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Philippines – Case Notes:Phil Pharmawealth v.

January 31, 2011 by mirandah
The Supreme Court of the Philippines was recently faced with an intriguing
issue: Is it permissible to grant an injunction in respect of a patent post-
expiration of the patent term? The Supreme Court also had the opportunity to
opine on another interesting issue, that of forum shopping. Without jumping
the gun by stating how the Supreme Court dealt with the issues, it may be
pertinent to briefly dwell on what transpired and how the issues arose in Phil
Pharmawealth, Inc v. Pfizer, Inc and Pfizer (Phil) Inc.

A Peek into How the Events Unfurled

The case involved Philippines Letters Patent No 21116, covering Ampicillin
sodium/ Sulbactam sodium (Sulbactam Ampicillin)[SA], a substance which
was marketed under the brand name Unasyn. The subject patent was issued
on July 16, 1987, and under the old patents regime it had a term of protection
of 17 years reckoned from the date of issuance, viz. until July 16, 2004.

Sometime in 2003, Pfizer came to know that Phil Pharmawealth

(Pharmawealth) had submitted bids for the supply of SA to several hospitals
without Pfizer’s consent. Following an unsuccessful attempt to prevent the
hospitals from accepting Pharmawealth’s bids, Pfizer filed a complaint for
patent infringement with the Bureau of Legal Affairs of the Intellectual
Property Office (BLA-IPO). A preliminary injunction was issued for a period
of 90 days.

Prior to the expiration, Pfizer filed a Motion for Extension of Writ of

Preliminary Injunction, which was denied. Aggrieved, Pfizer filed a special
civil action for certiorari with the Court of Appeals assailing the resolution of
the BLA-IPO and praying for the issuance of a preliminary mandatory
injunction for the reinstatement and extension of the writ of preliminary
injunction issued by the BLA-IPO. Meanwhile, Pfizer filed a complaint
before the Regional Trial Court of Makati City, alleging infringement and
unfair competition and praying for the issuance of a temporary restraining
order and preliminary injunction.
Pharmawealth then filed a Motion to Dismiss before the Court of Appeals on
the ground of forum shopping, contending that the case filed with the
Regional Trial Court had the same objective. On January 18, 2005, the Court
of Appeals issued the questioned resolution directing the issuance of a
temporary restraining order conditioned upon Pfizer’s filing of a bond. To
which, Pharmawealth filed its Second Motion to Dismiss for being moot and
academic, contending that Pfizer’s patent had already lapsed. The patent right
sought to be protected by the temporary restraining order has been

Determination by the Supreme Court

Pharmawealth brought this matter to the Supreme Court and questioned the
propriety of the Court of Appeals Resolution dated January 18, 2005; the
Supreme Court ruled that the patent owner’s exclusive rights can only be
enforced during the patent’s term of protection.

Period of Monopoly granted by a Patent

Pfizer’s exclusive rights to monopolize the product subject of the Patent only
exist within the term of the patent or until July 16, 2004. After this period,
Pfizer no longer possess any right of monopoly, and as such, there is no more
basis for the issuance of a restraining order or injunction. Since the patent,
which was initially the basis of the BLA-IPO for issuing the injunction, was
no longer valid, any issue as to the propriety of extending the life of the
injunction was already moot and academic. Section 37 of RA 166 is clear
that the exclusive right of a patentee to make, use and sell a patented product,
article or process exist only during the term of the patent.

Forum Shopping?
Antecedent to the main issue, was the claim of forum shopping, to which the
Supreme Court found Pfizer guilty for having instituted separate actions
before the IPO and the Regional Trial Court, praying for the same relief.
It appears that the ultimate objective which Pfizer seeks to achieve in their
separate complaints filed with IPO-BLA and then the Regional Trial Court
Makati is to ask for damages for the alleged violation of their right to
exclusively sell SA products and to permanently prevent Pharmawealth from
selling said products.