Title
E.I. DUPONT DE NEMOURS AND CO. vs. FRANCISCO
Case
G.R. No. 174379
Decision Date
Aug 31, 2016
E.I. Dupont sought to revive an abandoned 1987 patent application for a hypertension drug, denied due to procedural lapses and negligence, impacting public interest and third-party rights.
patent application
losartan
negligence
A

Case Summary (G.R. No. 174379)

Petitioner, Respondents and the Subject Matter

Petitioner sought revival of Philippine Patent Application No. 35526 for losartan. The Intellectual Property Office (formerly Bureau of Patents, Trademarks, and Technology Transfer) denied revival; Therapharma intervened in the appellate proceedings claiming vested commercial interests arising from its commercialization of a losartan product.

Key Dates and Procedural Landmarks

Relevant docketed dates and acts in the record include: filing of Philippine Patent Application No. 35526 on July 10, 1987; assignment to an examiner on June 7, 1988; an Office Action mailed July 19, 1988; the application recorded as abandoned on September 20, 1988; Paper No. 2 (office action/notification) dated January 30, 2002; submission of a new Power of Attorney and a Petition for Revival in late May 2002; administrative denials at the Bureau and Director-General levels; Court of Appeals decision of August 31, 2004 granting revival; Court of Appeals Resolution of January 31, 2006 allowing Therapharma’s intervention; Court of Appeals Amended Decision of August 30, 2006 reversing the grant of revival; petitioner’s petition for review to the Supreme Court; and the Supreme Court’s final disposition affirming the Court of Appeals’ Amended Decision.

Applicable Law and Rules Cited

Governing instruments and rules invoked include the 1962 Revised Rules of Practice before the Philippines Patent Office in Patent Cases (notably Sections 111 and 113 on abandonment and revival), Republic Act No. 165 (former patent law), Republic Act No. 8293 (Intellectual Property Code of the Philippines, 1997) and its implementing rules (including provisions on publication, confidentiality, revival, and compulsory licensing), Rules of Court (Rule 19 on intervention, Rule 45 and Rule 65 on modes of appeal and certiorari), and international obligations (Paris Convention and TRIPS) referred to in legislative history.

Procedural History and Relief Sought

After the Bureau of Patents deemed the application abandoned and denied revival, the Director-General affirmed that denial. Petitioner appealed to the Court of Appeals, which initially granted revival (Aug. 31, 2004). Therapharma moved to intervene in the appellate proceedings; the Court of Appeals allowed intervention (Jan. 31, 2006). Upon reconsideration the Court of Appeals issued an Amended Decision (Aug. 30, 2006) reversing its earlier ruling and denying revival on grounds including prejudice to public interest and third-party rights. Petitioner sought review in the Supreme Court under Rule 45.

Issues Presented to the Supreme Court

The parties framed multiple issues for resolution, including whether petitioner’s Rule 45 petition complied with procedural requirements for attachments; whether Rule 65 certiorari rather than Rule 45 was the proper remedy; whether questions of fact precluded review; whether Therapharma’s intervention was proper; whether revival was properly denied because of petitioner’s inexcusable negligence and because revival would prejudice third-party rights and public interest; whether the doctrine that counsel’s negligence binds the client (as in Schuartz) applied; and whether the invention had entered the public domain.

Mode of Appeal and Jurisdictional Analysis

The Court explained that special civil action certiorari under Rule 65 is reserved to correct jurisdictional defects or grave abuse of discretion and is available only where there is no plain, speedy, and adequate remedy. Where the Court of Appeals has already resolved intervention and the merits, an appeal by petition for review under Rule 45 is the proper recourse to challenge conclusions of law and, in appropriate cases, to evaluate the admissibility and weight of evidence. The Court found Rule 45 to be the apt mode to review the Court of Appeals’ decision in this case.

Compliance with Rule 45 Attachment Requirements

The Supreme Court applied the Galvez/Magsino guideposts to assess petitioner’s failure to append all material portions of the record required under Rule 45, Section 4. It concluded petitioner had initially attached the Court of Appeals’ decision, resolution, and amended decision—documents quoting extensive record portions sufficient to give due course—and that petitioner subsequently filed the missing annexes and supporting documents after respondents were directed to comment. Under the guideposts, petitioner substantially complied and the petition was not dismissed for lack of attachments.

Intervention on Appeal and Confidentiality of Patent Proceedings

The Court held that appeals from decisions of the Director-General of the IPO are governed by the Rules of Court (pursuant to RA 8293), not by prior intra-office rules limiting participation. Once before the Court of Appeals, intervention is governed by Rule 19, which permits intervention by a person with a legal interest in the matter, subject to considerations whether the intervention will unduly delay or prejudice adjudication and whether intervenor’s rights may be protected in a separate proceeding. The Court found Therapharma demonstrated a legal interest: it had invested in and was marketing a losartan product, had obtained product registration, had searched patent records and relied on the application’s recorded abandonment, and had been threatened with legal action by petitioner’s licensee. The Court further observed that confidentiality in patent applications under the older 1962 Rules had been curtailed by the Intellectual Property Code’s publication regime (publication after 18 months and permissive inspection thereafter), so absolute secrecy could not bar intervention on appeal. The Court therefore upheld the Court of Appeals’ grant of leave to intervene.

Revival Rule, Statutory Time Limit and Its Application

The Court reiterated that under the relevant patent practice rules an abandoned patent application may be revived only within the reglementary short period (four months under older rules; the Intellectual Property Code and implementing rules preserved a three- or four-month revival window in later formulations). The 1962 Revised Rules’ Section 113 required revival to be sought within four months from the date of abandonment. The records showed an Office Action mailed July 19, 1988, and abandonment recorded September 20, 1988, which set the revival period’s start. Petitioner’s revival petition was filed many years later (2002), far beyond the statutory revival period. The rules contain no provision for extending that limited time to revive an application; accordingly the application was forfeited and revival could not be granted.

Counsel’s Negligence, Schuartz Precedent, and Binding Effect on Client

The Court applied settled law that negligence of counsel binds the client and that a litigant must exercise ordinary diligence to keep informed of case status. The Schuartz precedent—where counsel’s failure to act led to forfeiture—was found applicable. The record reflected prolonged inaction by petitioner and its resident agent: long intervals without status inquiries (petitioner’s first follow-up in record only after several years), delay

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