Decoding Patent Infringement: The Nuances of “Equivalence” in Philippine Law

G.R. No. 214148, February 06, 2023

Imagine investing years and millions of pesos developing a groundbreaking technology, only to find a competitor selling a similar product with slight modifications. Can they get away with it? Patent law exists to protect inventors, but the line between legitimate innovation and infringement can be blurry. This case between Phillips Seafood Philippines Corporation and Tuna Processors, Inc. (TPI) delves into that complexity, exploring the crucial difference between literal patent infringement and infringement under the doctrine of equivalents, offering valuable lessons for businesses and inventors alike.

Understanding Patent Rights and Infringement in the Philippines

Philippine patent law, primarily governed by the Intellectual Property Code (IP Code), grants inventors exclusive rights to their inventions. Section 71 of the IP Code clearly defines these rights, allowing the patentee to “restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling, or importing the patented product or product obtained directly or indirectly from a patented process.” This protection encourages innovation by providing a period of market exclusivity, allowing inventors to recoup their investment and continue developing new technologies.

However, this right is not absolute. Section 75 of the IP Code limits the extent of protection to the claims of the patent itself. This means the patent holder’s rights are defined by the specific wording of their patent claims. Determining whether infringement has occurred involves a two-step analysis: first, interpreting the claims to define the scope of the patent, and second, comparing the allegedly infringing product or process against those claims.

Literal Infringement vs. Doctrine of Equivalents: The law recognizes two primary types of patent infringement:

• Literal Infringement: This occurs when the allegedly infringing product or process directly replicates every element of the patent claim. As the Supreme Court stated in Godines v. CA, “If accused matter clearly falls within the claim, infringement is made out and that is the end of it.”
• Doctrine of Equivalents: Acknowledges that minor modifications to a patented invention shouldn’t allow infringers to escape liability. Section 75.2 of the IP Code states that “due account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents.”

Important Legal Provision
Section 75.2 of the IP Code: “For the purpose of determining the extent of protection conferred by the patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents.”

Phillips Seafood vs. Tuna Processors Inc.: A Clash of Tuna Curing Methods

The dispute centered on TPI’s patent (I-31138) for a “Method for Curing Fish and Meat by Extra Low Temperature Smoking,” which involved cooling filtered smoke to between 0° and 5°C before applying it to tuna. TPI claimed Phillips was infringing this patent by using a similar process.

• The Complaint: TPI alleged that Phillips hired a former employee who had knowledge of TPI’s patented process and was using it to cure tuna products.
• Phillips’ Defense: They argued that their process differed because it didn’t involve a cooling unit to cool the filtered smoke to between 0° and 5°C, instead relying on ambient temperature. They also challenged the validity of TPI’s patent, arguing it lacked an inventive step.

The case navigated a complex procedural journey:

1. Intellectual Property Office (IPO): The Bureau of Legal Affairs (BLA) initially issued a Temporary Restraining Order (TRO) and Writ of Preliminary Injunction (WPI) against Phillips but eventually dismissed TPI’s complaint, finding no infringement.
2. Office of the Director General (ODG): The ODG upheld the BLA’s decision, finding that Phillips’ process did not literally infringe the patent, nor did it meet the requirements for infringement under the doctrine of equivalents.
3. Court of Appeals (CA): Initially affirmed the ODG’s decision, but on reconsideration, reversed course and ruled that Phillips was indeed infringing under the doctrine of equivalents. The CA reasoned that both processes involved similar steps, and that the phrase “to remove mainly tar” in TPI’s patent didn’t exclude the removal of other impurities.
4. Supreme Court: Phillips appealed to the Supreme Court.

Key Quotes from the Supreme Court’s Decision:

“Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole.”

“The eventual cooling of the filtered smoke in Phillips’ process does not ipso facto indicate similarities in the effect of the smoke on tuna meat.”

Practical Implications: Protecting Your Patents and Avoiding Infringement

The Supreme Court ultimately sided with Phillips, overturning the CA’s decision and reinforcing the importance of clearly defining patent claims. This case underscores that even seemingly similar processes can be differentiated enough to avoid infringement if they lack exact identity of all material elements.

Key Lessons:

• Specificity is Key: When drafting patent claims, use precise language to define the invention’s scope. Broad or ambiguous language can weaken patent protection.
• The “All Elements” Test: Under the doctrine of equivalents, consider the individual elements of the claim, not the invention as a whole. Ensure all elements are substantially equivalent in the allegedly infringing process.
• Substantial Similarity: To prove infringement under the doctrine of equivalents, demonstrate that the allegedly infringing process performs substantially the same function, in the same way, to achieve the same result.

Hypothetical Example
Let’s say a company patents a new type of solar panel with a specific coating that increases efficiency by 20%. A competitor creates a similar solar panel but uses a different coating that increases efficiency by 19%. While the results are similar, the difference in the coating (the means) could be enough to avoid infringement under the doctrine of equivalents, unless the patent claim broadly covers “any efficiency-enhancing coating.”

Frequently Asked Questions (FAQs)

Q: What is the difference between a product patent and a process patent?
A: A product patent protects a new invention, such as a machine or composition of matter. A process patent protects a new method or technique for producing a particular result.

Q: What is the “function-means-result” test in patent infringement?
A: This test, also known as the triple identity test, is used to determine infringement under the doctrine of equivalents. It asks whether the allegedly infringing device or process performs substantially the same function, accomplishes substantially the same result, and uses substantially the same means as the patented invention.

Q: What is the significance of the phrase “to remove mainly tar” in this case?
A: The Court of Appeals initially interpreted this phrase narrowly, suggesting that the filtering step in TPI’s patent was limited to removing only tar. However, the Supreme Court correctly clarified that “mainly tar” doesn’t exclude the removal of other impurities.

Q: What is the “all elements” test in patent infringement?
A: The “all elements” test requires that the equivalents of all the elements in Patent I-31138 are present in the infringing device or process.

Q: How can I protect my business from patent infringement lawsuits?
A: Conduct thorough patent searches before launching new products or processes. Obtain legal advice to ensure your activities don’t infringe on existing patents. Document your own innovation process to establish prior art if necessary.

ASG Law specializes in intellectual property law, including patent registration, enforcement, and infringement defense. Contact us or email hello@asglawpartners.com to schedule a consultation.