Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No.

167715, 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?
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.