Case Summary (G.R. No. 126627)
Key Dates
• June 17, 1975 – Filing of original Philippine application (Serial No. 17280).
• October 8, 1976 – Filing of divisional Philippine application (Serial No. 18989).
• September 24, 1981 – Issuance of Letters Patent No. 14561 (term of 17 years).
• July 23, 1991 – RTC Decision dismissing petitioner’s complaint; patent declared void; damages awarded to Tryco.
• April 21, 1995 – CA Decision affirming non-infringement; deleting order of patent nullification.
• August 14, 2003 – Supreme Court Decision.
Applicable Law
• 1987 Philippine Constitution (decision rendered post-1990).
• Republic Act No. 165 (The Patents Law).
• Doctrine of Equivalents (function-means-result test).
• Civil Code provisions on damages (arts. 2208, 2224).
Factual and Procedural Background
Petitioner obtained a patent for methyl 5-propylthio-2-benzimidazole carbamate as an anthelmintic agent in animals. Tryco marketed Impregon containing Albendazole, which petitioner alleged to be covered by its patent. Petitioner secured a TRO and preliminary injunction in 1976, then sued for patent infringement and unfair competition. Tryco countered that Albendazole was not claimed, that the patent was void for late filing, and that no infringement occurred.
Trial Court and Court of Appeals Rulings
• RTC (1991): Dismissed petitioner’s suit; declared the patent void for violation of Sections 7, 9, and 15 of the Patents Law; awarded Tryco actual damages (₱330,000) and attorney’s fees (₱100,000).
• CA (1995): Upheld non-infringement finding; reversed patent nullification (accepting divisional application rationale under Section 17 of the Patents Law); deleted award of damages and fees to Tryco but affirmed dismissal of infringement claim.
Issues on Petition for Review
- Whether Albendazole falls within Letters Patent No. 14561, thus constituting infringement under the doctrine of equivalents.
- Whether the CA erred in awarding ₱330,000 actual damages and ₱100,000 attorney’s fees to Tryco.
Analysis on Patent Infringement
• Burden of proof rests on patentee to show that Albendazole is identical or equivalent to the claimed compound.
• Claims of the patent expressly cover only methyl 5-propylthio-2-benzimidazole carbamate and related methods/compositions. No mention or necessary implication of Albendazole.
• Doctrine of equivalents requires proof that the accused product performs substantially the same function by substantially the same means to achieve substantially the same result.
• Petitioner’s evidence (testimony of Dr. Orinion) was insufficient to demonstrate identity of means or mode of action; no expert qualification or documentary proof.
• The existence of a separate U.S. patent for Albendazole and the divisional-application mechanism establish that Albendazole is a distinct invention.
Conclusion: The C
Case Syllabus (G.R. No. 126627)
Facts
- Smith Kline Beckman Corporation (petitioner), a Pennsylvania corporation licensed in the Philippines, filed on October 8, 1976 a patent application (Serial No. 18989) as assignee before the Philippine Patent Office for “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5-Propylthio-2-Benzimidazole Carbamate.”
- On September 24, 1981, Letters Patent No. 14561 was issued to petitioner with a 17-year term, claiming the compound methyl 5-propylthio-2-benzimidazole carbamate and associated methods/compositions for combating gastrointestinal parasites and lungworms in various animals.
- Tryco Pharma Corporation (respondent) is a Philippine corporation that manufactures and markets “Impregon,” a veterinary drug containing Albendazole as its active ingredient, for use in livestock.
- Petitioner sued Tryco before the Caloocan City Regional Trial Court (RTC), alleging:
- Patent infringement of Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561;
- Unfair competition under Article 189(1) of the Revised Penal Code and Section 29 of Republic Act No. 166.
- The RTC granted a temporary restraining order and subsequently a writ of preliminary injunction against Tryco.
Procedural History
- Tryco’s Answer and Counterclaim:
- Argued that Albendazole is not covered by Letters Patent No. 14561.
- Contended that the patent is void for late filing (Section 15, Patent Law) and that petitioner is not the registered patent holder.
- Counterclaimed for actual damages (P1,000,000), moral damages (P300,000), exemplary damages (P150,000), and attorney’s fees.
- RTC Decision (July 23, 1991):
- Dismissed petitioner’s complaint and dissolved the injunction.
- Declared Letters Patent No. 14561 null and void (violations of Sections 7, 9 and 15 of the Patent Law).
- Directed cancellation of the patent.
- Awarded Tryco P330,000 in actual damages and P100,000 in attorney’s fees.
- Court of Appeals Decision (April 21, 199