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JAMES
HOWARD BOOTHE
G. R. L-24919
January 28, 1980
-versus-
DIRECTOR
OF PATENTS,
MELENCIO-HERRERA, J.:
Sought to be
reviewed herein is the decision
of the Director of Patents dated December 9, 1964, denying priority
rights
under Section 15 of our Patent Law [Republic Act No. 165] to
petitioners,
as foreign applicants for Letters Patent, for their invention of
"Chemotherapeutic
Materials and Methods of Preparing the Same." Petitioners
James Howard Boothe and John Morton II, chemists, citizens and
residents
of the United States, claim to be the inventors of a new antibiotic
designated
as "tetracycline", a new derivative of chlortetracycline [popularly
known
as "aureomycin"].
On February 19, 1954, petitioners applied for Letters Patent covering said invention to respondent Director of Patents claiming the right of priority granted to foreign applicants under Section 15 of the Patent Law [R. A. 165]. Receipt of petitioners' application was acknowledged by respondent Director on March 6, 1954. On April 14, 1954, petitioners filed with respondent Director a legalized copy of their Application for Letters Patent in the United States for the same invention [U.S. Serial No. 342556]. Said legalized copy indicated that the application in the United States was filed on March 16, 1963.[1] This latter date is of crucial importance to petitioners' cause under Section 15 of the Patent Law which provides that:
Under the foregoing provision, petitioners would be entitled to the priority date of March 16, 1953 if their application is considered filed in the Philippines as of March 5, 1954, since the latter date would fall within the one-year period prior to March 5, 1954. On February 7, 1958, petitioners informed respondent Director that in interference proceedings in the United States, Letters Patent for a similar invention as theirs was awarded to Pfizer and Co., which had filed its application ahead and that they failed to obtain any U.S. patent for their own invention. Petitioners, however, observed and requested:
On August 5, 1959, in Paper No. 6,[3] Patent Examiner, Lydia Nueva España, rejected all of petitioners' claims in view of "Philippine Patent No. 254 November 29, 1956", apparently referring to a local Patent obtained by Pfizer and Co., presumably covering the same invention. Additionally, petitioners were advised that the "Specification" they had submitted was "incomplete" and that responsive action should be filed by them four months from date of mailing, which was also August 5, 1959. Paper No. 6 precipitated a series of communications between the aforementioned Patent Examiner and petitioners, who apparently failed to meet the deadline of four months for filing their responsive action. On October 9, 1961, petitioners requested for clarification of Paper No. 6, particularly as to why their specification was considered incomplete. In response, Supervising Patent Examiner Nelia de Castro informed petitioners as follows:
On July 3, 1962, petitioners submitted two complete copies of the Specification, which included nine additional pages, and reiterated their request for priority right in the Philippines.[5] On October 2, 1962, Chief Patent Examiner Nicanor Mapili issued Paper No. 20 rejecting the additional nine pages of specification submitted by petitioners, and ruling:
The filing of the alleged complete copy Of the specification is an attempt to effect a remedy to the previous finding of incompleteness as stated in the 2nd to the last paragraph of Office Action mailed Aug. 5, 1959, marked Paper 6. This cannot be allowed inasmuch as 9 pages of new matter are actually proposed to be added to the specification. This action is made final for purpose of appeal.[6] Petitioners
moved for reconsideration on the ground
that their application falls under the exception provided for in Rule
47
of the Revised Rules of Practice in Patent Cases in that the missing
nine
pages submitted by them are not really new matter but a mere "minor
informality."
On February 5, 1963, Chief Patent Examiner
Mapili
issued Paper No. 22 denying petitioners' Motion for Reconsideration and
the findings of Examiner de Castro as follows:
The provisions of Section 15 of the Patent Law, under which the present application was filed, provides for filing. This deadline cannot be extended directly or indirectly by the filing of an imperfect application which can be freely amended or rectified at a later date. If this can be done legally, the restrictive provisions of Section 15 will be nullified.[7] Adversely affected, petitioners appealed to the Director of Patents. In their Brief filed with respondent Director, petitioners prayed for [1] revocation of the order of the Chief Patent Examiner;[8] [2] admission of their specification submitted on July 3, 1962; and [3] allowance of their application on the merits. On December 9, 1964, respondent Director rendered the questioned Decision, the dispositive portion of which reads:
In reaching the
foregoing conclusion, respondent
Director opined that the portions subsequently supplied in the local
application
are not new matter a comparison between the foreign and local
applications
showed that the foreign application included the missing portions of
the
local one. However, respondent Director qualified that petitioners'
application
may be considered complete only on April 14, 1954 when the certified
copy
of the foreign application was submitted. Consequently, the instant
application
is to be considered an ordinary application, not entitled to the right
of priority granted by Section 15 of the Patent Law, inasmuch as said
application
was not complete within the meaning of Rules 47 and 48 of the Revised
Rules
of Practice in Patent Case when first filed on March 5, 1954.
Petitioners filed a Motion for Partial Reconsideration of the above-mentioned Decision questioning that portion of respondent Director's ruling barring them from entitlement to the right of priority under Section 15 of the Patent Law contending that their appeal centered merely on the issue of whether or not the additional nine pages of Specification they had submitted should be treated as new matter. On June 10, 1965, respondent Director denied reconsideration for lack of merit, and explained:
On June 11, 1965, petitioners filed a Second Motion for Reconsideration on the ground that priority rights are governed by convention and treaty, while invention claims are governed exclusively by the Statute and Rules of Practice. Respondent Director denied that Motion for lack of merit on August 24, 1965. Hence, this recourse. On January 9, 1967, We deemed the case submitted for decision after petitioners had filed their Brief on February 12, 1966, and respondent Director, through the Solicitor General, his Brief on June 9, 1966. On June 9, 1968, Republic Act No. 5434 was enacted providing that final orders and decisions of the Director of Patents in ex parte and inter partes proceedings are appealable to the Court of Appeals. Since no provision for retroactivity exists in said Act, this Tribunal has resolved to retain jurisdiction over this case. Petitioners maintain before this Court that: RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT PETITIONERS' APPLICATION, SERIAL NO. 952, MAY NOT BE TREATED AS FILED UNDER SECTION 15 AS AMENDED, OF REPUBLIC ACT NO. 165, KNOWN AS THE PATENT LAW. and in support thereof stress that:
[2] The Director had no jurisdiction to decide the question of whether or not the Philippine Application was incomplete under Rules 47 and 48 of the Revised Rules of Practice in Patent Cases; [3] The Director misconstrued and misapplied Rules 47 and 48 of the Rules; [4] The Director misconstrued and misapplied Rule 262 [b] of the Rules. For resolution,
therefore, are the following issues:
the scope of the powers of the Director of Patents in cases appealed to
him and the correctness of his application of Rules 47, 48 and 262[b]
of
the Revised Rules of Practice in Patent Cases.
The facts unfolded call for an affirmance of respondent Director's rulings. Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and authority of respondent Director to decide petitioners' appeal in the manner that he did, and we quote:
In other words, respondent Director is empowered to consider grounds which may have come to his knowledge other than those specifically raised in an appeal He need not confine himself only to issues invoked. Besides, the question of new matter is inextricably linked with the right of priority on which petitioners have anchored their application. As early as Paper No. 18, supra, the Supervising Patent Examiner had concluded that inasmuch as the submitted pages did not correspond with the certified copy of the U.S. application, "the present application cannot therefore be granted priority date under Section 16 as requested by applicant." Again, in Paper No. 22, supra, the Chief Patent Examiner made mention of petitioner' imperfect application and the fact that the deadline for filing required by Section 15 of the Patent Law cannot be extended directly or indirectly otherwise "the restrictive provisions of Section 15 will be nullified." It is also far-fetched for petitioners to claim that in ruling on petitioners' right of priority, respondent Director had contravened Rule 254 of the Revised Rules of Practice in Patent cases, which provides that the Director of Patents exercises no direct control, direction and supervision over the Principal Examiner and the Executive Examiner. What respondent Director exercised was his authority to review the Decisions of Patent Examiners, as explicitly provided for in the last paragraph of the same Rules 254, as follows:
The only supervision which the Director of Patent may lawfully exercise over the Principal Examiners and the Executive Examiner is a general supervision, exercised through a review of the recommendations they may make for the grant of a patent, and through a review of their decision by petition and appeal. Similarly
untenable is petitioners' contention that
respondent Director had misconstrued and misapplied Rules 47 and 48 of
the Revised Rules of Practice in Patent Cases. The said Rules provide:
48. Serial number and filing date of application.- Complete applications are numbered in regular order, and the applicant win be informed of the serial number and filing date of the application by a filing receipt. The filing date of the applicant is the, date on which the complete application, acceptable for placing on the files for examination, is received in the Patent Office; or the date on which the last part completing such application is received, in the case of an incomplete or defective application completed within four months. The Executive Examiner shall be in charge of fixing the filing date and serial number of an application. Under the
aforecited provisions, it is imperative
that the application be complete in order that it may be accepted. It
is
essential to the validity of Letters Patent that the specifications be
full, definite, and specific.[11]
The purpose of requiring a definite and accurate description of the
process
is to apprise the public of what the patentee claims as his invention,
to inform the Courts as to what they are called upon to construe, and
to
convey to competing manufacturers and dealers information of exactly
what
they are bound to avoid.[12]
The specification which petitioners submitted on March 5, 1954 was far from complete. That defect was one of substance and not merely one of form. What petitioners claimed as their invention was not completely determinable therefrom. Petitioners' application could be deemed as complete only on July 2, 1963 when they submitted the additional pages on the Specifications and Claims. Respondent Director, therefore, did not err in converting petitioners' application into an ordinary application filed on April 14, 1954, not only for their having failed to complete their application within the four-month period provided for by Rules 47 and 48, Revised Rules of Practice in Patent Cases, and as required of them by Paper No. 6, but also for their having failed to file a complete application within twelve months from March 16, 1953, the date of the foreign application For, to be entitled to the filing date of the patent application, an invention disclosed in a previously filed application must be described within the instant application in such a manner as to enable one skilled in the art to use the same for a legally adequate utility.[13] All told, We sustain respondent Director's findings in the absence of error or abuse of power or lack of jurisdiction or grave abuse of discretion.[14] We have held that in the absence of arbitrariness, and provided they are supported by substantial evidence, as in this case, the conclusions reached by the Director of Patents are to be accorded respect and must be upheld.[15] WHEREFORE, We hereby affirm the Decision of respondent Director of Patents dated December 9, 1964. SO ORDERED. Teehankee,
Makasiar, Fernandez, Guerrero, and
De Castro, JJ., concur.
[1]
pp.. 21-49, Folder of Proceedings in Patent Office.
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