Case Digest (G.R. No. 174379)
Facts:
In E.I. Dupont de Nemours and Co. (assignee of inventors Carini, Duncia and Wong) v. Director General Emma C. Francisco, et al., petitioner Dupont, a Delaware corporation, filed Philippine Patent Application No. 35526 on July 10, 1987, for losartan, a hypertension and heart-failure treatment. The application was entrusted to Atty. Nicanor D. Mapili, its resident agent. On June 7, 1988, the application was assigned to an examiner, who mailed an office action on July 19, 1988. Dupont failed to respond within four months, resulting in abandonment as of September 20, 1988. Mapili’s death in 1996 prompted the execution of a new Power of Attorney, but no status inquiries were made until December 2000. After receiving a second office action in January 2002, Dupont filed, on May 29, 2002, a Petition for Revival under Section 113 of the 1962 Revised Rules, arguing it lacked actual knowledge of abandonment. The Director of Patents denied revival for being out of time, and the Director GenCase Digest (G.R. No. 174379)
Facts:
- Parties and Patent Application
- Petitioner E.I. Dupont de Nemours and Co., an American corporation, assignee of U.S. inventors Carini, Duncia, and Wong.
- Filed Philippine Patent Application No. 35526 on July 10, 1987 for losartan (an antihypertensive drug) before the Bureau of Patents, Trademarks & Technology Transfer, through resident agent Atty. Nicanor D. Mapili.
- Abandonment and Revival Proceedings
- Office Action (Paper No. 2) dated January 30, 2002 notified petitioner of abandonment since September 20, 1988 for failure to respond and required new Power of Attorney.
- May 29, 2002 – petitioner filed a new Power of Attorney and a Petition for Revival under Section 113, arguing lack of notice of abandonment and of counsel’s death.
- Administrative Decisions
- April 18, 2002 – Director of Patents denied revival as filed beyond the four‐month period; no discretion to extend.
- October 22, 2003 – Director‐General of the IPO affirmed the denial on appeal.
- Court of Appeals Proceedings
- Petitioner filed a Rule 45 petition for review; August 31, 2004 – CA granted revival, excusing counsel’s gross negligence.
- Therapharma, Inc. sought and was granted leave to intervene (Resolution January 31, 2006) as a local losartan competitor with vested rights.
- August 30, 2006 – CA Amended Decision reversed itself, denied revival on grounds of petitioner’s inexcusable negligence and prejudice to public and third‐party interests.
- Supreme Court Petition
- October 19, 2006 – petitioner filed a petition for review on certiorari under Rule 45 assailing CA’s Amended Decision and Resolution.
- Respondents filed comments; petitioner filed reply; memoranda were submitted.
Issues:
- Procedural Questions
- Did the petition comply with Rule 45, Section 4’s requirement to attach material portions of the record?
- Was Rule 45 the proper remedy, or should Rule 65 certiorari have been used?
- Does the petition raise factual questions beyond the scope of Rule 45 review?
- Intervention
- Did the CA err in allowing Therapharma, Inc. to intervene under Rule 19 of the Rules of Court?
- Revival of Patent Application
- Did petitioner commit inexcusable negligence in prosecuting and reviving its application?
- Would revival prejudice third‐party rights and the public interest?
- Miscellaneous
- Does the Schuartz doctrine bind the applicant to counsel’s negligence?
- Has the invention become part of the public domain?
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)