DOLORITO M. FELICIANO and MAXIMO B. TAPINIO, applicants-appellees.

MELITON D ALBAA, petitioner-appellant,

vs.
THE DIRECTOR OF PATENT, respondent-appelle.

Meliton D. Albaa in his own behalf.

Office of the Solicitor General Pompeyo Diaz and Solicitor Pacifico P. de Castro for respondent and
appellee.

PADILLA, J.:

An application for patent was filed with the Patent Office.

Pending examination of the application, Meliton D. Albaa filed a motion to intervene claiming that
the applicant-inventors had "sold and/or bartered and assigned to him their right to contract or deal
the sale of their invention called Fel-Tap Meter Guard and Detector to or though the Corporation that
they were then organizing under his direction and to fix and decide on the purchase price of it to at
least P200,000 in installments cash and P300,000 in shares of stock of said Corporation . . ." and
praying that applicant-inventor Maximo D. Tapinio be compelled to sign a contract (Appendix I) and,
together with the other applicant-inventor Dolorito M. Feliciano who had already signed it, to
acknowledge it and another contract (Appendix II) before a notary public, to have both contracts
recorded in the Patent Office and in the Office of the Register of Deeds, and that the patent for the
invention be issued in his name and in the name of the inventors.

The motion was denied on the ground under the provisions of the Patent Law (Republic Act No. 165)
the Director of Patents has no jurisdiction or power to decide the question submitted to him.

The movant filed an amended motion to intervene claiming "that he is the assignee of inventors
Dolorito M. Feliciano and Maximo Tapinio of the undivided part interest in the invention for whose
letter-patent the named petitioners Dolorito M. Feliciano and Maximo Tapinio are herein applying."

The amended motion was denied on the ground that the assignment made to the movant is not one
of exclusive right to make, use the sell1 the electrical contrivance for which a patent is applied for;
that it is just an authority to act as the selling agent for the inventors of the patent, if granted, and the
invention covered thereby and to receive compensation therefor; and that not being entitled to have
his name included as one of the patentees, if patent for the invention be granted, the movant has no
right to intervene in the proceedings for the grant of the patent.

An exception to and a motion for reconsideration of the proceeding order were noted and denied.

From the orders denying his motions to intervene the movant has appealed.2

What the appellant attempted to secure by his motion to intervene is clearly beyond the jurisdiction
and authority of the Director of Patents to grant. Despite the amendment to the first motion to the
intervene by which he claims assignment of the invention, still it remains that the alleged assignment
is not the invention but it is an agreement whereby he is to act as selling agent for the inventors of
the patent (if granted) and of the invention covered thereby and to receive compensation therefor.
This finding of the Director of Patents is supported by the following clauses found in the contract
(Appendix I): "We (the inventors) . . . hereby declare and ratify that both of us are the co-inventors
and joint fifty-fifty owners of the "Fel-Tap Electric Meter Guard & Detector' . . . ." "We are now
organizing a Corporation under the direction of Mr. Albaa (Meliton D. Albaa) to exploit and
industrialize the invention . . . which we promise hereby to sell to said Corporation with its letter-
patent . . . except the Royalty Right of the same, . . . ." "For and in consideration of the monetary and
other helps (help) that said Mr. Meliton D. Albaa . . . has rendered and is rendering us . . . of
approaching, interesting and looking for subscribers and prayers to the capital stocks (stock) of said
Corporation to be . . . we hereby promise and actually pay to said Mr. Albaa in installment fifty
thousand pesos (P50,000) of said P200,000 installments cash purchase price . . . ." The above
quoted terms and stipulations of the executory contract clearly show that it was not an assignment of
the invention and the patent applied for.

Assignments of patents and inventions covered thereby may be recorded in books and records kept
for the purpose in the Patent Office is presented in due form;3 but the appellant does not ask for the
registration of the alleged agreement between him and the inventors, because as it is not in due
form it cannot be recorded, but prays that the Director of Patents compel applicant-inventor Maximo
B. Tapinio to sign the contract executed and signed by the other applicant-inventor Dolorito M.
Feliciano on 14 March 1950 (Appendix I) and both applicant-inventors to acknowledge it and another
document which by all indication refers to the minutes of a meeting of the organizers of the
Manufacturing Corporation held on 30 March 1950, before a notary public, and then to have both
documents recorded in the Patent Office and in the office of the Registrar of Deeds. Under the
provisions of the Patent Law (Republic Act No. 165), the Director of Patent has no power and
authority to compel the applicant-inventors to do what the appellant is asking them to perform. What
the appellant asked the Director Patents to do for him is essentially a judicial function which would
require the determination or finding by a court of competent jurisdiction as to whether there was a
meeting of the minds of the contracting parties before it could compel the applicant-inventors to
perform what the appellant prays the court to order them to do. Aside from want of authority and
power, the Director of Patent lacks the means to make such determination and finding which would
be necessary before he could act on the appellant's motion.

The orders appealed from are affirmed, with costs against the appellant.

Paras, C.J., Feria, Pablo, Bengzon, Tuason, Montemayor, Reyes, Jugo and Bautista Angelo,
JJ., concur.

JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners,

vs.
THE DIRECTOR OF PATENTS, respondent.

Picazo & Agcaoili for petition.

Office of the Solicitor General for respondent.

MELENCIO-HERRERA, J.:

Sought to be reviewed herein is the Decision of the Director of Patents, dated December 9, 1964,
denying priority rights under section 15 of our Patent Law (Republic Act No. 165) to petitioners, as
foreign applicants for Letters Patent, for their invention of "Chemotherapeutic Materials and Methods
of Preparing the same.
Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of the United
States, claim to be the inventors of a new antibiotic designated as "tetracycline", a new derivative of
chlortetracycline (popularly known as "aureomycin")

On February 19, 1954, petitioners applied for Letters Patent covering said invention to respondent
Director of Patents claiming the right of priority granted to foreign applicants under section 15 of the
Patent Law (RA 165). Receipt of petitioners' application was acknowledged by respondent Director
on March 6, 1954.

On April 14, 1954, petitioners filed with respondent Director a legalized copy of their Application for
Letters Patent in the United States for the same invention (U.S. Serial No. 342556). Said legalized
copy indicated that the application in the United States was filed on March 16, 1963. 1 This latter date
is of crucial importance to petitioners' cause under section 15 of the Patent Law, which provides that:

Section 15. Application previously filed abroad. An application for patent for an
invention filed in this country by any person who has previously regularly filed an
application for a patent for the same invention in a foreign country, which by treaty,
convention or law affords similar privileges to citizens of the Philippines, shall have
the same force and effect as the same application would have if filed in this country
on the date on which the application for patent for the same invention was first filed in
such foreign country: Provided, That the application in this country is filed within
twelve months from the earliest date on which such foreign application was filed and
a certified copy of the foreign application together with a translation thereof into
English, if not in the English language, is filed within six months from the date of filing
in the Philippines, unless the Director for good cause shown shall extend the time for
filing such certified copy: And provided, further, that no patent shall be granted on an
application for patent for an invention which had been patented or described in a
printed publication in this or any foreign country more than one year before the date
of the actual filing of the application in this country, or which had been in public use
or sale in this country for more than one year prior to such filing.

Under the foregoing provision, petitioners would be entitled to the priority date of March 16, 1953 if
their application is considered filed in the Philippines as of March 5, 1954, since the latter date would
fall within the one-year period prior to March 5, 1954.

On February 7, 1958, petitioners informed respondent Director that in interference proceedings in

the United States, Letters Patent for a similar invention as theirs was awarded to Pfizer and Co.,
which had filed its application ahead and that they failed to obtain any U.S. patent for their own
invention. Petitioners, however, observed and requested:

In the Philippines, however, the situation is at least the reverse. Pfizer and Co. did
not file or else filed an application after the above application has already been filed.
The said above application therefore is good and valid.

We request, therefore, that the present application be granted on the basis of the
claims originally filed. 2

On August 5, 1959, in Paper No. 6, 3 Patent Examiner, Lydia Nueva Espaa, rejected all of
petitioners' claims in view of "Philippine Patent No. 254 November 29, 1956", apparently referring
to a local Patent obtained by Pfizer and Co., presumably covering the same invention. Additionally,
petitioners were advised that the "Specification" they had submitted was "incomplete" and that
responsive action should be filed them four months from date of mailing, which was also August 5,
1959. Paper No. 6 precipitated a series of communications between the aforementioned Patent
Examiner and petitioners, who apparently failed to meet the deadline of four months for filing their
responsive action.

On October 9, 1961, petitioners requested for clarification of Paper No. 6, particularly as to why their
Specification was considered incomplete.

In response, Supervising Patent Examiner Nelia de Castro informed petitioners as follows:

With respect to applicant's request for clarification as to the meaning of the second to
the last sentence contained in Paper 6, attention is called to the fact that the
specification which was originally filed is incomplete and not in accordance with Rule
62 of the Revised Rules. Said specification ends on Page 9 with the incomplete
sentence "The refractive indices of this crystalline phase were found

It appears from further from a comparison between the submitted 9 pages of the
specification and 2 pages of the claims on one hand and the corresponding pages of
the legalized copy of the U.S. application on the other that the present application
does not correspond with the said certified copy of the U.S. Application. The present
application cannot therefore be granted priority date under section 15 are requested
by applicant. 4

On July 3, 1962, petitioners submitted two complete copies of the Specification, which included nine
additional pages, and reiterated their request for priority right in the Philippines. 5

On October 2, 1962, Chief Patent Examiner Nicanor Mapili issued Paper No. 20 rejecting the
additional nine pages of Specification submitted by petitioners, and ruling:

xxx xxx xxx

The filing of the alleged complete copy Of the specification is an attempt to effect a
remedy to the previous finding of incompleteness as stated in the 2nd to the last
paragraph of Office Action mailed Aug. 5, 1959, marked Paper 6. This cannot be
allowed inasmuch as 9 pages of new matter are actually proposed to be added to the
specification.

This action is made final for purpose of appeal 6

Petitioners moved for reconsideration on the ground that their application falls under the exception
provided for in Rule 47 of the Revised Rules of Practice in Patent Cases in that the missing nine
pages submitted by them are not really new matter but a mere "minor informality."

On February 5, 1963, Chief Patent Examiner Mapili issued Paper No. 22 denying petitioners' Motion
for Reconsideration and the findings of Examiner de Castro as follows:

The basis of the examiner's finding is applicant's verification on file, exclusive of what
is in an alleged corresponding application in the US as evidenced by a certified copy
of record. The only use of such certified a copy is to give proof to an earlier filing date
as provided for such section 15 of the Patent Law and to use the inventors' oath
therein to complete the form requirements relative to his application in a dance with
the provisions of section 13(3) of the same law.
 The provisions of section 15 of the Patent Law, under which the present application
was filed, provides for a for filing. This deadline cannot be extended directly or
indirectly by the filing of an imperfect application which can be freely amended or
rectified at a later date. If this can be done legally, the restrictive provisions of section
15 will be nullified. 7

Adversely affected, petitioners appealed to dent Director of Patents.

In their Brief filed with respondent Directors petitioners prayed for 1) revocation of the of the Chief
Patent Examiner, 8 2) admission of their Specification submitted on July 3, 1962; and 3) allowance of
their application on the merits.

On December 9, 1964, respondent Director rendered the questioned Decision, the dispositive
portion of which reads:

WHEREFORE, the appeal is hereby sustained. The additional pages to the

specification are hereby admitted, but the application shall not be extended priority
rights under section 15 of the Patent Law. Let the filing date of this application be
changed from March 5, 1954 to April 14, 1954. The application is hereby remanded
to the Chief Patent Examiner for proper action and for further examination on the
merits. 9

In reaching the foregoing conclusion, respondent Director opined that the portions subsequently
supplied in the local application are not new matter a comparison between the foreign and local
applications showed that the foreign application included the missing portions of the local one.
However, respondent Direct qualified that petitioners' application may be considered complete only
on April 14, 1954 when the certified copy of the foreign application was submitted. Consequently, the
instant application is to be considered an ordinary application, not entitled to the right of priority
granted by section 15 of the Patent Law, inasmuch as said application was not complete within the
meaning of Rules 47 and 48 of the Revised Rules of Practice in Patent Case when first filed on
March 5, 1954.

Petitioners filed a Motion for Partial Reconsideration of the above-mentioned Decision questioning
that portion of respondent Director's ruling barring them from entitlement to the right of priority under
section 15 of the Patent Law contending that their appeal centered merely on the issue of whether or
not the additional nine pages of Specification they had submitted should be treated as new matter.

On June 10, 1965, respondent Director denied reconsideration for lack of merit, and explained:

... It should be emphasized that under Rule 262 (b) of the Revised Rules of Practice
in Patent Cases, it is stated that should the Director have any knowledge of any
ground not involved in the appeal for rejecting any claim, he may include in his
decision a statement to that effect with his reasons for so holding, which statement
shall constitute a rejection of the claim. Priority claims are covered by the rule: 10

On June 11, 1965, petitioners filed a Second Motion for reconsideration on the ground that priority
rights are governed by convention and treaty, while invention claims are governed exclusively by the
Statute and Rules of Practice. Respondent Director denied that Motion for lack of merit on August
24, 1965.

Hence, this recourse.

On January 9, 1967, we deemed the case submitted for decision, after petitioners had filed their
Brief on February 12, 1966, and respondent Director, through the Solicitor General, his Brief on June
9, 1966.

On June 9, 1968, Republic Act No. 5434 was enacted providing that final Orders and Decisions of
the Director of Patents in ex parte and inter partes proceedings are appealable to the Court of
Appeals. Since no provision for retroactivity exists in said Act this Tribunal has resolved to retain
jurisdiction over this case.

Petitioners maintain before this Court that:

RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT

PETITIONERS' APPLICATION, SERIAL NO. 952, MAY NOT BE TREATED AS
FILED UNDER SECTION 15 AS AMENDED, OF REPUBLIC ACT NO. 165 KNOWN
AS THE PATENT LAW.

and in support thereof stress that:

1) The Director had no jurisdiction to decide the question of whether or not the
Philippine Application should be treated as filed under Section 15 of the Act;

2) The Director had no jurisdiction to decide the question of whether or not the
Philippine Application was incomplete under Rules 47 and 48 of the Revised Rules of
Practice in Patent Cases;

3) The Director misconstrued and misapplied Rules 47 and 48 of the Rules;

4) The Director misconstrued and misapplied Rule 262 (b) of the Rules.

For resolution, therefore, are the following issues: the scope of the powers of the Director of Patents
in cases appealed to him and the correctness of his application of Rules 47, 48 and 262(b) of the
Revised Rules of Practice in Patent Cases.

The facts unfolded call for an affirmance of respondent Director's rulings.

Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and authority of
respondent Director to decide petitioners' appeal in the manner that he did, and we quote:

262. Decision by the Director. (a) The Director, in his decision, may affirm or
reverse the decision of the Principal Examiner in whole or in part on the ground and
on the claims specified by the Examiner. The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision of the
Principal Examiner on that claim, except as to any ground specifically reversed.

(b) Should the Director have knowledge of any grounds not involved in the appeal for
rejecting any claim he may include in his decision a statement to that effect with his
reasons for so holding which statement shall constitute a rejection of the claims. ...

In other words, respondent Director is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal He need not confine himself only to
issues invoked. Besides, the question of new matter is inextricably linked with the right of priority on
which petitioners have anchored their application. As early as Paper No. 18, supra, the Supervising
Patent Examiner had concluded that inasmuch as the submitted pages did not correspond with the
certified copy of the U.S. application, "the present application cannot therefore be granted priority
date under section 16 as requested by applicant." Again, in Paper No. 22, supra, the Chief Patent
Examiner made mention of petitioner' imperfect application and the fact that the deadline for filinf
required by section 15 of the Patent Law cannot be extended directly or indirectly otherwise "the
restrictive provisions of section 15 will be nullified."

It is also far-fetched for petitioners to claim that in ruling on petitioners' right of priority, respondent
Director had contravened Rule 254 of the Revised Rules of Practice in Patent cases, which provides
that the Director of Patents exercises no direct control, direction and supervision over the Principal
Examiner and the Executive Examiner. What respondent Director exercised was his authority to
review the decisions of Patent Examiners, as explicitly provided for in the last paragraph of the same
Rules 254, as follows:

xxx xxx xxx

The only supervision which the Director of Patent may lawfully exercise over the
Principal Examiners and the Executive Examiner is a general supervision, exercised
through a review of the recommendations they may make for the grant of a patent,
and through a review of their decision by petition and appeal.

Similarly untenable is petitioners' contention that respondent Director had misconstrued and
misapplied Rules 47 and 48 of the Revised Rules of Practice in Patent Cases. The said Rules
provide:

47. Application accepted and filed for examination only w hen complete An
application for an invention patent will not be accepted and placed upon the files for
examination until all its required parts, complying with the rules relating thereto are
received except that 'certain minor informalities may be waived subject to
subsequent correction, whenever required.

If the papers and parts are incomplete, or so defective that they cannot be accepted
as a complete application for examination, the applicant will be notified; the papers
will be held four months for completion and if not by then completed, will be stored as
an abandoned incomplete application and eventually destroyed or otherwise
disposed of.

48. Serial number and filing date of application Complete applications are
numbered in regular order, and the applicant win be informed of the serial number
and filing date of the application by a filing receipt. The filing date of the applicant is
the, date on which the complete application, acceptable for placing on the files for
examination, is received in the Patent Office; or the date on which the last part
completing such application is received, in the case of an incomplete or defective
application completed within four months. The Executive Examiner shall be in charge
of fixing the filing date and serial number of an application.

Under the aforecited provisions, it is imperative that the application be complete in order that it may
be accepted. It is essential to the validity of Letters Patent that the specifications be full, definite, and
specific. 11 The purpose of requiring a definite and accurate description of the process is to apprise
the public of what the patentee claims as his invention, to inform the Courts as to what they are
called upon to construe, and to convey to competing manufacturers and dealers information of
exactly what they are bound to avoid. 12

The specification which petitioners submitted on March 5, 1954 was far from complete. That defect
was one of substance and not merely one of form. What petitioners claimed as their invention was
not completely determinable therefrom. Petitioners' application could be deemed as complete only
on July 2, 1963 when they submitted the additional pages on the Specifications and Claims.
Respondent Director, therefore, did not err in converting petitioners' application into an ordinary
application filed on April 14, 1954, not only for their having failed to complete their application within
the four-month period provided for by Rules 47 and 48, Revised Rules of Practice in Patent Cases,
and as required of them by Paper No. 6, but also for their having failed to file a complete application
within twelve months from March 16, 1953, the date of the foreign application For, to be entitled to
the filing date of the patent application, an invention disclosed in a previously filed application must
be described within the instant application in such a manner as to enable one skilled in the art to use
the same for a legally adequate utility. 13

All told, we sustain respondent Director's findings in the absence of error or abuse of power or lack
of jurisdiction or grave abuse of discretion. 14 We have held that in the absence of arbitrariness, and
provided they are supported by substantial evidence, as in this case, the conclusions reached by the
Director of Patents are to be accorded respect and must be upheld. 15

WHEREFORE, we hereby affirm the Decision of respondent Director of Patents dated December 9,
1964.

SO ORDERED.

SMITH KLINE BECKMAN CORPORATION v. COURT OF APPEALS, et al.

409 SCRA 33 (2003)

When the language of its claims is clear and distinct, the patentee is bound thereby and
may not claim anything beyond them.

Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine
Patent Office Letters Patent No. 14561 over an inventedcompound entitled Methods
and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate. Such compound is claimed to be an active
ingredient in fighting various parasites in certain types of domestic and livestock
animals. Respondent Tryco Pharma (Tryco) sells veterinary products including a drug
Impregon which contains Albendazole as an active ingredient which fights against
parasites in animals. Petitioner SKBC then filed an action against respondent Tryco for
patent infringement claiming that the patent granted to them includes said
Albendazole. In their defense respondent Tryco alleges that Letters Patent No. 14561
granted to petitioner SKBC does not include Albendazole for nowhere is such word
found in the patent. The Trial Court rendered its decision in favor of respondent Tryco
which was affirmed by the Court of Appeals.

ISSUES:
Whether or not the Court of Appeals erred in not finding that Albendazole is included in
petitioners Letter Pattent No. 14561

HELD:

From an examination of the evidence on record, the Court finds nothing infirm in
the appellate courts conclusions with respect to the principal issue of whether Tycho
Pharma committed patent infringement to the prejudice of SKBC. The burden of proof
to substantiate a charge for patent infringement rests on the plaintiff. In the case at bar,
petitioners 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.

When the language of its claims is clear and distinct, the patentee is bound thereby and
may not claim anything beyond them. And so are the courts bound which may not add
to or detract from the claims matters not expressed or necessarily implied, nor may
they enlargethe 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. It bears stressing that the mere absence of
the word Albendazole in Letters Patent No. 14561 is not determinative of Albendazoles
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 SKBCs 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
SKBCs patent in spite of its omission therefrom or that the meaning of the claims of the
patent embraces the same. While SKBC concedes that the mere literal wordings of its
patent cannot establish Tyco Pharmas infringement, it urges the 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. Yet again, a scrutiny
of SKBCs evidence fails to convince the Court of the substantial sameness of SKBCs
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.

In other words, the principle or mode of operation must be the same or substantially the
same. The doctrine of equivalents thus requires satisfaction of the function-means-and-
result test, the patentee having the burden to show that all three components of such
equivalency test are met.