BNU: Intellectual Property Attorneys / Lawyers

Home BNU's Practice Lawyers Clients IP Laws IP Links Contact Us

IP Views Bengzon Negre Untalan

Intellectual Property
Attorneys
Case Digest: Pharmawealth vs. Pfizer (Patent Infringement)
2nd Floor SEDCCO
December 19, 2010 Building
Rada cor Legaspi Streets
Makati City, Metro Manila
Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. 1229 Philippines
No. 167715, 17 November 2010 Ph: (632) 813.0120
(632) 892.3228
by: Alpheus D. Macalalad (632) 892.3252
(632) 751.2713

Facts: Pfizer is the registered owner of a patent pertaining to Fax: (632) 894.2073

Sulbactam Ampicillin. It is marketed under the brand name E-mail: bnu@iplaw.ph

URL: www.iplaw.ph
“Unasyn.” Sometime in January and February 2003, Pfizer
discovered that Pharmawealth submitted bids for the supply of
Sulbactam Ampicillin to several hospitals without the Pfizer’s
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
IPO’s 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?

Held:

a) No. The provision of R.A. 165, from which the Pfizer’s 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 patentee’s 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.

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.

More IP Views | View Archive

Copyright 2012 | All Rights Reserved | Bengzon, Negre, Untalan: Intellectual Property Attorneys By MyGuaranteedSEO.com