PHIL. PHARMAWEALTH, INC. V. PFIZER, INC. & PFIZER and not a decision.

nd not a decision. Since the IP Code and the Rules and

(PHIL.), INC. G.R. NO. 167715, 17 NOVEMBER 2010
Facts: Pfizer is the registered owner of a patent pertaining to
Sulbactam Ampicillin. It is marketed under the brand name
“Unasyn.” Sometime in January and February 2003, Pfizer
discovered that Pharmawealth submitted bids for the supply
of Sulbactam Ampicillin to several hospitals without the
Pfizer’s consent. Pfizer then demanded that the hospitals
cease and desist from accepting such bids. Pfizer also
demanded that Pharmawealth immediately withdraw its bids
to supply Sulbactam Ampicillin. Pharmawealth and the
hospitals ignored the demands.
Pfizer then filed a complaint for patent infringement with a
prayer for permanent injunction and forfeiture of the
infringing products. A preliminary injunction effective for 90
days was granted by the IPO’s Bureau of Legal Affairs (IPO-
BLA). Upon expiration, a motion for extension filed by Pfizer
was denied. Pfizer filed a Special Civil Action for Certiorari in
the Court of Appeals (CA) assailing the denial.
While the case was pending in the CA, Pfizer filed with the
Regional Trial Court of Makati (RTC) a complaint for
infringement and unfair competition, with a prayer for
injunction. The RTC issued a temporary restraining order,
and then a preliminary injunction.
Pharmawealth filed a motion to dismiss the case in the CA,
on the ground of forum shopping. Nevertheless, the CA
issued a temporary restraining order. Pharmawealth again
filed a motion to dismiss, alleging that the patent, the main
basis of the case, had already lapsed, thus making the case
moot, and that the CA had no jurisdiction to review the order
of the IPO-BLA because this was granted to the Director
General. The CA denied all the motions. Pharmawealth filed
a petition for review on Certiorari with the Supreme Court.
Issues:
a) Can an injunctive relief be issued based on an action of
patent infringement when the patent allegedly infringed has
already lapsed?
b) What tribunal has jurisdiction to review the decisions of
the Director of Legal Affairs of the Intellectual Property
Office?
c) Is there forum shopping when a party files two actions with
two seemingly different causes of action and yet pray for the
same relief?
Regulations are bereft of any remedy regarding interlocutory
orders of the IPO-BLA, the only remedy available to Pfizer is
to apply the Rules and Regulations suppletorily. Under the
Rules, a petition for certiorari to the CA is the proper remedy.
This is consistent with the Rules of Court. Thus, the CA had
jurisdiction.
c) Yes. Forum shopping is defined as the act of a party
against whom an adverse judgment has been rendered in
one forum, of seeking another (and possibly favorable)
opinion in another forum (other than by appeal or the special
civil action of certiorari), or the institution of two (2) or more
actions or proceedings grounded on the same cause on the
supposition that one or the other court would make a
favorable disposition.
The elements of forum shopping are: (a) identity of parties,
or at least such parties that represent the same interests in
both actions; (b) identity of rights asserted and reliefs prayed
for, the reliefs being founded on the same facts; (c) identity
of the two preceding particulars, such that any judgment
rendered in the other action will, regardless of which party is
successful, amount to res judicata in the action under
consideration. This instance meets these elements.
The parties are clearly identical. In both the complaints in the
BLA-IPO and RTC, the rights allegedly violated and the acts
allegedly violative of such rights are identical, regardless of
whether the patents on which the complaints were based are
different. In both cases, the ultimate objective of Pfizer was
to ask for damages and to permanently prevent
Pharmawealth from selling the contested products.
Relevantly, the Supreme Court has decided that the filing of
two actions with the same objective, as in this instance,
constitutes forum shopping.
Owing to the substantial identity of parties, reliefs and issues
in the IPO and RTC cases, a decision in one case will
necessarily amount to res judicata in the other action.

Held:

a) No. The provision of R.A. 165, from which the Pfizer’s

patent was based, clearly states that "[the] patentee shall
have the exclusive right to make, use and sell the patented
machine, article or product, and to use the patented process
for the purpose of industry or commerce, throughout the
territory of the Philippines for the term of the patent; and
such making, using, or selling by any person without the
authorization of the patentee constitutes infringement of the
patent."

Clearly, the patentee’s exclusive rights exist only during the

term of the patent. Since the patent was registered on 16
July 1987, it expired, in accordance with the provisions of
R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July
2004, Pfizer no longer possessed the exclusive right to
make, use, and sell the products covered by their patent.
The CA was wrong in issuing a temporary restraining order
after the cut-off date.

b) According to IP Code, the Director General of the IPO

exercises exclusive jurisdiction over decisions of the IPO-
BLA. The question in the CA concerns an interlocutory order,
In-N-Out Burger, Inc. vs. Sehwani Inc., et. al
Facts:
Petitioner IN-N-OUT BURGER, INC., is a business entity
incorporated under the laws of California. It is a signatory to
the Convention of Paris on Protection of Industrial Property
and the TRIPS Agreement. It is engaged mainly in the
restaurant business, but it has never engaged in business in
the Philippines.
Respondents Sehwani, Incorporated and Benita Frites, Inc.
are corporations organized in the Philippines. Sometime in
1991, Sehwani filed with the BPTTT an application for the
registration of the mark “IN N OUT (the inside of the letter
“O” formed like a star). Its application was approved and a
certificate of registration was issued in its name on 1993. In
2000, Sehwani, Incorporated and Benita Frites, Inc. entered
into a Licensing Agreement, wherein the former entitled the
latter to use its registered mark, “IN N OUT.”
Sometime in 1997, In-N-Out Burger filed trademark and
service mark applications with the Bureau of Trademarks for
the “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design. In
2000, In-N-Out Burger found out that Sehwani, Incorporated
had already obtained Trademark Registration for the mark
“IN N OUT (the inside of the letter “O” formed like a star).”
Also in 2000, In-N-Out Burger sent a demand letter directing
Sehwani, Inc. to cease and desist from claiming ownership of
the mark “IN-N-OUT” and to voluntarily cancel its trademark
registration. Sehwani Inc. did not accede to In-N-Out
Burger’s demand but it expressed its willingness to surrender
its registration for a consideration.
In 2001 In-N-Out Burger filed before the Bureau of Legal
Affairs an administrative complaint against the Sehwani, Inc.
and Benita Frites, Inc. for unfair competition and cancellation
of trademark registration.
Issues:
 Whether or not the Intellectual Property Office (an
administrative body) have jurisdiction of cases
involving provisions of the IPC (e.g. unfair
competition).[1]
 Whether or not there was unfair competition.
Held:
FIRST ISSUE: Yes, the IPO (an administrative body) has
jurisdiction in cases involving provisions of the IPC (e.g.
unfair competition) due to the following reasons:
 Section 10 of the Intellectual Property Code
specifically identifies the functions of the
Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.“The Bureau of
Legal Affairs shall have the following functions:
10.1 Hear and decide opposition to the application for
registration of marks; cancellation of trademarks; subject
to the provisions of Section 64, cancellation of patents and
utility models, and industrial designs; and petitions for
compulsory licensing of patents;
10.2 (a) Exercise original jurisdiction in administrative
complaints for violations of laws involving intellectual
property rights; Provided, That its jurisdiction is limited
to complaints where the total damages claimed are not
less than Two hundred thousand pesos
(P200,000): Provided, futher, That availment of the
provisional remedies may be granted in accordance with
the Rules of Court. Xxx
Xxx
(vi) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office,
or the suspension of the validity thereof for such period of
time as the Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
Xxx
(viii) The assessment of damages;
Unquestionably, petitioner’s complaint, which seeks the
cancellation of the disputed mark in the name of
respondent Sehwani, Incorporated, and damages for
violation of petitioner’s intellectual property rights, falls
within the jurisdiction of the IPO Director of Legal
Affairs.
 While Section 163 thereof vests in civil courts
jurisdiction over cases of unfair competition,
nothing in the said section states that the
regular courts have sole jurisdiction over unfair
competition cases, to the exclusion of
administrative bodies.
 Sections 160 and 170, which are also found
under Part III of the Intellectual Property Code,
recognize the concurrent jurisdiction of civil
courts and the IPO over unfair competition
cases.
These two provisions read:
Section 160. Right of Foreign Corporation to Sue in
Trademark or Service Mark Enforcement Action. Any
foreign national or juridical person who meets the
requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil
or administrative action hereunder for opposition,
cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it
is licensed to do business in the Philippines under existing
laws.
Section 170. Penalties. Independent of the civil
and administrative sanctions imposed by law, a criminal
penalty of imprisonment from two (2) years to five (5) years
and a fine ranging from Fifty thousand pesos (P50,000) to
Two hundred thousand pesos (P200,000), shall be imposed
on any person who is found guilty of committing any of the
acts mentioned in Section 155, Section168, and
Subsection169.1.
Based on the foregoing discussion, the IPO Director of
Legal Affairs had jurisdiction to decide the petitioner’s
administrative case against respondents and the IPO
Director General had exclusive jurisdiction over the
appeal of the judgment of the IPO Director of Legal
Affairs.
SECOND ISSUE: Yes. The evidence on record shows that
Sehwani Inc. and Benita Frites were not using their
registered trademark but that of In-n-Out Burger. Sehwani
and Benita Frites are also giving their products the general
appearance that would likely influence the purchasers to
believe that their products are that of In-N-Out Burger. The
intention to deceive may be inferred from the similarity of the
goods as packed and offered for sale, and, thus, an action
will lie to restrain unfair competition. The respondents’
frauduulent intention to deceive purchasers is also apparent
in their use of the In-N-Out Burger in business signages.
The essential elements of an action for unfair competition are
(1) confusing similarity in the general appearance of the
goods and (2) intent to deceive the public and defraud a
competitor. The confusing similarity may or may not result
from similarity in the marks, but may result from other
external factors in the packaging or presentation of the
goods. The intent to deceive and defraud may be inferred
from the similarity of the appearance of the goods as offered
for sale to the public. Actual fraudulent intent need not be
shown.
ROMA DRUG v. RTC. G.R. No. 149907. April 16, 2009
FACTS:

Roma Drug was raided by the NBI and BFAD and seized
several important medicines. It appears that Roma Drug is
one of six drug stores which were raided on or around the
same time upon the request of SmithKline which was the
duly registered corporation to distribute such medicines. The
medicines of Roma Drug was purchased directly from
abroad and not through SmithKline.

During preliminary investigation, Rodriguez challenged the

constitutionality of the law on Special Law on Counterfeit
Drugs (SLCD) regarding the distribution of their medicine
that were considered counterfeit although they only bought it
directly and not from SmithKline.

ISSUE: Whether the contention of Roma Drug is correct.

RULING:

Yes. Section 7 of Rep. Act No. 9502 unequivocally grants

third persons the right to import drugs or medicines whose
patent were registered in the Philippines by the owner of the
product. The unqualified right of private third parties such as
petitioner to import or possess “unregistered imported drugs”
in the Philippines is further confirmed by the “Implementing
Rules to Republic Act No. 9502” promulgated on November
4, 2008.

It may be that Rep. Act No. 9502 did not expressly repeal
any provision of the SLCD. However, it is clear that the
SLCO’s classification of “unregistered imported drugs” as
“counterfeit drugs,” and of corresponding criminal penalties
therefore are irreconcilably in the imposition conflict with
Rep. Act No. 9502 since the latter indubitably grants private
third persons the unqualified right to import or otherwise use
such drugs. Where a statute of later date, such as Rep. Act
No. 9502, clearly reveals an intention on the part of the
legislature to abrogate a prior act on the subject that
intention must be given effect.

The prosecution of petitioner is no longer warranted.

SMITH KLINE BECKMAN CORPORATION v. COURT OF both compounds have the effect of neutralizing parasites in
APPEALS, et al. 409 SCRA 33 (2003) animals, identity of result does not amountto infringement of
When the language of its claims is clear and distinct, the patent unless Albendazole operates in substantially the same
patentee is bound thereby and may not claim anything beyond way or by substantially the same means as the patented
them. compound, even though it performs the same function and
Petitioner Smith Kline Beckman Corporation (SKBC) was achieves the same result.
granted by the Philippine Patent Office Letters Patent No. In other words, the principle or mode of operation must be the
14561 over an invented compound entitled “Methods same or substantially the same. The doctrine of equivalents
and Compositions for Producing Biphasic thus requires satisfaction of the function-means-and-result
Parasiticide Activity Using Methyl 5 Propylthio-2- test, the patentee having the burden to show that all
Benzimidazole Carbamate.” Such compound is claimed to be three components of such equivalency test are met.
an active ingredient in fighting various parasites in certain
types of domestic and livestock animals. Respondent Tryco
Pharma (Tryco) sells veterinary products including a drug
Impregon which contains Albendazole as an active
ingredient which fights against parasites in animals. Petitioner
SKBC then filed an action against respondent Tryco for patent
infringement claiming that the patent granted to them includes
said Albendazole. In their defense respondent Tryco alleges
that Letters Patent No. 14561 granted to petitioner SKBC does
not include Albendazole for nowhere is such word found in the
patent. The Trial Court rendered its decision in favor of
respondent Tryco which was affirmed by the Court of Appeals.

ISSUES:
Whether or not the Court of Appeals erred in not finding that
Albendazole is included in petitioners Letter Pattent No.
14561

HELD:
From an examination of the evidence on record, the Court
finds nothing infirm in the appellate court’s conclusions with
respect to the principal issue of whether Tycho Pharma
committed patent infringement to the prejudice of SKBC. The
burden of proof to substantiate a charge for patent
infringement rests on the plaintiff. In the case at bar,
petitioner’s evidence consists primarily of its Letters Patent
No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products
Division, by which it sought to show that its patent for the
compound methyl 5 propylthio-2- benzimidazole carbamate
also covers the substance Albendazole. From a reading of the
9 claims of Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the compound
Albendazole.
When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything beyond
them. And so are the courts bound which may not add to or
detract from the claims matters not expressed or necessarily
implied, nor may they enlarge the patent beyond the scope of
that which the inventor claimed and the patent office allowed,
even if the patentee may have been entitled to something
more than the words it had chosen would include. It bears
stressing that the mere absence of the word Albendazole in
Letters Patent No. 14561 is not determinative of
Albendazole’s non-inclusion in the claims of the patent. While
Albendazole is admittedly a chemical compound that exists by
a name different from that covered in SKBC’s letters patent,
the language of Letter Patent No. 14561 fails to yield anything
at all regarding Albendazole. And no extrinsic evidence had
been adduced to prove that Albendazole inheres in SKBC’s
patent in spite of its omission therefrom or that the meaning of
the claims of the patent embraces the same. While SKBC
concedes that the mere literal wordings of its patent cannot
establish Tyco Pharma’s infringement, it urges the Court to
apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also
takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some
modification and change, performs substantially the same
function in substantially the same way to achieve substantially
the same result. Yet again, a scrutiny of SKBC’s evidence fails
to convince the Court of the substantial sameness of SKBC’s
patented compound and Albendazole. While