Case Digest (G.R. No. 174379)
Facts:
E.I. Dupont de Nemours and Co. (Assignee of inventors Carini, Duncia and Wong) v. Director Emma C. Francisco, G.R. No. 174379, August 31, 2016, Supreme Court Second Division, Leonen, J., writing for the Court.Petitioner E.I. Dupont de Nemours (Dupont), assignee of U.S. inventors, filed Philippine Patent Application No. 35526 for angiotensin II receptor blocking imidazole (losartan) on July 10, 1987. Its local resident agent was Atty. Nicanor D. Mapili, who handled most of Dupont’s Philippines matters from 1972 to 1996. The application was assigned to an examiner on June 7, 1988; an Office Action was mailed to counsel on July 19, 1988; and, for petitioner’s failure to respond, the Bureau’s Chemical Examining Division declared the application abandoned effective September 20, 1988. Under the 1962 Revised Rules of Practice in Patent Cases, a petition to revive an abandoned application had to be filed within four months from mailing of the notice of abandonment.
Dupont did not request a status update from its resident agent until July 18, 1995, and only learned of Atty. Mapili’s death in 1996. After appointing a new local agent in March 1996, Dupont did not ask the Office for a status update until December 19, 2000. Following Paper No. 2 from the Bureau of Patents dated January 30, 2002 (which noted no revocation of Mapili’s power of attorney on record), Dupont submitted a Power of Attorney on May 29, 2002 and filed a Petition for Revival (asserting it only had actual notice of abandonment upon receipt of Paper No. 2 and invoking Section 113 of the 1962 Rules).
The Director of Patents denied revival (Resolution dated April 18, 2002), and Director-General Emma C. Francisco affirmed that denial in a Decision dated October 22, 2003. Dupont filed a petition for review with the Court of Appeals on November 21, 2003. On August 31, 2004 the Court of Appeals granted the petition and allowed revival. The Office of the Solicitor General moved for reconsideration, and Therapharma, Inc. moved for leave to intervene, alleging it had invested in and was marketing a losartan product (Lifezar) in good faith after finding no pending patent registration in the Bureau records.
The Court of Appeals granted Therapharma’s intervention by Resolution dated January 31, 2006. On August 30, 2006 the Court of Appeals rendered an Amended Decision reversing its earlier grant of revival, denying petitioner’s appeal on grounds that Dupont (through its counsel and resident agent) displayed inexcusable negligence and that revival would prejudice Therapharma and th...(Subscriber-Only)
Issues:
- Did the Petition comply with Rule 45, Section 4 of the Rules of Court when petitioner failed initially to attach certain documents?
- Was Rule 65 the proper mode of review instead of a petition for review under Rule 45?
- Does the Petition raise questions of fact that would render Rule 45 inappropriate?
- Did the Court of Appeals err in allowing Therapharma, Inc. to intervene on appeal?
- Did the Court of Appeals err in denying revival of Philippine Patent Application No. 35526 on (a) the ground of inexcusable negligence in prosecution, and (b) the ground that third‑party rights and public interest would be prejudiced?
- Does the rule in Schuartz v. Court of Appeals apply such that counsel’s negligence binds the patent applicant? ...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)