E.I DUPONT DE NEMOURS AND CO. vs. DIRECTOR EMMA C. FRANCISCO, et. al.

G.R. No. 174379, August 31, 2016

LEONEN, J.:

DOCTRINE:

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.

FACTS:

In 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the Bureau
of Patents. The application was for Angiotensin II Receptor Blocking Imidazole (losartan), an
invention related to the treatment of hypertension and congestive heart failure. The patent
application was handled by Atty. Nicanor D. Mapili (Atty. Mapili), a local resident agent who
handled a majority of E.I. Dupont Nemours' patent applications in the Philippines from 1972 to
1996.

In 2000, Dupont, through its new counsel, sent a letter requesting Office action for the issuance
of its application and subsequently filed a petition for Revival, because its former counsel, Atty.
Mapili did not inform them about the abandonment of the application, and that they were not
aware that Atty. Mapili had already passed away. It was only in 2002 when actual notice of
abandonment came into their knowledge.

On April 18, 2002, the Director of Patents denied the Petition for Revival for having been filed
out of time. This was affirmed by the Director-General of the Intellectual Property Office on
October 22, 2003. The Court of Appeals on August 31, 2004 made a decision in favor of the
petitioner and granted it some relief from the gross negligence of its former lawyer. The OSG
moved for reconsideration.

During the pendency of the case, Therapharma Inc., moved for leave to intervene and was
granted for the reason that the revival of the application of E.I. Dupont would prejudice the
public interest for there are at least 12.6 million Filipinos who are afflicted by hypertension, and
the revival thereof would also prejudice Therapharma’s interest, on that it had already invested
more than P20,000,000 to develop its own losartan product (lifezar) and that Therapharma
acted in good faith when it marketed its product.

Therapharma argued that it already filed an application for product registration before the
Bureau of Food and Drugs in 2003 and was granted a Certificate of Product Registration in
2004. It conducted patent searches and found that no patent application for losartan had been
filed either before the Bureau of Patents or before Intellectual Property Office.

CA granted the motion to intervene by Therapharma, Inc. and reversed its former own decision.
Hence, this petition.

ISSUE:
Whether the patent application of Losartan by Dupont should be revived.

RULING:

NO. Petitioner’s patent application should not be revived since it was filed beyond the allowable
period.

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.
Section 113 states:

113. Revival of abandoned application.-An application abandoned for failure to

According to the records of the Bureau of Patents, Trademarks, and Technology Transfer
Chemical Examining Division, petitioner filed Philippine Patent Application No. 35526 on July
10, 1987. It was assigned to an examiner on June 7, 1988. An Office Action was mailed to
petitioner's agent, Atty. Mapili, on July 19, 1988. Because the petitioner failed to respond within
the allowable period, the application was deemed abandoned on September 20, 1988. Under
Section 113, petitioner had until January 20, 1989 to file for a revival of the patent application.
Its Petition for Revival, however, was filed on May 30, 2002, 13 years after the date of
abandonment.

Section 113 has since been superseded by Section 133.4 of the Intellectual Property Code,
Rule 930 of the Rules and Regulations on Inventions, and Rule 929 of the Revised
Implementing Rules and Regulations for Patents, Utility Models and Industrial Design. The
period of four (4) months from the date of abandonment, however, remains unchanged. The
Intellectual Property Code even provides for a shorter period of three (3) months within which to
file for revival.

An application not revived in accordance with this Rule shall be deemed forfeited.

Even if the delay was unavoidable, or the failure to prosecute was due to fraud, accident,
mistake, or excusable negligence, or the Petition was accompanied by a complete proposed
response, or all fees were paid, the Petition would still be denied since these regulations only
provide a four (4 )- month period within which to file for the revival of the application. The rules
do not provide any exception that could extend this four (4)-month period to 13 years.

Petitioner’s patent application, therefore, should not be revived since it was filed beyond the
allowable period.

Even assuming that the four (4)-month period could be extended, petitioner was inexcussably
negligent in the prosecution of its patent application.

Although it was in petitioner’s discretion as a foreign client to put its complete trust and
confidence on its local resident agent, there was a correlative duty on its part to be diligent in
keeping itself updated on the progress of its patent applications. Its failure to be informed of the
abandonment of its patent application was caused by its own lack of prudence. Petitioner issued
a Power of Attorney and Appointment of Resident Agent in favor of Bito, Lozada, Ortega &
Castillo on March 25, 1996 but it only requested a status update of Philippine Patent Application
No. 35526 on December 14, 2000, or four (4) years after it learned of Atty. Mapili’s death. The
Power of Attorney shows that it was only to inform the Bureau that all notices relating to its
pending patent applications should be sent to it and there was no request for specific status
update. The four (4)-month period in Section 111 of the 1962 Revised Rules of Practice 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.

United States and the Philippines are signatories to the Paris Convention for the Protection of
Industrial Property, an applicant who has filed a patent application in the United States may
have a right of priority over the same invention in a patent application in the Philippines.
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.