Pharmawealth v. Pfizer
REITERATIONFacts
1. The Antecedents: Pfizer, Inc. and Pfizer (Phil.) Inc. (collectively, Pfizer) filed a complaint for patent infringement against Phil Pharmawealth, Inc. (Pharmawealth) with the Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO). Pfizer alleged that Pharmawealth infringed Philippine Letters Patent No. 21116, which covers a method of increasing the effectiveness of a beta-lactam antibiotic, specifically ampicillin sodium/sulbactam sodium, marketed under the brand name "Unasyn." Pfizer claimed that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin without their consent, violating their intellectual property rights and causing damage. Pfizer sought permanent injunction, damages, and forfeiture of infringing products, along with a temporary restraining order and preliminary injunction. 2. Procedural History: The BLA-IPO issued a preliminary injunction against Pharmawealth, which was effective for ninety days. Upon denial of Pfizer's motion for extension of this writ and subsequent denial of their motion for reconsideration, Pfizer filed a special civil action for certiorari with the Court of Appeals (CA) assailing these denials. While this petition was pending, Pfizer also filed a separate complaint for infringement and unfair competition with the Regional Trial Court (RTC) of Makati City, seeking similar injunctive relief. The RTC issued a temporary restraining order and later a writ of preliminary injunction. Pharmawealth moved to dismiss the CA petition, citing forum shopping. The CA issued a temporary restraining order and later denied Pharmawealth's motions to dismiss, leading to the present petition. 3. The Petition: Pharmawealth filed a petition for review on certiorari with the Supreme Court, seeking to annul the CA's Resolutions. The petition raises three main issues: (a) whether injunctive relief can be issued based on a lapsed patent; (b) which tribunal has jurisdiction to review the BLA-IPO's decisions; and (c) whether Pfizer engaged in forum shopping. Pharmawealth argues that since the patent expired on July 16, 2004, Pfizer no longer possessed exclusive rights, rendering the CA's injunctive relief improper and the case moot. They also contend that the CA erred in assuming jurisdiction over interlocutory orders of the BLA-IPO and that Pfizer committed forum shopping by filing parallel actions with the IPO and the RTC.
Issue(s)
Whether an injunctive relief can be issued based on a patent infringement action when the patent allegedly infringed has already lapsed. What tribunal has jurisdiction to review the orders of the Director of the Bureau of Legal Affairs of the Intellectual Property Office. Whether the filing of separate actions with the Intellectual Property Office and the Regional Trial Court, praying for the same relief, constitutes forum shopping.
Ruling
The Court ruled in favor of Phil Pharmawealth, partly granting the petition. The assailed CA Resolutions were reversed and set aside. The petition for certiorari before the CA was dismissed as moot and academic. Civil Case No. 04-754 before the RTC was dismissed on the ground of litis pendentia.
Ratio Decidendi
On the propriety of injunctive relief for a lapsed patent: The Court held that an injunctive relief cannot be issued based on a patent infringement action when the patent has already lapsed. Section 37 of Republic Act No. 165, the governing law at the time, clearly states that a patentee's exclusive right to make, use, and sell the patented product exists only for the term of the patent. In this case, Philippine Letters Patent No. 21116 expired on July 16, 2004. Therefore, after this date, Pfizer no longer possessed the exclusive right to make, use, or sell the products covered by the patent. Consequently, the issuance of a temporary restraining order and preliminary injunction by the CA in favor of Pfizer was improper, as there was no longer a clear and unmistakable right to be protected. The CA should have granted Phil Pharmawealth's motion to dismiss the petition for certiorari as the issue of extending the injunction was rendered moot and academic by the patent's expiration. On the jurisdiction to review BLA-IPO orders: The Court clarified that while the Director General of the IPO exercises appellate jurisdiction over decisions of the Director of the BLA-IPO under Section 7(b) of RA 8293, this does not apply to interlocutory orders. RA 8293 is silent on remedies for questioning interlocutory orders, and Section 1(c), Rule 14 of the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights states that interlocutory orders are not appealable. In the absence of an administrative remedy, the Rules of Court apply suppletorily. Thus, Pfizer correctly resorted to a special civil action for certiorari with the CA to question the BLA-IPO's denial of its motion to extend the preliminary injunction. The Court emphasized that the issue of extending the injunction was a purely legal question, not requiring the special knowledge or administrative discretion of the IPO, and thus fell within the exception to the doctrine of primary jurisdiction, making the CA the proper forum. The CA's determination of whether the BLA-IPO committed grave abuse of discretion was an exercise of judicial power. On forum shopping: The Court agreed with Phil Pharmawealth that Pfizer was guilty of forum shopping. Forum shopping involves filing multiple actions based on the same cause of action and praying for the same relief, creating the possibility of conflicting decisions. The elements are: (a) identity of parties; (b) identity of rights asserted and reliefs prayed for, founded on the same facts; and (c) identity of the preceding particulars such that any judgment would result in res judicata. In this case, there was an identity of parties. While Pfizer argued the causes of action were different due to different patents, the Court found the core cause of action identical: Phil Pharmawealth's alleged act of importing, distributing, selling, or offering for sale Sulbactam Ampicillin products violated Pfizer's exclusive right to sell these products. The reliefs sought in both the IPO and RTC complaints were substantially the same: damages for infringement and a permanent injunction against selling the products. The Court noted that the ultimate objective in both complaints was identical. However, considering Pfizer's candidness in disclosing the pendency of other cases and their potential misunderstanding regarding different patents, the forum shopping was deemed not willful and deliberate. Therefore, the subsequent case (Civil Case No. 04-754) was dismissed on the ground of litis pendentia, rather than both cases being dismissed with prejudice.
Main Doctrine
An injunctive relief cannot be issued based on a patent infringement action when the patent allegedly infringed has already lapsed, as the exclusive right to make, use, and sell the patented product exists only during the term of the patent. Furthermore, filing separate actions with the Intellectual Property Office (IPO) and the Regional Trial Court (RTC) praying for the same relief based on the same cause of action constitutes forum shopping.