IPL 134 Final Exam

Patents

CHOOSE EITHER Case 1 OR Case 2

They have the same weight

Case 1: Oil Spill Recovery System

The Solar 1 oil spill at Guimaras Island in Iloilo led to a patent dispute between a Filipino
inventor and an Italian Company that has been selected by the insurers to undertake the
sub sea clean up of the oil spill.

The Filipino inventor is the registered owner of a Utility Model Patent in the Philippines
whose specifications and claims correspond to a counterpart US Patent No. 5795103 for
an oil recovery system issued on August 18, 1998. The Filipino inventor did not obtain a
counterpart of US Patent No. 5795103 from the Philippine Intellectual Property Office.

The Filipino inventor submitted a bid for the Solar oil recovery project but the insurer
who was paying for the clean up costs retained the services of the Italian company.
Undeterred and determined, the Filipino inventor published a Warning Advertisement in
a newspaper of general circulation in substantially the following language:

The Solar oil tanker containing 1,700,000 liters of oil at a depth of 640
meters cannot be recovered by the system of the Italian Company, which
is also patented under an European patent European Patent 1 449 763. No
suction pump has the capacity to siphon the oil at a depth of 640 meters.
The displacement method under the Philippine Utility model patent and
the US Patent 5795103 is the safest, easiest and cheapest way of
recovering oil from Solar 1.

The displacement method is undertaken by pumping oil into the

compartment of the oil tanker through the intake line and the oil
automatically will exit through a second line leading to the oil recovery
vessel at the water surface.

The paid advertisement is published for the sake of national interest and
was addressed to the government agencies participating in the oil recovery
effort to dissuade them from availing of the “unreliable system” of the
Italian company.
Under the Utility Model Patent, the elements of the Philippine invention covering an Oil
Tanker for Recovering Oil from a Submerged Oil Tanker or Vessel are:

1. a hull with at least one oil-containing compartment;

2. an inlet communicating with said oil-containing compartment said inlet having a
flexible inlet line with one end attached to the inlet and a free end with floating means
attached to the exterior of the compartment
3. means for maintaining the inlet line, discharge line and floating means exterior of the
said one compartment whereby said line and discharge lines will be caused to be
deployed to rise to the surface upon said vessel being submerged.

In contrast, Italian company’s technology described in its European Patent No. 1 449 763
employs the following elements and/or steps:

1. an effluent evacuation device with at least one pipe and a first valve installed to work
with an opening in the hull or tank of a sunken ship to recover the polluting effluent
flowing through the opening rising to the evacuation device;
2. recovery of the effluent from the opening in the hull or tank; where the effluent is
recovered using a shuttle reservoir with at least one bottom orifice working with the
evacuation device for the performance of the following steps:
(i) lowering the shuttle reservoir from the surface to the sea bed while causing the bottom
orifice of the shuttle reservoir to cooperate with the evacuation device;
(ii) filling the shuttle reservoir with the effluent and closing it when filled to make it leak
tight.
(iii) allowing the shuttle reservoir to rise to the surface once full and equipped with
buoyancy elements
(iv) storing the shuttle reservoir filled with effluent in a ship on the surface and
employing said reservoir on the ship for emptying to another site
(v) repeating steps (i) to (iv) with the same elements until the desired quantity of effluent
has been recovered.

The Filipino inventor claimed that the system of the Italian company infringes the claims
under his Philippine Utility Model patent and his US Patent.

Question:
 1. Can the Filipino inventor, who has a Philippine Utility Model Patent and a
separate US patent with broader claims than the Philippine UM Patent rely not
only upon his Philippine UM Patent but also upon the claims of US Patent?

2. If you are the patent counsel of the Filipino inventor, how will you argue his case
for patent infringement based on the language of the claims in the Philippine and US
Patents?

3. If you are the patent counsel of the Italian company, how will you defend it
against the charge of patent infringement?

4. Based on the facts of the case, what cause of action may the Italian company have
against the Filipino inventor?

Case 2: Hemp Stripping Machine

Plaintiffs allege that they are the owners of a patent covering hemp-stripping machine
No. 1519579 issued to them by the Bureau of Patents and Trademarks. The important
feature of the machine "is a spindle upon which the hemp to be stripped is wound in the
process of stripping." Plaintiffs have for some time been manufacturing the machine
under the patent.

Plaintiffs allege that defendant manufactured a hemp-stripping machine in which, without

authority from the plaintiffs, he has embodied and used such spindles and their method of
application and use, and is exhibiting his machine to the public for the purpose of
inducing its purchase. Plaintiffs claim that the use by the defendant of such spindles and
the principle of their application to the stripping of hemp is in violation of, and in conflict
with, plaintiffs' patent, together with its conditions and specifications. The defendant's
machine is allegedly an infringement upon the patent granted the plaintiffs, and plaintiffs
pray for an injunction that the defendant be required to account to plaintiffs for any
profits he may have made by reason of such infringement.

The plans and specifications upon which the patent was issued recite:

"Our invention relates to hemp stripping machines and it consists in the combinations,
constructions and arrangements herein described and claimed.
"An object of our invention is to provide a machine affording facilities whereby the
operation of stripping hemp leaves may be accomplished mechanically, thereby obviating
the strain incident to the performance of hemp stripping operations manually."
And on page 3 of the application for patent, it is said:
"Obviously, our invention is susceptible of embodiment in forms other than that
illustrated herein and we therefore consider as our own all modifications of the form of
device herein disclosed which fairly fall within the spirit and scope of our invention as
claimed.

"We claim:

"1. In a hemp stripping machine, a stripping head having a supporting portion on

which the hemp leaves may rest and having also an upright bracket portion, a lever of
angular formation pivotally attached substantially at the juncture of the arms thereof to
the bracket portion of the stripping head, whereby one arm of the lever overlies the
supporting portion of the stripping head, a blade carried by said one arm of the lever for
cooperating with said supporting portion, means connected with the other arm of the
lever and actuating the latter to continuously urge the blade toward said supporting
portion of the stripping head, and a rotatable spindle positioned adjacent to said stripping
head, said spindle being adapted to be engaged by hemp leaves extending across said
supporting portion of the stripping head underneath said blade and being operable to
draw said hemp leaves in the direction of their length between said supporting portion of
the stripping head and said blade.

"2. In a hemp stripping machine, a stripping head having a horizontal table portion, a
rest supported upon said table portion, a stripping knife supported upon the table for
movement into and out of position to cooperate with the rest to strip hemp leaves drawn
between the knife and the rest, and power driven means adapted to be engaged with said
hemp leaves and to pull the latter between the knife and rest, said power driven means
including a rotating spindle, said spindle being free at one end and tapering regularly
toward its free end.

"3. In a hemp stripping machine, a stripping head having a horizontal table portion
and an upright bracket portion, a rest holder adjustably secured on the table portion, a rest
resiliently supported by the holder, a knife carrying lever of angular formation and being
pivotally attached substantially at the juncture of the arms thereof to the bracket portion
of the stripping head, whereby one arm of the lever overlies the rest, a blade adjustably
supported on said one arm, for cooperating with said rest and gravity means connected
with the other arm of the lever and actuating the latter to continuously urge the blade
toward the rest."
The spindle upon which the patent was obtained, together with the spindle upon which
the defendant relies are exhibits in the record and were before the court at the time this
case was argued. The spindle of the plaintiffs was made of wood, conical in shape and
with a smooth surface. That of the defendant was somewhat similar in shape, but was
made of metal with a rough surface, and the defendant claims that his spindle was more
effective and would do better work than that of the plaintiffs.
Questions:

1. Do the plaintiffs have a valid cause of action against the defendant for patent
infringement.?

2. Is there a way by which the defendant could have avoided the charge of patent
infringement?