Republic of the Philippines

ZAMBOANGA PENINSULA POLYTECHNIC STATE UNIVERSITY

COLLEGE OF ENGINEERING AND TECHNOLOGY
R.T. Lim Blvd., Baliwasan, Zamboanga City

CASE STUDY: REJECTED

PATENT APPLICATION

Dupont de Nemours and Co. v.

Francisco, G.R. No. 174379,
31 August 2016: Denying the revival
of Philippine Patent Application No.
35526
E.I. Dupont Nemours and Company
 GROUP 7
LEADER : CATEQUISTA, JOE-VERT A.

MEMBERS : ANTUYAN, AL-AMIR H.

AFDAR, SHARPI S.

CAPUTOL, RANDOLF JOSE D.

SAMSI, FHER-HAYZA T.

JALANDONI, GEOVAN CAESAR

B.

SALI, KHALID J.

LATIP, ALBASIR T.

ALFARO, ELVIN JONES S.

ENGR. GARY MITCHEL C. FOX

IPR INSTRUCTOR : JR.

INTRODUCTION

Background of the Study

Enshrined in Article XIV, Section 13 of the Philippine 1987 Constitution that “the
State shall protect and secure the exclusive rights of scientists, inventors, artists, and other
gifted citizens to their intellectual property and creations, particularly when beneficial to the
people, for such period as may be provided by law.” This provision mandated the creation of
Republic Act No. 8293 also known as the “Intellectual Property Code of the Philippines.”
The statutory law codifies all matters relating to the protection and enforcement of rights of
the creators and owners of inventions, writing, music, designs and other works. In particular,
it stipulates the rules which regulate patents, trademarks, copyrights and other forms of
intellectual property. Another significant patent law is the Republic Act No. 10372,
legislated for the purpose of amending certain provisions in R.A. 8293. It covers, among
others, laws on patents, laws on trademarks, service marks and trade names, and laws on
copyright. Specifically, the salient provisions under this law specifies the patentable
inventions and the right to a patent. Other legal basis for patent regulation includes rules and
treaties enacted for the purpose of strengthening the patent system in the country.

Patent codes, in general, systematize the orderly transaction of patent application and
including, but not limited to, patentable inventions, persons who may file for patent,
requirements for such application, effectivity, publication and any other relevant processes.
These codes, in addition, provide for the protection of the rights duly enjoyed by patent
owners. Furthermore, patent laws prescribe the establishment of Bureau of Patents, an
Intellectual Property Office which takes jurisdiction over registration, as well as search and
examination of patent applications and design, patents and utility models. To further provide
for an in-depth analysis of the topic at hand, let us define first what is patent and lay down
essential concepts and elements affecting the implementation of patent laws in the country.

Patent, defined.

A Patent is an exclusive right granted for a new, inventive, & useful product. It can
take the form of a new product, process or technical improvement to existing invention.
Such right allows the inventor to bar others from making, using, or selling the product of his
invention during the life of the patent. Patent owners may also give permission to, or license,
other parties to use their inventions on mutually agreed terms. Moreover, they may also sell
their invention rights to someone else, who then becomes the new owner of the patent.

What are patentable inventions? Under Philippine law, patentable inventions include
any technical solution of a problem in any field of human activity that is new, involves an
inventive step, and is industrially applicable. Specifically, an invention is considered new if
it does not form part of a prior art; when it involves an inventive step, it is not obvious to a
person skilled in the art at the time of the priority date of the application claiming the
invention; and it can be produced and used in any industry.

Who has a right to patent? Patent laws provide that the right to a patent belongs to
the inventor, his heirs or assigns. When two or more persons have jointly made an
invention, the right to a patent belongs to them jointly. If two or more persons have made the
invention separately and independently, the right to the patent belongs to the person who
filed an application for such invention, or where two or more applications are filed for the
same invention, the applicant who has the earliest filing date or the earliest priority date has
the right over a patent.

Who may file a patent application in the Philippines? Any Filipino nationals may
apply for patent in the country. In addition, patent laws also allow any person who is a
domicile or who has a real and effective industrial establishment in a country. Such
establishment must be a party to any convention, treaty or agreement relating to intellectual
property rights to which the Philippines is also a party, or extends any reciprocal rights to
nationals of the Philippines by law.

How can an individual apply for patent? There are two routes available for patent
application in the country. First, through the Patent Cooperation Treaty (PCT) Route and
second is through Paris Convention/Direct Route.

a. Patent Cooperation Treaty

To enter the national phase and get a date of entry, the PCT applicant must furnish
the Intellectual Property Office (IPO), not later than thirty (30) months from the
priority date. Requirements include:

1. Request for National Phase Entry;

2. English translation of the international application if it was filed in another
language or a copy of the international application in English as filed if the
applicant has not yet received Form PCT/IB/308; and
3. Copy of the amendments under Article 19 and/or Article 34 (if applicable) in
English.
b. Paris Convention
 To obtain a filing date, the applicant must submit the following to the IPOPHL:

1. Request for patent;

2. Applicant’s name, address and signature. If applicant is a non-resident, the name
and address of the resident agent; and
3. Description of the invention, one or more claims, and drawings (if any).

Thereafter, the application will be substantially examined by IPO examiners. In

accordance to this, the applicant must make such request within six (6) months from the date
of the publication of the application. Consequently, application shall be deemed withdrawn
if such request is not made and the requisite fees are not timely paid.

When does patent becomes effective? The patent becomes effective upon the date of
the publication of the grant of patent in the IPOPHL Gazette. As provided, its term is twenty
(20) years from the filing date of the application in the Philippines. After then, the patent
owner are entitled to exclusive rights such as to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing the
product or patented process. Lastly, patent owners shall also have the right to assign, or
transfer by succession the patent, and to conclude licensing contracts for the same.

Can a patent application be rejected? Statistics show that a nonprovisional utility

patent application has a roughly 90% probability of at least one rejection while a design
patent application has an approximately 86% chance of approval. Hence, having been able to
comply with the requirements does not automatically guarantee approval. The law, however,
provides remedy in case the examiner rejects the patent application. The decision may be
appealed to the Director of the Bureau of Patents. Thereafter, if the Director of the Bureau of
Patents agrees with the examiner, that decision may be appealed to the Director General of
the Intellectual Property Office. The decision of the Director General to reject the
application may then be appealed to the Court of Appeals, and ultimately to the Supreme
Court of the Philippines.

A particular case of a rejected patent application brought before the Supreme Court
is embodied in G.R. No. 174379, Dupont de Nemours and Co. v. Francisco, G.R. No.
174379 published on August 31, 2016. The succeeding parts of this paper will provide for
the analysis of the above case.
 DATA ANALYSIS

Case Title: E.I DUPONT DE NEMOURS AND CO., petitioner vs. DIRECTOR EMMA C.
FRANCISCO (in ger 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; G.R. No. 174379, August 31, 2016.

Factual Antecedents:
On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No.
35526 before the Bureau of Patents. 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), E.I. Dupont Nemours’ licensee, under the brand names Cozaar
and Hyzaar. Accordingly, the application was handled by Atty. Nicanor D. Mapili, a local
resident agent who handled a majority of E.I. Dupont Nemours’ patent applications in the
Philippines from 1972 to 1996. On December 19, 2000, E.I. Dupont Nemours’ new counsels
send a letter of request to the Intellectual Property Office asking that an office action be
issued on Philippine Patent Application No. 35526.
In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty.
Mapili, did not inform the company about the abandonment of the application, and they are
not aware that Atty. Mapili had already died.

Bureau of Patents and IPO Decision:

On April 18, 2002, the Director of Patents denied the Petition for Revival for having
been filed out of time. E.I. Dupont Nemours appealed the denial to the Director-General of
the Intellectual Property Office on August 26, 2002. In the Decision dated October 22, 2003,
Director-General Emma C. Francisco denied the appeal and affirmed the Resolution of the
Director of Patents.

Court of Appeals’ Decision:

On November 21, 2003, herein petitioner filed before the Court of Appeals a Petition
for Review seeking to set aside the Intellectual Property Office’s Decision dated October 22,
2003. On August 31, 2004, the Court of Appeals granted the Petition for Review.
Supreme Court Ruling:
The issue pending before the Supreme Court is whether a patent holder of inventions
relating to food or medicine enjoys absolute monopoly over the patent. Facts and evidence
regarded, the court ruled that patent holder of inventions relating to food or medicine does
not enjoy absolute monopoly over the patent. Both Republic Act No. 165 and the Intellectual
Property Code provide for compulsory licensing. Compulsory licensing is defined in the
Intellectual Property Code as the “grant a license to exploit a patented invention, even
without the agreement of the patent owner.” Furthermore, the patent holder’s proprietary
right over the patent only lasts for three (3) years from the grant of the patent, after which
any person may be allowed to manufacture, use, or sell the invention subject to the payment
of royalties.
In its Decision dated August 31, 2016, denied the petition of I.E Dupont De Nemours
and Company for the revival of Philippine Patent Application No. 35526, further affirming
the decisions of the Bureau of Patents, Intellectual Property Office and the Court of Appeals.

DISCUSSION

The patent laws are clear and explicit in establishing the requirements for patent
application. It has to be bear in mind that a patent is not just a mere license to own and
exploit one’s invention. It is granted for the purpose of providing rights and protection to the
inventor after an invention is disclosed to the public. In addition, inventor also get to
exercise prerogatives attached to such patent, which includes the right to restrain and prevent
unauthorized persons from unjustly profiting from his protected invention. Although, we
give high regard in dispensing such exclusive rights to inventors, ideas not covered by a
patent, however, are free for the public to use and exploit.
Aside from the existing Republic Acts, the State alongside the Intellectual Property
Office, adhere to certain rules in their conduct of examining application. There is no
substantive way to examine an application in a short amount of time, hence the law
prescribes the necessary timeline for which a patent applicant must render its request of
substantive examination of his application for the approval of the same. These procedural
rules on the application and grant of patents were established to protect an invention against
any infringement or unauthorized exploitation. Consequently, in order to balance the public
interests involved, failure to comply with strict procedural rules will result in the failure to
obtain a patent.
In relation to the topic, the case was denied of approval for its failure to file the
request for substantive examination on time. As mentioned above, applicants must make
such request within six (6) months from the date of the publication of the application. It is,
hence, justifiable for the IPO to deny such request because it has been filed years after the
Philippine Patent Application No. 35526 was put up for registration. These strict rules
manifest the importance of a patent for inventors. Hence, compliance of the same must be
properly observed.
In sum, researchers of this paper believe that the IPO have performed their
obligations fair and square, this is affirmed by the decision of the Supreme Court on the
case. From our perspective, reasons presented by the petitioner are not sufficient as to render
the revival of their application. It is mere courtesy to check, from time to time, the status of
their inventions as approval of such provides them the benefits and not the other way
around. It is also incredulous that the Company have no knowledge of the death of one of
their legal counsels when such counsel plays a significant part in the success of the company
in obtaining legal rights over their products.

RESULT AND CONCLUSION

As discussed above, Philippine Patent Application No. 35526 was denied of approval
for not filing a request for substantive examination on time. It is imperative that in the
application of patent, applicants must comply with the due process provided for in the Patent
Laws. If one has to claim right over an invention, one must exercise due diligence for
securing the same. On one hand, factors affecting the approval of the application by I.E
Dupont de Nemours and Company includes time, failure to execute specific performance,
and negligence on the part of the company to ensure that the necessary documents were duly
filed before the IPO.
Since it is improbable for an application to be examined for a short period of time,
considering also the amount of applications IPO examines, time is necessary in ensuring that
a product or process satisfies the eligibility standard. When careless examination is carried
out, inevitable negative effect of a product or process may be inflicted on humans who, for
most times, are consumers of such inventions. On the other hand, the failure to submit for a
request for substantive examination before the IPO contributed to I.E Dupont’s failure to
secure the patent for their product. Finally, such failure constitutes negligence on the part of
the petitioners because if only they were able to comply strictly with the rules and
regulations, they could have been enjoying exclusive rights over their product, protecting
both their interests and that of the public.
In conclusion, granting of patent rights are assured only through the compliance of
IPO’s regulations on patent registration. An inventor cannot disregard the prescribed
procedures as due process is necessary for the safety of both the inventor and its users.
Hence, it is important that the Intellectual Code of the Philippines, as well as other legal
basis regulating the patent system in the country, be discussed clearly among young
individuals. There is no exception to innovations, therefore one must initiate learning when
it is called for.
 REFERENCE PAGE

The Lawphil Project, G.R. No. 174379

Arellano Law Foundation
https://lawphil.net/judjuris/juri2016/aug2016/gr_174379_2016.html

Philippine Official Gazette, R.A. 8293

Official Journal of the Republic of Philippines
https://www.officialgazette.gov.ph/1997/06/06/republic-act-no-8293/

Philippine Official Gazette, R.A. 10372

Official Journal of the Republic of Philippines
https://www.officialgazette.gov.ph/2013/02/28/republic-act-no-10372/

Intellectual Property Law

ASEAN Law Association
https://www.aseanlawassociation.org/wp-content/uploads/2019/11/ALA-PHILS-legal-
system-Part-9.pdf

Invention Patent
Federis Intellectual Property Law
http://www.federislaw.com.ph/faqs-resources/patent-application/#:~:text=Under
%20Philippine%20law%2C%20what%20are,or%20any%20improvement%20of%20thereof.

Patent Rejected: What Happens Next?

Vic Lin
https://www.patenttrademarkblog.com/what-happens-if-your-patent-is-rejected/

Overview: Patent System in the Philippines

Federis Intellectual Property Law
http://www.federislaw.com.ph/faqs-resources/overview-patent-system/

What is Intellectual Property?

Intellectual Property Office of the Philippines
https://www.ipophil.gov.ph/what-is-intellectual-property/#:~:text=patents,LEARN
%20MORE