Patent Law: Novelty, Prior Art, and the Presumption of Patent Validity in the Philippines

Understanding Patent Novelty: Overcoming the Presumption of Validity

The key takeaway from this case is that obtaining a patent creates a strong presumption of validity, and challenging that patent requires clear and convincing evidence of a lack of novelty. This means showing that the invention was already publicly known or used before the patent application. Mere assertions or undated materials are insufficient to invalidate a patent. The Philippine Patent Office’s decision holds significant weight unless compelling evidence proves otherwise.

G.R. No. 113388, September 05, 1997

Introduction

Imagine investing years of research and development into a groundbreaking invention, only to have someone claim it’s not truly new. This is the reality for inventors who rely on patent protection. In the Philippines, obtaining a patent grants a presumption of validity, but it’s not an impenetrable shield. The case of Angelita Manzano v. Court of Appeals delves into what it takes to challenge a patent based on a lack of novelty and highlights the importance of the Philippine Patent Office’s expert evaluation.

The core issue revolves around Angelita Manzano’s attempt to cancel a utility model patent for an LPG gas burner held by Melecia Madolaria (later assigned to New United Foundry Manufacturing Corporation). Manzano argued that the burner wasn’t inventive, new, or useful, and that Madolaria wasn’t the original inventor. The Supreme Court ultimately upheld the patent, reinforcing the principle that overturning a patent requires substantial evidence.

Legal Context: The Cornerstones of Philippine Patent Law

Philippine patent law, primarily governed by Republic Act No. 165 (as amended), emphasizes the importance of novelty in granting patent protection. An invention, whether a machine, product, process, or improvement, must be demonstrably new and useful to be patentable. Similarly, a utility model—a new form, configuration, or composition of an industrial product—must also be novel and practically useful.

Here are some key legal principles:

Novelty: The invention or utility model must not have been publicly known or used in the Philippines before the patent application.

Utility: The invention or utility model must have a practical use or purpose.

Presumption of Validity: A patent granted by the Philippine Patent Office carries a presumption that the invention meets the requirements for patentability.

Crucially, Section 7 of RA No. 165 states:

“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.”

Section 55 further clarifies the requirements for utility models:

“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.”

Case Breakdown: The Battle Over the LPG Burner

The story begins with Angelita Manzano filing a petition to cancel Melecia Madolaria’s utility model patent for an LPG gas burner. Manzano claimed the burner was not new, citing prior art in the form of brochures from Manila Gas Corporation and Esso Standard Eastern, Inc., depicting similar burners. She also presented her own burner model, claiming it predated Madolaria’s patent application.

The procedural journey unfolded as follows:

Philippine Patent Office: The Director of Patents denied Manzano’s petition, finding that her evidence failed to convincingly demonstrate that Madolaria’s utility model was anticipated by prior art. The Director noted that the brochures were undated and didn’t clearly show identical burners.

Court of Appeals: The Court of Appeals affirmed the Director of Patents’ decision, upholding the validity of Madolaria’s patent.

Supreme Court: Manzano appealed to the Supreme Court, arguing that the lower courts had misapprehended the facts and relied too heavily on the testimony of Madolaria’s witness.

The Supreme Court sided with Madolaria, emphasizing the presumption of validity attached to patents. The Court quoted:

“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.”

The court further stated:

“The validity of the patent issued by the Philippine Patent Office in favor of private respondent and the question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are better determined by the Patent Office…There is a presumption that the Office has correctly determined the patentability of the model and such action must not be interfered with in the absence of competent evidence to the contrary.”

Practical Implications: Protecting Your Intellectual Property

This case underscores the importance of maintaining meticulous records and conducting thorough prior art searches before applying for a patent. It also highlights the challenges in overturning a patent once it has been granted. For businesses and inventors, this means proactive measures are crucial to secure and defend their intellectual property rights.

Here are some key lessons:

Document Everything: Keep detailed records of the invention’s development, including dates, sketches, prototypes, and testing results.

Conduct Prior Art Searches: Before applying for a patent, conduct a thorough search of existing patents, publications, and products to ensure your invention is truly novel.

Gather Strong Evidence: If challenging a patent, gather clear and convincing evidence, such as dated publications, expert testimony, and physical evidence, to demonstrate a lack of novelty.

Understand the Presumption of Validity: Be aware that patents carry a legal presumption of validity, making it difficult to overturn them without strong evidence.

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