Year printed on the cover of the catalog is not enough

 

In KPI Manufacturing, Inc. v. Go, 18 January 2017 (IPC No. 13-2015-00542), KPI Manufacturing, Inc., doing business under the name Keylargo Car Accessories Center (“Petitioner”), filed a Petition for Cancellation of Industrial Design Registration No. 3-2014-000447 issued in favor of Alwin T. Go (“Respondent-Registrant”).

Petitioner claimed that Respondent-Registrant is not the true and original designer of the subject design as said design lacked novelty. Petitioner claimed that it had been importing car mats with similar designs prior to the filing of Respondent-Registrant’s design application. Petitioner’s witness narrated that on 26 October 2013, the Petitioner purchased car mats with similar designs from its Chinese supplier and sold the same on 19 February 2014. Moreover, the car mats embodying the registered design was published in the 2013 CARMATS HONGSHENGYUAN product catalog.

On the other hand, Respondent-Registrant claimed that it specifically designed the subject car mat using SolidWorks on 2 February 2013. Thereafter, he engaged the services of a Malaysian manufacturer to produce the mold. Said transaction is evidenced by a purchase order dated 15 May 2013. Respondent-Registrant then filed its application for the registration of the subject design on 13 May 2014.

Section 23 of the Intellectual Property Code of the Philippines (“IP Code”) provides that an invention shall not be considered new if it forms part of the prior art. Section 24 of the IP Code, on the other hand, provides what prior art shall consist of:

Section 24. Prior Art. – Prior art shall consist of:

24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and

24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same.

At the outset, it must be pointed out that the Respondent-Registrant objected to the submission of Petitioner’s evidence since they are mere photocopies. However, assuming arguendo that the 2013 product catalog is considered as evidence, the Adjudication Officer ruled that the said catalog does not anticipate the subject design since there is no evidence of its publication or circulation date apart from the year 2013 written on the cover page. Therefore, it cannot be verified whether it was printed prior to 13 May 2014, the filing date of the subject design. In order to support this conclusion, the Adjudication Officer cited the case of Manzano v. CA, wherein the Supreme Court held:

Thus the Director of Patents explained his reasons for the denial of the petition to cancel private respondent’s patent —

Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each and every element of the patented gas burner device so that the prior art and the said patented device become identical, although in truth they are not, they cannot serve as anticipatory bars for the reason that they are undated. The dates when they were distributed to the public were not indicated and, therefore, they are useless prior art references.

xxx Another factor working against the Petitioner’s claims is that an examination of Exh. “L” would disclose that there is no indication of the time or date it was manufactured. This Office, thus has no way of determining whether Exh. “L” was really manufactured before the filing of the aforesaid application which matured into Letters Patent No. UM- 4609, subject matter of the cancellation proceeding.

In addition, Respondent-Registrant requested for a Registrability Report. Said report did not point to any document that destroyed the subject design’s newness and originality. The Adjudication Officer pointed out that Patent Office is the expert body preeminently qualified to determine questions of patentability. Thus, its findings must be accepted if they are consistent with the evidence.

Questions:

Is this case on all fours with the cited Manzano v. CA case?

Do you agree that the year 2013 printed on the cover of the product catalog is not enough to show that said catalog was published in 2013?

Do product catalogs normally print their date of publication/circulation?

 

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