1.

Phil Lawyers Assoc v Agrava

Facts:
i. Respondent Dir. Celedonio Agrava of the Phil Patent Office issued a circular
announcing the examination to qualify those who can be patent attorneys before
the said office.
ii. Lawyers, engineers and others with sufficient technical training can take the exam
iii. Phil Lawyers Assoc assails the circular saying that anyone who passed the Bar and is
in good standing is qualified to practice. The imposition of this condition precedent
is in excess of the resp’s JD
iv. Resp contends that:
a. the prosec of patent cases is not entirely the practice of law but requires
technical and scientific knowledge.
b. He is empowered under the Patent Law of the Philippines w/c is the same as the
US Patent Law that allows the Patent Office to prescribe a similar exam
Issues:
i. W/N the appearance, preparation and prosecution of patent applications constitute
practice of law
ii. W/N the Dir of Patent’s Office has the right to impose qualifications on lawyers for
practicing before said office
Ruling:
i. Yes.
a. The practice of law is not limited to the conduct in court litigation. It covers work
that involves the determination by a trained legal mind of the legal effects of
facts and conditions such as preparation of pleadings and papers incident to
actions and social proceedings, all advices to clients and all action taken on
matters in connection with law, as well as preparation and execution of legal
instruments. Although these are not directly connected with court proceedings,
they are always subject to become involved in litigation.
b. The conduct in assisting clients with their patent application involves largely the
interpretation of the Patent Law and other related laws and the presentation of
evidence to establish facts for which lawyers are trained to perform.
ii. No.
a. The Philippine Patent Law is silent about the power of the Director to impose
qualifications such as sufficient knowledge and expertise in the scientific and
technical matters related to patent application that may take the form of an
examination. Unlike the US Patent Law, our own law only requires that the rules
and regulations promulgated by the Dir of Patent are not inconsistent with law.
b. If the Patent Dir will be allowed as the head of the Patent Office to require
examinations for the practice of lawyers before his office, then other bureaus
chiefs may also be allowed to conduct similar examinations.
c. The functions of the Patent Director are judicial and quasi-judicial in nature so
much so that his orders and decisions are subject to be taken before the
Supreme Court.
- Lawyers authorized by SC to practice law and are in good standing may practice their
profession before the Patent’s Office.