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Albana V Director of Patents

Albaña claimed to be the assignee of inventors Feliciano and Tapinio's invention called the Fel-Tap Meter Guard and Detector based on a contract. However, the Director of Patents denied Albaña's motion to intervene, finding that the contract did not assign exclusive rights to the invention, but rather only appointed Albaña as the selling agent if a patent was granted. The Supreme Court affirmed, finding that the Director lacked jurisdiction to compel Tapinio to sign the contract or determine its validity, as that would require a judicial function to determine the parties' meeting of minds.

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SJ De Guzman
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253 views1 page

Albana V Director of Patents

Albaña claimed to be the assignee of inventors Feliciano and Tapinio's invention called the Fel-Tap Meter Guard and Detector based on a contract. However, the Director of Patents denied Albaña's motion to intervene, finding that the contract did not assign exclusive rights to the invention, but rather only appointed Albaña as the selling agent if a patent was granted. The Supreme Court affirmed, finding that the Director lacked jurisdiction to compel Tapinio to sign the contract or determine its validity, as that would require a judicial function to determine the parties' meeting of minds.

Uploaded by

SJ De Guzman
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Download as DOCX, PDF, TXT or read online on Scribd
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Albaña v.

Director of Patents
G.R. No. L-4572; 22 May 1953; Padilla, J.
Digest prepared by Jeane Yaneza

I. Facts
1. Feliciano and Tapinio filed a patent application for their invention called Fel-Tap Meter Guard and Detector with the Patent
Office.
2. Pending examination of the application, Albaña filed a motion to intervene. He alleged:
 The applicant-inventors had "sold and/or bartered and assigned to him their right to contract or deal the sale of their
invention called Fel-Tap Meter Guard and Detector to or through the Corporation that they were then organizing under
his direction and to fix and decide on the purchase price of it to at least P200,000 in installments cash and P300,000 in
shares of stock of said Corporation
 Albaña also prayed that Tapinio be compelled to sign a contract and, together with Feliciano, who had already signed it,
to acknowledge it and another contract before a notary public, to have both contracts recorded in the Patent Office
and in the office of the Register of Deeds, and that the patent for the invention be issued in his name and in the name
of the inventors.
3. The motion was denied on the ground that under the provisions of the Patent Law (RA 165), the Director of Patents has no
jurisdiction or power to decide the question submitted to him.
4. Albaña filed an amended motion to intervene claiming that he is the assignee of inventors Feliciano and Tapinio of the
undivided part interests in the invention for whose letter-patent Feliciano and Tapinio are applying for.
5. The amended motion was denied on the ground that the assignment made to the Albaña is not one of exclusive right to make,
use, and sell the electrical contrivance for which patent is applied for. It was just an authority to act as the selling agent for the
inventors of the patent, if granted, and the invention covered thereby and to receive compensation therefor. Since he was not
entitled to have his name included as one of the patentees, if patent for the invention be granted, the movant has no right to
intervene in the proceedings for the grant of the patent.

II. Issue/Held
Whether or not the contract entered into by the parties was an assignment of the invention and the patent applied for – No
Whether or not the Director of Patents had the power to compel Tapinio to sign the contract- No

III. Ratio
Whether or not the contract entered into by the parties was an assignment of the invention and the patent applied for – No
1. In the case at bar, the alleged assignment is not of the invention but it is an agreement whereby he is to act as selling agent for
the inventors of the patent (if granted) and of the invention covered thereby and to receive compensation therefor.
2. This finding of the Director of Patents is supported by the following clauses found in the contract :

"We (the inventors) * * * hereby declare and ratify that both of us are the co-inventors and joint fifty-fifty owners of the 'Fel-Tap
Electric Meter Guard & Detector' * * *." "We are now organizing a Corporation under the direction of Mr. Albaña (Meliton D. Albaña) to
exploit and industrialize the invention * * * which we promise hereby to sell to said Corporation with its letter-patent * * * except
the Royalty Right of the same, * * *." "For and in consideration of the monetary and other helps (help) that said Mr. Meliton D. Albaña
* * * has rendered and is rendering us * * * of approaching, interesting and looking for subscribers and payers to the capital stocks
(stock) of said Corporation to be * * * we hereby promise and actually pay to said Mr. Albaña in instalments fifty thousand pesos
(P50,000) of said P200,000 instalments cash purchase price * * *."

Whether or not the Director of Patents had the power to compel Tapinio to sign the contract- No
1. Assignments of patents and inventions covered thereby may be recorded in books and records kept for the purpose in the
Patent Office if presented in due form.
 But Albaña does not ask for the registration of the alleged agreement between him and the inventors, because as it is
not in due form it cannot be recorded.
 Instead, he prays that the Director of Patents compel applicant-inventor, Tapinio, to sign the contract executed and
signed by the other applicant-inventor Feliciano, and both applicant-inventors to acknowledge it before a notary public,
and then to have both documents recorded in the Patent Office and in the office of the Registrar of Deeds.

2. Under the provisions of the Patent Law (RA 165), the Director of Patents has no power and authority to compel the applicant-
inventors to do what the appellant is asking them to perform. What Albaña asked the Director of Patents to do for him is
essentially a judicial function which would require the determination or finding by a court of competent jurisdiction as to
whether there was a meeting of the minds of the contracting parties before it could compel the applicant-inventors to perform
what the appellant prays the court to order them to do. Aside from want of authority and power, the Director of Patents lacks
the means to make such determination and finding which would be necessary before he could act on the Albaña's motion.

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