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E.I. Dupont De Nemours and Co.

(assignee of inventors David Carino, CA also found that Therapharma had already invested P20M to
Jonas Duncia and Pancras Wong) v. IPO Director Emma Francisco, develop its own losartan product.
Bureau of Patents Director Efipanio Velasco, Therapharma, Inc.  On October 19, 2006, petitioner filed the present case. Petitioner
G.R. 174379;August 31, 2016. argues that it was not negligent in the prosecution of its patent
application since it was Atty. Mapili or his heirs who failed to
Doctrine: A patent is granted to provide rights and protection to the inform it of crucial developments with regard to its patent
inventor after an invention is disclosed to the public. It also seeks to application. It argues that as a client in a foreign country, it does
restrain and prevent unauthorized persons from unjustly profiting from not have immediate supervision over its local counsel so it should
a protected invention. However, ideas not covered by a patent are free not be bound by its counsel's negligence.
for the public to use and exploit. Thus, there are procedural rules on
Issue:
the application and grant of patents established to protect against any
infringement. To balance the public interests involved, failure to comply Whether or not the patent application of the petitioner should be
with strict procedural rules will result in the failure to obtain a patent. revived.
Facts: Held:
 Petitioner is a Delaware- based corporation. In 1987, petitioner No.
filed an application for PH patent before Bureau of Patents.  Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of
 Said application was for Angiotensin II Receptor Blocking Practice, a patent application is deemed abandoned if the
Imidazole (losartan), an invention related to the treatment of applicant fails to prosecute the application within 4 months from
hypertension and congestive heart failure. The product (under the the date of the mailing of the notice of the last action by the
brandnames Cozaar and Hyzaar) was produced and marketed by Bureau of Patents, Trademarks, and Technology Transfer, and not
Merck, Sharpe, and Dohme Corporation, licensee of petitioner. from applicant's actual notice.
 Said application was handled by a Filipino lawyer, Atty. Nicanor  Sec. 113 of 1962 Revised Rules of Practice, an abandoned patent
Mapili. application may only be revived within 4 months from the date of
 In 2000, petitioner’s new counsel, Ortega, et al., sent the IPO a abandonment, provided it is shown to the satisfaction of the
letter requesting that an office action be issued on the Director that the delay was unavoidable. An application not
petitioner’s patent application. revived within the specified period shall be deemed forfeited.
 On January 30, 2002, IPO Patent Examiner sent an office action  Sec. 113 has since been superseded by Section 133.4 of the
(Paper No. 2) stating that there were no documents shown that Intellectual Property Code, Rule 930 of the Rules and Regulations
the authority to prosecute the patent application was transferred on Inventions, and Rule 929 of the Revised Implementing Rules
from Atty. Mapili to Ortega, et al. Hence, an official revocation of and Regulations for Patents, Utility Models and Industrial Design.
Power of Attorney of Atty. Mapili and appointment of Ortega, et The period of four (4) months from the date of abandonment,
al. by petitioner is required before further action can be however, remains unchanged.
undertaken on the patent application. Also, it was noted by the  According to the records of the Bureau of Patents, Trademarks,
Examiner that the application was deemed abandoned since it and Technology Transfer Chemical Examining Division, petitioner
took 13 years for petitioner to request for an office action. filed its patent application on July 10, 1987. It was assigned to an
 On May 29, 2002, petitioner replied to Paper No. 2 by submitting examiner on June 7, 1988. An Office Action was mailed to Atty.
a Power of Attorney authorizing Ortega, et al. to handle its patent Mapili, on July 19, 1988. Because petitioner failed to respond
application. within the allowable period, the application was deemed
 Petitioner also filed petition for revival of its patent application. abandoned on September 20, 1988. Under Sec. 113, petitioner
 In its petition, they argued that it was only in 1996 that they had until January 20, 1989 to file for a revival of the patent
became aware of Atty. Mapili’s death when its senior-level lawyer application. Its Petition for Revival, however, was filed on May 29,
visited PH, and that it was only on January 30, 2002, that it 2002, 13 years after the date of abandonment.
received a notice of abandonment sent by IPO (Paper No. 2).  Even if the delay was unavoidable, or the failure to prosecute was
 On April 18, 2002, Director of Patents denied the petition for due to fraud, accident, mistake, or excusable negligence, or the
revival for having been filed out of time. It ruled that although it petition was accompanied by a complete proposed response, or
appears that Atty. Mapili was remiss in his obligations as counsel all fees were paid, the same would still be denied since these
for the petitioner, the abandoned application cannot be revived regulations only provide a 4-month period within which to file for
because of the limitations provided in Rule 115 of Revised Rules the revival of the application. The rules do not provide any
of Practice. exception that could extend this four (4)-month period to 13 years.
 Petitioner appealed to Director-General of IPO. On August 26, Petitioner’s patent application, therefore, should not be revived
2002, said appeal was denied. since it was filed beyond the allowable period.
 On November 21, 2003, petitioner appealed to CA.  Even assuming that the 4-month period could be extended,
 On August 31, 2004, CA granted the appeal allowing the revival of petitioner was inexcussably negligent in the prosecution of its
the patent application. CA believed that petitioner should be patent application. Negligence is inexcusable if its commission
accorded some relief from the gross negligence of its former could have been avoided through ordinary diligence and
counsel, Atty. Mapili. prudence. It is also settled that negligence of counsel binds the
 IPO moved to reconsider. Meanwhile, Therapharma moved for client as this "ensures against the resulting uncertainty and
leave to intervene arguing that CA’s decision affected its “vested” tentativeness of proceedings if clients were allowed to merely
rights to sell its own product. Therapharma alleged that it was disown their counsels' conduct."
granted application by BFAD for a losartan product “Lifezar,” a  Petitioner's resident agent, Atty. Mapili, was undoubtedly
medication for hypertension, and that prior to its application, it negligent in failing to respond to the Office Action sent by the
made sure that no patent application for similar products exists Bureau of Patents, Trademarks, and Technology Transfer on June
and that petitioner’s application was considered abandoned by 19, 1988. Because of his negligence, petitioner's patent
the Bureau of Patents. application was declared abandoned. He was again negligent
 In January 2006, CA granted the motion for leave to intervene of when he failed to revive the abandoned application within 4
Therapharma. months from the date of abandonment.
 Petitioner moved to reconsider. In August 2006, CA reversed its  Petitioner tries to disown Atty. Mapili 's conduct by arguing that it
August 31, 2004 decision ruling that the public interest would be was not informed of the abandonment of its patent application or
prejudiced by the revival of petitioner’s patent application. CA of Atty. Mapili's death. By its own evidence, however, petitioner
held that petitioner and Atty. Mapili were inexcusably negligent. 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.
 Furthermore, contrary to the posturing of petitioner, Schuartz is
applicable. Petitioner attempts to distinguish itself from Schuartz
by arguing that the petitioners in Schuartz had actual notice of
abandonment while petitioner here was only able to have actual
notice when it received Paper No. 2.
 The 4-month period in Sec. 111 of the 1962 Revised Rules of
Practice, however, 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.
Petitioner's patent application cannot be revived simply because
the period for revival has already lapsed and no extension of this
period is provided for by the 1962 Revised Rules of Practice.
 Moreover, Public interest will be prejudiced if, despite petitioner's
inexcusable negligence, its petition for revival is granted. Even
without a pending patent application and the absence of any
exception to extend the period for revival, petitioner was already
threatening to pursue legal action against Therapharma if it
continued to 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
losartan products may result in higher prices. For the protection
of public interest, petitioner’s patent application should be
considered a forfeited patent application.

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. SO ORDERED.