JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs.

THE DIRECTOR OF PATENTS, respondent.

Petitioners Claims:
BOOTHE and MORTON, chemists, citizens and residents of the United States, claim to
be the inventors of a new antibiotic designated as "tetracycline", a new derivative of
chlortetracycline (popularly known as "aureomycin). They filed an application for Letters Patent
in the Philippines with a claim for priority right pursuant to section 15 (Application previously
filed abroad) of the Patent Law. According to them, they are entitled to the right of priority
granted to foreign applicants since they have filed their application for Letters Patent with
Specifications before the Director of Patents on March 5, 1954 or within 1 year from March 16,
1953, the date of their Application for Letters Patent in the United States. However, the Chief
Patent Examiner treated the same as an ordinary application since the Specifications submitted by
BOOTHE and MORTON within the one year period lack nine pages thus, incomplete. BOOTHE
and MORTON appealed to the Director of Patent and have claimed that the defect was a mere
minor informality and that they should still be given the priority right. The Director of Patents
ruled on matter not raised by BOOTHE and MORTON. Hence, the latter claims that the Director
of Patents should only confine his decision to the issue of whether or not the additional nine
pages of Specification they had submitted should be treated as new matter.

Respondents Claims:
The DIR OF PATENTS allowed the lacking pages but however ruled that the application
of BOOTHE and MORTON should only be treated as an ordinary one because they have only
filed the required certified copy of their foreign application on April 14, 1954. Thus, the filing
date of the application should be changed from March 5, 1954 to April 14, 1954.

Issue/s:
(a) Whether or not the DIR OF PATENTS shall only confine his decision to the matters appealed
from.
(b) Whether or not the DIR OF PATENTS erred in holding that the aforesaid application does
not fall under Section 15 of the Patent Law.

Ruling:

(a) NO. The DIR OF PATENTS is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal. He need not confine himself only to
issues invoked. It was earlier concluded by the Supervising Patent Examiner that inasmuch as the
submitted pages did not correspond with the certified copy of the US application, the present
application cannot therefore be granted priority date under Section 15 as requested by applicant.
What Respondent Director exercised was within his authority to review the decisions of Patents
Examiners.

(b) NO. Under Sections 47 and 48 of the Patent Law, It is imperative that the application be complete in
order that it may be accepted. It is essential to the validity of Letters Patent that the specification be
full, definite and specific. The purpose of said requirement is to apprise the public of that patentee
claims as his invention, to inform Courts as to what they are called to construe, and to convey to
competing manufacturers and dealers information what they are bound to avoid. The defect was one
of substance and not merely one of form. An invention disclosed in a previously filed application
must be described within the instant application such a manner as to enable one skilled in the art to
use the same for a legally adequate utility.

The specification which BOOTHE and MORTON submitted on March 5, 1954 was far from
complete. That defect was one of substance and not merely one of form. What BOOTHE and
MORTON claimed as their invention was not completely determinable therefrom. The application of
BOOTHE and MORTON could be deemed as complete only on July 2, 1963 when they submitted
the additional pages on the Specifications and Claims.