1.
Serrano Laktaw
1.INTELLECTUAL PROPERTY; DlCTIONARIES;
REPRODUCTION OF.—Where one in publishing a
Spanish-Tagalog dictionary has but copied the
equivalents, definitions and different meanings given
in another's Spanish-Tagalog dictionary, although
making some additions of his own and some
unimportant changes in the examples to illustrate
the meanings of the words, such as substituting
"Tayabas" for "Bulacan" in the expression "Voy a
Bulacan" (I am going to Bulacan), it is evident that he
merely reproduced the dictionary of the other author
in violation of the Law of January 10, 1879, on
Intellectual Property.
2.ID,; ID,; PROPERTY OF AUTHOR.—Dictionaries are
not common property, but property of the author,
whose right thereto is recognized by article 7, in
connection with article 2, of the Law of January 10,
1879, and nobody can reproduce them without the
permission of the author.
3.ID.; LAW OF JANUARY 10, 1879; OPERATION OF.—
The Law of January 10, 1879, on Intellectual
Property, was extended to the Philippine Islands by
royal decree of May 5, 1887, and published in the
"Gaceta de Manila," with the approval of the
Governor-General, on June 15, 1887, and took effect
in these Islands six months after its promulgation or
publication. And even .supposing that it ceased to
operate in these Islands upon the change of
sovereignty, yet the author of a dictionary published
in 1889, who had complied with its requirements, has
a vested right to his work, which is recognized and
protected by the Treaty of Paris of December 10,
1898, and must be respected.
4ID.; ID.; REPRODUCTION OF ANOTHER'S WORK;
DAMAGES.—The author of a dictionary published in
1889 having an exclusive right thereto, vested under
the Law of January 10, 1879, and protected by the
Treaty of Paris of December 10, 1898, every violator
of said right will be held responsible for the damages
the said author may have sustained.
vs. Paglinawan, 44 Phil. 855, No. 11937 April 1, 1918
2.
Administrative Law; Trademarks and Trade Names;
Intellectual Property Office; Jurisdiction; Petitioner’s
complaint, which seeks the cancellation of the
disputed mark in the name of respondent Sehwani,
Incorporated, and damages for violation of
petitioner’s intellectual property rights, falls within
the jurisdiction of the Intellectual Property Office
(IPO) Director of Legal Affairs.—Petitioner’s
complaint, which seeks the cancellation of the
disputed mark in the name of respondent Sehwani,
Incorporated, and damages for violation of
petitioner’s intellectual property rights, falls within
the jurisdiction of the IPO Director of Legal Affairs.
The Intellectual Property Code also expressly
recognizes the appellate jurisdiction of the IPO
Director General over the decisions of the IPO
Director of Legal Affairs.
Same; Same; Same; Same; Court of Appeals
incorrectly concluded that all actions involving
trademarks, including charges of unfair competition,
are under the exclusive jurisdiction of civil courts.—
The Court of Appeals erroneously reasoned that
Section 10(a) of the Intellectual Property Code,
conferring upon the BLA-IPO jurisdiction over
administrative complaints for violations of
intellectual property rights, is a general provision,
over which the specific provision of Section 163 of the
same Code, found under Part III thereof particularly
governing trademarks, service marks, and
tradenames, must prevail. Proceeding therefrom, the
Court of Appeals incorrectly concluded that all
actions involving trademarks, including charges of
unfair competition, are under the exclusive
jurisdiction of civil courts.
Same; Same; Same; Same; Sections 160 and 170 also
found under Part III of the Intellectual Property Code,
recognize the concurrent jurisdiction of civil courts
and the Intellectual Property Office (IPO) over unfair
competition cases.—Such interpretation is not
supported by the provisions of the Intellectual
Property Code. While Section 163 thereof vests in civil
courts jurisdiction over cases of unfair competition,
nothing in the said section states that the regular
courts have sole jurisdiction over unfair competition
cases, to the exclusion of administrative bodies. On
the contrary, Sections 160 and 170, which are also
found under Part III of the Intellectual Property Code,
recognize the concurrent jurisdiction of civil courts
and the IPO over unfair competition cases.
Same; Same; Unfair Competition; Essential elements
of an action for unfair competition.—The essential
elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the
goods and (2) intent to deceive the public and
defraud a competitor. The confusing similarity may
or may not result from similarity in the marks, but
may result from other external factors in the
packaging or presentation of the goods. The intent to
deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered
for sale to the public. Actual fraudulent intent need
not be shown.
Administrative Proceedings; Evidence;
Administrative proceedings are governed by the
“substantial evidence rule.”—Administrative
proceedings are governed by the “substantial
evidence rule.” A finding of guilt in an administrative
case would have to be sustained for as long as it is
supported by substantial evidence that the
respondent has committed acts stated in the
complaint or formal charge. As defined, substantial
evidence is such relevant evidence as a reasonable
mind may accept as adequate to support a
conclusion. As recounted by the IPO Director General
in his decision, there is more than enough substantial
evidence to support his finding that respondents are
guilty of unfair competition. In-N-Out Burger, Inc. vs.
Sehwani, Incorporated, 575 SCRA 535, G.R. No.
179127 December 24, 2008
3.
Intellectual Property; Copyrights; Patents; Being a
mere statutory grant, the rights are limited to what
the statute confers; It can cover only the works falling
within the statutory enumeration or description.—
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
subjects and by the persons, and on terms and
conditions specified in the statute. Accordingly, it can
cover only the works falling within the statutory
enumeration or description.
Same; Same; Same; The 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.—During the trial,
the president of P & D himself admitted that the light
box was neither a literary not an 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 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.
Same; Same; Same; 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.—
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 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
right of making, selling or using the invention.
Same; Same; Same; To be able to effectively and
legally preclude others from copying and profiting
from the invention, a patent is a primordial
requirement.—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 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 restraint.
Same; Same; Same; Patent law has a three-fold
purpose.—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 to ensure that ideas in the
public domain remain there for the free use of the
public.”
Same; Same; Same; 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 different description.—
Under the circumstances, the Court of Appeals
correctly cited Faberge Inc. vs. Intermediate
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 different
description.” Faberge, Inc. was correct and was in
fact recently reiterated in Canon Kabushiki Kaisha vs.
Court of Appeals.
Same; Same; Same; Unfair Competition; There can be
no unfair competition under the law on copyrights
although it is applicable to disputes over the use of
trademarks.—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 trade name 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 protection against unfair
competition. In this case, there was no evidence that
P & D’s use of “Poster Ads” was distinctive or well-
known. As noted by the Court of Appeals, petitioner’s
expert witnesses himself had testified that “Poster
Ads” was too generic a name. So it was difficult to
identify it with any company, honestly speaking.”
Pearl & Dean (Phil.), Incorporated vs. Shoemart, substantially similar to any other utility model so
Incorporated, 409 SCRA 231, G.R. No. 148222 August known, used or described within the country.
15, 2003

Same; Same; Philippine Patent Office; There is a

4. presumption that the Philippine Patent Office has
correctly determined the patentability of the model
Patents; An invention must possess the essential
and such action must not be interfered with in the
elements of novelty, originality and precedence, and
absence of competent evidence to the contrary.—
for the patentee to be entitled to the protection the
The validity of the patent issued by the Philippine
invention must be new to the world.—The element of
Patent Office in favor of private respondent and the
novelty is an essential requisite of the patentability of
question over the inventiveness, novelty and
an invention or discovery. If a device or process has
usefulness of the improved model of the LPG burner
been known or used by others prior to its invention or
are matters which are better determined by the
discovery by the applicant, an application for a
Patent Office. The technical staff of the Philippine
patent therefor should be denied; and if the
Patent Office composed of experts in their field has
application has been granted, the court, in a judicial
by the issuance of the patent in question accepted
proceeding in which the validity of the patent is
private respondent’s model of gas burner as a
drawn in question, will hold it void and ineffective. It
discovery. There is a presumption that the Office has
has been repeatedly held that an invention must
correctly determined the patentability of the model
possess the essential elements of novelty, originality
and such action must not be interfered with in the
and precedence, and for the patentee to be entitled
absence of competent evidence to the contrary.
to the protection the invention must be new to the
world.

Same; Same; Same; Administrative Law; The findings

of fact of the Director of Patents, especially when
Same; Evidence; Burden of Proof; The burden of
affirmed by the Court of Appeals, are conclusive on
proving want of novelty is on him who avers it and
the Supreme Court when supported by substantial
the burden is a heavy one which is met only by clear
evidence.—The rule is settled that the findings of fact
and satisfactory proof which overcomes every
of the Director of Patents, especially when affirmed
reasonable doubt.—In issuing Letters Patent No.
by the Court of Appeals, are conclusive on this Court
UM-4609 to Melecia Madolaria for an “LPG Burner”
when supported by substantial evidence. Petitioner
on 22 July 1981, the Philippine Patent Office found
has failed to show compelling grounds for a reversal
her invention novel and patentable. The issuance of
of the findings and conclusions of the Patent Office
such patent creates a presumption which yields only
and the Court of Appeals.
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
Same; Same; Pursuant to the requirement of clear
is a heavy one which is met only by clear and
and convincing evidence to overthrow the
satisfactory proof which overcomes every reasonable
presumption of validity of a patent, it has been held
doubt. Hence, a utility model shall not be considered
that oral testimony to show anticipation is open to
“new” if before the application for a patent it has
suspicion and if uncorroborated by cogent evidence,
been publicly known or publicly used in this country
it may be held insufficient.—The alleged failure of the
or has been described in a printed publication or
Director of Patents and the Court of Appeals to
publications circulated within the country, or if it is
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
uncorroborated by cogent evidence, as what
occurred in this case, it may be held insufficient.
Manzano vs. Court of Appeals, 278 SCRA 688, G.R.
No. 113388 September 5, 1997
5.
Commercial Law; Patents; Phil Patents Office;
Determination of patentability of a product within
the competence of the Philippines Patent Office;
Presumption that determination of Patents Office of
product’s patent ability is correct.—The validity 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 patent ability of the
improvement by the private respondent of the
process in question.
Same; Same; Tile Making; Where improvement in tile
making is inventive and different from old process of
tile making, improvement is patent able.—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
precast 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 deep engraving, but with sufficient durability.
Durability inspite of the thinness and lightness of the
tile, is assured, provided that a certain critical depth
is maintained in relation to the dimensions of the tile.
x x x 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. Aguas vs. De Leon, 111
SCRA 238, No. L-32160 January 30, 1982
6.
Patents; A patent is granted to provide rights and
protection to the inventor after an invention is
disclosed to the public.—A patent is granted to
provide rights and protection to the inventor after an
invention is disclosed to the public. It also seeks to
restrain and prevent unauthorized persons from
unjustly profiting from a protected invention. E.I.
Dupont de Nemours and Co. vs. Francisco, 801 SCRA
629, G.R. No. 174379 August 31, 2016
Same; Interlocutory Orders; Interlocutory Orders are
generally not reviewable.—Interlocutory orders, or
orders that do not make a final disposition of the
merits of the main controversy or cause of action, are
generally not reviewable. The only exception is a
limited one, in that when there is no plain, speedy,
and adequate remedy, and where it can be shown
that the court acted without, in excess, or with such
grave abuse of discretion that such action ousts it of
jurisdiction. E.I. Dupont de Nemours and Co. vs.
Francisco, 801 SCRA 629, G.R. No. 174379 August 31,
2016
Patents; Intellectual Property Code; The Intellectual
Property Code states that all patent applications
must be published in the Intellectual Property Office
(IPO) Gazette.—The Intellectual Property Code now
states that all patent applications must be published
in the Intellectual Property Office Gazette and that
any interested party may inspect all documents
submitted to the Intellectual Property Office. The
patent application is only confidential before its
publication.
Same; Same; The right of priority given to a patent
applicant is only relevant when there are two (2) or
more conflicting patent applications on the same
invention.—The right of priority given to a patent
applicant is only relevant when there are two or more
conflicting patent applications on the same
invention. Because a right of priority does not
automatically grant letters patent to an applicant,
possession of a right of priority does not confer any
property rights on the applicant in the absence of an
actual patent.
Same; Same; Under Section 31 of the Intellectual
Property Code, a right of priority is given to any
patent applicant who has previously applied for a
patent in a country that grants the same privilege to
Filipinos.—Under Section 31 of the Intellectual
Property Code, a right of priority is given to any
patent applicant who has previously applied for a
patent in a country that grants the same privilege to
Filipinos.
Same; The grant of a patent is to provide protection
to any inventor from any patent infringement.—The
grant of a patent is to provide protection to any
inventor from any patent infringement. Once an
invention is disclosed to the public, only the patent
holder has the exclusive right to manufacture, utilize,
and market the invention.
Same; Intellectual Property Code; Under the
Intellectual Property Code, a patent holder has the
right to restrain, prohibit and prevent any
unauthorized person or entity from manufacturing,
selling or importing any product derived from the
patent.—Under the Intellectual Property Code, a
patent holder has the right to “to restrain, prohibit
and prevent” any unauthorized person or entity from
manufacturing, selling, or importing any product
derived from the patent. However, after a patent is
granted and published in the Intellectual Property
Office Gazette, any interested third party “may
inspect the complete description, claims, and
drawings of the patent.”
Same; After the publication of the patent, any person
may examine the invention and develop it into
something further than what the original patent
holder may have envisioned.—The grant of a patent
provides protection to the patent holder from the
indiscriminate use of the invention. However, its
mandatory publication also has the correlative effect
of bringing new ideas into the public consciousness.
After the publication of the patent, any person may
examine the invention and develop it into something
further than what the original patent holder may
have envisioned.
Same; A patent holder of inventions relating to food
or medicine does not enjoy absolute monopoly over
the patent.—A patent holder of inventions relating to
food or medicine does not enjoy absolute monopoly
over the patent. Both Republic Act No. 165 and the
Intellectual Property Code provide for compulsory
licensing. Compulsory licensing is defined in the
Intellectual Property Code as the “grant a license to
exploit a patented invention, even without the
agreement of the patent owner.”
Same; A patent holder’s proprietary right over the
patent only lasts for three (3) years from the grant of
the patent, after which any person may be allowed
to manufacture, use, or sell the invention subject to
the payment of royalties.—The patent holder’s
proprietary right over the patent only lasts for three
(3) years from the grant of the patent, after which
any person may be allowed to manufacture, use, or
sell the invention subject to the payment of royalties.
E.I. Dupont de Nemours and Co. vs. Francisco, 801
SCRA 629, G.R. No. 174379 August 31, 2016
7.
Remedial Law; Appeal; Certiorari; The jurisdiction of
the Supreme Court in cases brought to it from the
Court of Appeals in a petition for certiorari under Rule
45 of the Rules of Court is limited to the review of
errors of law; Appellate court’s findings of fact are
conclusive upon the Supreme Court.—Of general
acceptance is the rule imbedded in our jurisprudence
that “x x x the jurisdiction of the Supreme Court in
cases brought to it from the Court of Appeals in a
petition for certiorari under Rule 45 of the Rules of
Court is limited to the review of errors of law, and
that said appellate court’s findings of fact are
conclusive upon this Court.”
Corporation Law; Trademarks; Unfair Competition;
Test to determine infringement are (a) literal
infringement and (b) the doctrine of equivalents.—
Tests have been established to determine
infringement. These are (a) literal infringement; and
(b) the doctrine of equivalents. In using literal
infringement as a test, “x x x resort must be had, in
the first instance, to the words of the claim. If
accused matter clearly falls within the claim,
infringement is made out and that is the end of it.”
To determine whether the particular item falls within
the literal meaning of the patent claims, the Court
must juxtapose the claims of the patent and the
accused product within the overall context of the
claims and specifications, to determine whether
there is exact identity of all material elements.
Same; Same; Same; Same; Courts have adopted the
doctrine of equivalents which recognizes that minor
modifications in a patented invention are sufficient
to put the item beyond the scope of literal
infringement.—Recognizing that the logical fallback
position of one in the place of defendant is to aver
that his product is different from the patented one,
courts have adopted the doctrine of equivalents
which recognizes that minor modifications in a
patented invention are sufficient to put the item
beyond the scope of literal infringement.
Same; Same; Same; Same; Same; The reason for the
doctrine of equivalents is that to permit the imitation
of a patented invention which does not copy any
literal detail would be to convert the protection of the
patent grant into a hollow and useless thing.—Thus,
according to this doctrine, “(a)n infringement also
occurs when a device appropriates a prior invention
by incorporating its innovative concept and, albeit
with some modifications and change, performs
substantially the same function in substantially the
same way to achieve substantially the same result.”
The reason for the doctrine of equivalents is that to
permit the imitation of a patented invention which
does not copy any literal detail would be to convert
the protection of the patent grant into a hallow and
useless thing. Such imitation would leave room for—
indeed encourage—the unscrupulous copyist to
make unimportant and insubstantial changes and
substitutions in the patent which, though adding
nothing, would be enough to take the copied matter
outside the claim, and hence outside the reach of the
law. Godines vs. Court of Appeals, 226 SCRA 338, G.R.
No. 97343 September 13, 1993
8.
Intellectual Property Law; Appeals; Only questions of
law may be raised in a petition for review on
certiorari.—As has repeatedly been held, only
questions of law may be raised in a petition for
review on certiorari before this Court. Unless the
factual findings of the appellate court are mistaken,
absurd, speculative, conjectural, conflicting, tainted
with grave abuse of discretion, or contrary to the
findings culled by the court of origin, this Court does
not review them.
Same; Patents; When the language of its claims is
clear and distinct, the patentee is bound thereby and
may not claim anything beyond them.— When the
language of its claims is clear and distinct, the
patentee is bound thereby and may not claim
anything beyond them. And so are the courts bound
which may not add to or detract from the claims
matters not expressed or necessarily implied, nor
may they enlarge the patent beyond the scope of that
which the inventor claimed and the patent office
allowed, even if the patentee may have been entitled
to something more than the words it had chosen
would include.
Same; Same; Infringement; Doctrine of Equivalents;
Definition.—The doctrine of equivalents provides
that an infringement also takes place when a device
appropriates a prior invention by incorporating its
innovative concept and, although with some
modification and change, performs substantially the
same function in substantially the same way to
achieve substantially the same result.
Same; Same; Same; Same; The Doctrine of
Equivalents thus requires satisfaction of the function-
means-and-result test.—The doctrine of equivalents
thus requires satisfaction of the function-means-and-
result test, the patentee having the burden to show
that all three components of such equivalency test
are met.
Damages; Actual Damages; Unearned Profits; It is
necessary to prove the actual amount of damages
with a reasonable degree of certainty based on
competent proof.—While indemnification for actual
or compensatory damages covers not only the loss
suffered (damnum emergens) but also profits which
the obligee failed to obtain (lucrum cessans or
ganacias frustradas), it is necessary to prove the
actual amount of damages with a reasonable degree
of certainty based on competent proof and on the
best evidence obtainable by the injured party. Smith
Kline Beckman Corporation vs. Court of Appeals, 409
SCRA 33, G.R. No. 126627 August 14, 2003
9.
Patents; Infringement; Actions; Words and Phrases;
Only the patentee or his successors-in-interest may
file an action for infringement—the phrase “anyone
possessing any right, title or interest in and to the
patented invention” in Sec. 42 of R.A. 165 refers only
to the patentee’s successors-in-interest, assignees or
grantees.—Section 42 of R.A. 165, otherwise known
as the Patent Law, explicitly provides: Section 42.
Civil action for infringement.—Any patentee, or
anyone possessing any right, title or interest in and
to the patented invention, whose rights have been
infringed, may bring a civil action before the proper
Court of First Instance (now Regional Trial Court), to
recover from the infringer damages sustained by
reason of the infringement and to secure an
injunction for the protection of his rights. x x x Under
the aforequoted law, only the patentee or his
successors-in-interest may file an action for
infringement. The phrase “anyone possessing any
right, title or interest in and to the patented
invention” upon which petitioner maintains its
present suit, refers only to the patentee’s successors-
in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name
of the person or persons interested, whether as
patentee, assignees, or as grantees, of the exclusive
right.
Same; Same; Same; A person or entity who has not
been granted letters patent over an invention and
has not acquired any right or title thereto either as
assignee or as licensee, has no cause of action for
infringement because the right to maintain an
infringement suit depends on the existence of the
patent.—Moreover, 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. In
short, a person or entity who has not been granted
letters patent over an invention and has not acquired
any right or title thereto either as assignee or as
licensee, has no cause of action for infringement
because the right to maintain an infringement suit
depends on the existence of the patent.
Same; Same; Same; A person claiming to be an
inventor of an article has no right of property over the
same upon which it can maintain a suit unless it
obtains a patent therefor.—Petitioner admits it has
no patent over its aerial fuze. Therefore, it has no
legal basis or cause of action to institute the petition
for injunction and damages arising from the alleged
infringement by private respondent. While petitioner
claims to be the first inventor of the aerial fuze, still
it has no right of property over the same upon which
it can maintain a suit unless it obtains a patent
therefor. Under American jurisprudence, an inventor
has no common-law right to a monopoly of his
invention. He has the right to make, use and vend his
own 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 right of making, using or selling
the invention.
Same; Same; Same; Anyone who has no patent over
an invention but claims to have a right or interest
thereto can not file an action for declaratory
judgment or injunctive suit which is not recognized in
this jurisdiction but he can, under Section 28 of the
Patent Law, file a petition for cancellation of the
patent within three (3) years from the publication of
the patent with the Director of Patents.—Further, the
remedy of declaratory judgment or injunctive suit on
patent invalidity relied upon by petitioner cannot be
likened to the civil action for infringement under
Section 42 of the Patent Law. The reason for this is
that the said remedy is available only to the patent
holder or his successors-in-interest. Thus, anyone
who has no patent over an invention but claims to
have a right or interest thereto can not file an action
for declaratory judgment or injunctive suit which is
not recognized in this jurisdiction. Said person,
however, is not left without any remedy. He can,
under Section 28 of the aforementioned law, file a
petition for cancellation of the patent within three (3)
years from the publication of said patent with the
Director of Patents and raise as ground therefor that
the person to whom the patent was issued is not the
true and actual inventor. Hence, petitioner’s remedy
is not to file an action for injunction or infringement
but to file a petition for cancellation of private
respondent’s patent. Petitioner however failed to do
so. As such, it can not now assail or impugn the
validity of the private respondent’s letters patent by
claiming that it is the true and actual inventor of the
aerial fuze. Creser Precision Systems, Inc. vs. Court of
Appeals, 286 SCRA 13, G.R. No. 118708 February 2,
1998
10.
Same; Same; Treaties; By their voluntary act, nations
may surrender some aspects of their state power in
exchange for greater benefits granted by or derived
from a convention or pact.—By their inherent nature,
treaties really limit or restrict the absoluteness of
sovereignty. By their voluntary act, nations may
surrender some aspects of their state power in
exchange for greater benefits granted by or derived
from a convention or pact. After all, states, like
individuals, live with coequals, and in pursuit of
mutually covenanted objectives and benefits, they
also commonly agree to limit the exercise of their
otherwise absolute rights.
Same; Same; Same; World Trade Organization;
Pleadings and Practice; Article 34 of the General
Provisions and Basic Principles of the Agreement on
Trade-Related Aspects of Intellectual Property Rights
(TRIPS) does not contain an unreasonable burden,
consistent as it is with due process and the concept
of adversarial dispute settlement inherent in
Philippine judicial system.—Petitioners aver that
paragraph 1, Article 34 of the General Provisions and
Basic Principles of the Agreement on T ra de-Rel a ted
A s pects of Intellectual Property Rights (TRIPS)
intrudes on the power of the Supreme Court to prom
ulgate rules concerning pleading, practice and
procedures. x x x By and large, the arguments
adduced in connection with our dis position of the
third issue—derogation of legislative power—will
apply to this fourth issue also. Suffice it to say that
the reciprocity clause more than justifies such
intrusion, if any actually exists. Besides, Article 34
does not contain an unreasonable burden, consistent
as it is with due process and the concept of
adversarial dispute settlement inherent in our judicial
system. So too, since the Philippines is a signatory to
most international conventions on patents,
trademarks and copyrights, the adjus tment in
legislation and rules of procedure will not be
substantial.
Same; Same; Same; Same; Same; Patents; Evidence;
Words and Phrases; Burden of Proof; Burden of
Evidence; The “burden of proof” contemplated by
Article 34 should actually and properly be understood
as referring to the “burden of evidence” (burden of
going forward) placed on the producer of identical
(or fake) product to show that his product was
produced without the use of the patented process—
the patent owner still has the “burden of proof” since
he still has to introduce evidence of the existence of
the alleged identical product, the fact that it is
“identical” to the genuine one produced by the
patented process and the fact of “newness” of the
genuine product or the fact of “substantial
likelihood” that the identical product was made by
the patented process.—From the above, a WTO
Member is required to provide a rule of dis putable
(note the words “in the absence of proof to the
contrary”) presumption that a product shown to be
identical to one produced with the use of a patented
process shall be deemed to have been obtained by
the (illegal) use of the said patented process, (1)
where such product obtained by the patented
product is new, or (2) where there is “substantial
likelihood” that the identical product was made with
the use of the said patented process but the owner of
the patent could not determine the exact process
used in obtaining such identical product. Hence, the
“burden of proof” contemplated by Article 34 should
actually be understood as the duty of the alleged
patent infringer to overthrow such presumption.
Such burden, properly understood, actually refers to
the “burden of evidence” (burden of going forward)
placed on the producer of the identical (or fake)
product to show that his product was produced
without the use of the patented process. The
foregoing notwithstanding, the patent owner still
has the “burden of proof” since, regardles s of the
presumption provided under paragraph 1 of Article
34, such owner still has to introduce evidence of the
existence of the alleged identical product, the fact
that it is “identical” to the genuine one produced by
the patented process and the fact of “newness ” of
the genuine product or the fact of “substantial
likelihood” that the identical product was made by
the patented process. Tañada vs. Angara, 272 SCRA
18, G.R. No. 118295 May 2, 1997
11.
Constitutional Law; Searches and Seizures; Upon the
filing of the application for search warrant, the RTC
was duty-bound to determine whether probable
cause existed.—The RTC had jurisdiction to delve into
and resolve the issue whether the petitioner’s utility
models are copyrightable and, if so, whether he is the copyright laws.—That the works of the petitioner
owner of a copyright over the said models. It bears may be the proper subject of a patent does not entitle
stressing that upon the filing of the application for him to the issuance of a search warrant for violation
search warrant, the RTC was duty-bound to of copyright laws. In Kho v. Court of Appeals and
determine whether probable cause existed, in Pearl & Dean (Phil.), Incorporated v. Shoemart,
accordance with Section 4, Rule 126 of the Rules of Incorporated, the Court ruled that “these copyright
Criminal Procedure. Ching vs. Salinas, Sr., 462 SCRA and patent rights are completely distinct and
241, G.R. No. 161295 June 29, 2005 separate from one another, and the protection
afforded by one cannot be used interchangeably to
Intellectual Property; Copyright Law; The focus of
cover items or works that exclusively pertain to the
copyright is the usefulness of the artistic design and
others.” Ching vs. Salinas, Sr., 462 SCRA 241, G.R. No.
not its marketability.—It bears stressing that the
161295 June 29, 2005
focus of copyright is the usefulness of the artistic
design, and not its marketability. The central inquiry
is whether the article is a work of art. Works for
12.
applied art include all original pictorials, graphics,
and sculptural works that are intended to be or have
been embodied in useful article regardless of factors
such as mass production, commercial exploitation,
and the potential availability of design patent
protection.

Same; Same; While works of applied art, original

intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial
design are not.—As gleaned from the description of
the models and their objectives, these articles are
useful articles which are defined as one having an
intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey
information. Indeed, while works of applied art,
original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial
design are not. A useful article may be copyrightable
only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features
that can be identified separately from, and are
capable of existing independently of the utilitarian
aspects of the article.

Same; Same; That the works of the petitioner may be

the proper subject of a patent does not entitle him to
the issuance of a search warrant for violation of