EI Dupont De Nemours V.

Therapharma
FACTS
-On July 10, 1987, the petitioner filed Philippine Patent Application for (losartan), an invention
related to the treatment of hypertension and congestive heart failure.
-it was handled by Atty. Nicanor D. Mapili
-The new counsel of the petitioner sent a letter requesting that an action be issued on the
application
-it took thirteen (13) long years for the applicant to request for such Office Action.
-E.I. Dupont Nemours filed a Petition for Revival with Cost of its application, and 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.
-Director of Patents denied the petition for having been filed out of time.

ISSUE:
Is revival of the patent application proper considering the negligence of previous counsel?

RULING: NEGATIVE

ANALYSIS
-The revival of the patent application is improper because petitioner's patent application cannot
be revived simply because the period for revival has already lapsed
-Procedures must be complied with to attain its social objectives, petitioner, however, has failed
to convince this court that the revival of its patent application would have a significant impact on
the pharmaceutical industry.
-Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its Petition for
Revival is granted. if it continued to develop and market its losartan product, Lifezar. Once
petitioner is granted a patent for its losartan products, Cozaar and Hyzaar, the loss of competition
in the market for losartan products may result in higher prices.
 Philpharma Wealth vs. Pfizer
FACTS:
-The case arose from a complaint for patent infringernent filed by Respondent Pfizer against
Petitioner Phil. Pharmawealth with the Bureau of Legal Affairs (BLA). The Complaint alleged
among others
-Pfizer is the registered owner of Philippine Letters
-Patent No. 21116 (the "Patent") which was issued on July 16, 1987.
-The patent is valid until July 16, 2004.
-Patent No. 21116 covers ampicillin sodium/sulbactam sodium (hereafter "Sulbactam
Ampicillin").
-Sometime in January and February 2003, complainants came to know that respondent [herein
peti-tioner] submitted bids for the supply of Sulbactan -Ampicillin to several hospitals without
the consent of complainants and in violation of the complainants' intellectual property rights.
-Pfizer wrote the above hospitals and demanded that the latter immediately cease and desist from
accepting bids for the supply [of] Sulbactam Ampicillin or awarding the same to other
companies.
-Phil. Pharmawealth and the hospitals named willfully ignored complainants' just, plain and valid
demands, refused to comply therewith and continued to infringe the Patent, all to the damage and
prejudice of complainants.
-As registered owner of the Patent, Pfizer is entitled to protection under Section 76 ;of the IP
Code.
The case eventually reached the Court of Appeals. Among others, the Petitioner (Phil.
Pharmawealth) argued that Pfizer's exclusive right to monopolize the subject matter of the patent
exists only within the term of the patent. Petitioner claims that since respondents' patent expired
on July 16 2004, the latter no longer possess any right of monopoly over the substance.
ISSUE:
Whether Pfizer still holds monopoly over the substance by virtue of their issued Patent over the
same
RULING: NO
ANALYSIS:
The exclusive right exists only during the term of the patent. This fact was admitted by
respondents themselves in their complaint. They also admitted that the validity of the said patent
is until July 16, 2004, which is in conformity with Section 21 of RA 165, providing that the term
of a patent shall be seventeen (17) years from the date of issuance thereof. In the present case,
there is no dispute as to respondents' admission that the term of their patent expired on July 16,
2004. Neither is there evidence to show that their admission was made through palpable mistake.
 Pearl and Dean V Shoemart
FACTS
-plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture
-Pearl and Dean was able to secure a Certificate of Copyright Registration hated January 20,
1981 over these illuminated display units.
-Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM City North Edsa.
-Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM City North Edsa.
-SMI's house counsel informed Pearl and Dean that it was rescinding the contract for SM Makati
due to non-performance of the terms thereof.
-Two years later, Metro Industrial Services, the company rly contracted by Pearl and Dean to
fabric units, offered to construct light boxes for
stores.
-Pearl and Dean, received reports that exact copies of its light boxes were installed at SM City
and the fastfood section of SM Cubao the defendant North Edsa Marketing Inc is a sister
company of SMI
-Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI and cease them
from using the subject and demanded the discontinued use of the trademark "Poster Ads, and the
payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos
(P20,000,000.00).
-Pearl and Dean filed this instant case for infringement of trademark and copyright, unfair
competition and damages.
-SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology, without notice of or reference to Pearl and Dean's
copyright.
-RTC MAKATI decided in favor of P&D
-CA reversed the decision of trial court and agreed with SMI when it posited that what was
copyrighted were the technical drawings only, and not the light boxes themselves. that the
defendant cannot be held liable for infringement of the trademark “poster ads”
-Petitioner filed instant petition against CA for the following:
that it erred in ruling that no copyright infringement was committed, no trademark infringement
for “poster ads” was committed, erred in dismissing the award of the trial court and erred in not
holding the defendant liable.
ISSUES:
1. if the engineering or technical drawings of an advertising display unit (light box) are granted
copyright protection (copyright certificate of registration) by the National Library, is the light
box depicted in such engineering drawings ipso facto also protected by such copyright?
2. or should the light box be registered separately and protected by a patent issued by the Bureau
of Patents, Trademarks, and Technology Transfer (now Intellectual Property Office) - in addition
to the copyright of the engineering drawings?
3. can the owner of a registered trademark legally prevent others from using such trademark if it
is a mere abbreviation of a term descriptive of his goods, services or business?
RULINGS
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
-In ruling that there was no copyright infringement, the Court of Appeals held that the copyright
was limited to the drawings alone and not to the light box itself. We agree with the appellate
court.
ON THE ISSUE OF PATENT INFRINGEMENT
-private respondents cannot be held legally liable For some reason or another, petitioner never
secured a patent for the light boxes. It therefore acquired no patent rights which could have
protected its invention, if in fact it really was. And because it had no patent, petitioner could not
legally prevent anyone from manufacturing or commercially using the contraption.
-not having gone through the arduous examination for patents, the petitioner cannot exclude
others from the manufacture, sale or commercial use of the light. boxes on the sole basis of its
copyright certificate over the technical drawings.
ON THE ISSUE OF TRADEMARK INFRINGEMENT
-P & D was able to secure a trademark certificate for it, but one where the goods specified were
"stationeries such as letterheads, envelopes, calling cards, and newsletters."
-On the contrary, it dealt in electrically operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at all specified in the trademark certificate
-One who has adopted and used a trademark on his goods does not prevent the adoption and use
of the same trademark by others for products which are of a different description (canon
kabushiki kaisha v court of appeals)
CONCLUSION:
"WHEREFORE, premises considered, the assailed decision is REVERSED and SET ASIDE, and
another is rendered DISMISSING the complaint and counterclaims in the above-entitled case for
lack of merit."
 Fernando U. Juan, Petitioner v. Roberto U. Juan
FACTS
-Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in
his laundry business on July 4, 1994., in 1997, the National Library issued to him a certificate of
copyright over said name and mark.
-Respondent Roberto then formed a corporation to handle the said business, hence,Laundromatic
Corporation (Laundromatic) was incorporated in 1997, while avandera Ko was registered as a
business name on November 13, 1998 with the Department of Trade and Industry.
-Roberto discovered that his brother, petitioner Fernando was able to register the name and mark
Lavandera Ko" with the Intellectual Property Office IPO) On october 18, 2001, the registration
of which was filed on June 5,
1995.
-Thus, respondent Roberto filed a petition for injunction, unfair competition, infringement of
copyright, cancellation of I trademark and name with/ and prayer for TRO and Preliminary
Injunction with the Regional Trial Court (RTC) and the case was raffled off at Branch 149,
Makati City.
-The RTC, in dismissing the petition, ruled that neither of the parties are entitled to use the trade
name "Lavandera Ko" because the copyright of "Lavandera Ko," a song composed in 1942 by
Santiago S. Suarez belongs to the latter.
ISSUES -Is the ruling correct
RULING
-NO, it confused trade with copyright. the RTC erred in denying the parties the proper
determination as to who has the uitimate right to use the said trade name by ruling that neither of
them has the right or a cause of action since "Lavandera Ko" is protected by a copyright.
ANALYSIS
-Copyright is the right of literary property as recognized and sanctioned by positive law. Trade
name, on the other hand, is any designation which is adopted and used by person to denominate
goods which he markets, or services which he renders, or business which he conducts, or has
come to be so used by other, in this case, As such, "Lavandera Ko," being a musical composition
with words is protected under the copyright law, and not under the trademarks, service marks and
trade names law.