The Importance of Protecting Utility Models: A Case on Patent Infringement

G.R. No. 115106, March 15, 1996

Imagine you’ve invented a clever improvement to a common product – a modification that makes it more useful or efficient. In the Philippines, you can protect this innovation with a utility model patent. But what happens when someone copies your idea? This case, Roberto L. Del Rosario v. Court of Appeals and Janito Corporation, highlights the importance of utility model patents and what it takes to prove infringement.

The case revolves around Roberto del Rosario, who held patents for a sing-along system (karaoke). He sued Janito Corporation, alleging they were manufacturing a similar product under the name “Miyata Karaoke.” The key legal question was whether Janito Corporation had infringed on Del Rosario’s utility model patents.

Understanding Utility Model Patents

A utility model patent protects functional improvements to existing products. Unlike invention patents, utility models don’t require the same level of inventiveness, focusing instead on practical utility. This makes them a valuable tool for protecting incremental innovations.

The Philippine Patent Law (Republic Act No. 165, as amended) governs utility model patents. Section 55 defines a utility model as “any new model or 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.”

Key Requirements for a Utility Model Patent:

• Novelty: The utility model must be new and not publicly known or used in the Philippines before the patent application.
• Practical Utility: It must be practically useful because of its form, configuration, construction, or composition.

Example: Imagine you improve a standard electric fan by adding a new oscillation mechanism that distributes air more evenly. This improvement, if new and practically useful, could be protected by a utility model patent.

According to Sec. 37 of The Patent Law, the patentee “shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.”

The Karaoke Case: Del Rosario vs. Janito Corporation

Roberto del Rosario, the patentee of an audio equipment and improved audio equipment commonly known as the sing-along system or karaoke, filed a complaint against Janito Corporation for patent infringement. He held Letters Patent No. UM-5269 and Letters Patent No. UM-6237 for his karaoke system.

Del Rosario claimed that Janito Corporation’s “Miyata Karaoke” system was substantially similar to his patented design. He sought a preliminary injunction to stop Janito Corporation from manufacturing, selling, and advertising the Miyata Karaoke.

The Case’s Journey:

• Regional Trial Court (RTC): Initially, the RTC granted Del Rosario’s request for a preliminary injunction.
• Court of Appeals (CA): Janito Corporation appealed, and the CA reversed the RTC’s decision, finding no clear infringement.
• Supreme Court (SC): Del Rosario then elevated the case to the Supreme Court.

The Supreme Court focused on whether the Court of Appeals erred in finding the trial court to have committed grave abuse of discretion in enjoining private respondent from manufacturing, selling and advertising the miyata karaoke brand sing-along system for being substantially similar if not identical to the audio equipment covered by letters patent issued to petitioner.

The Supreme Court emphasized the importance of the patentee’s rights:

“As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently established, contrary to the findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of The Patent law, petitioner as a patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.”

Ultimately, the Supreme Court sided with Del Rosario, reinstating the preliminary injunction. The Court found that Del Rosario had presented sufficient evidence to show a likely infringement of his utility model patents.

The Supreme Court stated that “Clearly, therefore, both petitioner’s and respondent’s models involve substantially the same modes of operation and produce substantially the same if not identical results when used.”

Practical Implications for Businesses

This case underscores the importance of protecting your innovations with utility model patents. It also highlights the steps you need to take to enforce your patent rights if someone copies your design.

Key Lessons:

• Obtain a Patent: Secure a utility model patent for your functional improvements to existing products.
• Monitor the Market: Regularly check for potential infringers who are copying your patented design.
• Gather Evidence: If you suspect infringement, collect evidence to demonstrate the similarities between your patented design and the infringing product.
• Act Quickly: File a legal case promptly to seek an injunction and damages.

Frequently Asked Questions

Q: What is a utility model patent?

A: A utility model patent protects functional improvements to existing products, focusing on practical utility rather than inventive step.

Q: How long does a utility model patent last?

A: The term of a utility model patent is generally shorter than that of an invention patent, often lasting for seven years from the date of application.

Q: What constitutes patent infringement?

A: Patent infringement occurs when someone makes, uses, or sells a patented invention without the patent holder’s permission.

Q: What remedies are available for patent infringement?

A: Remedies can include injunctions (stopping the infringing activity) and damages (compensation for losses suffered due to the infringement).

Q: What should I do if I suspect someone is infringing my utility model patent?

A: Consult with an intellectual property lawyer to assess the situation, gather evidence, and determine the best course of action.

Q: How does a utility model differ from an invention patent?

A: A utility model typically protects minor improvements or modifications to existing products, while an invention patent protects more significant and inventive inventions.

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