ANGELITA MANZANO vs.

COURT OF APPEALS, and Torch and Burner Company, USA and, a brochure distributed by Esso
MELECIA MADOLARIA, as Assignor to NEW UNITED Gasul or Esso Standard Eastern, Inc., of the Philippines showing a picture
FOUNDRY MANUFACTURING CORPORATION of another similar burner with top elevation view and another perspective
view of the same burner.
DOCTRINE: The element of novelty is an essential requisite of the
patentability of an invention or discovery. If a device or process has been Petitioner testified for herself and narrated that her husband Ong Bun Tua
known or used by others prior to its invention or discovery by the worked as a helper in the UNITED FOUNDRY where respondent used
applicant, an application for a patent therefor should be denied; and if the to be affiliated with from 1965 to 1970; that Ong helped in the casting of
application has been granted, the court, in a judicial proceeding in which an LPG burner which was the same utility model of a burner for which
the validity of the patent is drawn in question, will hold it void and Letters Patent No. UM-4609 was issued, and that after her husband's
ineffective. It has been repeatedly held that an invention must possess the separation from the shop she organized Besco Metal Manufacturing
essential elements of novelty, originality and precedence, and for the (BESCO METAL, for brevity) for the casting of LPG burners one of
patentee to be entitled to the protection the invention must be new to the which had the configuration, form and component parts similar to those
world. being manufactured by UNITED FOUNDRY. Petitioner presented in
evidence an alleged model of an LPG burner and covered by the Letters
FACTS: Petitioner Angelita Manzano filed with the Philippine Patent Patent of respondent, and testified that it was given to her in January 1982
Office an action for the cancellation of Letters Patent No. UM-4609 for a by one of her customers who allegedly acquired it from UNITED
gas burner registered in the name of respondent Melecia Madolaria who FOUNDRY. Petitioner also presented in evidence her own model of an
subsequently assigned the letters patent to New United Foundry and LPG burner called "Ransome" burner which was allegedly manufactured
Manufacturing Corporation (UNITED FOUNDRY, for brevity). in 1974 or 1975 and sold by her in the course of her business operation in
Petitioner alleged that (a) the utility model covered by the letters patent, in the name of BESCO METAL. Petitioner claimed that this "Ransome"
this case, an LPG gas burner, was not inventive, new or useful; (b) the burner had the same configuration and mechanism as that of the model
specification of the letters patent did not comply with the requirements which was patented in favor of private respondent Melecia Madolaria. Also
of Sec. 14, RA No. 165, as amended; (c) respondent Melecia Madolaria presented by petitioner was a burner cup of an imported "Ransome"
was not the original, true and actual inventor nor did she derive her burner marked which was allegedly existing even before the patent
rights from the original, true and actual inventor of the utility model application of private respondent.
covered by the letters patent; and, (d) the letters patent was secured by
means of fraud or misrepresentation. Petitioner further alleged that (a) Petitioner also presented two (2) other witnesses, her husband and Fidel
the utility model covered by the letters patent of respondent had been Francisco. Francisco testified that he had been employed with the Manila
known or used by others in the Philippines for more than one (1) year Gas Corporation from 1930 to 1941 and from 1952 up to 1969 where he
before she filed her application for letters patent on 9 December 1979; (b) retired as supervisor and that Manila Gas Corporation imported
the products which were produced in accordance with the utility model "Ransome" burners way back in 1965 which were advertised through
covered by the letters patent had been in public use or on sale in the brochures to promote their sale.
Philippines for more than one (1) year before the application for patent
therefor was filed. Private respondent, on the other hand, presented only one witness,
Rolando Madolaria, who testified, among others, that he was the General
Petitioner presented documents, including an affidavit alleging the Supervisor of the UNITED FOUNDRY in the foundry, machine and
existence of prior art, a brochure distributed by Manila Gas Corporation buffing section; that in his early years with the company, UNITED
disclosing a pictorial representation of Ransome Burner made by Ransome FOUNDRY was engaged in the manufacture of different kinds of gas
stoves as well as burners based on sketches and specifications furnished by ISSUE: Whether the utility model which is the subject of the questioned
customers; that the company manufactured early models of single-piece letters of patent lacks the element of novelty.
types of burners where the mouth and throat were not detachable; that in
the latter part of 1978 respondent Melecia Madolaria confided in him that RULING: No. Decision of the CA affirming that of the Phil Patent
complaints were being brought to her attention concerning the early Office is AFFIRMED. See Doctrine.
models being manufactured; that he was then instructed by private
respondent to cast several experimental models based on revised sketches In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an "LPG
and specifications; that private respondent again made some innovations; Burner" on 22 July 1981, the Philippine Patent Office found her invention
that after a few months, private respondent discovered the solution to all novel and patentable. The issuance of such patent creates a presumption
the defects of the earlier models and, based on her latest sketches and which yields only to clear and cogent evidence that the patentee was the
specifications, he was able to cast several models incorporating the original and first inventor. The burden of proving want of novelty is on
additions to the innovations introduced in the models. Various tests were him who avers it and the burden is a heavy one which is met only by clear
conducted on the latest model in the presence and under the supervision and satisfactory proof which overcomes every reasonable doubt. Hence, a
of Melecia Madolaria and they obtained perfect results. Rolando Madolaria utility model shall not be considered "new" if before the application for a
testified that private respondent decided to file her application for utility patent it has been publicly known or publicly used in this country or has
model patent in December 1979. been described in a printed publication or publications circulated within
the country, or if it is substantially similar to any other utility model so
Director of Patents: Denied the petition for cancellation and holding that known, used or described within the country.
the evidence of petitioner was not able to establish convincingly that the
patented utility model of private respondent was anticipated. Not one of See Ruling of the DoP. The validity of the patent issued by the Philippine
the various pictorial representations of business clearly and convincingly Patent Office in favor of private respondent and the question over the
showed that the devices presented by petitioner was identical or inventiveness, novelty and usefulness of the improved model of the LPG
substantially identical with the utility model of the respondent. The burner are matters which are better determined by the Patent Office. The
decision also stated that even assuming that the brochures depicted clearly technical staff of the Philippine Patent Office composed of experts in their
each and every element of the patented gas burner device so that the prior field has by the issuance of the patent in question accepted private
art and patented device became identical although in truth they were not, respondent's model of gas burner as a discovery. There is a presumption
they could not serve as anticipatory bars for the reason that they were that the Office has correctly determined the patentability of the model8
undated. The dates when they were distributed to the public were not and such action must not be interfered with in the absence of competent
indicated and, therefore, were useless prior art references. The records and evidence to the contrary.
evidence also do not support the petitioner's contention that Letters Patent
No. UM-4609 was obtained by means of fraud and/or misrepresentation. The question on priority of invention is one of fact. Novelty and utility are
No evidence whatsoever was presented by petitioner to show that the then likewise questions of fact. The validity of patent is decided on the basis of
applicant Melecia Madolaria withheld with intent to deceive material facts factual inquiries. Whether evidence presented comes within the scope of
which, if disclosed, would have resulted in the refusal by the Philippine prior art is a factual issue to be resolved by the Patent Office.
Patent Office to issue the Letters Patent under inquiry.

CA: Affirmed decision of DoP