Case Summary (G.R. No. 167715)
Key Dates
• July 16, 1987 – Issuance of Philippine Letters Patent No. 21116.
• July 16, 2004 – Expiry of Patent No. 21116 (17-year term under RA 165).
• January–February 2003 – Discovery of petitioner’s bids to supply Sulbactam Ampicillin without consent.
• July 15, 2003 – BLA-IPO issues 90-day writ of preliminary injunction.
• October 15, 2003 & January 23, 2004 – BLA-IPO denies motions to extend and for reconsideration.
• August 24, 2004 & April 6, 2005 – RTC of Makati issues temporary restraining order and preliminary injunction.
• January 18 & April 11, 2005 – Court of Appeals grants and maintains temporary restraining order.
• November 17, 2010 – Supreme Court decision.
Applicable Law
• Republic Act No. 165 (1967) – governs patent term and rights at time of patent issuance.
• Republic Act No. 8293 (1997) – Intellectual Property Code, appellate procedure for IPO decisions.
• 1997 Rules of Court – procedures for injunctions (Rule 58) and special civil action for certiorari (Rule 65).
Procedural History
- Respondents file complaint for patent infringement with BLA-IPO, obtain ex parte injunction.
- BLA-IPO denies extension of preliminary injunction; respondents seek certiorari before CA.
- Meanwhile respondents file RTC suit for infringement and unfair competition, securing TRO and PI.
- Petitioner moves to dismiss CA petition for forum shopping; CA nevertheless approves bond and issues TRO.
- Petitioner moves to dismiss on mootness (patent lapsed) and on jurisdictional grounds; CA denies.
- Petitioner elevates case to the Supreme Court by certiorari.
Issues
a) Whether injunctive relief may issue after patent expiration.
b) Whether the Court of Appeals or the IPO Director General has jurisdiction to review interlocutory BLA-IPO orders.
c) Whether respondents committed forum shopping by pursuing parallel actions before BLA-IPO and RTC.
Expiration of Patent and Injunctive Relief
• Under Section 37, RA 165, patent monopoly exists only for its 17-year term; Patent No. 21116 lapsed on July 16, 2004.
• Post-expiry, respondents have no exclusive rights to protect, rendering any injunction to enforce Patent No. 21116 moot.
• Issuance of a temporary restraining order after patent expiry lacks legal basis: no clear and unmistakable right remains, nor any risk of irreparable harm tied to that right.
• Accordingly, extension of the preliminary injunction should have been dismissed as moot and academic.
Jurisdiction to Review BLA-IPO Interlocutory Orders
• RA 8293 vests exclusive appellate jurisdiction over IPO decisions in the Director General, but is silent on interlocutory orders.
• Rules and Regulations on Administrative Complaints prohibit appeal of interlocutory orders; no alternative administrative remedy exists.
• Rule 65, Section 1, Rules of Court allows certiorari to challenge lack or excess of jurisdiction and grave abuse of discretion.
• Interlocutory orders denying extension of injunction raise purely legal issues, fall outside doctrine of primary jurisdiction.
• The Court of Appeals properly entertained certiorari; the IPO Director General lacks authority to review interlocutory BLA-IPO rulings.
Forum Shopping
• Elements present: identical parties (responsibilities), identical rights asserted (exclusive sale of
Case Syllabus (G.R. No. 167715)
Facts and Subject Matter
- Pfizer, Inc. and Pfizer (Phil.) Inc. (respondents) own Philippine Letters Patent No. 21116, issued July 16, 1987, valid until July 16, 2004.
- Patent No. 21116 claims a method of increasing the effectiveness of a beta-lactam antibiotic by co-administering a compound of formula IA; it covers the combination Sulbactam/Ampicillin (marketed as “Unasyn”).
- Zuellig Pharma Corporation is the exclusive distributor of “Unasyn” in the Philippines under an agreement of January 23, 2001.
- In early 2003, Pfizer learned that Phil Pharmawealth, Inc. (petitioner) submitted bids to supply Sulbactam/Ampicillin to hospitals without Pfizer’s consent.
- Pfizer demanded that the hospitals and Phil Pharmawealth cease infringing activities and withdraw outstanding bids; all demands were ignored.
Procedural History
- May 2003: Pfizer filed a complaint for patent infringement with the Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO), seeking a TRO, preliminary and permanent injunction, damages, forfeiture, and impounding of infringing goods.
- July 15, 2003: BLA-IPO granted a 90-day preliminary injunction.
- October 15, 2003: BLA-IPO denied Pfizer’s motion to extend the injunction; January 23, 2004: motion for reconsideration also denied.
- Early 2004: Pfizer filed a special civil action for certiorari with the Court of Appeals (CA) to review BLA-IPO’s denial of extension and to secure a mandatory injunction.
- While CA proceedings were pending, Pfizer filed a separate infringement and unfair competition complaint before the Regional Trial Court (RTC) of Makati City, Branch 138, seeking similar injunctive reliefs and damages.
- August 24, 2004: RTC granted a conditioned TRO; April 6, 2005: RTC issued a preliminary injunction enjoining petitioner from dealing in Sulbactam/Ampicillin.
- January 18, 2005 and April 11, 2005: CA issued resolutions approving Pfizer’s bond and issuing a TRO, then denied petitioner’s motions to dismiss and to reconsider.
- Petitioner elevated