E.I DUPONT (assignee of inventors Carino, Duncia and Wong) VS.

FRANCISCO (DIRECTOR OF
IPO) ET. AL. - 2016
Facts:
ED is an American corporation and the assignee of the inventors of a medication for
hypertension and congestive heart failure. Atty. Mapili handled ED’s patent application here in
the Philippines.

Several years later, ED discovered that Atty. Mapili never notified them of their
cancellation/forfeiture of their application. Hence, ED prays for the revival of its application in
view of its former counsel’s gross negligence.

Public Respondents however, denied the revival for having filed out of time. Upon
Appeal, the CA granted the petition for review and held that revival of the application is
justified but later on reversed on the ground that it took ED more than 7 years to act on its
application.

Meanwhile, Therapharma, filed a motion for intervention on the ground that the revival
shall be prejudicial to it. Therapharma contends that it already sells a similar product and
considering the fact that no existing application existed since ED’s application was abandoned.
CA granted the motion to intervene.

Issue:
1. is the grant of intervention proper?
2. should the revival of application be granted?
3. is the application kept the invention from becoming part of public domain?

Ruling:
1. YES. Therapharma was able to show that it had legal interest to intervene. While no patent
yet has been granted hence it should have been premature, the act of ED by making legal
action, even if it has no pending patent application, gave rise to Thera’s right to protect is
Losartan product.

Secrecy in patent applications does not prevent intervention since under the IPC, a party may
already intervene after publication of application.

2. NO. It has already been abandoned and an abandoned application may only be revived
within 4 months from date of abandonment. If not revived within said period, it shall be
deemed forfeited. IPC does not provide any exception to extend the said 4-month period. ED is
negligent. ED only inquired on the status of its application 8 years after the filing of application.

3. NO. Right of priority applies only when there are two or more conflicting patent application
on the same invention. [EX. Since both the United States and the Philippines are signatories to
the Paris Convention for the Protection of Industrial Property, an applicant who has filed a
patent application in the United States may have a right of priority over the same invention in a
patent application in the Philippines. However, this right of priority does not immediately
entitle a patent applicant the grant of a patent. A right of priority is not equivalent to a patent.
Otherwise, a patent holder of any member-state of the Paris Convention need not apply for
patents in other countries where it wishes to exercise its patent.]

Hence, its prior application in US did not remove the invention from the public domain in the
Philippines. The right of priority in this case is immaterial since this is a revival of an abandoned
application.

4. LASLTY, Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its
Petition for Revival is granted [high blodd pressure is a major disease in 25% of PH
adults] .1awp++i1Even 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 respondent Therapharma, Inc. if it continued to develop and market its losartan
product, Lifezar. 192 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, Philippine Patent Application No. 35526 should be
considered a forfeited patent application

NOTE:
1. IP code – first-to-file system, not first-to-invent. [file first before one can sue for
infringement]
2. NOW patent holder applicant is required to publish together with its description. [18-months
{from filing} prior publication exists period of pendency or confidentiality]
3. Patent – has the exclusive right to manufacture or market the invention, hence has the right
to restrain prohibit and prevent any unauthorized person.
4. BUT any interested person may INSPECT the descriptions and eventually develop it into
something further
5. After the laps of 20 years (from issuance) the invention becomes part of the public domain
and is free for the public use.
6. Patent Law purpose – a) foster and reward invention b) promotes disclosure of inventions to
stimulate further innovation and permit public to practice once patent expires c) requirements
for patent protection seek to ensure that ideas in public domain remain there for the free use
of public
7. patent relating to food or medicine – law provides for compulsory licensing, “grant a license
to exploit a patented invention, even without the agreement of the patent owner” – this may
be granted 3 years after the grant of a patent.