The Law On Patents

The Law on Patents

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First to File

 The Intellectual Property Code adopts the first-to-file system of patent registration in contrast to the Patent Law, which followed the first-to-invent system.  First to file is the rule in which patent priority is determined by which inventor was the first to file a patent application, rather than who was the first to actually invent.  The IP Code provides that if two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date.  The first-to-file system may, however, lead to certain fraudulent practices, which the Intellectual Property Code seeks to minimize.  If a person, who was deprived of the patent without his consent or through fraud is declared by final court  order or decision to be the true and actual inventor, the court shall order for substitution as patentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances.  Any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.

Elements of Patentable Inventions  Under Section 21, any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.  Inventions may be either machines, manufactures, or compositions of matter.

A machine is "a concrete thing, consisting of parts or of certain devices and combinations of devices."1. Case: Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)

A manufacture is "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."2 Case: Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)

A composition of matter is "a composition of two or more substances or a composite article, whether it be the result of chemical union, or of mechanical mixture, or whether it be a gas, fluid, powder, or solid."3 Case: id. at 308, 206 USPQ at 197 (quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113 USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C. Cir. 1958).

 An invention that consists of a new alloy is an example of a product invention.  An invention that consists of a new method or process of making a known or new alloy is a process invention.  'The corresponding patents are usually referred to as a "product patent for invention," and a "process patent for invention," respectively. 

Protection for Patentable Inventions  The protection that a patent for invention confers means that anyone who wishes to exploit the invention must obtain the authorization of the person who received the patent-called "the patentee" or "the owner of the patent"-to exploit the invention.  If anyone exploits the patented invention without such authorization, he commits an illegal act.  One speaks about "protection" since what is involved is that the patentee is protected against exploitation of the invention which he

1

Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863) Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931) 3 Id. at 308, 206 USPQ at 197 (quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113 USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C. Cir. 1958)). 2

has not authorized. Such protection is limited in time. In most countries, it is about 20 years.  The rights, usually called "exclusive rights of exploitation", generally consist of:  In the case of product patents for invention, the right to make, use, sell and import the product that includes the invention, and  In the case of process patents for invention, the right to use the process that includes the invention as well as the right to make, use, sell and import products which were made by the process that includes the invention Utility Models One of these two other means or forms of protection consists in the registration, or the granting, of a patent for a "utility model." The concept of utility models is known in the laws of a certain number of countries, among them the People's Republic of China, the Federal Republic of Germany and Japan. The expression "utility model" requires clarification. In essence, it is merely a name given to certain inventions, namely-according to the laws of most countries which contain provisions on utility models-inventions in the mechanical field. This is why the objects of utility models are sometimes devices or useful objects. Utility models differ from inventions for which patents for invention are available mainly in two respect first, in the case of an invention called "utility model," the technological progress required is less than the technological progress ("inventive step") Case: Gerardo Samson, Jr. Vs. Felipe Tarroza, et al. , G.R. No. L-20354, July 28, 1969 Case: Ex Parte Case Jackson Appeal To the Director of Patents From Final Rejection of Application By Principal Examiner Raymond M. Jackson, Applicant-Appellant, Appln. Serial No. Um-10473-A, June 15, 1988, Decision No. 91-9 (Pat), August 29, 1991

Conversion of Patent Applications or Applications for Utility Model Registration Section 110. 1 states that at any time before the grant or refusal of a patent, an applicant for a patent may upon payment of the prescribed fee convert his application into an application for registration of a utility model, which shall be accorded the filling date of the initial application. An application may be converted only once. Industrial Designs Section 112 states that an industrial design is any composition of lines or colors or any

three dimensional form whether or not associated with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. Under Section 113.1, only industrial designs that are new or original shall benefit from protection under this Act. Section 113.2 provides that industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order., health or morals shall not be protected. The appearance of a claimed design must meet the condition of novelty in order to qualify for a design patent. In other words, a design patent only protects the novel features of the design patented. Industrial Designs Industrial designs belong to the aesthetic field, but are at the same time intended to serve as patterns for the manufacture of products of industry or handicraft. Generally speaking, an industrial design is the ornamental or aesthetic aspect of a useful article. The ornamental aspect may consist of the shape and/or pattern and/or color of the article. The ornamental or aesthetic aspect must appeal to the sense of sight. The article must be reproducible by industrial means. Independence of Patents This principle is to be understood in its broadest sense. It means that the grant of a patent for invention in one country for a given invention does not oblige any other member country to grant a patent for invention for the same invention. TRIPS AGREEMENT National Treatment The first and most basic general requirement of the TRIPS Agreement is the requirement for national treatment. By virtue of that requirement, each Member of the WTO must treat the nationals of every other Member as favorably as its own with respect to intellectual property-i.e., must not discriminate against foreign nationals of Members. Most-Favored-Nation Treatment The requirement for most-favored-nation treatment is an innovation with the TRIPS Agreement. Drawn from the field of international trade generally, this requirement goes farther than the requirement for national treatment. It requires not only that each Member give other Members' nationals the same treatment as its own, but that each Member not prefer any other Member's nationals, or those of any nonmember country, over the nationals of any Member. Exhaustion or First-Sale Doctrine Article 6 of the TRIPS Agreement explicitly disclaims an intent to impose any particular requirements regarding the issue of the exhaustion of intellectual property rights. As a

result, Members of the WTO are free to implement exhaustion of intellectual property rights as they please. The term generally refers to doctrines that extinguish certain exclusive rights of the holder of intellectual property with respect to a particular physical item embodying the intellectual property after the item has first been sold under the holder's authority. Patentable Subject Matter Product and Process Patents Article 27(1) says that, subject to the stated exceptions, patents must be available for both products and processes in all fields of technology. This requirement implicitly repudiates a practice observed in a number of developing countries, of providing only process patents in certain fields of technology, thereby encouraging local inventors to develop other, non-infringing processes to make the same products. Exclusive Rights A product patentee must have the right to prevent others, without authorization, from making, using, offering for sale, selling, or importing [the patented product] for these purposes. A process patentee must have the right to prevent others, without authorization, from using the process and from using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process. Compulsory Licensing The provisions of the TRIPS Agreement regarding compulsory licensing are probably second in importance to those specifying the scope of subject matter for which patents must be available. Proof of Process Patent Infringement The final major substantive requirement of the TRIPS Agreement in the field of patent law relates to enforcement of process patents. Among the required exclusive rights of a process patent holder are the rights to use the patented process to make products and to use, import and sell products made at least directly by that process. A process patent holder as such, however, does not have the right to control the making or distribution even of identical products if made by another, non-infringing process. Data Submission to Government Paragraph 3 of Article 39 provides special protection for a certain kind of undisclosed information-that submitted to government agencies to secure regulatory approval of pharmaceuticals and agricultural chemicals. More specifically, it protects undisclosed test or other data, the origination of which involves considerable effort and which is

submitted as a condition of regulatory approval for pharmaceutical or agricultural chemical products which utilize new chemical entities. Major Concepts of the PCT The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant "designates" or "elects," that is, names, as countries or regions in which patent protection is desired. Requirements for Patentability Section 21 states that any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. Novelty, Inventive Step and Industrial Application Section 21 embodies the elements of patentability: novelty, inventive step or nonobviousness and industrial applicability. The dispositive question is not whether the claimed device is an ‘invention’; rather, it is whether the invention satisfies the standards of patentability. A conception of the mind is not an invention until represented in some physical form, and unsuccessful experiments or projects, abandoned by the inventor, are equally destitute of that character. It is an essential requirement for the validity of a patent that the subject-matter display "invention," more ingenuity than the work of a mechanic skilled in the art. The applicant whose invention satisfies the requirements of [1] novelty, [2] non-obviousness, and [3] utility, and who is [4] willing to reveal to the public the substance of his discovery and the best mode of carrying out his invention, is granted the [5] right to exclude others from making, using, or selling the invention throughout the country, for the statutory period. Novelty Under Section 23 of the Intellectual Property Code, an invention shall not be considered new if it forms part of the prior art. The repealed Patent Act followed the rule of relative novelty. The IP Code follows the rule of absolute novelty. Prior art shall consist of:

(i) everything which has been made available to the public anywhere in the world, before the filling date or the priority date of the application claiming- the invention; and (ii) (ii) the whole contents of an application for a patent, utility model or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application

Non-Prejudicial Disclosure Under Section 25, certain forms of disclosure cannot prejudice the patent applicant. These non-prejudicial disclosures include: () The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by: () The inventor; () A patent office and the information was contained (a) in another application filed by the inventor and should not have been disclosed by the office, or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or () A third party which obtained the information directly or indirectly from the inventor.

Inventive Step The expression "inventive step" conveys the idea that it is not enough that the claimed invention be new, that is, different from what exists in the state of the art, but that this difference must have two characteristics: it must be inventive, that is, the result of a creative idea and it mat be a step, that is, it must be noticeable. The “inventive step” means that the difference between the claimed invention and the state of the art must be the result of a creative idea. The notion of inventive step is explained by words to the effect that the difference between the claimed invention and the state of the art must be "non-obvious".

Enablement In addition to requiring a written description of the invention, § 112 requires that the specification contain "the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same."

To satisfy the enablement requirement, the specification must enable the full scope of the claimed invention. Specific and Substantial Utility The enablement requirement is different from the utility requirement. The requirement is that some specific, substantial, and credible use be set forth for the invention. On the other hand, the enablement requirement must disclose how the invention can be carried out, i.e., how the invention can be used. Case: Man-Made Bacteria: Diamond v. Chakrabarty, Supreme Court of The United States, 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144, June 16, 1980

Improvement Patents Section 21 recognizes the patentability of improvement patents. It is well established that an improver can not appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such. Unlicensed Improver An improver who appropriates, without license, the basic patent of another, is an infringer and liable as such. Unpatented Inventions as Part of Public Domain It is true that 'the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires'. Failure to file a patent for an invention consigns it to the public domain. Exclusions from Patentability Section 22 excludes the following matter from patent protection: () Discoveries, scientific theories and mathematical methods; () Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; () Methods for treatment of the human or body by surgery or therapy and diagnostic methods practice on the human or animal body. This provision shall not apply to products and composition for use in any of these methods; () Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organism and non-biological and micro-biological processes. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui genesis protection of plant varieties and breeds and a system of community intellectual rights protection:

() Aesthetic creations; and () Anything which is contrary to public order or morality. The subject matter courts have found to be outside the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena. While this is easily stated, determining whether an applicant is seeking to patent an abstract idea, a law of nature or a natural phenomenon has proven to be challenging. These three exclusions recognize that subject matter that is not a practical application or use of an idea, a law of nature or a natural phenomenon is not patentable. An idea of itself is not patentable, but a new device by which it may be made practically useful is.4 While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.

Case: U.S. Supreme Court Decision in LabCorp. v. Metabolite Laboratory Corporation of America Holdings, dba LabCorp v. Metabolite Laboratories, Inc., No. 04–607, Supreme Court of the United States, On Writ of Certiorari to the United States Court of Appeals for The Federal Circuit, June 22, 2006

Proving Anticipation Anticipation by prior art can be found only when a reference discloses exactly what is claimed. A finding of anticipation requires that the publication describe or disclose all of the elements of the claims,5 arranged as in the patented device, functioning in substantially same way to produce substantially same results. Stated alternatively, in order that an invention may be anticipated by a description contained in a printed publication, the latter must disclose the complete and operative invention in such full, clear, and exact terms as to enable any person skilled in the art to which the invention relates, or is most nearly connected, to practice the invention without the exercise of inventive skill of his own. Evidence Required for Anticipation or Lack of Novelty The facts establishing anticipation or lack of novelty of a method or device for which a patent has been granted must be proven by clear and convincing evidence, proof frequently characterized as so sufficiently clear, certain, and precise as to satisfy beyond reasonable doubt. Computer Programs Computer Programs are not patentable. They are protected instead as copyright works under Section 172.1 (n) of the IP Code. 4

See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874) C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 48 U.S.P.Q.2d (BNA) 1225 (Fed. Cir. 1998), cert. denied, 526 U.S. 1130, 119 S. Ct. 1804, 143 L. Ed. 2d 1008 (1999) 5

Case: State Street Bank & Trust Co. V Signature Financial Group, Inc., United States Court of Appeals, Federal Circuit,149 F.3d 1368, 47 U.S.P.Q.2d 1596, July 23, 1998.

Plant Varieties and Animal Breeds Protection of Plant Varieties is governed by the Plant Variety Protection Act of 2002, Republic Act No. 2168. Section 4 of the Act specifies the conditions for the grant of the plant variety protection: The Certificate of Plant Variety Protection shall be granted for varieties that are: ()New; Newness. — A variety shall be deemed new if the propagating or harvested material of the variety has not been sold, offered for sale or otherwise disposed of to others, by or with the consent of the breeder, for purposes of exploitation of the variety; ()In the Philippines for more than one (1) year before the date of filing of an application for plant variety protection; or ()In other countries or territories in which the application has been filed, for more than four (4) years or, in the case of vines or trees, more than six (6) years before the date of filing of an application for Plant Variety Protection. However, the requirement of novelty provided for in this Act shall not apply to varieties sold, offered for sale or disposed of to others for a period of five (5) years before the approval of this Act: Provided, That application for PVP shall be filed within one (1) year from the approval of this Act. () Distinct; Distinctness. — A variety shall be deemed distinct if it is clearly distinguishable from any commonly known variety. The filing of an application for the granting of a plant variety protection or for the entering of a new variety in an official register of variety in the Philippines or in any country, shall render the said variety a matter of public knowledge from the date of the said application: Provided, That the application leads to the granting of a Certificate of Plant Variety Protection or the entering of the said other variety in the official register of variety as the case may be. () Uniform; and Uniformity. — The variety shall be deemed uniform if, subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics. ()

Stable.

Stability. — The variety shall be deemed stable if its relevant characteristics remain

unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle. Under Section 36, in respect of the propagating materials, holders of a Certificate of Plant Variety Protection shall have the right to authorize any of the following acts: () Production or reproduction; () Conditioning for the purpose of propagation; () Offering for sale; () Selling or other marketing; ()Exporting; ()Importing; and ()Stocking for any purpose mentioned above. The holder may make his authorization subject to conditions and limitations. Doctrine of Equivalents Under Section 75.2 of the IP Code, for the purpose of determining the extent of protection confirmed by the patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only an the elements as expressed therein, but also equivalents. Under the doctrine of equivalents, an accused product that differs from the claim, and thus does not literally infringe, nonetheless infringes if its difference from that claim is insubstantial from the perspective of one of ordinary skill in the relevant art. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is the end of it. The doctrine of equivalents is founded on the theory that, if two devices do the same work in substantially the same way and accomplish substantially the same result, they are the same, even though they differ in name, form or shape.

Case: Pascual Godines vs. The Honorable Court of Appeals, Special Fourth Division and SVAgro Enterprises, Inc., G.R. No. 97343. September 13, 1993

Protection of Patent is measured by the Claims The claims of a patent are what define the scope of an invention. As such, claim validity must be determined on the basis of what is claimed since their purpose is to force a patentee to insert in claims those limitations and relationships regarded to be in the invention. While the language of a patent claim must be read in light of the specification and the file wrapper, the claim alone is the measure of the invention. Courts Cannot Expand the Claims

Where patent claim language is clear, it controls and may not be limited or distorted by resort to specifications, title, or drawings to ascertain the invention. Courts may not add to, or detract from, the claims matter not expressed or necessarily implied, or enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed. Determining Infringement of Claims Determining whether a patent claim has been infringed requires a two-step analysis: First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process. Claim construction is to be determined by the court. In construing the claims, the court looks to the claims, the specification, the prosecution history, and, if necessary, extrinsic evidence. Application of the properly construed claim to the accused device is a question of fact.

Cases

THIRD DIVISION [G.R. No. 126627. August 14, 2003.] SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE HONORABLE COURT OF APPEALS and TRYCO PHARMA CORPORATION, respondents. DECISION CARPIO MORALES, J p: Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of the laws of the state of Pennsylvania, United States of America (U.S.) and licensed to do business in the Philippines, filed on October 8, 1976, as assignee, before the Philippine Patent Office (now Bureau of Patents, Trademarks and Technology Transfer) an application for patent over an invention entitled "Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate." The application bore Serial No. 18989. ISCcAT On September 24, 1981, Letters Patent No. 14561 1 for the aforesaid invention was issued to petitioner for a term of seventeen (17) years. The letters patent provides in its claims 2 that the patented invention consisted of a new compound named methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals. Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures, distributes and sells veterinary products including Impregon, a drug that has Albendazole for its active ingredient and is claimed to be effective

against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats. Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City Regional Trial Court (RTC). 3 It claimed that its patent covers or includes the substance Albendazole such that private respondent, by manufacturing, selling, using, and causing to be sold and used the drug Impregon without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 4 as well as committed unfair competition under Article 189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark Law) for advertising and selling as its own the drug Impregon although the same contained petitioner's patented Albendazole. 5 On motion of petitioner, Branch 125 of the Caloocan RTC issued a temporary restraining order against private respondent enjoining it from committing acts of patent infringement and unfair competition. 6 A writ of preliminary injunction was subsequently issued. 7 Private respondent in its Answer 8 averred that Letters Patent No. 14561 does not cover the substance Albendazole for nowhere in it does that word appear; that even if the patent were to include Albendazole, such substance is unpatentable; that the Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole as its known ingredient; that there is no proof that it passed off in any way its veterinary products as those of petitioner; that Letters Patent No. 14561 is null and void, the application for the issuance thereof having been filed beyond the one year period from the filing of an application abroad for the same invention covered thereby, in violation of Section 15 of Republic Act No. 165 (The Patent Law); and that petitioner is not the registered patent holder. Private respondent lodged a Counterclaim against petitioner for such amount of actual damages as may be proven; P1,000,000.00 in moral damages; P300,000.00 in exemplary damages; and P150,000.00 in attorney's fees. DaTICE Finding for private respondent, the trial court rendered a Decision dated July 23, 1991, 9 the dispositive portion of which reads: WHEREFORE, in view of the foregoing, plaintiff's complaint should be, as it is hereby, DISMISSED. The Writ of injunction issued in connection with the case is hereby ordered DISSOLVED. The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby declared null and void for being in violation of Sections 7, 9 and 15 of the Patents Law. Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby directed to cancel Letters Patent No. 14561 issued to the plaintiff and to publish such cancellation in the Official Gazette. Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00 actual damages and P100,000.00 attorney's fees as prayed for in its counterclaim but said amount awarded to defendant is subject to the lien on correct payment of filing fees. SO ORDERED. (Emphasis supplied) On appeal, the Court of Appeals, by Decision of April 21, 1995, 10 upheld the trial court's finding that private respondent was not liable for any infringement of

the patent of petitioner in light of the latter's failure to show that Albendazole is the same as the compound subject of Letters Patent No. 14561. Noting petitioner's admission of the issuance by the U.S. of a patent for Albendazole in the name of Smith Kline and French Laboratories which was petitioner's former corporate name, the appellate court considered the U.S. patent as implying that Albendazole is different from methyl 5 propylthio-2-benzimidazole carbamate. It likewise found that private respondent was not guilty of deceiving the public by misrepresenting that Impregon is its product. The appellate court, however, declared that Letters Patent No. 14561 was not void as it sustained petitioner's explanation that Patent Application Serial No. 18989 which was filed on October 8, 1976 was a divisional application of Patent Application Serial No. 17280 filed on June 17, 1975 with the Philippine Patent Office, well within one year from petitioner's filing on June 19, 1974 of its Foreign Application Priority Data No. 480,646 in the U.S. covering the same compound subject of Patent Application Serial No. 17280. Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that Patent Application Serial No. 18989 was deemed filed on June 17, 1995 or still within one year from the filing of a patent application abroad in compliance with the one-year rule under Section 15 of the Patent Law. And it rejected the submission that the compound in Letters Patent No. 14561 was not patentable, citing the jurisprudentially established presumption that the Patent Office's determination of patentability is correct. Finally, it ruled that petitioner established itself to be the one and the same assignee of the patent notwithstanding changes in its corporate name. Thus the appellate court disposed: WHEREFORE, the judgment appealed from is AFFIRMED with the MODIFICATION that the orders for the nullification of Letters Patent No. 14561 and for its cancellation are deleted therefrom. TDAcCa SO ORDERED. Petitioner's motion for reconsideration of the Court of Appeals' decision having been denied 11 the present petition for review on certiorari 12 was filed, assigning as errors the following: I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCO'S "IMPREGON" DRUG, IS INCLUDED IN PETITIONER'S LETTERS PATENT NO. 14561, AND THAT CONSEQUENTLY TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT. II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO PRIVATE RESPONDENT TRYCO PHARMA CORPORATION P330,000.00 ACTUAL DAMAGES AND P100,000.00 ATTORNEY'S FEES. Petitioner argues that under the doctrine of equivalents for determining patent infringement, Albendazole, the active ingredient it alleges was appropriated by private respondent for its drug Impregon, is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. It cites the "unrebutted" testimony of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561 refers to the compound

Albendazole. Petitioner adds that the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical. Petitioner thus submits that the appellate court should have gone beyond the literal wordings used in Letters Patent No. 14561, beyond merely applying the literal infringement test, for in spite of the fact that the word Albendazole does not appear in petitioner's letters patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate. Petitioner likewise points out that its application with the Philippine Patent Office on account of which it was granted Letters Patent No. 14561 was merely a divisional application of a prior application in the U.S. which granted a patent for Albendazole. Hence, petitioner concludes that both methyl 5 propylthio-2benzimidazole carbamate and the U.S.-patented Albendazole are dependent on each other and mutually contribute to produce a single result, thereby making Albendazole as much a part of Letters Patent No. 14561 as the other substance is. Petitioner concedes in its Sur-Rejoinder 13 that although methyl 5 propylthio-2benzimidazole carbamate is not identical with Albendazole, the former is an improvement or improved version of the latter thereby making both substances still substantially the same. With respect to the award of actual damages in favor of private respondent in the amount of P330,000.00 representing lost profits, petitioner assails the same as highly, speculative and conjectural, hence, without basis. It assails too the award of P100,000.00 in attorney's fees as not falling under any of the instances enumerated by law where recovery of attorney's fees is allowed. ECcDAH In its Comment, 14 private respondent contends that application of the doctrine of equivalents would not alter the outcome of the case, Albendazole and methyl 5 propylthio-2-benzimidazole carbamate being two different compounds with different chemical and physical properties. It stresses that the existence of a separate U.S. patent for Albendazole indicates that the same and the compound in Letters Patent No. 14561 are different from each other; and that since it was on account of a divisional application that the patent for methyl 5 propylthio-2benzimidazole carbamate was issued, then, by definition of a divisional application, such a compound is just one of several independent inventions alongside Albendazole under petitioner's original patent application. 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, 15 this Court does not review them. From an examination of the evidence on record, this Court finds nothing infirm in the appellate court's conclusions with respect to the principal issue of whether private respondent committed patent infringement to the prejudice of petitioner. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. 16 In the case at bar, petitioner's evidence consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health Products Division, by which it sought to

show that its patent for the compound methyl 5 propylthio-2-benzimidazole carbamate also covers the substance Albendazole. From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is made of the compound Albendazole. All that the claims disclose are: the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the compound's being anthelmintic but nontoxic for animals or its ability to destroy parasites without harming the host animals; and the patented methods, compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. 17 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. 18 It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not determinative of Albendazole's non-inclusion in the claims of the patent. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioner's letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner's patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. cTCADI While petitioner concedes that the mere literal wordings of its patent cannot establish private respondent's infringement, it urges this Court to apply the doctrine of equivalents. 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. 19 Yet again, a scrutiny of petitioner's evidence fails to convince this Court of the substantial sameness of petitioner's patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. 20 In other words, the principle or mode of operation must be the same or substantially the same. 21 The doctrine of equivalents thus requires satisfaction of the function-means-andresult test, the patentee having the burden to show that all three components of such equivalency test are met. 22 As stated early on, petitioner's evidence fails to explain how Albendazole is in every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that Albendazole is an anthelmintic agent like methyl 5

propylthio-2-benzimidazole carbamate, nothing more is asserted and accordingly substantiated regarding the method or means by which Albendazole weeds out parasites in animals, thus giving no information on whether that method is substantially the same as the manner by which petitioner's compound works. The testimony of Dr. Orinion lends no support to petitioner's cause, he not having been presented or qualified as an expert witness who has the knowledge or expertise on the matter of chemical compounds. As for the concept of divisional applications proffered by petitioner, it comes into play when two or more inventions are claimed in a single application but are of such a nature that a single patent may not be issued for them. 23 The applicant thus is required "to divide," that is, to limit the claims to whichever invention he may elect, whereas those inventions not elected may be made the subject of separate applications which are called "divisional applications." 24 What this only means is that petitioner's methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct from the other inventions claimed in the original application divided out, Albendazole being one of those other inventions. Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not have been the subject of a divisional application if a single patent could have been issued for it as well as Albendazole. The foregoing discussions notwithstanding, this Court does not sustain the award of actual damages and attorney's fees in favor of private respondent. The claimed actual damages of P330,000.00 representing lost profits or revenues incurred by private respondent as a result of the issuance of the injunction against it, computed at the rate of 30% of its alleged P100,000.00 monthly gross sales for eleven months, were supported by the testimonies of private respondent's President 25 and Executive Vice-President that the average monthly sale of Impregon was P100,000.00 and that sales plummeted to zero after the issuance of the injunction. 26 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. 27 The testimonies of private respondent's officers are not the competent proof or best evidence obtainable to establish its right to actual or compensatory damages for such damages also require presentation of documentary evidence to substantiate a claim therefor. 28 In the same vein, this Court does not sustain the grant by the appellate court of attorney's fees to private respondent anchored on Article 2208 (2) of the Civil Code, private respondent having been allegedly forced to litigate as a result of petitioner's suit. Even if a claimant is compelled to litigate with third persons or to incur expenses to protect its rights, still attorney's fees may not be awarded where no sufficient showing of bad faith could be reflected in a party's persistence in a case other than an erroneous conviction of the righteousness of his cause. 29 There exists no evidence on record indicating that petitioner was moved by malice in suing private respondent. cCaATD

This Court, however, grants private respondent temperate or moderate damages in the amount of P20,000.00 which it finds reasonable under the circumstances, it having suffered some pecuniary loss the amount of which cannot, from the nature of the case, be established with certainty. 30 WHEREFORE, the assailed decision of the Court of Appeals is hereby AFFIRMED with MODIFICATION. The award of actual or compensatory damages and attorney's fees to private respondent, Tryco Pharma Corporation, is DELETED; instead, it is hereby awarded the amount of P20,000.00 as temperate or moderate damages. SO ORDERED. Puno, Panganiban, Sandoval-Gutierrez and Corona, JJ ., concur.

[Philippine Patent Office Decision No. 247. June 22, 1981.] BASILIO C. PRESTO, petitioner, vs. RENATO C. ANGEL and REYNALDO C. ANGEL, respondents-patentees. Inter Partes Case No. 1359 Petition for Cancellation: Letters Patent No. UM-2520 Issued: May 26, 1977 Patentee: Renato C. Angel and Reynaldo C. Angel For: AN IMPROVED PALAY THRESHER DECISION This is a cancellation proceeding instituted by Basilio C. Presto, a Filipino citizen and a resident of Poblacion, Matalam, North Cotabato, seeking the cancellation of Letters Patent No. UM-2250 granted to Renato C. Angel and Reynaldo C. Angel, both Filipino citizens, the former residing at Poblacion Cabatan, North Cotabato, and the latter at Milang, North Cotabato. cdasia The records show that on July 20, 1976, Respondents Renato C. Angel and Reynaldo C. Angel filed with this Office an application for a grant of letters patent for an "Improved Palay Thresher", which application ripened into Letters Patent No. UM-2520 granted by the Philippine Patent Office on May 26, 1977. Claiming to be damaged by the grant of said Letters Patent No. UM-2520, Basilio Presto, the herein Petitioner, filed on March 21, 1980 a petition seeking for the cancellation of said Letters Patent No. UM-2520. The statutory grounds relied upon by the Petitioner in his petition for cancellation are as follows: "1. The utility model covered by said Letters Patent No. UM-2520 is not new or patentable under Sec. 9 and Sec. 55 of Republic Act No. 165, as amended; 2. The persons to whom the above patent was issued were not the true and actual authors of the utility model in question or did they derive their rights from the true and actual author thereof."

For failure of the Respondents-Patentees to file their Answer in the above-entitled case, and upon motion of counsel for the Petitioner, Respondents-Patentees were declared in default; hence, Petitioner was allowed to present his evidence ex parte in accordance with the Rules of Court. cdasia The petitioner has shown that he is a holder of Letters Patent No. UM-1003 issued by the Philippine Patent Office on July 14, 1972 which was extended under Certificate of U.M. Extensions No. 287 which the Petitioner claims to protect his "threshing machine comprising of the essential parts such as pair of threshing drums and askew rows of twin solid teeth or beaters, arcuate or fixed screen below the said pair of drums assembly of two parts or sections, one section being especially and transversely bent steel plate while the other section is a separator, said thresher having also a grain return through. This thresher also has a hay shaker disposed behind the threshing chamber which is actuated upon by an eccentric shaft in order that it will have a tossing and shaking motion, said thresher having grain gutters underneath said sieve separators and auger disposed with said grain gutter, a blower which is also disposed underneath said sieve, the relative position and combination and arrangements of these essential parts, and also the motion of these parts. cdtai On the other hand, the Petitioner also alleges that "the specification of Renato and Reynaldo Angel stated that their utility model could take a threshing chamber of any construction which insinuates that it may be of any combination whether of an expired patent utility model or any protected utility model for that matter. It has also shown that the utility model that they sought to be patented and protected has a strainer or sieve disposed below the threshing chamber. That they also have shown a pair of grain gutters which catches the falling grain from the separator of the said sieve; that it has also straw shakers which even if it has been stated that it is in pair but the relative position and the function of which is the same as in Petitioner's patented utility model so that in the actual manufacture of said utility model the Respondents have adopted the entire essential parts of Petitioner's utility model together with their relative position and their motion. Petitioner claims that although Respondent's patent specification is differently worded, the essential parts of Respondents' utility model are also present in Petitioner's utility model. cdasia Petitioner also further alleges that Respondents Renato C. Angel and Reynaldo C. Angel are brothers known to him; that he was granted patent Utility Model No. 1003 as early as July 14, 1972 with certificate of extension No. 287 for a five-year period up to July 14, 1982. Petitioner claims that Respondent Renato Angel signed a promissory document that he will desist from doing an unlawful act of copying Petitioner's utility model. cdtai Petitioner also alleges that he tried on fine wire similar to that mentioned in the specification and drawings of the Respondent and that he was unable to make this successfully finding that the wire mesh has no practical utility. According to his experience with the Respondent-Patentee's utility model, when a mass of grain coming from the directly dressed palay mixed with shaff, broken stalks and broken leaves, the wire mesh will catch those foreign matters and eventually clog the opening of this wire mesh so only a few cavans of clean palay gathered from

said mixed grain, the opening shall have been fully clogged up and this whole mass of mixed grain will now fall to the rear of the threshing machine without allowing the grains to fall therefrom so that this particular material has no practical utility as far as this portion of Respondents-Patentees' thresher is concerned. aisadc Petitioner also claims that in Respondents' specification and drawings (Figure 3), this particular material again used by the Respondents as the carriage for the platform is again of no practical utility; that when Petitioner experimented on this particular portion also using the same materials, he found out that there is no way of protecting this particular portion in order that this machine of Respondents employ blower in driving or separating the heavy grain from the foreign matters, those foreign matters and even the heavy grains always could find a way to this particular portions wherein it will reside on the support of the bearings whereby they become wedged. Meaning to say that when they are wedged the bearing is blocked, thus stopping the motion of the primary platform or the screen. For this reason, Petitioner claims that the Respondents were forced to stop using this material in supporting the primary platform as stated in their specification, showing again that their patent has no practical utility. Referring to drawing (Figure 3) of the Respondents, Petitioner alleges that he has observed in this particular portion that while the straw of hay shaker has been installed adjacent to each other, they have to rub against each other on the center during the operation and that when this space has been filled up with foreign matters, it will clog up and the machine will stop operation. cdasia I have carefully gone over the records of this case particularly the specifications and drawings submitted by both parties and I am convinced that the allegations made by the Petitioner in his petition for cancellation are well-taken. WHEREFORE, Letters Patent No. UM-2520 issued on May 26, 1977 in favor of Respondents-Patentees Renato C. Angel and Reynaldo C. Angel for an "Improved Palay Thresher" is hereby ordered CANCELLED. SO ORDERED. (SGD.) DEMETRIO T. WENDAM Director

[IPO Decision No. 082. June 28, 2007.] MICHIGAN ENTERPRISES CORP., petitioner, PHILIPPINES, INC., respondent-patentee. IPC No. 13-2005-00115 Petition for Cancellation Registration No. 3-2003-000535 (Industrial Design) Date Issued: May 19, 2005 Title: "PLASTIC TRASH CONTAINER"

vs.

INCA

PLASTICS

DECISION For decision is a Petition for Cancellation filed by Michigan Enterprises Corporation, a corporation duly organized and existing under Philippine laws, with place of business at Bagong Filipino Industrial Compound, M. Gregorio Street, Canumay, Valenzuela City against Industrial Design Registration No. 32003-000535, for a Plastic Trash Container, issued on May 19, 2005 to Inca Plastic Philippines, Inc., with address at 23 West Service Road, Cupang, Muntinlupa City, Metro Manila. HTCDcS The petitioner relied on the following grounds for cancellation: a) The industrial design for a PLASTIC TRASH CONTAINER registered under Industrial Design Registration No. 3-2003-000535 is not new and/or original, and therefore, not registrable under Sections 112 and 113 of Republic Act No. 8293; b) Industrial Design Registration No. 3-2003-000535 was secured fraudulently; c) Ralph A. Cabrera, the alleged designer, is not the first and/or original designer of the industrial design for a PLASTIC TRASH CONTAINER registered under Industrial Design Registration No. 3-2003-000535; d) The issuance and continued existence of Industrial Design Registration No. 3-2003-000535 has caused and will continue to cause damage and prejudice to petitioner. CHaDIT "3.1.5. Respondent on the other hand states the following: 3.1.5.1.1. It has manufactured and sold the Plastic Trash Container earlier than petitioner Michigan Enterprise Corporation. In fact, the respondent's employees Norvito Ecat and Romulo Rapas has executed affidavits attesting to the fact that they worked as Finisher/Grinder in the Mold Department of the company; that it was sometime in January 1992 that one of the aluminum molds which was fabricated was the iron trash bin classified as TC60 by the respondent company; that they were among the two (2) who started and completed the grinding and finishing of the mold, after which the same TCT60 was commercially produced. The affidavits are attached hereto and marked as Annexes "1" and "2". 3.1.5.2. Another employee, Hermiline Laviña, presently Vice President for Sales and Marketing of the Respondent, states that she joined the respondent company in April 15, 1993 as product managers, and as such, prepared the marketing plan for the company trash bins; and that the marketing plan was supported by advertisements by August 1993. A copy of her affidavit is attached hereto as Annex "4", and the Affidavit of Publication from Manila Bulletin to show that the advertisements were published August 16, 1993, and copies of Manila Bulletin advertisements are marked as Annexes "5" to "5-b". The sales invoice for the advertisement materials for the environmental bins dated 14 September 1993 are attached hereto as Annex "6". CSHcDT 3.1.5.3 Aside From the foregoing written testimonies and relevant supporting documents, the respondent submits the following: a. PEPSICO INC.; Confirmation Order for 130 pieces TC60SDS, dated 29 November 1993.

b. RFC Supermarket Purchase Order No. 4768, dated 16 June 1994; c. Philippine Seven Corporation Purchase Order No. 21833, dated 7 July 1994; d. The Exelsior Purchase Order No. 425, dated 20 July 1994; e. Marymount School Purchase Order No. 01088; f. INCA Delivery Receipt No. 3740 to Cebu City Hall, dated 18 December 1995; cDCaHA g. Cebu Midtown Hotel Purchase Order No. 012657, dated 18 December 1995; h. Delivery Receipt to Sterling Tobacco, dated 4 January 1996; i. INCA Sales Invoice No. 14611 to Ms. Josephine Isidro (Shell Station Dealer), dated 27 August 1999; j. INCA Sales Invoice No. 14728 — Calbayog Shell Station, dated 9 September 1999; k. INCA Sales Invoice No. 15770 — Kimberly Clark Philippines, Inc., dated 7 April 2000; l. INCA Sales Invoice No. 15795 — SM Prime Holdings, Inc., Fairview Storyland, dated 12 April 2000; m. INCA Sales Invoice No. 15922 — Wet Consultancy, dated 17 May 2000; cEAIHa n. INCA Sales Invoice No. 19263 — Ace Hardware Philippines, Inc., dated 26 January 2002; o. INCA Sales Invoice No. 19144 — JAE Philippines, Inc., dated 09 January 2002; p. INCA Sales Invoice No. 22317 — Ateneo de Manila University, dated 26 June 2003; q. INCA Sales Invoice No. 22919 — Our Lady Chartres Diagnostic Center, dated 25 September 2003; r. INCA Sales Invoice No. 236000 — General Service Office Panlalawigan, Capitol Building, Lingayen, Pangasinan, dated 28 January 2004; s. INCA Sales Invoice No. 25302 — Sojitz Philippines Corporation, dated 16 October 2004; t. INCA Sales Invoice No. 25874 — Kimberly Clark Philippines, Inc., dated 29 January 2005; and u. INCA Sales Invoice No. 26320 — St. Joseph's College, dated 21 April 2005. IcTEAD All the foregoing are hereto attached as Annexes "7" to "7-T". These Annexes clearly and indubitable shows that respondent has been engaged in the manufacturing, sales and distribution of the industrial design for Plastic Trash Container, which is now registered as Industrial Design Registration No. 3-2003000535. 3.1.5.4 With regard to the petitioner's claim that Himalaya Manufacturing is its sister company, respondent put forward the following; a. There is nothing on record which shows or proves that petitioner is a "sister company" of Himalaya Manufacturing. What is has presented are the Articles of Incorporation of both companies, and all it shows that there are

common stockholders of said corporations. But since these are two different corporate and juridical entities, then the proof of such a relation must be shown. cADSCT b. There is likewise no document which shows that petitioner took over the business of Himalaya Manufacturing, or that the latter sold to any of its business of manufacturing and selling of products such as the trash bins petitioner claims to be similar to that registered by respondent. There is no basis then for it to claim that all prior business transactions and concerns of Himalaya Manufacturing is owned by petitioner. c. Further, verification with the Securities and Exchange Commission (SEC) shows that both companies are still in existence and operating, and have submitted their respective General Information Sheets (GIS) for the current year. An examination of the GIS of Michigan and Himalaya shows that it has not declared or claimed any relationship with each other, or any other company. Attached are certified true copies of the GIS of petitioner and Himalaya, marked as Annexes "8" and "9". EAcIST 3.2 2nd ground: Industrial Design Registration No. 3-2003-000535 was secured fraudulently. 3.2.1 Although petitioner accuses respondent of securing the industrial design registration fraudulently, it has failed to duly provide the details of the fraud, or to present clear and indubitable circumstances, arguments of proof which would support its allegations of fraud. At this juncture, respondent will be merely speculating as to what the petitioner is referring to with respect to its allegations of fraud. 3.2.2 And since it is petitioner which has alleged fraud to have been committed by INCA Philippines, then it has the burden to prove such an allegations; it is not incumbent on the respondent to come up with any explanation to dispute fraud, especially when it is not aware what and how the fraud came about or was committed. This is inconsonance with Rule 131 of the Revised Rules on evidence which state: Burden of Proof and Presumptions Sec. 3 Disputable presumptions. — The following presumptions are satisfactory if uncontradicted, but may be contradicted and overcome by other evidence: AECacS (a) That a person is innocent of crime or wrong; xxx xxx xxx 3.3 3rd Ground: Ralph A. Cabrera, designer, is not the first and/or original designer of the industrial design for a PLASTIC TRASH CONTAINER registered under Industrial design Registration No. 3-2003-000535. 3.3.1 Again, as discussed in the previous paragraph, petitioner makes a bare allegation or accusation, this time directed at Mr. Cabrera, the designer of the industrial PLASTIC TRASH CONTAINER. Petitioner claims that the registered design registered is identical and/or substantially similar to an industrial design already in existence. This is the substance of its allegation that the industrial design registered under Industrial Design Registration No. 3-2003-000535 is not the first and/or original.

3.3.2 The same has been fully discussed in the previous paragraph, with the showing that it has been the Patentee which has been first one that designed and used the registered design. The discussion is hereby repleaded and adopted herein. DEICaA 3.4 4th Ground: The issuance and continued existence of Industrial Design Registration No. 3-2003-000535 has caused and will continue to cause damage to petitioner. Respondent is totally surprise by this ground relied upon by the petitioner, since this is not a ground for the cancellation of the industrial design. The grounds for cancellation of design registration are enumerated under Republic Act No. 8293, which provides that: Sec. 120. Cancellation of Design Registration. — 120.1. At any time during the term of industrial design registration, any person upon payment of the required fee, may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: (a) If the subject matter of the industrial design is not registrable within the terms of Section 112 and 113; (b) If the subject matter is not new; or (c) If the subject matter of the industrial design extends beyond the content of the application as originally filed. The main issue to be resolved is whether the industrial design registration is new? Corollary issues are whether registration was obtained fraudulently and whether Ralph A. Cabrera is the original designer of the subject industrial design. The pertinent law on the matter, Section 20, Republic 8293 provides: "Section 20. Cancellation of Design Registration. — 120.1 — At any time during the term of the industrial design registration, any person upon payment of the required fee, may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: (a) if the subject matter of the industrial design is not registrable within terms of Sections 112 and 113. cSTCDA (b) If the subject matter is not new, . . ." An industrial design is not considered new, and is therefore unregistrable if it forms part of prior art. The law provides: "Section 24. Prior Art. — Prior art shall consist of: 24.1 Everything which has been made available to the public anywhere in the world before the filing date or the priority date of the application claiming the invention; and . . ." At the outset, this Bureau observes that in its Answer, respondent admits that it manufactured and sold the plastic trash container subject of the industrial design. Respondent avers: "3.1.5. Respondent on the other hand states the following: 3.1.5.1.2. It has manufactured and sold the Plastic Trash Container earlier than petitioner Michigan Enterprise Corporation. In fact, the respondent's employees Norvito Ecat and Romulo Rapas has executed affidavits attesting to the fact that they worked as Finisher/Grinder in the Mold Department of the company; that it was sometime in January 1992 that one of the aluminum molds

which was fabricated was the iron trash bin classified as TC60 by the respondent company; that they were among the two (2) who started and completed the grinding and finishing of the mold, after which the same TCT60 was commercially produced. The affidavits are attached hereto and marked as Annexes "1" and "2". HDCAaS 3.1.5.2. Another employee, Hermiline Lavina, presently Vice president for Sales and Marketing of the respondent, states that she joined the respondent company in April 15, 1993 as product managers, and as such, prepared the marketing plan for the company trash bins; and that the marketing plan was supported by advertisements by August 1993. A copy of her affidavit is attached hereto as Annex "4", and the Affidavit of Publication from Manila Bulletin to show that the advertisements were published August 16, 1993, and copies of Manila Bulletin advertisements are marked as Annexes "5" to "5-b". The sales invoice for the advertisement materials for the environmental bins dated 14 September 1993 are attached hereto as Annex "6". 3.1.5.3. Aside from the foregoing written testimonies and relevant supporting documents, the respondent submits the following: a. PEPSICO INC., Confirmation Order for 130 pieces TC60SDS, dated 29 November 1993; b. RFC Supermarket Purchase Order No. 4768, dated 16 June 1994; c. Philippine Seven Corporation Purchase Order No. 21833, dated 7 July 1994; d. The Exelsior Purchase Order No. 425, dated 20 July 1994; e. Marymount School Purchase Order No. 01088; f. INCA Delivery Receipt No. 3740 to Cebu City Hall, dated 18 December 1995; g. Cebu Midtown Hotel Purchase Order No. 012657, dated 18 December 1995; h. Delivery Receipt to Sterling Tobacco, dated 4 January 1996; i. INCA Sales Invoice No. 14611 to Ms. Josephine Isidro (Shell Station Dealer), dated 27 August 1999; j. INCA Sales Invoice No. 14728 — Calbayog Shell Station, dated 9 September 1999; k. INCA Sales Invoice No. 15770 — Kimberly Clark Philippines, Inc., dated 7 April 2000; l. INCA Sales Invoice No. 15795 — SM Prime Holdings, Inc., Fairview Storyland, dated 12 April 2000; m. INCA Sales Invoice No. 15922 — Wet Consultancy, dated 17 May 2000; n. INCA Sales Invoice No. 19263 — Ace Hardware Philippines, Inc., dated 26 January 2002; o. INCA Sales Invoice No. 19144 — JAE Philippines, Inc., dated 09 January 2002; p. INCA Sales Invoice No. 22317 — Ateneo de Manila University, dated 26 June 2003; This admission is fatal to its defense. The evidence showing that the plastic trash container has been in existence and sold on a commercial scale years before the

application for registration of that exact industrial design with the Intellectual Property Office shows that what respondent applied for as an industrial design for "PLASTIC TRASH CONTAINER" was no longer new at the time Respondent applied for its registration. Lack of novelty renders an industrial design unregistrable under the Intellectual Property Code. THCSEA Respondent's witness Norvito Ecat, in his affidavit (Exhibit "I") stated: "6. Aside from the TC 60 bin, several variants of the same design were fabricated from 1993-1995 and these were the TC 15, TC40, TC120 all shaped and modeled from the original TC 60 design. As before; I was one of the moldshop personnel assigned to do the grinding and finishing all these molds. 7. That the TC 60 bin and other variants mentioned in the above paragraphs is the same TC60 bin design now being disputed with the Intellectual Property Office (I.P.O.)" Another witness, Romulo D. Rapas similarly testified of the production of the plastic trash container way back in 1992. He stated in his affidavit (Exhibit "2"): "5. Upon completion of the grinding and finishing of the mold, I witnessed the plastic prototyping and actual commercial production of the TC 60 in our manufacturing plant. I did some minor repair and modification of the mold during the prototyping and commercial production since 1993 and up to the present. AICEDc 6. Aside from the TC 60 bin, several variants of the same design were fabricated from 1993-1995 and these were the TC 15, TC40, TC120 all shaped and modeled from the original TC 60 design. As before, I was one of the moldshop personnel assigned to do the grinding and finishing all these molds. 8. That the TC 60 bin and other variants mentioned in the above paragraphs is the same TC60 bin design now being disputed with the Intellectual Property Office (I.P.O.)" Witness Hermiline Lavina, in her affidavit (Exhibit "4") testified as to the commercial sale of the trash bin referred to as TC 60 and its advertisement as part of the company's selling strategy. The affidavit of publication in the Manila Bulletin was submitted as evidence. (Exhibit "5") Exhibit "5"-A is the actual newspaper advertisement showing an illustration of several waste disposal bins which include the plastic trash container which looks the same as the plastic trash container depicted in the industrial design registration of respondent. She testified: "4. After the company started with its selling strategy, the same was later supported with advertisements so by August 1993, I caused the publication of the advertisement of the TC 60 trash bins together with other trash bins. TEacSA 5. After a while, the strategy was successful since the company started receiving orders, most noticeable of which came from Pepsi Bottling Company which was still at their plaint in Aurora Blvd. at that time. Because of the positive market response of the TC 60 bin design, other variants of the same design such as TC 15, TC 40, TC 120 were all produced and sold between 1993 to 1995." In fact, respondent does not deny that the plastic trash container it has been manufacturing, selling and distributing are the products which depict the registered industrial design no. 3-2003-000535.

Respondent submitted Sales invoices (Exhibit "&" and sub-markings) which show the sale of the plastic trash containers. Exhibits "7" to "7"-O are various sales invoices whose dates bear the year 1993 to June 26, 2003. These all antedate the filing date of respondent's application for registration on September 1, 2003. The relevant inquiry is whether there was a definite sale or offer for sale of the claimed invention prior to the critical date, defined as one year prior to the U.S. filing date to which the application was entitled. The foremost purpose of the onsale bar is to "prevent inventors from exploiting the commercial value of their inventions while deferring the beginning of the statutory term." (Wayne K. Pfaff v. Wells Electronics, Inc. USCA Federal Circuit, September 8, 1997.) aDTSHc The on-sale bar represents a balance of the policies of allowing the inventor a reasonable amount of time to ascertain the commercial value of an invention, while requiring prompt entry into the patent system after sales activity has begun. Thus the statute limits the period of commercial sale or offers of sale of an invention to one year before, before the patent application must be filed or forever barred. (Sed-flex, Inc. v. Athletic Track and Court Construction, USCA Federal Circuit, October 24, 1996) It is also respondent's contention that its sales ante-date the sales made by petitioner's sales of plastic trash containers were only shown through purchase order dated January 29, 2001. Respondent argues that Michigan and Himalayas are not the same entities. This supposition belies any claim by petitioner that advertisements by Himalayas Manufacturing in a telephone directory shows use, manufacture and distribution as its own. Whether the two corporate entities are related is immaterial to our finding that what was being sold by these entities are plastic trash containers bearing an similar if not identical design with the design belatedly registered by respondent only in September 1, 2003. Petitioner's brochure printed on April 25, 2001 of Exhibit "D" shows a pictorial representation of a plastic trash bin; "E"-1 to "E"-8 are advertisements in the yellow pages of the PLDT Metro Manila Telephone Directories from the years 1995 to 2003 which includes illustrations of the trash bins. Petitioner also submitted advertisements of Unimagna Phils., Inc. (Exhibit "J" and sub-markings in the PLDT Metro Manila Telephone Directories from the years 1998 to 2003 of similarly designed trash bins. Finally, we note the photographs attached to petitioner's witness' Rosemarie Ong's affidavit (Exhibit "L") which show hooded plastic trash bins sold by petitioner. All in all, this Bureau notes that when goods sold and advertised by others entities are compared with the registered design of respondent, the design look essentially the same if not identical. CHDTEA We fittingly apply the "ordinary observer test" utilized in the case of Gorham Mfg. v. White, 81 U.S. 511 (1871) in concluding that the plastic trash bins sold by Himalaya Manufacturing Corp. or Michigan Enterprises Corp. are identical and the same the plastic trash container registered by respondent. "We do not say that in determining whether two designs are substantially the same, differences in the lines, the configuration, or the modes by which the aspects they exhibit are not considered; but we think that the controlling consideration is the resultant effect. . . .

Plainly, it must be the sameness of appearance and the mere differences of lines and in the drawing or sketch, a greater or smaller number of lines, or slight variances in configuration, if sufficient to change the effect upon the eye, will not destroy the substantial identity. . . . We hold, therefore, that if, in the eye of the ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, including him to purchase one supposing it to be the other, the first one patented is infringed by the other." aTcIAS If the two designs are so alike that one may readily be taken as the other by an ordinary observer, the earlier constitutes an anticipation of the later, notwithstanding the differences in detail and in non-essential matters. (Sagandorth v. Huger, 95 FED. 178). The import of all these earlier sales is that the industrial design registered by herein Respondent titled "PLASTIC TRASH CONTAINER" is no longer new because it has become available to the public. Having said this, this Bureau can only conclude that the design for Plastic Trash Container designed by Ralph Cabrera subject of Industrial Design Registration No. 3-2003-000535 issued on May 19, 2005 is no longer novel and therefore, unregistrable under Patent law. However, there is insufficient evidence to prove that the designer fraudulently obtained its registration. The Supreme Court in Angelita Manzano v. Court of Appeals and Melecia Madolaria, G.R. No. 113388, September 5, 1997, held: "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 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 be new to the world." DaTHAc WHEREFORE, in view of the foregoing, the Petition for Cancellation filed by Michigan Enterprises Corporation against Industrial Design Registration No. 32003-000535, for a Plastic Trash Container, is hereby GRANTED. Consequently, Industrial Design Registration No. 3-2003-000535, for a Plastic Trash Container issued on May 19, 2005 to Inca Plastic Philippines, Inc. is hereby CANCELLED. Let the filewrapper of subject: Industrial Design Registration No. 3-2003-000535 together with a copy of this DECISION be forwarded to the Bureau of Patents for appropriate action. cHaADC SO ORDERED. Makati City, June 28, 2007.

[BPTTT Decision No. 01 (PAT). January 6, 1993.] DR. ANTONIO F. MATEO, petitioner, vs. BEATRIZ CHUA SENG SO, respondent. Inter Partes Case No. 3560 Petition for Cancellation: Letters Patent No. UM-6780 Issued: March 30, 1989 Patentee: Beatriz Chua Seng So For WATER METER COUPLING DETECTOR DECISION This refers to a petition for cancellation of Letters Patent No. UM-6780 issued to Respondent Beatriz Chua Seng So on 30 March 1989 and entitled Water Meter Coupling Detector. cdasia Petitioner, Dr. Antonio F. Mateo, a resident of 9-E Mother Ignacia Avenue, Diliman, Quezon City filed this Petition on 26 June 1990 and alleged the following grounds for cancellation, to wit: "1. That the utility model is not new and is of no practical utility as required by Section 55 of the Republic Act No. 165 as amended by Republic Act No. 864. 2. That the person whom the patent was issued is not the first, original, true and actual maker of the utility model (Republic Act No. 165, Section 28, as amended by Republic Act No. 864)." Furthermore, Petitioner averred that he shall rely on the following facts to support his Petition for Cancellation, to wit: "1. That I am true, original and actual maker of the utility model from whom Ms. Chua Seng So fraudulently derived her utility model as evidenced by my Letters Patent No. UM-5258 entitled "WATER METER PROTECTOR" granted by your Office on May 25, 1983 and extended on may 30, 1988. 2. That Ms. Chua Seng So's utility model is not new since even before the application of her patent, may device was publicly known. 3. That my utility model, WATER METER PROTECTOR, has been a 1st Prize Awardee during the 1984 National Inventors Week Contest (see Annex A) and was given a Presidential and Merit Award in the same year as evidenced by (Annex B). 4. That my WATER METER PROTECTOR is widely known and used by Water Districts all over the country since 1984. In her Answer filed on 30 August 1990, Respondent-Patentee denied the material allegations of the aforesaid Petition and raised the following special and affirmative defenses: "8. The registration and issuance of respondent's questioned Letters Patent were in accordance with the law, that is, it was properly examined by the Bureau of Patents, Trademarks and Technology Transfer according to the requirements of R.A. 165 and of the Rules of Practice in Patent Cases, which examination includes among others, the citation of references (which in turn included or made mention of petitioner's letters patent), recommended for allowance after a thorough and finally, issued the Letters Patent. All these would show that

respondent's products is patentable, notwithstanding petitioner's previously issued Letters Patent, Because otherwise, the Bureau would not have issued respondent's Letters Patent; 9. Respondent's utility model is "new", and therefore respondent is the first, original, true and actual maker of the product, because before the application for patent, it has not been publicly known or publicly used in the country, nor described in a printed publication or publications circulated within the country, nor substantially similar to any other utility model so known, used or described within the country. 10. As can be seen from comparative pictures of petitioner's and respondent's patented products, attached hereto as Annexes "1" to "5", petitioner's product is very different from and not similar with, whether substantially or otherwise, respondent's product, in the following manner: Petitioner's Product Respondent's Product a)

made of either polyprooylene/polyethylene polyethylene or polybutylene

b)

the external shape is circular b) hexagonal

c)

comes in only one (1) c) comes in three (3) color — black colors — blue, to indicate that the meter where it is attached is in order; yellow to indicate that the meter has once been tampered; and red, to indicate that the meter has been tampered more than once

d)

secured by two (2) ordinary d) screws screws nor by seals but by a special crimping device

e)

a) made of ABS (Accrylonitrile Butadiene Styrene) the external shape is

and e) not secured by

bound by an alleged tamper -proof seal In sum, respondent's product is very different from that of the petitioner in materials used, design structure, construction, features, color and purpose. 11. Respondent's product is of substantial practical utility because it acts as a tamper-proof protector for water coupling of various sizes.

The basic question to be resolved is whether or not Letters Patent UM-5258 issued to the herein Petitioner could be considered a "prior art" so as to bar the issuance of Letters Patent UM-6780? If the answer to this question is in the affirmative, then Letter Patent UM-6780 should be Cancelled, otherwise not. Petitioner's Letter Patent UM-5258 is directed to a construction of a water meter coupling protector. Respondent's Letter Patent No. UM-6780 also relates to the same subject matter. To show the similarities of the two models, the Petitioner submitted drawings of the following: 1.) a pair of identical upper and lower bodies, each provided with a downward directed side flanges, having semi circular openings, to define therein a chamber; and 2.) a pair of identical horizontal end flanges adjacently disposed in both ends thereof. The Petitioner averred that the only difference between the two models is the introduction of the hollow male projector integrally molded on the upper face of one of the adjacent end flanges and a hollow female projection on the lower face of the other end flange. He also introduced actual samples of the two utility models. Respondent-Patentee, also formally offered in evidence the actual sample of the products covered by the two utility models to show their alleged differences. In addition, Respondent-Patentee introduced a copper wire seal and a lead seal attached to the upper wire (Exhibits "9" and "10") used in the Petitioner's product to show that the Petitioner's Patented product is sealed by a copper wire which is not found in Respondent's Patented product. A drawback was discussed in the Petitioner's specification the petitioner, viz: "With my utility model of this meter protector 10, these tail pieces 20 can be totally enclosed by the protector 10, provided thru with a wire-lead seal (not shown) and the protector positively screwed together as shown in Figure 3 to totally enclose the connects nut and prevent the removed of the water meter. To be more positive, the head ends of the screw inside the screw holes can be plogged with epoxy substance, such that only an intentional unscrewing of the screw will allow the removal of the protector and also the connector nut 20 to indicate an illegal act by a person. Even with the seal broken, the protector 10 is still intact. (Emphasis supplied)" Consequently, all it takes to tamper with the water meter is the removal of the screw above-mentioned. To conceal such an act, the consumer would just replace the screw after the meter has been tampered with so that a water-meter reader would not notice it. cdasia A solution to this draw back was presented by the Respondent-Registrant in her specification, to wit: Attempts have been made to devise a positive sealing of the meter which is safe from accidental destruction. As exemplified in Patent Nos. UM-5258 and UM6357 issued to Antonio Mateo and Tan Leong Tat, respectively, both patents employ complemental cylindrical bodies to enclose the coupling nuts of the water meters and fastened together by means of screws. The following drawbacks of said devices have been observed: 1. the fastening screws which are used for purposes of re-usability of the device allow easy tampering of the meter, hence not positive and perfectly sealproof.

2. expensive in its manufacture in terms of labor and material. The present utility model seeks to remedy and overcome the aforementioned drawbacks. It is then an object of this utility model to provide a water coupling protector which is unique, novel and very simple. An important object of this utility model is to provide a water meter coupling protector which is seal-proof, reliable and very effective such that when tampered with it could no longer be reused. A specific object of this utility model is to provide a water meter coupling protector wherein the fastener used to secure said protector is in the form of integrally molded hollow male and female projections to forms rivet-like fasteners which when tampered with becomes useless, hence a positive indication of a tampered meter". During the examination stage of the Respondent's patent, the issue of its similarity to that of the Petitioner's Patent was raised and squarely passed upon in favor of the Respondent. There is no reason to alter the conclusion we made then. The patentable subject matter of the Respondent's utility model lies in the construction of the male projection and a female projection on the adjacent end flanges of said upper and lower bodies whereby said male projections snugly fits in the said female projection when pressed together. In Section 55 of R.A. 165, it provides that any new model of implements or tools or of any industrial product, which does not possess the quality of invention but which is of practical utility by reason of its construction may be protected by the author thereof by a patent for a utility model. In the case at bar, it cannot be denied that the construction of a water meter protector made by the respondent out of a male and female projections to form rivet like fasteners is not described in the utility model the petitioner or other prior art. Hence, it satisfies the first requirement of patentability which is novelty. The next question to be resolved is whether or not Respondent's model possesses practical utility. A careful analysis of the drawback set forth in petitioner's utility model and the solution thereof in Respondent's patent an affirmative reply. The introduction of the aforesaid male and female projections in Respondent's, water meter reader would facilitate detection of tampering. If the projections are intact, no tampering has If the same had been destroyed, obviously the meter has been tampered. In Samson vs. Tarroza, 28 SCRA 792, the Honorable Supreme Court held that: "Petitioner was, on May 22, 1958, awarded Utility Model patent No. 27 for the above type of wheelbarrow which as noted in the decision, "consists of a wheeled carriage base and an upper pivoted and detachable carrying tray. The carriage base is comprised of a wheel and two equal lengths of continuous pipes bent to provide wheel forks at the front and at the rear to support the back portion of the tray, with the ends of the pipes being adopted as the carrying handles for the wheelbarrow. The two pipes thus bent are joined together by cross braces in the front and at the rear. The tray is removably pivoted at its front end through hook catches at its bottom corners, to the forward cross brace, and its rear end rests solidly over the rear portion of the legs. To dump the load the user pulls a

dumping handle at the back end to cause the tray to pivot upwardly about the front brace to a position of about 45 degrees with the horizontal and with and with its front end panel being supported by the Wheel." "Respondent's Side Tilting-Dumping Wheelbarrow, on the other hand, consists "of a wheeled carriage made of tubular frames essentially as in petitioner's. Welded transversely to the parallel frames are two brackets provided with holes designed to complement similar holes on brackets provided on the tray. The brackets on the tray are so placed that with the provision of a bolt through the openings the tray may be tilted approximately 170 degrees to the left or to the right of the wheelbarrow with its axis running longitudinally through, the center of the bottom face of the tray." "There is an express recognition under the Patent Law, as already noted, that any new model of implements or tools or of any industrial product even if not possessed of the quality of invention but which is of "practical utility" is entitled to a "patent for a utility model". From the above description of the side tiltingdumping wheelbarrow, the product of respondent's ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers to as "practical utility". The requirement explicitly set forth in the statute has thus been met. Respondent Tarroza is entitled to its benefits. The grant to him of a patent for a utility model is in accordance with law. There was no reason, therefore, for its cancellation. So it was held by the Director of Patents. That decision as already noted should stand." WHEREFORE, premises considered, this Petition for Cancellation is hereby DENIED. Patent No. UM-6780 issued in the name of the Respondent is hereby declared valid and subsisting. Let the filewrapper of this case be forwarded to Application, Issuance and Publication Division for appropriate action in accordance with this Decision. Likewise, let a copy of this Decision be furnished the Mechanical Examining Division for information an to update its records. SO ORDERED. (SGD.) IGNACIO S. SAPALO

FIRST DIVISION [G.R. No. 115106. March 15, 1996.] ROBERTO L. DEL ROSARIO, petitioner, vs. COURT OF APPEALS AND JANITO CORPORATION, respondents. Quisumbing, Torres and Evangelista for petitioners. J.P. Villanueva and Associates for private respondent. SYLLABUS 1. REMEDIAL LAW; CIVIL PROCEDURE; PROVISIONAL REMEDIES; INJUNCTION; ITS NATURE. — Injunction is a preservative remedy for the protection of substantive rights or interests. It is not a cause of action in itself but

merely a provisional remedy, an adjunct to a main suit. The controlling reason for the existence of the judicial power to issue the writ is that the court may thereby prevent a threatened or continuous irremediable injury to some of the parties before their claims can be thoroughly investigated and advisely adjudicated. It is to be resorted to only when there is a pressing necessity to avoid injurious consequences which cannot be remedied under any standard of compensation. The application of the writ rests upon an alleged existence for an emergency or of a special reason for such an order before the case can be regularly heard, and the essential conditions for granting such temporary injunctive relief are that the complaint alleges facts which appear to be sufficient to constitute a cause of action for injunction and that on the entire showing from both sides, it appears, in view of all the circumstances, that the inunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation. 2. ID.; WHEN INJUNCTION MAY BE GRANTED; REQUISITES FOR ITS ISSUANCE. — A preliminary injunction may be granted at any time after the commencement of the action and before judgment when it is established that the defendant is doing, threatens, or is about to do, or is procuring or suffering to be done, some act probably in violation of the plaintiff's rights. Thus, there are only two requisites to be satisfied if an injunction is to issue, namely, the existence of the right to be protected, and that the facts against which the injunction is to be directed are violative of said right. For the writ to issue the interest of petitioner in the controversy or the right he seeks to be protected must be a present right, a legal right which must be shown to be clear and positive. 3. COMMERCIAL LAW; INTELLECTUAL PROPERTY; THE PATENT LAW; WHEN A UTILITY MODEL IS NOT CONSIDERED "NEW" UNDER SECTION 55 OF THE PATENT LAW. — Under Sec. 55 of the Patent Law a utility model shall not be considered "new" if before the application for a patent it has been publicly known or publicly used in this country or has been described in a printed publication or publications circulated within the country, or if is substantially similar to any other utility model so known, used or described within the country. 4. ID.; WHEN ANY NEW MODEL OF IMPLEMENTS OR TOOLS IS ENTITLED TO A PATENT FOR UTILITY MODEL. — The Patent Law expressly acknowledges that any model of implements or tools of any industrial product even if not possessed of the quality of invention but which is practical utility is entitled to a patent for utility model. 5. ID.; RIGHTS OF A PATENTEE UNDER SECTION 37 OF THE PATENT LAW. — The rights of petitioner as a patentee have been sufficiently established, contrary to the findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of The Patent law, petitioner as a patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.

6. ID.; WHAT CONSTITUTES AN INFRINGEMENT OF A PATENT. — It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patent invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. 7. ID.; PETITIONER HAD SUFFICIENTLY ESTABLISHED A PRIMA FACIE PROOF OF VIOLATION OF HIS RIGHTS AS PATENTEE. — It may be noted that respondent corporation failed to present before the trial court a clear, competent and reliable comparison between its own model and that of petitioner, and disregarded completely petitioner's Utility Model No. 6237 which improved on his first patented model. Notwithstanding the differences cited by respondent corporation, it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice; (b) both are used to sing with a minus-one or multiplex tapes, or that both are used to play minus-one or standard cassette tapes for singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment; (d) both are used to sing with live accompaniment and to record the same; (e) both are used to enhance the voice of the singer using echo effect, treble, bass and other controls; (f) both are equipped with cassette tape decks which are installed with one being used for playback and the other, for recording the singer and the accompaniment, and both may also be used to record a speaker's voice or instrumental playing, like the guitar and other instruments, (g) both are encased in box-like cabinets; and (h) both can be used with one or more microphones. Clearly, therefore, both petitioner's and respondent's models involve substantially the same modes of operation and produce substantially the same if not identical results when used. In view thereof, we find that petitioner had established before the trial court prima facie proof of violation of his rights as patentee to justify the issuance of a writ of preliminary injunction in his favor during the pendency of the main suit for damages resulting from the alleged infringement. DECISION BELLOSILLO, J p: Roberto del Rosario petitions this Court to review the decision of the Court of Appeals 1 which set aside the order of the Regional Trial Court of Makati granting a writ of preliminary injunction in his favor. The antecedents: On 18 January 1993 petitioner filed a complaint for patent infringement against private respondent Janito Corporation. 2 Roberto L. del Rosario alleged that he was a patentee of an audio equipment and improved audio equipment commonly known as the sing-along system or karaoke under Letters Patent No. UM-5269 dated 2 June 1983 as well as Letters Patent No. UM-6237 dated 14 November 1986 issued by the Director of Patents. The effectivity of both Letters Patents was for five (5) years and was extended for another five (5) years starting 2 June 1988 and 14 November 1991, respectively. He described his sing-

along system as a handy multi-purpose compact machine which incorporates an amplifier speaker, one or two tape mechanisms, optional tuner or radio and microphone mixer with features to enhance one's voice, such as the echo or reverb to stimulate an opera hall or a studio sound, with the whole system enclosed in one cabinet casing. In the early part of 1990 petitioner learned that private respondent was manufacturing a sing-along system bearing the trademark or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents issued in his favor. Thus he sought from the trial court the issuance of a writ of preliminary injunction to enjoin private respondent, its officers and everybody elsewhere acting on its behalf, from using, selling and advertising the miyata or miyata karaoke brand, the injunction to be made permanent after trial, and praying for damages, attorney's fees and costs of suit. On 5 February 1993 the trial court temporarily restrained private respondent from manufacturing, using and/or selling and advertising the miyata sing-along system or any sing-along system substantially identical to the sing-along system patented by petitioner until further orders. On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on the basis of its finding that petitioner was a holder of a utility model patent for a sing-along system and that without his approval and consent private respondent was admittedly manufacturing and selling its own sing-along system under the brand name miyata which was substantially similar to the patented utility model 3 of petitioner. Private respondent assailed the order of 24 February 1993 directing the issuance of the writ by way of a petition for certiorari with prayer for the issuance of a writ of preliminary injunction and a temporary restraining order before respondent Court of Appeals. On 15 November 1993 respondent appellate court granted the writ and set aside the questioned order of the trial court. It expressed the view that there was no infringement of the patents of petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio system, and that the karaoke system was a universal product manufactured, advertised and marketed in most countries of the world long before the patents were issued to petitioner. The motion to reconsider the grant of the writ was denied; 4 hence, the instant petition for review. This petition alleges that: (a) it was improper for the Court of Appeals to consider questions of fact in a certiorari proceeding; (b) the Court of Appeals erred in taking judicial notice of private respondent's self-serving presentation of facts; (c) the Court of Appeals erred in disregarding the findings of fact of the trial court; and, (d) there was no basis for the Court of Appeals to grant a writ of preliminary injunction in favor of private respondent. 5 Petitioner argues that in a certiorari proceeding questions of fact are not generally permitted the inquiry being limited essentially to whether the tribunal has acted without or in excess of jurisdiction or with grave abuse of discretion; that respondent court should not have disturbed but respected instead the factual findings of the trial court; that the movant has a clear legal right to be protected

and that there is a violation of such right by private respondent. Thus, petitioner herein claims, he has satisfied the legal requisites to justify the order of the trial court directing the issuance of the writ of injunction. On the other hand, in the absence of a patent to justify the manufacture and sale by private respondent of sing-along systems, it is not entitled to the injunctive relief granted by respondent appellate court. The crux of the controversy before us hinges on whether respondent Court of Appeals erred in finding the trial court to have committed grave abuse of discretion in enjoining private respondent from manufacturing, selling and advertising the miyata karaoke brand sing-along system for being substantially similar if not identical to the audio equipment covered by letters patent issued to petitioner. Injunction is a preservative remedy for the protection of substantive rights or interests. It is not a cause of action in itself but merely a provisional remedy, an adjunct to a main suit. The controlling reason for the existence of the judicial power to issue the writ is that the court may thereby prevent a threatened or continuous irremediable injury to some of the parties before their claims can be thoroughly investigated and advisedly adjudicated. It is to be resorted to only when there is a pressing necessity to avoid injurious consequences which cannot be remedied under any standard of compensation. The application of the writ rests upon an alleged existence of an emergency or of a special reason for such an order before the case can be regularly heard, and the essential conditions for granting such temporary injunctive relief are that the complaint alleges facts which appear to be sufficient to constitute a cause of action for injunction and that on the entire showing from both sides, it appears, in view of all the circumstances, that the injunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation. 6 A preliminary injunction may be granted at any time after the commencement of the action and before judgment when it is established that the defendant is doing, threatens, or is about to do, or is procuring or suffering to be done, some act probably in violation of the plaintiff's rights. Thus, there are only two requisites to be satisfied if an injunction is to issue, namely, the existence of the right to be protected, and that the facts against which the injunction is to be directed are violative of said right. 7 For the writ to issue the interest of petitioner in the controversy or the right he seeks to be protected must be a present right, a legal right which must be shown to be clear and positive. In this regard Sec. 55 of R.A. 165 as amended known as The Patent 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) new model or 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 provide . . . Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued for a term of five (5) years from the grant of a Utility Model herein described — The construction of an audio equipment comprising a substantially cubical casing having a window at its rear and upper corner fitted with a slightly inclined control panel, said cubical (casing) having a vertical partition wall therein defining a rear compartment and a front compartment, and said front compartment serving as a speaker baffle; a transistorized amplifier circuit having an echo section and writhed in at least the printed circuit boards placed inside said rear compartment of said casing and attached to said vertical partition wall, said transistorized amplifier circuit capable of being operated from outside, through various controls mounted on said control panel of such casing; a loud speaker fitted inside said front compartment of said casing and connected to the output of the main audio amplifier section of said transistorized amplifier circuit and a tape player mounted on the top wall of said casing and said tape player being connected in conventional manner to said transistorized amplifier circuit. 8 Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-6237 for a term of five (5) years from the grant of a Utility Model described as — In an audio equipment consisting of a first cubical casing having an opening at its rear and upper rear portion and a partition therein forming a rear compartment and a front compartment serving as a loud speaker baffle, a control panel formed by vertical and horizontal sections, a transistorized amplifier circuit wired in at least two printed circuit boards attached at the back of said control panel, a first loud speaker fitted inside said first compartment of such first casing and connected to the output of said transistorized amplifier circuit; the improvement wherein said control panel being removably fitted to said first cubical casing and further comprises a set of tape recorder and type player mounted on the vertical section of said control panel and said recorder and player are likewise connected to said transistorized amplifier circuit; a second cubical casing having an opening at its rear, said second cubical casing having (being?) provided with a vertical partition therein defining a rear compartment and a front compartment, said rear compartment being provided with a door and enclosing therein a set of tape racks and said front compartment serving as loud speaker baffle, said second cubical casing being adapted to said first cubical casing so that said first and second casing are secured together in compact and portable form; compartment of said casing and connected to the output of said amplifier circuit. 9 The terms of both Letters Patents were extended for another five (5) years each, the first beginning 2 June 1988 and the second, 14 November 1991. The Patent Law expressly acknowledges that any new model of implements or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for utility model. 10 Here, there is no dispute that the letters patent issued to petitioner are for utility models of audio equipment.

In issuing, reissuing or withholding patents and extensions thereof, the Director of Patents determines whether the patent is new and whether the machine or device is the proper subject of patent. In passing on an application, the Director decides not only questions of law but also questions of fact, i.e. whether there has been a prior public use or sale of the article sought to be patented. 11 Where petitioner introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness and validity. The decision of the Director of Patents in granting the patent is always presumed to be correct, and the burden then shifts to respondent to overcome this presumption by competent evidence. 12 Under Sec. 55 of The Patent Law a utility model shall not be considered "new" if before the application for a patent it has been publicly known or publicly used in this country or has been described in a printed publication or publications circulated within the country, or if it is substantially similar to any other utility model so known, used or described within the country. Respondent corporation failed to present before the trial court competent evidence that the utility models covered by the Letters Patents issued to petitioner were not new. This is evident from the testimony of Janito Cua, President of respondent Janito Corporation, during the hearing on the issuance of the injunction, to wit — Q. Mr. Cua, you testified that there are (sic) so many other companies which already have (sic) the sing-along system even before the patent application of Mr. del Rosario and as a matter of fact you mentioned Sanyo, Sony and Sharp, is that right? A. Musicmate and Asahi. Q. Now do you recall that your lawyer filed with this Honorable Court an Urgent Motion to Lift Temporary Restraining Order of this Honorable Court. I am sure you were the one who provided him with the information about the many other companies selling the sing-along system, is that right? These 18 which you enumerated here. A. More than that because . . . Q. Now you will agree with me that in your statement Sharp you put the date as 1985 agreed? A. No. Q. You mean lawyer was wrong when he put the word Sharp 1985? A. Maybe I informed him already xxx xxx xxx Q. You men your lawyer was wrong in alleging to this Court that Sharp manufactured and sold (in) 1985 as found in the Urgent Motion? A. Since it is urgent it is more or less. Q. The same also with Sanyo 1985 which you put, more or less? A. Sanyo is wrong. Q. It is not 1985? A. Sanyo is 1979 I think. Q. So this is also wrong. Panasonic 1986 is also wrong? A. Panasonic I think. Q. Soy you don't think this is also correct. A. The date?

Q. So you don't think also that this allegation here that they manufacture in 1986 is correct? A. The date? Q. So you don't think also that this allegation here that they manufactured in 1986 is correct? A. Wrong. Earlier. Q. National by Precision Electronic 1986 this is also wrong? A. I think earlier. Q. So that means all your allegations here from 2 to 5 are wrong? OK. By Philipps Philippines 1986, this is also correct or wrong? A. More or less. We said more or less. Q. Nakabutshi by Asahi Electronics that is also wrong? A. No that is 1979. Q. Electone by DICO 1989 is this correct or wrong? A. Correct. More or less. Q. Skylers 1985 is that correct or wrong? A. It is more or less because it is urgent. We don't have time to exact the date. Q. Musicmate of G.A. Yupangco 1981 this is more or less? You are not also sure? A. 95% sure. Q. Now you are sure 1981. A. This one because . . . Q. Mr. Witness so you are now trying to tell this Honorable Court that all your allegations here of the dates in this Urgent Motion except for Musicmate which you are only 95% sure they are all wrong or they are also more or less or not sure, is that right? A. More or less. Q. Now do you have any proof, any advertisement, anything in writing that would show that all these instruments are in the market, do you have it. A. No I don't have it because . . . Q. No I am satisfied with your answer. Now Mr. Witness, you don't also have a proof that Akai instrument that you said was also in the market before 1982? You don't have any written proof, any advertisement? A. I have the product. Q. But you have not brought the product in (sic) this Honorable Court, right? A. No 13 As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently established, contrary to the findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of the Paten law, petitioner as a patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent. Petitioner established before the trial court that respondent Janito Corporation was manufacturing a similar sing-along system bearing the trademark miyata which

infringed his patented models. He also alleged that both his own patented audio equipment and respondent's sing-along system were constructed in a casing with a control panel, the casing having a vertical partition wall defining the rear compartment from the front compartment, with the front compartment consisting of a loud speaker baffle, both containing a transistorized amplifier circuit capable of being operated from outside through various controls mounted on the control panel, and that both had loud speakers fitted inside the front compartment of the casing and connected to the output of the main audio amplifier section both having a tape recorder and a tape player mounted on the control panel with the tape recorder and tape player being both connected to the transistorized amplifier circuit. 14 Respondent Janito Corporation denied that there was any violation of petitioner's patent rights, and cited the differences between its miyata equipment and petitioner's audio equipment. But, it must be emphasized, respondent only confined its comparison to the first model, Utility Model No. 5269, and completely disregarded Utility Model No. 6237 which improved on first. As described by respondent corporation, 15 these differences are — First. Under Utility Model 5269, the unit is a substantially cubical casing with a window at its rear and upper corner fitted with slightly inclined control panel, while the miyata equipment is a substantially rectangular casing with panel vertically positioned. Second. Under Utility Model 5269, the cubical casing has a vertical partition wall defining a rear compartment and a front compartment serving as a speaker baffle, while the miyata equipment has no rear compartment and front compartment in its rectangular casing; it has only a front compartment horizontally divided into 3 compartments like a 3-storey building, the 1st compartment being a kit, the 2nd also the speaker, and 3rd are kits. Third. Under Utility Model No. 5269, a transistorized amplifier circuit with an echo section wired in at least 2 printed circuit boards is placed inside the rear compartment of the casing and attached to the vertical partition wall, the printed circuit board having 1 amplifier and 1 echo, while in the miyata equipment the amplifier is mainly IC (Integrated Circuit) - powered with 8 printed circuit boards almost all of which are IC controlled, with 1 amplifier with power supply, 1 main tuner, 1 equalizer (3-band), 1 IC controlled volume control, 1 echo IC, 1 tape pream, 1 instrument and 1 wireless microphone. Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the compartment of its casing attached to the vertical partition wall, while in the miyata, the 7 printed circuit boards (PCB) are attached to the front panel and 1 attached to the horizontal divider. Fifth. Under Utility Model 5269, there are various controls mounted on the control panel of the casing, while in miyata, the various controls are all separated form the printed circuit boards and the various controls are all attached thereto. Sixth. Under Utility Model 5269, a loud speaker fitted inside the front compartment of the casing is connected to the output of the main audio amplifier section of the transistorized amplifier circuit, while in miyata, there is no other way but to use 2 loud speakers connected to the amplifier.

Seventh. Under Utility Model 5269, a tape player is mounted on the top wall of the casing, while in miyata, 2 tape players are used mounted side by side at the front. It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. 16 It may be noted that respondent corporation failed to present before the trial court a clear, competent and reliable comparison between its own model and that of petitioner, and disregarded completely petitioner's Utility Model No. 6237 which improved on his first patented model. Notwithstanding the differences cited by respondent corporation, it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing a amplify his voice; (b) both are used to sing with a minus-one or multiplex tapes, or that both are used to play minus-one or standard cassette tapes for singing or for listening to; (c) both are used to sing a minus-one tape and multiplex tape and to record the singing and the accompaniment; (d) both are used to sing with live accompaniment; (d) both are used to sing with live accompaniment and to record the same; (e) both are used to enhance the voice of the singer using echo effect, treble, bass and other controls; (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other, for recording the singer and the accompaniment, and both may also be used to record a speaker's voice or instrumental playing, like the guitar and other instruments; (h) both are encased in a box-like cabinets; and (i) both can be used with one or more microphones. 17 Clearly, therefore, both petitioner's and respondent's models involve substantially the same modes of operation and produce substantially the same if not identical results when used. In view thereof, we find that petitioner had established before the trial court prima facie proof of violation of his rights as patentee to justify the issuance of a writ of preliminary injunction in his favor during the pendency of the main suit for damages resulting from the alleged infringement. WHEREFORE, the Decision of the Court of Appeals dated 15 November 1993 is REVERSED and SET ASIDE and the Order of the trial court dated 24 February 1993 granting petitioner the writ of injunction is REINSTATED. The trial court is directed to continue with the proceedings on the main action pending before it in order to resolve with dispatch the issues therein presented. SO ORDERED Padilla, Vitug, Kapunan and Hermosisima, Jr., JJ., concur.

[BPTTT Decision No. 02 (PAT). January 20, 1988] RE: APPEAL FROM FINAL REJECTION OF APPLICATION BY PATENT EXAMINER BENITO C. LAO, applicant-appellant. Ex Parte Case No. 215 Serial No. UM-6776 Filed : October 30, 1980 Applicant : Benito C. Lao For : Punched Grip-Hole Plastic Bag, etc. DECISION This is an ex-parte appeal from the final rejection of the Patent Examiner of Application Serial No. UM-6776 filed on October 30, 1980 by herein AppellantApplicant, Benito Lao, of 485 Lavezares Street, Manila. The appeal pertains to an application for a utility model, entitled "Punched GripHole Plastic Bag, etc." Its main feature as embodied in the specification is the thicker upper portion of the bag, which part was made stronger without the need for any add-on reinforcement or patches around the grip. For lack of novelty, the said application was rejected. The Examiner, in his final action of rejection, stated thus: cdasia "According to the third paragraph of Sec. 55 of R.A. 165, a utility model shall not be considered 'new' if . . . it is substantially similar to any other utility model so known, used or described within the country . . ." (Emphasis supplied) The sole reference cited and relied upon by the Examiner in rejecting the application is Letters Patent No. D-2259, a design patent granted on March 23, 1983 in favor of Benito Lao, the herein Appellant Applicant. Said patent discloses a plastic bag with a heart-shaped punched grip hole disposed at the upper portion of the bag. Being a design patent, the specification did not mention the purpose of the hole but it can be inferred that the said heart-shaped hole is for the fingers of the hand to pass through when one grips the bag. Appellant-Applicant's arguments boil down to the resolution of two major issues, to wit: (1) Whether or not a design patent can be validly used as a prior art reference against a utility model application; and (2) Whether or not varying the thickness of the plastic bag, i.e., making the upper portion thicker than the other part of the bag is patentable. Tackling the first issue, a Appellant-Applicant, citing Rule 134 of the Revised Rules of Practice in Patent Cases (Sec. 55, Republic Act 165), argues that a design patent cannot be cited as a prior art reference for utility model application. Appellant-Applicant construed the term utility model as equivalent to the term utility model patent. This Office begs to disagree. The law uses the term utility model, not utility model patent. The two terms are different from each other. The former is generic while the latter is a specific term. Being generic, the term utility model when used in relation to the field of prior art searching is deemed to include not only utility model patent but also invention and design patents. Also, the term utility model as used in the law means any device or article. This is the gist of the decision in Electro Mfg. Co. v. Yellin, 56 USPQ 290, 292 where it was

held that a design patent may anticipate a mechanical patent, and a design patent issued before a mechanical patent, or a mechanical patent issued before a design patent, is a part of prior art and a valid anticipation (Lein v. Myers, 105 F 962, C.C.A. 2). If a design patent cannot be used as a prior art reference against a utility model application as alleged by Appellant-Applicant then, conversely, it follows that a utility model patent cannot also be used as a valid prior art reference against a design patent. This should not be the case. Thus, the Director of Patents in the case of Co Su Lin v. Nicholas Tiu (Decision No. 84-39, March 30, 1984) cancelled Patent No. D-1646 on the basis of Patent No. UM-2328. In this case, the cited design patent as a prior art reference discloses the main feature that Appellant-Applicant is claiming in his utility model application. Therefore, the utility model sough to be patented by Appellant-Applicant is unpatentable pursuant to Section 55 of Republic Act 165, as amended. With respect to the second issue, Rule 134 of the Rules of Practice in Patent Cases provides that "a utility model shall not be considered new and patentable for that reason . . . if it is substantially similar to any other utility model so known, used and described within the Philippines". (Emphasis supplied) The phrase "substantially similar" as defined in relation to the "doctrine equivalents" in the case of Pessumal Tolaram v. Chi Chuan Ko (Decision No. 262, June 7, 1963) means that "in order that one device may be considered equivalent of another, it must perform the same function in substantially the same way to obtain same result (Westro Inc. v. Illinois Watch Care Co., 98 USPQ 354), and "if two devices do the same work in substantially the same result, they are the same even though they differ in name, form or shape (Machine Co. v. Murphy, 97 U.S. 120, 24 L Ed. 935). The variation of thickness claimed by Appellant-Applicant in his application is not apparent and cannot be appreciated using the naked eye alone. Neither such thickness be appreciated by trying to feel it between the fingers. In effect, the variation of thickness has very little or no impact in the form or shape of the plastic bag. Taken in the light of the meaning of the phrase "substantially similar", as enunciated in the aforecited doctrine, this Office believes and is so convinced that the subject plastic bag is deemed substantially similar with the cited reference; hence, unpatentable. cdtai The claim that material savings can be derived by making the upper portion of the bag thicker is likewise unmeritorious. The material saving is significant only in theory but not in actual commercial practice. The proof submitted by AppellantApplicant was based only on theoretical mathematical computation without regard to other factors involved in actual production. To allow the subject application which is substantially similar to AppellantApplicant's patented design (D-225, the reference) is a commercial strategy that confers no benefit to the public other than an opportunity for Appellant-Applicant to prolong his monopoly to make, use and sell his design patent beyond the period prescribed by law. WHEREFORE, premises considered, this ex-parte appeal is, as it is hereby, DISMISSED. Accordingly, Appellant-Applicant's Serial No. UM-6776 filed on October 30, 1980 is, as it is hereby, ordered REJECTED.

Let the records of this case be remanded to the Mechanical, Electrical Division for appropriate action in accordance with this Decision. SO ORDERED. (SGD.) IGNACIO S. SAPALO Director