ANGELITA MANZANO v.

COURT OF APPEALS and MELECIA MADOLARIA, as assignor to

New United Foundry Manufacturing Corporation
GR No. 113388, 05 September 1997, First Division (Bellosillo, J.)

FACTS.

Petitioner Angelita Manzano filed with the Philippine Patent Office on February 19, 1982, an
action for the cancellation of Letters Patent No. UM-4609 for a gas burner registered in the name of
respondent Melecia Madolaria who subsequently assigned the letters patent to New United Foundry
Manufacturing Corporation (United Foundry). Petitioner alleged that (a) the utility model covered by the
letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the specification of
the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c)
respondent Melecia Madolaria was not the original, true and actual inventor nor did she derive her rights
from the original, true and actual inventor of the utility model covered by the letters patent; and, (d) the
letters patent was secured by means of fraud or misrepresentation.

In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by
the letters patent of respondent had been known or used by others in the Philippines for more than one (1)
year before she filed her application for letters patent on 9 December 1979; (b) the products which were
produced in accordance with the utility model covered by the letters patent had been in public use or on
sale in the Philippines for more than one (1) year before the application for patent therefor was filed.

Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the
UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970;
that Ong helped in the casting of an LPG burner which was the same utility model of a burner for which
Letters Patent No. UM-4609 was issued, and that after her husband’s separation from the shop she
organized Besco Metal Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners one
of which had the configuration, form and component parts similar to those being manufactured by
UNITED FOUNDRY. Petitioner presented in evidence an alleged model of an LPG burner marked Exh.
“K” and covered by the Letters Patent of respondent, and testified that it was given to her in January 1982
by one of her customers who allegedly acquired it from UNITED FOUNDRY. Petitioner also presented
in evidence her own model of an LPG burner called “Ransome” burner marked Exh. “L,” which was
allegedly manufactured in 1974 or 1975 and sold by her in the course of her business operation in the
name of BESCO METAL. Petitioner claimed that this “Ransome” burner (Exh. “L”) had the same
configuration and mechanism as that of the model which was patented in favor of private respondent
Melecia Madolaria. Also presented by petitioner was a burner cup of an imported “Ransome” burner
marked Exh “M” which was allegedly existing even before the patent application of private respondent.

On July 7, 1986, Director of Patents denied the petition for cancellation and held that the evidence of
petitioner was not able to establish convincingly that the patented utility model of private respondent was
anticipated. Not one of the various pictorial representations of business clearly and convincingly showed
that the devices presented by petitioner was identical or substantially identical with the utility model of
the respondent. The decision also stated that even assuming that the brochures depicted clearly each and
every element of the patented gas burner device so that the prior art and patented device became identical
although in truth they were not, they could not serve as anticipatory bars for the reason that they were
undated. The dates when they were distributed to the public were not indicated and, therefore, were
useless prior art references. On appeal, CA affirmed the decision of the Director of Patents. Hence, this
petition for certiorari.

ISSUE.

Was the dismissal proper where there is no substantial difference between the model to be patented and
those sold by petitioner?

HELD.

Petitioner’s contention lacks merit.

Section 7 of RA No. 165, as amended, which is the law on patents, expressly provides - Sec. 7. Inventions
patentable. Any invention of a new and useful machine, manufactured product or substance, process or an
improvement of any of the foregoing, shall be patentable.

Further, Sec. 55 of the same law provides - Sec. 55. Design patents and patents for utility models. - (a)
Any new, original and ornamental design for an article of manufacture and (b) any new model of
implements or tools or of any industrial product or of part of the same, which does not possess the quality
of invention, but which is of practical utility by reason of its form, configuration, construction or
composition, may be protected by the author thereof, the former by a patent for a design and the latter by
a patent for a utility model, in the same manner and subject to the same provisions and requirements as
relate to patents for inventions insofar as they are applicable except as otherwise herein provided.

The element of novelty is an essential requisite of the patentability of an invention or discovery. If a

device or process has been known or used by others prior to its invention or discovery by the applicant, an
application for a patent therefor should be denied; and if the application has been granted, the court, in a
judicial proceeding in which the validity of the patent is drawn in question, will hold it void and
ineffective. It has been repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence, and for the patentee to be entitled to the protection the invention must be new
to the world.

In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an “LPG Burner” on 22 July 1981, the
PPO found her invention novel and patentable. The issuance of such patent creates a presumption which
yields only to clear and cogent evidence that the patentee was the original and first inventor. The burden
of proving want of novelty is on him who avers it and the burden is a heavy one which is met only by
clear and satisfactory proof which overcomes every reasonable doubt. Hence, a utility model shall not be
considered “new” if before the application for a patent it has been publicly known or publicly used in this
country or has been described in a printed publication or publications circulated within the country, or if it
is substantially similar to any other utility model so known, used or described within the country.

As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of
legality of the issuance of UM-4609 to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. Thus the Director of Patents explained his reasons for the denial
of the petition to cancel private respondent’s patent - Scrutiny of Exhs. “D” and “E” readily reveals that
the utility model (LPG Burner) is not anticipated. Not one of the various pictorial representations of
burners clearly and convincingly show that the device presented therein is identical or substantially
identical in construction with the aforesaid utility model. It is relevant and material to state that in
determining whether novelty or newness is negatived by any prior art, only one item of the prior art may
be used at a time. For anticipation to occur, the prior art must show that each element is found either
expressly or described or under principles of inherency in a single prior art reference or that the claimed
invention was probably known in a single prior art device or practice. Even assuming gratia arguendi that
the aforesaid brochures do depict clearly on all fours each and every element of the patented gas burner
device so that the prior art and the said patented device become identical, although in truth they are not,
they cannot serve as anticipatory bars for the reason that they are undated. The dates when they were
distributed to the public were not indicated and, therefore, they are useless prior art references.

The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the
Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has
failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and
the Court of Appeals.