G.R.
No. 118708. February 2, 1998.
CRESER PRECISION SYSTEMS,
INC., petitioner, vs. COURT OF APPEALS AND FLORO INTERNATIONAL
CORP., respondents.
D E
C I S I O N
This
petition for review on certiorari assails the decision of the Court of Appeals
dated November 9, 1994 in C.A.-G.R. SP No. 34425 entitled "Floro
International Corp. vs. Hon. Tirso D.C. Cruz and Creser Precision System,
Inc.", the dispositive portion of which reads:
"WHEREFORE,
THE PETITION IS HEREBY GRANTED. THE COMPLAINT FOR INJUNCTION AND DAMAGES, CIVIL
CASE NO. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY ORDERED DISMISSED AND
HIS ORDERS THEREIN OF DECEMBER 29, 1993 AND MAY 11, 1994 ARE ORDERED SET
ASIDE."
Private
respondent is a domestic corporation engaged in the manufacture, production,
distribution and sale of military armaments, munitions, airmunitions and other
similar materials.
On
January 23, 1990, private respondent was granted by the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT), a Letters Patent No. UM-6938 covering
an aerial fuze which was published in the September-October 1990, Vol. III, No.
5 issue of the Bureau of Patent's Official Gazette.
Sometime
in November 1993, private respondent, through its president, Mr. Gregory Floro,
Jr., discovered that petitioner submitted samples of its patented aerial
fuze to the Armed Forces of the Philippines (AFP) for testing. He learned
that petitioner was claiming the aforesaid aerial fuze as its own and
planning to bid and manufacture the same commercially without license or
authority from private respondent. To protect its right, private respondent on
December 3, 1993, sent a letter to petitioner advising it of its existing
patent and its rights thereunder, warning petitioner of a possible court action
and/or application for injunction, should it proceed with the scheduled testing
by the military on December 7, 1993.
In
response to private respondent's demand, petitioner filed on December 8, 1993 a
complaint for injunction and damages arising from the alleged infringement
before the Regional Trial Court of Quezon City, Branch 88. The complaint
alleged, among others: that petitioner is the first, true and actual inventor
of an aerial fuze denominated as "Fuze, PDR 77 CB4" which it
developed as early as December 1981 under the Self-Reliance Defense Posture
Program (SRDP) of the AFP; that sometime in 1986, petitioner began supplying
the AFP with the said aerial fuze; that private respondent's aerial fuze is
identical in every respect to the petitioner's fuze; and that the only
difference between the two fuzes are miniscule and merely cosmetic in nature.
Petitioner prayed that a temporary restraining order and/or writ of preliminary
injunction be issued enjoining private respondent including any and all persons
acting on its behalf from manufacturing, marketing and/or profiting therefrom,
and/or from performing any other act in connection therewith or tending to
prejudice and deprive it of any rights, privileges and benefits to which it is
duly entitled as the first, true and actual inventor of the aerial fuze.
On
December 10, 1993, the trial court issued a temporary restraining order.
Thereafter, hearings were held on the application of petitioner for the
issuance of a writ of preliminary injunction, with both parties presenting
their evidence. After the hearings, the trial court directed the parties to
submit their respective memoranda in support of their positions.
On
December 27, 1993, private respondent submitted its memorandum alleging that
petitioner has no cause of action to file a complaint for infringement against
it since it has no patent for the aerial fuze which it claims to have
invented; that petitioner's available remedy is to file a petition for
cancellation of patent before the Bureau of Patents; that private respondent as
the patent holder cannot be stripped of its property right over the patented aerial
fuze consisting of the exclusive right to manufacture, use and sell the
same and that it stands to suffer irreparable damage and injury if it is
enjoined from the exercise of its property rights over its patent.
On
December 29, 1993, the trial court issued an Order granting the issuance of a
writ of preliminary injunction against private respondent the dispositive
portion of which reads:
"WHEREFORE,
plaintiffs application for the issuance of a writ of preliminary injunction is
granted and, upon posting of the corresponding bond by plaintiff in the amount
of PHP 200,000.00, let the writ of preliminary injunction be issued by the branch
Clerk of this Court enjoining the defendant and any and all persons acting on
its behalf or by and under its authority, from manufacturing, marketing and/or
selling aerial fuzes identical, to those of plaintiff and from profiting
therefrom, and/or from performing any other act in connection therewith until
further orders from this Court."
Private
respondent moved for reconsideration but this was denied by the trial court in
its Order of May 11, 1994, pertinent portions of which read:
"For
resolution before this Court is the Motion for Reconsideration filed by the
defendant and the plaintiff's Opposition thereto. The Court finds no sufficient
cause to reconsider its order dated December 29, 1993. During the hearing for
the issuance of the preliminary injunction, the plaintiff has amply proven its
entitlement to the relief prayed for. It is undisputed that the plaintiff has
developed its aerial fuze way back in 1981 while the defendant began
manufacturing the same only in 1987. Thus, it is only logical to conclude that
it was the plaintiff's aerial fuze that was copied or imitated which gives the
plaintiff the right to have the defendant enjoined "from manufacturing,
marketing and/or selling aerial fuzes identical to those of the plaintiff, and
from profiting therefrom and/or performing any other act in connection
therewith until further orders from this Court." With regards to the
defendant's assertion that an action for infringement may only be brought by
"anyone possessing right, title or interest to the patented
invention," (Section 42, RA 165) qualified by Sec. 10, RA 165
to include only "the first true and actual inventor, his heirs, legal
representatives or assignees, " this court finds the foregoing to be
untenable. Sec. 10 merely enumerates the persons who may have an invention
patented which does not necessarily limit to these persons the right to
institute an action for infringement. Defendant further contends that the order
in issue is disruptive of the status quo. On the contrary, the order issued by
the Court in effect maintained the status quo. The last actual, peaceable
uncontested status existing prior to this controversy was the plaintiff
manufacturing and selling its own aerial fuzes PDR 77 CB4 which was ordered
stopped through the defendant's letter. With the issuance of the order, the
operations of the plaintiff continue. Lastly, this court believes that the
defendant will not suffer irreparable injury by virtue of said order. The
defendant's claim is primarily hinged on its patent (Letters Patent No.
UM-6983) the validity of which is being questioned in this case.
WHEREFORE,
premises considered, the Motion for Reconsideration is hereby denied for lack
of merit.
SO ORDERED."
Aggrieved,
private respondent on June 27, 1994, filed a petition for certiorari, mandamus
and prohibition before respondent Court of Appeals raising as grounds the
following:
a. Petitioner
has no cause of action for infringement against private respondent, the latter
not having any patent for the aerial fuze which it claims to have invented and
developed and allegedly infringed by private respondent;
b. the case
being an action for cancellation or invalidation of private respondent's
Letters Patent over its own aerial fuze, the proper venue is the Office of the
Director of Patents;
c. The trial
court acted in grave abuse of discretion and/or in excess of jurisdiction in
finding that petitioner has fully established its clear title or right to
preliminary injunction;
d. The trial
court acted in grave abuse of discretion and/or in excess of jurisdiction in
granting the preliminary injunction, it being disruptive of the status quo; and
e. The trial
court acted in grave abuse of discretion and/or in excess of jurisdiction in
granting the preliminary injunction thereby depriving private respondent of its
property rights over the patented aerial fuze and cause it irreparable damages.
On
November 9, 1994, the respondent court rendered the now assailed decision
reversing the trial court's Order of December 29, 1993 and dismissing the
complaint filed by petitioner.
The
motion for reconsideration was also denied on January 17, 1995. Hence, this
present petition.
It
is petitioner's contention that it can file, under Section 42 of the Patent Law
(R.A. 165), an action for infringement not as a patentee but as an
entity in possession of a right, title or interest in and to the patented
invention. It advances the theory that while the absence of a patent may
prevent one from lawfully suing another for infringement of said patent, such
absence does not bar the first true and actual inventor of the patented invention
from suing another who was granted a patent in a suit for declaratory or
injunctive relief recognized under American patent laws. This remedy,
petitioner points out, may be likened to a civil action for infringement under
Section 42 of the Philippine Patent Law.
We
find the above arguments untenable.
Section
42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
SEC. 42. Civil
action for infringement. — Any patentee, or anyone possessing any right,
title or interest in and to the patented invention, whose rights have been
infringed, may bring a civil action before the proper Court of First Instance
(now Regional Trial court), to recover from the infringer damages sustained by
reason of the infringement and to secure an injunction for the protection of
his right. . .
Under
the aforequoted law, only the patentee or his successors-in-interest may file
an action for infringement. The phrase "anyone possessing any right, title
or interest in and to the patented invention" upon which petitioner
maintains its present suit, refers only to the patentee's
successors-in-interest, assignees or grantees since actions for infringement of
patent may be brought in the name of the person or persons interested, whether
as patentee, assignees, or as grantees, of the exclusive right. Moreover, there
can be no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises alone from
the grant of patent. In short, a person or entity who has not been granted
letters patent over an invention and has not acquired any right or title
thereto either as assignee or as licensee, has no cause of action for
infringement because the right to maintain an infringement suit depends on the
existence of the patent.
Petitioner
admits it has no patent over its aerial fuze. Therefore, it has no legal
basis or cause of action to institute the petition for injunction and damages
arising from the alleged infringement by private respondent. While petitioner
claims to be the first inventor of the aerial fuze, still it has no
right of property over the same upon which it can maintain a suit unless it
obtains a patent therefor. Under American jurisprudence, an inventor has no
common-law right to a monopoly of his invention. He has the right to make, use
and vend his own invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with impunity. A
patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the invention.
Further,
the remedy of declaratory judgment or injunctive suit on patent invalidity
relied upon by petitioner cannot be likened to the civil action for
infringement under Section 42 of the Patent Law. The reason for this is that
the said remedy is available only to the patent holder or his
successors-in-interest. Thus, anyone who has no patent over an invention but
claims to have a right or interest thereto cannot file an action for
declaratory judgment or injunctive suit which is not recognized in this
jurisdiction. Said person, however, is not left without any remedy. He can,
under Section 28 of the aforementioned law, file a petition for cancellation of
the patent within three (3) years from the publication of said patent with the
Director of Patents and raise as ground therefor that the person to whom the
patent was issued is not the true and actual inventor. Hence, petitioner's
remedy is not to file an action for injunction or infringement but to file a
petition for cancellation of private respondent's patent. Petitioner however
failed to do so. As such, it cannot now assail or impugn the validity of the
private respondent's letters patent by claiming that it is the true and actual
inventor of the aerial fuze.
Thus,
as correctly ruled by the respondent Court of Appeals in its assailed decision:
"since the petitioner (private respondent herein) is the patentee of
the disputed invention embraced by letters of patent UM No. 6938 issued
to it on January 23, 1990 by the Bureau of Patents, it has in its favor not
only the presumption of validity of its patent, but that of a legal and factual
first and true inventor of the invention."
In
the case of Aguas vs. De Leon, we stated that:
"The
validity of the patent issued by the Philippine Patent Office in favor of the
private respondent and the question over the investments, novelty and
usefulness of the improved process therein specified and described are matters
which are better determined by the Philippines Patent Office. The technical
Staff of the Philippines Patent Office, composed of experts in their field,
have, by the issuance of the patent in question, accepted the thinness of the
private respondent's new tiles as a discovery. There is a presumption that the
Philippine Patent Office has correctly determined the patentability of the
improvement by the private respondent of the process in question."
In fine,
in the absence of error or abuse of power or lack of jurisdiction or grave
abuse of discretion, we sustain the assailed decision of the respondent Court
of Appeal.
WHEREFORE,
the decision of the Court of Appeals is hereby AFFIRMED. No pronouncement as to
costs.