Dupont Vs Dir. Francisco (2nd Round)

E. I. DUPONT DE NEMOURS AND CO.
(ASSIGNEE OF INVENTORS
CARINI, DUNCIA AND WONG), petitioner,
-versus-
DIRECTOR EMMA C. FRANCISCO (In Her Capacity As Director General Of

The Intellectual Property Office),
DIRECTOR EPIFANIO M. EVASCO (In His Capacity As The Director Of The
Bureau Of Patents),
AND THERAPHARMA, INC., respondents
G.R. No. 174379, [August 31, 2016], 794 PHIL 97-148
PROCEDURE FOR THE GRANT OF PATENT;

CONFIDENTIALITY BEFORE PUBLICATION
PARTIES
DIRECTOR EMMA C. FRANCISCO E. I. DUPONT DE NEMOURS AND CO.
2
PARTIES
DIRECTOR EPIFANIO M. EVASCO THERAPHARMA, INC.,
3
FACTS
E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation
organized under the laws of the State of Delaware. It is the assignee of inventors Carini, Duncia,
and Wong, all citizens of the United States of America.
On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the
Bureau of Patents, Trademarks, and Technology Transfer. The application was for Angiotensin
II Receptor Blocking Imidazole (losartan), an invention related to the treatment of
hypertension and congestive heart failure. The product was produced and marketed by Merck,
Sharpe, and Dohme Corporation (Merck).
The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili), a local resident
agent. On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del Castillo,
Bacorro, Odulio, Calma, and Carbonell, sent the Intellectual Property Office a letter requesting
that an office action be issued on Philippine Patent Application No. 35526.
Patent Examiner Precila O. Bulihan of the Intellectual Property Office sent an office action
marked Paper No. 2 on January 30, 2002 stating that the Philippine Patent Application No.
35526 was already deemed abandoned as of September 20, 1988 for applicant's failure to
respond to the first Office Action mailed on July 19, 1988 within the period as prescribed
ADD A FOOTER 4
under Rule 112.
FACTS
E.I. Dupont Nemours filed a Petition for Revival with Cost of Philippine Patent Application
No. 35526. It argued that its former counsel, Atty. Mapili, did not inform it about the
abandonment of the application, and it was not aware that Atty. Mapili had already died. It
argued that it only had actual notice of the abandonment on January 30, 2002, the date of
Paper No. 2.
Thus, it argued that its Petition for Revival was properly filed under Section 113 of the 1962
Revised Rules of Practice before the Philippines Patent Office in Patent Cases (1962 Revised
Rules of Practice).
The Intellectual Property Office denied the revival of the patent application. Petitioner
filed before the Court of Appeals a Petition for Review seeking to set aside the
Intellectual Property Office.
On August 31, 2004, the Court of Appeals granted the Petition for Review. In the interim,
Therapharma, Inc. moved for leave to intervene and admit the Attached Motion for
Reconsideration and argued that the Court of Appeals' August 31, 2004 Decision directly
affects its "vested" rights to sell its own product.
ADD A FOOTER 5
FACTS
Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and
Drugs its own application for a losartan product "Lifezar," a medication for
hypertension, which the Bureau granted on January 27, 2004. It conducted patent searches
from October 15, 1995 and found that no patent application for losartan had been filed either
before the Bureau of Patents, Trademarks, and Technology Transfer or before the Intellectual
Property Office.
As early as December 11, 2003, petitioner through Merck was already sending
communications threatening legal action if respondent Therapharma, Inc. continued to develop
and market losartan in the Philippines.
Therapharma, Inc. expressed its willingness to enter into a Non-Use and Confidentiality
Contract if there was a pending patent application. After several negotiations on the clauses of
the contract, the parties were unable to come to an agreement. In its letter dated May 24,
2004, Therapharma, Inc. expressed its frustration on petitioner's refusal to give a clear answer
on whether it had a pending patent application.
Meanwhile, E.I. Dupont Nemours was contending that its pending patent application with the
IPOADDisA FOOTER
confidential. 6
ISSUE
Whether or not the E.I. Dupont Nemours claim of absolute confidentiality of
its Patent Application is proper.
• NO. E.I. Dupont Nemours’ claim of absolute confidentiality in
patent proceedings is inaccurate.
In the 1962 Revised Rules of Practice, the Bureau of Patents,

Trademarks, and Technology Transfer previously required secrecy
in pending patent applications. However, this is no longer the case
under the present Intellectual Property Code.
7
RULING
• Historical Antecedents.
In the 1962 Revised Rules of Practice, the Bureau of Patents, Trademarks,

and Technology Transfer previously required secrecy in pending patent
applications. Section 13 states:
13. Pending applications are preserved in secrecy. — No information will be given to anyone
respecting the filing by any particular person of any application for a patent, the pendency of any
particular case before the Office, or the subject matter of any particular application, unless the
same is authorized by the applicant in writing, and unless it shall be necessary, in the opinion of
the Director of Patents for the proper conduct of business before the Office.
The Intellectual Property Code, however, changed numerous aspects of the
old patent law. The Intellectual Property Code was enacted not only to amend
certain provisions of existing laws on trademark, patent, and copyright, but also
to honor the country's commitments under the World Trade Organization —
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS 8
Agreement), a treaty that entered force in the Philippines on January 1, 1995.

RULING
• Present Requirement for Publication.
Thus, the absolute secrecy required by the 1962 Revised Rules of Practice
would not be applicable to a patent application before the Intellectual Property
Office. Section 13 of the 1962 Revised Rules of Practice does not appear in the
Intellectual Property Code, in the Rules and Regulations on Inventions, or in the
Revised Implementing Rules and Regulations for Patents, Utility Models and
Industrial Design. The Intellectual Property Code now states that all patent
applications must be published in the Intellectual Property Office Gazette
and that any interested party may inspect all documents submitted to the
Intellectual Property Office. The patent application is only confidential
before its publication.
It was inaccurate, therefore, for petitioner to argue that secrecy in patent
applications prevents any intervention from interested parties. The confidentiality
in patent applications under the Intellectual Property Code is not absolute since
9
a
party may already intervene after the publication of the application.
RULING
• Present Requirement for Publication.
Sections 44 and 45 of the Intellectual Property Code provide:
SECTION 44. Publication of Patent Application. —
44.1. The patent application shall be published in the IPO Gazette together with a search
document established by or on behalf of the Office citing any documents that reflect prior art,
after the expiration of eighteen (18) months from the filing date or priority date.
44.2. After publication of a patent application, any interested party may inspect the application
documents filed with the Office.
44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may
prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial
to the national security and interests of the Republic of the Philippines. (n)
SECTION 45. Confidentiality Before Publication. — A patent application, which has not yet been
published, and all related documents, shall not be made available for inspection without the
consent of the applicant.
10
RULING
Except from the legislative interpellations:

Requirement of publication. The patent holder applicant is now required to
publish in a manner easily understood by a person trained or with the
same skill as that of a patent holder. And from that time this is published,
this process covered by the patent is already made available. In fact, from
the time that it is published, any interested person may even examine and go
over the records as filed with the BPTTT and, therefore, this new technology or
new invention is now made available to persons equipped or possessed with the
same skills as that of the patent holder. And that is the reason why the patent is
— the time of the patent is now tacked from the time it is filed because as a
compromise it is now mandatory to publish the said patent together with its
description — the description of the process and even would, at times demand
the deposit of sample of the industrial design, Mr. Speaker. 11
RULING
Except from the legislative interpellations:

Confidentiality period (18 months). It is provided for in the law, Mr. Speaker,
because prior to the publication, naturally, the records become confidential
because the essence of a patent, trademark, or copyright is to give the
author or the inventor exclusive right to work on his own invention. And
that is his invention, and naturally, it is but right that he should have the
exclusive right over his invention.
On the other hand, the law requires that after 18 months, it should now be
published. When it is now published, naturally, it ceases to be confidential
in character because it is now ready for examination. It is now ready for
possible copying of any interested person because the application, as we
have repeatedly said on the floor, would require the filing of a description
12
of the invention that can be carried out by a person similarly trained in the
arts and sciences as that of the patent holder.
PROCEDURE FOR THE GRANT OF PATENT
13
https://www.ipophil.gov.ph/invention-registration-process-overview/
THANK YOU!

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E. I. DUPONT DE NEMOURS AND CO.

DIRECTOR EMMA C. FRANCISCO (In Her Capacity As Director General Of

G.R. No. 174379, [August 31, 2016], 794 PHIL 97-148

PROCEDURE FOR THE GRANT OF PATENT;

DIRECTOR EMMA C. FRANCISCO E. I. DUPONT DE NEMOURS AND CO.

DIRECTOR EPIFANIO M. EVASCO THERAPHARMA, INC.,

In the 1962 Revised Rules of Practice, the Bureau of Patents,

In the 1962 Revised Rules of Practice, the Bureau of Patents, Trademarks,

Agreement), a treaty that entered force in the Philippines on January 1, 1995.

Except from the legislative interpellations:

Except from the legislative interpellations:

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