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Section 28. Right to a Patent . - The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to apatent shall belong to them jointly. (Sec. 1, !.". #o. 1$%a)

Section 29. First to File Rule. - &' two (2) or more persons have made the invention separately and independently o' each other, the right to the patent shall belong to the personwho 'iled an application 'or sch invention, or where two or more applications are 'iled 'or the same invention, to the applicant who has the earliest 'iling date or, the earliestpriority date. (rd sentence, Sec. 1, !.". #o. 1$%a.)

Section 67. Patent Application by Persons Not Having the Right to a Patent . . - $*.1. &' a person re'erred to in Section 2+ other than the applicant, is declared by 'inal cortorder or decision as having the right to the patent, sch person may, within three () months a'ter the decision has become 'inal

(a) rosecte the application as his own application in place o' the applicant

(b) /ile a new patent application in respect o' the same invention

(c) !e0est that the application be re'sed or

(d) See cancellation o' the patent, i' one has already been issed.

$*.2. The provisions o' Sbsection .2 shall apply mtatis mtandis to a new application 'iled nder Sbsection $*. 1(b). (n)

Section 68. Remedies of the True and Actual Inventor . - &' a person, who was deprived o' the patent withot his consent or throgh 'rad is declared by 'inal cort order ordecision to be the tre and actal inventor, the cort shall order 'or his sbstittion as patentee, or at the option o' the tre inventor, cancel the patent, and award actal andother damages in his 'avor i' warranted by the circmstances. (Sec. , !.". #o. 1$%a)

Section 31. Right of Priority . . - "n application 'or patent 'iled by any person who has previosly applied 'or the same invention in another contry which by treaty, convention, or law a''ords similar privileges to /ilipino citi3ens, shall be considered as 'iled as o' the date o' 'iling the 'oreign application rovided, That (a) the local application e4pressly

claims priority (b) it is 'iled within twelve (12) months 'rom the date the earliest 'oreign application was 'iled and (c) a certi'ied copy o' the 'oreign application together with an

5nglish translation is 'iled within si4 ($) months 'rom the date o' 'iling in the hilippines. (Sec. 1%, !.". #o. 1$%a)

Section 32. The Application. - 2.1. The patent application shall be in /ilipino or 5nglish and shall contain the 'ollowing

(a) " re0est 'or the grant o' a patent

(b) " description o' the invention

(c) 6rawings necessary 'or the nderstanding o' the invention

(d) 7ne or more claims and

(e) "n abstract.

2.2. #o patent may be granted nless the application identi'ies the inventor. &' the applicant is not the inventor, the 7''ice may re0ire him to sbmit said athority. (Sec. 1,!.". #o. 1$%a)

Section 33. Appointment of Agent or Representative. - "n applicant who is not a resident o' the hilippines mst appoint and maintain a resident agent or representative in thehilippines pon whom notice or process 'or jdicial or administrative procedre relating to the application 'or patent or the patent may be served. (Sec. 11, !.". #o. 1$%a)

Section 34. The Request . - The re0est shall contain a petition 'or the grant o' the patent, the name and other data o' the applicant, the inventor and the agent and the title o'the invention. (n)

Section 35. Disclosure and Description of the Invention. - %.1. 6isclosre. - The application shall disclose the invention in a manner s''iciently clear and complete 'or it to becarried ot by a person silled in the art. Where the application concerns a microbiological process or the prodct thereo' and involves the se o' a micro-organism which cannotbe s''iciently disclosed in the application in sch a way as to enable the invention to be carried ot by a person silled in the art, and sch material is not available to the pblic,the application shall be spplemented by a deposit o' sch material with an international depository instittion.

%.2. 6escription. - The !eglations shall prescribe the contents o' the description and the order o' presentation. (Sec. 18, !.". #o. 1$%a)

Section 36. The laims. - $.1. The application shall contain one (1) or more claims which shall de'ine the matter 'or which protection is soght. 5ach claim shall be clear andconcise, and shall be spported by the description.

$.2. The !eglations shall prescribe the manner o' the presentation o' claims. (n)

Section 37. The Abstract . - The abstract shall consist o' a concise smmary o' the disclosre o' the invention as contained in the description, claims and drawings in pre'erablynot more than one hndred 'i'ty (1%) words. &t mst be dra'ted in a way which allows the clear nderstanding o' the technical problem, the gist o' the soltion o' that problemthrogh the invention, and the principal se or ses o' the invention. The abstract shall merely serve 'or technical in'ormation. (n)

Section 40. Filing Date Requirements. - 8.1. The 'iling date o' a patent application shall be the date o' receipt by the 7''ice o' at least the 'ollowing elements


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(a) "n e4press or implicit indication that a hilippine patent is soght

(b) &n'ormation identi'ying the applicant and

(c) 6escription o' the invention and one (1) or more claims in /ilipino or 5nglish.

8.2. &' any o' these elements is not sbmitted within the period set by the !eglations, the application shall be considered withdrawn. (n)

Section 41. According a Filing Date. - The 7''ice shall e4amine whether the patent application satis'ies the re0irements 'or the grant o' date o' 'iling as provided in Section 8hereo'. &' the date o' 'iling cannot be accorded, the applicant shall be given an opportnity to correct the de'iciencies in accordance with the implementing !eglations. &' theapplication does not contain all the elements indicated in Section 8, the 'iling date shold be that date when all the elements are received. &' the de'iciencies are not remediedwithin the prescribed time limit, the application shall be considered withdrawn. (n)

Section 42. Formality !"amination. - 82.1. "'ter the patent application has been accorded a 'iling date and the re0ired 'ees have been paid on time in accordance with the!eglations, the applicant shall comply with the 'ormal re0irements speci'ied by Section 2 and the !eglations within the prescribed period, otherwise the application shall beconsidered withdrawn.

82.2. The !eglations shall determine the procedre 'or the re-e4amination and revival o' an application as well as the appeal to the 6irector o' atents 'rom any ' inal action bythe e4aminer. (Sec. 1$, !.". #o. 1$%a)

Section 43. lassification and #earch. - "n application that has complied with the 'ormal re0irements shall be classi'ied and a search condcted to determine the prior art. (n)

Section 44. Publication of Patent Application. - 88.1. The patent application shall be pblished in the &7 9a3ette together with a search docment established by or on behal'o' the 7''ice citing any docments that re'lect prior art, a'ter the e4piration o' eighteen ( 1) months 'rom the ' iling date or priority date.

88.2. "'ter pblication o' a patent application, any interested party may inspect the application docments 'iled with the 7''ice.

88.. The 6irector 9eneral sbject to the approval o' the Secretary o' Trade and &ndstry, may prohibit or restrict the pblication o' an application, i' in his opinion, to do sowold be prejdicial to the national secrity and interests o' the !epblic o' the hilippines. (n)

Section 45. onfidentiality $efore Publication. - " patent application, which has not yet been pblished, and all related docments, shall not be made available 'or inspectionwithot the consent o' the applicant. (n)

Section 46. Rights onferred by a Patent Application After Publication. - The applicant shall have all the rights o' a patentee nder Section *$ against any person who, withothis athori3ation, e4ercised any o' the rights con'erred nder Section *1 o' this "ct in relation to the invention claimed in the pblished patent application, as i' a patent had beengranted 'or that invention rovided, That the said person had

8$.1. "ctal nowledge that the invention that he was sing was the sbject matter o' a pblished application or

8$.2. !eceived written notice that the invention that he was sing was the sbject matter o' a pblished application being identi'ied in the said notice by its serial nmberrovided, That the action may not be 'iled ntil a'ter the grant o' a patent on the pblished application and within 'or (8) years 'rom the commission o' the acts complained o'.

(n)

Section 47. %bservation by Third Parties. - /ollowing the pblication o' the patent application, any person may present observations in writing concerning the patentability o' theinvention. Sch observations shall be commnicated to the applicant who may comment on them. The 7''ice shall acnowledge and pt sch observations and comment in the'ile o' the application to which it relates. (n)

Section 48. Request for #ubstantive !"amination. - 8.1. The application shall be deemed withdrawn nless within si4 ($) months 'rom the date o' pblication nder Section 81,a written re0est to determine whether a patent application meets the re0irements o' Sections 21 to 2* and Sections 2 to + and the 'ees have been paid on time.

8.2. Withdrawal o' the re0est 'or e4amination shall be irrevocable and shall not athori3e the re'nd o' any 'ee. (n)

Section 49. Amendment of Application. - "n applicant may amend the patent application dring e4amination rovided, That sch amendment shall not inclde new matterotside the scope o' the disclosre contained in the application as 'iled. (n)

Section 50. &rant of Patent . - %.1. &' the application meets the re0irements o' this "ct, the 7''ice shall grant the patent rovided, That all the 'ees are paid on time.

%.2. &' the re0ired 'ees 'or grant and printing are not paid in de time, the application shall be deemed to be withdrawn.

%.. " patent shall tae e''ect on the date o' the pblication o' the grant o' the patent in the &7 9a3ette. (Sec. 1, !.". #o. 1$%a)

Section 71. Rights onferred by Patent . - *1.1. " patent shall con'er on its owner the 'ollowing e4clsive rights

(a) Where the sbject matter o' a patent is a prodct, to restrain, prohibit and prevent any nathori3ed person or entity 'rom maing, sing, o''ering 'or sale,selling or importing that prodct

(b) Where the sbject matter o' a patent is a process, to restrain, prevent or prohibit any nathori3ed person or entity 'rom sing the process, and 'romman'actring, dealing in, sing, selling or o''ering 'or sale, or importing any prodct obtained directly or indirectly 'rom sch process.


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*1.2. atent owners shall also have the right to assign, or trans'er by sccession the patent, and to conclde licensing contracts 'or the same. (Sec. *, !.". #o. 1$%a)

Section 103. Transmission of Rights. - 1.1. atents or applications 'or patents and invention to which they relate, shall be protected in the same way as the rights o' otherproperty nder the :ivil :ode.

1.2. &nventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or transmitted by inheritance or be0est or may be thesbject o' a license contract. (Sec. %, !.". #o. 1$%a)

Section 104. Assignment of Inventions. - "n assignment may be o' the entire right, title or interest in and to the patent and the invention covered thereby, or o' an ndividedshare o' the entire patent and invention, in which event the parties become joint owners thereo'. "n assignment may be limited to a speci'ied territory. (Sec. %1, !.". #o. 1$%)

Section 75. !"tent of Protection and Interpretation of laims. - *%.1. The e4tent o' protection con'erred by the patent shall be determined by the claims, which are to beinterpreted in the light o' the description and drawings.

*%.2. /or the prpose o' determining the e4tent o' protection con'erred by the patent, de accont shall be taen o' elements which are e0ivalent to the elements e4pressed inthe claims, so that a claim shall be considered to cover not only all the elements as e4pressed therein, bt also e0ivalents. (n)

Section 76. ivil Action for Infringement . - *$.1. The maing, sing, o''ering 'or sale, selling, or importing a patented prodct or a prodct obtained directly or indirectly 'rom apatented process, or the se o' a patented process withot the athori3ation o' the patentee constittes patent in'ringement.

*$.2. "ny patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been in'ringed, may bring a civil action be'ore a cort o'competent jrisdiction, to recover 'rom the in'ringer sch damages sstained thereby, pls attorney;s 'ees and other e4penses o' litigation, and to secre an injnction 'or theprotection o' his rights.

*$.. &' the damages are inade0ate or cannot be readily ascertained with reasonable certainty, the cort may award by way o' damages a sm e0ivalent to reasonable royalty.

*$.8. The cort may, according to the circmstances o' the case, award damages in a sm above the amont 'ond as actal damages sstained rovided, That the awarddoes not e4ceed three () times the amont o' sch actal damages.

*$.%. The cort may, in its discretion, order that the in'ringing goods, materials and implements predominantly sed in the in'ringement be disposed o' otside the channels o'commerce or destroyed, withot compensation.

*$.$. "nyone who actively indces the in'ringement o' a patent or provides the in'ringer with a component o' a patented prodct or o' a prodct prodced becase o' a patentedprocess nowing it to be especially adopted 'or in'ringing the patented invention and not sitable 'or sbstantial non-in'ringing se shall be liable as a contribtory in'ringer andshall be jointly and severally liable with the in'ringer. (Sec. 82, !.". #o. 1$%a)

[G.R. No. 97343. September 13, 1993.]

PASCUAL GODINES, petitioner, vs.

THE HONORABLE COURTOF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO

ENTERPRISES, INC., respondents.

Jesus S. Anonat for petitioner.

Arturo M. Alinio for private respondent.

SYLLABUS

1. REMEDIAL LAW; APPEAL; APPELLATE COURT'S FINDINGS OF FACT

CONCLUSIVE UPON SUPREME COURT. — Of general acceptance is the rule

imbedded in our jurisprudence that ". . . the jurisdiction of the Supreme Court in

cases brought to it from the Court of Appeals in a petition for certiorari under


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Rule 45 of the Rules of Court is limited to the review of errors of law, and that

said appellate court's findings of fact are conclusive upon this Court."

2. COMMERCIAL LAW; PATENT LAW (REPUBLIC ACT NO. 165); TESTS TO

DETERMINE INFRINGEMENT; LITERAL INFRINGEMENT TEST, EXPLAINED;

DOCTRINE OF EQUIVALENTS, CONSTRUED; CASE AT BAR. — Tests have

been established to determine infringement. These are (a) literal infringement;

and (b) the doctrine of equivalents. In using literal infringement as a test, ". . .

resort must be had, in the first instance, to the words of the claim. If accused

matter clearly falls within the claim, infringement is made out and that is the end

of it." To determine whether the particular item falls within the literal meaning of

the patent claims, the Court must juxtapose the claims of the patent and the

accused product within the overall context of the claims and specifications, to

determine whether there is exact identity of all material elements . . . The patent

issued by the Patent Office referred to a "farm implement but more particularly to

a turtle hand tractor having a vacuumatic housing float on which the engine drive

is held in place, the operating handle, the harrow housing with its operating

handle and the paddy wheel protective covering." It appears from the observation

of the trial court that these claims of the patent and the features of the patented

utility model were copied by petitioner. We are compelled to arrive at no other

conclusion but that there was infringement. . . . Recognizing that the logical

fallback position of one in the place of defendant is to aver that his product isdifferent from the patented one, courts have adopted the doctrine of equivalents

which recognizes that minor modifications in a patented invention are sufficient to

put the item beyond the scope of literal infringement. Thus, according to this

doctrine, "(a)n infringement also occurs when a device appropriates a prior

invention by incorporating its innovative concept and, albeit with some

modification and change, performs substantially the same function in

substantially the same way to achieve substantially the same result." The reason

for the doctrine of equivalents is that to permit the imitation of a patentedinvention which does not copy any literal detail would be to convert the protection

of the patent grant into a hollow and useless thing. Such imitation would leave

room for — indeed encourage — the unscrupulous copyist to make unimportant

and insubstantial changes and substitutions in the patent which, though adding

https://cdasiaonline.com/laws/2482https://cdasiaonline.com/laws/2482


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nothing, would be enough to take the copied matter outside the claim, and hence

outside the reach of the law.

D E C I S I O N

ROMERO, Jp:

Through this petition for review on certiorari of a decision of the Court of Appeals

affirming the decision of the trial court, petitioner Pascual Godines seeks to

reverse the adverse decision of the Courta quo that he was liable for

infringement of patent and unfair competition. The dispositive portion of the

assailed decision is hereby quoted to wit:

"WHEREFORE, with the elimination of the award for attorney's fees, the

judgment appealed from is hereby AFFIRMED, with costs against

appellant."1

The patent involved in this case is Letters Patent No. UM-2236 issued by the

Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers

a utility model for a hand tractor or power tiller, the main components of which are

the following: "(1) a vacuumatic house float; (2) a harrow with adjustable

operating handle; (3) a pair of paddy wheels; (4) a protective water covering for

the engine main drive; (5) a transmission case; (6) an operating handle; (7) an

engine foundation on the top midportion of the vacuumatic housing float to which

the main engine drive is detachedly installed; (8) a frontal frame extension above

the quarter — circularly shaped water covering hold (sic) in place the

transmission case; (9) a V-belt connection to the engine main drive with

transmission gear through the pulley, and (10) an idler pulley installed on the

engine foundation."2 The patented hand tractor works in the following manner:

"the engine drives the transmission gear thru the V-belt, a driven pulley and atransmission shaft. The engine drives the transmission gear by tensioning of the

V-belt which is controlled by the idler pulley. The V-belt drives the pulley attached

to the transmission gear which in turn drives the shaft where the paddy wheels

are attached. The operator handles the hand tractor through a handle which is

https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote1_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote2_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote1_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote2_0


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inclined upwardly and supported by a pair of substanding pipes and reinforced by

a U-shaped G.I. pipe at the V-shaped end."3

The above mentioned patent was acquired by SV-Agro Industries Enterprises,

Inc., herein private respondent, from Magdalena Villaruz, its chairman and

president, by virtue of a Deed of Assignment executed by the latter in its favor.

On October 31, 1979, SV-Agro Industries caused the publication of the patent in

Bulletin Today, a newspaper of general circulation.

In accordance with the patent, private respondent manufactured and sold the

patented power tillers with the patent imprinted on them. In 1979, SV-Agro

Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga

del Sur branch. Upon investigation, it discovered that power tillers similar to those

patented by private respondent were being manufactured and sold by petitioner

herein. Consequently, private respondent notified Pascual Godines about the

existing patent and demanded that the latter stop selling and manufacturing

similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro

Industries filed before the Regional Trial Court a complaint for infringement of

patent and unfair competition.

After trial, the court held Pascual Godines liable for infringement of patent and

unfair competition. The dispositive portion of the decision reads as follows:

"WHEREFORE, premises considered, JUDGMENT is hereby renderedin favor of the plaintiff SV-Agro Industries Enterprises, Inc., and against

defendant Pascual Godines:

1. Declaring the writ of preliminary injunction issued by this Court against

defendant as permanent;

2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty

Thousand Pesos (P50,000.00) as damages to its business reputation

and goodwill, plus the further sum of Eighty Thousand Pesos

(P80,000.00) for unrealized profits during the period defendant was

manufacturing and selling copied or imitation floating power tiller;

3. Ordering the defendant to pay the plaintiff, the further sum of Eight

Thousand Pesos (P8,000.00) as reimbursement for attorney's fees and

other expenses of litigation; and to pay the costs of the suit.

SO ORDERED." 4

https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote3_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote4_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote4_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote3_0https://cdasiaonline.com/jurisprudences/16507?hits%5B%5D%5Bid%5D=16507&hits%5B%5D%5Btype%5D=Jurisprudence&path=%2Fjurisprudences%2Fsearch&q%5Bcitation_finder%5D=&q%5Bfull_text%5D=&q%5Bissue_no%5D=97343&q%5Bponente%5D=&q%5Bsyllabus%5D=&q%5Btitle%5D=&q%5Butf8%5D=%E2%9C%93&q%5Byear_end%5D=&q%5Byear_start%5D=#footnote4_0


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The decision was affirmed by the appellate court.

Thereafter, this petition was filed. Petitioner maintains the defenses which he

raised before the trial and appellate courts, to wit: that he was not engaged in the

manufacture and sale of the power tillers as he made them only upon the special

order of his customers who gave their own specifications; hence, he could not be

liable for infringement of patent and unfair competition; and that those made by

him were different from those being manufactured and sold by private

respondent.

We find no merit in his arguments. The question of whether petitioner was

manufacturing and selling power tillers is a question of fact better addressed to

the lower courts. In dismissing the first argument of petitioner herein, the Court of

Appeals quoted the findings of the trial court, to wit:

"It is the contention of defendant that he did not manufacture or make

imitations or copies of plaintiff's turtle power tiller as what he merely did

was to fabricate his floating power tiller upon specification and designs of

those who ordered them. However, this contention appears untenable in

the light of the following circumstances: 1) he admits in his Answer that

he has been manufacturing power tillers or hand tractors, selling and

distributing them long before plaintiff started selling its turtle power tiller

in Zamboanga del Sur and Misamis Occidental, meaning that defendant

is principally a manufacturer of power tillers, not upon specification anddesign of buyers, but upon his own specification and design; 2) it would

be unbelievable that defendant would fabricate power tillers similar to the

turtle power tillers of plaintiff upon specifications of buyers without

requiring a job order where the specification and designs of those

ordered are specified. No document was (sic) ever been presented

showing such job orders, and it is rather unusual for defendant to

manufacture something without the specification and designs,

considering that he is an engineer by profession and proprietor of the

Ozamis Engineering shop. On the other hand, it is also highly unusualfor buyers to order the fabrication of a power tiller or hand tractor and

allow defendant to manufacture them merely based on their verbal

instructions. This is contrary to the usual business and manufacturing

practice. This is not only time consuming, but costly because it involves

a trial and error method, repeat jobs and material wastage. Defendant


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judicially admitted two (2) units of the turtle power tiller sold by him to

Policarpio Berondo.5

Of general acceptance is the rule imbedded in our jurisprudence that ". . . the

jurisdiction of the Supreme Court in cases brought to it from the Court of

Appeals in a petition for certiorari under Rule 45 of the Rules of Court is

limited to the review of errors of law, and that said appellate court's findings of

fact are conclusive upon this Court."6

The fact that petitioner herein manufactured and sold power tillers without

patentee's authority has been established by the courts despite petitioner's

claims to the contrary.

The question now arises: Did petitioner's product infringe upon the patent ofprivate respondent?

Tests have been established to determine infringement. These are (a) literal

infringement; and (b) the doctrine of equivalents.7 In using literal infringement as

a test, ". . . resort must be had, in the first instance, to the words of the claim. If

accused matter clearly falls within the claim, infringement is made out and that is

the end of it."8To determine whether the particular item falls within the literal

meaning of the patent claims, the Court must juxtapose the claims of the patent

and the accused product within the overall context of the claims andspecifications, to determine whether there is exact identity of all material

elements.9

The trial court made the following observation:

"Samples of the defendant's floating power tiller have been produced

and inspected by the court and compared with that of the turtle power

tiller of the plaintiff (see Exhibits H to H-28). In appearance and form,

both the floating power tillers of the defendant and the turtle power tiller

of the plaintiff are virtually the same. Defendant admitted to the Courtthat two (2) of the power tillers inspected on March 12, 1984, were

manufactured and sold by him (see TSN, March 12, 1984, p. 7). The

three power tillers were placed alongside with each other. At the center

was the turtle power tiller of plaintiff, and on both sides thereof were the

floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo

took photographs of the same power tillers (front, side, top and back

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views for purposes of comparison (see Exhibits H-4 to H-28). Viewed

from any perspective or angle, the power tiller of the defendant is

identical and similar to that of the turtle power tiller of plaintiff in form,

configuration, design and appearance. The parts or components thereof

are virtually the same. Both have the circularly-shaped vacuumatichousing float, a pair of paddy in front, a protective water covering, a

transmission box housing the transmission gears, a handle which is V-

shaped and inclined upwardly, attached to the side of the vacuumatic

housing float and supported by the upstanding G.I. pipes and an engine

base at the top midportion of the vacuumatic housing float to which the

engine drive may be attached. In operation, the floating power tiller of the

defendant operates also in similar manner as the turtle power tiller of

plaintiff. This was admitted by the defendant himself in court that they

are operating on the same principles. (TSN, August 19, 1987, p. 13)10

Moreover, it also observed that petitioner also called his power tiller as a

floating power tiller. The patent issued by the Patent Office referred to a "farm

implement but more particularly to a turtle hand tractor having a vacuumatic

housing float on which the engine drive is held in place, the operating handle,

the harrow housing with its operating handle and the paddy wheel protective

covering."11 It appears from the foregoing observation of the trial court that

these claims of the patent and the features of the patented utility model were

copied by petitioner. We are compelled to arrive at no other conclusion butthat there was infringement.

Petitioner's argument that his power tillers were different from private

respondent's is that of a drowning man clutching at straws.

Recognizing that the logical fallback position of one in the place of defendant is to

aver that his product is different from the patented one, courts have adopted the

doctrine of equivalents which recognizes that minor modifications in a patented

invention are sufficient to put the item beyond the scope of literal

infringement.12Thus, according to this doctrine, "(a)n infringement also occurs

when a device appropriates a prior invention by incorporating its innovative

concept and, albeit with some modification and change, performs substantially

the same function in substantially the same way to achieve substantially the

same result."13 The reason for the doctrine of equivalents is that to permit the

imitation of a patented invention which does not copy any literal detail would be to

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convert the protection of the patent grant into a hollow and useless thing. Such

imitation would leave room for — indeed encourage — the unscrupulous copyist

to make unimportant and insubstantial changes and substitutions in the patent

which, though adding nothing, would be enough to take the copied matter outside

the claim, and hence outside the reach of the law.14

In this case, the trial court observed:

"Defendant's witness Eduardo Cañete, employed for 11 years as welder

of the Ozamiz Engineering, and therefore actually involved in the making

of the floating power tillers of defendant tried to explain the difference

between the floating power tillers made by the plaintiff and the power

tillers made by the defendant. But a careful examination between the two

power tillers will show that they will operate on the same fundamental

principles. And, according to establish jurisprudence, in infringement ofpatent, similarities or differences are to be determined, not by the names

of things, but in the light of what elements do, and substantial, rather

than technical, identity in the test. More specifically, it is necessary and

sufficient to constitute equivalency that the same function can be

performed in substantially the same way or manner, or by the same or

substantially the same, principle or mode of operation; but where these

tests are satisfied, mere differences of form or name are

immaterial . . ."15

It also stated:

"To establish an infringement, it is not essential to show that the

defendant adopted the device or process in every particular; Proof of an

adoption of the substance of the thing will be sufficient. 'In one sense,'

said Justice Brown, 'it may be said that no device can be adjudged an

infringement that does not substantially correspond with the patent. But

another construction, which would limit these words to exact mechanism

described in the patent, would be so obviously unjust that no court be

expected to adopt it. . . .'The law will protect a patentee against imitation of his patent by other

forms and proportions. 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."16

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We pronounce petitioner liable for infringement in accordance with Section 37

ofRepublic Act No. 165, as amended, providing,inter alia:

"Section 37.Right of Patentees. — A patentee shall have the exclusive

right to make, use and sell the patented machine, article or product, and

to use the patented process for the purpose of industry or commerce,

throughout the territory of the Philippines for the terms of the patent;and

such making, using, or selling by any person without the authorization of

the patentee constitutes infringement of the patent." (Italics ours).

As far as the issue regarding unfair competition is concerned, suffice it to say

thatRepublic Act No. 166, as amended, provides,inter alia:

"Sec. 29. Unfair competition, rights and remedies. — . . .

xxx xxx xxx

In particular, and without in any way limiting the scope of unfair

competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who in selling his goods shall give them the general

appearance of goods of another manufacturer or dealer, either as to the

goods themselves or in the wrapping of the packages in which they are

contained, or the devices or words thereon, or in any other feature of

their appearance, which would be likely to influence purchasers that the

goods offered are those of a manufacturer or dealer other than the actual

manufacturer or dealer, or who otherwise clothes the goods with suchappearance as shall deceive the public and defraud another of his

legitimate trade . . .

xxx xxx xxx"

Considering the foregoing, we find no reversible error in the decision of the Court

of Appeals affirming with modification the decision of the trial court.

WHEREFORE, premises considered, the decision of the Court of Appeals is

hereby AFFIRMED and this petition DENIED for lack of merit.

Bidin, Melo andVitug, JJ.,concur.

Feliciano,is on leave.

||| (Godines v. Court of Appeals, G.R. No. 97343, [September 13, 1993])

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12/36

[G.R. No. 126627. August 14, 2003.]

SMITH KLINE BECKMAN CORPORATION, petitioner,vs. THE

HONORABLE COURT OF APPEALS and TRYCO PHARMA

CORPORATION, respondents.

Sapalo and Velezfor petitioner.

Eduardo J Marino, Jr.for respondents.

SYNOPSIS

Petitioner, the registered patent holder of Letters Patent No. 14561, filed acomplaint for infringement of patent against private respondent alleging that

private respondent appropriated for its drug Impregon, the active ingredient of

Albendazole, which is substantially the same as Methyl 5 Propylthio-2-

Benzimidazole Carbamate covered by petitioner's patent since both of them are

meant to combat worm or parasite infestation in animals. Petitioner also pointed

out that its application for a patent in 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. Both the

trial court and the CA held that the 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.

The Supreme Court affirmed the assailed decision with modification. The Court

held that petitioner's evidence failed to show the substantial sameness of

petitioner's patented compound and Albendazole. While both compounds have

the effect of neutralizing parasites in animals, the identity of result does not

amount to infringement of patent unless Albendazole operates in substantially the

same way as the patented compound, even though it performs the same function

or the same result. As for the concept of divisional applications proffered by

petitioner, what this only means is that petitioner's Methyl 5 Prophylthio-2-

Benzimidazole Carbamate is an invention distinct from the other inventions

claimed in the original application divided out, Albendazole being one of those


13/36

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 Supreme Court did not

award actual damages because no documentary evidence was presented to

substantiate private respondent's claim therefore. Neither did the Court award

attorney's fees because there was no evidence indicating that petitioner was

moved by malice in suing private respondent. The Court, however, awarded

private respondent P20,000.00 temperate or moderate damages, it having

suffered some pecuniary loss the amount of which cannot, by the nature of the

case, be established with certainty.

SYLLABUS

1. COMMERCIAL LAW; PATENT LAW; INFRINGEMENT; DOCTRINE OF

EQUIVALENTS; TAKES PLACE WHEN A DEVICE APPROPRIATES A PRIOR

INVENTION BY DOING SUBSTANTIALLY THE SAME FUNCTION IN

SUBSTANTIALLY THE SAME WAY; CASE AT BAR NOT A CASE OF. —

Thedoctrine of equivalentsprovides 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 sameresult. 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. In other words,the principle or mode of operation

must be the same or substantially the same. Thedoctrine of equivalents thusrequires 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.

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


14/36

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.

2. ID.; ID.; ID.; CONCEPT OF DIVISIONAL APPLICATIONS, EXPLAINED; CASE

AT BAR. — 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. 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." 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.

3. CIVIL LAW; CIVIL CODE; DAMAGES; ACTUAL DAMAGES, ATTORNEY'S

FEES, TEMPERATE DAMAGES; AWARD THEREOF, WHEN PROPER; CASE

AT BAR. — 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 and Executive

Vice-President that the average monthly sale of Impregon was P100,000.00 andthat sales plummeted to zero after the issuance of the injunction. 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


15/36

proof and on the best evidence obtainable by the injured party. 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. 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. There exists no evidence on record indicating that petitioner was

moved by malice in suing private respondent. This Court, however, grants privaterespondent 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.

D E C I S I O N

CARPIO MORALES, Jp:

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 5Propylthio-2-Benzimidazole Carbamate." The application bore Serial No. 18989.

On September 24, 1981, Letters Patent No. 145611 for the aforesaid invention

was issued to petitioner for a term of seventeen (17) years.

The letters patent provides in its claims2 that the patented invention consisted of a

new compound named methyl 5 propylthio-2-benzimidazole carbamate and the

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16/36

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. 145614 as well as committed unfair competition under Article

189, paragraph 1 of the Revised Penal Code and Section 29 ofRepublic 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 ofpatent infringement and unfair competition.6 A writ of preliminary injunction was

subsequently issued.7

Private respondent in its Answer8 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 LettersPatent 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 ofRepublic Act No.

165 (The Patent Law); and that petitioner is not the registered patent holder.

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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'scomplaint 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 tocancel Letters Patent No. 14561 issued to

the plaintiff and to publish such cancellation in the Official Gazette.

DefendantTryco 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. (Italics 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

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18/36

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 AFFIRMEDwith

the MODIFICATION that the orders for the nullification of Letters Patent

No. 14561 and for its cancellation are deleted therefrom.

SO ORDERED.

Petitioner's motion for reconsideration of the Court of Appeals' decision having

been denied11 the present petition for review oncertiorari 12 was filed, assigning

as errors the following:

I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING

THAT ALBENDAZOLE, THE ACTIVE INGREDIENT INTRYCO'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 thedoctrine 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



19/36

"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-2-

benzimidazole 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-Rejoinder13 that although methyl 5 propylthio-2-

benzimidazole 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 thedoctrine 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-2-



20/36

benzimidazole 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 oncertiorari 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 theplaintiff.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 5propylthio-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 ornecessarily 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

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21/36

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.

While petitioner concedes that the mere literal wordings of its patent cannot

establish private respondent's infringement, it urges this Court to apply

thedoctrine of equivalents.

Thedoctrine 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.20In other words,the principle or mode of operation

must be the same or substantially the same.21

Thedoctrine 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.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

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