ONG SHIAO KONG AND CU WU JOAM, PETITIONERS, VS. THE DIRECTOR OF PATENTS AND PESSUMAL TOLARAM, RESPONDENTS.

Ong Shiao Kong versus Director of Patents

The Case

This is a petition for review brought by Ong Shiao Kong and Cu Wu Kiam against the Director of Patents and Pessumal Tolaram. The petitioners ask the Supreme Court to reverse the decision of the Director of Patents cancelling the letters patent issued in their favor for a flash water heater. The case matters for two reasons. First, it raises procedural questions about the authority of a hearing officer in the Philippines Patent Office. Second, and more importantly for the bar candidate, it illustrates the doctrine of mootness: when the conflicting patents at the heart of the controversy have both expired, the Court will decline to resolve the substantive issues because a resolution would serve no useful purpose.

Procedural History

The controversy began in the Philippines Patent Office. Pessumal Tolaram filed a petition for cancellation of the letters patent issued to the petitioners, and the case was heard by a hearing officer. The hearing officer ruled, over the objection of the petitioners, that they could be utilized as adverse witnesses. The Director of Patents then rendered a decision cancelling the petitioners' letters patent, and later amended that decision to hold further that the petitioners' model embodied the novel features of the respondent's model. The petitioners filed a petition for review before the Supreme Court. The Court gave due course to the petition and issued a writ of preliminary injunction enjoining the Director of Patents from enforcing his decision pending appeal. The case was submitted for decision. Later, the Court required the parties to show cause why the petition should not be dismissed as moot and academic because of the expiration of the terminal periods of the conflicting patents. The Court also required the Director of Patents to certify the current status of the letters patent, and the Director complied.

Facts

On September 24, 1959, letters patent number UM-66 was issued to Pessumal Tolaram for an instant water heater. On November 20, 1961, Tolaram filed a petition for cancellation of letters patent number UM-135, which had been issued to Ong Shiao Kong and Cu Wu Kiam for a flash water heater. Tolaram alleged that his previously patented utility model was substantially similar to that of the petitioners.

At the hearing, the hearing officer ruled over the petitioners' objection that they could be utilized by the respondent as adverse witnesses. Their testimony disclosed that Cu Wu Kiam, contrary to what was stated in their patent application, was merely a financier and not a co-maker of the article. On February 11, 1964, the Director of Patents cancelled UM-135 on the ground that under the great weight of American case law, if several persons obtained a joint patent for what was invented solely by one of them, that patent is void. On January 18, 1965, the Director amended his decision, holding further that the petitioners' model embodied the novel features of the respondent's model in so far as it concerns the construction and arrangement of the electrodes or steel plates through which water is heated.

The petitioners then filed the present petition for review. While the case was pending, the Court inquired into the status of the patents. The Director of Patents certified that UM-66 had expired on September 24, 1969, and that UM-135 had expired on July 6, 1969, both for failure to file an application for extension as required by law. The respondent manifested agreement that the petition should be dismissed. The petitioners filed no manifestation.

Issues

• Whether or not a hearing officer of the Philippines Patent Office has authority to hear cases filed with that office, to compel the petitioners to testify as adverse witnesses, and to receive evidence on a matter not raised in the petition for cancellation.
• Whether or not Cu Wu Kiam is a co-maker of the utility model in dispute, and whether or not the fact that he is not is sufficient to warrant cancellation of the letters patent.
• Whether or not the evidence supports the conclusion that the utility model of the respondent dominates that of the petitioners.
• Whether or not the petition should be dismissed as moot and academic due to the expiration of the terminal periods of the conflicting letters patent.

Applicable Provisions

Section 58 of Republic Act Number 165, as amended, provides:

Section 58. Term and extension thereof. — The term of the design patent and of the patent for a utility model shall be five years from the date of the grant thereof.

This provision fixes the lifetime of a utility model patent at five years, and it is the basis for the Court's conclusion that both patents in this case had already expired.

The same section further provides:

Before the expiration of the five-year term, upon payment of the required fee, or within a further time thereafter not to exceed six months upon payment of the surcharge, the owner of the design patent or of a patent for a utility model may apply for an extension for an additional five years.

This provision allows an extension only upon timely application, and the Director of Patents certified that neither party applied for one.

The same section also provides:

The application for extension must be accompanied by an affidavit showing that the design or the model is in commercial or industrial use in the Philippines or satisfactorily explaining non-use. In a similar manner an extension for a third five-year period may be obtained.

This provision completes the scheme of limited-term protection, confirming that the rights conferred by the patents are not perpetual.

Ruling

On the first three issues, the Court did not rule. It found that a resolution of the issues raised by the petition would serve no useful purpose because the respective lifetime periods of the allegedly conflicting letters patent had already expired, and neither the respondent nor the petitioners had applied for extension. The Court noted the certification of the Director of Patents that UM-66 expired on September 24, 1969, and that UM-135 expired on July 6, 1969, both for failure to file an application for extension within the period required by Section 58 of Republic Act Number 165, as amended. The respondent manifested agreement that the petition should be dismissed, and the petitioners filed no manifestation within the period given to them.

The Court therefore declared the case moot. It held that with the expiration of both patents, there was nothing left to cancel and nothing left to protect by injunction. The writ of preliminary injunction previously issued was dissolved.

Doctrine

A utility model patent has a term of five years from the date of the grant, extendible only upon timely application. When the conflicting letters patent that are the subject of a cancellation controversy have both expired, and neither party has applied for extension, the case becomes moot and academic. The Court will not resolve the substantive issues, because any ruling would serve no useful purpose. A bar candidate should remember that mootness is a ground for dismissal even when the case has already been given due course and a preliminary injunction has been issued. The expiration of the patent extinguishes the rights that the litigation sought to protect.

Disposition

The petition was dismissed, and the writ of preliminary injunction previously issued was dissolved, with no costs. The respondent prevailed in the sense that the cancellation of the petitioners' letters patent was left undisturbed, but the dismissal rested on mootness rather than on the merits.

Remember This

The single line worth memorizing is that when the patents in conflict have both expired, the case is moot and the Court will not rule on the merits. Examiners use this case to test whether a student recognizes mootness as a ground for dismissal even after due course and injunction, and to test knowledge of the five-year term of a utility model patent under Section 58 of Republic Act Number 165.