Ong Shiao Kong vs The Director of PatentsG.R. L-24112 July 23, 1974PatentStephanie Ruth Sy

FACTS: On November 20, 1961 private respondent Pessumal Tolaram filed a petition for cancellation of letters of patent (UM-135) granted to the petitioners Ong Shiao Kong and Cu Wu Kiam for their Flash Water Heater. Private respondent Pessumal claimed that petitioners’UM-135 patented utility model is substantially similar to his previously patented UM-66 “instant water heater.” At the hearing, the petitioners testified and disclosed that Cu Wu Kiam, contrary to what stated in their patent application, was merely a financier and not a co maker of the article for which they sought and were able to obtain letters of patent. The hearing officer ruled that the private respondent may utilized the said testimony against the petitioners.

Over the objection of the petitioners, the Director of Patents nevertheless rendered a decision cancelling the letters of patent of the petitioners on the ground that under the American case law, if several persons obtained a joint patent for what was invented solely by one of them, that patent is void. The Director of Patent subsequently amended the basis of the decision claiming that the utility model of the petitioner is significantly similar to that of the private respondents.

On appeal to SC, the court required the parties to show cause why the petition should not be dismissed for being moot and academic due to expiration of both letters of patent under sec 58 of RA 1651. The director of patents, on the other hand was required by SC to submit certification with regard to the status of the two subject letter of patents. The Director of patents reported that letters of private respondent (UM-66) issued on September 24, 1959 was expired on September 24, 1969 while the patent of petitioners (UM-135) which was issued July 6, 1964 expired on July 6, 1969. Both failed to apply for extensions of patents.

ISSUE: Whether or not the petition should be dismissed for being moot and academic since the parties failed to file extension of their respective letters of patent. HELD: Yes, the petition was dismissed.

It being clear from the foregoing certification of the Director of Patents that the respective lifetime periods of the allegedly conflicting letters patent of the petitioners and the respondent have already expired, and that neither the respondent nor the petitioners have applied for extension of their respective letters patent, the Court is of the view that a resolution of the issues raised by the instant petition would serve no useful purpose and this case should now be declared moot.

1 Sec. 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.

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. 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.