Patent Infringement: You Need a Patent to Sue for Infringement
TLDR: This case clarifies that only a patent holder, or their successors-in-interest, can sue for patent infringement in the Philippines. Being the original inventor isn’t enough; you must possess the patent to protect your invention legally.
CRESER PRECISION SYSTEMS, INC., PETITIONER, VS. COURT OF APPEALS AND FLORO INTERNATIONAL CORP., RESPONDENTS. G.R. No. 118708, February 02, 1998
Introduction
Imagine pouring your heart and soul into creating a groundbreaking invention, only to see someone else profit from it without your permission. This scenario highlights the critical importance of patent law in protecting the rights of inventors. In the Philippines, the legal framework surrounding patents is designed to incentivize innovation by granting inventors exclusive rights to their creations. However, understanding the nuances of patent law, particularly who can sue for infringement, is essential for both inventors and businesses.
The case of Creser Precision Systems, Inc. vs. Court of Appeals and Floro International Corp. delves into this very issue. It explores the question of whether a party can sue for patent infringement if they claim to be the original inventor but do not hold the actual patent. The Supreme Court’s decision provides crucial clarification on the rights of inventors and the requirements for pursuing legal action in cases of alleged patent infringement.
Legal Context
Philippine patent law, primarily governed by Republic Act No. 165 (the old Patent Law, applicable at the time of this case) and now Republic Act No. 8293 (the Intellectual Property Code), grants inventors exclusive rights to their inventions for a specific period. These rights include the ability to manufacture, use, sell, and import the patented invention. However, these rights are contingent upon obtaining a patent from the Intellectual Property Office (IPO).
A key provision in the old Patent Law, Section 42, addresses civil actions for infringement. This section states:
SECTION. 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. x x x
This provision clearly outlines who can bring an infringement suit. The term “patentee” refers to the individual or entity to whom the patent was officially granted. The phrase “anyone possessing any right, title or interest in and to the patented invention” refers to successors-in-interest, assignees, or grantees of the patentee.
Patent infringement occurs when someone unauthorizedly makes, uses, or sells a patented invention during the term of the patent. It’s a violation of the exclusive rights granted to the patent holder. However, the right to sue for infringement is not automatically granted to just anyone who claims to have invented something similar.
Case Breakdown
The dispute between Creser Precision Systems, Inc. (Creser) and Floro International Corp. (Floro) revolved around an aerial fuze, a device used in bombs and other projectiles.
Here’s how the events unfolded:
- Floro obtains a patent: Floro International Corp. was granted a Letters Patent for its aerial fuze by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT).
- Creser claims prior invention: Creser Precision Systems, Inc. claimed it had developed a similar aerial fuze earlier and had been supplying it to the Armed Forces of the Philippines (AFP).
- Creser sues for infringement: Creser, believing Floro’s fuze was a copy of its own, filed a complaint for injunction and damages against Floro, seeking to prevent Floro from manufacturing and selling its fuze.
- Trial Court initially favors Creser: The trial court initially granted a preliminary injunction against Floro, preventing them from manufacturing and selling the aerial fuze.
- Court of Appeals reverses: The Court of Appeals reversed the trial court’s decision, dismissing Creser’s complaint.
The Court of Appeals based its decision on the fact that Creser did not possess a patent for its aerial fuze. The Supreme Court affirmed the Court of Appeals’ decision, emphasizing that only the patentee (Floro, in this case) or their successors-in-interest could bring an action for patent infringement.
The Supreme Court highlighted the following key points:
- No patent, no infringement suit: “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.”
- Remedy is cancellation of patent: Creser’s proper remedy was to file a petition for cancellation of Floro’s patent with the Director of Patents, arguing that Floro was not the true and actual inventor. Creser failed to do so within the prescribed timeframe.
- Presumption of validity: “[The patentee] 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.”
Practical Implications
This case underscores the critical importance of securing a patent for your inventions. It’s not enough to be the first inventor; you must obtain a patent to legally protect your invention and have the right to sue for infringement. This ruling has significant implications for inventors, businesses, and anyone involved in the development and commercialization of new technologies.
The Supreme Court’s decision also emphasizes the importance of adhering to the proper legal procedures. If you believe someone else has obtained a patent for your invention, you must take timely action to challenge the validity of that patent through a petition for cancellation.
Key Lessons
- Secure a patent: Always prioritize obtaining a patent for your inventions to establish your exclusive rights.
- Patent is essential for infringement suits: You cannot successfully sue for patent infringement without holding a valid patent.
- Cancellation is the remedy: If you believe someone else has wrongly patented your invention, file a petition for cancellation with the IPO within the prescribed timeframe.
- Presumption of validity: A granted patent carries a presumption of validity, placing the burden of proof on the party challenging it.
Frequently Asked Questions
Q: What is a patent?
A: A patent is an exclusive right granted for an invention, which allows the patent holder to exclude others from making, using, or selling the invention for a limited period.
Q: Who can sue for patent infringement in the Philippines?
A: Only the patentee (the person or entity to whom the patent was granted) or their successors-in-interest (assignees, grantees, etc.) can sue for patent infringement.
Q: What should I do if I believe someone has patented my invention?
A: You should file a petition for cancellation of the patent with the Intellectual Property Office (IPO) within three (3) years from the date of publication of the patent.
Q: What happens if I don’t have a patent but I’m the original inventor?
A: While you may have certain moral rights as the original inventor, you lack the legal standing to sue for patent infringement. Your primary recourse is to challenge the validity of the existing patent through a cancellation proceeding.
Q: What is the difference between a utility model patent and an invention patent?
A: A utility model patent is granted for inventions that are new and industrially applicable, but do not meet the stringent requirements for inventive step required for invention patents. Utility model patents generally have a shorter term of protection.
Q: How long does a patent last in the Philippines?
A: Invention patents typically last for 20 years from the filing date, while utility model patents have a shorter term.
ASG Law specializes in Intellectual Property Law, including patents, trademarks, and copyrights. Contact us or email hello@asglawpartners.com to schedule a consultation.