REPUBLIC OF THE

PHILIPPINES
COURT OF APPEALS
MANILA

SPECIAL FIFTEENTH DIVISION

PFIZER, INC.1and PFIZER, CA-G.R. SP No.

INC.,2 107012
Petitioners, Members:

LAMPAS PERALTA, F.,

-versus- GONZALES-SISON, M.,
Chairperson
MACALINO, F. S.,3
and
JJ.
REGIONAL TRIAL COURT, Promulgated:
MAKATI CITY, BRANCH
149, RANDRIL JAN 26 2010
INTERNATIONAL CO., INC.
and SYNPENN RESEARCH,
INC.,

Respondents.

x-------------------------------------------------------------------------x
RESOLUTION

LAMPAS PERALTA, J. :

Before the Court is a “Manifestation on the Expiration of the

4
Patent in Issue and Motion to Dismiss” dated November 5, 2009
1
Also referred to in the body of the petition as "Pfizer USA."
2
Also referred to in the body of the petition as "Pfizer, Phils."
3
Acting Junior Member, per Office Order No. 14-10-ABR dated January 12, 2010.
4
pp. 843-845, Rollo
CA-G.R. SP No. 107012
2
Pfizer, Inc. vs.
RESOLUTIO
RTC
N
x--------------------------------
x

filed by private respondents Randril International Co., Inc. and

SynPenn Research, Inc., alleging that the subject matter of the
present petition for certiorari filed by petitioners had become moot
and academic because Philippine Patent No. 26810 had already
expired. The present petition is premised on the alleged grave
abuse of discretion of the trial court in denying petitioners'
application for a writ of preliminary injunction to enjoin the
respondents "from co
private itting further acts of infringement of the
5
Patent."

Records bear that petitioners are manufacturers of the

pharmaceutical product sulbactam which is one of two compounds
in the combination drug ampicillin sulbactam, distributed worldwide
by petitioners under the brand name “Unasyn.” The product was
covered by Philippine Patent No. 26810 in favor of petitioners for
the invention “Penicillanic Acid Derivatives, Composition and a
6
Process for the Preparation Thereof.” In May 2006, petitioners
allegedly discovered that private respondents are marketing a
pharmaceutical oral formulation of ampicillin sulbactam, which it
7
calls sultamicillin, under the brand name
“Zunamyn.”
On January 9, 2008, petitioners filed with the trial court a
complaint,8docketed as Civil Case No. 08-023, for “Patent
infringement and damages, with application for temporary
restraining order and/or preliminary injunction” against private
respondents. Private respondents filed their answer to the
complaint. Thereafter, petitioners' application for a writ
preliminary injunction was heard. In an Order dated July 3, 2008,
of

5
p. 72, Ibid.
6
p. 847, Ibid.
7
pp. 7-9, Ibid.
8
pp. 65-74, Ibid.
9
pp. 56-60, Ibid.
CA-G.R. SP No. 107012
3
Pfizer, Inc. vs.
RESOLUTIO
RTC
N
x--------------------------------
x

the trial court denied the application for a writ of

injunction.
preliminary

The factual allegations in the complaint were arized in

said Order
su as
follows:
“Plaintiff (petitioners herein) alleged that Pfizer, Inc. (USA)
is the registered owner of Patent No. 26810 issued by the
Intellectual Property Office of the Philippines on November 5,
1992, which has claims, inter alia, on the pharmaceutical
compound “sodium penicillanate 1,1-dioxide,” known by its
genetic pharmaceutical name sulbactam. Sulbactam is one of
the two compounds in the combination drug ampicillin and
sulbactam, also known as ampicillin sulbactam, which Pfizer
USA markets worldwide under the brand name “Unasyn”. The
combination drug is indicated for the treatment of infections.
Also, sulbactam and ampicillin are the two compounds bound
together comprising the molecular compound sultamicillin
tosylate, which Pfizer USA markets worldwide as “Unasyn”
tablets. Pfizer Phils., has been licensed by Pfizer USA, the
beneficial owner of the Patent to import, distribute, market and
sell ampicillim sulbactam under the brand name “Unasyn” in the
Philippines. The Bureau of Food and Drugs (BFAD) issued on
June 2, 2006, February 26, 2007 and June 15, 2007, Certificates
of Product Registration (CPR) Nos. DD-000861, DE-000230 and
DE-001841 respectively, under the brand name “Unasyn”
Powder for Injection (I.M./I.V.), in favor of Pfizer Phils. Also,
BFAD issued on September 2, 2003 and August 30, 2005, CPR
Nos. YZ-017932 and DC-001069 respectively, under the brand
name “Unasyn” Tablet for sultamicillin tosylate, in favor of Pfizer
Phils.

Sometime in May 2006, plaintiffs came to know that

Randril was distributing, marketing, offering to sell and selling,
through drugstores and to hospitals, without authority from
plaintiffs, a pharmaceutical oral formulation of “ampicillin
sulbactam”, which it calls sultamicillin, under the brand name
CA-G.R. SP No. 107012
4
Pfizer, Inc. vs.
RESOLUTIO
RTC
N
x--------------------------------
x

“Zunamyn”. Zunamyn is being manufactured for Randril by

SynPenn. Sultamicillin is a double ester in which ampicillin and
the ß-lactamase inhibitor sulbactam are linked via a methylene
group. Following oral administration in humans, sultamicillin is
hydrolyzed during absorption to providem sulbactamU and
ampicillin. In March 2006, Randril obtained from the BFAD, CPR
No. XY-31585 for Zunamyn, which refers to sultamicillin tosylate
in 750mg tablet, and with SynPenn as the manufacturer. To
protect their rights under the Patent, in three separate letters
dated July 11, 2006, May 3, 2007 and May 28, 2007, plaintiffs
notified defendants of the existence of the Patent and demanded
Randril and SynPenn to i ediately desist from co itting
further acts in violation of the Patent and withdraw their products
from the market within five (5) days from receipt of the notices.
However, defendants failed to comply therein. Thus, plaintiffs
conducted a market survey during the period of November 2007
and found out that defendants continued to manufacture,
distribute, market, offer to sell and sell the infringing products.”10

Petitioners' motion for reconsideration of the Order dated

July 3, 2008 was likewise denied by the trial court in an Order
dated November 14, 2008.11

Thus, petitioners filed before the Court the present petition

for certiorari which is premised on this
issue:
“WHETHER OR NOT THE RESPONDENT COURT
ABUSED ITS DISCRETION, AMOUNTING TO
LACK OR EXCESS OF JURISDICTION, WHEN IT
DENIED PETITIONERS' APPLICATION FOR WRIT
OF PRELIMINARY INJUNCTION AND THEIR
MOTION FOR RECONSIDERATION.”12

10
pp. 56-57, Ibid.
11
pp. 65-74, Ibid.
12
p. 19, Ibid.
CA-G.R. SP No. 107012
5
Pfizer, Inc. vs.
RESOLUTIO
RTC
N
x--------------------------------
x

Also before the Court is private respondents' “Manifestation

on the Expiration of the Patent in Issue and Motion to Dismiss”
13
dated November 5, 2009, alleging that “the exclusive right of a
patentee over his patented product (which in this case refers to the
pharmaceutical product more generally known by its generic
name- SULBACTAM) is only within the term of the patent.”
Patent No. 26810 had already expired on November 5, 2009, “the
Since
Patentee (petitioners herein) have no more right to be protected in
reference to the subject matter of this patent,” which is 14
sulbactam.

Petitioners were granted Philippine Patent No. 26810 on

November 5, 1992 by the Bureau of Patents, Trademarks and
Technology Transfer, pursuant to their petition for the grant of
letters patent for a new and useful invention. The patent was for a
term of seventeen (17) years from date of grant.
Thus:
“Whereas, upon due examination made, the petitioner is
entitled to a PATENT under Republic Act 165, as amended;

Now, Therefore, this LETTERS PATENT is to grant unto

the petitioner or assigns for the term of SEVENTEEN YEARS
from the date of this grant, unless sooner terminated as provided
for by law, the right to exclude others from making, using and
vending the said invention throughout the Philippines.”15

13
pp. 843-845, Ibid.
14
p. 844, Ibid.
15
p. 846, Ibid.
CA-G.R. SP No. 107012
6
Pfizer, Inc. vs.
RESOLUTIO
RTC
N
x--------------------------------
x

Petitioners themselves manifested in their ent on

privatecorespondents' “Manifestation on the Expiration of the Patent
in Issue and Motion to Dismiss” that Patent No. 26810 had expired
on November 5, 2009.16

Section 37, Republic Act (RA) No. 165, otherwise known as

“An Act Creating a Patent Office, Prescribing its Powers and
Duties, Regulating the Issuance of Patents, and Appropriating
Funds Therefor,” which took effect on June 20, 1947, provides for
the rights of patentees as
follows:
“SEC. 37. Rights of Patentees. - A patentee shall have
the exclusive right to make, use and sell the patented machine,
article or product and to the patented process for the purpose of
industry or co erce, throughout the territory of the Philippines
for the term of the patent; and such making, using or selling of
any person without the authorization of the patentee constitute
infringement.”

Thus, inasmuch as there is no question that petitioners'

patent expired on November 5, 2009, or seventeen (17) years from
its grant on November 5, 1992, petitioners' exclusive right to the
patented process involving sulbactam had already ceased. While
as prayed for by petitioners, the Court takes note of private
respondents' admission that the latter's product “Zunamyn”
contains sulbactam, the Court also takes into consideration that
with the expiration of petitioners' patent over sulbactam, petitioners
can no longer enforce the same and inevitably, the present petition
has become moot and academic.

16
pp. 860-862, Ibid.