PHIL PHARMAWEALTH, INC. v. PFIZER, INC. and PFIZER (PHIL.) INC.

G.R. No. 167715, Nov. 17, 2010

Pfizer (Phil.), Inc. (Pfizer) filed a patent infringement case against Phil Phar
mawealth, Inc. (Pharmawealth). It owned a patent over the antibiotic Sulbactam A
mpicillin, produced and distributed under the name UNASYN. In 2003, Pfizer disco
vered that Pharmawealth was supplying the antibiotic to hospitals without the fo
rmers consent.
Pfizer prayed for permanent injunction, damages and the forfeiture and impounding
and temporary restraining order and a preliminary injunction [] from importing, d
istributing, selling or offering the subject product for sale to any entity in t
he Philippines.
In 2003, BLA-IPO issued a preliminary injunction which was effective for ninety
days. Pfizers motion for extension was denied. Pfizer assailed BLA-IPOs resolution
before the CA on special review for certiorari.
While case pending before CA, Pfizer filed patent infringement case before RTC.
RTC granted TRO conditional on payment of a bond. It also issued writ of prelimi
nary injunction against Pharmawealths sale and distribution of Sulbactam Ampicill
in.
In 2005, CA approved bond and issued TRO.
Pharmawealth filed motion to dismiss, claiming that (1) Pfizers patent expired on
July 16, 2004; (2) CA has no jurisdiction to review BLA-IPO resolution.
SC
Q: Can an injunctive relief be issued based on an action of patent infringement
when the patent allegedly infringed has already lapsed?
A: No. The exclusive right of a patentee to make, use and sell a patented produc
t, article or process exists only during the term of the patent (Rep. Act No. 16
5, sec. 37). There are two requisites for the grant of preliminary injunction: (
1) the existence of a clear and unmistakable right that must be protected; and (
2) an urgent and paramount necessity for the writ to prevent serious damage (Rul
es of Court, Rule 58, sec. 3). Pfizer did not possess the first element because
its patent had expired at the time CA issued TRO.
Q: What tribunal has jurisdiction to review the decisions of the Director of Leg
al Affairs of the Intellectual Property Office?
A: CA, in this PARTICULAR instance involving an interlocutory order. Though the
Director-General IPO exercises exclusive appellate jurisdiction over DECISIONS o
f BLA-IPO, this case involves a motion for extension. The Intellectual Property
Code is silent with regard to remedies for interlocutory orders, thus the Rules
of Court apply to fill in the gaps. Furthermore, motion for extension no longer
requires specialised, administrative knowledge of BLA-IPO but a legal question p
roperly recognizable by the CA.
RA 8293 is silent with respect to any remedy available to litigants who intend to
question an interlocutory order issued by the BLA-IPO. Moreover, Section 1(c),
Rule 14 of the Rules and Regulations on Administrative Complaints for Violation
of Laws Involving Intellectual Property Rights simply provides that interlocutor
y orders shall not be appealable. The said Rules and Regulations do not prescrib
e a procedure within the administrative machinery to be followed in assailing or
ders issued by the BLA-IPO pending final resolution of a case filed with them. H
ence, in the absence of such a remedy, the provisions of the Rules of Court shal
l apply in a suppletory manner, as provided under Section 3, Rule 1 of the same

Rules and Regulations. Hence, in the present case, respondents correctly resorte
d to the filing of a special civil action for certiorari with the CA to question
the assailed Orders of the BLA-IPO, as they cannot appeal therefrom and they ha
ve no other plain, speedy and adequate remedy in the ordinary course of law. Thi
s is consistent with Sections 1 and 4, Rule 65 of the Rules of Court, as amended
.