I EllEC TUAl PROPERTY o C F n it.PHILIPP NE ~

MYLENE FERNANDEZ, } IPC No. 12-2017-00238 Petitioner, } Petition for Cancellation of

} Utility Model: } Registration No. 2-2016-000616 } Issued On: 24 October 2016

-versus- } }

ARJOLAN PREMIERE CORPORATION, } TM: A CUP WITH AN AUXILIARY Respondent-Registrant. } CONTAINER

x---------------------------------------x

NOTICE OF DECISION

BENGZON NEGRE UNTALAN Intellectual Property Attorneys Counsel for Petitioner 2nd Floor, SEDCCO Building Rada corner Legaspi street, Legazpi Village, Makati City

CORDOVA & ASSOCIATES Counsel for Respondent-Registrant Unit 1609, 16th Floor, 128 Eton Tower Makati Dela Rosa corner V.A. Rufino Street, Legazpi Village, Makati City

GREETINGS:

Please be informed that Decision No. 2018 - 301- dated 18 October 2018(copy enclosed) was promUlgated in the above entitled case.

Pursuant to Sect ion 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, 23 October 2018.

MA~-;:;;;AL IPRS IV

Bureau of Legal Affairs

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INTEUECTUAL PROPERTY

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OFACEOF THE PHILIPPINES

MYLENE FERNANDEZ, } IPC CaseNo. 12-2017- 00238 Petitioner, } Petition for Cancellation of Utility Model

} Registration No. 2-2016-000616 -YS­ } Issued on: 24 October 2016

} Title: "A CUP WITH AN AUXILIARY ARJOLAN PREMIERE CORPORATION,} CONTAINER"

Respondent-Registrant. }

?oecision No. 2018- jof x----------------------------------------------------------x

DECISION

MYLENE FERNANDEZ ("Petitioner")', filed a Petition for Cancellation of Utility Model Registration No. 2-2016-000616. The registration issued in the name of ARJOLAN PREMIERE CORPORATION, ("Respondent-Registrant,,)2, entitled "A CUP WITH AN AUXILIARY CONTAINER" was issued on 24 October 2016.

The Petitioner alleges that the invention disclosed in Utility Model Registration No. 2­2016-000616 is not novel within the meaning of Section 23 of Republic Act 8293, the Intellectual Property Code of the Philippines ("IP Code"). According to the Section 109.1, of the IP Code, a utility model ("UM") must be: I) patentable subject matter, 2) novel and 3) industrially applicable . The Petitioner states that the subject UM is not novel in view of relevant prior art documents. She cited:

01

02

Utility Model Registration No. 2­2007-000148

Industrial Design No. 3-2007-000311

AUXILIARY CUP FOR DRINKING CONTAINERS Issue date: 9 July 2007 Inventor : Lee Ji Kim Owner : Arjolan Premiere Corporation AUXILIARY CUP FOR DRINKING CONTAINERS Issue date: 16 July 2007 Inventor : Lee Ji Kim Owner: Arjolan Premiere Corporation ·

The Petitioner argues that both references D I and 02 disclose the exact same elements claimed by the subject UM. The table shows a side-by-side comparison between the disclosures of the subject UM and those in D I:

I Claim 1 of subject UM L-=-~::.::.::-.::.....::-=--=.-=-::..,-=---.::.....::...::....: I--=R--=e.::..:~--=e_re--=n.::..:c--=e--=D=-.:..I _

I Filip ino with address at Poblacion 1, Mabini Avenue, Tanauan, Batangas. 2 with address at B1, 120 City Park Subdivision, Sabang, Lipa City, Batangas.

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www.rpophu.oovph Intellectual Proper ty Center 1128 Upper McKinley Road e ma ll@lpoP hll.goV.Dtl Mc Kin ley Hill Town Centero +63 -2386300 For Bonifa cio. Tagwg Cit y

+632-5539480 1634 Philippines

(Element 1) An auxiliary container with a cup The present utility model discloses a cup with member an auxiliary container comprising a cup

member and an auxiliary container mounted on said cup member

(Element 2)The auxiliary container also has an The present utility model discloses a cup with auxiliary container mounted on said cup an auxiliary container comprising a cup member member and an auxiliary container mounted on

said cup member (Element 3) The auxiliary container is The auxiliary container is provided with at provided with at least one interiorly protruding least one interiorly protruding portion to portion to provide at least a notch on the outer provide at least a notch on the outer surface of surface of said side wall, said notch defining a said side wall, said notch defining a space space between the auxiliary container and cup between the auxiliary container and cup member for insertion of a straw. The space member for insertion of a straw. The space defined by said notch has a tapered defined by said notch has a tapered configuration from a broad lower end to a configuration from a broad lower end to a narrow upper end such that the straw will be narrow upper end such that the straw will be free to move laterally or can be tilted about. free to move laterally or can be tilted about.

The Petitioner explains that in comparing the disclosures both of both the subject UM and reference 01, one can readily see the exact correspondence between the elements disclosed in Claim 1 of the subject UM and the disclosures of 0 I and that the drawings of 02 are exactly identical with the UM. She maintains that the subject UM has already been commercially used and distributed for more than a decade prior to the filing of the subject UM. She argues that the use of a particular product may also be considered as prior art in relation to the novelty test. Section 5.4a of the Manual of Substantive Examination Procedure (MSEP) of the IPa states:

"Section 5.4a of the Manual Substantive Examination Procedure (MSEP) of the IPa states: 5.4.a Prior art made available to the public by use or in any other way

Types of use and instances of prior art made available in any other way:

Use may be constituted by producing, offering, marketing or otherwise exploiting a product, or by offering or marketing or otherwise exploiting a product, or by offering or marketing a process or its application or by applying the process. Marketing may be effected, for example by sale or exchange. xxx Availability to the public in any other way also includes all possibilities which technological progress may subsequently offer of making available the aspect of the prior art concerned.

" Section 5.4b of the MSEP further explains: 5.4b Ways in which subject matter may be made available

General principles

Subject matter should be regarded as made available to the public by use or in any other way if, at the relevant date, it was possible for the members of the public to gain knowledge of the subject matter and there was no bar of confidentiality restricting the use or dissemination of such knowledge. xxx This may, for example, arise if a object is unconditionally sold to a member of the public, xxx"

According to the Petitioner, the Respondent has already been engaging in commercial manufacturing and distribution of paper cup products with the same exact features as those disclosed in the subject UM . This was admitted by Rowena Inocencio, one of Respondent's franchisees , who said that it sold said paper cup products under the 'Kerrimo' brand as early as 2005.

To support her petition, the Petitioner submitted the following as evidence: Certified copy of Utility Model Registration No. 2-2016-000616, for "A Cup with an Auxiliary Container"; Affidavit ofRey Abraham Negre; Copies of video published on YouTube; Print-out of screen shot of Kerrimo paper cups; and Print-out of screen shot of Col-Pop paper CUps. 3

The Respondent-Registrant filed its Answer on 6 October 2017, alleging, among other things, that contrary to Petitioner's claim, Utility Model Registration No. 2-2016-000616 is novel. Respondent-Registrant argues that the subject UM is not a mere re-filing of Utility Model Registration No. 2-2007-000148 and that a comparison of the Abstract of the competing utility models will show that they have different practical utility:

UTILITY MODEL NO. 2-2016-00616 UTILITY MODEL NO. 2-2007-000148 The present utility model discloses a cup with An auxiliary cup for drinking containers for an auxiliary container comprising a cup containing finger foods comprising a cup body member and an auxiliary container mounted on being mounted on a drinking container with an said cup member. The auxiliary container is associated cup, said cup body has a flanged lip provided with at least one interiorly protruding to enable the lip to be seated on the mouth of portion to provide a least a notch on the outer the container. surface of said side wall , said notch on the outer surface of said side wall, said notch defining a space between the auxiliary container and the cup member for the insertion of a straw. The space defined by said notch has a tapered configuration from a broad lower end to a narrow upper end such that the straw will be free to move laterally or can be tilted about.

J Annexes "A" to "E" with submarkings. 3

M

The Respondent-Registrant cites Utility Model Registration No. 2-2007-000148 to show the present state of the art in the specification of Utility ModeJ Registration No. 2-2016-000616, to wit:

"Utility Model Registration No. 2-2007-000148 discloses an auxiliary cup for drinking containers for containing finger foods, comprising a cup body being mounted on a drinking container, the cup body has a flanged lip that seats on the mouth portion of the container. This configuration provides facile handling of both the container and the auxiliary cup with using only one hand . The cup has a space leading to the interior of the container for insertion of straw, for sipping the content of the container.

However, the space for the straw has a uniform diameter, such that the straw is restricted to be tilted or moved laterally, limiting the position of the straw to a specific angle thus , somewhat causing inconvenience to the user . "

According to the Respondent-Registrant, Utility Model Registration No. 2-2007-000148 poses a technical problem that lies between the space for the straw which has a uniform diameter such that the straw is restricted to be tilted or moved laterally. It states that as a response to this problem, it developed the subject UM to solve the problem.

The Respondent-Registrant's evidence consists of the following: copy of Utility Model Registration No. 2-2016-000616; copy of Utility Model Registration No. 2-2007-000148; copy of Industrial Design Registration No . 2-2007-000311.4

The Preliminary Conference was held on 29 May 2018 , wherein the parties were directed to file their position papers. The Petitioner and the Respondent-Registrant filed their position papers on 21 June 2018 and 20 June 2018, respectively.

Should the Respondent-Registrant's Utility Model Registration No . 2-2016-000616 be cancelled?

Sec . 61 of Republic Act 8293, also known as the Intellectual Property Code of the Philippines (IP Code) provides that a patent may be cancelled, if the patent is no longer new. The IP Codes states:

Section 61. Cancellation ofPatents. - 61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

(a) That what is claimed as the invention is not new or patentable

In determining whether an invention is new or novel, the invention must not form part of prior art. The pertinent provisions of the IP Code states:

4 Exhibits " 1"- "3". 4

Section 23. Novelty. . - An invention shall not be considered new if it forms part of a prior art.

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.

The provisions of the law on patentability and novelty of patents shall likewise apply to utility models which is the subject matter of this instant case. The law provides:

Sec. 108. Applicability of Provisions Relating to Patents. - 108.1. Subject to Section 109, the provisions governing patents shall apply, mutatis mutandis, to the registration of utility models.

The drawings of the questioned Utility Model (UM) Registration No. 2-2016-000616 5

are seen below:

5 Exhibit" 1" 5

17 16

FIG. 2

l r; ! 1 1 1

FIG. 3

6

17 16

22

11i

FIG.4

The Petitioner argues that the subject matter of Respondent-Registrant's UM is no longer new. It cites as reference, Utility Model Registration No. 2-2007-000148, which claims: "An auxiliary cup for drinking containers for containing finger foods comprising a cup body being mounted on a drinking container with an associated cap, said cup body has a flanged lip to enable the lip to be seated on the mouth of the portion of the container." A perusal of the registration shows that there is a "notch defines a space between the cup body and the container for insertion of a straw". On the other hand , the Respondent-Registrant addresses the problem of the straw, not being able to move, in an auxiliary container mounted on a cup container. In fact, in the Specifications, it cites Utility Model Registration No. 2-2007-000148, describing the problem in page 2, to wit: "However, the space for the straw has a uniform diameter, such that the straw is restricted to be tilted or moved laterally, limiting the position of the straw to a specific angle thus, somewhat causing inconvenience to the user." Figure 3 of the subject UM, illustrates how a technical solution was provided for the inserted straw to gain more movement or flexibilty.

FIG.3

7

Neither the drawing in Industrial Design Registration No. 2-2007-000311 6 show the novel feature in Respondent-Registrant's utility model. Clearly, as depicted in the drawings, the questioned registration contains a modification that serves a practical utility not evident from the drawings in Industrial Design Registration No. 2-2007-000311 . Thus, these cannot be considered prior art that defeats the novelty of Respondent-Registrant's utility model.

The Petitioner submitted video", which is purportedly one of Respondent's franchisees. The video contains a presentation by Ms. Rowena Inocencia where she discusses that she got this idea of a food business with a food packaging, where food and drinks are in one container. In the video, she encouraged franchisees for her business under the brand "kerrimo" , where the packaging consist of a tumbler with a food compartment at the upper level and lower part for drinks. Aside from the fact that there is no evidence of the exact date of the video, there is nothing that shows that the novel feature and practical utility embodied in Respondent­Registrant's utility model are in the food packaging used in Ms. Inocenc ia's business. Therefore, the video or the pictures of cups cannot serve as anticipatory bars to the Respondent-Registrant's utility model. The Supreme Court in Angelita Manzano v. Court of Appeals illustrates:

Thus the Director of Patents explained his reasons for the den ial 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 reall y manufactured before the filing of the aforesaid application which matured into Letters Patent No. UM­4609 , subject matter of the cancellation proceeding.

Therefore, new improvements in the present utility model which consist of a cup with an auxiliary container and a notch providing a space, with tapered configuration, for insertion of a straw merits registration. The prior arts submitted by the Petitioner does not overcome the newness or destroy the novelty of the subject utility model. In the case of Angelita Manzano v. Court of Appeals", the Supreme Court held:

The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. The function of a patent is to add to the sum of

6 Exhibit "3" 7 Annex "C'' 8 G.R. No. 113388,5 September 1997 9 Ibid .

8

useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. This is a matter which is properly within the competence of the Patent Office the official action of which has the presumption of correctness and may not be interfered with in the absence of new evidence carrying thorough conviction that the Office has erred. Since the Patent Office is an expert body preeminently qualified to determine questions of patentability, its findings must be accepted if they are consistent with the evidence, with doubts as to patentability resolved in favor of the Patent Office.

Similarly, in the case of Aguas v. de Leon", the Supreme Court held that:

The validily of the patent issued by the Philippines Patent Office in favor of the private respondent and the question over the inventiveness, novelty and usefulness of the improved process therein specified and described are matters which are better determined by the Philippines Patent Office. The technical staff of the Philippines Patent Office, composed of experts in their field, have, by the issuance of the patent in question, accepted the thinness of the private respondent's new tiles as a discovery. There is a presumption that the Philippines Patent Office has correctly determined the patentability of the improvement by the private respondent of the process in question.

WHEREFORE, premises considered, the Petition for Cancellation is, as it is hereby DISMISSED. Let the file wrapper of Utility Model Registration No. 2-2016-000616 together with a copy of the DECIS ION be returned to the Bureau of Patents (BOP) for appropriate action.

SO ORDERED.

TaguigCity, " . iGC1 1016

~~ ATTY. ADORACION U. ZARE, LLM.

Adjudication Officer Bureau of Legal Affairs

10 G.R. No. L- 32160, 30 January 1982 9