E.I. DUPONT DE NEMOURS AND CO.

, Petitioner,
v. THERAPHARMA, INC. Et. Al., Respondents.
G.R. No. 174379, August 31, 2016
FACTS: E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American
corporation organized under the laws of the State of Delaware.

In 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526
before Bureau of Patents. The application was for Angiotensin II Receptor
Blocking Imidazole (losartan), an invention related to the treatment of
hypertension and congestive heart failure. This patent application was handled
by Atty. Mapili.

In 2000, Dupont, through its new counsel, sent a letter requesting Office action
for the issuance of its application and subsequently filed a petition for Revival,
because its former counsel, Atty. Mapili did not inform them about the
abandonment of the application, and that they were not aware that Atty. Mapili
had already passed away. It was only in 2002 when actual notice of
abandonment came into their knowledge.

However, this application for revival was denied for having filed beyond the
reglementary period. This was later appealed to the Director General and the
CA.

During the pendency of the case, Therapharma Inc., moved for leave to
intervene and was granted for the reason that the revival of the application of
E.I. Dupont would prejudice the public interest for there are at least 12.6 million
Filipinos who are afflicted by hypertension, and the revival thereof would also
prejudice Therapharma’s interest, on that it had already invested more than
P20M to develop its own losartan product (lifezar) and that Therapharma acted
in good faith when it marketed its product.

Therapharma filed an application for product registration before the Bureau of

Food and Drugs in 2003 and was granted a Certificate of Product Registration
in 2004. It conducted patent searches and found that no patent application for
losartan had been filed either before the Bureau of Patents or before
Intellectual Property Office.
ISSUE: Whether or not the patent application of losartan by Dupont should be
revived.

HELD: No, the patent application for its revival was filed out of time.

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. Petitioner issued a Power of
Attorney and Appointment of Resident Agent in favor of Bito, Lozada, Ortega &
Castillo on March 25, 1996 but it only requested a status update of Philippine
Patent Application No. 35526 on December 14, 2000, or four (4) years after it
learned of Atty. Mapili’s death. The Power of Attorney shows that it was only to
inform the Bureau that all notices relating to its pending patent applications
should be sent to it and there was no request for specific status update. The four
(4)-month period in Section 111 of the 1962 Revised Rules of Practice 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.

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.