and innovations of a commonplace sort -- and also to
focus inquiries under 103 upon nonobviousness, rather than upon "invention," as a means of achieving
more stability and predictability in determining patentability and validity.
The Reviser's Note to this section, [Footnote 8] with apparent reference to Hotchkiss, recognizes that
judicial requirements as to "lack of patentable novelty [have] been followed since at least as early as
1850." The note indicates that the section was inserted because it "may have some stabilizing effect, and
also to serve as a basis for the addition at a later time of some criteria which may be worked out." To this
same effect are the reports of both Houses, supra, which state that the first sentence
Page 383 U. S. 17
of the section
"paraphrases language which has often been used in decisions of the courts, and the section is added to
the statute for uniformity and definiteness."
We believe that this legislative history, as well as other sources, [Footnote 9] show that the revision was
not intended by Congress to change the general level of patentable invention. We conclude that the
section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition,
with congressional directions that inquiries into the obviousness of the subject matter sought to be
patented are a prerequisite to patentability.
V
Approached in this light, the 103 additional condition, when followed realistically, will permit a more
practical test of patentability. The emphasis on non-obviousness is one of inquiry, not quality, and, as
such, comports with the constitutional strictures.
While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket
Equipment Corp., supra, at340 U. S. 155, the 103 condition, which is but one of three conditions, each
of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and
content of the prior art are to be determined; differences between the prior art and the claims at issue are
to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as
commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to
the circumstances
Page 383 U. S. 18
surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy. See Note, Subtests of "Nonobviousness": A
Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev. 1169 (1964).
This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is
obvious is not a question upon which there is likely to be uniformity of thought in every given factual
context. The difficulties, however, are comparable to those encountered daily by the courts in such
frames of reference as negligence and scienter, and should be amenable to a case-by-case
development. We believe that strict observance of the requirements laid down here will result in that
uniformity and definiteness which Congress called for in the 1952 Act.
While we have focused attention on the appropriate standard to be applied by the courts, it must be
remembered that the primary responsibility for sifting out unpatentable material lies in the Patent Office.
To await litigation is, for all practical purposes, to debilitate the patent system. We have observed a
notorious difference between the standards applied by the Patent Office and by the courts. While many
reasons can be adduced to explain the discrepancy, one may well be the free rein often exercised by
Examiners in their use of the concept of "invention." In this connection, we note that the Patent Office is
confronted with a most difficult task. Almost 100,000 applications for patents are filed each year. Of these,
about 50,000 are granted, and the backlog now runs well over 200,000. 1965 Annual Report of the
Commission of Patents 13-14. This is itself a compelling reason for the Commissioner to strictly adhere to
the 1952 Act as interpreted here. This would, we believe, not only expedite disposition, but
Page 383 U. S. 19
bring about a closer concurrence between administrative and judicial precedent. [Footnote 10]
Although we conclude here that the inquiry which the Patent Office and the courts must make as to
patentability must be beamed with greater intensity on the requirements of 103, it bears repeating that
we find no change in the general strictness with which the overall test is to be applied. We have been
urged to find in 103 a relaxed standard, supposedly a congressional reaction to the "increased
standard" applied by this Court in its decisions over the last 20 or 30 years. The standard has remained
invariable in this Court. Technology, however, has advanced, and with remarkable rapidity in the last 50
years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard
of a half century ago. It is but an evenhanded application to require that those persons granted the benefit
of a patent monopoly be charged with an awareness of these changed conditions. The same is true of the
less technical, but still useful, arts. He who seeks to build a better mousetrap today has a long path to
tread before reaching the Patent Office.
VI
We now turn to the application of the conditions found necessary for patentability to the cases involved
here:
A. The Patent in Issue in No. 11, Graham v. John Deere Co.
This patent, No. 2,627,798 (hereinafter called the '798 patent) relates to a spring clamp which permits
plow shanks to be pushed upward when they hit obstructions
Page 383 U. S. 20
in the soil, and then springs the shanks back into normal position when the obstruction is passed over.
The device, which we show diagrammatically in the accompanying sketches (Appendix, Fig. 1), is fixed to
the plow frame as a unit. The mechanism around which the controversy center is basically a hinge. The
top half of it, known as the upper plate (marked 1 in the sketches), is a heavy metal piece clamped to the
plow frame (2), and is stationary relative to the plow frame. The lower half of the hinge, known as the
hinge plate (3), is connected to the rear of the upper plate by a hinge pin (4) and rotates downward with
respect to it. The shank (5), which is bolted to the forward end of the hinge plate (at 6), runs beneath the
plate and parallel to it for about nine inches, passes through a stirrup (7), and then continues backward
for several feet curving down toward the ground. The chisel (8), which does the actual plowing, is
attached to the rear end of the shank. As the plow frame is pulled forward, the chisel rips through the soil,
thereby plowing it. In the normal position, the hinge plate and the shank are kept tight against the upper
plate by a spring (9), which is atop the upper plate. A rod (10) runs through the center of the spring,
extending down through holes in both plates and the shank. Its upper end is bolted to the top of the
spring, while its lower end is hooked against the underside of the shank.
When the chisel hits a rock or other obstruction in the soil, the obstruction forces the chisel and the rear
portion of the shank to move upward. The shank is pivoted (at 11) against the rear of the hinge plate, and
pries open the hinge against the closing tendency of the spring. (See sketch labeled "Open Position,"
Appendix, Fig. 1.) This closing tendency is caused by the fact that, as the hinge is opened, the connecting
rod is pulled downward and the spring is compressed. When the obstruction
Page 383 U. S. 21
is passed over, the upward force on the chisel disappears, and the spring pulls the shank and hinge plate
back into their original position. The lower, rear portion of the hinge plate is constructed in the form of a
stirrup (7) which brackets the shank, passing around and beneath it. The shank fits loosely into the stirrup
(permitting a slight up and down play). The stirrup is designed to prevent the shank from recoiling away
from the hinge plate, and thus prevents excessive strain on the shank near its bolted connection. The
stirrup also girds the shank, preventing it from fishtailing from side to side.
In practical use, a number of spring-hinge-shank combinations are clamped to a plow frame, forming a
set of ground-working chisels capable of withstanding the shock of rocks and other obstructions in the soil
without breaking the shanks.
Background of the Patent
Chisel plows, as they are called, were developed for plowing in areas where the ground is relatively free
from rocks or stones. Originally, the shanks were rigidly attached to the plow frames. When such plows
were used in the rocky, glacial soils of some of the Northern States, they were found to have serious
defects. As the chisels hit buried rocks, a vibratory motion was set up and tremendous forces were
transmitted to the shank near its connection to the frame. The shanks would break. Graham, one of the
petitioners, sought to meet that problem, and, in 1950, obtained a patent, U.S. No. 2,493,811 (hereinafter
'811), on a spring clamp which solved some of the difficulties. Graham and his companies manufactured
and sold the '811 clamps. In 1950, Graham modified the '811 structure and filed for a patent. That patent,
the one in issue, was granted in 1953. This suit against competing plow manufacturers resulted from
charges by petitioners that several of respondents' devices infringed the '798 patent.
Page 383 U. S. 22
The Prior Art
Five prior patents indicating the state of the art were cited by the Patent Office in the prosecution of the
'798 application. Four of these patents, 10 other United States patents, and two prior-use spring-clamp
arrangements not of record in the '798 file wrapper were relied upon by respondents as revealing the prior
art. The District Court and the Court of Appeals found that the prior art "as a whole in one form or another
contains all of the mechanical elements of the 798 Patent." One of the prior-use clamp devices not before
the Patent Examiner -- Glencoe -- was found to have "all of the elements."
We confine our discussion to the prior patent of Graham, '811, and to the Glencoe clamp device, both
among the references asserted by respondents. The Graham '811 and '798 patent devices are similar in
all elements, save two: (1) the stirrup and the bolted connection of the shank to the hinge plate do not
appear in '811; and (2) the position of the shank is reversed, being placed in patent '811 above the hinge
plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is
hooked against the bottom of the hinge plate passing through a slot in the shank. Other differences are of
no consequence to our examination. In practice, the '811 patent arrangement permitted the shank to
wobble or fishtail, because it was not rigidly fixed to the hinge plate; moreover, as the hinge plate was
below the shank, the latter caused wear on the upper plate, a member difficult to repair or replace.
Graham's '798 patent application contained 12 claims. All were rejected as not distinguished from the
Graham '811 patent. The inverted position of the shank was specifically rejected, as was the bolting of the
shank to the hinge plate. The Patent Office examiner found these to be "matters of design well within the
expected skill of
Page 383 U. S. 23
the art and devoid of invention." Graham withdrew the original claims and substituted the two new ones
which are substantially those in issue here. His contention was that wear was reduced in patent '798
between the shank and the heel or rear of the upper plate. [Footnote 11] He also emphasized several
new features, the relevant one here being that the bolt used to connect the hinge plate and shank
maintained the upper face of the shank in continuing and constant contact with the underface of the hinge
plate.
Graham did not urge before the Patent Office the greater "flexing" qualities of the '798 patent
arrangement which he so heavily relied on in the courts. The sole element in patent '798 which petitioners
argue before us is the interchanging of the shank and hinge plate and the consequences flowing from this
arrangement. The contention is that this arrangement -- which petitioners claim is not disclosed in the
prior art -- permits the shank to flex under stress for its entire length. As we have sketched (see sketch,
"Graham '798 Patent" in Appendix, Fig. 2), when the chisel hits an obstruction, the resultant force (A)
pushes the rear of the shank upward and the shank pivots against the rear of the hinge plate at (C). The
natural tendency is for that portion of the shank between the pivot point and the bolted connection
(i.e., between C and D) to bow downward and away from the hinge plate. The maximum distance
Page 383 U. S. 24
(B) that the shank moves away from the plate is slight -- for emphasis, greatly exaggerated in the
sketches. This is so because of the strength of the shank and the short -- nine inches or so -- length of
that portion of the shank between (C) and (D). On the contrary, in patent '811 (see sketch, "Graham '811
Patent" in Appendix, Fig. 2), the pivot point is the upper plate at point (c); and while the tendency for the
shank to bow between points (c) and (d) is the same as in '798, the shank is restricted because of the
underlying hinge plate and cannot flex as freely. In practical effect, the shank flexes only between points
(a) and (c), and not along the entire length of the shank, as in '798. Petitioners say that this difference in
flex, though small, effectively absorbs the tremendous forces of the shock of obstructions, whereas prior
art arrangements failed.
The Obviousness of the Differences
We cannot agree with petitioners. We assume that the prior art does not disclose such an arrangement
as petitioners claim in patent '798. Still we do not believe that the argument on which petitioners'
contention is bottomed supports the validity of the patent. The tendency of the shank to flex is the same in
all cases. If free-flexing, as petitioners now argue, is the crucial difference above the prior art, then it
appears evident that the desired result would be obtainable by not boxing the shank within the confines of
the hinge. [Footnote 12] The only other effective place available in the arrangement was to attach it below
the hinge plate and run it through a
Page 383 U. S. 25
stirrup or bracket that would not disturb its flexing qualities. Certainly a person having ordinary skill in the
prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the
entire length of the shank, would immediately see that the thing to do was what Graham did, i.e., invert
the shank and the hinge plate.
Petitioners' argument basing validity on the free-flex theory, raised for the first time on appeal, is
reminiscent of Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U. S. 545 (1938), where
the Court called such an effort
"an afterthought. No such function . . . is hinted at in the specifications of the patent. If this were so vital
an element in the functioning of the apparatus, it is strange that all mention of it was omitted."
At p. 303 U. S. 550. No "flexing" argument was raised in the Patent Office. Indeed, the trial judge
specifically found that "flexing is not a claim of the patent in suit . . . ," and would not permit interrogation
as to flexing in the accused devices. Moreover, the clear testimony of petitioners' experts shows that the
flexing advantages flowing from the '798 arrangement are not, in fact, a significant feature in the patent.
[Footnote 13]
We find no nonobvious facets in the '798 arrangement. The wear and repair claims were sufficient to
overcome
Page 383 U. S. 26
the patent examiner's original conclusions as to the validity of the patent. However, some of the prior art,
notably Glencoe, was not before him. There the hinge plate is below the shank, but, as the courts below
found, all of the elements in the '798 patent are present in the Glencoe structure. Furthermore, even
though the position of the shank and hinge plate appears reversed in Glencoe, the mechanical operation
is identical. The shank there pivots about the underside of the stirrup, which in Glencoe is above the
shank. In other words, the stirrup in Glencoe serves exactly the same function as the heel of the hinge
plate in '798. The mere shifting of the wear point to the heel of the '798 hinge plate from the stirrup of
Glencoe -- itself a part of the hinge plate -- presents no operative mechanical distinctions, much less
nonobvious differences.
B. The Patent in Issue in No. 37, Calmar, Inc. v. Cook Chemical Co., and in No. 43, Colgate-Palmolive
Co. v. Cook Chemical Co.
The single patent [Footnote 14] involved in these cases relates to a plastic finger sprayer with a "hold-
down" lid used as a built-in dispenser for containers or bottles packaging liquid products, principally
household insecticides. Only the first two of the four claims in the patent are involved here, and we
therefore limit our discussion to them. We do not set out those claims here, since they are printed in 220
F.Supp. at 417-418.
In essence, the device here combines a finger-operated pump sprayer, mounted in a container or bottle
by means of a container cap, with a plastic overcap which screws over the top of and depresses the
sprayer (see Appendix,
Page 383 U. S. 27
Fig. 3). The pump sprayer passes through the container cap and extends down into the liquid in the
container; the overcap fits over the pump sprayer and screws down on the outside of a collar mounting or
retainer which is molded around the body of the sprayer. When the overcap is screwed down on this
collar mounting, a seal is formed by the engagement of a circular ridge or rib located above the threads
on the collar mounting with a mating shoulder located inside the overcap above its threads. [Footnote 15]
The overcap, as it is screwed down, depresses the pump plunger rendering the pump inoperable, and,
when the seal is effected, any liquid which might seep into the overcap through or around the pump is
prevented from leaking out of the overcap. The overcap serves also to protect the sprayer head and
prevent damage to it during shipment or merchandising. When the overcap is in place, it does not reach
the cap of the container or bottle, and in no way engages it, since a slight space is left between those two
pieces.
The device, called a shipper-sprayer in the industry, is sold as an integrated unit with the overcap in
place, enabling the insecticide manufacturer to install it on the container or bottle of liquid in a single
operation in an automated bottling process. The ultimate consumer simply unscrews and discards the
overcap, the pump plunger springs up, and the sprayer is ready for use.
The Background of the Patent
For many years manufacturers, engaged in the insecticide business had faced a serious problem in
developing sprayers that could be integrated with the containers or bottles in which the insecticides were
marketed. Originally, insecticides were applied through the use of tin
Page 383 U. S. 28
sprayers, not supplied by the manufacturer. In 1947, Cook Chemical, an insecticide manufacturer, began
to furnish its customers with plastic pump dispensers purchased from Calmar. The dispenser was an
unpatented finger-operated device mounted in a perforated cardboard holder and hung over the neck of
the bottle or container. It was necessary for the ultimate consumer to remove the cap of the container and
insert and attach the sprayer to the latter for use.
Hanging the sprayer on the side of the container or bottle was both expensive and troublesome.
Packaging for shipment had to be a hand operation, and breakage and pilferage, as well as the loss of
the sprayer during shipment and retail display, often occurred. Cook Chemical urged Calmar to develop
an integrated sprayer that could be mounted directly in a container or bottle during the automated filling
process and that would not leak during shipment or retail handling. Calmar did develop some such
devices, but, for various reasons, they were not completely successful. The situation was aggravated in
1954 by the entry of Colgate-Palmolive into the insecticide trade with its product marketed in aerosol
spray cans. These containers, which used compressed gas as a propellent to dispense the liquid, did not
require pump sprayers.
During the same year, Calmar was acquired by the Drackett Company. Cook Chemical became
apprehensive of its source of supply for pump sprayers, and decided to manufacture its own through a
subsidiary, Bakan Plastics, Inc. Initially, it copied its design from the unpatented Calmar sprayer, but an
officer of Cook Chemical, Scoggin, was assigned to develop a more efficient device. By 1956, Scoggin
had perfected the shipper-sprayer in suit, and a patent was granted in 1959 to Cook Chemical as his
assignee. In the interim, Cook Chemical began to use Scoggin's device, and also marketed
Page 383 U. S. 29
it to the trade. The device was well received, and soon became widely used.
In the meanwhile, Calmar employed two engineers, Corsette and Cooprider, to perfect a shipper-sprayer,
and, by 1958, it began to market its SS-40, a device very much similar to Scoggin's. When the Scoggin
patent issued, Cook Chemical charged Calmar's SS-40 with infringement, and this suit followed.
The Opinions of the District Court and the Court of Appeals
At the outset, it is well to point up that the parties have always disagreed as to the scope and definition of
the invention claimed in the patent in suit. Cook Chemical contends that the invention encompasses a
unique combination of admittedly old elements, and that patentability is found in the result produced. Its
expert testified that the invention was
"the first commercially successful, inexpensive integrated shipping closure pump unit which permitted
automated assembly with a container of household insecticide or similar liquids to produce a practical,
ready-to-use package which could be shipped without external leakage and which was so organized that
the pump unit, with its hold-down cap, could be itself assembled and sealed and then later assembled
and sealed on the container without breaking the first seal."
Cook Chemical stresses the long-felt need in the industry for such a device; the inability of others to
produce it; and its commercial success -- all of which, contends Cook, evidences the nonobvious nature
of the device at the time it was developed. On the other hand, Calmar says that the differences between
Scoggin's shipper-sprayer and the prior art relate only to the design of the overcap, and that the
differences are so inconsequential that the device as a whole would have been obvious at the time of its
invention to a person having ordinary skill in the art.
Page 383 U. S. 30
Both courts accepted Cook Chemical's contentions. While the exact basis of the District Court's holding is
uncertain, the court did find the subject matter of the patent new, useful and nonobvious. It concluded that
Scoggin
"had produced a sealed and protected sprayer unit which the manufacturer need only screw onto the top
of its container in much the same fashion as a simple metal cap."
220 F.Supp. at 418. Its decision seems to be bottomed on the finding that the Scoggin sprayer solved the
long-standing problem that had confronted the industry. [Footnote 16] The Court of Appeals also found
validity in the "novel "marriage" of the sprayer with the insecticide container" which took years in
discovery, and in "the immediate commercial success" which it enjoyed. While finding that the individual
elements of the invention were "not novel per se," the court found
"nothing in the prior art suggesting Scoggin's unique combination of these old features . . . as would solve
the . . . problems which for years beset the insecticide industry."
It concluded that
"the . . . [device] meets the exacting standard required for a combination of old elements to rise to the
level of patentable invention by fulfilling the long-felt need with an economical, efficient, utilitarian
apparatus which achieved novel results and immediate commercial success."
336 F.2d at 114.
The Prior Art
Only two of the five prior art patents cited by the Patent Office Examiner in the prosecution of Scoggin's
application are necessary to our discussion, i.e., Lohse
Page 383 U. S. 31
U.S. Patent No. 2,119,884 (1938) and Mellon U.S. Patent No. 2,586,687 (1952). Others are cited by
Calmar that were not before the Examiner, but of these our purposes require discussion of only the
Livingstone U.S. Patent No. 2,715,480 (1953). Simplified drawings of each of these patents are
reproduced in the Appendix, Figs. 4-6, for comparison and description.
The Lohse patent (Fig. 4) is a shipper-sprayer designed to perform the same function as Scoggin's
device. The differences, recognized by the District Court, are found in the overcap seal, which in Lohse is
formed by the skirt of the overcap engaging a washer or gasket which rests upon the upper surface of the
container cap. The court emphasized that in Lohse "[t]here are no seals above the threads and below the
sprayer head." 220 F.Supp. at 419.
The Mellon patent (Fig. 5), however, discloses the idea of effecting a seal above the threads of the
overcap. Mellon's device, likewise a shipper-sprayer, differs from Scoggin's in that its overcap screws
directly on the container, and a gasket, rather than a rib, is used to effect the seal.
Finally, Livingstone (Fig. 6) shows a seal above the threads accomplished without the use of a gasket or
washer. [Footnote 17] Although Livingstone's arrangement was designed to cover and protect pouring
spouts, his sealing feature is strikingly similar to Scoggin's. Livingstone uses a tongue and groove
technique in which the tongue, located on the upper surface of the collar, fits into a groove on the inside
of the overcap. Scoggin employed the rib and shoulder seal in the identical position and with less
efficiency because the Livingstone technique
Page 383 U. S. 32
is inherently a more stable structure, forming an interlock that withstands distortion of the overcap when
subjected to rough handling. Indeed, Cook Chemical has now incorporated the Livingstone closure into its
own shipper-sprayers, as had Calmar in its SS-40.
The Invalidity of the Patent
Let us first return to the fundamental disagreement between the parties. Cook Chemical, as we noted at
the outset, urges that the invention must be viewed as the overall combination, or -- putting it in the
language of the statute -- that we must consider the subject matter sought to be patented taken as a
whole. With this position, taken in the abstract, there is, of course, no quibble. But the history of the
prosecution of the Scoggin application in the Patent Office reveals a substantial divergence in
respondent's present position.
As originally submitted, the Scoggin application contained 15 claims which, in very broad terms, claimed
the entire combination of spray pump and overcap. No mention of, or claim for, the sealing features was
made. All 15 claims were rejected by the Examiner because (1) the applicant was vague and indefinite as
to what the invention was, and (2) the claims were met by Lohse. Scoggin canceled these claims and
submitted new ones. Upon a further series of rejections and new submissions, the Patent Office
Examiner, after an office interview, at last relented. It is crystal clear that, after the first rejection, Scoggin
relied entirely upon the sealing arrangement as the exclusive patentable difference in his combination. It
is likewise clear that it was on that feature that the Examiner allowed the claims. In fact, in a letter
accompanying the final submission of claims, Scoggin, through his attorney, stated that
"agreement was reached between the Honorable Examiner and applicant's attorney relative
to limitations which must be in the claims in
Page 383 U. S. 33
order to define novelty over the previously applied disclosure of Lohse when considered in view of the
newly cited patents of Mellon and Darley, Jr."
(Italics added.)
Moreover, those limitations were specifically spelled out as (1) the use of a rib seal and (2) an overcap
whose lower edge did not contact the container cap. Mellon was distinguished, as was the Darley
patent, infra, n 18, on the basis that, although it disclosed a hold-down cap with a seal located above the
threads, it did not disclose a rib seal disposed in such position as to cause the lower peripheral edge of
the overcap "to be maintained out of contacting relationship with [the container] cap . . . when . . . [the
overcap] was screwed [on] tightly. . . ." Scoggin maintained that the "obvious modification" of Lohse in
view of Mellon would be merely to place the Lohse gasket above the threads with the lower edge of the
overcap remaining in tight contact with the container cap or neck of the container itself. In other words,
the Scoggin invention was limited to the use of a rib -- rather than a washer or gasket -- and the existence
of a slight space between the overcap and the container cap.
It is, of course, well settled that an invention is construed not only in the light of the claims, but also with
reference to the file wrapper or prosecution history in the Patent Office. Hogg v. Emerson, 11 How. 587
(1850); Crawford v. Heysinger, 123 U. S. 589 (1887). Claims as allowed must be read and interpreted
with reference to rejected ones, and to the state of the prior art; and claims that have been narrowed in
order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that
which was previously by limitation eliminated from the patent. Powers-Kennedy Contracting Corp. v.
Concrete Mixing & Conveying Co., 282 U. S. 175, 282 U. S. 185-186 (1930); Schriber-Schroth Co. v.
Cleveland Trust Co., 311 U. S. 211, 311 U. S. 220-221 (1940).
Page 383 U. S. 34
Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The
claims were carefully drafted to reflect these limitations, and Cook Chemical is not now free to assert a
broader view of Scoggin's invention. The subject matter as a whole reduces, then, to the distinguishing
features clearly incorporated into the claims. We now turn to those features.
As to the space between the skirt of the overcap and the container cap, the District Court found:
"Certainly, without a space so described, there could be no inner seal within the cap, but such a space is
not new or novel, but it is necessary to the formation of the seal within the hold-down cap."
"To me, this language is descriptive of an element of the patent, but not a part of the invention. It is too
simple, really, to require much discussion. In this device, the hold-down cap was intended to perform two
functions -- to hold down the sprayer head and to form a solid tight seal between the shoulder and the
collar below. In assembling the element, it is necessary to provide this space in order to form the seal."
220 F.Supp. at 420. (Italics added.)
The court correctly viewed the significance of that feature. We are at a loss to explain the Examiner's
allowance on the basis of such a distinction. Scoggin was able to convince the Examiner that Mellon's
cap contacted the bottle neck, while his did not. Although the drawings included in the Mellon application
show that the cap might touch the neck of the bottle when fully screwed down, there is nothing --
absolutely nothing -- which indicates that the cap was designed at any time to engage the bottle neck. It is
palpably evident that Mellon embodies a seal formed by a gasket compressed
Page 383 U. S. 35
between the cap and the bottle neck. It follows that the cap in Mellon will not seal if it does not bear down
on the gasket, and this would be impractical, if not impossible, under the construction urged by Scoggin
before the Examiner. Moreover, the space so strongly asserted by Cook Chemical appears quite plainly
on the Livingstone device, a reference not cited by the Examiner.
The substitution of a rib built into a collar likewise presents no patentable difference above the prior art. It
was fully disclosed and dedicated to the public in the Livingstone patent. Cook Chemical argues,
however, that Livingstone is not in the pertinent prior art, because it relates to liquid containers having
pouring spouts, rather than pump sprayers. Apart from the fact that respondent made no such objection
to similar references cited by the Examiner, [Footnote 18] so restricted a view of the applicable prior art is
not justified. The problems confronting Scoggin and the insecticide industry were not insecticide
problems, they were mechanical closure problems. Closure devices in such a closely related art as
pouring spouts for liquid containers are, at the very least, pertinent references. See II Walker on Patents
260 (Deller ed. 1937).
Cook Chemical insists, however, that the development of a workable shipper-sprayer eluded Calmar, who
had long and unsuccessfully sought to solve the problem. And, further, that the long-felt need in the
industry for a device such as Scoggin's, together with its wide commercial success, supports its
patentability. These legal inferences
Page 383 U. S. 36
or subtests do focus attention on economic and motivational, rather than technical issues, and are
therefore more susceptible of judicial treatment than are the highly technical facts often present in patent
litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F.2d 501, 504 (2 Cir. 1960). See
also Note, Subtests of "Nonobviousness": A Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev.
1169 (1964). Such inquiries may lend a helping hand to the judiciary which, as Mr. Justice Frankfurter
observed, is most ill-fitted to discharge the technological duties cast upon it by patent legislation.Marconi
Wireless Telegraph Co. of America v. United States, 320 U. S. 1, 320 U. S. 60 (1943). They may also
serve to "guard against slipping into use of hindsight," Monroe Auto Equipment Co. v. Heckethorn Mfg. &
Supply Co., 332 F.2d 406, 412 (1964), and to resist the temptation to read into the prior art the teachings
of the invention in issue.
However, these factors do not, in the circumstances of this case, tip the scales of patentability. The
Scoggin invention, as limited by the Patent Office and accepted by Scoggin, rests upon exceedingly small
and quite nontechnical mechanical differences in a device which was old in the art. At the latest, those
differences were rendered apparent in 1953 by the appearance of the Livingstone patent, and
unsuccessful attempts to reach a solution to the problems confronting Scoggin made before that time
became wholly irrelevant. It is also irrelevant that no one apparently chose to avail himself of knowledge
stored in the Patent Office and readily available by the simple expedient of conducting a patent search --
a prudent and nowadays common preliminary to well organized research. Mast, Foos & Co. v. Stover
Mfg. Co., 177 U. S. 485 (1900). To us, the limited claims of the Scoggin patent are clearly evident from
the prior art as it stood at the time of the invention.
Page 383 U. S. 37
We conclude that the claims in issue in the Scoggin patent must fall as not meeting the test of 103,
since the differences between them and the pertinent prior art would have been obvious to a person
reasonably skilled in that art.
The judgment of the Court of Appeals in No. 11 is affirmed. The judgment of the Court of Appeals in Nos.
37 and 43 is reversed, and the cases remanded to the District Court for disposition not inconsistent with
this opinion.
It is so ordered.