Cabana, Adrian C.

       
PHIL PHARMAWEALTH, INC., Petitioner,
vs.
PFIZER, INC. and PFIZER (PHIL.) INC., Respondents.
G.R. No. 167715
November 17, 2010

Facts

Respondent - PFIZER.INC filed a case for infringement against Petitioner-

Phil Pharmawealth Inc. Respondent being the patent owner of Sulbactam
Sodium evidence with Patent Number 21116 registered with the Intellectual
Property Office; the said patent is effective from July 16, 1987 to July 16, 2014.
Respondent alleged that Phil Pharmawealth submitted bids to hospitals for the
supply of Sulbactam Sodium, the latter also alleged that respondent imports,
distributes and sells the said patent. In view of these happenings, Respondent
filed a complaint with BLA-IPO for patent-infringement coupled with
preliminary injunction, damages, and for the issuance of temporary restraining
order. BLA-IPO granted the preliminary injunction with 90 days, upon
expiration, respondent filed a motion for extension of injunction which was
denied by the BLA-IPO. Pfizer filed a special civil action for certiorari in the court
of appeals assailing the denial of BLA-IPO. While the case was pending in the
C.A, Pfizer filed with the RTC a complaint for infringement and unfair
competition with a prayer of injunction. The RTC issued a temporary restraining
order and then preliminary injunction. Pharmawealth filed a motion to dismiss
the case in the CA, on the ground of forum shopping. Nevertheless, the CA
issued a temporary restraining order. Pharmawealth again filed a motion to
dismiss, alleging that the patent, the main basis of the case, had already lapsed,
thus making the case moot and academic, and that the CA had no jurisdiction to
review the order of the IPO-BLA because this was granted to the Director
General. The CA denied all the motions. Pharmawealth filed a petition for
review on Certiorari with the Supreme Court.

Issue
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?

Ruling

a) No. The provision of R.A. 165, from which the Pfizer’s patent was based,
clearly states that "[the] 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."

Clearly, the patentee’s exclusive right exist only during the term of the patent.
Since the patent was registered on 16 July 1987, it expired, in accordance with the
provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July 2004,
Pfizer no longer possessed the exclusive right to make, use, and sell the products
covered by their patent. The CA was wrong in issuing a temporary restraining
order after the cut-off date.

b) According to IP Code, the Director General of the IPO exercises exclusive

jurisdiction over decisions of the IPO-BLA. The question in the CA concerns an
interlocutory order, and not a decision. Since the IP Code and the Rules and
Regulations are bereft of any remedy regarding interlocutory orders of the IPO-
BLA, the only remedy available to Pfizer is to apply the Rules of Court
suppletorily.