SECOND DIVISION appointment of the present by the applicant is therefore required before further action can be
undertaken.
G.R. No. 174379, August 31, 2016
E.I. DUPONT DE NEMOURS AND CO. (ASSIGNEE OF INVENTORS CARINI, DUNCIA AND
WONG), Petitioner, v. DIRECTOR EMMA C. FRANCISCO (IN HER CAPACITY AS DIRECTOR
GENERAL OF THE INTELLECTUAL PROPERTY OFFICE), DIRECTOR EPIFANIO M.
EVASCO (IN HIS CAPACITY AS THE DHUECTOR OF THE BUREAU OF PATENTS), AND
THERAPHARMA, INC., Respondents.
DECISION
LEONEN, J.:
A patent is granted to provide rights and protection to the inventor after an invention is disclosed
to the public. It also seeks to restrain and prevent unauthorized persons from unjustly profiting
from a protected invention. However, ideas not covered by a patent are free for the public to use
and exploit. Thus, there are procedural rules on the application and grant of patents established
to protect against any infringement. To balance the public interests involved, failure to comply with
strict procedural rules will result in the failure to obtain a patent.
This resolves a Petition for Review on Certiorari1 assailing the Court of Appeals Amended
Decision2 dated August 30, 2006, which denied the revival of Philippine Patent Application No.
35526, and the Court of Appeals Resolution3 dated January 31, 2006, which granted the
intervention of Therapharma, Inc. in the revival proceedings.
E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation organized
under the laws of the State of Delaware.4 It is the assignee of inventors David John Carini, John
Jonas Vytautas Duncia, and Pancras Chor Bun Wong, all citizens of the United States of
America.5chanrobleslaw
On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the
Bureau of Patents, Trademarks, and Technology Transfer.6 The application was for Angiotensin
II Receptor Blocking Imidazole (losartan), an invention related to the treatment of hypertension
and congestive heart failure.7 The product was produced and marketed by Merck, Sharpe, and
Dohme Corporation (Merck), E.I. Dupont Nemours' licensee, under the brand names Cozaar and
Hyzaar.8chanrobleslaw
The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili), a local resident agent
who handled a majority of E.I. Dupont Nemours' patent applications in the Philippines from 1972
to 1996.9chanrobleslaw
On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del Castillo, Bacorro, Odulio,
Calma, and Carbonell,10 sent the Intellectual Property Office11 a letter requesting that an office
action be issued on Philippine Patent Application No. 35526.12chanrobleslaw
In response, Patent Examiner Precila O. Bulihan of the Intellectual Property Office sent an office
action marked Paper No. 2 on January 30, 2002,13 which stated:ChanRoblesVirtualawlibrary
The appointed attorney on record was the late Atty. Nicanor D. Mapili. The reconstituted
documents provided no documents that will show that the authority to prosecute the instant
application is now transferred to the present counsel. No official revocation on record is available.
Therefore, an official revocation of the Power of Attorney of the former counsel and the
1. Contrary to what was alleged, the Chemical Examining Division's (CED)
record will show that as far as the said division is concerned, it did not fail to
issue the proper and timely action on the instant application. CED record
shows that the subject application was assigned to the examiner on June 7,
1988. A month after that was July 19, 1988, the first Office Action was mailed
but was declared abandoned as of September 20, 1988 for applicant's failure
to respond within the period as prescribed under Rule 112. Since then, no
other official transactions were recorded. This record is complemented by the
Examiner-in-charge's own record…
2. It was noted that it took thirteen (13) long years for the applicant to request
for such Office Action. This is not expected of the applicant since it is an
acceptable fact that almost all inventors/applicants wish for the early
disposition for their applications.14
On May 29, 2002, E.I. Dupont Nemours replied to the office action by submitting a Power of
Attorney executed by Miriam Meconnahey, authorizing Ortega, Castillo, Del Castillo, Bacorro,
Odulio, Calma, and Carbonell to prosecute and handle its patent applications. 15 On the same day,
it also filed a Petition for Revival with Cost of Philippine Patent Application No.
35526.16chanrobleslaw
In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty. Mapili, did not
inform it about the abandonment of the application, and it was not aware that Atty. Mapili had
already died.17 It argued that it discovered Atty. Mapili's death when its senior-level patent attorney
visited the Philippines in 1996.18 It argued that it only had actual notice of the abandonment on
January 30, 2002, the date of Paper No. 2.19 Thus, it argued that its Petition for Revival was
properly filed under Section 113 of the 1962 Revised Rules of Practice before the Philippines
Patent Office in Patent Cases (1962 Revised Rules of Practice). 20chanrobleslaw
On April 18, 2002, the Director of Patents denied the Petition for Revival for having been filed out
of time.21 The Resolution22 stated:ChanRoblesVirtualawlibrary
Propriety dictates that the well-settled rule on agency should be applied to this case to maintain
the objectivity and discipline of the Office. Therefore, for cases such as the instant case, let the
Office maintain its position that mistakes of the counsel bind the client,' regardless of the degree
of negligence committed by the former counsel. Although it appears that the former counsel, Arty.
Nicanor Mapili was remiss in his obligations as counsel for the applicants, the Office cannot revive
the abandoned application because of the limitations provided in Rule 115. Clearly, the Petition
for Revival was filed beyond the reglementary period. Since the law and rules do not give the
Director of Patents the discretion to stretch the period for revival, the Office is constrained to apply
Rule 115 to the instant case.
In view of the foregoing considerations, applicants' petition to revive the subject application is
hereby denied.
SO ORDERED.23chanroblesvirtuallawlibrary
E.I. Dupont Nemours appealed the denial to the Director-General of the Intellectual Property Office
on August 26, 2002.24 In the Decision25cralawred dated October 22, 2003, Director-General Emma
C. Francisco denied the appeal and affirmed the Resolution of the Director of Patents.
On November 21, 2003, petitioner filed before the Court of Appeals a Petition for Review seeking
to set aside the Intellectual Property Office's Decision dated October 22, 2003. 26chanrobleslaw
On August 31, 2004, the Court of Appeals granted the Petition for Review.27 In allowing the Petition
for Revival, the Court of Appeals stated:ChanRoblesVirtualawlibrary The arguments of the parties present several issues for this Court's resolution, as follows:
After an exhaustive examination of the records of this case, this Court believes that there is
sufficient justification to relax the application of the above-cited doctrine in this case, and to afford chanRoblesvirtualLawlibraryFirst, whether the Petition for Review on Certiorari complied with Rule
petitioner some relief from the gross negligence committed by its former lawyer, Atty. Nicanor D. 45, Section 4 of the Rules of Court when petitioner failed to attach certain documents to support
Mapili[.]28chanroblesvirtuallawlibrary the allegations in the complaint;
The Office of the Solicitor General, on behalf of the Intellectual Property Office, moved for
Second, whether petitioner should have filed a petition for certiorari under Rule 65 of the Rules of
reconsideration of this Decision on September 22, 2004. 29chanrobleslaw
Court;
In the interim, Therapharma, Inc. moved for leave to intervene and admit the Attached Motion for
Third, whether the Petition for Review on Certiorari raises questions of fact;
Reconsideration dated October 11, 200430 and argued that the Court of Appeals' August 31, 2004
Decision directly affects its "vested" rights to sell its own product. 31chanrobleslaw
Fourth, whether the Court of Appeals erred in allowing the intervention of respondent
Therapharma, Inc. in petitioner's appeal;
Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs
its own application for a losartan product "Lifezar," a medication for hypertension, which the
Fifth, whether the Court of Appeals erred in denying petitioner's appeal for the revival of its patent
Bureau granted.32 It argued that it made a search of existing patent applications for similar
application on the grounds that (a) petitioner committed inexcusable negligence in the prosecution
products before its application, and that no existing patent registration was found since E.I. Dupont
of its patent application; and (b) third-party rights and the public interest would be prejudiced by
Nemours' application for its losartan product was considered abandoned by the Bureau of Patents,
the appeal;
Trademarks, and Technology Transfer.33 It alleged that sometime in 2003 to 2004, there was an
exchange of correspondence between Therapharma, Inc. and Merck. In this exchange, Merck
Sixth, whether Schuartz applies to this case in that the negligence of a patent applicant's counsel
informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the
binds the applicant; and cralawlawlibrary
Philippines and that it would pursue any legal action necessary to protect its
product.34chanrobleslaw
Lastly, whether the invention has already become part of public domain.
35
On January 31, 2006, the Court of Appeals issued the Resolution granting the Motion for Leave
to Intervene. According to the Court of Appeals, Therapharma, Inc. had an interest in the revival I
of E.I. Dupont Nemours' patent application since it was the local competitor for the losartan
product.36 It stated that even if the Petition for Review was premised on the revival of the patent The question of whether the Court of Appeals may resolve a motion for intervention is a question
application, Therapharma, Inc.'s intervention was not premature since E.I. Dupont Nemours, that assails an interlocutory order and requests a review of a lower court's exercise of discretion.
through Merck, already threatened Therapharma, Inc. with legal action if it continued to market its Generally, a petition for certiorari under Rule 65 of the Rules of Court will lie to raise this issue in
losartan product.37chanrobleslaw a limited manner. There must be a clear showing of grave abuse of discretion for the writ of
certiorari to be issued.
E.I. Dupont Nemours moved for reconsideration on February 22, 2006, assailing the Court of
Appeals' January 31, 2006 Resolution.38chanrobleslaw However, when the Court of Appeals has already resolved the question of intervention and the
merits of the case, an appeal through a petition for review on certiorari under Rule 45 of the Rules
On August 30, 2006, the Court of Appeals resolved both Motions for Reconsideration and of Court is the proper remedy.
rendered the Amended Decision39 reversing its August 31, 2004 Decision.
Respondent Therapharma, Inc. argues that the Petition should be dismissed outright for being the
The Court of Appeals ruled that the public interest would be prejudiced by the revival of E.I. Dupont wrong mode of appeal.53 It argues that petitioner should have filed a petition for certiorari under
Nemours' application.40 It found that losartan was used to treat hypertension, "a chronic ailment Rule 65 since petitioner was assailing an act done by the Court of Appeals in the exercise of its
afflicting an estimated 12.6 million Filipinos,"41 and noted that the presence of competition lowered discretion.54 It argues that petitions under Rule 45 are limited to questions of law, and petitioner
the price for losartan products.42 It also found that the revival of the application prejudiced raised findings of fact that have already been affirmed by the Court of Appeals. 55chanrobleslaw
Therapharma, Inc.'s interest, in that it had already invested more than P20,000,000.00 to develop
its own losartan product and that it acted in good faith when it marketed its Petitioner, on the other hand, argues that Rule 65 is only available when there is no appeal or any
product.43chanrobleslaw plain, speedy remedy in the ordinary course of law. Since a petition for review under Rule 45 was
still available to it, it argues that it correctly availed itself of this remedy. 56 Petitioner also argues
The Court of Appeals likewise found that it erroneously based its August 31, 2004 Decision on E.I that there are exceptions to the general rule on the conclusiveness of the Court of Appeals' findings
Dupont Nemours' allegation that it took seven (7) to 13 years for the Intellectual Property Office to of fact.57 It argues that it was necessary for it to discuss relevant facts in order for it to show that
act on a patent application.44 It stated that while it might have taken that long to issue the patent, the Court of Appeals made a misapprehension of facts.58chanrobleslaw
it did not take that long for the Intellectual Property Office to act on application. 45 Citing Schuartz
v. Court of Appeals,46 it found that both E.I. Dupont Nemours and Arty. Mapili were inexcusably The special civil action of certiorari under Rule 65 is intended to correct errors of jurisdiction. 59
negligent in prosecuting the patent application.47chanrobleslaw Courts lose competence in relation to an order if it acts in grave abuse of discretion amounting to
lack or excess of jurisdiction.60 A petition for review under Rule 45, on the other hand, is a mode
On October 19, 2006, petitioner E.I. Dupont Nemours filed before this Court this Petition for of appeal intended to correct errors of judgment.61 Errors of judgment are errors committed by a
Review on Certiorari.48 Both respondents Intellectual Property Office and Therapharma, Inc. were court within its jurisdiction.62 This includes a review of the conclusions of law63 of the lower court
directed to comment on the comment on the Petition. 49 Upon submission of their respective and, in appropriate cases, evaluation of the admissibility, weight, and inference from the evidence
Comments,50 petitioner was directed to file its Consolidated Reply. 51 Thereafter, the parties were presented.
directed to file their respective memoranda. 52chanrobleslaw
Intervention results in an interlocutory order ancillary to a principal action. 64 Its grant or denial is
subject to the sound discretion of the court.65 Interlocutory orders, or orders that do not make a
final disposition of the merits of the main controversy or cause of action, 66 are generally not
reviewable.67 The only exception is a limited one, in that when there is no plain, speedy, and
adequate remedy, and where it can be shown that the court acted without, in excess, or with such
grave abuse of discretion that such action ousts it of jurisdiction.
Judicial economy, or the goal to have cases prosecuted with the least cost to the parties, 68 requires
that unnecessary or frivolous reviews of orders by the trial court, which facilitate the resolution of
the main merits of the case, be reviewed together with the main merits of the case. After all, it
would be more efficient for an appellate court to review a case in its entire context when the case
is finally disposed.
The question of whether intervention is proper is a question of law. Settled is the distinction
between a question of law and a question of fact. A question of fact arises when there is doubt as
to the truth or falsity of certain facts.69 A question of law, on the other hand, arises when "the
appeal raises doubt as to the applicable law on a certain set of facts."70 The test often used by this
Court to determine whether there is a question of fact or a question of law "is not the appellation
given to such question by the party raising the same; rather, it is whether the appellate court can
determine the issue raised without reviewing or evaluating the evidence, in which case, it is a
question of law; otherwise it is a question of fact." 71chanrobleslaw
Petitioner raises the question of whether Republic Act No. 165 allows the Court of Appeals to grant
a motion for intervention. This necessarily requires a determination of whether Rule 19 of the
Rules of Court72 applies in appeals of cases filed under Republic Act No. 165. The determination
of this question does not require a review of re-evaluation of the evidence. It requires a
determination of the applicable law.
II
If a petition fails to attach material portions of the record, it may still be given due course if it falls
under certain exceptions. Although Rule 45, Section 4 of the Rules of Court requires that the
petition "be accompanied by . . . such material portions of the record as would support the petition,"
the failure to do so will not necessarily warrant the outright dismissal of the
complaint.73chanrobleslaw
Respondent Therapharma, Inc. argues that the Petition should have been outright dismissed since
it failed to attach certain documents to support its factual allegations and legal arguments,
particularly: the annexes of the Petition for Review it had filed before the Court of Appeals and the
annexes in the Motion for Leave to Intervene it had filed. 74 It argues that petitioner's failure to
attach the documents violates Rule 45, Section 4, which requires the submission of material
portions of the record.75chanrobleslaw
On the other hand, petitioner argues that it was able to attach the Court of Appeals Decision dated
August 31, 2004, the Resolution dated January 31, 2006, and the Amended Decision dated August
30, 2006, all of which were sufficient for this Court to give due course to its Petition. 76chanrobleslaw
First, not all pleadings and parts of case records are required to be attached to the petition. Only
those which are relevant and pertinent must accompany it. The test of relevancy is whether the
document in question will support the material allegations in the petition, whether said document
will make out a prima facie case of grave abuse of discretion as to convince the court to give due
course to the petition.
Second, even if a document is relevant and pertinent to the petition, it need not be appended if it
is shown that the contents thereof can also [sic] found in another document already attached to
the petition. Thus, if the material allegations in a position paper are summarized in a questioned
judgment, it will suffice that only a certified true copy of the judgment is attached.
Third, a petition lacking an essential pleading or part of the case record may still be given due
course or reinstated (if earlier dismissed) upon showing that petitioner later submitted the
documents required, or that it will serve the higher interest of justice that the case be decided on
the merits.79chanroblesvirtuallawlibrary
Although Magsino referred to a petition for review under Rule 42 before the Court of Appeals, the
procedural guideposts cited in Magsino may apply to this case since the contents of a pleading
under Rule 4280 are substantially the same as the contents of a pleading under Rule 45, 81 in that
both procedural rules require the submission of "material portions of the record as would support
the allegations of the petition."82chanrobleslaw
In support of its Petition for Review on Certiorari, petitioner attached the Court of Appeals Decision
dated August 31, 2004,83 the Resolution dated January 31, 2006,84 and the Amended Decision
dated August 30, 2006.85 The Court of Appeals Resolution and Amended Decision quoted
extensive portions of its rollo in support of its rulings.86 These conclusions were sufficient to
convince this Court not to outright dismiss the Petition but to require respondents to first comment
on the Petition, in satisfaction of the first and second procedural guideposts in Magsino.
Upon filing of its Consolidated Reply,87 petitioner was able to attach the following additional
documents:
(1) Petition for Review filed before the Court of Appeals;88
(2) Letters dated July 18, 1995, December 12, 1995, and December 29, 1995; 89
(3) Declaration of Ms. Miriam Meconnahey dated June 25, 2002;90
(4) Spreadsheet of petitioner's patent applications handled by Atty. Mapili; 91
(5) Power of Attorney and Appointment of Resident Agent dated September 26, 1996; 92
(6) Letter dated December 19, 2000 requesting an Office Action on Patent Application No.
35526;93
(7) Paper No. 2 dated January 30, 2002;94
(8) Petition for Revival dated January 30, 2002 with attached Power of Attorney and
Appointment of Resident Agent;95
(9) Resolution dated July 24, 2002 by Director of the Bureau of Patents;96 and
(10) Notice of and Memorandum on Appeal before the Director-General of the Intellectual
Property Office.97

In Magsino v. De Ocampo,77 this Court applied the procedural guideposts in Galvez v. Court of The third procedural guidepost in Magsino was complied with upon the submission of these
Appeals78 in determining whether the Court of Appeals correctly dismissed a petition for review documents. Petitioner, therefore, has substantially complied with Rule 45, Section 4 of the Rules
under Rule 42 for failure to attach relevant portions of the record. of Court.
Thus:ChanRoblesVirtualawlibrary
In Galvez v. Court of Appeals, a case that involved the dismissal of a petition for certiorari to assail
an unfavorable ruling brought about by the failure to attach copies of all pleadings submitted and III
other material portions of the record in the trial court (like the complaint, answer and position
paper) as would support the allegations of the petition, the Court recognized three guideposts for Appeal is not a right but a mere privilege granted by statute. 98 It may only be exercised in
the CA to consider in determining whether or not the rules of procedures should be relaxed, as accordance with the law that grants it.
follows:ChanRoblesVirtualawlibrary
Accordingly, the Court of Appeals is not bound by the rules of procedure in administrative
agencies. The procedural rules of an administrative agency only govern proceedings within the of Court; and those in respect of the decisions of the Director of Documentation, Information and
agency. Once the Court of Appeals has given due course to an appeal from a ruling of an Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry[.]
administrative agency, the proceedings before it are governed by the Rules of Court. (Emphasis supplied)
Thus, it is the Rules of Court, not the 1962 Revised Rules of Practice, which governs the Court of
However, petitioner argues that intervention should not have been allowed on appeal 99 since the
Appeals' proceedings in appeals from the decisions of the Director-General of the Intellectual
revival of a patent application is ex parte and is "strictly a contest between the examiner and the
Property Office regarding the revival of patent applications.
applicant"100 under Sections 78101 and 79102 of the 1962 Revised Rules of Practice.103 It argues
that the disallowance of any intervention is to ensure the confidentiality of the proceedings under
Rule 19 of the Rules of Court provides that a court has the discretion to determine whether to give
Sections 13 and 14 of the 1962 Revised Rules of Practice. 104chanrobleslaw
due course to an intervention. Rule 19, Section 1 states:ChanRoblesVirtualawlibrary
RULE 19
Respondents argue that the 1962 Revised Rules of Practice is only applicable before the
INTERVENTION
Intellectual Property Office.105 In particular, respondent Therapharma, Inc. argues that the issue
before the Court of Appeals was beyond the realm of patent examination proceedings since it did
not involve the patentability of petitioner's invention.106 It further argues that its intervention did not SECTION 1. Who may intervene. � A person who has a legal interest in the matter in litigation,
violate the confidentiality of the patent application proceedings since petitioner was not required or in the success of either of the parties, or an interest against both, or is so situated as to be
to divulge confidential information regarding its patent application. 107chanrobleslaw adversely affected by a distribution or other disposition of property in the custody of the court or
of an officer thereof may, with leave of court, be allowed to intervene in the action. The court shall
In the 1962 Revised Rules of Practice, final decisions of the Director of Patents are appealed to consider whether or not the intervention will unduly delay or prejudice the adjudication of the rights
this Court and governed by Republic Act No. 165. In particular:ChanRoblesVirtualawlibrary of the original parties, and whether or not the intervenor's rights may be fully protected in a
PART X separate proceeding.
PETITION AND APPEALS The only questions the court need to consider in a motion to intervene are whether the intervenor
has standing to intervene, whether the motion will unduly delay the proceedings or prejudice rights
CHAPTER IV already established, and whether the intervenor's rights may be protected in a separate
APPEALS TO THE SUPREME COURT FROM FINAL ORDERS OR DECISIONS OF THE action.108chanrobleslaw
DIRECTOR OF PATENTS IN EX PARTE AND INTER PARTES PROCEEDINGS
If an administrative agency's procedural rules expressly prohibit an intervention by third parties,
265. Appeals to the Supreme Court in ex parte and inter partes proceedings.�Any person who is the prohibition is limited only to the proceedings before the administrative agency. Once the matter
dissatisfied with the final decision of the Director of Patents, (affirming that of a Principal Examiner) is brought before the Court of Appeals in a petition for review, any prior prohibition on intervention
denying him a patent for an invention, industrial design or utility model; any person who is does not apply since the only question to be determined is whether the intervenor has established
dissatisfied with any final decision of the Director of Patents (affirming that of the Executive a right to intervene under the Rules of Court.
Examiner) in any proceeding; and any party who is dissatisfied with any final decision of the
Director of Patents in an inter partes proceeding, may appeal such final decision to the Supreme In this case, respondent Therapharma, Inc. filed its Motion for Leave to Intervene 109 before the
Court within thirty days from the date he receives a copy of such decision. (Republic Act No. 165, Court of Appeals, not before the Intellectual Property Office. In assessing whether to grant the
section 16, as amended by section 3, Republic Act No. 864.) intervention, the Court of Appeals considered respondent Therapharma, Inc.'s legal interest in the
case and its other options for the protection of its interests.110 This was within the discretion of the
266. Procedure on appeal to the Supreme Court.�For the procedure on appeal to the Supreme Court of Appeals under the Rules of Court.
Court, from the final decisions of the Director of Patents, see sections 63 to 73, inclusive, of
Republic Act No. 165 (patent law). Respondent Therapharma, Inc. was able to show that it had legal interest to intervene in the
appeal of petitioner's revival of its patent application. While its intervention may have been
Particularly instructive is Section 73 of Republic Act No. 165, which
premature as no patent has been granted yet, petitioner's own actions gave rise to respondent
provides:ChanRoblesVirtualawlibrary
Therapharma, Inc.'s right to protect its losartan product.
Section 73. Rules of Court applicable. � In all other matters not herein provided, the applicable
provisions of the Rules of Court shall govern.
Respondent Therapharma, Inc. filed an application for product registration before the Bureau of
Republic Act No. 165 has since been amended by Republic Act No. 8293, otherwise known as Food and Drugs on June 4, 2003 and was granted a Certificate of Product Registration on January
the Intellectual Property Code of the Philippines (Intellectual Property Code), in 1997. This is the 27, 2004.111 It conducted patent searches from October 15, 1995 and found that no patent
applicable law with regard to the revival of petitioner's patent application. Section 7(7.1)(a) of the application for losartan had been filed either before the Bureau of Patents, Trademarks, and
Intellectual Property Code states:ChanRoblesVirtualawlibrary Technology Transfer or before the Intellectual Property Office. 112chanrobleslaw
SECTION 7. The Director General and Deputies Director General. �
As early as December 11, 2003, petitioner through Merck was already sending communications
7.1. Functions. � The Director General shall exercise the following powers and functions: threatening legal action if respondent Therapharma, Inc. continued to develop and market losartan
in the Philippines. The letter stated:ChanRoblesVirtualawlibrary
chanRoblesvirtualLawlibrary. . . . Merck is strongly committed to the protection of its valuable intellectual property rights, including
the subject losartan patents. While fair competition by sale of pharmaceutical products which are
b. Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal domestically produced legally is always welcomed by Merck and MSD Philippines, Merck will
Affairs, the Director of Patents, the Director of Trademarks, and the Director of the Documentation, vigorously pursue all available legal remedies against any unauthorized manufacturer, distributor
Information and Technology Transfer Bureau. The decisions of the Director General in the or supplier of losartan in countries where its patents are in force and where such activity is
exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, and the prohibited by law. Thus, Merck is committed to preventing the distribution of losartan in the
Director of Trademarks shall be appealable to the Court of Appeals in accordance with the Rules
Philippines if it originates from, or travels through, a country in which Merck holds patent rights.113
(Emphasis supplied)
This letter was presented before the Court of Appeals, which eventually granted the revival of the
patent application in its August 31, 2004 Decision. Petitioner had no pending patent application
for its losartan product when it threatened respondent Therapharma, Inc. with legal
action.114chanrobleslaw
Respondent Therapharma, Inc. expressed its willingness to enter into a Non-Use and
Confidentiality Contract if there was a pending patent application. 115 After several negotiations on
the clauses of the contract,116 the parties were unable to come to an agreement. In its letter dated
May 24, 2004,117 respondent Therapharma, Inc. expressed its frustration on petitioner's refusal to
give a clear answer on whether it had a pending patent application:ChanRoblesVirtualawlibrary
For easy reference, we have reproduced below paragraph 5 of the Confidentiality and Non-Use
Agreement ("Confidentiality Agreement"), underscoring your proposed
amendment:ChanRoblesVirtualawlibrary
"THERAPHARMA agrees that upon receipt of Specifications and Claims of Application No. 35526
or at any time thereafter, before it becomes part of the public domain, through no fault of
THERAPHARMA, it will not, either directly or indirectly, alone, or through, on behalf of, or in
conjunction with any other person or entity, make use of any information contained therein,
particularly the product covered by its claims and the equivalents thereof, in any manner
whatsoever."
We find your proposed insertion odd. What may be confidential, and which we agree you have
every right to protect by way of the Confidentiality Agreement, are the Specifications and Claims
in the patent application, not the product per se. The product has been in the market for years.
Hence, how can it be confidential? Or is the ambiguity intended to create a legal handle because
you have no cause of action against us should we launch our own version of the losartan product?
. . . .
Finally, the questions we posed in our previous letters are plain and simple � Is the Philippine
Patent Application No. 35526 still pending before the IPO, i.e., it has neither been withdrawn
by your licensor nor denied registration by the IPO for any reason whatsoever? When did
your licensor file said application with the IPO? These questions are easy to answer, unless
there is an intention to mislead. You are also aware that the IPO is the only government agency
that can grant letters patent. This is why we find disturbing your statement that the pendency of
the patent application before the IPO is "not relevant". Hence, unless we receive unequivocal
answers to the questions above, we regret that we cannot agree to execute the Confidentiality
Agreement; otherwise, we may be acknowledging by contract a right that you do not have, and
never will have, by law.118 (Emphasis and underscoring in the original)
The threat of legal action against respondent Therapharma, Inc. was real and imminent. If
respondent Therapharma, Inc. waited until petitioner was granted a patent application so it could
file a petition for compulsory licensing and petition for cancellation of patent under Section 240 119
and Section 247120 of the 1962 Revised Rules of Practice,121 its continued marketing of Lifezar
would be considered as an infringement of petitioner's patent.
Even assuming that the Intellectual Property Office granted the revival of Philippine Patent
Application No. 35526 back in 2000, petitioner's claim of absolute confidentiality in patent
proceedings is inaccurate.
In the 1962 Revised Rules of Practice, the Bureau of Patents, Trademarks, and Technology
Transfer previously required secrecy in pending patent applications. Section 13
states:ChanRoblesVirtualawlibrary
13. Pending applications are preserved in secrecy. � No information will be given to anyone
respecting the filing by any particular person of any application for a patent, the pendency of any
particular case before the Office, or the subject matter of any particular application, unless the
same is authorized by the applicant in writing, and unless it shall be necessary, in the opinion of
the Director of Patents for the proper conduct of business before the Office.
The Intellectual Property Code, however, changed numerous aspects of the old patent law. The
Intellectual Property Code was enacted not only to amend certain provisions of existing laws on
trademark, patent, and copyright, but also to honor the country's commitments under the World
Trade Organization - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement), a treaty that entered force in the Philippines on January 1, 1995. 122chanrobleslaw
The mandatory disclosure requirement in the TRIPS Agreement123 precipitated the shift from a
first-to-invent system to a first-to-file system. The first-to-file system required citizens of foreign
countries to register their patents in the Philippines before they can sue for
infringement.124chanrobleslaw
Lawmakers, however, expressed their concern over the extension of the period of protection for
registered patents.125 Under Section 21126 of Republic Act No. 165, a patent had a term of 17
years. The Intellectual Property Code extended the period to 20 years. 127chanrobleslaw
During the interpellations before the House of Representatives, then Representative Neptali
Gonzales II (Gonzales) explained that under the Intellectual Property Code, the period of
protection would have been shortened because of the publication
requirement:ChanRoblesVirtualawlibrary
MR. TA�ADA. Under the proposed measure, Your Honor, what is the period of protection that is
given to the holder of the patent registered?
MR. GONZALES. Seventeen years from grant of patent, Mr. Speaker. Unlike before . . .
MR. TA�ADA. Under the present law, Mr. Speaker.
MR. GONZALES. I mean 17 years from filing, Mr. Speaker, unlike before which is 20 years from
grant. Okay.
I am sorry, Mr. Speaker. Seventeen years from filing under the existing law, 20 years from grant
under the proposed measure. It would appear, Mr. Speaker, that the proposed measure seeks to
extend the grant of the patent.
MR. TA�ADA. But you have made the period of protection longer, Mr. Speaker.
MR. GONZALES. On the contrary, Mr. Speaker, when a similar question was previously
propounded before, actually Mr. Speaker, it may decrease in fact the period of protection, Mr.
Speaker. Because unlike before 17 years from grant, Mr. Speaker, now 20 years from application
or from filing but actually, Mr. Speaker, it normally takes three to four years before a patent is
actually granted even under the proposed measure. Because as you can see[,] publication in the
BPTTT Gazette would even taken place after 18 months from filing. In other words, the procedure
itself is such a manner that normally takes a period of about three years to finally grant the patent.
So even if 20 years is given from the time of filing actually in essence it will be the same, Mr.
Speaker, because under the existing law 17 years from grant. But even under our existing law
from the time that a patent application is filed it also takes about three to four years, Mr. Speaker,
to grant the same.
Now, why from filing, Mr. Speaker? Because the patent holder applicant is now required to publish
in a manner easily understood by a person trained or with the same skill as that of a patent holder.
And from that time this is published, this process covered by the patent is already made available.
In fact, from the time that it is published, any interested person may even examine and go over
the records as filed with the BPTTT and, therefore, this new technology or new invention is now
made available to persons equipped or possessed with the same skills as that of the patent holder.
And that is the reason why the patent is � the time of the patent is now tacked from the time it is
filed because as a compromise it is now mandatory to publish the said patent together with its
description - the description of the process and even would, at times demand the deposit of sample Intellectual Property Code is not absolute since a party may already intervene after the publication
of the industrial design, Mr. Speaker.128chanroblesvirtuallawlibrary of the application.
Gonzales further clarified that the publication requirements of the Intellectual Property Code would
necessarily shorten the period for confidentiality of patent applications: IV
MR. MONFORT. Now, another question is, (another is) you know, the time from the
filing of the date up to publication which is the period of pendency or confidentiality, may An abandoned patent application may only be revived within four (4) months from the date of
I know how many years will it take, that confidentiality period, variability. abandonment. No extension of this period is provided by the 1962 Revised Rules of Practice.
Section 113 states:ChanRoblesVirtualawlibrary
MR. GONZALES. Eighteen months, Mr. Speaker. 113. Revival of abandoned application. � An application abandoned for failure to prosecute may
be revived as a pending application if it is shown to the satisfaction of the Director that the delay
MR. MONFORT. How many? was unavoidable. An abandoned application may be revived as a pending application within four
months from the date of abandonment upon good cause shown and upon the payment of the
MR. GONZALES. Eighteen months. required fee of P25. An application not revived within the specified period shall be deemed
forfeited.
MR. MONFORT. I do not think it is 18 months. Petitioner argues that it was not negligent in the prosecution of its patent application133 since it
was Atty. Mapili or his heirs who failed to inform it of crucial developments with regard to its patent
MR. GONZALES. It is provided for in the law, Mr. Speaker, because prior to the application.134 It argues that as a client in a foreign country, it does not have immediate supervision
publication, naturally, the records become confidential because the essence of a patent, over its local counsel so it should not be bound by its counsel's negligence. 135 In any case, it
trademark, or copyright is to give the author or the inventor exclusive right to work on complied with all the requirements for the revival of an abandoned application under Rule 113 of
his own invention. And that is his invention, and naturally, it is but right that he should the 1962 Revised Rules of Practice.136chanrobleslaw
have the exclusive right over his invention.
Respondents, on the other hand, argue that petitioner was inexcusably and grossly negligent in
On the other hand, the law requires that after 18 months, it should now be published. the prosecution of its patent application since it allowed eight (8) years to pass before asking for
When it is now published, naturally, it ceases to be confidential in character because it a status update on its application.137 Respondent Intellectual Property Office argues that
is now ready for examination. It is now ready for possible copying of any interested petitioner's inaction for eight (8) years constitutes actual abandonment. 138 It also points out that
person because the application, as we have repeatedly said on the floor, would require from the time petitioner submitted its new Special Power of Attorney on September 29, 1996, it
the filing of a description of the invention that can be carried out by a person similarly took them another four (4) years to request a status update on its application.139chanrobleslaw
trained in the arts and sciences as that of the patent
holder.129chanroblesvirtuallawlibrary Under Chapter VII, Section 111(a) of the 1962 Revised Rules of Practice, a patent application is
Thus, the absolute secrecy required by the 1962 Revised Rules of Practice would not be deemed abandoned if the applicant fails to prosecute the application within four months from the
applicable to a patent application before the Intellectual Property Office. Section 13 of the 1962 date of the mailing of the notice of the last action by the Bureau of Patents, Trademarks, and
Revised Rules of Practice does not appear in the Intellectual Property Code, 130 in the Rules and Technology Transfer, and not from applicant's actual notice. Section 111 (a)
Regulations on Inventions,131 or in the Revised Implementing Rules and Regulations for Patents, states:ChanRoblesVirtualawlibrary
Utility Models and Industrial Design.132 The Intellectual Property Code now states that all patent Chapter VII
applications must be published in the Intellectual Property Office Gazette and that any interested TIME FOR RESPONSE BY APPLICANT; ABANDONMENT OF APPLICATION
party may inspect all documents submitted to the Intellectual Property Office. The patent
application is only confidential before its publication. Sections 44 and 45 of the Intellectual Property 111. Abandonment for failure to respond within the time limit. � (a) If an applicant fails to
Code provide:ChanRoblesVirtualawlibrary prosecute his application within four months after the date when the last official notice of action by
SECTION 44. Publication of Patent Application. � the Office was mailed to him, or within such time as may be fixed (rule 112), the application will
become abandoned.
44.1. The patent application shall be published in the IPO Gazette together with a search According to the records of the Bureau of Patents, Trademarks, and Technology Transfer
document established by or on behalf of the Office citing any documents that reflect prior art, after Chemical Examining Division, petitioner filed Philippine Patent Application No. 35526 on July 10,
the expiration of eighteen (18) months from the filing date or priority date. 1987. It was assigned to an examiner on June 7, 1988. An Office Action was mailed to petitioner's
agent, Atty. Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable
44.2. After publication of a patent application, any interested party may inspect the application period, the application was deemed abandoned on September 20, 1988. 140 Under Section 113,
documents filed with the Office. petitioner had until January 20, 1989 to file for a revival of the patent application. Its Petition for
Revival, however, was filed on May 30, 2002,14113 years after the date of abandonment.
44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may
prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial Section 113 has since been superseded by Section 133.4 of the Intellectual Property Code, Rule
to the national security and interests of the Republic of the Philippines. (n) 930 of the Rules and Regulations on Inventions, and Rule 929 of the Revised Implementing Rules
and Regulations for Patents, Utility Models and Industrial Design. The period of four (4) months
SECTION 45. Confidentiality Before Publication. � A patent application, which has not yet been from the date of abandonment, however, remains unchanged. The Intellectual Property Code even
published, and all related documents, shall not be made available for inspection without the provides for a shorter period of three (3) months within which to file for
consent of the applicant. revival:ChanRoblesVirtualawlibrary
It was inaccurate, therefore, for petitioner to argue that secrecy in patent applications prevents SECTION 133. Examination and Publication. �
any intervention from interested parties. The confidentiality in patent applications under the
. . . .
 petitioner requested a status update from Atty. Mapili only on July 18, 1995, eight (8) years after
133.4. An abandoned application may be revived as a pending application within three (3) months the filing of its application.144It alleged that it only found out about Atty. Mapili's death sometime in
from the date of abandonment, upon good cause shown and the payment of the required fee. March 1996, as a result of its senior patent attorney's visit to the Philippines. 145 Although it was in
petitioner's discretion as a foreign client to put its complete trust and confidence on its local
Rule 930 of the Rules and Regulations on Inventions provides:ChanRoblesVirtualawlibrary
resident agent, there was a correlative duty on its part to be diligent in keeping itself updated on
Rule 930. Revival of application. - An application deemed withdrawn for failure to prosecute may
the progress of its patent applications. Its failure to be informed of the abandonment of its patent
be revived as a pending application within a period of four (4) months from the mailing date of the
application was caused by its own lack of prudence.
notice of withdrawal if it is shown to the satisfaction of the Director that the failure was due to fraud,
accident, mistake or excusable negligence.
In Bernardo v. Court of Appeals,146 "[n]o prudent party will leave the fate of his case entirely to his
lawyer . . . . It is the duty of a party-litigant to be in contact with his counsel from time to time in
A petition to revive an application deemed withdrawn must be accompanied by (1) a showing of
order to be informed of the progress of his case."147chanrobleslaw
the cause of the failure to prosecute, (2) a complete proposed response, and (3) the required fee.
Even if Atty. Mapili's death prevented petitioner from submitting a petition for revival on time, it
An application not revived in accordance with this rule shall be deemed forfeited.
was clearly negligent when it subsequently failed to immediately apprise itself of the status of its
Rule 929 of the Revised Implementing Rules and Regulations for Patents, Utility Models and patent application.
Industrial Design provides:ChanRoblesVirtualawlibrary
Rule 929. Revival of Application. - An application deemed withdrawn for failure to prosecute may Upon learning of Atty. Mapili's death, petitioner issued a Power of Attorney and Appointment of
be revived as a pending application within a period of four (4) months from the mailing date of the Resident Agent in favor of Bito, Lozada, Ortega & Castillo on March 25, 1996. 148 Despite the
notice of withdrawal if it is shown to the satisfaction of the Director that the failure was due to fraud, immediate action in the substitution of its resident agent, it only requested a status update of
accident, mistake, or excusable negligence. Philippine Patent Application No. 35526 from the Intellectual Property Office on December 14,
2000,149 or four (4) years after it learned of Atty. Mapili's death.
A petition to revive an application deemed withdrawn shall be accompanied by:
Petitioner attempts to explain that it took them four (4) years to request a status update because
chanRoblesvirtualLawlibrary(a) A showing of a justifiable reason for the failure to prosecute; the Bureau of Patents, Trademarks, and Technology Transfer failed to take any action when it
(b) A complete proposed response; and submitted its Power of Attorney and Appointment of Resident Agent in favor of Bito, Lozada,
(c) Full payment of the required fee. Ortega & Castillo.150 The Power of Attorney, however, shows that it was only to inform the Bureau
that all notices relating to its pending patent applications should be sent to it. Philippine Patent
No revival shall be granted to an application that has been previously revived with cost. Application No. 35526 was declared abandoned on September 20, 1988. As far as the Bureau
was concerned, it was a forfeited application that had already been archived. It was not the
An application not revived in accordance with this Rule shall be deemed forfeited. Bureau's duty to resurrect previous notices of forfeited and abandoned applications to be sent to
new resident agents unless a specific status update was requested. Considering that petitioner
Even if the delay was unavoidable, or the failure to prosecute was due to fraud, accident, mistake, only requested a status update on December 14, 2000, it was only then that the Intellectual
or excusable negligence, or the Petition was accompanied by a complete proposed response, or Property Office would start sending notices to it.
all fees were paid, the Petition would still be denied since these regulations only provide a four
(4)-month period within which to file for the revival of the application. The rules do not provide any Contrary to the posturing of petitioner, Schuartz is applicable.
exception that could extend this four (4)-month period to 13 years.
In Schuartz, several foreign inventors seeking to file patent applications in the Philippines hired
Petitioner's patent application, therefore, should not be revived since it was filed beyond the the law firm Siguion Reyna, Montecillo and Ongsiako to process their applications. 151 The Bureau
allowable period. of Patents, Trademarks, and Technology Transfer mailed the law firm several notices of
abandonment on its patent applications from June 1987 to September 1987. The law firm only
V found out about this in December 1987, after it dismissed two (2) of its employees in charge of
handling correspondences from the Bureau.152 The law firm filed petitions for revival of its patent
Even assuming that the four (4)-month period could be extended, petitioner was inexcusably applications from March 1988, all of which were denied by the Director of the Bureau of Patents
negligent in the prosecution of its patent application. for being filed out of time.153 An appeal was subsequently filed before the Court of Appeals but
was dismissed for being filed beyond the reglementary period.154chanrobleslaw
Negligence is inexcusable if its commission could have been avoided through ordinary diligence
and prudence.142 It is also settled that negligence of counsel binds the client as this "ensures This Court found that although the Court of Appeals may have erred in counting the period for
against the resulting uncertainty and tentativeness of proceedings if clients were allowed to merely appeal, it could not grant the Petition. This Court stated:ChanRoblesVirtualawlibrary
disown their counsels' conduct."143chanrobleslaw [Petitioners lost sight of the fact that the petition could not be granted because of laches. Prior to
the filing of the petition for revival of the patent application with the Bureau of Patents, an
Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond to the unreasonable period of time had lapsed due to the negligence of petitioners' counsel. By such
Office Action sent by the Bureau of Patents, Trademarks, and Technology Transfer on June 19, inaction, petitioners were deemed to have forfeited their right to revive their applications for patent.
1988. Because of his negligence, petitioner's patent application was declared abandoned. He was
again negligent when he failed to revive the abandoned application within four (4) months from Facts show that the patent attorneys appointed to follow up the applications for patent registration
the date of abandonment. had been negligent in complying with the rules of practice prescribed by the Bureau of Patents.
The firm had been notified about the abandonment as early as June 1987, but it was only after
Petitioner tries to disown Atty. Mapili's conduct by arguing that it was not informed of the December 7, 1987, when their employees Bangkas and Rosas had been dismissed, that they
abandonment of its patent application or of Atty. Mapili's death. By its own evidence, however, came to know about it. This clearly showed that petitioners' counsel had been remiss in the
handling of their clients' applications.
"A lawyer's fidelity to the cause of his client requires him to be ever mindful of the responsibilities
that should be expected of him. A lawyer shall not neglect a legal matter entrusted to him." In the
instant case, petitioners' patent attorneys not only failed to take notice of the notices of
abandonment, but they failed to revive the application within the four-month period, as provided in
the rules of practice in patent cases. These applications are deemed forfeited upon the lapse of
such period.155 (Emphasis supplied)
Petitioner attempts to distinguish itself from Schuartz by arguing that the petitioners in Schuartz
had actual notice of abandonment while petitioner here was only able to have actual notice when
it received Paper No. 2.
156
The four (4)-month period in Section 111 of the 1962 Revised Rules of Practice, however, is not
counted from actual notice of abandonment but from mailing of the notice. Since it appears from
the Intellectual Property Office's records that a notice of abandonment was mailed to petitioner's
resident agent on July 19, 1988,157 the time for taking action is counted from this period.
Petitioner's patent application cannot be revived simply because the period for revival has already
lapsed and no extension of this period is provided for by the 1962 Revised Rules of Practice.
VI
The right of priority given to a patent applicant is only relevant when there are two or more
conflicting patent applications on the same invention. Because a right of priority does not
automatically grant letters patent to an applicant, possession of a right of priority does not confer
any property rights on the applicant in the absence of an actual patent.
Petitioner argues that its patent application was filed on July 10, 1987, within 12 months from the
prior filing of a U.S. patent application on July 11, 1986.158 It argues that it is protected from
becoming part of the public domain because of convention priority under the Paris Convention for
the Protection of Industrial Property and Section 9 of Republic Act No. 165. 159chanrobleslaw
Respondent Therapharma, Inc., on the other hand, argues that a mere patent application does
not vest any right in the applicant before the issuance of the patent.160 It argues that the "priority
date" argued by petitioner is only relevant in determining who has a better right to the patent
among the other applicants who subsequently apply for the same invention. 161chanrobleslaw
Under Section 31 of the Intellectual Property Code, a right of priority is given to any patent
applicant who has previously applied for a patent in a country that grants the same privilege to
Filipinos. Section 31 states:ChanRoblesVirtualawlibrary
SECTION 31. Right of Priority. � An application for patent filed by any person who has previously
applied for the same invention in another country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign
application: Provided, That:
chanRoblesvirtualLawlibrarya. the local application expressly claims priority;
b. it is filed within twelve (12) months from the date the earliest foreign application was filed; and
cralawlawlibrary
c. a certified copy of the foreign application together with an English translation is filed within six
(6) months from the date of filing in the Philippines.
A patent applicant with the right of priority is given preference in the grant of a patent when there
are two or more applicants for the same invention. Section 29 of the Intellectual Property Code
provides:ChanRoblesVirtualawlibrary
SECTION 29. First to File Rule. � If two (2) or more persons have made the invention separately
and independently of each other, the right to the patent shall belong to the person who filed an
application for such invention, or where two or more applications are filed for the same invention,
to the applicant who has the earliest filing date or, the earliest priority date.
Since both the United States162 and the Philippines163 are signatories to the Paris Convention for
the Protection of Industrial Property, an applicant who has filed a patent application in the United
States may have a right of priority over the same invention in a patent application in the
Philippines.164 However, this right of priority does not immediately entitle a patent applicant the
grant of a patent. A right of priority is not equivalent to a patent. Otherwise, a patent holder of any
member-state of the Paris Convention need not apply for patents in other countries where it wishes
to exercise its patent.
It was, therefore, inaccurate for petitioner to argue that its prior patent application in the United
States removed the invention from the public domain in the Philippines. This argument is only
relevant if respondent Therapharma, Inc. had a conflicting patent application with the Intellectual
Property Office. A right of priority has no bearing in a case for revival of an abandoned patent
application.
VII
The grant of a patent is to provide protection to any inventor from any patent infringement.165 Once
an invention is disclosed to the public, only the patent holder has the exclusive right to
manufacture, utilize, and market the invention.166 In Creser Precision Systems v. Court of
Appeals:167
Under American jurisprudence, an inventor has no common-law right to a monopoly of his
invention. He has the right to make, use and vend his own invention, but if he voluntarily discloses
it, such as by offering it for sale, the world is free to copy and use it with impunity. A patent,
however, gives the inventor the right to exclude all others. As a patentee, he has the exclusive
right of making, using or selling the invention.168chanroblesvirtuallawlibrary
Under the Intellectual Property Code, a patent holder has the right to "to restrain, prohibit and
prevent"169 any unauthorized person or entity from manufacturing, selling, or importing any product
derived from the patent. However, after a patent is granted and published in the Intellectual
Property Office Gazette,170 any interested third party "may inspect the complete description,
claims, and drawings of the patent."171chanrobleslaw
The grant of a patent provides protection to the patent holder from the indiscriminate use of the
invention. However, its mandatory publication also has the correlative effect of bringing new ideas
into the public consciousness. After the publication of the patent, any person may examine the
invention and develop it into something further than what the original patent holder may have
envisioned. After the lapse of 20 years,172 the invention becomes part of the public domain and is
free for the public to use. In Pearl and Dean v. Shoemart, Inc.:173
To be able to effectively and legally preclude others from copying and profiting from the invention,
a patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system
is to bring new designs and technologies into the public domain through disclosure. Ideas, once
disclosed to the public without the protection of a valid patent, are subject to appropriation without
significant restraint.
On one side of the coin is the public which will benefit from new ideas; on the other are the
inventors who must be protected. As held in Bauer & Cie vs. O'Donnell, "The act secured to the
inventor the exclusive right to make use, and vend the thing patented, and consequently to prevent
others from exercising like privileges without the consent of the patentee. It was passed for the
purpose of encouraging useful invention and promoting new and useful inventions by the
protection and stimulation new and useful inventions by the protection and stimulation given to
inventive genius, and was intended to secure to the public, after the lapse of the exclusive
privileges granted the benefit of such inventions and improvements."
The law attempts to strike an ideal balance between the two interests:ChanRoblesVirtualawlibrary
"(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and
disclosure of new useful and non-obvious advances in technology and design, in return for the
exclusive right to practice the invention for a number of years. The inventor may keep his invention by the World Health Organization, 25% of adults aged 21 years and older in the Philippines suffer
secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit from high blood pressure.182 According to the Department of Health, heart disease remains the
to the community, the patent is granted. An exclusive enjoyment is guaranteed him for 17 years, leading cause of mortality in the Philippines.183 Angiotensin II Receptor Blocking Imidazole or
but upon the expiration of that period, the knowledge of the invention inures to the people, who "losartan" is one of the medications used for the treatment of hypertension. 184chanrobleslaw
are thus enabled to practice it and profit by its use."
In a study conducted by the Philippine Institute for Development Studies, "affordability of drugs
The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention;
remains a serious problem"185 in the Philippines. It found that because of the cost of drugs,
second, it promotes disclosures of inventions to stimulate further innovation and to permit the
accessibility to drugs become prohibitive for the lowest-earning households and are "even more
public to practice the invention once the patent expires; third, the stringent requirements for patent
prohibitive for the unemployed and indigent."186 Several measures have been enacted by the
protection, seek to ensure that ideas in the public domain remain therefor the free use of the
government to address the high costs of medicine, among them, parallel drug importation 187 and
public."
the passage of Republic Act No. 9502, otherwise known as the Universally Accessible Cheaper
and Quality Medicines Act of 2008.188 Figures submitted by respondent Therapharma, Inc.,
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-
however, also show that the presence of competition in the local pharmaceutical market may
depth investigation is required because "in rewarding a useful invention, the rights and welfare of
ensure the public access to cheaper medicines.
the community must be fairly dealt with and effectively guarded. To that end, the prerequisites to
obtaining a patent are strictly observed and when a patent is issued, the limitations on its exercise
According to respondent Therapharma, Inc., the retail price of petitioner's losartan product,
are equally strictly enforced. To begin with, a genuine invention or discovery must be
Cozaar, decreased within one (1) month of respondent Therapharma, Inc.'s entry into the
demonstrated lest in the constant demand for new appliances, the heavy hand of tribute be laid
market:189
on each slight technological advance in art."174 (Emphasis supplied)
BRAND TRADER RETAIL PRICE RETAIL PRICE
In addition, a patent holder of inventions relating to food or medicine does not enjoy absolute
�As of Lifezar's first entry into �Within one month from
monopoly over the patent. Both Republic Act No. 165 and the Intellectual Property Code provide
the market on June 4, 2004 Lifezar's entry or by July 4,
for compulsory licensing. Compulsory licensing is defined in the Intellectual Property Code as the
2004
"grant a license to exploit a patented invention, even without the agreement of the patent
owner."175chanrobleslaw LIFEZAR Therapharma 50 mg - P20.20 50mg - P20.20
Under Republic Act No. 165, a compulsory license may be granted to any applicant three (3) years 50mg - P39.50 50mg - P39.50
COZAAR Merck
after the grant of a patent if the invention relates to food or medicine necessary for public health �100mg - P55.00 �100 - P44.00
or safety.176 In Smith Kline & French Laboratories, Ltd. vs. Court of Appeals:177
Section 34 of R.A. No. 165, even if the Act was enacted prior to the Philippines' adhesion to the Respondent Therapharma, Inc. also presented figures showing that there was a 44% increase in
[Paris] Convention, fits well within the aforequoted provisions of Article 5 of the Paris Convention. the number of losartan units sold within five (5) months of its entry into the market. 190 More Filipinos
In the explanatory note of Bill No. 1156 which eventually became R.A. No. 165, the legislative are able to purchase losartan products when there are two (2) different players providing
intent in the grant of a compulsory license was not only to afford others an opportunity to provide competitive prices in the market.
the public with the quantity of the patented product, but also to prevent the growth of monopolies.
Certainly, the growth of monopolies was among the abuses which Section A, Article 5 of the Lifezar, and another of respondent Therapharma, Inc.'s products, Combizar, have also been
Convention foresaw, and which our Congress likewise wished to prevent in enacting R.A. No. recommended as cheaper alternative losartan medication, since they were priced "50 percent less
165.178chanroblesvirtuallawlibrary than foreign brands."191chanrobleslaw

The patent holder's proprietary right over the patent only lasts for three (3) years from the grant of
the patent, after which any person may be allowed to manufacture, use, or sell the invention
subject to the payment of royalties:ChanRoblesVirtualawlibrary
The right to exclude others from the manufacturing, using, or vending an invention relating to food
or medicine should be conditioned to allowing any person to manufacture, use, or vend the same
after a period of three years from the date of the grant of the letters patent. After all, the patentee
is not entirely deprived of any proprietary right. In fact, he has been given the period of three years
of complete monopoly over the patent. Compulsory licensing of a patent on food or medicine
without regard to the other conditions imposed in Section 34 is not an undue deprivation of
proprietary interests over a patent right because the law sees to it that even after three years of
complete monopoly something is awarded to the inventor in the form of a bilateral and workable
licensing agreement and a reasonable royalty to be agreed upon by the parties and in default of
such agreement, the Director of Patent may fix the terms and conditions of the
license.179chanroblesvirtuallawlibrary
A patent is a monopoly granted only for specific purposes and objectives. Thus, its procedures
must be complied with to attain its social objective. Any request for leniency in its procedures
should be taken in this context. Petitioner, however, has failed to convince this court that the revival
of its patent application would have a significant impact on the pharmaceutical industry.
Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its Petition for
Revival is granted. Even without a pending patent application and the absence of any exception
to extend the period for revival, petitioner was already threatening to pursue legal action against
respondent Therapharma, Inc. if it continued to develop and market its losartan product, Lifezar. 192
Once petitioner is granted a patent for its losartan products, Cozaar and Hyzaar, the loss of
competition in the market for losartan products may result in higher prices. For the protection of
public interest, Philippine Patent Application No. 35526 should be considered a forfeited patent
application.
WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and the Amended
Decision dated August 30, 2006 of the Court of Appeals are AFFIRMED.
SO ORDERED.
15
Id. at 415�417. For brevity, "the law firm of Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell
acting on behalf of E.I Dupont Nemours and Company" from hereon shall be referred to as "E.I. Dupont
Nemours."
20
Id. at 412. Section 113 is quoted in the Petition for Revival as:

Hypertension, or high blood pressure, is considered a "major risk factor for cardiovascular chanRoblesvirtualLawlibrarySection 113. Revival of abandoned application. - an application abandoned for
disease"180 such as "heart disease, stroke, kidney failure and blindness." 181 In a study conducted failure to prosecute may be revived as a pending application within a period of four months from the mailing
date of the notice of abandonment if it is shown to the satisfaction of the Director that the delay was due to
fraud, accident, mistake and excusable negligence.
A petition to revive an abandoned application must be promptly filed after the applicant is notified of, or
otherwise becomes aware of the abandonment, and must be accompanied by (1) a showing of the cause of
delay (2) a complete proposed response and (3) the required fees as set forth in Rule 15.
22
The Resolution was penned by Director of Patents Epifanio M. Evasco and Patent Examiner Precila O.
Bulilan.
27
Id. at 124-133. The Decision was penned by then Associate Justice (now Presiding Justice) Andres B.
Reyes, Jr. and concurred in by Associate Justices Rosmari D. Carandang and Monina Arevalo-Zenarosa of
the Seventeenth Division, Court of Appeals, Manila.
35
Id. at 82-92. The Resolution was penned by then Associate Justice (now Presiding Justice) Andres B.
Reyes, Jr. and concurred in by Associate Justices Rosmari D. Carandang and Monina Arevalo-Zenarosa of
the Tenth Division, Court of Appeals, Manila.
39
Id. at 94-122. The Amended Decision was penned by then Associate Justice (now Presiding Justice) Andres
B. Reyes, Jr. and concurred in by Associate Justices Rosmari D. Carandang and Monina Arevalo-Zenarosa of
the Former Seventeenth Division, Court of Appeals, Manila.
59
Silverio v. Court of Appeals, 225 Phil. 459, 472 (1986) [Per Acting C.J. Teehankee, En Banc].
60
First Corporation v. Court of Appeals, 553 Phil. 527, 541 (2007) [Per J. Chico-Nazario, Third Division].
62
First Corporation v. Court of Appeals, 553 Phil. 527, 541 (2007) [Per J. Chico-Nazario, Third Division].
Ordo�ez v. Judge Gustilo, 270 Phil. 579, 585-586 (1990) [Per J. Paras, Second Division] citing Francisco,
64
Rules of Court, Vol. 1.
65
See RULES OF COURT, Rule 19, sec. 1.
66
Pahila-Garrido v. Tortogo, et al., 671 Phil. 320, 334 (2011) [Per J. Bersamin, First Division] citing Tan v.
Republic, 551 Phil. 201, 210 (2007) [Per J. Sandoval-Gutierrez, First Division] and Miranda v. Court of
Appeals, 163 Phil. 285, 321 (1976) [Per J. Teehankee, En Banc].
67
Id. at 335, citing United Overseas Bank (formerly Westmont Bank) v. Judge Ros, 556 Phil. 178, 191 (2007)
[Per J. Chico-Nazario, Third Division]; Rudecon Management Corporation v. Singson, 494 Phil. 581, 597
(2005) [Per J. Callejo, Sr., Second Division]; and Sitchon v. Sheriff of Occidental Negros, 80 Phil. 397, 399
(1948) [Per J. Feria, En Banc].
68
See City of Lapu-Lapu v. Philippine Economic Export Zone, G.R. No. 184203. November 26, 2014, 742
SCRA 524, 589 [Per J. Leonen, Second Division] and Salud v. The Court of Appeals, G.R. No. 100156, June
27, 1994, 233 SCRA 384, 389 [Per J. Puno, Second Division].
69
Republic v. Malabanan, 646 Phil. 631, 637 (2010) [Per J. Villarama, Jr., Third Division] citing Leoncio v. De
Vera, 569 Phil. 512, 516 (2008) [Per J. Nachura, Third Division].
70
City of Lapu-Lapu v. Philippine Economic Zone Authority, G.R. No. 184203, November 26, 2014, 742 SCRA
524, 557 [Per J. Leonen, Second Division] citing Far Eastern Surety and Insurance Co., Inc. v. People, 721
Phil. 760, 767 (2013) [Per J. Brion, Second Division] and Republic v. Malabanan, 646 Phil. 631, 637 (2010)
[Per J. Villarama, Jr., Third Division].
71
Republic v. Malabanan, 646 Phil. 631, 638 (2010) [Per J. Villarama, Jr., Third Division] citing Leoncio v. De
Vera, 569 Phil. 512, 516 (2008) [Per J. Nachura, Third Division], in turn citing Elenita S. Binay, in her capacity
as Mayor of the City of Makati, Mario Rodriguez and Priscilla Ferrolino v. Emerita Ode �a, 551 Phil. 681, 68
(2007) [Per J. Nachura, En Banc] and Velayo-Fong v. Velayo, 539 Phil. 377, 386-387 (2006) [Per J. Austria-
Martinez, First Division]. See also Century Iron Works v. Ba�as, 711 Phil. 576, 586 (2013) [Per J. Brion,
Second Division] and Tongonan Holdings v. Atty. Esca�o, 672 Phil. 747, 758 (2011) [Per J. Mendoza, Third
Division].
72
Rule 19 of the Rules of Court refers to Interventions before the court.
73
See RULES OF COURT, Rule 45, sec. 5.
77
G.R. No. 166944, August 18, 2014, 733 SCRA 202 [Per J. Bersamin, First Division].
78
708 Phil. 9 (2013) [Per J. Bersamin, En Banc]. Galvez actually cites Air Philippines v. Zamora, 529 Phil. 718
(2006) [Per J. Austria-Martinez, First Division].
79
Magsino v. De Ocampo, G.R. No. 166944, August 18, 2014, 733 SCRA 202, 211-212 [Per J. Bersamin, First
Division], citing Galvez v. Court of Appeals, 708 Phil. 9, 20 (2013) [Per J. Bersamin, En Banc].
80
RULES OF COURT, Rule 42, sec. 2 provides:
chanRoblesvirtualLawlibrarySEC. 2. Form and contents. � The petition shall be filed in seven (7) legible
copies, with the original copy intended for the court being indicated as such by the petitioner, and shall (a)
state the full names of the parties to the case, without impleading the lower courts or judges thereof either as
petitioners or respondents; (b) indicate the specific material dates showing that it was filed on time; (c) set
forth concisely a statement of the matters involved, the issues raised, the specification of errors of fact or law,
or both, allegedly committed by the Regional Trial Court, and the reasons or arguments relied upon for the
allowance of the appeal; (d) be accompanied by clearly legible duplicate originals or true copies of the
judgments or final orders of both lower courts, certified correct by the clerk of court of the Regional Trial Court,
the requisite number of plain copies thereof and of the pleadings and other material portions of the record as
would support the allegations of the petition.
The petitioner shall also submit together with the petition a certification under oath that he has not theretofore
commenced any other action involving the same issues in the Supreme Court, the Court of Appeals or
different divisions thereof, or any other tribunal or agency; if there is such other action or proceeding, he must
state the status of the same; and if he should thereafter learn that a similar action or proceeding has been filed
or is pending before the Supreme Court, the Court of Appeals, or different divisions thereof, or any other
tribunal or agency, he undertakes to promptly inform the aforesaid courts and other tribunal or agency thereof
within five (5) days therefrom.
81
RULES OF COURT, Rule 45, sec. 4 provides:
chanRoblesvirtualLawlibrarySEC. 4. Contents of petition. � The petition shall be filed in eighteen (18) copies,
with the original copy intended for the court being indicated as such by the petitioner and shall (a) state the full
name of the appealing party as the petitioner and the adverse party as respondent, without impleading the
lower courts or judges thereof either as petitioners or respondents; (b) indicate the material dates showing
when notice of the judgment or final order or resolution subject thereof was received, when a motion for new
trial or reconsideration, if any, was filed and when notice of the denial thereof was received; (c) set forth
concisely a statement of the matters involved, and the reasons or arguments relied on for the allowance of the
petition; (d) be accompanied by a clearly legible duplicate original, or a certified true copy of the judgment or
final order or resolution certified by the clerk of court of the court a quo and the requisite number of plain
copies thereof, and such material portions of the record as would support the petition; and (e) contain a sworn
certification against forum shopping as provided in the last paragraph of section 2, Rule 42.
82
RULES OF COURT, Rule 42, sec. 2 and Rule 45, sec. 4.
98
Spouses Manalili v. Spouses Arsenio, 422 Phil. 214, 220 (2001) [Per J. Panganiban, Third Division].
101
1962 Revised Rules of Practice before the Philippines Patent Office in Patent Cases, sec. 78 provides:
chanRoblesvirtualLawlibrary78. Applications prosecuted ex parte - A patent application is prosecuted ex-parte
by the applicant; that is the proceedings are like a lawsuit in which there is a plaintiff, but no defendant, the
court itself acting as the adverse party.
102
1962 Revised Rules of Practice before the Philippines Patent Office in Patent Cases, sec. 79 provides:
chanRoblesvirtualLawlibrary79. Proceedings a contest between the Principal Examiner and the applicant. �
An ex-parte proceeding in the Patent Office is a law contest between the Principal Examiner, representing the
public and trying to give the inventor the least possible monopoly in return for his disclosure, and the applicant
of his attorney trying to get as much monopoly as possible.
108
RULES OF COURT, Rule 19, sec. 1.
119
Rules of Practice in Patent Cases, sec. 240 provides:
chanRoblesvirtualLawlibrary240. Who may file petition for compulsory license; time for filing the petition. �
Upon payment of the required fee, any person may apply to the Director of Patents for the grant of a license
under a particular patent at any time after the expiration of three years from the date of the grant of the patent.
120 163
Rules of Practice in Patent Cases, sec. 247 provides: World Intellectual Property Organization, WIPO-Administered Treaties, Paris Convention - Total
Contracting Parties <http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=2> (visited August 30, 2016).
chanRoblesvirtualLawlibrary247. Who may file a petition for cancellation; time for filing petition. � Any person Accession on August 12, 1965. Treaty was in force from September 27, 1965.
who has been, is, or will be injured by the grant of a letters patent may, on payment of the required fee, and
164
within three years from the date the issue of the patent was published in the Official Gazette, petition the Paris Convention for the Protection of Industrial Property (1883), art. 4(A)(1) provides:
Director of Patents to cancel the said patent or any claim thereof. (Republic Act No. 165, section 28).
chanRoblesvirtualLawlibraryA. (1) Any person who has duly filed an application for a patent, or for the
121 registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union,
These sections have since been superseded by Chap. VI, sec. 61 and Chap. X, sec. 93 of the Intellectual
Property Code of the Philippines. or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the
periods hereinafter fixed.
122
See H. No. 08098, 10th Cong. (1996), November 12, 1996, p. 6.
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the
123 Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized
AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (1995), art. 29
provides: as giving rise to the right of priority.

chanRoblesvirtualLawlibraryArticle 29. Conditions on Patent Applicants. 1. Members shall require that an (3) By a regular national filing is meant any filing that is adequate to establish the date on which the application
applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention was filed in the country concerned, whatever may be the subsequent fate of the application.
to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for
165
carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority Creser Precision Systems, Inc. v. Court of Appeals, 349 Phil. 687, 695 (1998) [Per J. Martinez, Second
date of the application. Division].
126 168
Rep. Act No. 165 (1947), sec. 21 provides: Id. at 696, citing Bauer and Cie v. O'Donnel, 229 US 1, 57 L. Ed. 38 Sct. 616.
169
chanRoblesvirtualLawlibrarySECTION 21. Term of patent. - The term of a patent shall begin on the date when Rep. Act No. 8293(1997), sec. 71.
the patent is issued as shown on the face thereof and shall expire seventeen years thereafter. However, a
170
patent shall cease to be in force and effect of the patentee fails to pay the prescribed annual fees within the Rep. Act No. 8293 (1997), sec. 52.1.
prescribed times hereinafter provided or if the patent is cancelled in accordance with the provisions of this Act.
171
Rep. Act No. 8293 (1997), sec. 52.2.
127
Rep. Act No. 8293 (1997), sec. 54 provides:
172
Rep. Act No. 8293 (1997), sec. 54.
chanRoblesvirtualLawlibrarySECTION 54. Term of Patent. - The term of a patent shall be twenty (20) years
173
from the filing date of the application. 456 Phil. 474 (2003) [Per J. Corona, Third Division].

128 th
H. No. 08098, 10 Cong. (1996), March 18, 1997, pp. 272-274.
130
Rep. Act No. 8293 (1997).
142
City of Dagupan v. Maramba, 738 Phil. 71, 90 (2014) [Per J. Leonen, Third Division], citing Madarang v.
Spouses Morales, G.R. No. 199283, June 9, 2014, 725 SCRA 480, 494 [Per J. Leonen, Third Division] and
Guevarra v. Bautista, 593 Phil. 20, 26 (2008) [Per J. Nachura, Third Division].
143
Id. citing Spouses Que v. Court of Appeals, 504 Phil. 616, 626 (2005) [Per J. Carpio, First Division] and
Insular Life Savings and Trust Company v. Runes, Jr., 479 Phil. 995, 1008 (2004) [Per J. Callejo, Sr., Second
Division].
147
Id. at 429, citing Fernandez v. Tam Tiong Tick, 111 Phil. 773 (1961) [Per J. Barrera, En Banc] and Florendo
v. Florendo, 137 Phil. 255 (1969) [Per J. Fernando, En Banc].
151
Schuartz v. Court of Appeals, 390 Phil. 819, 821 (2000) [Per J. Pardo, First Division].
155
Id. at 825-826, citing Government Service Insurance System v. Court of Appeals, 350 Phil. 654, 662 (1996)
[Per J. Romero, Third Division]; Sumbad v. Court of Appeals, 368 Phil. 52, 75-76 (1999) [Per J. Mendoza,
Second Division]; Villafuerte v. Cortez, 351 Phil. 915, 919-920 (1998) [Per J. Vitug, First Division]; and 1962
Revised Rules of Practice in Patent Cases, secs. 111 and 113.
156
1962 Revised Rules of Practice in Patent Cases, sec. 111 provides:
chanRoblesvirtualLawlibrary111. Abandonment for failure to respond within time limit.�(a) If an applicant fails
to prosecute his application within four months after the date when the last official notice of any action by the
Office was mailed to him, or within such time as may be fixed (rule 112), the application will become
abandoned. (Emphasis supplied)
162
World Intellectual Property Organization, WIPO-Administered Treaties, Paris Convention - Total
Contracting Parties <http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=2> (visited August 30, 2016).
Accession on March 18, 1887. Treaty was in force from May 20, 1887.
174
Id. at 491-492, citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 US 141 [1989]; U.S. v. Dubilier
Condenser Corp., 289 U.S. 178; Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979); Kewanee Oil
Co. v. Bicron Corp., 416 U.S. 470 (1994); Amador, Patents, p. 496; and Sears Roebuck v. Stiffel, 376 US 225,
229 (1964).
175
Rep. Act No. 8293 (1997), sec. 93.
176
Rep. Act No. 165 (1947), sec. 34. In the present Intellectual Property Code, as amended by Rep. Act No.
9502, the law allows the grant of a special compulsory license under the TRIPS Agreement for the importation
of patented drugs and medicines "to ensure access to quality affordable medicines."
178
Id. at 201, citing Congressional Record, House of Representatives, May 12, 1957, 998.
179
Parke, Davis & Co. v. Doctor's Pharmaceutical, Inc., 122 Phil. 392, 402-403 (1965) [Per J. Bautista Angelo,
En Banc].
180
World Health Organization, Focus of High Blood Pressure, February 2014, World Health Organization
Western Pacific Region <http://www.wpro.who.int/philippines/typhoon_haiyan/media/Hypertension.pdf?ua=1>
(visited August 30, 2016).
181
World Health Organization, Focus of High Blood Pressure, February 2014, World Health Organization
Western Pacific Region <http://www.wpro.who.int/philippines/typhoon_haiyan/media/Hypertension.pdf?ua=1>
(visited August 30, 2016).
182
World Health Organization, Focus of High Blood Pressure, February 2014, World Health Organization
Western Pacific Region <http://www.wpro.who.int/philippines/typhoon_haiyan/media/Hypertension.pdf?ua=1>
(visited August 30, 2016).
183
Leading Causes of Mortality, 5-Year Average (2004-2008) & 2009, Department of Health
<http://portal.doh.gov.ph/node/198.html> (visited August 30, 2016).
184
Rollo, p. 14. Other medications are Atenolol and Captopril. See Oscar F. Picazo, Review of Cheaper
Medicines Program in the Philippines, Discussion Paper Series No. 2012-13, Philippine Institute of
Development Studies <http://dirp4.pids.gov.ph/ris/dps/pidsdps1213.pdf> (visited August 30, 2016).
185
Oscar F. Picazo, Review of Cheaper Medicines Program in the Philippines, Discussion Paper Series No.
2012-13, Philippine Institute of Development Studies, <http://dirp4.pids.gov.ph/ris/dps/pidsdps1213.pdf>
(visited August 30, 2016).
186
Oscar F. Picazo, Review of Cheaper Medicines Program in the Philippines, Discussion Paper Series No.
2012-13, Philippine Institute of Development Studies, <http://dirp4.pids.gov.ph/ris/dps/pidsdps1213.pdf>
(visited August 30, 2016).
187
See About NCPAM, National Center for Pharmaceutical Access and Management, Department of Health
<http://www.ncpam.doh.gov.ph/index.php/about-ncpam/ncpam-history> (visited August 30, 2016).
188
An Act Providing for Cheaper and Quality Medicines, Amending for the Purpose Republic Act No. 8293 or
the Intellectual Property Code, Republic Act No. 6675 or the Generics Act of 1988, and Republic Act No. 5921
or the Pharmacy Law, and for Other Purposes (2008).
191
Willie T. Ong, M.D., I found Cheaper and Safer Drugs, August 21, 2007, Philippine Star,
<http://www.philstar.com/health-and-family/14356/i-found-cheaper-and-safer-drugs> (visited August 30, 2016).
Also published in Philippine Council for Health Research and Development Website of the Department of
Science and Technology, <http://www.pchrd.dost.gov.ph/index.php/2012-05-23-07-46-36/2012-05-24-00-03-
06/302-common-hand-problems> (visited August 30, 2016).
G.R. L-24919 January 28, 1980
JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs. THE
DIRECTOR OF PATENTS, respondent. Picazo & Agcaoili for petition. Office of the Solicitor
General for respondent.
MELENCIO-HERRERA, J.:
Sought to be reviewed herein is the Decision of the Director of Patents, dated December 9,
1964, denying priority rights under section 15 of our Patent Law (Republic Act No. 165) to
petitioners, as foreign applicants for Letters Patent, for their invention of "Chemotherapeutic
Materials and Methods of Preparing the same.
Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of the
United States, claim to be the inventors of a new antibiotic designated as "tetracycline", a
new derivative of chlortetracycline (popularly known as "aureomycin")
On February 19, 1954, petitioners applied for Letters Patent covering said invention to
respondent Director of Patents claiming the right of priority granted to foreign applicants
under section 15 of the Patent Law (RA 165). Receipt of petitioners' application was
acknowledged by respondent Director on March 6, 1954.
On April 14, 1954, petitioners filed with respondent Director a legalized copy of their
Application for Letters Patent in the United States for the same invention (U.S. Serial No.
342556). Said legalized copy indicated that the application in the United States was filed on
March 16, 1963. 1 This latter date is of crucial importance to petitioners' cause under section
15 of the Patent Law, which provides that:
Section 15. Application previously filed abroad. — An application for patent for an invention
filed in this country by any person who has previously regularly filed an application for a
patent for the same invention in a foreign country, which by treaty, convention or law affords
similar privileges to citizens of the Philippines, shall have the same force and effect as the same
application would have if filed in this country on the date on which the application for patent
for the same invention was first filed in such foreign country: Provided, That the application in
this country is filed within twelve months from the earliest date on which such foreign
application was filed and a certified copy of the foreign application together with a translation
thereof into English, if not in the English language, is filed within six months from the date of
filing in the Philippines, unless the Director for good cause shown shall extend the time for
filing such certified copy: And provided, further, that no patent shall be granted on an
application for patent for an invention which had been patented or described in a printed
publication in this or any foreign country more than one year before the date of the actual
filing of the application in this country, or which had been in public use or sale in this country
for more than one year prior to such filing.
Under the foregoing provision, petitioners would be entitled to the priority date of March
16, 1953 if their application is considered filed in the Philippines as of March 5, 1954, since
the latter date would fall within the one-year period prior to March 5, 1954.
On February 7, 1958, petitioners informed respondent Director that in interference
proceedings in the United States, Letters Patent for a similar invention as theirs was awarded
to Pfizer and Co., which had filed its application ahead and that they failed to obtain any U.S.
patent for their own invention. Petitioners, however, observed and requested:
 In the Philippines, however, the situation is at least the reverse. Pfizer and Co. did not file or
else filed an application after the above application has already been filed. The said above
application therefore is good and valid.
We request, therefore, that the present application be granted on the basis of the claims
originally filed. 2
On August 5, 1959, in Paper No. 6, 3 Patent Examiner, Lydia Nueva España, rejected all of
petitioners' claims in view of "Philippine Patent No. 254 — November 29, 1956", apparently
referring to a local Patent obtained by Pfizer and Co., presumably covering the same
invention. Additionally, petitioners were advised that the "Specification" they had submitted
was "incomplete" and that responsive action should be filed them four months from date of
mailing, which was also August 5, 1959. Paper No. 6 precipitated a series of communications
between the aforementioned Patent Examiner and petitioners, who apparently failed to meet
the deadline of four months for filing their responsive action.
On October 9, 1961, petitioners requested for clarification of Paper No. 6, particularly as to
why their Specification was considered incomplete.
In response, Supervising Patent Examiner Nelia de Castro informed petitioners as follows:
With respect to applicant's request for clarification as to the meaning of the second to the
last sentence contained in Paper 6, attention is called to the fact that the specification which
was originally filed is incomplete and not in accordance with Rule 62 of the Revised Rules.
Said specification ends on Page 9 with the incomplete sentence "The refractive indices of this
crystalline phase were found —
It appears from further from a comparison between the submitted 9 pages of the specification
and 2 pages of the claims on one hand and the corresponding pages of the legalized copy of
the U.S. application on the other that the present application does not correspond with the
said certified copy of the U.S. Application. The present application cannot therefore be
granted priority date under section 15 are requested by applicant. 4
On July 3, 1962, petitioners submitted two complete copies of the Specification, which
included nine additional pages, and reiterated their request for priority right in the
Philippines. 5
On October 2, 1962, Chief Patent Examiner Nicanor Mapili issued Paper No. 20 rejecting the
additional nine pages of Specification submitted by petitioners, and ruling:
The filing of the alleged complete copy Of the specification is an attempt to effect a remedy to
the previous finding of incompleteness as stated in the 2nd to the last paragraph of Office
Action mailed Aug. 5, 1959, marked Paper 6. This cannot be allowed inasmuch as 9 pages of
new matter are actually proposed to be added to the specification.
This action is made final for purpose of appeal 6
Petitioners moved for reconsideration on the ground that their application falls under the
exception provided for in Rule 47 of the Revised Rules of Practice in Patent Cases in that the
missing nine pages submitted by them are not really new matter but a mere "minor
informality."
On February 5, 1963, Chief Patent Examiner Mapili issued Paper No. 22 denying petitioners'
Motion for Reconsideration and the findings of Examiner de Castro as follows:
The basis of the examiner's finding is applicant's verification on file, exclusive of what is in an
alleged corresponding application in the US as evidenced by a certified copy of record. The
only use of such certified a copy is to give proof to an earlier filing date as provided for such
section 15 of the Patent Law and to use the inventors' oath therein to complete the form
requirements relative to his application in a dance with the provisions of section 13(3) of the
same law.
The provisions of section 15 of the Patent Law, under which the present application was filed,
provides for a for filing. This deadline cannot be extended directly or indirectly by the filing of
an imperfect application which can be freely amended or rectified at a later date. If this can be
done legally, the restrictive provisions of section 15 will be nullified. 7
Adversely affected, petitioners appealed to dent Director of Patents.
In their Brief filed with respondent Directors petitioners prayed for 1) revocation of the of
the Chief Patent Examiner, 8 2) admission of their Specification submitted on July 3, 1962; and
3) allowance of their application on the merits.
On December 9, 1964, respondent Director rendered the questioned Decision, the
dispositive portion of which reads:
WHEREFORE, the appeal is hereby sustained. The additional pages to the specification are
hereby admitted, but the application shall not be extended priority rights under section 15 of
the Patent Law. Let the filing date of this application be changed from March 5, 1954 to April
14, 1954. The application is hereby remanded to the Chief Patent Examiner for proper action
and for further examination on the merits. 9
In reaching the foregoing conclusion, respondent Director opined that the portions
subsequently supplied in the local application are not new matter a comparison between the
foreign and local applications showed that the foreign application included the missing
portions of the local one. However, respondent Direct qualified that petitioners' application
may be considered complete only on April 14, 1954 when the certified copy of the foreign
application was submitted. Consequently, the instant application is to be considered an
ordinary application, not entitled to the right of priority granted by section 15 of the Patent
Law, inasmuch as said application was not complete within the meaning of Rules 47 and 48 of
the Revised Rules of Practice in Patent Case when first filed on March 5, 1954.
Petitioners filed a Motion for Partial Reconsideration of the above-mentioned Decision
questioning that portion of respondent Director's ruling barring them from entitlement to
the right of priority under section 15 of the Patent Law contending that their appeal centered
merely on the issue of whether or not the additional nine pages of Specification they had
submitted should be treated as new matter.
On June 10, 1965, respondent Director denied reconsideration for lack of merit, and
explained:
... It should be emphasized that under Rule 262 (b) of the Revised Rules of Practice in Patent
Cases, it is stated that should the Director have any knowledge of any ground not involved in
the appeal for rejecting any claim, he may include in his decision a statement to that effect
with his reasons for so holding, which statement shall constitute a rejection of the claim.
Priority claims are covered by the rule: 10
On June 11, 1965, petitioners filed a Second Motion for reconsideration on the ground that
priority rights are governed by convention and treaty, while invention claims are governed
exclusively by the Statute and Rules of Practice. Respondent Director denied that Motion for
lack of merit on August 24, 1965. Hence, this recourse.
On January 9, 1967, we deemed the case submitted for decision, after petitioners had filed
their Brief on February 12, 1966, and respondent Director, through the Solicitor General, his
Brief on June 9, 1966.
On June 9, 1968, Republic Act No. 5434 was enacted providing that final Orders and
Decisions of the Director of Patents in ex parte and inter partes proceedings are appealable to
the Court of Appeals. Since no provision for retroactivity exists in said Act this Tribunal has
resolved to retain jurisdiction over this case.
Petitioners maintain before this Court that:
RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT PETITIONERS'
APPLICATION, SERIAL NO. 952, MAY NOT BE TREATED AS FILED UNDER SECTION 15
AS AMENDED, OF REPUBLIC ACT NO. 165 KNOWN AS THE PATENT LAW.
and in support thereof stress that:
1) The Director had no jurisdiction to decide the question of whether or not the Philippine
Application should be treated as filed under Section 15 of the Act;
2) The Director had no jurisdiction to decide the question of whether or not the Philippine
Application was incomplete under Rules 47 and 48 of the Revised Rules of Practice in Patent
Cases;
3) The Director misconstrued and misapplied Rules 47 and 48 of the Rules;
4) The Director misconstrued and misapplied Rule 262 (b) of the Rules.
For resolution, therefore, are the following issues: the scope of the powers of the Director
of Patents in cases appealed to him and the correctness of his application of Rules 47, 48 and
262(b) of the Revised Rules of Practice in Patent Cases.
The facts unfolded call for an affirmance of respondent Director's rulings.
Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and
authority of respondent Director to decide petitioners' appeal in the manner that he did, and
we quote:
262. Decision by the Director. — (a) The Director, in his decision, may affirm or reverse the
decision of the Principal Examiner in whole or in part on the ground and on the claims
specified by the Examiner. The affirmance of the rejection of a claim on any of the grounds
specified constitutes a general affirmance of the decision of the Principal Examiner on that
claim, except as to any ground specifically reversed.
(b) Should the Director have knowledge of any grounds not involved in the appeal for
rejecting any claim he may include in his decision a statement to that effect with his reasons
for so holding which statement shall constitute a rejection of the claims. ...
In other words, respondent Director is empowered to consider grounds which may have
come to his knowledge other than those specifically raised in an appeal He need not confine
himself only to issues invoked. Besides, the question of new matter is inextricably linked with
the right of priority on which petitioners have anchored their application. As early as Paper
No. 18, supra, the Supervising Patent Examiner had concluded that inasmuch as the submitted
pages did not correspond with the certified copy of the U.S. application, "the present
application cannot therefore be granted priority date under section 16 as requested by
applicant." Again, in Paper No. 22, supra, the Chief Patent Examiner made mention of
petitioner' imperfect application and the fact that the deadline for filinf required by section 15
of the Patent Law cannot be extended directly or indirectly otherwise "the restrictive
provisions of section 15 will be nullified."
It is also far-fetched for petitioners to claim that in ruling on petitioners' right of priority,
respondent Director had contravened Rule 254 of the Revised Rules of Practice in Patent
cases, which provides that the Director of Patents exercises no direct control, direction and
supervision over the Principal Examiner and the Executive Examiner. What respondent
Director exercised was his authority to review the decisions of Patent Examiners, as
explicitly provided for in the last paragraph of the same Rules 254, as follows:
The only supervision which the Director of Patent may lawfully exercise over the Principal
Examiners and the Executive Examiner is a general supervision, exercised through a review of
the recommendations they may make for the grant of a patent, and through a review of their
decision by petition and appeal.
Similarly untenable is petitioners' contention that respondent Director had misconstrued and
misapplied Rules 47 and 48 of the Revised Rules of Practice in Patent Cases. The said Rules
provide:
47. Application accepted and filed for examination only w hen complete — An application for an
invention patent will not be accepted and placed upon the files for examination until all its
required parts, complying with the rules relating thereto are received except that 'certain
minor informalities may be waived subject to subsequent correction, whenever required.
If the papers and parts are incomplete, or so defective that they cannot be accepted as a
complete application for examination, the applicant will be notified; the papers will be held
four months for completion and if not by then completed, will be stored as an abandoned
incomplete application and eventually destroyed or otherwise disposed of.
 48. Serial number and filing date of application — Complete applications are numbered in
regular order, and the applicant win be informed of the serial number and filing date of the
application by a filing receipt. The filing date of the applicant is the, date on which the
complete application, acceptable for placing on the files for examination, is received in the
Patent Office; or the date on which the last part completing such application is received, in
the case of an incomplete or defective application completed within four months. The
Executive Examiner shall be in charge of fixing the filing date and serial number of an
application.

Under the aforecited provisions, it is imperative that the application be complete in order
that it may be accepted. It is essential to the validity of Letters Patent that the specifications
be full, definite, and specific. 11 The purpose of requiring a definite and accurate description of
the process is to apprise the public of what the patentee claims as his invention, to inform
the Courts as to what they are called upon to construe, and to convey to competing
manufacturers and dealers information of exactly what they are bound to avoid. 12

The specification which petitioners submitted on March 5, 1954 was far from complete. That
defect was one of substance and not merely one of form. What petitioners claimed as their
invention was not completely determinable therefrom. Petitioners' application could be
deemed as complete only on July 2, 1963 when they submitted the additional pages on the
Specifications and Claims. Respondent Director, therefore, did not err in converting
petitioners' application into an ordinary application filed on April 14, 1954, not only for their
having failed to complete their application within the four-month period provided for by
Rules 47 and 48, Revised Rules of Practice in Patent Cases, and as required of them by Paper
No. 6, but also for their having failed to file a complete application within twelve months
from March 16, 1953, the date of the foreign application For, to be entitled to the filing date
of the patent application, an invention disclosed in a previously filed application must be
described within the instant application in such a manner as to enable one skilled in the art to
use the same for a legally adequate utility. 13

All told, we sustain respondent Director's findings in the absence of error or abuse of power
or lack of jurisdiction or grave abuse of discretion. 14 We have held that in the absence of
arbitrariness, and provided they are supported by substantial evidence, as in this case, the
conclusions reached by the Director of Patents are to be accorded respect and must be
upheld. 15

WHEREFORE, we hereby affirm the Decision of respondent Director of Patents dated

December 9, 1964.

SO ORDERED.

1 Pp.. 21-49, Folder of Proceedings in Patent Office.

11 Standard Brands vs. National Grains Yeast Corp. 308 US 34, 84 L. ed. 17, 60
S.Ct., 27.
12 Scheiber-Schroth Co. vs. Cleveland Trust Co., 305 US 47, 83, L. ed., 34.
13 Application of Hafner, 410 F2d 1403.
14 Guardiano vs. Encarnacion, 29 SCRA 326 (1969).
15 Sy Ching vs. Gaw Lui, 44 SCRA 143 (1972).
[G.R. 148222. August 15, 2003]
PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED,
and NORTH EDSA MARKETING, INCORPORATED, respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule 45 of the Rules of Court,
petitioner Pearl & Dean (Phil.) Inc. (P& D) assails the May 22, 2001 decision 1 of the Court of
Appeals reversing the October 31, 1996 decision2 of the Regional Trial Court of Makati, Branch
133, in Civil Case No. 92-516 which declared private respondents Shoemart Inc. (SMI) and
North Edsa Marketing Inc. (NEMI) liable for infringement of trademark and copyright, and
unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals3 contained a summary of this dispute:
Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in
the manufacture of advertising display units simply referred to as light boxes.
These units utilize specially printed posters sandwiched between plastic sheets
and illuminated with back lights. Pearl and Dean was able to secure a Certificate
of Copyright Registration dated January 20, 1981 over these illuminated display
units. The advertising light boxes were marketed under the trademark Poster Ads.
The application for registration of the trademark was filed with the Bureau of
Patents, Trademarks and Technology Transfer on June 20, 1983, but was
approved only on September 12, 1988, per Registration No. 41165. From 1981 to
about 1988, Pearl and Dean employed the services of Metro Industrial Services to
manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant
Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM City
North Edsa. Since SM City North Edsa was under construction at that time, SMI
offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean
agreed. On September 11, 1985, Pearl and Deans General Manager, Rodolfo
Vergara, submitted for signature the contracts covering SM Cubao and SM Makati
to SMIs Advertising Promotions and Publicity Division Manager, Ramonlito
Abano. Only the contract for SM Makati, however, was returned signed. On
October 4, 1985, Vergara wrote Abano inquiring about the other contract and
reminding him that their agreement for installation of light boxes was not only for
its SM Makati branch, but also for SM Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs house counsel informed
1
Penned by Associate Justice Salvador J. Valdez, Jr. and concurred in by Associate Justices
Wenceslao L. Agnir and Juan Q. Enriquez Jr.
Pearl and Dean that it was rescinding the contract for SM Makati due to non-
performance of the terms thereof. In his reply dated February 17, 1986, Vergara
protested the unilateral action of SMI, saying it was without basis. In the same
letter, he pushed for the signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company formerly
contracted by Pearl and Dean to fabricate its display units, offered to construct
light boxes for Shoemarts chain of stores. SMI approved the proposal and ten (10)
light boxes were subsequently fabricated by Metro Industrial for SMI. After its
contract with Metro Industrial was terminated, SMI engaged the services of EYD
Rainbow Advertising Corporation to make the light boxes. Some 300 units were
fabricated in 1991. These were delivered on a staggered basis and installed at SM
Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its
light boxes were installed at SM City and in the fastfood section of SM Cubao.
Upon investigation, Pearl and Dean found out that aside from the two (2) reported
SM branches, light boxes similar to those it manufactures were also installed in
two (2) other SM stores. It further discovered that defendant-appellant North
Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing
Services, was set up primarily to sell advertising space in lighted display units
located in SMIs different branches. Pearl and Dean noted that NEMI is a sister
company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December
11, 1991 to both SMI and NEMI enjoining them to cease using the subject light
boxes and to remove the same from SMIs establishments. It also demanded the
discontinued use of the trademark Poster Ads, and the payment to Pearl and Dean
of compensatory damages in the amount of Twenty Million Pesos
(P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two
hundred twenty-four (224) light boxes and NEMI took down its advertisements for
Poster Ads from the lighted display units in SMIs stores. Claiming that both SMI
and NEMI failed to meet all its demands, Pearl and Dean filed this instant case for
infringement of trademark and copyright, unfair competition and damages.
In denying the charges hurled against it, SMI maintained that it
independently developed its poster panels using commonly known techniques
and available technology, without notice of or reference to Pearl and Deans
copyright. SMI noted that the registration of the mark Poster Ads was only for
stationeries such as letterheads, envelopes, and the like. Besides, according to
SMI, the word Poster Ads is a generic term which cannot be appropriated as a
trademark, and, as such, registration of such mark is invalid. It also stressed that
Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its
advertising display units contained no copyright notice, in violation of Section 27
of P.D. 49. SMI alleged that Pearl and Dean had no cause of action against it and
2
Penned by Judge Napoleon E. Inoturan.
3
Seventeenth Division; CA G.R. 55303.
 that the suit was purely intended to malign SMIs good name. On this basis, SMI, On appeal, however, the Court of Appeals reversed the trial court:
aside from praying for the dismissal of the case, also counterclaimed for moral,
actual and exemplary damages and for the cancellation of Pearl and Deans Since the light boxes cannot, by any stretch of the imagination, be considered as
Certification of Copyright Registration No. PD-R-2558 dated January 20, 1981 and either prints, pictorial illustrations, advertising copies, labels, tags or box wraps,
Certificate of Trademark Registration No. 4165 dated September 12, 1988. to be properly classified as a copyrightable class O work, we have to agree with
SMI when it posited that what was copyrighted were the technical drawings only,
NEMI, for its part, denied having manufactured, installed or used any and not the light boxes themselves, thus:
advertising display units, nor having engaged in the business of advertising. It
repleaded SMIs averments, admissions and denials and prayed for similar reliefs 42. When a drawing is technical and depicts a utilitarian object, a
copyright over the drawings like plaintiff-appellants will not extend to the
and counterclaims as SMI.
actual object. It has so been held under jurisprudence, of which the leading case
The RTC of Makati City decided in favor of P & D: is Baker vs. Selden (101 U.S. 841 (1879). In that case, Selden had obtained a
copyright protection for a book entitled Seldens Condensed Ledger or
Wherefore, defendants SMI and NEMI are found jointly and severally liable Bookkeeping Simplified which purported to explain a new system of
for infringement of copyright under Section 2 of PD 49, as amended, and bookkeeping. Included as part of the book were blank forms and illustrations
consisting of ruled lines and headings, specially designed for use in connection
infringement of trademark under Section 22 of RA No. 166, as amended, and are
with the system explained in the work. These forms showed the entire
hereby penalized under Section 28 of PD 49, as amended, and Sections 23 and 24 operation of a day or a week or a month on a single page, or on two pages
of RA 166, as amended. Accordingly, defendants are hereby directed: following each other. The defendant Baker then produced forms which were
similar to the forms illustrated in Seldens copyrighted books. The Court held
(1) to pay plaintiff the following damages: that exclusivity to the actual forms is not extended by a copyright. The reason
was that to grant a monopoly in the underlying art when no examination of its
(a) actual damages - P16,600,000.00,
novelty has ever been made would be a surprise and a fraud upon the public;
representing profits that is the province of letters patent, not of copyright. And that is precisely the
derived by defendants point. No doubt aware that its alleged original design would never pass the
as a result of infringe- rigorous examination of a patent application, plaintiff-appellant fought to foist
ment of plaintiffs copyright a fraudulent monopoly on the public by conveniently resorting to a copyright
from 1991 to 1992 registration which merely employs a recordal system without the benefit of an
in-depth examination of novelty.
(b) moral damages - P1,000.000.00
The principle in Baker vs. Selden was likewise applied in Muller vs. Triborough
(c) exemplary damages - P1,000,000.00 Bridge Authority [43 F. Supp. 298 (S.D.N.Y. 1942)]. In this case, Muller had
obtained a copyright over an unpublished drawing entitled Bridge Approach the
(d) attorneys fees - P1,000,000.00
drawing showed a novel bridge approach to unsnarl traffic congestion. The
plus
defendant constructed a bridge approach which was alleged to be an
(e) costs of suit; infringement of the new design illustrated in plaintiffs drawings. In this case it was
held that protection of the drawing does not extend to the unauthorized
(2) to deliver, under oath, for impounding in the National Library, all duplication of the object drawn because copyright extends only to the description
light boxes of SMI which were fabricated by Metro Industrial or expression of the object and not to the object itself. It does not prevent one
Services and EYD Rainbow Advertising Corporation; from using the drawings to construct the object portrayed in the drawing.
(3) to deliver, under oath, to the National Library, all filler-posters using In two other cases, Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and
the trademark Poster Ads, for destruction; and Scholtz Homes, Inc. v. Maddox, 379 F. 2d 84, it was held that there is no copyright
infringement when one who, without being authorized, uses a copyrighted
(4) to permanently refrain from infringing the copyright on plaintiffs
architectural plan to construct a structure. This is because the copyright does not
light boxes and its trademark Poster Ads.
extend to the structures themselves.
Defendants counterclaims are hereby ordered dismissed for lack of merit.
In fine, we cannot find SMI liable for infringing Pearl and Deans copyright
SO ORDERED.4 over the technical drawings of the latters advertising display units.

4
Records, pp. 620-621.
 xxx xxx xxx in its certificate of registration, namely, stationeries.

The Supreme Court trenchantly held in Faberge, Incorporated vs.
Intermediate Appellate Court that the protective mantle of the Trademark Law
extends only to the goods used by the first user as specified in the certificate of
registration, following the clear mandate conveyed by Section 20 of Republic Act
166, as amended, otherwise known as the Trademark Law, which reads:
Defendants-appellants cannot thus be held liable for infringement of the trademark
Poster Ads.
There being no finding of either copyright or trademark infringement on the part of
SMI and NEMI, the monetary award granted by the lower court to Pearl and Dean has no leg
to stand on.

SEC. 20. Certification of registration prima facie evidence of validity.- A
certificate of registration of a mark or trade-name shall be prima facie evidence
of the validity of the registration, the registrants ownership of the mark or
trade-name, and of the registrants exclusive right to use the same in
connection with the goods, business or services specified in the certificate,
subject to any conditions and limitations stated therein. (underscoring supplied)
WHEREFORE, premises considered, the assailed decision is REVERSED and SET
ASIDE, and another is rendered DISMISSING the complaint and counterclaims in the above-
entitled case for lack of merit.5
Dissatisfied with the above decision, petitioner P & D filed the instant petition assigning
the following errors for the Courts consideration:

The records show that on June 20, 1983, Pearl and Dean applied for the A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT
registration of the trademark Poster Ads with the Bureau of Patents, Trademarks, NO COPYRIGHT INFRINGEMENT WAS COMMITTED BY
and Technology Transfer. Said trademark was recorded in the Principal Register RESPONDENTS SM AND NEMI;
on September 12, 1988 under Registration No. 41165 covering the following
products: stationeries such as letterheads, envelopes and calling cards and B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT
newsletters. NO INFRINGEMENT OF PEARL & DEANS TRADEMARK POSTER
ADS WAS COMMITTED BY RESPONDENTS SM AND NEMI;
With this as factual backdrop, we see no legal basis to the finding of liability
on the part of the defendants-appellants for their use of the words Poster Ads, in C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING
the advertising display units in suit. Jurisprudence has interpreted Section 20 of THE AWARD OF THE TRIAL COURT, DESPITE THE LATTERS
the Trademark Law as an implicit permission to a manufacturer to venture into FINDING, NOT DISPUTED BY THE HONORABLE COURT OF
the production of goods and allow that producer to appropriate the brand name APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS
of the senior registrant on goods other than those stated in the certificate of NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL &
registration. The Supreme Court further emphasized the restrictive meaning of DEAN.
Section 20 when it stated, through Justice Conrado V. Sanchez, that: D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING
Really, if the certificate of registration were to be deemed as including RESPONDENTS SM AND NEMI LIABLE TO PEARL & DEAN FOR
goods not specified therein, then a situation may arise whereby an applicant ACTUAL, MORAL & EXEMPLARY DAMAGES, ATTORNEYS FEES
may be tempted to register a trademark on any and all goods which his mind AND COSTS OF SUIT.6
may conceive even if he had never intended to use the trademark for the said
goods. We believe that such omnibus registration is not contemplated by our
Trademark Law.
ISSUES
While we do not discount the striking similarity between Pearl and Deans registered
trademark and defendants-appellants Poster Ads design, as well as the parallel use by which
said words were used in the parties respective advertising copies, we cannot find
defendants-appellants liable for infringement of trademark. Poster Ads was registered by In resolving this very interesting case, we are challenged once again to put into proper
Pearl and Dean for specific use in its stationeries, in contrast to defendants-appellants who perspective four main concerns of intellectual property law patents, copyrights, trademarks
used the same words in their advertising display units. Why Pearl and Dean limited the use and unfair competition arising from infringement of any of the first three. We shall focus then
of its trademark to stationeries is simply beyond us. But, having already done so, it must on the following issues:
stand by the consequence of the registration which it had caused.
(1) if the engineering or technical drawings of an advertising display unit
We are constrained to adopt the view of defendants-appellants that the words Poster (light box) are granted copyright protection (copyright certificate of
Ads are a simple contraction of the generic term poster advertising. In the absence of any registration) by the National Library, is the light box depicted in such
convincing proof that Poster Ads has acquired a secondary meaning in this jurisdiction, we
engineering drawings ipso facto also protected by such copyright?
find that Pearl and Deans exclusive right to the use of Poster Ads is limited to what is written

5
Rollo, pp. 17-19, 21-22, 23-24, 26. 6
Rollo, p. 34.
 (2) or should the light box be registered separately and protected by a
patent issued by the Bureau of Patents Trademarks and Technology
Transfer (now Intellectual Property Office) in addition to the copyright of
the engineering drawings?
(3) can the owner of a registered trademark legally prevent others from
using such trademark if it is a mere abbreviation of a term descriptive of his
goods, services or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes
when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own
account. Obviously, petitioners position was premised on its belief that its copyright over the
engineering drawings extended ipso facto to the light boxes depicted or illustrated in said
drawings. In ruling that there was no copyright infringement, the Court of Appeals held that
the copyright was limited to the drawings alone and not to the light box itself. We agree with
the appellate court.
First, petitioners application for a copyright certificate as well as Copyright Certificate
No. PD-R2588 issued by the National Library on January 20, 1981 clearly stated that it was for
a class O work under Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the
statute then prevailing. Said Section 2 expressly enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following works:
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
Although petitioners copyright certificate was entitled Advertising Display Units (which
depicted the box-type electrical devices), its claim of copyright infringement cannot be
sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute.7 Accordingly, it can cover only the works falling within the statutory
enumeration or description.8
P & D secured its copyright under the classification class O work. This being so,
petitioners copyright protection extended only to the technical drawings and not to the light
box itself because the latter was not at all in the category of prints, pictorial illustrations,
advertising copies, labels, tags and box wraps. Stated otherwise, even as we find that P & D
indeed owned a valid copyright, the same could have referred only to the technical drawings
within the category of pictorial illustrations. It could not have possibly stretched out to include
7
18 C.J.S. 161.
8
Joaquin vs. Drilon, 302 SCRA 225 [1999].
9
Ibid.
the underlying light box. The strict application9 of the laws enumeration in Section 2 prevents
us from giving petitioner even a little leeway, that is, even if its copyright certificate was
entitled Advertising Display Units. What the law does not include, it excludes, and for the
good reason: the light box was not a literary or artistic piece which could be copyrighted under
the copyright law. And no less clearly, neither could the lack of statutory authority to make
the light box copyrightable be remedied by the simplistic act of entitling the copyright
certificate issued by the National Library as Advertising Display Units.
In fine, if SMI and NEMI reprinted P & Ds technical drawings for sale to the public without
license from P & D, then no doubt they would have been guilty of copyright infringement. But
this was not the case. SMIs and NEMIs acts complained of by P & D were to have units similar
or identical to the light box illustrated in the technical drawings manufactured by Metro and
EYD Rainbow Advertising, for leasing out to different advertisers. Was this an infringement of
petitioners copyright over the technical drawings? We do not think so.
During the trial, the president of P & D himself admitted that the light box was neither
a literary not an artistic work but an engineering or marketing invention.10 Obviously, there
appeared to be some confusion regarding what ought or ought not to be the proper subjects
of copyrights, patents and trademarks. In the leading case of Kho vs. Court of Appeals,11 we
ruled that these three legal rights are completely distinct and separate from one another, and
the protection afforded by one cannot be used interchangeably to cover items or works that
exclusively pertain to the others:
Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include
a stamped or marked container of goods. In relation thereto, a trade name means the name
or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of the
light boxes without license from petitioner, private respondents cannot be held legally liable
for infringement of P & Ds copyright over its technical drawings of the said light boxes, should
they be liable instead for infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It
therefore acquired no patent rights which could have protected its invention, if in fact it really
was. And because it had no patent, petitioner could not legally prevent anyone from
manufacturing or commercially using the contraption. In Creser Precision Systems, Inc. vs.
Court of Appeals,12 we held that there can be no infringement of a patent until a patent has
been issued, since whatever right one has to the invention covered by the patent arises alone
10
Pp. 11-13, TSN, February 3, 1993.
11
G.R. No. 115758, March 19, 2002.
12
286 SCRA 13 [1998].
from the grant of patent. x x x (A)n inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. A
patent, however, gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the invention.13 On the assumption that petitioners
advertising units were patentable inventions, petitioner revealed them fully to the public by
submitting the engineering drawings thereof to the National Library.
To be able to effectively and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no protection. The ultimate goal
of a patent system is to bring new designs and technologies into the public domain through
disclosure.14 Ideas, once disclosed to the public without the protection of a valid patent, are
subject to appropriation without significant restraint.15
On one side of the coin is the public which will benefit from new ideas; on the other are
the inventors who must be protected. As held in Bauer & Cie vs. ODonnel,16 The act secured to
the inventor the exclusive right to make use, and vend the thing patented, and consequently
to prevent others from exercising like privileges without the consent of the patentee. It was
passed for the purpose of encouraging useful invention and promoting new and useful
inventions by the protection and stimulation given to inventive genius, and was intended to
secure to the public, after the lapse of the exclusive privileges granted the benefit of such
inventions and improvements.
The law attempts to strike an ideal balance between the two interests:
(The p)atent system thus embodies a carefully crafted bargain for encouraging the
creation and disclosure of new useful and non-obvious advances in technology and design,
in return for the exclusive right to practice the invention for a number of years. The inventor
may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure
and the consequent benefit to the community, the patent is granted. An exclusive
enjoyment is guaranteed him for 17 years, but upon the expiration of that period, the
knowledge of the invention inures to the people, who are thus enabled to practice it and
profit by its use.17
The patent law has a three-fold purpose: first, patent law seeks to foster and reward
invention; second, it promotes disclosures of inventions to stimulate further innovation and
to permit the public to practice the invention once the patent expires; third, the stringent
requirements for patent protection seek to ensure that ideas in the public domain remain
there for the free use of the public.18
It is only after an exhaustive examination by the patent office that a patent is issued.
Such an in-depth investigation is required because in rewarding a useful invention, the rights
and welfare of the community must be fairly dealt with and effectively guarded. To that end,
the prerequisites to obtaining a patent are strictly observed and when a patent is issued, the
limitations on its exercise are equally strictly enforced. To begin with, a genuine invention or
13
Id., at p. 21, citing Anchor Hocking Glass Corp. vs. White Cap Co., 47 F. Supp. A 451, and Bauer &
Cie vs. ODonnel, 229 US 1.
14
Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., 489 US 141 [1989].
15
Id., at p. 156.
16
Ibid., at p. 10.
17
Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., ibid., p. 150, citing U.S. vs. Dubilier Condenser Corp.,
discovery must be demonstrated lest in the constant demand for new appliances, the heavy
hand of tribute be laid on each slight technological advance in art.19
There is no such scrutiny in the case of copyrights nor any notice published before its
grant to the effect that a person is claiming the creation of a work. The law confers the
copyright from the moment of creation20 and the copyright certificate is issued upon
registration with the National Library of a sworn ex-parte claim of creation.
Therefore, not having gone through the arduous examination for patents, the petitioner
cannot exclude others from the manufacture, sale or commercial use of the light boxes on the
sole basis of its copyright certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the
patent office (IPO) to scrutinize the light boxs eligibility as a patentable invention. The irony
here is that, had petitioner secured a patent instead, its exclusivity would have been for 17
years only. But through the simplified procedure of copyright-registration with the National
Library without undergoing the rigor of defending the patentability of its invention before the
IPO and the public the petitioner would be protected for 50 years. This situation could not
have been the intention of the law.
In the oft-cited case of Baker vs. Selden21, the United States Supreme Court held that
only the expression of an idea is protected by copyright, not the idea itself. In that case, the
plaintiff held the copyright of a book which expounded on a new accounting system he had
developed. The publication illustrated blank forms of ledgers utilized in such a system. The
defendant reproduced forms similar to those illustrated in the plaintiffs copyrighted book.
The US Supreme Court ruled that:
There is no doubt that a work on the subject of book-keeping, though only
explanatory of well known systems, may be the subject of a copyright; but, then, it is claimed
only as a book. x x x. But there is a clear distinction between the books, as such, and the art,
which it is, intended to illustrate. The mere statement of the proposition is so evident that it
requires hardly any argument to support it. The same distinction may be predicated of every
other art as well as that of bookkeeping. A treatise on the composition and use of medicines,
be they old or new; on the construction and use of ploughs or watches or churns; or on the
mixture and application of colors for painting or dyeing; or on the mode of drawing lines to
produce the effect of perspective, would be the subject of copyright; but no one would
contend that the copyright of the treatise would give the exclusive right to the art or
manufacture described therein. The copyright of the book, if not pirated from other works,
would be valid without regard to the novelty or want of novelty of its subject matter. The
novelty of the art or thing described or explained has nothing to do with the validity of the
copyright. To give to the author of the book an exclusive property in the art described
therein, when no examination of its novelty has ever been officially made, would be a
surprise and a fraud upon the public. That is the province of letters patent, not of
copyright. The claim to an invention of discovery of an art or manufacture must be
subjected to the examination of the Patent Office before an exclusive right therein can
289 U.S. 178.
18
Aronson vs. Quick Point Pencil Co., 440 U.S. 257, 262 [1979], citing Kewanee Oil Co. vs. Bicron
Corp., 416 U.S. 470 [1994], cited Amador, patents, p. 496.
19
Sears Roebuck vs. Stiffel, 376 US 225, 229 [1964].
20
Section 2, PD 49 (The Intellectual Property Decree).
21
101 US 102-105 [1879].
 be obtained; and a patent from the government can only secure it.
The difference between the two things, letters patent and copyright, may be
illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain
mixtures are found to be of great value in the healing art. If the discoverer writes and
publishes a book on the subject (as regular physicians generally do), he gains no
exclusive right to the manufacture and sale of the medicine; he gives that to the public.
If he desires to acquire such exclusive right, he must obtain a patent for the mixture as
a new art, manufacture or composition of matter. He may copyright his book, if he
pleases; but that only secures to him the exclusive right of printing and publishing his
book. So of all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and
illustrations it may contain, gives no exclusive right to the modes of drawing described,
though they may never have been known or used before. By publishing the book without
getting a patent for the art, the latter is given to the public.
Now, whilst no one has a right to print or publish his book, or any material part
thereof, as a book intended to convey instruction in the art, any person may practice and use
the art itself which he has described and illustrated therein. The use of the art is a totally
different thing from a publication of the book explaining it. The copyright of a book on
bookkeeping cannot secure the exclusive right to make, sell and use account books prepared
upon the plan set forth in such book. Whether the art might or might not have been
patented, is a question, which is not before us. It was not patented, and is open and free to
the use of the public. And, of course, in using the art, the ruled lines and headings of accounts
must necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises from a
confusion of ideas produced by the peculiar nature of the art described in the books, which
have been made the subject of copyright. In describing the art, the illustrations and
diagrams employed happened to correspond more closely than usual with the actual work
performed by the operator who uses the art. x x x The description of the art in a book,
though entitled to the benefit of copyright, lays no foundation for an exclusive claim to
the art itself. The object of the one is explanation; the object of the other is use. The
former may be secured by copyright. The latter can only be secured, if it can be secured
at all, by letters patent. (underscoring supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark Poster Ads which petitioners
president said was a contraction of poster advertising. P & D was able to secure a trademark
certificate for it, but one where the goods specified were stationeries such as letterheads,
envelopes, calling cards and newsletters.22 Petitioner admitted it did not commercially
engage in or market these goods. On the contrary, it dealt in electrically operated backlit
advertising units and the sale of advertising spaces thereon, which, however, were not at all
specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs.
22
Exhibit B, Original Records, p. 63.
23
215 SCRA 316 [1992].
24
Id., at p. 326.
25
336 SCRA 266 [2000].
Intermediate Appellate Court,23 where we, invoking Section 20 of the old Trademark Law, ruled
that the certificate of registration issued by the Director of Patents can confer (upon
petitioner) the exclusive right to use its own symbol only to those goods specified in the
certificate, subject to any conditions and limitations specified in the certificate x x x. One who
has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others for products which are of a different description.24 Faberge, Inc. was
correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. Court of Appeals.25
Assuming arguendo that Poster Ads could validly qualify as a trademark, the failure of P
& D to secure a trademark registration for specific use on the light boxes meant that there
could not have been any trademark infringement since registration was an essential element
thereof.
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair competition, a situation which
was possible even if P & D had no registration.26 However, while the petitioners complaint in
the RTC also cited unfair competition, the trial court did not find private respondents liable
therefor. Petitioner did not appeal this particular point; hence, it cannot now revive its claim
of unfair competition.
But even disregarding procedural issues, we nevertheless cannot hold respondents
guilty of unfair competition.
By the nature of things, there can be no unfair competition under the law on copyrights
although it is applicable to disputes over the use of trademarks. Even a name or phrase
incapable of appropriation as a trademark or tradename may, by long and exclusive use by a
business (such that the name or phrase becomes associated with the business or product in
the mind of the purchasing public), be entitled to protection against unfair competition. 27 In
this case, there was no evidence that P & Ds use of Poster Ads was distinctive or well-known.
As noted by the Court of Appeals, petitioners expert witnesses himself had testified that
Poster Ads was too generic a name. So it was difficult to identify it with any company, honestly
speaking.28 This crucial admission by its own expert witness that Poster Ads could not be
associated with P & D showed that, in the mind of the public, the goods and services carrying
the trademark Poster Ads could not be distinguished from the goods and services of other
entities.
This fact also prevented the application of the doctrine of secondary meaning. Poster
Ads was generic and incapable of being used as a trademark because it was used in the field
of poster advertising, the very business engaged in by petitioner. Secondary meaning means
that a word or phrase originally incapable of exclusive appropriation with reference to an
article in the market (because it is geographically or otherwise descriptive) might nevertheless
have been used for so long and so exclusively by one producer with reference to his article
that, in the trade and to that branch of the purchasing public, the word or phrase has come to
26
Ogura vs. Chua, 59 Phil. 471.
27
Sapalo, The Law on Trademark Infringement and Unfair Competition, 2000 ed., p. 185.
28
Decision, p. 16, citing TSN, December 3, 1992, pp. 19-20.
mean that the article was his property.29 The admission by petitioners own expert witness that
he himself could not associate Poster Ads with petitioner P & D because it was too generic
definitely precluded the application of this exception.

Having discussed the most important and critical issues, we see no need to belabor the
rest.

All told, the Court finds no reversible error committed by the Court of Appeals when it
reversed the Regional Trial Court of Makati City.

WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals
dated May 22, 2001 is AFFIRMED in toto.

SO ORDERED.

Puno, (Chairman), Panganiban, Sandoval-Gutierrez, and Carpio-Morales, JJ., concur.

29
Sapalo, at p. 92.
 G.R. No. 167715 as ampicillin sodium and beta-lactam antibiotic like sulbactam
PHIL PHARMAWEALTH, INC., sodium.
Petitioner, Present:
CARPIO, J., Chairperson, 7. Patent No. 21116 thus covers ampicillin
- versus - NACHURA, sodium/sulbactam sodium (hereafter Sulbactam Ampicillin).
PERALTA, Ampicillin sodium is a specific example of the broad beta-lactam
ABAD, and
PFIZER, INC. and PFIZER (PHIL.) INC., antibiotic disclosed and claimed in the Patent. It is the compound
MENDOZA, JJ.
Respondents. which efficacy is being enhanced by co-administering the same with
sulbactam sodium. Sulbactam sodium, on the other hand, is a specific
Promulgated:
compound of the formula IA disclosed and claimed in the Patent.
November 17, 2010

8. Pfizer is marketing Sulbactam Ampicillin under the brand

x--------------------------------------------------x
PERALTA, J.:
Before the Court is a petition for review on certiorari seeking to annul and set
aside the Resolutions dated January 18, 200530 and April 11, 200531 by the Court of
Appeals (CA) in CA-G.R. SP No. 82734.
The instant case arose from a Complaint32 for patent infringement filed against
petitioner Phil Pharmawealth, Inc. by respondent companies, Pfizer, Inc. and Pfizer
(Phil.), Inc., with the Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO).
The Complaint alleged as follows:
name Unasyn. Pfizer's Unasyn products, which come in oral and IV
formulas, are covered by Certificates of Product Registration (CPR)
issued by the Bureau of Food and Drugs (BFAD) under the name of
complainants. The sole and exclusive distributor of Unasyn products
in the Philippines is Zuellig Pharma Corporation, pursuant to a
Distribution Services Agreement it executed with Pfizer Phils. on
January 23, 2001.
9. Sometime in January and February 2003, complainants
came to know that respondent [herein petitioner] submitted bids for
the supply of Sulbactam Ampicillin to several hospitals without the
consent of complainants and in violation of the complainants'
intellectual property rights. x x x

xxxx
6. Pfizer is the registered owner of Philippine Letters Patent
No. 21116 (the Patent) which was issued by this Honorable Office on
July 16, 1987. The patent is valid until July 16, 2004. The claims of this
Patent are directed to a method of increasing the effectiveness of a
beta-lactam antibiotic in a mammalian subject, which comprises co-
administering to said subject a beta-lactam antibiotic effectiveness
increasing amount of a compound of the formula IA. The scope of
the claims of the Patent extends to a combination of penicillin such
xxxx
10. Complainants thus wrote the above hospitals and
demanded that the latter immediately cease and desist from
accepting bids for the supply [of] Sulbactam Ampicillin or awarding
the same to entities other than complainants. Complainants, in the
same letters sent through undersigned counsel, also demanded that
respondent immediately withdraw its bids to supply Sulbactam
Ampicillin.
11. In gross and evident bad faith, respondent and the
hospitals named in paragraph 9 hereof, willfully ignored

30 Penned by Associate Justice Arcangelita M. Romilla-Lontok, with Associate Justices

Rodrigo V. Cosico and Danilo B. Pine, concurring; rollo, pp. 121-122.
 complainants' just, plain and valid demands, refused to comply
therewith and continued to infringe the Patent, all to the damage and
prejudice of complainants. As registered owner of the Patent, Pfizer
is entitled to protection under Section 76 of the IP Code.”
Respondents prayed for permanent injunction, damages and the forfeiture
and impounding of the alleged infringing products. They also asked for the issuance of
a temporary restraining order and a preliminary injunction that would prevent herein
petitioner, its agents, representatives and assigns, from importing, distributing, selling
or offering the subject product for sale to any entity in the Philippines.
In an Order dated July 15, 2003 the BLA-IPO issued a preliminary injunction
which was effective for ninety days from petitioner's receipt of the said Order.
Prior to the expiration of the ninety-day period, respondents filed a Motion
for Extension of Writ of Preliminary Injunction which, however, was denied by the BLA-
IPO in an Order dated October 15, 2003.
Respondents filed a Motion for Reconsideration but the same was also denied
by the BLA-IPO in a Resolution dated January 23, 2004.
Respondents then filed a special civil action for certiorari with the CA assailing
the October 15, 2003 and January 23, 2004 Resolutions of the BLA-IPO. Respondents
also prayed for the issuance of a preliminary mandatory injunction for the reinstatement
and extension of the writ of preliminary injunction issued by the BLA-IPO.
While the case was pending before the CA, respondents filed a Complaint with
the Regional Trial Court (RTC) of Makati City for infringement and unfair competition
with damages against herein petitioner. In said case, respondents prayed for the
issuance of a temporary restraining order and preliminary injunction to prevent herein
petitioner from importing, distributing, selling or offering for sale sulbactam ampicillin
products to any entity in the Philippines. Respondents asked the trial court that, after
trial, judgment be rendered awarding damages in their favor and making the injunction
permanent.
On August 24, 2004, the RTC of Makati City issued an Order directing the
issuance of a temporary restraining order conditioned upon respondents' filing of a
bond.
In a subsequent Order dated April 6, 2005, the same RTC directed the issuance
of a writ of preliminary injunction prohibiting and restraining [petitioner], its agents,
representatives and assigns from importing, distributing or selling Sulbactam Ampicillin
products to any entity in the Philippines.
Meanwhile, on November 16, 2004, petitioner filed a Motion to Dismiss the
petition filed with the CA on the ground of forum shopping, contending that the case
filed with the RTC has the same objective as the petition filed with the CA, which is to
obtain an injunction prohibiting petitioner from importing, distributing and selling
Sulbactam Ampicillin products.
On January 18, 2005, the CA issued its questioned Resolution approving the
bond posted by respondents pursuant to the Resolution issued by the appellate court
on March 23, 2004 which directed the issuance of a temporary restraining order
conditioned upon the filing of a bond. On even date, the CA issued a temporary
restraining order which prohibited petitioner from importing, distributing, selling or
offering for sale Sulbactam Ampicillin products to any hospital or to any other entity in
the Philippines, or from infringing Pfizer Inc.'s Philippine Patent No. 21116 and
impounding all the sales invoices and other documents evidencing sales by [petitioner]
of Sulbactam Ampicillin products.
On February 7, 2005, petitioner again filed a Motion to Dismiss the case for
being moot and academic, contending that respondents' patent had already lapsed. In
the same manner, petitioner also moved for the reconsideration of the temporary
restraining order issued by the CA on the same basis that the patent right sought to be
protected has been extinguished due to the lapse of the patent license and on the
ground that the CA has no jurisdiction to review the order of the BLA-IPO as said
jurisdiction is vested by law in the Office of the Director General of the IPO.
On April 11, 2005, the CA rendered its presently assailed Resolution denying
the Motion to Dismiss, dated November 16, 2004, and the motion for reconsideration,
as well as Motion to Dismiss, both dated February 7, 2005.
Hence, the present petition raising the following issues:
a) Can an injunctive relief be issued based on an action of
patent infringement when the patent allegedly infringed has already
lapsed?
b) What tribunal has jurisdiction to review the decisions of
the Director of Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions
with two seemingly different causes of action and yet pray for the
same relief?
In the first issue raised, petitioner argues that respondents' exclusive right to
monopolize the subject matter of the patent exists only within the term of the patent.
Petitioner claims that since respondents' patent expired on July 16, 2004, the latter no
longer possess any right of monopoly and, as such, there is no more basis for the
issuance of a restraining order or injunction against petitioner insofar as the disputed
patent is concerned.
The Court agrees.
Section 37 of Republic Act No. (RA) 165,33 which was the governing law at the
time of the issuance of respondents' patent, provides:
Section 37. Rights of patentees. A patentee shall have the
exclusive right to make, use and sell the patented machine, article or product,
and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent; and
such making, using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent.
It is clear from the above-quoted provision of law that the exclusive right of a
patentee to make, use and sell a patented product, article or process exists only during
the term of the patent. In the instant case, Philippine Letters Patent No. 21116, which
was the basis of respondents in filing their complaint with the BLA-IPO, was issued on
July 16, 1987. This fact was admitted by respondents themselves in their complaint.
They also admitted that the validity of the said patent is until July 16, 2004, which is in
conformity with Section 21 of RA 165, providing that the term of a patent shall be
seventeen (17) years from the date of issuance thereof. Section 4, Rule 129 of the Rules
of Court provides that an admission, verbal or written, made by a party in the course of
the proceedings in the same case, does not require proof and that the admission may
be contradicted only by showing that it was made through palpable mistake or that no
such admission was made. In the present case, there is no dispute as to respondents'
admission that the term of their patent expired on July 16, 2004. Neither is there
evidence to show that their admission was made through palpable mistake. Hence,
contrary to the pronouncement of the CA, there is no longer any need to present
evidence on the issue of expiration of respondents' patent.
On the basis of the foregoing, the Court agrees with petitioner that after July
16, 2004, respondents no longer possess the exclusive right to make, use and sell the
articles or products covered by Philippine Letters Patent No. 21116.
Section 3, Rule 58, of the Rules of Court lays down the requirements
for the issuance of a writ of preliminary injunction, viz:
33 An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the
Issuance of Patents and Appropriating Funds Therefor.
(a) That the applicant is entitled to the relief demanded, and the
whole or part of such relief consists in restraining the commission or
continuance of the acts complained of, or in requiring the performance of an
act or acts, either for a limited period or perpetually;
(b) That the commission, continuance or non-performance of the
act or acts complained of during the litigation would probably work injustice
to the applicant; or
(c) That a party, court, or agency or a person is doing, threatening,
or attempting to do, or is procuring or suffering to be done, some act or acts
probably in violation of the rights of the applicant respecting the subject of
the action or proceeding, and tending to render the judgment ineffectual.
In this connection, pertinent portions of Section 5, Rule 58 of the same Rules
provide that if the matter is of extreme urgency and the applicant will suffer grave
injustice and irreparable injury, a temporary restraining order may be issued ex parte.
From the foregoing, it can be inferred that two requisites must exist to warrant
the issuance of an injunctive relief, namely: (1) the existence of a clear and unmistakable
right that must be protected; and (2) an urgent and paramount necessity for the writ to
prevent serious damage.34
In the instant case, it is clear that when the CA issued its January 18, 2005
Resolution approving the bond filed by respondents, the latter no longer had a right
that must be protected, considering that Philippine Letters Patent No. 21116 which was
issued to them already expired on July 16, 2004. Hence, the issuance by the CA of a
temporary restraining order in favor of the respondents is not proper.
In fact, the CA should have granted petitioner's motion to dismiss the petition
for certiorari filed before it as the only issue raised therein is the propriety of extending
the writ of preliminary injunction issued by the BLA-IPO. Since the patent which was the
basis for issuing the injunction, was no longer valid, any issue as to the propriety of
extending the life of the injunction was already rendered moot and academic.
As to the second issue raised, the Court, is not persuaded by petitioner's
argument that, pursuant to the doctrine of primary jurisdiction, the Director General of
the IPO and not the CA has jurisdiction to review the questioned Orders of the Director
of the BLA-IPO.
34 Angeles City v. Angeles City Electric Corporation, G.R. No. 166134, June 29, 2010.
 It is true that under Section 7(b) of RA 8293, otherwise known as the
Intellectual Property Code of the Philippines, which is the presently prevailing law, the
Director General of the IPO exercises exclusive appellate jurisdiction over all decisions
rendered by the Director of the BLA-IPO. However, what is being questioned before the
CA is not a decision, but an interlocutory order of the BLA-IPO denying respondents'
motion to extend the life of the preliminary injunction issued in their favor.
RA 8293 is silent with respect to any remedy available to litigants who intend
to question an interlocutory order issued by the BLA-IPO. Moreover, Section 1(c), Rule
14 of the Rules and Regulations on Administrative Complaints for Violation of Laws
Involving Intellectual Property Rights simply provides that interlocutory orders shall not
be appealable. The said Rules and Regulations do not prescribe a procedure within the
administrative machinery to be followed in assailing orders issued by the BLA-IPO
pending final resolution of a case filed with them. Hence, in the absence of such a
remedy, the provisions of the Rules of Court shall apply in a suppletory manner, as
provided under Section 3, Rule 1 of the same Rules and Regulations. Hence, in the
present case, respondents correctly resorted to the filing of a special civil action for
certiorari with the CA to question the assailed Orders of the BLA-IPO, as they cannot
appeal therefrom and they have no other plain, speedy and adequate remedy in the
ordinary course of law. This is consistent with Sections 135 and 4,36 Rule 65 of the Rules
of Court, as amended.
In the first place, respondents' act of filing their complaint originally with the
BLA-IPO is already in consonance with the doctrine of primary jurisdiction.
This Court has held that:
35 Sec. 1. Petition for certiorari. When any tribunal, board or officer exercising judicial
or quasi-judicial functions has acted without or in excess of its or his jurisdiction, or with
grave abuse of discretion amounting to lack or excess of its or his jurisdiction, and there is
no appeal, or any plain, speedy and adequate remedy in the ordinary course of law, a person
aggrieved thereby may file a verified petition in the proper court, alleging the facts with certainty
and praying that judgment be rendered annulling or modifying the proceedings of such tribunal,
board or officer, and granting such incidental reliefs as law and justice may require.
The petition shall be accompanied by a certified true copy of the judgment, order or
resolution subject thereof, copies of all pleadings and documents relevant and pertinent thereto,
and a sworn certification of non-forum shopping as provided in the third paragraph of Section 3,
Rule 46. (Emphasis supplied)
36 Sec. 4. When and where petition filed. The petition may be filed not later than sixty (60)
days from notice of the judgment, order of resolution. In case a motion for reconsideration or new
[i]n cases involving specialized disputes, the practice has been to refer the
same to an administrative agency of special competence in observance of the
doctrine of primary jurisdiction. The Court has ratiocinated that it cannot or
will not determine a controversy involving a question which is within the
jurisdiction of the administrative tribunal prior to the resolution of that
question by the administrative tribunal, where the question demands the
exercise of sound administrative discretion requiring the special knowledge,
experience and services of the administrative tribunal to determine technical
and intricate matters of fact, and a uniformity of ruling is essential to comply
with the premises of the regulatory statute administered. The objective of the
doctrine of primary jurisdiction is to guide a court in determining whether it
should refrain from exercising its jurisdiction until after an administrative
agency has determined some question or some aspect of some question
arising in the proceeding before the court. It applies where the claim is
originally cognizable in the courts and comes into play whenever enforcement
of the claim requires the resolution of issues which, under a regulatory
scheme, has been placed within the special competence of an administrative
body; in such case, the judicial process is suspended pending referral of such
issues to the administrative body for its view.37
Based on the foregoing, the Court finds that respondents' initial filing of their
complaint with the BLA-IPO, instead of the regular courts, is in keeping with the doctrine
of primary jurisdiction owing to the fact that the determination of the basic issue of
whether petitioner violated respondents' patent rights requires the exercise by the IPO
of sound administrative discretion which is based on the agency's special competence,
knowledge and experience.
However, the propriety of extending the life of the writ of preliminary
injunction issued by the BLA-IPO in the exercise of its quasi-judicial power is no longer
a matter that falls within the jurisdiction of the said administrative agency, particularly
trial is timely filed, whether such motion is required or not, the sixty (60)-day period shall be
counted from notice of denial of said motion.
If it relates to the acts or omissions of a lower court or of a corporation, board or officer
or person, in the Regional Trial Court exercising jurisdiction over the territorial area as defined by
the Supreme Court. It may also be filed in the Court of Appeals whether or not the same is in aid
of its appellate jurisdiction, or in the Sandiganbayan if it is in aid of its appellate jurisdiction. If it
involves the acts or omissions of a quasi-judicial agency, and unless otherwise provided by
law or these rules, the petition shall be filed in and cognizable only by the Court of Appeals.
In election cases involving an act or omission of a municipal or a regional trial court, the
petition shall be filed exclusively with the Commission on Elections, in aid of its appellate
jurisdiction. (Emphasis supplied.)
37 Fabia v. Court of Appeals, 437 Phil. 389, 402-403 (2002).
that of its Director General. The resolution of this issue which was raised before the CA
does not demand the exercise by the IPO of sound administrative discretion requiring
special knowledge, experience and services in determining technical and intricate
matters of fact. It is settled that one of the exceptions to the doctrine of primary
jurisdiction is where the question involved is purely legal and will ultimately have to be
decided by the courts of justice.38 This is the case with respect to the issue raised in the
petition filed with the CA.
Moreover, as discussed earlier, RA 8293 and its implementing rules and
regulations do not provide for a procedural remedy to question interlocutory orders
issued by the BLA-IPO. In this regard, it bears to reiterate that the judicial power of the
courts, as provided for under the Constitution, includes the authority of the courts to
determine in an appropriate action the validity of the acts of the political departments. 39
Judicial power also includes the duty of the courts of justice to settle actual
controversies involving rights which are legally demandable and enforceable, and to
determine whether or not there has been a grave abuse of discretion amounting to lack
or excess of jurisdiction on the part of any branch or instrumentality of the Government.
Hence, the CA, and not the IPO Director General, has jurisdiction to determine whether
the BLA-IPO committed grave abuse of discretion in denying respondents' motion to
extend the effectivity of the writ of preliminary injunction which the said office earlier
issued.
Lastly, petitioner avers that respondents are guilty of forum shopping for
having filed separate actions before the IPO and the RTC praying for the same relief.
The Court agrees.
Forum shopping is defined as the act of a party against whom an adverse
judgment has been rendered in one forum, of seeking another (and possibly favorable)
opinion in another forum (other than by appeal or the special civil action of certiorari),
or the institution of two (2) or more actions or proceedings grounded on the same
cause on the supposition that one or the other court would make a favorable
disposition.40
38 Geraldine Gaw Guy and Grace Cheu v. Alvin Agustin T. Ignacio, G.R. Nos. 167824 and
168622, July 2, 2010; Republic v. Lacap, G.R. No. 158253, March 2, 2007, 517 SCRA 255, 266.
39 Smart Communications, Inc. (SMART) v. National Telecommunications Commission (NTC),
456 Phil. 145, 159 (2003).
The elements of forum shopping are: (a) identity of parties, or at least such
parties that represent the same interests in both actions; (b) identity of rights asserted
and reliefs prayed for, the reliefs being founded on the same facts; (c) identity of the
two preceding particulars, such that any judgment rendered in the other action will,
regardless of which party is successful, amount to res judicata in the action under
consideration.41
There is no question as to the identity of parties in the complaints filed with
the IPO and the RTC.
Respondents argue that they cannot be held guilty of forum shopping because
their complaints are based on different causes of action as shown by the fact that the
said complaints are founded on violations of different patents.
The Court is not persuaded.
Section 2, Rule 2 of the Rules of Court defines a cause of action as the act or
omission by which a party violates a right of another. In the instant case, respondents'
cause of action in their complaint filed with the IPO is the alleged act of petitioner in
importing, distributing, selling or offering for sale Sulbactam Ampicillin products, acts
that are supposedly violative of respondents' right to the exclusive sale of the said
products which are covered by the latter's patent. However, a careful reading of the
complaint filed with the RTC of Makati City would show that respondents have the same
cause of action as in their complaint filed with the IPO. They claim that they have the
exclusive right to make, use and sell Sulbactam Ampicillin products and that petitioner
violated this right. Thus, it does not matter that the patents upon which the complaints
were based are different. The fact remains that in both complaints the rights violated
and the acts violative of such rights are identical.
In fact, respondents seek substantially the same reliefs in their separate
complaints with the IPO and the RTC for the purpose of accomplishing the same
objective.
40 Pulido v. Abu, G.R. No. 170924, July 4, 2007, 526 SCRA 483, 497; Clark Development
Corporation v. Mondragon Leisure and Resorts Corporation, G.R. No. 150986, March 2, 2007, 517
SCRA 203, 213.
41 Pentacapital Investment Corporation v. Makilito Mahinay, G.R. No. 171736 and
Pentacapital Corporation v. Makilito Mahinay, G.R. No. 181482, July 5, 2010; GD Express Worldwide
N.V. v. Court of Appeals (Fourth Division), G.R. No. 136978, May 8, 2009, 587 SCRA 333, 346-347.
 It is settled by this Court in several cases that the filing by a party of two from importing, distributing, selling or offering for sale Sulbactam Ampicillin
apparently different actions but with the same objective constitutes forum shopping. 42 products to the hospitals named in paragraph 9 of this Complaint or to any
The Court discussed this species of forum shopping as follows: other entity in the Philippines, or from otherwise infringing Pfizer Inc.'s
Very simply stated, the original complaint in the court a quo Philippine Patent No. 21116; and (b) impounding all the sales invoices and
which gave rise to the instant petition was filed by the buyer (herein other documents evidencing sales by respondent of Sulbactam Ampicillin
products.
private respondent and his predecessors-in-interest) against the
seller (herein petitioners) to enforce the alleged perfected sale of real
estate. On the other hand, the complaint in the Second Case seeks to B. After hearing, issue a writ of preliminary injunction enjoining
respondent, its agents, representatives and assigns from importing,
declare such purported sale involving the same real property as
unenforceable as against the Bank, which is the petitioner herein. In distributing, selling or offering for sale Sulbactam Ampicillin products to the
other words, in the Second Case, the majority stockholders, in hospitals named in paragraph 9 of the Complaint or to any other entity in the
Philippines, or from otherwise infringing Pfizer Inc.'s Philippine Patent No.
representation of the Bank, are seeking to accomplish what the Bank
itself failed to do in the original case in the trial court. In brief, the 21116; and
objective or the relief being sought, though worded differently,
C. After trial, render judgment:
is the same, namely, to enable the petitioner Bank to escape from
the obligation to sell the property to respondent.43
(i) declaring that respondent has infringed
Pfizer Inc.'s Philippine Patent No. 21116 and
In Danville Maritime, Inc. v. Commission on Audit, the Court ruled as follows: that respondent has no right whatsoever
over complainant's patent;
In the attempt to make the two actions appear to be different,
petitioner impleaded different respondents therein PNOC in the case before (ii) ordering respondent to pay complainants the following
the lower court and the COA in the case before this Court and sought what amounts:
seems to be different reliefs. Petitioner asks this Court to set aside the
(a) at least P1,000,000.00 as actual damages;
questioned letter-directive of the COA dated October 10, 1988 and to direct
(b) P700,000.00 as attorney's fees and litigation
said body to approve the Memorandum of Agreement entered into by and
between the PNOC and petitioner, while in the complaint before the lower expenses;
(d) P1,000,000.00 as exemplary damages; and
court petitioner seeks to enjoin the PNOC from conducting a rebidding and
(d) costs of this suit.
from selling to other parties the vessel T/T Andres Bonifacio, and for an
extension of time for it to comply with the paragraph 1 of the memorandum
(iii) ordering the condemnation, seizure or
of agreement and damages. One can see that although the relief prayed
forfeiture of respondent's infringing goods or
for in the two (2) actions are ostensibly different, the ultimate objective
in both actions is the same, that is, the approval of the sale of vessel in products, wherever they may be found, including the
favor of petitioner, and to overturn the letter directive of the COA of materials and implements used in the
commission of infringement, to be disposed of in
October 10, 1988 disapproving the sale.
such manner as may be deemed appropriate by
this Honorable Office; and

In the instant case, the prayer of respondents in their complaint filed with the (iv) making the injunction permanent.
IPO is as follows:
In an almost identical manner, respondents prayed for the following in their complaint
A. Immediately upon the filing of this action, issue an ex parte order filed with the RTC:
(a) temporarily restraining respondent, its agents, representatives and assigns

42 City of Naga v. Asuncion, G.R. No. 174042, July 9, 2008, 557 SCRA 528, 541; Clark 43 First Philippine International Bank v. Court of Appeals, supra, at 307-308. (Emphasis
Development Corporation v. Mondragon Leisure and Resorts Corporation, G.R. No. 150986, supra supplied.)
note 24, at 214; Riesenbeck v. Maceren, Jr., G.R. No. 158608, January 27, 2006, 480 SCRA 362, 380;
First Philippine International Bank v. Court of Appeals, 322 Phil. 280 (1996); Danville Maritime Inc.
v. Commission on Audit, G.R. Nos. 85285 & 87150, July 28, 1989, 175 SCRA701.
 (a) Immediately upon the filing of this action, issue an ex Pharmawealth to have no right whatsoever
parte order: over plaintiff's patent;

(1) temporarily restraining (2) ordering Pharmawealth to pay

Pharmawealth, its agents, representatives and assigns from plaintiffs the following amounts:
importing, distributing, selling or offering for sale
infringing sulbactam ampicillin products to various (i) at least P3,000,000.00 as
government and private hospitals or to any other entity in actual damages;
the Philippines, or from otherwise infringing Pfizer Inc.'s (ii) P500,000.00 as attorney's
Philippine Patent No. 26810. fees and P1,000,000.00 as litigation expenses;
(iii) P3,000,000.00 as
(2) impounding all the sales invoices exemplary damages; and
and other documents evidencing (iv) costs of this suit.
sales by pharmawealth of
sulbactam ampicillin products; (3) ordering the condemnation,
and seizure or forfeiture of
Pharmawealth's infringing goods
(3) disposing of the infringing goods or products, wherever they may be
outside the channels of found, including the materials and
commerce. implements used in the
commission of infringement, to be
(b) After hearing, issue a writ of preliminary injunction: disposed of in such manner as
may be deemed appropriate by
(1) enjoining Pharmawealth, its agents, this Honorable Court; and
representatives and assigns from
importing, distributing, selling or (4) making the injunction permanent.
offering for sale infringing
sulbactam ampicillin products to
It is clear from the foregoing that the ultimate objective which respondents
various government hospitals or to
seek to achieve in their separate complaints filed with the RTC and the IPO, is to ask for
any other entity in the Philippines,
or from otherwise infringing Patent damages for the alleged violation of their right to exclusively sell Sulbactam Ampicillin
No. 26810; products and to permanently prevent or prohibit petitioner from selling said products
to any entity. Owing to the substantial identity of parties, reliefs and issues in the IPO
(2) impounding all the sales invoices and RTC cases, a decision in one case will necessarily amount to res judicata in the other
and other documents evidencing action.
sales by Pharmawealth of sulbactam
ampicillin products; and
It bears to reiterate that what is truly important to consider in determining
(3) disposing of the infringing goods whether forum shopping exists or not is the vexation caused the courts and parties-
outside the channels of litigant by a party who asks different courts and/or administrative agencies to rule on
commerce. the same or related causes and/or to grant the same or substantially the same reliefs,
in the process creating the possibility of conflicting decisions being rendered by the
(c) After trial, render judgment: different fora upon the same issue.44 Thus, the Court agrees with petitioner that
respondents are indeed guilty of forum shopping.
(1) finding Pharmawealth to have
infringed Patent No. 26810 and declaring

44 Luis K. Lokin, Jr. v. Commission on Elections, et al., G.R. Nos. 179431-32 and Luis K. Lokin,
Jr. v. Commission on Elections, G.R. No. 180443, June 22, 2010.
 Jurisprudence holds that if the forum shopping is not considered willful and
deliberate, the subsequent case shall be dismissed without prejudice, on the ground of
either litis pendentia or res judicata.45 However, if the forum shopping is willful and
deliberate, both (or all, if there are more than two) actions shall be dismissed with
prejudice. In the present case, the Court finds that respondents did not deliberately
violate the rule on non-forum shopping. Respondents may not be totally blamed for
erroneously believing that they can file separate actions simply on the basis of different
patents. Moreover, in the suit filed with the RTC of Makati City, respondents were candid
enough to inform the trial court of the pendency of the complaint filed with the BLA-
IPO as well as the petition for certiorari filed with the CA. On these bases, only Civil Case
No. 04-754 should be dismissed on the ground of litis pendentia.

WHEREFORE, the petition is PARTLY GRANTED. The assailed Resolutions of

the Court of Appeals, dated January 18, 2005 and April 11, 2005, in CA-G.R. No. 82734,
are REVERSED and SET ASIDE. The petition for certiorari filed with the Court of Appeals
is DISMISSED for being moot and academic.

Civil Case No. 04-754, filed with the Regional Trial Court of Makati City, Branch
138, is likewise DISMISSED on the ground of litis pendentia.

SO ORDERED.

45 Chua v. Metropolitan Bank and Trust Company, G.R. No. 182311, August 19, 2009, 596
SCRA 524, 541; Air Materiel Wing Savings and Loan Association, Inc. v. Manay, G.R. No. 175338,
April 29, 2008, 552 SCRA 643, 654.