Dupont Nemours v. Francisco
REITERATIONFacts
1. The Antecedents: E.I. Dupont Nemours and Company (E.I. Dupont Nemours), as assignee of inventors David John Carini, John Jonas Vytautas Duncia, and Pancras Chor Bun Wong, filed Philippine Patent Application No. 35526 on July 10, 1987, for Angiotensin II Receptor Blocking Imidazole (losartan), a medication used to treat hypertension and congestive heart failure. The invention was subsequently produced and marketed by E.I. Dupont Nemours' licensee, Merck, Sharpe, and Dohme Corporation, under the brand names Cozaar and Hyzaar. The underlying dispute centers on the revival of this patent application after it was declared abandoned due to the applicant's failure to respond to an office action. 2. Procedural History: The patent application was initially handled by local resident agent Atty. Nicanor D. Mapili. After Atty. Mapili's death and the discovery of the application's abandonment, E.I. Dupont Nemours, through new counsel, filed a Petition for Revival on May 29, 2002. The Director of Patents denied this petition on April 18, 2002, for being filed out of time. E.I. Dupont Nemours appealed to the Director-General of the Intellectual Property Office, who also denied the appeal. The case then moved to the Court of Appeals, which initially granted the Petition for Revival but later reversed its decision upon reconsideration, denying the revival. Therapharma, Inc., a competitor marketing its own losartan product, was allowed to intervene in the Court of Appeals proceedings. The present case is a Petition for Review on Certiorari before the Supreme Court, assailing the Court of Appeals' Amended Decision that denied the revival of the patent application. 3. The Petition: E.I. Dupont Nemours filed this Petition for Review on Certiorari under Rule 45 of the Rules of Court, assailing the Court of Appeals' Amended Decision that denied the revival of Philippine Patent Application No. 35526. The petitioner argues that its failure to respond to the office action was due to the negligence of its former counsel, Atty. Mapili, and that it was not aware of the abandonment until much later. It contends that its Petition for Revival was timely filed under Section 113 of the 1962 Revised Rules of Practice. The petitioner also challenges the Court of Appeals' decision to allow the intervention of Therapharma, Inc., arguing that patent revival proceedings are ex parte and that intervention would prejudice its rights and violate confidentiality. The core arguments revolve around whether the negligence of counsel binds the client, the timeliness of the revival petition, and the propriety of intervention in such proceedings, all while considering the public interest and the rights of third parties like Therapharma, Inc.
Issue(s)
Whether the Petition for Review on Certiorari complied with Rule 45, Section 4 of the Rules of Court. Whether petitioner should have filed a petition for certiorari under Rule 65 of the Rules of Court; and whether the Petition for Review on Certiorari raises questions of fact. Whether the Court of Appeals erred in allowing the intervention of respondent Therapharma, Inc. Whether the Court of Appeals erred in denying petitioner's appeal for the revival of its patent application on the grounds that (a) petitioner committed inexcusable negligence in the prosecution of its patent application; and (b) third-party rights and the public interest would be prejudiced by the appeal. Whether Schuartz applies to this case in that the negligence of a patent applicant's counsel binds the applicant. Whether the invention has already become part of public domain. Whether the revival of the patent application would prejudice public interest.
Ruling
The Supreme Court denied the Petition for Review on Certiorari and affirmed the Resolution dated January 31, 2006, and the Amended Decision dated August 30, 2006, of the Court of Appeals.
Ratio Decidendi
On compliance with Rule 45, Section 4: The Court found that petitioner substantially complied with Rule 45, Section 4, by attaching the Court of Appeals' decisions and resolutions, which quoted extensive portions of the records. Furthermore, petitioner later submitted additional documents in its Consolidated Reply, satisfying the third procedural guidepost in Magsino v. De Ocampo. On the propriety of the mode of appeal and questions of fact: The Court held that a petition for review on certiorari under Rule 45 is the proper remedy when the Court of Appeals has already resolved both the intervention and the merits of the case, even if it involves questions of fact, as exceptions to the rule on conclusiveness of findings of fact exist. The Court clarified that a question of law arises when there is doubt as to the applicable law on a set of facts, whereas a question of fact arises from doubt as to the truth or falsity of facts. The issue of whether Republic Act No. 165 allows intervention requires a determination of applicable law, not a re-evaluation of evidence, thus presenting a question of law. On the propriety of intervention: The Court ruled that the Rules of Court, not the 1962 Revised Rules of Practice, govern proceedings before the Court of Appeals. Under Rule 19 of the Rules of Court, a court has discretion to allow intervention if the intervenor has a legal interest and the intervention will not unduly delay or prejudice the adjudication of the rights of the original parties. Therapharma, Inc. demonstrated a legal interest as a local competitor and had received threats of legal action from E.I. Dupont Nemours' licensee, justifying its intervention. On the denial of the revival of the patent application: The Court affirmed the denial, holding that the revival petition was filed 13 years after the abandonment date (September 20, 1988), far beyond the four-month period prescribed by Section 113 of the 1962 Revised Rules of Practice. The Court emphasized that the period for revival is counted from the mailing of the notice of abandonment, not from actual notice. Even under the current Intellectual Property Code, the period is three months, and no extension is provided. On inexcusable negligence: The Court found E.I. Dupont Nemours and its counsel, Atty. Mapili, to be inexcusably negligent. Atty. Mapili failed to respond to the Office Action, leading to abandonment, and did not revive the application within the prescribed period. E.I. Dupont Nemours itself was negligent in failing to monitor its application for eight years and only inquiring about its status after learning of Atty. Mapili's death four years later. The Court reiterated the principle that the negligence of counsel binds the client, citing Schuartz v. Court of Appeals. On the invention being part of the public domain: The Court clarified that a mere patent application does not vest any right before the issuance of the patent. The right of priority under the Paris Convention is only relevant for determining who has a better right among conflicting applicants, not for reviving an abandoned application. The invention's disclosure through the application process, even with a priority date, does not prevent it from being considered abandoned if the application is not prosecuted. On public interest: The Court considered the public interest in the accessibility of losartan, a medication for hypertension. It noted that competition, as demonstrated by Therapharma, Inc.'s entry into the market, lowers prices and increases accessibility. Granting the revival of E.I. Dupont Nemours' application, despite its negligence, would prejudice public interest and Therapharma, Inc.'s vested rights.
Main Doctrine
The revival of an abandoned patent application is subject to strict procedural rules, and failure to comply with the reglementary periods, particularly due to inexcusable negligence of counsel or the applicant, will result in the forfeiture of the right to revive, even if the invention is for a medicine, as public interest and third-party rights must be considered.