Creser Precision System Inc. vs. CA GR No. 118708 Feb. 2, 1998

FACTS

Private respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent No. UM-6938 covering an aerial fuze. The respondent discovered that petitioner submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing and is 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 respondent, 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. Petitioner averred that they are the first, true and actual inventor of an aerial fuze denominated as Fuze, PDR 77 CB4 which is developed as early as December 1981 under the Self-Reliance Defense Posture Program (SRDP) of the AFP; that sometime in 1986, and that they began supplying the AFP with the said aerial fuze; that private respondents aerial fuze is identical in every respect to the petitioners fuze; and that the only difference between the two fuzes are miniscule and merely cosmetic in nature.

Petitioner prayed that a temporary restraining order (TRO) and/or writ of preliminary injunction be issued enjoining private respondent including 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. The court issued a TRO in favor of the petitioner.

ISSUE

Whether or not the petitioner has the right to assail the validity of the patented work of the respondent?

HELD

The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA 165) provides that only the patentee or his successors-in-interest may file an action against infringement. What the law contemplates in the phrase “anyone possessing any right, title or interest in and to the patented invention” refers only to the patentee’s successors-in-interest, assignees or grantees since the action on patent infringement may be brought only in the name of the person granted with the patent. There can be no infringement of a patent until a patent has been issued since the right one has over the invention covered by the patent arises from the grant of the patent alone. Therefore, a person who has not been granted letter of patent over an invention has not acquired right or title over the invention and thus has no cause of action for infringement. Petitioner admitted having no patent over his invention. Respondent’s aerial fuze is covered by letter of patent issued by the Bureau of Patents thus it has in his favor not only the presumption of validity of its patent but that of a legal and factual first and true inventor of the invention.