Patent disputes shape intellectual property law and set precedents for how innovation should be protected from infringement or unauthorized use. Although relatively scarce, the analysis of patent jurisprudence is crucial for applying legal principles, setting parameters, and fostering an environment that balances the rights of inventors with the interests of modern society.
This article highlights three significant patent cases that have influenced legal interpretations, enforcement strategies, and the rights of inventors in the Philippines.
Importance of Understanding Patent Cases
In E.I Dupont De Nemours and Co., Justice Leonen emphatically emphasized that a patent is granted to provide rights and protection to the inventor after an invention is disclosed to the public. It also seeks to restrain and prevent unauthorized persons from unjustly profiting from a protected invention. However, ideas not covered by a patent are free for the public to use and exploit. Thus, there are procedural rules on the application and grant of patents established to protect against any infringement. To balance the public interests involved, failure to comply with strict procedural rules will fail in obtaining a patent.1
Through jurisprudence, you get to understand how these procedural rules are applied by the justice system, and how a patent holder protects his or her exclusive rights to a patent. In a technological age where infringement is on the rise, equipping yourself with the right jurisprudence is important to keeping Philippine intellectual property law relevant and responsive to IP challenges that confront us today.
3 Recent Jurisprudence on Trademark Infringement and their Applications
Building on the premise that jurisprudence on patents is crucial in establishing an effective intellectual property system, these 3 significant cases will give you a head start on the trajectory of patent rights in the Philippines. These are:
1. E.I. Dupont De Numours and Co., (2016)2
The case involves E.I. Dupont De Nemours (E.I. Dupont), an American corporation that is likewise the assignee of inventors who filed a Philippine Patent Application No. 35526 for Angiotensin II Receptor Blocking Imidazole (losartan), a medication for hypertension and heart failure.
E.I. Dupont argued that it was unaware that its application had been abandoned in 1988 due to its local agent's failure to respond. The company only learned of the abandonment in 2002 when it attempted to revive the application, further arguing that it had not been informed of Atty. Mapili’s passing. However, the Intellectual Property Office (IPO) denied the revival request, citing that it was filed beyond the allowable period.
Here, the Court underscored that an abandoned patent application may only be revived within four (4) months from the date of abandonment. No extension of this period is provided by the 1962 Revised Rules of Practice. Section 113 states:
113. Revival of abandoned application.- An application abandoned for failure to prosecute may be revived as a pending application if it is shown to the satisfaction of the Director that the delay was unavoidable. An abandoned application may be revived as a pending application within four months from the date of abandonment upon good cause shown and upon the payment of the required fee of ₱25. An application not revived within the specified period shall be deemed forfeited.
Hence, granting the petition for revival despite the petitioner’s inexcusable negligence would harm the public interest. If the petitioner secures a patent for its losartan products, it could reduce market competition and lead to higher prices. To safeguard the public interest, Philippine Patent Application No. 35526 should remain forfeited.
2. Boehringer Ingelheim Pharma GmbH & Co v. Suhitas Pharmaceutical Inc. (2021)3
In this case, Boehringer Ingelheim GMBH (petitioner-appellant) filed a Complaint for Patent Infringement with an Application for Temporary Restraining Order and/or Preliminary Injunction against Suhitas for the alleged infringement on Patent No. 1-1992-43878 containing a specific compound and process.
The BLA used two tests in determining the infringement, to wit:
Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. In using literal infringement as a test, ".... resort must be had, in the first instance, to the words of the claim. If the accused matter clearly falls within the claim, infringement is made out and that is the end of it." The doctrine of equivalents will be discussed below.
In its decision, the Bureau of Legal Affairs declared that Boehringer’s patent is valid, emphasizing that Suhitas had committed patent infringement when it imported and distributed Misar and Misar-H drugs which contain the chemical compound of telmisartan patented in the name of Boehringer.
3. Phillips Seafood Philippines Corporation v. Tuna Processors, Inc. (2023)4
Phillips, a domestic corporation engaged in processing seafood, faced a patent infringement complaint filed in 2003 by Tuna Processors, Inc. (TPI), a California-based foreign corporation and successor-in-interest to Kanemitsu Yamaoka. Yamaoka, co-patentee of Philippine Patent No. I-31138 claimed that Phillips unlawfully used the patented process for curing tuna meat, involving extra-low-temperature smoking with a cooling unit. Phillips denied infringement, arguing its method is different as it did not use a cooling unit and raised the patent's invalidity.
Here, the Court emphasized the doctrine of equivalents, which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. Thus, according to this doctrine, "an infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result.” This also acts as the presumption that an identical product was obtained from the patented process.
As such, the Court ruled that TPI and its predecessors-in-interest failed to discharge their burden of proving that Phillips appropriated the innovative concept of Patent I-31138.
Conclusion
Understanding these patent cases provides valuable insights into how intellectual property law is applied, and its impact on innovation and commerce. These cases highlight the importance of protecting inventors’ rights while balancing public interest and fair competition in the market.
Want to know more about patent cases? Book a consultation with an accredited attorney. You may also email us at admin@pinollaw.com.
1 G.R. No. 174379, August 31, 2016
2 Id
3 IPV No. 10-2015-00011 (2021)
4 G.R. No. 214148, February 06, 2023
