FACTS: E.I.
Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation
organized under the laws of the State of Delaware. On July 10, 1987, E.I.
Dupont Nemours filed Philippine Patent Application No. 35526 before the Bureau
of Patents, Trademarks, and Technology Transfer. The application covers 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. 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.chanleslaw
On December 19, 2000, E.I. Dupont Nemours’ new counsel, Ortega, Del Castillo,
Bacorro, Odulio, Calma, and Carbonell, made a request to the Intellectual
Property Office to act on Philippine Patent Application No. 35526 to which
they replied by informing them that the appointed attorney on record was the
late Atty. Nicanor D. Mapili and that the reconstituted documents provided no official
revocation of his Power of Attorney and the appointment of the new applicant is
required.
On May 29, 2002, E.I. Dupont Nemours submitted a Power of Attorney executed by Miriam Meconnahey, authorizing Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and Carbonell to prosecute and handle its patent applications and also filed a Petition for Revival with Cost of Philippine Patent Application No. 35526. They argued that Atty. Makapili did not inform them of the abandonment of their application, that the petitioner was not aware that its agent has already died.
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 and in the interim, Therapharma, Inc. moved for leave to intervene. 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. CA granted the motion to intervene by Therapharma, Inc. and reversed its former own decision. Hence the review on certiorari under Rule 45.
ISSUE: Whether or not the patent application of losartan by Dupont should be revived.
HELD: No, the patent application for its revival was filed out of time.
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.
Velasco, Jr., Del Castillo, and Mendoza, JJ., concur.
Brion, J., on leave
FiPa Legal Consulting 