Alwyn Wren C. Cuesta Engr.

Lina de la Cruz
ChE Laws, Ethics, Codes and Standards CH51FC1

Patent Case with Philippines Setting:

Case: Pharmawealth vs. Pfizer (Patent Infringement), 17 November 2010

Facts:
Pfizer is the registered owner of a patent pertaining to Sulbactam
Ampicillin. It is marketed under the brand name Unasyn. Sometime in
January and February 2003, Pfizer discovered that Pharmawealth
submitted bids for the supply of Sulbactam Ampicillin to several
hospitals without the Pfizers consent. Pfizer then demanded that the
hospitals cease and desist from accepting such bids. Pfizer also
demanded that Pharmawealth immediately withdraw its bids to supply
Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the
demands.

Pfizer then filed a complaint for patent infringement with a prayer

for permanent injunction and forfeiture of the infringing products. A
preliminary injunction effective for 90 days was granted by the IPOs
Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for
extension filed by Pfizer was denied. Pfizer filed a Special Civil
Action for Certiorari in the Court of Appeals (CA) assailing the
denial.

While the case was pending in the CA, Pfizer filed with the Regional
Trial Court of Makati (RTC) a complaint for infringement and unfair
competition, with a prayer for injunction. The RTC issued a temporary
restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the

ground of forum shopping. Nevertheless, the CA issued a temporary
restraining order. Pharmawealth again filed a motion to dismiss,
alleging that the patent, the main basis of the case, had already
lapsed, thus making the case moot, and that the CA had no jurisdiction
to review the order of the IPO-BLA because this was granted to the
Director General. The CA denied all the motions. Pharmawealth filed a
petition for review on Certiorari with the Supreme Court.

Issues:
a) Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the
Director of Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two
seemingly different causes of action and yet pray for the same relief?
Alwyn Wren C. Cuesta Engr. Lina de la Cruz
ChE Laws, Ethics, Codes and Standards CH51FC1

Held:

a) No. The provision of R.A. 165, from which the Pfizers patent was
based, clearly states that "[the] patentee shall have the exclusive
right to make, use and sell the patented machine, article or product,
and to use the patented process for the purpose of industry or
commerce, throughout the territory of the Philippines for the term of
the patent; and such making, using, or selling by any person without
the authorization of the patentee constitutes infringement of the
patent."

Clearly, the patentees exclusive rights exist only during the term of
the patent. Since the patent was registered on 16 July 1987, it
expired, in accordance with the provisions of R.A. 165, after 17
years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer
possessed the exclusive right to make, use, and sell the products
covered by their patent. The CA was wrong in issuing a temporary
restraining order after the cut-off date.

b) According to IP Code, the Director General of the IPO exercises

exclusive jurisdiction over decisions of the IPO-BLA. The question in
the CA concerns an interlocutory order, and not a decision. Since the
IP Code and the Rules and Regulations are bereft of any remedy
regarding interlocutory orders of the IPO-BLA, the only remedy
available to Pfizer is to apply the Rules and Regulations
suppletorily. Under the Rules, a petition for certiorari to the CA is
the proper remedy. This is consistent with the Rules of Court. Thus,
the CA had jurisdiction.

c) Yes. Forum shopping is defined as the act of a party against whom

an adverse judgment has been rendered in one forum, of seeking another
(and possibly favorable) opinion in another forum (other than by
appeal or the special civil action of certiorari), or the institution
of two (2) or more actions or proceedings grounded on the same cause
on the supposition that one or the other court would make a favorable
disposition.

The elements of forum shopping are: (a) identity of parties, or at

least such parties that represent the same interests in both actions;
(b) identity of rights asserted and reliefs prayed for, the reliefs
being founded on the same facts; (c) identity of the two preceding
particulars, such that any judgment rendered in the other action will,
regardless of which party is successful, amount to res judicata in the
action under consideration. This instance meets these elements.
Alwyn Wren C. Cuesta Engr. Lina de la Cruz
ChE Laws, Ethics, Codes and Standards CH51FC1

The parties are clearly identical. In both the complaints in the BLA-
IPO and RTC, the rights allegedly violated and the acts allegedly
violative of such rights are identical, regardless of whether the
patents on which the complaints were based are different. In both
cases, the ultimate objective of Pfizer was to ask for damages and to
permanently prevent Pharmawealth from selling the contested products.
Relevantly, the Supreme Court has decided that the filing of two
actions with the same objective, as in this instance, constitutes
forum shopping.

Owing to the substantial identity of parties, reliefs and issues in

the IPO and RTC cases, a decision in one case will necessarily amount
to res judicata in the other action.

Source: http://www.iplaw.ph/ip-views/Case-Digest-Pharmawealth-vs-
Pfizer-Patent-Infringement.html
Alwyn Wren C. Cuesta Engr. Lina de la Cruz
ChE Laws, Ethics, Codes and Standards CH51FC1

Philippine Environmental Laws:

Republic Act 8749

Republic act no. 8749, otherwise known as the Philippine Clean Air
Act, is a comprehensive air quality management policy and program
which aims to achieve and maintain healthy air for all Filipinos.

Republic Act 9003

Ecological Solid Waste Management Act of 2000- Republic Act 9003 is an

act providing for an ecological solid waste management program,
creating the necessary institutional mechanisms and incentives,
declaring certain acts prohibited and providing penalties,
appropriating funds therefor, and for other purposes.

Republic Act 165

An act creating a patent office, prescribing its powers and duties,

regulating the issuance of patents, and appropriating funds therefor.

Republic Act 166

An act to provide for the registration and protection of trade-marks,

trade-names and service-marks, defining unfair competition and false
marking and providing remedies against the same, and for other
purposes.

Republic Act 2067

Science Act of 1958- An act to integrate, coordinate, and intensify

scientific and technological research and development and to foster
invention; to provide funds therefor; and for other purposes.

Republic Act 318

Chemical Engineering Law- An act to regulate the practice of chemical

engineering in the Philippines, and for other purposes.

Republic Act 754

An act to regulate the practice of chemistry in the Philippines, and

for other purposes.

Republic Act 655

An act creating the barrio of San Roque in the municipality of

Marabut, Province of Samar.

Republic Act 5186

Alwyn Wren C. Cuesta Engr. Lina de la Cruz
ChE Laws, Ethics, Codes and Standards CH51FC1

Investment Incentives Act- an act prescribing incentives and

guarantees to investments in the Philippines, creating a board of
investments, appropriating the necessary funds therefor and for other
purposes.

Republic Act 5455

An act to require that the making of investments and the doing of

business within the Philippines by foreigners or business
organizations owned in whole or in part by foreigners should
contribute to the sound and balanced development of the national
economy on a self-sustaining basis, and for other purposes.

Republic Act 6969

Toxic Substances and Hazardous and Nuclear Wastes Control Act of 1990-
an act to control toxic substances and hazardous and nuclear wastes.

Republic Act 8981

PRC Modernization Act of 2000- An act modernizing the professional

regulation commission, repealing for the purpose presidential decree
numbered two hundred and twenty-three, entitled "creating the
professional regulation commission and prescribing its powers and
functions," and for other purposes.

Republic Act 9236

The National Metrology Act of 2003- An act establishing a National

Measurement Infrastructure System (NMIS) for standards and
measurements, and for other purposes.

Presidential Decree 1151

Philippine Environmental Policy- Whereas, the individual and, at

times, conflicting, demands of population growth, urbanization,
industrial expansion, rapid natural resources utilization and
increasing technological advances have resulted in a piecemeal-
approach concept of environmental protection;

Whereas, such tunnel-vision concept is not conducive to the attainment

of an ideal environmental situation where man and nature can thrive in
harmony with one another; and

Whereas, there is now an urgent need to formulate an intensive,

integrated program of environmental protection that will bring about a
concerted effort towards the protection of the entire spectrum of the
Alwyn Wren C. Cuesta Engr. Lina de la Cruz
ChE Laws, Ethics, Codes and Standards CH51FC1

environment through a requirement of environmental impact assessments

and statements:

Presidential Decree 1152

Philippine Environment Code- Whereas, the broad spectrum of

environment has become a matter of vital concern to the government;

Whereas, the national leadership has taken a step towards this

direction by creating the national environmental protection council
under presidential decree no. 1121;

Whereas, it is necessary that the creation of the council be

implemented with the launching of a comprehensive program of
environmental protection and management;

Whereas, such a program can assume tangible and meaningful

significance only by establishing specific environment management
policies and prescribing environment quality standards in a Philippine
environment code: