OUTLINE OF CASES IN INTELLECTUAL PROPERTY LAW.

8/14/2019 OUTLINE OF CASES IN INTELLECTUAL PROPERTY LAW.

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[G.R. No. 161295. June 29, 2005]

JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFEY. SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of Directors andOfficers of WILAWARE PRODUCT CORPORATION), respondents .

D E C I S I O N

CALLEJO, SR., J .:

This petition for review on certiorari assails the Decision [1] and Resolutio n [2] of the Court of Appeals (CA) in CA-G.R.SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Order s [3] of the Regional Trial Court (RTC) of Manila,Branch 1, which quashed and set aside Search Warrant Nos. 01-2401 and 01-2402 granted in favor of petitioner Jessie G.Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a

Utility Model, described as Leaf Spring Eye Bushing for Automobile made up of plastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of CopyrightRegistration and Deposit of the said work described therein as Leaf Spring Eye Bushing for Automobile. [4]

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for police/investigativeassistance for the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works .[5]

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William Salinas,Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation. It was alleged that therespondents therein reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of RepublicAct (R.A.) No. 8293. The applications sought the seizure of the following:

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plasticpolypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of polyvinyl chlorideplastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the manufacture/fabrication of itemsa to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts .[6]

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the seizure of the

aforecited articles .[7] In the inventory submitted by the NBI agent, it appears that the following articles/items wereseized based on the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene- C190 27 }- C240 rear 40 }- C240 front 41 } BAG 1

b) Polyvinyl Chloride Plastic- C190 13 }
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c) Vehicle bearing cushion- center bearing cushion 11 }

Budder for C190 mold 8 }Diesel Mold

a) Mold for spring eye bushing rear 1 setb) Mold for spring eye bushing front 1 setc) Mold for spring eye bushing for C190 1 setd) Mold for C240 rear 1 piece of the

sete) Mold for spring eye bushing for L300 2 setsf) Mold for leaf spring eye bushing C190

with metal 1 setg) Mold for vehicle bearing cushion 1 se t [8]

The respondents filed a motion to quash the search warrants on the following grounds:

2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground that:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaning there ( sic) areoriginal parts that they are designed to replace. Hence, they are not original .[9]

The respondents averred that the works covered by the certificates issued by the National Library are not artistic innature; they are considered automotive spare parts and pertain to technology. They aver that the models are notoriginal, and as such are the proper subject of a patent, not copyright .[10]

In opposing the motion, the petitioner averred that the court which issued the search warrants was not the properforum in which to articulate the issue of the validity of the copyrights issued to him. Citing the ruling of the Courtin Malaloan v. Court of Appeals ,[11] the petitioner stated that a search warrant is merely a judicial process designed bythe Rules of Court in anticipation of a criminal case. Until his copyright was nullified in a proper proceeding, he enjoysrights of a registered owner/holder thereof.

On January 3, 2002, the trial court issued an Orde r [12] granting the motion, and quashed the search warrant on itsfinding that there was no probable cause for its issuance. The court ruled that the work covered by the certificatesissued to the petitioner pertained to solutions to technical problems, not literary and artistic as provided in Article 172of the Intellectual Property Code.

His motion for reconsideration of the order having been denied by the trial courts Order of February 14, 2002, thepetitioner filed a petition for certiorari in the CA, contending that the RTC had no jurisdiction to delve into and resolvethe validity of the copyright certificates issued to him by the National Library. He insisted that his works are covered bySections 172.1 and 172.2 of the Intellectual Property Code. The petitioner averred that the copyright certificatesare prima facie evidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife ExpressCorporation v. Carol Wright Sales, Inc .[13] The petitioner asserted that the respondents failed to adduce evidence to

support their motion to quash the search warrants. The petitioner noted that respondent William Salinas, Jr. was notbeing honest, as he was able to secure a similar copyright registration of a similar product from the National Library onJanuary 14, 2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the RTC did notcommit any grave abuse of its discretion in issuing the assailed order, to wit:

It is settled that preliminarily, there must be a finding that a specific offense must have been committed to justify theissuance of a search warrant. In a number of cases decided by the Supreme Court, the same is explicitly provided, thus:
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The probable cause must be in connection with one specific offense, and the judge must, before issuing the warrant,personally examine in the form of searching questions and answers, in writing and under oath, the complainant and anywitness he may produce, on facts personally known to them and attach to the record their sworn statements togetherwith any affidavit submitted.

In the determination of probable cause, the court must necessarily resolve whether or not an offense exists to justifythe i ssuance or quashal of the search warrant.

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but subsequentlyquashed, for the offense of Violation of Class Designation of Copyrightable Works under Section 177.1 in relation toSection 177.3 of Republic Act 8293 , when the objects subject of the same, are patently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works (Sec. 172) andderivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion fall on neither classification.Accordingly, if, in the first place, the item subject of the petition is not entitled to be protected by the law on copyright,how can there be any violation ? [14]

The petitioners motion for reconsideration of the said decision suffered the same fate. The petitioner forthwithfiled the present petition for review on certiorari , contending that the revocation of his copyright certificates should be

raised in a direct action and not in a search warrant proceeding.The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of his copyright

in a proceeding to quash a search warrant for allegedly infringing items, the RTC committed a grave abuse of itsdiscretion when it declared that his works are not copyrightable in the first place. He claims that R.A. No. 8293,otherwise known as the Intellectual Property Code of the Philippines, which took effect on January 1, 1998, provides inno uncertain terms that copyright protection automatically attaches to a work by the sole fact of its creation,irrespective of its mode or form of expression, as well as of its content, quality or purpose . [15] The law gives a non-inclusive definition of work as referring to original intell ectual creations in the literary and artistic domain protectedfrom the moment of their creation; and includes original ornamental designs or models for articles of manufacturewhether or not registrable as an industrial design and other works of applied art under Section 172.1(h) of R.A. No.8293.

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or artistic, thesaid law, likewise, encompasses works which may have a bearing on the utility aspect to wh ich the petitioners utilitydesigns were classified. Moreover, according to the petitioner, what the Copyright Law protects is the authorsintellectual creation, regardless of whether it is one with utilitarian functions or incorporated in a useful article producedon an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry of an articleeligible for patent bars or invalidates its registration under the Law on Copyright. The test of protection for the aestheticis not beauty and utility, but art for the copyright and invention of original and ornamental design for designpatents .[16] In like manner, the fact that his utility designs or models for articles of manufacture have been expressed inthe field of automotive parts, or based on something already in the public domain does not automatically remove themfrom the protection of the Law on Copyright .[17]

The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same presumption to anaffidavit executed by an author who claims copyright ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search warrant means merely areasonable suspicion of the commission of the offense. It is not equivalent to absolute certainty or a finding of actualand positive cause .[18] He assists that the determination of probable cause does not concern the issue of whether or notthe alleged work is copyrightable. He maintains that to justify a finding of probable cause in the issuance of a searchwarrant, it is enough that there exists a reasonable suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright is valid; hence,the burden of overturning this presumption is on the alleged infringers, the respondents herein. But this burden cannot
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be carried in a hearing on a proceeding to quash the search warrants, as the issue therein is whether there was probablecause for the issuance of the search warrant. The petitioner concludes that the issue of probable cause should beresolved without invalidating his copyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially a technicalsolution to the problem of wear and tear in automobiles, the substitution of materials, i.e. , from rubber to plastic matterof polyvinyl chloride, an oil resistant soft texture plastic material strong enough to endure pressure brought about bythe vibration of the counter bearing and thus brings bushings. Such work, the respondents assert, is the subject ofcopyright under Section 172.1 of R.A. No. 8293. The respondents posit that a technical solution in any field of humanactivity which is novel may be the subject of a patent, and not of a copyright. They insist that the certificates issued bythe National Library are only certifications that, at a point in time, a certain work was deposited in the said office.Furthermore, the registration of copyrights does not provide for automatic protection. Citing Section 218.2(b) of R.A.No. 8293, the respondents aver that no copyright is said to exist if a party categorically questions its existence andlegality. Moreover, under Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registration and deposit ofwork is not conclusive as to copyright outlay or the time of copyright or the right of the copyright owner. Therespondents maintain that a copyright exists only when the work is covered by the protection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioners utility models arecopyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing that upon the

filing of the application for search warrant, the RTC was duty-bound to determine whether probable cause existed, inaccordance with Section 4, Rule 126 of the Rules of Criminal Procedure:

SEC. 4. Requisite for issuing search warrant . A search warrant shall not issue but upon probable cause in connectionwith one specific offense to be determined personally by the judge after examination under oath or affirmation of thecomplainant and the witnesses he may produce, and, particularly, describing the place to be searched and the things tobe seized.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC , Br. 93 ,[19] the Court held that in the determination ofprobable cause, the court must necessarily resolve whether or not an offense exists to justify the issuance of a searchwarrant or the quashal of one already issued by the court. Indeed, probable cause is deemed to exist only where facts

and circumstances exist which could lead a reasonably cautious and prudent man to believe that an offense has beencommitted or is being committed. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrantmay be issued for the search and seizure of personal property (a) subject of the offense; (b) stolen or embezzled andother proceeds or fruits of the offense; or (c) used or intended to be used as the means of committing an offense.

The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable cause. Thecourt cannot abdicate its constitutional obligation by refusing to determine whether an offense has beencommitted .[20] The absence of probable cause will cause the outright nullification of the search warrant .[21]

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an application iscommitted, the petitioner-applicant was burdened to prove that (a) respondents Jessie Ching and Joseph Yu were theowners of copyrighted material; and (b) the copyrighted material was being copied and distributed by the respondents.Thus, the ownership of a valid copyright is essential .[22]

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality is meant thatthe material was not copied, and evidences at least minimal creativity; that it was independently created by the authorand that it possesses at least same minimal degree of creativity .[23] Copying is shown by proof of access to copyrightedmaterial and substantial similarity between the two works .[24] The applicant must thus demonstrate the existence andthe validity of his copyright because in the absence of copyright protection, even original creation may be freelycopied .[25]

By requesting the NBI to investigate and, if feasible, file an application for a search warrant for infringement underR.A. No. 8293 against the respondents, the petitioner thereby authorized the RTC (in resolving the application), to delveinto and determine the validity of the copyright which he claimed he had over the utility models. The petitioner cannot
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seek relief from the RTC based on his claim that he was the copyright owner over the utility models and, at the sametime, repudiate the courts jurisdictio n to ascertain the validity of his claim without running afoul to the doctrine ofestoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work or, in itsabsence, other evidence .[26] A copyright certificate provides prima facie evidence of originality which is one element ofcopyright validity. It constitutes prima facie evidence of both validity and ownership [27] and the validity of the factsstated in the certificate .[28] The presumption of validity to a certificate of copyright registration merely orders the burdenof proof. The applicant should not ordinarily be forced, in the first instance, to prove all the multiple facts that underlinethe validity of the copyright unless the respondent, effectively challenging them, shifts the burden of doing so to theapplicant .[29] Indeed, Section 218.2 of R.A. No. 8293 provides:

218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if thedefendant does not put in issue the question whether copyright subsists in the work or other subject matter; and

(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of thecopyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of hisownership.

A certificate of registration creates no rebuttable presumption of copyright validity where other evidence in therecord casts doubt on the question. In such a case, validity will not be presumed .[30]

To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A. No. 8293, thepetitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos. 2001-197 and 2001-204 datedSeptember 3, 2001 and September 4, 2001, respectively, issued by the National Library covering work identified as LeafSpring Eye Bushing for Automobile and Vehicle Bearing Cushion both classified under Section 172.1(h) of R.A. No. 8293,to wit:

SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works, hereinafter referred to as works, are originalintellectual creations in the literary and artistic domain protected from the moment of their creation and shall include inparticular:

...

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrialdesign, and other works of applied art.

Related to the provision is Section 171.10, which provides that a work of applied art is an artistic creation withutilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed by the

petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as comprising a generallycylindrical body having a co-axial bore that is centrally located and provided with a perpendicular flange on one of itsends and a cylindrical metal jacket surrounding the peripheral walls of said body, with the bushing made of plastic that iseither polyvinyl chloride or polypropylene .[31] Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushioncomprising a generally semi-circular body having a central hole to secure a conventional bearing and a plurality of ridgesprovided therefore, with said cushion bearing being made of the same plastic materials .[32] Plainly, these are not literaryor artistic works. They are not intellectual creations in the literary and artistic domain, or works of applied art. They arecertainly not ornamental designs or one having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its marketability. Thecentral inquiry is whether the article is a work of art .[33] Works for applied art include all original pictorials, graphics, and
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sculptural works that are intended to be or have been embodied in useful article regardless of factors such as massproduction, commercial exploitation, and the potential availability of design patent protection .[34]

As gleaned from the description of the models and their objectives, these articles are useful articles which aredefined as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or toconvey information. Indeed, while works of applied art, original intellectual, literary and artistic works arecopyrightable, useful articles and works of industrial design are not .[35] A useful article may be copyrightable only if andonly to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identifiedseparately from, and are capable of existing independently of the utilitarian aspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the authorsintellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a useful articleproduced on an industrial scale, is protected by copyright law. However, the law refers to a work of applied art which isan artistic creation. It bears stressing that there is no copyright protection for works of applied art or industrial designwhich have aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of thearticle .[36]Functional components of useful articles, no matter how artistically designed, have generally been deniedcopyright protection unless they are separable from the useful article .[37]

In this case, the petitioners models are not works of applied art, nor artistic works. They are utility models, usefularticles, albeit with no artistic design or value. Thus, the petitioner described the utility model as follows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber. These rubberbushings after a time, upon subjecting them to so much or intermittent pressure would eventually wore ( sic) out thatwould cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile that is made upof plastic.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of polyvinyl chloride, anoil resistant soft texture plastic or polypropylene, a hard plastic, yet both causes cushion to the leaf spring, yet strong

enough to endure pressure brought about by the up and down movement of said leaf spring.

Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a much longer lifespan than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a very simpleconstruction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is supplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel material of the leaf spring.

These and other objects and advantages will come to view and be understood upon a reading of the detailed descriptionwhen taken in conjunction with the accompanying drawings.

Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and
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Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designated same parts throughout,there is shown a utility model for a leaf-spring eye bushing for automobile generally designated as reference numeral10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12 centrally providedthereof.

As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 on one of its endsand a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said body 11. When said leaf-spring bushing 10is installed, the metal jacket 14 acts with the leaf-spring eye (not shown), which is also made of steel or cast steel. Ineffect, the bushing 10 will not be directly in contact with steel, but rather the metal jacket, making the life of the bushing10 longer than those without the metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant soft texture plasticor a hard polypropylene plastic, both are capable to endure the pressure applied thereto, and, in effect, would lengthenthe life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is insertably provided with asteel tube 17 to reinforce the inner portion thereof. This steel tube 17 accommodates or engages with the leaf-springbolt (not show n) connecting the leaf spring and the automobiles chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and cylindrical as to itsconstruction. Said another embodiment is also made of polypropylene or polyvinyl chloride plastic material. The steeltube 17 and metal jacket 14 may also be applied to this embodiment as an option thereof .[38]

VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard rubber. Theserubber bushings after a time, upon subjecting them to so much or intermittent pressure would eventually be worn outthat would cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up of plastic.

Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride, an oil resistantsoft texture plastic material which causes cushion to the propellers center bearing, yet strong enough to endurepressure brought about by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life span than rubberbushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple construction and can bemade using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of the detailed descriptionwhen taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Figure 2 is a sectional view thereof.
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Referring now to the several views of the drawing, wherein like reference numeral designate same parts throughout,there is shown a utility model for a vehicle-bearing cushion generally designated as reference numeral 10.

Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to house a conventionalbearing (not shown). As shown in Figure 1, said body 11 is provided with a plurality of ridges 13 which serves reinforcingmeans thereof.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant plastic material

which is strong, durable and capable of enduring severe pressure from the center bearing brought about by the rotatingmovement of the propeller shaft of the vehicle .[39]

A utility model is a technical solution to a problem in any field of human activity which is new and industriallyapplicable. It may be, or may relate to, a product, or process, or an improvement of any of the aforesaid . [40] Essentially,a utility model refers to an invention in the mechanical field. This is the reason why its object is sometimes described asa device or useful object .[41] A utility model varies from an invention, for which a patent for invention is, likewise,available, on at least three aspects: first, the requisite of inventive step [42] in a patent for invention is not required;second, the maximum term of protection is only seven year s[43] compared to a patent which is twenty years ,[44] bothreckoned from the date of the application; and third, the provisions on utility model dispense with its substantiveexamination [45] and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of the components they seekto replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the decorativequality or value that must characterize authentic works of applied art. They are not even artistic creations withincidental utilitarian functions or works incorporated in a useful article. In actuality, the personal properties described inthe search warrants are mechanical works, the principal function of which is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the catch-allphrase other literary, scholarly, scientific and artistic works in Section 172.1(a) of R.A. No. 8293. Applying the principleof ejusdem generis which states that where a statute describes things of a particular class or kind a ccompanied bywords of a generic character, the generic word will usually be limited to things of a similar nature with those particularlyenumerated, unless there be something in the context of the state which would repel such inference, [46] the Leaf SpringEye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature as the worksenumerated in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates ofcopyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr.v. Drilon [47] and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated ,[48] the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by thestatute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as thestatute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on termsand conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumerationor description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance of asearch warrant for violation of copyright laws. In Kho v. Court of Appeals [49]and Pearl & Dean (Phil.), Incorporated v.Shoemart, Incorporated ,[50] the Court ruled that these copyright an d patent rights are completely distinct and separatefrom one another, and the protection afforded by one cannot be used interchangeably to cover items or worksthat exclusively pertain to the others. The Court expounded further, thus:

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with oneanother. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of anenterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the nameor designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary
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and artistic works which are original intellectual creations in the literary and artistic domain protected from the momentof their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field ofhuman activity which is new, involves an inventive step and is industrially applicable.

The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein [51] to buttresshis petition. In that case, the artifacts involved in that case were statuettes of dancing male and female figures made ofsemi-vitreous china. The controversy therein centered on the fact that although copyrighted as works of art, thestatuettes were intended for use and used as bases for table lamps, with electric wiring, sockets and lampshades

attached. The issue raised was whether the statuettes were copyright protected in the United States, considering thatthe copyright applicant intended primarily to use them as lamp bases to be made and sold in quantity, and carried suchintentions into effect. At that time, the Copyright Office interpreted the 1909 Copyright Act to cover works of artisticcraftsmanship insofar as their form, but not the utilitarian aspects, were concerned. After reviewing the history andintent of the US Congress on its copyright legislation and the interpretation of the copyright office, the US SupremeCourt declared that the statuettes were held copyrightable works of art or models or designs for works of art. The HighCourt ruled that:

Works of art (Class G) (a) In General . This class includes works of artistic craftsmanship, in so far as their form butnot their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, aswell as all works belonging to the fine arts, such as paintings, drawings and sculpture.

So we have a contemporaneous and long-continued construction of the statutes by the agency charged to administerthem that would allow the registration of such a statuette as is in question here .[52]

The High Court went on to state that [t]he dichotomy of protection for the ae sthetic is not beauty and utility butart for the copyright and the invention of original and ornamental design for design patents. Significantly, the copyrightoffice promulgated a rule to implement Mazer to wit:

[I]f the sole intrinsic function of a n article is its utility, the fact that the work is unique and attractively shaped will notqualify it as a work of art.

In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted, utilitymodels which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING,the instant petition is hereby DENIED for lack of merit. The assailed Decisionand Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs against the petitioner.

SO ORDERED.
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GRAHAM v. JOHN DEERE CO., 383 U.S. 1 (1966)

383 U.S. 1

GRAHAM ET AL. v. JOHN DEERE CO. OF KANSAS CITY ET AL.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE EIGHTH CIRCUIT.

No. 11.

Argued October 14, 1965.

Decided February 21, 1966. *

[ Footnote * ] Together with No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook

Chemical Co., also on certiorari to the same court.

In No. 11 petitioners sued for infringement of a patent, consisting of a combination of old mechanical elements, for a

device designed to absorb shock from plow shanks in rocky soil to prevent damage to the plow. In 1955 the Fifth Circuit

held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise

more advantageous way." Here the Eighth Circuit held that since there was no new result in the combination the patentwas invalid. Petitioners in Nos. 37 and 43 filed actions for declaratory judgments declaring invalid respondent's patent

relating to a plastic finger sprayer with a "hold-down" cap used as a built-in dispenser for containers with liquids,

principally insecticides. By cross-action respondent claimed infringement. The District Court and the Court of Appeals

sustained the patent. Held: The patents do not meet the test of the "nonobvious" nature of the "subject matter sought

to be patented" to a person having ordinary skill in the pertinent art, set forth in 103 of the Patent Act of 1952, and are

therefore invalid. Pp. 3-37. [383 U.S. 1, 2]

(a) In carrying out the constitutional command of Art. I, 8, that a patent system "promote the Progress of . . . useful

Arts," Congress established the two statutory requirements of novelty and utility in the Patent Act of 1793. Pp. 3, 6, 12.

(b) This Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), additionally conditioned the issuance of a patent upon

the evidence of more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business. P.

11.

(c) In 103 of the 1952 Patent Act Congress added the statutory nonobvious subject matter requirement, originally

expounded in Hotchkiss, which merely codified judicial precedents requiring a comparison of the subject matter sought

to be patented and the prior art, tying patentable inventions to advances in the art. Although 103 places emphasis upon

inquiries into obviousness, rather than into "invention," the general level of innovation necessary to sustain patentability

remains unchanged under the 1952 Act. Pp. 14-17.

(d) This section permits a more practical test of patentability. The determination of "nonobviousness" is made after

establishing the scope and content of prior art, the differences between the prior art and the claims at issue, and the

level of ordinary skill in the pertinent art. P. 17.

(e) With respect to each patent involved here the differences between the claims in issue and the pertinent prior art

would have been obvious to a person reasonably skilled in that art. Pp. 25-26, 37.333 F.2d 529, affirmed; 336 F.2d 110, reversed and remanded.
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Orville O. Gold argued the cause for petitioners in No. 11. With him on the brief was Claude A. Fishburn. Dennis G. Lyons

argued the cause for petitioners in Nos. 37 and 43. With him on the briefs for petitioner in No. 37 were Victor H. Kramer

and Francis G. Cole. On the brief for petitioner in No. 43 were George H. Mortimer and Howard A. Crawford.

S. Tom Morris argued the cause for respondents in No. 11. With him on the brief were W. W. Gibson and Thomas E.

Scofield. Gordon D. Schmidt argued the cause for respondent in Nos. 37 and 43. With him on [383 U.S. 1, 3] the brief

were Carl E. Enggas, Hugh B. Cox and Charles A. Miller.

Briefs of amici curiae in No. 11 were filed by Roger Robb for the American Bar Association; by Stanton T. Lawrence, Jr.,

for the New York Patent Law Association; by George E. Frost for the Illinois State Bar Association; by J. Vincent Martin,

Alfred H. Evans and Russell E. Schlorff for the State Bar of Texas; and by Robert W. Hamilton for the School of Law of the

University of Texas.

MR. JUSTICE CLARK delivered the opinion of the Court.

After a lapse of 15 years, the Court again focuses its attention on the patentability of inventions under the standard of

Art. I, 8, cl. 8, of the Constitution and under the conditions prescribed by the laws of the United States. Since our last

expression on patent validity, A. & P. Tea Co. v. Supermarket Corp. ,340 U.S. 147 (1950), the Congress has for the first

time expressly added a third statutory dimension to the two requirements of novelty and utility that had been the sole

statutory test since the Patent Act of 1793. This is the test of obviousness, i. e., whether "the subject matter sought to

be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall

not be negatived by the manner in which the invention was made." 103 of the Patent Act of 1952, 35 U.S.C. 103 (1964

ed.).

The questions, involved in each of the companion cases before us, are what effect the 1952 Act had upon traditional

statutory and judicial tests of patentability and what definitive tests are now required. We have concluded that the 1952

Act was intended to codify judicial precedents embracing the principle long ago [383 U.S. 1, 4] announced by this Court

in Hotchkiss v. Greenwood, 11 How. 248 (1851), and that, while the clear language of 103 places emphasis on an inquiry

into obviousness, the general level of innovation necessary to sustain patentability remains the same.

I.

The Cases.

(a). No. 11, Graham v. John Deere Co., an infringement suit by petitioners, presents a conflict between two Circuits over

the validity of a single patent on a "Clamp for vibrating Shank Plows." The invention, a combination of old mechanical

elements, involves a device designed to absorb shock from plow shanks as they plow through rocky soil and thus to

prevent damage to the plow. In 1955, the Fifth Circuit had held the patent valid under its rule that when a combination

produces an "old result in a cheaper and otherwise more advantageous way," it is patentable. Jeoffroy Mfg., Inc. v.
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Graham, 219 F.2d 511, cert. denied, 350 U.S. 826 . In 1964, the Eighth Circuit held, in the case at bar, that there was no

new result in the patented combination and that the patent was, therefore, not valid. 333 F.2d 529, reversing 216 F.

Supp. 272. We granted certiorari, 379 U.S. 956 . Although we have determined that neither Circuit applied the correct

test, we conclude that the patent is invalid under 103 and, therefore, we affirm the judgment of the Eighth Circuit.

(b). No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook Chemical Co., both from the

Eighth Circuit, were separate declaratory judgment actions, but were filed contemporaneously. Petitioner in Calmar is

the manufacturer of a finger-operated sprayer with a "hold-down" cap of the type commonly seen on grocers' shelves

inserted in bottles of insecticides and other liquids prior to shipment. Petitioner in Colgate-Palmolive is a purchaser of

the sprayers [383 U.S. 1, 5] and uses them in the distribution of its products. Each action sought a declaration of

invalidity and noninfringement of a patent on similar sprayers issued to Cook Chemical as assignee of Baxter I. Scoggin,

Jr., the inventor. By cross-action, Cook Chemical claimed infringement. The actions were consolidated for trial and the

patent was sustained by the District Court. 220 F. Supp. 414. The Court of Appeals affirmed, 336 F.2d 110, and we

granted certiorari, 380 U.S. 949 . We reverse.

Manifestly, the validity of each of these patents turns on the facts. The basic problems, however, are the same in each

case and require initially a discussion of the constitutional and statutory provisions covering the patentability of the

inventions.

II.

At the outset it must be remembered that the federal patent power stems from a specific constitutional provision which

authorizes the Congress "To promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the

exclusive Right to their . . . Discoveries." Art. I, 8, cl. 8. 1 The clause is both a grant of power and a limitation. This

qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is

limited to the promotion of advances in the "useful arts." It was written against the backdrop of the practices -

eventually curtailed by the Statute of Monopolies - of the Crown in granting monopolies to court favorites in goods or

businesses which had long before been enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp.

30-35 (London, 1946). The Congress in the [383 U.S. 1, 6] exercise of the patent power may not overreach the restraints

imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the

innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of

patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials

already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent

requisites in a patent system which by constitutional command must "promote the Progress of . . . useful Arts." This is

the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity "requires

reference to a standard written into the Constitution." A. & P. Tea Co. v. Supermarket Corp., supra, at 154 (concurring

opinion).

Within the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of the Framers

by selecting the policy which in its judgment best effectuates the constitutional aim. This is but a corollary to the grant
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to Congress of any Article I power. Gibbons v. Ogden, 9 Wheat. 1. Within the scope established by the Constitution,

Congress may set out conditions and tests for patentability. McClurg v. Kingsland, 1 How. 202, 206. It is the duty of the

Commissioner of Patents and of the courts in the administration of the patent system to give effect to the constitutional

standard by appropriate application, in each case, of the statutory scheme of the Congress.

Congress quickly responded to the bidding of the Constitution by enacting the Patent Act of 1790 during the second

session of the First Congress. It created an agency in the Department of State headed by the Secretary of State, the

Secretary of the Department of War [383 U.S. 1, 7] and the Attorney General, any two of whom could issue a patent for

a period not exceeding 14 years to any petitioner that "hath . . . invented or discovered any useful art, manufacture, . . .

or device, or any improvement therein not before known or used" if the board found that "the invention or discovery

[was] sufficiently useful and important . . . ." 1 Stat. 110. This group, whose members administered the patent system

along with their other public duties, was known by its own designation as "Commissioners for the Promotion of Useful

Arts."

Thomas Jefferson, who as Secretary of State was a member of the group, was its moving spirit and might well be calledthe "first administrator of our patent system." See Federico, Operation of the Patent Act of 1790, 18 J. Pat. Off. Soc. 237,

238 (1936). He was not only an administrator of the patent system under the 1790 Act, but was also the author of the

1793 Patent Act. In addition, Jefferson was himself an inventor of great note. His unpatented improvements on plows,

to mention but one line of his inventions, won acclaim and recognition on both sides of the Atlantic. Because of his

active interest and influence in the early development of the patent system, Jefferson's views on the general nature of

the limited patent monopoly under the Constitution, as well as his conclusions as to conditions for patentability under

the statutory scheme, are worthy of note.

Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a monopoly on tea that sparked the

Revolution and Jefferson certainly did not favor an equivalent form of monopoly under the new government. His

abhorrence of monopoly extended initially to patents as well. From France, he wrote to Madison (July 1788) urging a Bill

of Rights provision restricting monopoly, and as against the argument that [383 U.S. 1, 8] limited monopoly might serve

to incite "ingenuity," he argued forcefully that "the benefit even of limited monopolies is too doubtful to be opposed to

that of their general suppression," V Writings of Thomas Jefferson, at 47 (Ford ed., 1895).

His views ripened, however, and in another letter to Madison (Aug. 1789) after the drafting of the Bill of Rights,

Jefferson stated that he would have been pleased by an express provision in this form:

"Art. 9. Monopolies may be allowed to persons for their own productions in literature & their own inventions in the arts,

for a term not exceeding - years but for no longer term & no other purpose." Id., at 113.And he later wrote:

"Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time. . . . Nobody

wishes more than I do that ingenuity should receive a liberal encouragement." Letter to Oliver Evans (May 1807), V

Writings of Thomas Jefferson, at 75-76 (Washington ed.).


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Jefferson's philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac McPherson(Aug. 1813), a portion of which we set out in the margin. 2 He rejected a natural-rights theory in [383 U.S. 1,9] intellectual property rights and clearly recognized the social and economic rationale of the patent system. Thepatent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward,an inducement, to bring forth new knowledge. The grant of an exclusive right to an invention was the creation of society- at odds with the inherent free nature of disclosed ideas - and was not to be freely given. Only inventions anddiscoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limitedprivate monopoly. Jefferson did not believe in granting patents for small details, obvious improvements, or frivolous

devices. His writings evidence his insistence upon a high level of patentability.As a member of the patent board for several years, Jefferson saw clearly the difficulty in "drawing a line between the

things which are worth to the public the embarrassment of an exclusive patent, and those which are not." The board on

which he served sought to draw such a line and formulated several rules which are preserved in [383 U.S. 1,

10] Jefferson's correspondence. 3 Despite the board's efforts, Jefferson saw "with what slow progress a system of

general rules could be matured." Because of the "abundance" of cases and the fact that the investigations occupied

"more time of the members of the board than they could spare from higher duties, the whole was turned over to the

judiciary, to be matured into a system, under which every one might know when his actions were safe and lawful."

Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with Jefferson and the board that the courts

should develop additional conditions for patentability. Although the Patent Act was amended, revised or codified some

50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty

and utility tests reformulated in Jefferson's draft of the 1793 Patent Act.

III.

The difficulty of formulating conditions for patentability was heightened by the generality of the constitutional grant and

the statutes implementing it, together with the underlying policy of the patent system that "the things which are worth

to the public the embarrassment [383 U.S. 1, 11] of an exclusive patent," as Jefferson put it, must outweigh the

restrictive effect of the limited patent monopoly. The inherent problem was to develop some means of weeding out

those inventions which would not be disclosed or devised but for the inducement of a patent.

This Court formulated a general condition of patentability in 1851 in Hotchkiss v. Greenwood, 11 How. 248. The patent

involved a mere substitution of materials - porcelain or clay for wood or metal in doorknobs - and the Court condemned

it, holding: 4

"[U]nless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with

the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of everyinvention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor." At p. 267.Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and skill than that possessedby an ordinary mechanic acquainted with the business, merely distinguished between new and useful innovations thatwere capable of sustaining a patent and those that were not. The Hotchkiss test laid the cornerstone of the judicialevolution suggested by Jefferson and left to the courts by Congress. The language in the case, and in those whichfollowed, gave birth to "invention" as a word of legal art signifying patentable inventions. Yet, as this Court hasobserved, "[t]he truth is the word [`invention'] cannot be defined in such manner as to afford any substantial aid indetermining whether a particular device involves an exercise of the inventive faculty [383 U.S. 1, 12] or not." McClain v.Ortmayer, 141 U.S. 419, 427 (1891); A. & P. Tea Co. v. Supermarket Corp., supra, at 151. Its use as a label brought abouta large variety of opinions as to its meaning both in the Patent Office, in the courts, and at the bar. The Hotchkiss
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formulation, however, lies not in any label, but in its functional approach to questions of patentability. In practice,Hotchkiss has required a comparison between the subject matter of the patent, or patent application, and thebackground skill of the calling. It has been from this comparison that patentability was in each case determined.

IV.

The 1952 Patent Act.

The Act sets out the conditions of patentability in three sections. An analysis of the structure of these three sectionsindicates that patentability is dependent upon three explicit conditions: novelty and utility as articulated and defined in

101 and 102, and nonobviousness, the new statutory formulation, as set out in 103. The first two sections, which trace

closely the 1874 codification, express the "new and useful" tests which have always existed in the statutory scheme and,

for our purposes here, need no clarification. 5 The pivotal [383 U.S. 1, 13] section around which the present

controversy centers is 103. It provides:

" 103. Conditions for patentability; non-obvious subject matter

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102

of this title, if the differences between the subject matter sought to be patented and the prior art are such that the

subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill

in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the

invention was made." [383 U.S. 1, 14]The section is cast in relatively unambiguous terms. Patentability is to depend, in addition to novelty and utility, uponthe "non-obvious" nature of the "subject matter sought to be patented" to a person having ordinary skill in the pertinentart.

The first sentence of this section is strongly reminiscent of the language in Hotchkiss. Both formulations place emphasis

on the pertinent art existing at the time the invention was made and both are implicitly tied to advances in that art. The

major distinction is that Congress has emphasized "nonobviousness" as the operative test of the section, rather than the

less definite "invention" language of Hotchkiss that Congress thought had led to "a large variety" of expressions in

decisions and writings. In the title itself the Congress used the phrase "Conditions for patentability; non-obvious subject

matter" (italics added), thus focusing upon "nonobviousness" rather than "invention." 6 The Senate and House Reports,

S. Rep. No. 1979, 82d Cong., 2d Sess. (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess. (1952), reflect this emphasis in

these terms:

"Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than

100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in thesense that the same thing has not been made before, may still not be patentable if the difference between the new

thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a

large variety of ways in decisions of [383 U.S. 1, 15] the courts and in writings. Section 103 states this requirement in the

title. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was

known before as described in section 102. If this difference is such that the subject matter as a whole would have been

obvious at the time to a person skilled in the art, then the subject matter cannot be patented.
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"That provision paraphrases language which has often been used in decisions of the courts, and the section is added to

the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures

which have appeared in some cases." H. R. Rep., supra, at 7; S. Rep., supra, at 6.It is undisputed that this section was, for the first time, a statutory expression of an additional requirement forpatentability, originally expressed in Hotchkiss. It also seems apparent that Congress intended by the last sentence of103 to abolish the test it believed this Court announced in the controversial phrase "flash of creative genius," used inCuno Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941). 7 [383 U.S. 1, 16]

It is contended, however, by some of the parties and by several of the amici that the first sentence of 103 was intended

to sweep away judicial precedents and to lower the level of patentability. Others contend that the Congress intended to

codify the essential purpose reflected in existing judicial precedents - the rejection of insignificant variations and

innovations of a commonplace sort - and also to focus inquiries under 103 upon nonobviousness, rather than upon

"invention," as a means of achieving more stability and predictability in determining patentability and validity.

The Reviser's Note to this section, 8 with apparent reference to Hotchkiss, recognizes that judicial requirements as to

"lack of patentable novelty [have] been followed since at least as early as 1850." The note indicates that the section was

inserted because it "may have some stabilizing effect, and also to serve as a basis for the addition at a later time of somecriteria which may be worked out." To this same effect are the reports of both Houses, supra, which state that the first

sentence [383 U.S. 1, 17] of the section "paraphrases language which has often been used in decisions of the courts,

and the section is added to the statute for uniformity and definiteness."

We believe that this legislative history, as well as other sources, 9 shows that the revision was not intended by Congress

to change the general level of patentable invention. We conclude that the section was intended merely as a codification

of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the

obviousness of the subject matter sought to be patented are a prerequisite to patentability.

V.

Approached in this light, the 103 additional condition, when followed realistically, will permit a more practical test of

patentability. The emphasis on nonobviousness is one of inquiry, not quality, and, as such, comports with the

constitutional strictures.

While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103

condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual

inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art andthe claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this

background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as

commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the

circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of

obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of "Nonobviousness": A

Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).
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This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is obvious is not

a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however,

are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and

should be amenable to a case-by-case development. We believe that strict observance of the requirements laid down

here will result in that uniformity and definiteness which Congress called for in the 1952 Act.

While we have focused attention on the appropriate standard to be applied by the courts, it must be remembered that

the primary responsibility for sifting out unpatentable material lies in the Patent Office. To await litigation is - for all

practical purposes - to debilitate the patent system. We have observed a notorious difference between the standards

applied by the Patent Office and by the courts. While many reasons can be adduced to explain the discrepancy, one may

well be the free rein often exercised by Examiners in their use of the concept of "invention." In this connection we note

that the Patent Office is confronted with a most difficult task. Almost 100,000 applications for patents are filed each

year. Of these, about 50,000 are granted and the backlog now runs well over 200,000. 1965 Annual Report of the

Commissioner of Patents 13-14. This is itself a compelling reason for the Commissioner to strictly adhere to the 1952 Act

as interpreted here. This would, we believe, not only expedite disposition but [383 U.S. 1, 19] bring about a closerconcurrence between administrative and judicial precedent. 10

Although we conclude here that the inquiry which the Patent Office and the courts must make as to patentability must

be beamed with greater intensity on the requirements of 103, it bears repeating that we find no change in the general

strictness with which the overall test is to be applied. We have been urged to find in 103 a relaxed standard, supposedly

a congressional reaction to the "increased standard" applied by this Court in its decisions over the last 20 or 30 years.

The standard has remained invariable in this Court. Technology, however, has advanced - and with remarkable rapidity

in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard

of a half century ago. It is but an evenhanded application to require that those persons granted the benefit of a patent

monopoly be charged with an awareness of these changed conditions. The same is true of the less technical, but still

useful arts. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office.

VI.

We now turn to the application of the conditions found necessary for patentability to the cases involved here:

A. The Patent in Issue in No. 11, Graham v. John Deere Co.

This patent, No. 2,627,798 (hereinafter called the '798 patent) relates to a spring clamp which permits plow shanks to be

pushed upward when they hit obstructions [383 U.S. 1, 20] in the soil, and then springs the shanks back into normal

position when the obstruction is passed over. The device, which we show diagrammatically in the accompanying

sketches (Appendix, Fig. 1), is fixed to the plow frame as a unit. The mechanism around which the controversy centers is

basically a hinge. The top half of it, known as the upper plate (marked 1 in the sketches), is a heavy metal piece clamped

to the plow frame (2) and is stationary relative to the plow frame. The lower half of the hinge, known as the hinge plate

(3), is connected to the rear of the upper plate by a hinge pin (4) and rotates downward with respect to it. The shank (5),
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which is bolted to the forward end of the hinge plate (at 6), runs beneath the plate and parallel to it for about nine

inches, passes through a stirrup (7), and then continues backward for several feet curving down toward the ground. The

chisel (8), which does the actual plowing, is attached to the rear end of the shank. As the plow frame is pulled forward,

the chisel rips through the soil, thereby plowing it. In the normal position, the hinge plate and the shank are kept tight

against the upper plate by a spring (9), which is atop the upper plate. A rod (10) runs through the center of the spring,

extending down through holes in both plates and the shank. Its upper end is bolted to the top of the spring while its

lower end is hooked

OUTLINE OF CASES IN INTELLECTUAL PROPERTY LAW.

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Transcript of OUTLINE OF CASES IN INTELLECTUAL PROPERTY LAW.