Week 11 Case 30 G.R. No. 174379 Flashcards
A patent is granted to provide rights and protection to the inventor after an invention is disclosed to the public. It also seeks to restrain and prevent
unauthorized persons from unjustly profiting from a protected invention.
However, ideas not covered by a patent are free for the public to use and exploit. Thus, there are procedural rules on the application and grant of patents
established to protect against any infringement. To balance the public interests involved, failure to comply with strict procedural rules will result in the failure to obtain a patent.
July 10, 1987: E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the Bureau of Patents, Trademarks, and Technology Transfer. The application was for Angiotensin II Receptor Blocking Imidazole (losartan),
an invention related to the treatment of hypertension and congestive heart failure. The product was produced and marketed by Merck, Sharpe, and Dohme Corporation (Merck), E.I. Dupont Nemours’ licensee, under the brand names Cozaar and Hyzaar.
In response, Patent Examiner Precila O. Bulihan of the Intellectual Property Office sent an office action marked Paper No. 2 on January 30, 2002:
“The appointed attorney on record was the late Atty. Nicanor D. Mapili. The reconstituted documents provided no documents that will show that the authority to prosecute the instant application is now transferred to the present counsel. No official revocation on record is
available. Therefore, an official revocation of the Power of Attorney of the former counsel and the appointment of the present by the applicant is
therefore required before further action can be undertaken.”
While the case was pending at the Court of Appeals, in the interim, Therapharma, Inc. moved for leave to intervene (intervention) and admit
the Attached Motion for Reconsideration dated October 11, 2004 30 and argued
that the Court of Appeals’ August 31, 2004 Decision directly affects its “vested”
rights to sell its own product.
Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs its own application for a losartan product “Lifezar,” a
medication for hypertension, which the Bureau granted. It argued that it made a search of existing patent applications for similar products before its
application, and that no existing patent registration was found since E.I. Dupont Nemours’ application for its losartan product was considered
abandoned by the Bureau of Patents, Trademarks, and Technology Transfer.
It alleged that sometime in 2003 to 2004, there was an exchange of correspondence between Therapharma, Inc. and Merck. In this exchange,
Merck informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the Philippines and that it would pursue any legal action
necessary to protect its product.
What were the proofs that the Chemical Examining Division (CED) of the Intellectual Property Office acted on the patent request?
- It did not fail to issue the proper and timely action on the instant application. CED record shows that the subject application was assigned to the examiner on June 7, 1988. A month after that was July 19, 1988, the first Office Action was mailed but was declared abandoned as of September 20, 1988 for applicant’s failure to respond within the period as prescribed under Rule 112. Since then, no other official transactions were recorded.
- It was noted that it took thirteen (13) long years for the
applicant to request for such Office Action. This is not
expected of the applicant since it is an acceptable fact that
almost all inventors/applicants wish for the early disposition
for their applications.
Was the respondent able to show that it had legal interest to intervene?
Respondent Therapharma, Inc. was able to show that it had legal interest to intervene in the appeal of petitioner’s revival of its patent application. While
its intervention may have been premature as no patent has been granted yet, petitioner’s own actions gave rise to respondent Therapharma, Inc.’s right to protect its losartan product.
Respondent Therapharma, Inc. expressed its willingness to enter into a Non-Use and Confidentiality Contract if there was a pending patent application. After several negotiations on the clauses of the contract, the parties
were unable to come to an agreement.
What was the effect of the mandatory disclosure agreement? What were the lawmakers concern about this, especially on the period of protection of registered patents?
The mandatory disclosure requirement in the TRIPS Agreement precipitated the shift from a first-to-invent system to a first-to-file system. The
first-to-file system required citizens of foreign countries to register their patents in the Philippines before they can sue for infringement.
Lawmakers, however, expressed their concern over the extension of the period of protection for registered patents. Under Section 21 of Republic
Act No. 165, a patent had a term of 17 years. The Intellectual Property Code extended the period to 20 years.
How long does it take to revive an abandoned patent application?
An abandoned patent application may only be revived within four (4) months from the date of abandonment. No extension of this period is provided by the 1962 Revised Rules of Practice.
The four (4)-month period in Section 111 of the 1962 Revised Rules of Practice, however, is not counted from actual notice of abandonment but from
mailing of the notice. Since it appears from the Intellectual Property Office’s records that a notice of abandonment was mailed to petitioner’s resident agent on July 19, 1988, the time for taking action is counted from this period. Petitioner’s patent application cannot be revived simply because the period for
revival has already lapsed and no extension of this period is provided for by the 1962 Revised Rules of Practice.
What does the right of priority confer?
The right of priority given to a patent applicant is only relevant when there are two or more conflicting patent applications on the same invention. Because a right of priority does not automatically grant letters patent to an applicant, possession of a right of priority does not confer any property rights on the applicant in the absence of an actual patent.
A patent applicant with the right of priority is given preference in the grant of a patent when there are two or more applicants for the same invention.
Is the right to priority equivalent to granting of a patent?
However, this right of priority does not immediately entitle a patent applicant the grant of
a patent. A right of priority is not equivalent to a patent. Otherwise, a patent holder of any member-state of the Paris Convention need not apply for patents in other countries where it wishes to exercise its patent.
How long does the protection of a grant of a patent last?
The grant of a patent provides protection to the patent holder from the indiscriminate use of the invention. However, its mandatory publication also
has the correlative effect of bringing new ideas into the public consciousness.
After the publication of the patent, any person may examine the invention and
develop it into something further than what the original patent holder may
have envisioned. After the lapse of 20 years, the invention becomes part of the public domain and is free for the public to use.
What is the ultimate goal of a patent system?
The ultimate goal of a patent system is to bring new designs and technologies into the public domain through disclosure. Ideas, once disclosed to the public without the protection of a valid patent, are subject to appropriation without significant restraint.
How does the law attempt to strike an ideal balance between the two interests:
1) the public which will benefit from new ideas; and
2) the inventors who must be protected?
“(The p)atent system thus embodies a carefully
crafted bargain for encouraging the creation and disclosure
of new useful and non-obvious advances in technology and
design, in return for the exclusive right to practice the
invention for a number of years. The inventor may keep his
invention secret and reap its fruits indefinitely. In
consideration of its disclosure and the consequent benefit to
the community, the patent is granted. An exclusive
enjoyment is guaranteed him for 17 years, but upon the
expiration of that period, the knowledge of the invention
inures to the people, who are thus enabled to practice it and
profit by its use.”
What is the three-fold purpose of the patent law?
The patent law has a three-fold purpose:
First, the patent law seeks to
foster and reward invention.
Second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires.
Third, the stringent
requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public.
How long does a patent holder’s proprietary rights last?
The patent holder’s proprietary right over the patent only lasts for three (3) years from the grant of the patent, after which any person may be allowed
to manufacture, use, or sell the invention subject to the payment of royalties.
What was the main reason why the Therapharma’s intervention was granted?
Public interest will be prejudiced if, despite petitioner’s inexcusable negligence, its Petition for Revival is granted. Even without a pending patent
application and the absence of any exception to extend the period for revival, petitioner was already threatening to pursue legal action against respondent
Therapharma, Inc. if it continued to develop and market its losartan product, Lifezar. Once petitioner is granted a patent for its losartan products, Cozaar
and Hyzaar, the loss of competition in the market for losartan products may
result in higher prices. For the protection of public interest, Philippine Patent Application No. 35526 should be considered a forfeited patent application.
