G.R. No. 174379, August 31, 2016
E.I. Dupont De Nemours and Co., (assignee of inventors Carino, Duncia and Wong), Petitioner, vs. Director Emma C. Francisco (in her capacity as Director General of the Intellectual Property Office), Director Epifanio M. Velasco (in his capacity as the Director of the Bureau of Patents, and Therapharma, Inc., Respondents.

FACTS

Petitioner E.I. Dupont Nemours, assignee of the invention for the hypertension drug Losartan, filed Philippine Patent Application No. 35526 in 1987. The application was handled by its resident agent, Atty. Nicanor Mapili. The Intellectual Property Office (IPO) mailed a first office action in July 1988, but due to the applicant’s failure to respond, the application was declared abandoned in September 1988. The petitioner claimed it was never informed of this action or of Atty. Mapili’s subsequent death. In December 2000, new counsel for the petitioner requested an office action. The IPO responded in January 2002, stating the application had long been abandoned and noting the lack of a proper substitution of counsel. Upon learning of the abandonment, the petitioner filed a Petition for Revival in May 2002.
The Director of Patents and the IPO Director-General denied the petition for being filed out of time, ruling that the negligence of the former counsel binds the client. The Court of Appeals initially reversed this, finding sufficient justification to relax the rules. However, upon intervention by respondent Therapharma, Inc., which had a competing interest in manufacturing generic Losartan, the Court of Appeals issued an Amended Decision reinstating the IPO’s denial of the revival.

ISSUE

Whether the Petition for Revival of the abandoned patent application was timely filed and should be granted.

RULING

No. The Supreme Court denied the petition and affirmed the IPO’s denial of the revival. The legal logic is anchored on the strict application of procedural rules in patent law, which serve the public interest by ensuring the timely disclosure of inventions and legal certainty. The governing rule at the time was Section 113 of the 1962 Revised Rules of Practice, which required a petition for revival to be filed within four months from the mailing date of the notice of abandonment. The IPO mailed the notice in July 1988, but the petitioner filed its revival petition only in May 2002, nearly fourteen years later. The Court emphasized that the reckoning point is the date the notice was sent, not the date the applicant acquired actual knowledge. The principle that negligence of counsel binds the client applies with greater force in patent proceedings, which are adversarial in nature against the public. Allowing revival after such an inordinate delay would undermine the public’s right to exploit an invention that was never effectively patented and would compromise the integrity of the patent system. The Court found no compelling reason to relax the rules, as the petitioner failed to exercise due diligence in monitoring its patent application over more than a decade.