Boothe v.

Director of Patents

Facts:

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, 1953. 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, Patent Examiner, Lydia Nueva España, 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.

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.

Petitioners' application was deemed complete only on July 2, 1963 when they submitted the additional
pages on the Specifications and Claims. Respondent Director, consequently, converted 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.

Hence, this recourse.

Issue/s: Whether or not the Philippine Application should be treated as filed under Section 15 of the Act.
[NO]

Held:

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 15 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 filing required by section 15 of the Patent
Law cannot be extended directly or indirectly otherwise "the restrictive provisions of section 15 will be
nullified."

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

DP: WHEREFORE, we hereby affirm the Decision of respondent Director of Patents dated December 9,
1964.
Schuartz v. CA

Facts:

Petitioners appeal via certiorari from the decision of the Court of Appeals dismissing their appeal from the
resolution of the Director of Patents that denied with finality their petition for revival of patent
applications..com.ph

On different dates, petitioners applied to the Bureau of Patents, Trademarks and Technology Transfer for
registration of patents. They hired the law firm Siguion Reyna, Montecillo and Ongsiako to process their
patent applications in the Philippines, respectively identified as follows:chanrob1es virtual 1aw library

Applicant Serial No.

(1) "Hackling Drum Room or Chamber at the Self-Feeding Equipment for Threshing of Upper Hackling
System"

(2) "Colour Value Measurement"

(3) "Tool for Moulding the Top Past of a Plastic Container"

(4) "Tamper Evident Closures and Packages"

(5) "Method Generation for Hot Gas by Incinerators"

(6) "Preservation Composition"

(7) "Pharmaceutical Compositions"

(8) "Process for Producing Copper-Laminated Base Material for Printed Circuit Boards"

(9) "Electrodeposition of Chromium and Chromium Bearing Alloys."

Petitioners’ patent applications lacked certain requirements and the Bureau informed the law firm about it,
through correspondences called Office Actions. As petitioners’ law firm did not respond to these office
actions within the prescribed time, notices of abandonment were sent.

On December 7, 1987, two employees of the law firm, George Bangkas and Rafael Rosas were
dismissed from employment. Prior to the dismissal, these employees worked with the patent group of the
law firm and had the duty, among others, of getting the firm’s letters and correspondence from the Bureau
of Patents.

Immediately after their dismissal, the law firm conducted an inventory of all the documents entrusted to
them. It was then that the firm learned about the notices of abandonment.

Thereafter, Petitioners, through the law firm, filed with the Bureau of Patents separate petitions for revival
of the patent applications.

On January 31, 1991, Director Luis M. Duka, Jr. of the Bureau of Patents denied all the petitions for
revival because they were filed out of time.
On August 13, 1992, the Court of Appeals dismissed the consolidated appeal for being filed beyond the
15-day reglementary period to appeal. There was an unreasonable delay before the petitions to revive
applications were filed. Moreover, petitioners’ patent applications could not be a proper subject of a
consolidated appeal because they covered separate and distinct subjects and had been treated by the
Bureau of Patents as separate and individual applications.

Petitioners contend that the Court of Appeals committed grave abuse of discretion when it held that the
consolidated appeal was filed out of time. They were appealing from the resolution of the Director of
Patents dated January 31, 1991, which denied the petition for revival of the patent applications. They
received a copy of the resolution, through their patent attorneys, on February 7, 1991, and filed the
consolidated appeal seven (7) days after, or on February 14, 1991. According to petitioners, these dates
clearly established that their appeal was seasonably filed.

Aggrieved, petitioners filed the instant petition for review on certiorari. 18

Issue/s: Whether or not Court of Appeals validity dismissed the consolidated appeal of petitioners from
the Director of Patents’ denial of the revival of their patent applications. [YES]

Held:

The contention is not meritorious. If the facts above-mentioned were the sole basis of determining
whether the appeal was filed on time, petitioners’ argument would be correct. However, petitioners lost
sight of the fact that the petition could not be granted because of laches. Prior to the filing of the petition
for revival of the patent application with the Bureau of Patents, an unreasonable period of time had lapsed
due to the negligence of petitioners’ counsel. By such inaction, petitioners were deemed to have forfeited
their right to revive their applications for patent.

Facts show that the patent attorneys appointed to follow up the applications for patent registration had
been negligent in complying with the rules of practice prescribed by the Bureau of Patents. The firm had
been notified about the abandonment as early as June 1987, but it was only after December 7, 1987,
when their employees Bangkas and Rosas had been dismissed, that they came to know about it. This
clearly showed that petitioners’ counsel had been remiss in the handling of their clients’ applications.

"A lawyer’s fidelity to the cause of his client requires him to be ever mindful of the responsibilities that
should be expected of him. A lawyer shall not neglect a legal matter entrusted to him." In the instant case,
petitioners’ patent attorneys not only failed to take notice of the notices of abandonment, but they failed to
revive the application within the four-month period, as provided in the rules of practice in patent cases.
These applications are deemed forfeited upon the lapse of such period.

Hence, we cannot grant the present petition. The Court of Appeals did not err or gravely abuse its
discretion in dismissing the petition for review.

DP: WHEREFORE, the Court DENIES the petition for lack of merit. The Court AFFIRMS the decision of
the Court of Appeals in CA-G.R. SP No. 24175.
Parke Davis & Co. v. Doctor’s Pharmaceuticals

Facts:

Parke Davis & Company, petitioner herein, is a foreign corporation organized and existing under the laws
of the State of Michigan, U.S.A., with principal office in the City of Detroit, and as such is the owner of a
patent entitled "Process for the Manufacturing of Antibiotics" (Letters Patent No. 50) which was issued by
the Philippine Patent Office on February 9, 1950. The patent relates to a chemical compound represented
by a formula commonly called chloramphenicol. The patent contains ten claims, nine of which are process
claims, and the other is a product claim to the chemical substance chloramphenicol.

Respondent Doctors' Pharmaceuticals, Inc., on the other hand, is a domestic corporation duly organized
under our Corporation Law with principal office situated in Caloocan City. On October 9, 1959, its general
manager wrote a letter to Parke Davis & Company requesting that it be granted a voluntary license "to
manufacture and produce our own brand of medicine, containing chloramphenicol, and to use, sell,
distribute, or otherwise dispose of the same in the Philippines under such terms and conditions as may be
deemed reasonable and mutually satisfactory," to which Parke Davis & Company replied requesting
information concerning the facilities and plans for the manufacture of chloramphenicol of Doctors'
Pharmaceuticals, Inc. Doctors' Pharmaceuticals, Inc., answered saying that it did not intend to
manufacture chloramphenicol itself but its purpose was merely to use it in its own brand of medicinal
preparations, emphasizing that its request for license was based on an express provision of the Philippine
law which has reference to patents that had been in existence for more than three years from their dates
of issue. Hence, it reiterated its request that said license be granted under such terms and conditions as
may be reasonable and mutually satisfactory.

As apparently Parke Davis & Company was not inclined to grant the request for a voluntary license,
Doctors' Pharmaceuticals, Inc. filed on March 11, 1960 a petition with the Director of Patents, which was
later amended, praying that it be granted a compulsory license under Letters Patent No. 50 granted to
Parke Davis & Company based on the following grounds: (1) the patented invention relates to medicine
and is necessary for public health and safety; (2) Parke Davis & Company is unwilling to grant petitioner a
voluntary license under said patent by reason of which the production and manufacture of needed
medicine containing chloramphenicol has been unduly restrained to a certain extent that it is becoming a
monopoly; (3) the demand for medicine containing chloramphenicol is not being met to an adequate
extent and on reasonable prices; and (4) the patented invention is not being worked in the Philippines on
a commercial scale. In its petition, Doctors' Pharmaceuticals, Inc. prayed that it be authorized to
manufacture, use, and sell its own products containing chloramphenicol as well as choose its own brand
or trademark.

Parke Davis & Company filed a written opposition setting up the following affirmative defenses: (1) a
compulsory license may only be issued to one who will work the patent and respondent does not intend to
work it itself but merely to import the patented product; (2) respondent has not requested any license to
work the patented invention in the Philippines; (3) respondent is not competent to work the patented
invention; (4) to grant respondent the requested license would be against public interest and would only
serve its monetary interest; and (6) the patented invention is not necessary for public health and safety.

At the hearing held on November 14, 1962, respondent abandoned the second, third and fourth grounds
of its petition and confined itself merely to the first ground, to wit: that the patented invention relates to
medicine and is necessary for public health and safety. Then, after the parties had presented oral and
documentary evidence and submitted memoranda in support of their contentions, the Director of Patents
rendered on November 15, 1963 his decision granting to respondent the license prayed for.

In due time, Parke Davis & Company interposed the present petition for review.
Issue/s: Whether or not the Director of Patents gravely abused his discretion in ordering the grant of
compulsory license to respondent for the manufacture of preparations containing chloramphenicol despite
the written objection interposed against it by the latter based on the ground therein enumerated. [NO]

Held:

The pertinent statutory provisions that govern the issues raised herein are found in Chapter VIII of
Republic Act No. 165, as amended, which for ready reference are hereunder quoted:

CHAPTER VIII. — Compulsory Licensing

SEC. 34. Grounds for compulsory license. — Any person may apply to the Director for the grant
of a license under a particular patent at any time after the expiration of three years from the date
of the grant of the patent, under any of the following circumstances:

(a) If the patented invention is not being worked within the Philippines on a commercial scale,
although capable of being so worked, without satisfactory reason;

(b) If the demand for the patented article in the Philippines is not being met to an adequate extent
and on reasonable terms, without satisfactory reason;

(c) If by reason of the refusal of the patentee to grant a license or licenses on reasonable terms,
or by reason of the conditions attached by the patentee to licenses or to the purchase, lease or
use of the patented article or working of the patented process or machine of production the
establishment of any new trade or industry in the Philippines is prevented, or the trade or industry
therein is unduly restrained; or

(d) If the patented invention relates to food or medicine or is necessary for public health or public
safety.

The term "worked" or "working" as used in this section means the manufacture and sale of a patented
article, or the carrying on of a patented process or the use of a patented machine for production, in or by
means of a definite and substantial establishment or organization in the Philippines and on a scale which
is adequate and reasonable under the circumstances.

SEC. 35. Notice and hearing. — Upon the filing of a petition under section thirty-four hereof,
notice shall be given in the same manner and form as that provided in section thirty-one, Chapter
VII hereof.

SEC. 36. Grant of license. — If The Director finds that a case for the grant of a license under
section thirty-four hereof has been made out, he may order the grant of an appropriate license
and in default of an agreement among the parties as to the terms and conditions of the license he
shall fix the terms and conditions of the license in the order.

The order of the Director granting a license under this Chapter, when final, shall operate as a
deed granting a license executed by the patentee and the other parties in interest.

As may be noted, each of these circumstances stands alone and is independent of the others. And from
them we can see that in order that any person may be granted a license under a particular patented
invention relating to medicine under Section 34(d), it is sufficient that the application be made after the
expiration of three years from the date of the grant of the patent and that the Director should find that a
case for granting such license has been made out. Since in the instant case it is admitted by petitioner
that the chemical substance chloramphenicol is a medicine, while Letters Patent No. 50 covering said
substance were granted to Parke Davis & Company on February 9, 1950, and the instant application for
license under said patent was only filed in 1960, verily the period that had elapsed then is more than three
years, and so the conditions for the grant of the license had been fulfilled. We find, therefore, no error in
the decision of the Director of Patents on this aspect of the controversy.

It is sufficient that the invention be related to medicine. It is not required that it be at the same time
necessary for public health or public safety. Moreover, the claim of petitioner that the word "necessary"
means "indispensable" does not hold water, for necessity admits of many degrees, as it is clearly
explained in Bouvier's Law Dictionary.

But, even if we assume that the patented invention is not only related to medicine but to one that is also
indispensable or necessary to public health and public safety, here we can say that both conditions are
present, since according to Dr. Leon V. Picache, who testified in this case, the substance
chloramphenicol is one that constitutes an effective cure for gastro-enteritis diseases, while the inventor's
own specifications attest that chloramphenicol is a "therapeutic agent notably in the case of shigella
pradysenteria.

The claim that a compulsory license cannot be granted to respondent because the latter does not intend
to work the patented invention itself but merely to import it has also no legal nor factual basis. In the first
place, Section 34 of Republic Act No. 165 does not require the petitioner of a license to work the patented
invention if the invention refers to medicine, for the term "worked" or "working" used in said section does
not apply to the circumstance mentioned in subsection (d), which relates to medicine or to one necessary
for public health and public safety. Indeed, the Director of Patents has already correctly stated in previous
cases that, in its strict sense, the term "worked" or "working" mentioned in the last paragraph of Section
34 of the Patent Law "has no applicability to those cited patented matters and the qualification of the
petitioner to work the invention is immaterial, it being not a condition precedent before any person may
apply for the grant of the license." In the second place, it is not the intention of respondent to work or
manufacture the patented invention itself but merely to manufacture its brand of medicinal preparations
containing such substance. And even if it be required that respondent should work itself the invention that
it intends to use in the manufacture of its own brand of medicinal preparations said respondent would not
be found wanting for it is staffed with adequate and competent personnel and technicians; it has several
laboratories where medicines are prepared for safety and quality; it is equipped with machines for
subdividing antibiotics; and it has capsule-filling machines and adequate personnel and facilities to test
the quality of chloramphenicol.

Finally, we may add that it is not a valid ground to refuse the license applied for the fact that the patentee
is working the invention and as such has the exclusive right to the invention for a term of 17 years
(Sections 20 & 21, Republic Act 165) as claimed in the third assignment of error, the reason for it being
that the provision permitting the grant of compulsory license is intended not only to give a chance to
others to supply the public with the quantity of the patented article but especially to prevent the building
up of patent monopolies.

Finally, with regard to the contention that petitioner is entitled to the exclusive use of the invention for a
term which under the law extends to 17 years, suffice it for us to quote what the Director of Patents says
on this point:

The right to exclude others from the manufacturing, using, or vending an invention relating to food
or medicine should be conditioned to allowing any person to manufacture, use, or vend the same
after a period of three years from the date of the grant of the letters patent. After all, the patentee
is not entirely deprived of any proprietary right. In act, he has been given the period of three years
of complete monopoly over the patent. Compulsory licensing of a patent on food or medicine
without regard to the other conditions imposed in Section 34 is not an undue deprivation of
proprietary interests over a patent right because the law sees to it that even after three years of
complete monopoly something is awarded to the inventor in the form of a bilateral and workable
licensing agreement and a reasonable royalty to be agreed upon by the parties and in default of
 such agreement, the Director of Patents may fix the terms and conditions of the license. (See
Sec. 36, Rep. Act No. 165)

The 8% royalty rate is reasonable “considering that Doctor’s Pharmaceutical, Inc. is a small
manufacturing venture compared with Parke, Davis & Company, Inc. which is a subsidiary of the huge
mother firm, Parke, Davis & Company of Michigan, USA.” If Doctor’s is making sufficient profit to justify an
increase of royalty later, Parke, Davis & Co., Inc. can easily demand an increase, considering that the
latter has access to the books and records of the former.

Right to exclude others has limitations/conditions. Allowing other to manufacture, use or sell does not
mean that you are not compensated. Royalty is given.

DP: WHEREFORE, the decision appealed from is affirmed, with costs against petitioner.
Frank v. Benito

Facts:

Plaintiffs allege that they are the owners of a patent covering hemp-stripping machine No. 1519579
issued to them by the United States Patent Office of December 16, 1924, and duly registered in the
Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235 of the
Philippine Legislature on March 17, 1925. That the important feature of the machine "is a spindle upon
which the hemp to be stripped is wound in the process of stripping." That plaintiffs have for some time
been manufacturing the machine under the patent. That the defendant manufactured a hemp-stripping
machine in which, without authority from the plaintiffs, he has embodied and used such spindles and their
method of application and use, and is exhibiting his machine to the public for the purpose of inducing its
purchase. That the use by the defendant of such spindles and the principle of their application to the
stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions and
specifications. That the defendant's machine is an infringement upon the patent granted the plaintiffs, and
plaintiffs pray for an injunction that the defendant be required to account to plaintiffs for any profits he may
have made by reason of such infringement, and for a temporary injunction restraining him in the
manufacture of other machines of the same kind of its exhibition, and that upon the final hearing, the
injunction be made permanent.

The defendant demurred to the complaint upon the ground that the facts alleged therein do not constitute
a cause of action, that it is ambiguous and vague, and that it was error to make William Henry Gohn
plaintiff.

After the demurrer was overruled, the defendant filed an answer in which he denied all of the material
allegations of the complaint, except those which are hereinafter admitted, and as a special defense
alleges:

First. That the defendant has never had at any time nor does he have any knowledge of any
suppose invention of the plaintiffs of whatever kind of hemp-stripping machine, whether patented
or not, which has circulated or not in the Philippine Islands for the sale thereof or its private
exploitation.

Second. That not having had any knowledge of any kind of hemp-stripping machine supposed to
have been invented by the plaintiffs, it never occurred to the defendant to imitate the unknown
invention of the plaintiffs.

Third. That the hemp-stripping machine of the plaintiffs, known as "La Constancia," patent of
which is duly registered, has its characteristics and original invention belonging to the defendant
which consist of two pinions with horizontal grooves which form the tool for extracting the fibers
between a straight knife upon another which is cylindrical and provided with teeth and on the
center of said two pinions there is a flying wheel its transmission belt connecting it with the motor.

The lower court rendered judgment in legal effect granting the plaintiffs the injunction prayed for in their
complaint, and absolving them from defendant's counterclaim, and judgment against the defendant for
costs.

The defendant's motion for a new trial was overruled, and on appeal, he contends that the court erred in
holding the same spindles used by the parties in this case, though different in material and form, have the
same utility and efficiency and that they are the same, and in finding that spindles used by the defendant
are an imitation of those of the plaintiffs, and in finding that the defendant infringed upon plaintiffs' patent,
and in not rendering judgment against the plaintiffs, requiring them to pay defendant P5,000 as damages,
and in enjoining the appellant from the manufacture, use and sale of this hemp-stripping machine.
Issue/s: Whether or not Benito infringes the patent rights of the petitioners when he introduced the
spindles in his invention, though made of different materials. [YES]

Held:

The spindle upon which the patent was obtained, together with the spindle upon which the defendant
relies are exhibits in the record and were before the court at the time this case was argued. The spindle of
the plaintiffs was made of wood, conical in shape and with a smooth surface. That of the defendant was
somewhat similar in shape, but was made of metal with rough surface, and the defendant claims that his
spindle was more effective and would do better work than that of the plaintiffs. Be that as it may, the
plaintiffs have a patent for their machine, and the defendant does not have a patent, and the basic
principle of plaintiffs' patent is the spindle upon which they rely, together with its specified manner and
mode of operation, and in the final analysis, it must be conceded that the basic principle of the spindle
upon which the defendant relies is founded upon the basic principle of the spindle for which the plaintiffs
have a patent. Assuming, without deciding, that the defendant's spindle is an improvement upon and is a
better spindle than that of the plaintiffs, yet, under the authority above cited, the defendant had no legal
right to appropriate the basic principle upon which the plaintiffs obtained their patent. The plaintiffs having
obtained their patent, which was duly registered in the Philippines Islands, the defendant cannot infringe
upon its basic principle.

The defendant contends that the basic principle of the spindle was a very old one in mechanics, and that
there was nothing new or novel in the application of it by the plaintiffs. Be that as it may, the plaintiffs
applied for and obtained their patent with its specifications which are attached to, and made part of, the
patent, and the proof is conclusive that the defendant is infringing upon the basic principle of the spindle
as it is defined and specified in plaintiffs' patent.

DP: The judgment of the lower court is affirmed, with costs. So ordered.
G. Sell v. Yap Jue (to be continued)

Facts:

This an appeal from a final order of the Court of First Instance of the city of Manila, in contempt
proceedings prosecuted under the provisions of section 172 of the Code of Civil Procedure. The principal
case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process
for the manufacture of curved handles for canes, parasols, and umbrellas. In that case plaintiff
established his title to a valid patent covering the process in question, and obtained against this defendant
a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by
this court on appeal (6 Phil. Rep., 143.) The order was couched in the following terms:

It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by
means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by patent
No. 19228, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell -

and the process therein mentioned is fully described in the following statement which accompanied the
application for the patent:

After the canes have been cut for cane or umbrella handles, the outsides are thoroughly cleaned. This
operation having been performed, they are then trimmed and the interior cleaned by means of a gimlet of
about 15 centimeters in length operated by a wheel, by means of which the knots inside are broken.
There is then introduced to a depth of about 15 centimeters a piece of very clean bamboo, which
completely fills the hole made by the gimlet, thereby giving to the cane the necessary strength to resist
the heat of the lamp or blowpipe without breaking or cracking.

This operation having been performed, the cane, the end of which is attached to a fixed point, is given the
shape of a hook or some other form by means of fire and pressure. Once the cane has been shaped as
desired, it is allowed to cool, and is then cleaned, varnished, and ornamented at will.

This industry requires skillful, handiwork, owing to the great risk engendered by the treatment of such
fragile material as a light cane. On the other hand, however, it affords large profits to the workman.

NOTE. - The patent applied for shall be for the industrial product "cane handles for walking sticks and
umbrellas, curved by means of a small lamp or blowpipe, fed by petroleum or mineral fuel."

Thereafter the defendant continued to manufacture curved cane handled for walking sticks and umbrellas
by a process in all respectes identical with that used by the plaintiff under his patent, except only that he
be substituted for a lamp fed with petroleum or mineral oil, lamp fed with alcohol, as appears from a
stipulation entered into between plaintiff and defendant in the following terms:

The plaintiff and defendant agree upon the fact that the defendant has used and is still using a process for
curving handles of canes and umbrellas identical with that described in the application for the patent by
the plaintiff with the exception that he has substituted for the lamp fed with all other lamp fed with alcohol.

Contempt proceedings were instituted against the defendant in the month of February, 1904, the plaintiff
in the original action alleging that the -

Defendant in disobediencce of the judgment of the same was and is now engaged in the unlawful
manufacture of umbrella handles by the identical process described in and protected said patent, No.
19228, or a process so like the patented process as to be indistinguishable.
The trial court found the defendant "not guilty" of contempt as charged; and this court, on appeal, held
that - a character that it could be made patent by the mere annunciation of the acts performed by the
defendant, which are alleged to constitute the said violation. These acts were not clearly and manifestly
contrary to the precise terms of the prohibition. According to the express language of the judgment, the
prohibition is against the manufacture of canes and umbrellas with curved handles by means of the use of
a cool or mineral oil-burning lamp or blowpipe and the parties have stipulated that the defendant did not
use a coal or mineral oil-burning lamp but an alcohol-burning lamp.

The question, however, arises as to whether that prohibition included the substitution of alcohol for coal or
mineral oil. In more abstract and general terms, the appellant propounds this question in his brief, as
follows: "The question presented by this appeal is whether or not the use of a patented process by a third
person, without license or authority therefor, constitutes an infringement when the alleged infringer has
substituted in lieu of some unessential part of the patented process a well-known mechanical
equivalent." It has seen that by its very terms this question implies in the present case the existence of
two fundamental facts which must first be duly established, viz: (1) That the use of the lamp fed with
petroleum or mineral oil was an unessential part of the patented process the use of which by the accused
was prohibited by the said judgment; and (2) that alcohol is an equivalent and proper substitute, well
known as such, for mineral oil or petroleum in connection with the said process. The appellant has failed
to affirmatively establish either of these two essential facts. He has merely assumed their existence,
without proving the same, thus begging the whole question. Consequently the contempt with which the
accused is charged has not been fully and satisfactorily proved, and the order appealed from should
accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt. (7 Phil. Rep.,
130).

Thereafter the plaintiff continued the use of the patented process, save only for the substitutions of a lamp
fed by alcohol for a lamp fed by petroleum or mineral oil, and new proceedings were instituted under the
provisions of section 172 for the purpose of enforcing the original injunction above cited. Substantially the
same question is submitted in these new proceedings as that submitted in the former case, but at the trial
of this case testimony was introduced which, in our opinion, leaves no room for doubt, first, that alcohol is
an equivalent or substitute, well known as such at the time when the patent was issued, for mineral oil or
petroleum, in connection with blast lamps or blowpipes such as that which plaintiff uses in the patented
process, and, second, that the use of a blast lamp or blowpipe fed with petroleum or mineral oil, rather
than one fed with alcohol, is an unessential part of the patented process the use of which was prohibited
by the said judgment.chanroblesvirtualawlibrary chanrobles virtual law library

It was clearly proven at the trial, that kerosene and alcohol blast lamps are agencies for producing and
applying heat, well known throughout the world long prior to 1906, the date of the issue of the patent; that
it is and for many years has been known that one may for all ordinary purposes be used in the place of
the other, and especially for the purpose of applying heat in the manner described in the patent; that the
only consideration which determines the employment of one in place of the other is the convenience of
the user and the question of relative cost; and that the principle upon which both lamps work is
substantially identical, the only difference in construction being occasioned by the application of this
principle to oils of different physical and chemical composition.chanroblesvirtualawlibrary chanrobles
virtual law library

The plaintiff does not and can not claim a patent upon the particular lamp used by him. The patent,
however, gives him the exclusive right to the use of "la lamparilla o soplete, alimentada de petroleo o
esencia mineral" (the small lamp or blowpipe fed with petroleum or mineral oil) in manufacturing curved
handles for umbrellas and canes, to which reference is made in the above-cited descriptive statement and
annexed note. "The small lamp or blowpipe" mentioned in the descriptive statement and annexed note
which accompanied the application for the patent, evidently referred to the design of a blast lamp which
was attached thereto; and in our opinion both plaintiff and defendant make use of a blast lamp
substantially similar, in principle and design, to that referred to in the descriptive statement and the
annexed note, for the exclusive use of which in the manufacture of curved handles, plaintiff holds a
patent. True, defendant's blast lamp is fed with alcohol, and its shape varies in unimportant details, for the
purpose of accommodating the principle, by which the flame is secured, to the different physical and
chemical composition of the fuel used therein; but the principle on which it works, its mode of application,
and its general design distinguish it in no essential particular from that used by the plaintiff. If the original
design accompanying the statement had shown a blast lamp made of brass or delf, he would be a
reckless advocate who would claim that the patent might lawfully be evaded by the use of a lamp made of
iron or tin; or if the original design had shown a blast lamp 6 inches high with a nozzle 4 inches long it
would hardly be seriously contended that the use of lamp 8 inches high with a nozzle 3 inches long would
protect the ingenious individual, who in all other respects borrowed the patented process, from the
consequences of an action for damages for infringement. But in the light of the evidence of record in this
case, the reasoning upon which these hypothetical claims should be rejected applies with equal force to
the contentions of the defendant, the ground for the rejection of the claims in each case being the same,
and resting on the fact that unessential changes, which do not affect the principle of the blast lamp used
in the patented process, or the mode of application of heat authorized by the patent, are not sufficient to
support a contention that the process in one case is in any essential particular different from that used in
the other.chanroblesvirtualawlibrary chanrobles virtual law library

Counsel for plaintif invokes the doctrine of "mechanical equivalents" in support of his contention, and
indeed that doctrine is strikingly applicable to the facts in this case. This doctrine is founded upon sound
rules of reason and logic, and unless restrained or modified by law in particular jurisdiction, is of universal
application, so that it matters not whether a patent be issued by one sovereignty or another, the doctrine
may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of
substitution of some part of his invention by some well known mechanical equivalent. Our attention has
not been called to any provision of the patent law of Spain, which denies to patentees thereunder the just
and equitable protection of the doctrine; and indeed a patent law which failed to recognize this doctrine
would afford scant protection to inventors, for it is difficult if not impossible to conceive an invention, which
is incapable of alteration or change in some unessential part, so as to bring that part outside of the
express terms of any form of language which might be used in granting a patent for the invention; and has
been well said by counsel for plaintiff, human ingenuity would be taxed beyond its powers in preparing a
grant of a patent so comprehensive in its terms, "as to include within the express terms of its detailed
description every possible alternative of form, size, shape, material, location, color, weight, etc., of every
wheel, rod, bolt, nut, screw, plate, and other component parts of an invention." chanrobles virtual law
library

The following citations from various decisions of the Federal Courts of the United States illustrate the
application of the doctrine in that jurisdiction, and clearly point the way to the proper solution of the
questions involved in the case at bar:

Can the defendant have the right of infringement, by substituting in lieu of some parts of the combination
well-known mechanical equivalents? I am quite clear that be can not, both on principle and authority. It is
not to be disputed that the inventor of an ordinary machine is, by his letters patent, protected against all
mere formal alterations and against the substitution of mere mechanical equivalents. Why should not the
inventor of a new combination receive the same protection? If he can not, then will his patent not be worth
the parchment on which it is written.chanroblesvirtualawlibrary chanrobles virtual law library

If no one can be held to infringe a patent for a combination unless he uses all the parts of the combination
and the identical machinery as that of the patentee, then will no patent for a combination be infringed; for
certainly no one capable of operating a machine can be incapable of adopting some formal alteration in
the machinery, or of substituting mechanical equivalents. No one infringes a patent for a combination who
does not employ all of the ingredients of the combination; but if he employs all the ingredients, or adopts
mere formal alterations, or substitutes, for one ingredient another which was well known at the date of the
patent as a proper substitute for the one withdrawn, and which performs substantially the same function
as the one withdrawn, he does infringe. (King vs. Louisville Cement Co., Fed. Cas., 7798.) chanrobles
virtual law library
Bona fide inventors of a combination are as much entitled to equivalents as the inventors other
patentable improvements; by which is meant that a patentee in such a case may substitute another
ingredient for any one of the ingredients of his invention, if the ingredient substituted performs the same
function as the one omitted and as well known at the date of his patent as a proper substitute for the one
omitted in the patented combination. Apply that rule and it is clear that an alteration in a patented
combination which merely substitutes another old ingredient for one of the ingredients in the patented
combination, is an infringement of the patent, if the substitute performs the same function and was well
known at the date of the patent as a proper substitute for the omitted ingredient. (Gould vs. Rees, 82
U.S., 187, 194.) chanrobles virtual law library

Mere formal alterations in a combination in letters patent are no defense to the charge of infringement and
the withdrawal of one ingredient from the same and the substitution of another which was well known at
the date of the patent as a proper substitute for the one withdrawn is a mere formal alteration of the
combination if the ingredient substituted performs substantially the same function as the one
withdrawn.chanroblesvirtualawlibrary chanrobles virtual law library

Bona fide inventors of a combination are as much entitled to suppress every other combination of the
same ingredients to produce the same result, not substantially different from what they have invented and
caused to be patented as to any other class of inventors. All alike have the right to suppress every
colorable invasion of that which is secured to them by letters patent. (Seymour vs. Osborne, 78 U.S., 516,
556.) chanrobles virtual law library

A claim for the particular means and mode of operation described in the specification extends, by
operation of law, to the equivalent of such means - not equivalent simply because the same result is
thereby produced - but equivalent as being substantially the same device in structure, arrangement and
mode of operation. (Burden vs. Corning, Fed. Cas., 2143. Gottfried vs. Philip Best Brewing Co., Fed.
Cas., 5633.) chanrobles virtual law library

An equivalent device is such as a mechanic of ordinary skill in construction of similar machinery, having
the forms, specifications and machine before him, could substitute in the place of the mechanism
described without the exercise of the inventive faculty. (Burden vs. Corning, supra.) chanrobles virtual law
library

All the elements of the invention in this case are old, and the rule in such cases, as before explained,
undoubtedly is that a purpose can not invoke the doctrine of equivalents to suppress all other
improvements of the old machine, but he is entitled to treat everyone as an infringer who makes, uses, or
vends his patented improvement without any other change than the employment of a substitute for one of
its elements, well known as such at the date of his invention, and which any constructor acquainted with
the art will know how to comply. The reason for the qualification of the rule as stated is, that such change
- that is, the mere substitution of a well- known element for another - where it appears that the substituted
element was well known as a usual substitute for the element left out - is merely a formal one, and
nothing better than a colorable evasion of the patent. (Union Sugar Refining Co. vs. Matthieson, Fed.
Cas., 14399.)

Counsel for the defendant insists that, under Spanish law, none of the steps of the process described in
the descriptive statement, save those mentioned in the "note" thereto attached are included in the patent,
and that the patent rights secured thereunder are strictly limited to the precise language of the "note"
attached to the descriptive statement; while counsel for plaintiff appears to think that the language of the
patent covers any process or device whereby wood or cane may be bent or curved by the use of heat.
But for the purpose of this decision it is not necessary to consider these questions, further than to hold, as
we do, that under the doctrine of equivalents, the language of the note in the descriptive statement
applies to the operation of applying heat for the purpose of curving handles or canes and umbrellas by
means of a blast lamp fed with alcohol, as well as by means of a blast lamp fed with petroleum or mineral
oil; and the defendant having admitted the fact that he applied heat for the purpose of curving handles for
canes and umbrellas by means of a blast lamp fed with alcohol, he must be deemed to have contempt of
violating the terms and the injunction issued in the principal case, wherein plaintiff was declared the
owner of the patent in question, and defendant enjoined from its
infringement.chanroblesvirtualawlibrary chanrobles virtual law library

The argument of counsel for defendant and appellant, based on the theory that the questions herein
discussed and decided to have been heretofore settled by this court, and that the subject-matter of this
proceeding is res adjudicata  between the parties thereto is sufficiently refuted by the simple reading of
the decision of this court in the case relied upon. (Gsell vs. Veloso, 7 Phil. Rep., 130.) chanrobles virtual
law library

The judgment of the lower court should be and is hereby affirmed, with the costs of this instance against
the appellant.

Issue/s:

Held: