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application. CA believed that petitioner should be accorded some relief from the gross
GR 174379 August 31, 2016 J. Leonen negligence of its former counsel, Atty. Mapili.
E.I. Dupont De Nemours and Co. (assignee of inventors David Carino, Jonas Duncia IPO moved to reconsider. Meanwhile, Therapharma moved for leave to intervene
and Pancras Wong) v. IPO Director Emma Francisco, Bureau of Patents Director arguing that CA’s decision affected its “vested” rights to sell its own product.
Efipanio Velasco, Therapharma, Inc. Therapharma alleged that it was granted application by BFAD for a losartan product
“Lifezar,” a medication for hypertension, and that prior to its application, it made sure
that no patent application for similar products exists and that petitioner’s application
FACTS was considered abandoned by the Bureau of Patents.
Petitioner is a Delaware- based corporation. In 1987, petitioner filed an application for In January 2006, CA granted the motion for leave to intervene of Therapharma.
PH patent before Bureau of Patents.
Petitioner moved to reconsider. In August 2006, CA reversed its August 31, 2004
Said application was for Angiotensin II Receptor Blocking Imidazole (losartan), an decision ruling that the public interest would be prejudiced by the revival of petitioner’s
invention related to the treatment of hypertension and congestive heart failure. The patent application. CA held that petitioner and Atty. Mapili were inexcusably negligent.
product (under the brandnames Cozaar and Hyzaar) was produced and marketed by CA also found that Therapharma had already invested P20M to develop its own
Merck, Sharpe, and Dohme Corporation, licensee of petitioner. losartan product.
Said application was handled by a Filipino lawyer, Atty. Nicanor Mapili. On October 19, 2006, petitioner filed the present case. Petitioner argues that it was not
negligent in the prosecution of its patent application since it was Atty. Mapili or his
In 2000, petitioner’s new counsel, Ortega, et al., sent the IPO a letter requesting that heirs who failed to inform it of crucial developments with regard to its patent
an office action be issued on the petitioner’s patent application. application. It argues that as a client in a foreign country, it does not have immediate
supervision over its local counsel so it should not be bound by its counsel's negligence.
On January 30, 2002, IPO Patent Examiner sent an office action (Paper No. 2) stating
that there were no documents shown that the authority to prosecute the patent
application was transferred from Atty. Mapili to Ortega, et al. Hence, an official
revocation of Power of Attorney of Atty. Mapili and appointment of Ortega, et al. by ISSUE/RULING
petitioner is required before further action can be undertaken on the patent application.
WON the patent application of petitioner should be revived – NO
Also, it was noted by the Examiner that the application was deemed abandoned since
it took 13 years for petitioner to request for an office action. Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice, a patent
application is deemed abandoned if the applicant fails to prosecute the application
On May 29, 2002, petitioner replied to Paper No. 2 by submitting a Power of Attorney
within 4 months from the date of the mailing of the notice of the last action by the
authorizing Ortega, et al. to handle its patent application.
Bureau of Patents, Trademarks, and Technology Transfer, and not from applicant's
Petitioner also filed petition for revival of its patent application. actual notice.
In its petition, they argued that it was only in 1996 that they became aware of Atty. Sec. 113 of 1962 Revised Rules of Practice, an abandoned patent application may
Mapili’s death when its senior-level lawyer visited PH, and that it was only on January only be revived within 4 months from the date of abandonment, provided it is shown to
30, 2002, that it received a notice of abandonment sent by IPO (Paper No. 2). the satisfaction of the Director that the delay was unavoidable. An application not
revived within the specified period shall be deemed forfeited.
On April 18, 2002, Director of Patents denied the petition for revival for having been
filed out of time. It ruled that although it appears that Atty. Mapili was remiss in his Sec. 113 has since been superseded by Section 133.4 of the Intellectual Property
obligations as counsel for the petitioner, the abandoned application cannot be revived Code, Rule 930 of the Rules and Regulations on Inventions, and Rule 929 of the
because of the limitations provided in Rule 115 of Revised Rules of Practice. Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial
Design. The period of four (4) months from the date of abandonment, however,
Petitioner appealed to Director-General of IPO. On August 26, 2002, said appeal was remains unchanged.
denied.
According to the records of the Bureau of Patents, Trademarks, and Technology
On November 21, 2003, petitioner appealed to CA. Transfer Chemical Examining Division, petitioner filed its patent application on July 10,
1987. It was assigned to an examiner on June 7, 1988. An Office Action was mailed to
Atty. Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable The 4-month period in Sec. 111 of the 1962 Revised Rules of Practice, however, is not
period, the application was deemed abandoned on September 20, 1988. Under Sec. counted from actual notice of abandonment but from mailing of the notice. Since it
113, petitioner had until January 20, 1989 to file for a revival of the patent application. appears from the Intellectual Property Office's records that a notice of abandonment
Its Petition for Revival, however, was filed on May 29, 2002, 13 years after the date of was mailed to petitioner's resident agent on July 19, 1988, the time for taking action is
abandonment. 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
Even if the delay was unavoidable, or the failure to prosecute was due to fraud, provided for by the 1962 Revised Rules of Practice.
accident, mistake, or excusable negligence, or the petition was accompanied by a
complete proposed response, or all fees were paid, the same would still be denied Moreover, Public interest will be prejudiced if, despite petitioner's inexcusable
since these regulations only provide a 4-month period within which to file for the revival negligence, its petition for revival is granted. Even without a pending patent application
of the application. The rules do not provide any exception that could extend this four and the absence of any exception to extend the period for revival, petitioner was
(4)-month period to 13 years. Petitioner’s patent application, therefore, should not be already threatening to pursue legal action against Therapharma if it continued to
revived since it was filed beyond the allowable period. 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
Even assuming that the 4-month period could be extended, petitioner was losartan products may result in higher prices. For the protection of public interest,
inexcussably negligent in the prosecution of its patent application. Negligence is petitioner’s patent application should be considered a forfeited patent application.
inexcusable if its commission could have been avoided through ordinary diligence and
prudence. It is also settled that negligence of counsel binds the client as this "ensures
against the resulting uncertainty and tentativeness of proceedings if clients were
allowed to merely disown their counsels' conduct." WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and
the Amended Decision dated August 30, 2006 of the Court of Appeals are AFFIRMED.
Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond SO ORDERED.
to the Office Action sent by the Bureau of Patents, Trademarks, and Technology
Transfer on June 19, 1988. Because of his negligence, petitioner's patent application
was declared abandoned. He was again negligent when he failed to revive the
abandoned application within 4 months from the date of abandonment.
Petitioner tries to disown Atty. Mapili 's conduct by arguing that it was not informed of
the abandonment of its patent application or of Atty. Mapili's death. By its own
evidence, however, petitioner requested a status update from Atty. Mapili only on July
18, 1995, 8 years after the filing of its application. It alleged that it only found out about
Atty. Mapili 's death sometime in March 1996, as a result of its senior patent attorney's
visit to the Philippines. 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.
In Bernardo v. CA, "no prudent party will leave the fate of his case entirely to his
lawyer. It is the duty of a party-litigant to be in contact with his counsel from time to
time in order to be informed of the progress of his case." Even if Atty. Mapili's death
prevented petitioner from submitting a petition for revival on time, it was clearly
negligent when it subsequently failed to immediately apprise itself of the status of its
patent application.
FACTS: (4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and
Dean, thus it cannot be considered to use such term to be unfair competition against
Pearl and Dean is a corporation in the manufacture of advertising display units also
the petitioner.
known as light boxes, which were manufactured by Metro Industrial Services. A
copyright Registration was obtained in 1981. These were marketed in the name of
"Poster Ads". They also applied for a registration of trademark with the Bureau of
Patents in 1983, but was only approved in 19988. In 1985, petitioner had n agreement
with respondent Shoemart Inc (SMI) to install these light boxes in their Makati and
Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986, the
contract was rescinded unilaterally by SMI, and instead contracted with Metro
Industrial Services. They installed these lightboxes in different SM city branches,
including Cubao and Makati, with association with North Edsa Marketing Inc (NEMI),
SMI's sister company. Petitioner requested SMI and NEMI to put down their
installations of the light boxes, and payment of compensatory damages worth P20M.
Claiming that respondents failed to comply, they filed a case for infringement of
trademark and copyright, unfair competition and damages. RTC ruled in favor of
petitioner, but CA reversed.
ISSUES:
RULING: No to all.
(1) Copyright is a statutory right, subject to the terms and conditions specified in the
statute. Therefore, it can only cover the works falling within the statutory enumeration
or description. Since the copyright was classified under class "O" works, which
includes "prints, pictorial illustrations, advertising copies, labels, tags and box wraps,"
and does not include the light box itself. A lightbox, even admitted by the president of
petitioner company, was neither a literary nor an artistic work but an engineering or
marketing invention, thus not included under a copyright.
(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally
KHO vs. CA G.R. No. 115758 March 19, 2002 Intellectual Property Law, Trademark, copyright and patents are different intellectual property rights that cannot
Trademark, Copyright, Patent, Distinctions be interchanged with one another.
JUNE 2, 2019
FACTS: A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked
Petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for container of goods. In relation thereto, a trade name means the name or designation
the issuance of a writ of preliminary injunction against Summerville alleging that identifying or distinguishing an enterprise.
petitioner is the registered owner of the copyrights Chin Chun Su and Oval Facial
Cream Container/Case; that she also has patent rights on Chin Chun Su after Meanwhile, the scope of a copyright is confined to literary and artistic works which are
purchasing the same from Quintin Cheng, the registered owner thereof; that original intellectual creations in the literary and artistic domain protected from the
respondent Summerville advertised and sold petitioner’s cream products under the moment of their creation. Patentable inventions, on the other hand, refer to any
brand name Chin Chun Su, in similar containers that petitioner uses, thereby technical solution of a problem in any field of human activity which is new, involves an
misleading the public, and resulting in the decline in the petitioner’s business sales and inventive step and is industrially applicable.
income; and, that the respondents should be enjoined from allegedly infringing on the
copyrights and patents of the petitioner. Petitioner has no right to support her claim for the exclusive use of the subject trade
name and its container. The name and container of a beauty cream product are proper
The respondents alleged that Summerville is the exclusive and authorized importer, re- subjects of a trademark inasmuch as the same falls squarely within its definition. In
packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of order to be entitled to exclusively use the same in the sale of the beauty cream
Taiwan. product, the user must sufficiently prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent registration of the name and container
The RTC ruled in favor of KEC. would not guarantee her the right to the exclusive use of the same for the reason that
they are not appropriate subjects of the said intellectual rights.
After the denial of their motion for reconsideration, respondents filed a petition for
certiorari with the CA, praying for the nullification of the said writ of preliminary Consequently, a preliminary injunction order cannot be issued for the reason that the
injunction issued by the trial court. The CA rendered a Decision in favor of the petitioner has not proven that she has a clear right over the said name and container to
respondents. the exclusion of others, not having proven that she has registered a trademark thereto
or used the same before anyone did
In the meantime, the trial court went on to hear petitioner’s complaint for final injunction
and damages. The trial court rendered a Decision barring the petitioner from using the
trademark Chin Chun Su and upholding the right of the respondents to use the same,
but recognizing the copyright of the petitioner over the oval shaped container of the
beauty cream.
The CA denied the petitioner’s motions for reconsideration. Hence, this petition.
ISSUE:
Whether the copyright and patent over the name and container of a beauty cream
product would entitle the registrant to the use and ownership over the same to the
exclusion of others.
RULING:
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
As such, "Lavandera Ko," being a musical composition with words is protected under
the copyright law (Part IV, R.A. No. 8293) and not under the trademarks, service marks
and trade names law (Part III, R.A. No. 8293).
Considering, therefore, the above premise, this Court deems it proper to remand the
case to the RTC for its proper disposition since this Court cannot, based on the
records and some of the issues raised by both parties such as the cancellation of
petitioner's certificate of registration issued by the Intellectual Property Office, make a
factual determination as to who has the better right to use the trade/business/service
name, "Lavandera Ko."