Case Summary (G.R. No. 174379)
Patent Application and Abandonment
On July 10, 1987, Petitioner’s local resident agent, Atty. Nicanor D. Mapili, filed the patent application. The IPO’s Chemical Examining Division mailed an Office Action on July 19, 1988, requiring a response within four months. No response was filed, and the application was declared abandoned on September 20, 1988, under Section 111(a) of the 1962 Rules of Practice.
Petition for Revival and IPO Denials
Petitioner learned of the abandonment in January 2002, submitted a new Power of Attorney, and on May 29, 2002 filed a Petition for Revival under Section 113 of the 1962 Rules of Practice. The Director of Patents denied revival on April 18, 2002, for lateness; the Director General affirmed that denial on October 22, 2003, reiterating that the four-month revival period could not be extended.
Appeal to Court of Appeals
Petitioner sought review before the Court of Appeals in November 2003. On August 31, 2004, the Court of Appeals granted revival, relaxing the rule that a client is bound by its counsel’s negligence, citing gross negligence by Atty. Mapili and affording Petitioner relief from that negligence.
Therapharma’s Intervention
Therapharma, having invested in its Lifezar product and threatened with infringement proceedings by Merck (DuPont’s licensee), moved to intervene before the Court of Appeals. The CA granted leave to intervene on January 31, 2006, finding that Therapharma had a direct legal interest and would be prejudiced by the revival of Petitioner’s application.
Court of Appeals Amended Decision
On August 30, 2006, the Court of Appeals reversed its 2004 ruling and denied revival. It held that: (1) Petitioner’s inexcusable negligence precluded extension of the four-month revival period; (2) public interest in affordable hypertension medication would be prejudiced by loss of competition; and (3) Therapharma’s substantial investment and reliance on the application’s abandonment warranted protection of its rights.
Petition for Review on Certiorari: Procedural Compliance
Petitioner filed a Rule 45 Petition for Review on Certiorari, attaching CA decisions and, upon directive, later supplementing the record with relevant pleadings, correspondence, and agency documents. The Supreme Court found substantial compliance with Rule 45’s requirement to attach material portions of the record.
Proper Mode of Appeal: Rule 45 vs Rule 65
Therapharma argued that Rule 65 certiorari was the proper remedy to challenge the CA’s interlocutory intervention order. The Court held that once the CA resolved both intervention and the merits, Rule 45 review lay to correct errors of judgment, whereas Rule 65 is confined to grave abuse of discretion.
Sufficiency of Record Attachments under Rule 45
Applying the Galvez/Magsino guideposts, the Court determined that only relevant portions needed attachment, that some documents were quoted in the CA decisions, and that later supplementation cured any deficiency. Consequently, the petition was not dismissed for lack of annexes.
Intervention under Rule 19 of the Rules of Court
Intervention on appeal is governed by Rule 19 of the Rules of Court. The Court of Appeals properly exercised its discretion by assessing Therapharma’s standing, absence of undue delay or prejudice, and the inability to protect its interests in a separate action.
Revival of Abandoned Application: Four-Month Period
Under Section 113 of the 1962 Rules and its successor provisions, revival of an abandoned application must occur within four months of abandonment. Petitioner filed its revival petition nearly thirteen years later; no statutory or equitable exception permits extending that period, and the application was deemed forfeited.
Counsel’s Negligence Binding the Applicant
Negligence is inexcusable if ordinary diligence could have prevented it. A client must monitor its counsel. Petitioner’
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Facts of the Case
- E.I. Dupont de Nemours and Company (“E.I. Dupont Nemours”) is a Delaware-incorporated assignee of U.S. inventors Carini, Duncia and Wong.
- On July 10, 1987, it filed Philippine Patent Application No. 35526 for an angiotensin II receptor blocking imidazole (losartan) used to treat hypertension and congestive heart failure.
- Its U.S. licensee, Merck Sharpe & Dohme Corporation, marketed the compound under the brand names Cozaar and Hyzaar in the Philippines.
- From 1972 to 1996, Atty. Nicanor D. Mapili served as resident agent for most of E.I. Dupont Nemours’ Philippine patent filings.
Patent Examination and Abandonment
- The application was assigned to a patent examiner on June 7, 1988.
- An initial office action was mailed July 19, 1988, requiring applicant’s response under Rule 112.
- No response was filed; the application was declared abandoned on September 20, 1988, under Section 111(a) of the 1962 Revised Rules of Practice.
- Section 113 of the same Rules allowed revival only within four months of abandonment upon a showing of unavoidable delay and payment of a revival fee.
Petition for Revival before the Intellectual Property Office
- On December 19, 2000, new counsel wrote to the IPO requesting issuance of an office action.
- On January 30, 2002, Examiner Precila O. Bulihan issued Paper No. 2:
• Noted absence of formal revocation of Mapili’s power of attorney and lack of appointment of new counsel.
• Highlighted that the examiner had acted promptly in 1988 and that no transactions occurred since the declared abandonment.
• Criticized the 13-year delay in requesting office action. - On May 29, 2002, E.I. Dupont Nemours submitted a new power of attorney and filed a Petition for Revival with cost, invoking Section 113 and arguing lack of notice of abandonment and counsel’s death.
- On April 18, 2002, the Director of Patents denied the petition as filed beyond the reglementary period, applying the doctrine that a client is bound by counsel’s mistakes.
- On October 22, 2003, D