Pharmawealth vs.

Pfizer (Patent Infringement) Clearly, the patentees exclusive rights exist only during
December 19, 2010 the term of the patent. Since the patent was registered
Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), on 16 July 1987, it expired, in accordance with the
Inc. G.R. No. 167715, 17 November 2010 provisions of R.A. 165, after 17 years, or 16 July 2004.
Thus, after 16 July 2004, Pfizer no longer possessed the
Facts: Pfizer is the registered owner of a patent exclusive right to make, use, and sell the products
pertaining to Sulbactam Ampicillin. It is marketed under covered by their patent. The CA was wrong in issuing a
the brand name Unasyn. Sometime in January and temporary restraining order after the cut-off date.
February 2003, Pfizer discovered that Pharmawealth
submitted bids for the supply of Sulbactam Ampicillin to b) According to IP Code, the Director General of the IPO
several hospitals without the Pfizers consent. Pfizer exercises exclusive jurisdiction over decisions of the
then demanded that the hospitals cease and desist from IPO-BLA. The question in the CA concerns an
accepting such bids. Pfizer also demanded that interlocutory order, and not a decision. Since the IP
Pharmawealth immediately withdraw its bids to supply Code and the Rules and Regulations are bereft of any
Sulbactam Ampicillin. Pharmawealth and the hospitals remedy regarding interlocutory orders of the IPO-BLA,
ignored the demands. the only remedy available to Pfizer is to apply the Rules
and Regulations suppletorily. Under the Rules, a petition
Pfizer then filed a complaint for patent infringement with for certiorari to the CA is the proper remedy. This is
a prayer for permanent injunction and forfeiture of the consistent with the Rules of Court. Thus, the CA had
infringing products. A preliminary injunction effective for jurisdiction.
90 days was granted by the IPOs Bureau of Legal
Affairs (IPO-BLA). Upon expiration, a motion for
extension filed by Pfizer was denied. Pfizer filed a
Special Civil Action for Certiorari in the Court of Appeals G.R. No. 167715. November 17, 2010.*
(CA) assailing the denial. PHIL PHARMAWEALTH, INC., petitioner, vs.PFIZER,
INC. and PFIZER (PHIL.) INC., respondents.
While the case was pending in the CA, Pfizer filed with Intellectual Property; Patents; The exclusive right of
the Regional Trial Court of Makati (RTC) a complaint for a patentee to make, use and sell a patented product,
infringement and unfair competition, with a prayer for article or process exists only during the term of the
injunction. The RTC issued a temporary restraining patent.It is clear from the above-quoted provision of
order, and then a preliminary injunction. law that the exclusive right of a patentee to make, use
and sell a patented product, article or process exists only
Pharmawealth filed a motion to dismiss the case in the during the term of the patent. In the instant case,
CA, on the ground of forum shopping. Nevertheless, the Philippine Letters Patent No. 21116, which was the basis
CA issued a temporary restraining order. Pharmawealth of respondents in filing their complaint with the BLA-IPO,
again filed a motion to dismiss, alleging that the patent, was issued on July 16, 1987. This fact was admitted by
the main basis of the case, had already lapsed, thus respondents themselves in their complaint. They also
making the case moot, and that the CA had no admitted that the validity of the said patent is until July
jurisdiction to review the order of the IPO-BLA because 16, 2004, which is in conformity with Section 21 of RA
this was granted to the Director General. The CA denied 165, providing that the term of a patent shall be
all the motions. Pharmawealth filed a petition for review seventeen (17) years from the date of issuance thereof.
on Certiorari with the Supreme Court. Section 4, Rule 129 of the Rules of Court provides that
an admission, verbal or written, made by a party in the
Issues: course of the proceedings in the same case, does not
a) Can an injunctive relief be issued based on an action require proof and that the admission may be
of patent infringement when the patent allegedly contradicted only by showing that it was made through
infringed has already lapsed? palpable mistake or that no such admission was made.
b) What tribunal has jurisdiction to review the decisions Remedial Law; Injunction; Requisites to Warrant
of the Director of Legal Affairs of the Intellectual Property the Issuance of an Injunctive Relief.From the
Office? foregoing, it can be inferred that two requisites must
exist to warrant the issuance of an injunctive relief,
Held: namely: (1) the existence of a clear and unmistakable
a) No. The provision of R.A. 165, from which the Pfizers right that must be protected; and (2) an urgent and
patent was based, clearly states that "[the] patentee paramount necessity for the writ to prevent serious
shall have the exclusive right to make, use and sell the damage.
patented machine, article or product, and to use the Same; Certiorari; Appeals; What is being
patented process for the purpose of industry or questioned before the Court of Appeals (CA) is a not a
commerce, throughout the territory of the Philippines for decision, but an interlocutory order of the Bureau of
the term of the patent; and such making, using, or selling Legal Affairs of the Intellectual Property Office (BLA-
by any person without the authorization of the patentee IPO) denying respondents motion to extend the life of
constitutes infringement of the patent." the preliminary injunction issued in their favor.It is true
that under Section 7(b) of RA 8293, otherwise known as
the Intellectual Property Code of the Philippines, which is 1 SUPREME COURT REPORTS ANNOTATE
the presently prevailing law, the Director General of the 42
IPO exercises exclusive appellate jurisdiction over all Phil Pharmawealth, Inc. vs. Pfizer, Inc.
decisions rendered by the Director of the BLA-IPO. ters of fact. It is settled that one of the exceptions
However, to the doctrine of primary jurisdiction is where the
_______________ question involved is purely legal and will ultimately have
* SECOND DIVISION. to be decided by the courts of justice. This is the case
141 with respect to the issue raised in the petition filed with
VOL. 635, NOVEMBER 17, 2010 the CA.14
1
Same; Actions; Forum Shopping; Definition of
Phil Pharmawealth, Inc. vs. Pfizer, Inc. Forum Shopping; Elements of Forum Shopping.Forum
what is being questioned before the CA is not a shopping is defined as the act of a party against whom
decision, but an interlocutory order of the BLA-IPO an adverse judgment has been rendered in one forum,
denying respondents motion to extend the life of the of seeking another (and possibly favorable) opinion in
preliminary injunction issued in their favor. another forum (other than by appeal or the special civil
Same; Same; Same; Republic Act (RA) 8293 is action of certiorari), or the institution of two (2) or more
silent with respect to any remedy available to litigants actions or proceedings grounded on the same cause on
who intend to question an interlocutory order issued by the supposition that one or the other court would make a
the Bureau of Legal Affairs of the Intellectual Property favorable disposition. The elements of forum shopping
Office (BLA-IPO); Respondents correctly resorted to the are: (a) identity of parties, or at least such parties that
filing of a special civil action for certiorari with the Court represent the same interests in both actions; (b) identity
of Appeals (CA) to question the assailed Orders of the of rights asserted and reliefs prayed for, the reliefs being
Bureau of Legal Affairs of the Intellectual Property Office founded on the same facts; (c) identity of the two
(BLA-IPO) as they cannot appeal therefrom and they preceding particulars, such that any judgment rendered
have no other plain, speedy and adequate remedy in the in the other action will, regardless of which party is
ordinary course of law.RA 8293 is silent with respect successful, amount to res judicata in the action under
to any remedy available to litigants who intend to consideration.
question an interlocutory order issued by the BLA-IPO. Same; Same; Same; It is settled by the Court in
Moreover, Section 1(c), Rule 14 of the Rules and several cases that the filing by a party of two apparently
Regulations on Administrative Complaints for Violation of different actions but with the same objective constitutes
Laws Involving Intellectual Property Rights simply forum shopping.It is settled by this Court in several
provides that interlocutory orders shall not be cases that the filing by a party of two apparently different
appealable. The said Rules and Regulations do not actions but with the same objective constitutes forum
prescribe a procedure within the administrative shopping. The Court discussed this species of forum
machinery to be followed in assailing orders issued by shopping as follows: Very simply stated, the original
the BLA-IPO pending final resolution of a case filed with complaint in the court a quo which gave rise to the
them. Hence, in the absence of such a remedy, the instant petition was filed by the buyer (herein private
provisions of the Rules of Court shall apply in a respondent and his predecessors-in-interest) against the
suppletory manner, as provided under Section 3, Rule 1 seller (herein petitioners) to enforce the alleged
of the same Rules and Regulations. Hence, in the perfected sale of real estate. On the other hand, the
present case, respondents correctly resorted to the filing complaint in the Second Case seeks to declare such
of a special civil action for certiorari with the CA to purported sale involving the same real property as
question the assailed Orders of the BLA-IPO, as they unenforceable as against the Bank, which is the
cannot appeal therefrom and they have no other plain, petitioner herein. In other words, in the Second Case,
speedy and adequate remedy in the ordinary course of the majority stockholders, in representation of the Bank,
law. This is consistent with Sections 1 and 4, Rule 65 of are seeking to accomplish what the Bank itself failed to
the Rules of Court, as amended. do in the original case in the trial court. In brief, the
Same; Courts; Doctrine of Primary Jurisdiction; It is objective or the relief being sought, though worded
settled that one of the exceptions to the doctrine of differently, is the same, namely, to enable the
primary jurisdiction is where the question involved is petitioner Bank to escape from the obligation to sell
purely legal and will ultimately have to be decided by the the property to respondent.143
courts of justice.The propriety of extending the life of VOL. 635, NOVEMBER 17, 2010
the writ of preliminary injunction issued by the BLA-IPO
in the exercise of its quasi-judicial power is no longer a Phil Pharmawealth, Inc. vs. Pfizer, Inc.
matter that falls within the jurisdiction of the said Same; Same; Same; If the forum shopping is not
administrative agency, particularly that of its Director considered willful and deliberate, the subsequent case
General. The resolution of this issue which was raised shall be dismissed without prejudice, on the ground of
before the CA does not demand the exercise by the IPO either litis pendentia or res judicata; If the forum
of sound administrative discretion requiring special shopping is willful and deliberate, both (on all, if there
knowledge, experience and services in determining are more than two) actions shall be dismissed with
technical and intricate mat- prejudice.Jurisprudence holds that if the forum
142 shopping is not considered willful and deliberate, the
subsequent case shall be dismissed without prejudice, specific compound of the formula IA disclosed and
on the ground of either litis pendentia or res judicata. claimed in the Patent.
However, if the forum shopping is willful and deliberate, 8. Pfizer is marketing Sulbactam Ampicillin under
both (or all, if there are more than two) actions shall be the brand name Unasyn. Pfizers Unasyn products,
dismissed with prejudice. In the present case, the Court which come in oral and IV formulas, are covered by
finds that respondents did not deliberately violate the Certificates of Product Registration (CPR) issued by
rule on non-forum shopping. Respondents may not be the Bureau of Food and Drugs (BFAD) under the name
totally blamed for erroneously believing that they can file of complainants. The sole and exclusive distributor of
separate actions simply on the basis of different patents. Unasyn products in the Philippines is Zuellig Pharma
Moreover, in the suit filed with the RTC of Makati City, Corporation, pursuant to a Distribution Services
respondents were candid enough to inform the trial court Agreement it executed with Pfizer Phils. on January 23,
of the pendency of the complaint filed with the BLA-IPO 2001.
as well as the petition for certiorari filed with the CA. On 9. Sometime in January and February 2003,
these bases, only Civil Case No. 04-754 should be complainants came to know that respondent [herein
dismissed on the ground of litis pendentia. petitioner] submitted bids for the supply of Sulbactam
PETITION for review on certiorari of the resolutions of Ampicillin to several hospitals without the consent of
the Court of Appeals. complainants and in violation of the complainants
The facts are stated in the opinion of the Court. intellectual property rights. x x x
Jorge Cesar M. Sandiego for petitioner. _______________
Castillo, Laman, Tan, Pantaleon and San Jose for 3 Rollo, pp. 62-73.
respondents. 145
PERALTA, J.: VOL. 635, NOVEMBER 17, 2010
Before the Court is a petition for review Phil Pharmawealth, Inc. vs. Pfizer, Inc.
on certiorari seeking to annul and set aside the xxxx
Resolutions dated January 18, 20051 and April 11, 10. Complainants thus wrote the above hospitals
20052 by the Court of Appeals (CA) in CA-G.R. SP No. and demanded that the latter immediately cease and
82734. desist from accepting bids for the supply [of] Sulbactam
_______________ Ampicillin or awarding the same to entities other than
1 Penned by Associate Justice Arcangelita M. complainants. Complainants, in the same letters sent
Romilla-Lontok, with Associate Justices Rodrigo V. through undersigned counsel, also demanded that
Cosico and Danilo B. Pine, concurring; Rollo, pp. 121- respondent immediately withdraw its bids to supply
122. Sulbactam Ampicillin.
2 Id., at pp. 144-148. 11. In gross and evident bad faith, respondent and
144 the hospitals named in paragraph 9 hereof, willfully
144 SUPREME COURT REPORTS ANNOTATED ignored complainants just, plain and valid demands,
Phil Pharmawealth, Inc. vs. Pfizer, Inc. refused to comply therewith and continued to infringe the
The instant case arose from a Complaint3 for patent Patent, all to the damage and prejudice of complainants.
infringement filed against petitioner Phil Pharmawealth, As registered owner of the Patent, Pfizer is entitled to
Inc. by respondent companies, Pfizer, Inc. and Pfizer protection under Section 76 of the IP Code.
(Phil.), Inc., with the Bureau of Legal Affairs of the x x x x4
Intellectual Property Office (BLA-IPO). The Complaint Respondents prayed for permanent injunction,
alleged as follows: damages and the forfeiture and impounding of the
x x x x alleged infringing products. They also asked for the
6. Pfizer is the registered owner of Philippine issuance of a temporary restraining order and a
Letters Patent No. 21116 (the Patent) which was preliminary injunction that would prevent herein
issued by this Honorable Office on July 16, 1987. The petitioner, its agents, representatives and assigns, from
patent is valid until July 16, 2004. The claims of this importing, distributing, selling or offering the subject
Patent are directed to a method of increasing the product for sale to any entity in the Philippines.
effectiveness of a beta-lactam antibiotic in a mammalian In an Order5 dated July 15, 2003 the BLA-IPO
subject, which comprises co-administering to said issued a preliminary injunction which was effective for
subject a beta-lactam antibiotic effectiveness increasing ninety days from petitioners receipt of the said Order.
amount of a compound of the formula IA. The scope of Prior to the expiration of the ninety-day period,
the claims of the Patent extends to a combination of respondents filed a Motion for Extension of Writ of
penicillin such as ampicillin sodium and beta-lactam Preliminary Injunction6which, however, was denied by
antibiotic like sulbactam sodium. the BLA-IPO in an Order7 dated October 15, 2003.
7. Patent No. 21116 thus covers ampicillin _______________
sodium/sulbactam sodium (hereafter Sulbactam 4 Id., at pp. 64-66.
Ampicillin). Ampicillin sodium is a specific example of 5 Annex E to Petition, Rollo, pp. 74-75.
the broad beta-lactam antibiotic disclosed and claimed in 6 CA Rollo, pp. 154-157.
the Patent. It is the compound which efficacy is being 7 Annex F to Petition, Rollo, pp. 76-77.
enhanced by co-administering the same with sulbactam 146
sodium. Sulbactam sodium, on the other hand, is a 146 SUPREME COURT REPORTS ANNOTATED
 Phil Pharmawealth, Inc. vs. Pfizer, Inc. On February 7, 2005, petitioner again filed a Motion
Respondents filed a Motion for Reconsideration but to Dismiss15 the case for being moot and academic,
the same was also denied by the BLA-IPO in a contending that respondents patent had already lapsed.
Resolution8 dated January 23, 2004. In the same manner, petitioner also moved for the
Respondents then filed a special civil action reconsideration of the temporary restraining order issued
for certiorari with the CA assailing the October 15, 2003 by the CA on the same basis that the patent right sought
and January 23, 2004 Resolutions of the BLA-IPO. to be protected has been extinguished due to the lapse
Respondents also prayed for the issuance of a of the patent license and on the ground that the CA has
preliminary mandatory injunction for the reinstatement no jurisdiction to review the order of the BLA-IPO as said
and extension of the writ of preliminary injunction issued jurisdiction is vested by law in the Office of the Director
by the BLA-IPO. General of the IPO.
While the case was pending before the CA, On April 11, 2005, the CA rendered its presently
respondents filed a Complaint9 with the Regional Trial assailed Resolution denying the Motion to Dismiss,
Court (RTC) of Makati City for infringement and unfair dated November
competition with damages against herein petitioner. In _______________
said case, respondents prayed for the issuance of a 12 CA Rollo, pp. 379-388.
temporary restraining order and preliminary injunction to 13 Annex K to Petition, Rollo, pp. 121-122.
prevent herein petitioner from importing, distributing, 14 Annex K-1 to Petition, Rollo, pp. 123-124.
selling or offering for sale sulbactam ampicillin products 15 CA Rollo, pp. 428-435.
to any entity in the Philippines. Respondents asked the 148
trial court that, after trial, judgment be rendered awarding 148 SUPREME COURT REPORTS ANNOTATED
damages in their favor and making the injunction Phil Pharmawealth, Inc. vs. Pfizer, Inc.
permanent. 16, 2004, and the motion for reconsideration, as well as
On August 24, 2004, the RTC of Makati City issued Motion to Dismiss, both dated February 7, 2005.
an Order10 directing the issuance of a temporary Hence, the present petition raising the following
restraining order conditioned upon respondents filing of issues:
a bond. a) Can an injunctive relief be issued based on an
In a subsequent Order11 dated April 6, 2005, the action of patent infringement when the patent allegedly
same RTC directed the issuance of a writ of preliminary infringed has already lapsed?
injunction prohibiting and restraining [petitioner], its b) What tribunal has jurisdiction to review the
agents, representatives and assigns from importing, decisions of the Director of Legal Affairs of the
distributing or selling Sulbactam Ampicillin products to Intellectual Property Office?
any entity in the Philippines. c) Is there forum shopping when a party files two
_______________ actions with two seemingly different causes of action and
8 CA Rollo, pp. 32-33. yet pray for the same relief?16
9 Annex I to Petition, Rollo, pp. 105-116. In the first issue raised, petitioner argues that
10 Records, Vol. 1, p. 382. respondents exclusive right to monopolize the subject
11 Annex J to Petition, Rollo, pp. 117-119. matter of the patent exists only within the term of the
147 patent. Petitioner claims that since respondents patent
VOL. 635, NOVEMBER 17, 2010 expired147on July 16, 2004, the latter no longer possess
Phil Pharmawealth, Inc. vs. Pfizer, Inc. any right of monopoly and, as such, there is no more
Meanwhile, on November 16, 2004, petitioner filed a basis for the issuance of a restraining order or injunction
Motion to Dismiss12 the petition filed with the CA on the against petitioner insofar as the disputed patent is
ground of forum shopping, contending that the case filed concerned.
with the RTC has the same objective as the petition filed The Court agrees.
with the CA, which is to obtain an injunction prohibiting Section 37 of Republic Act No. (RA) 165,17which was
petitioner from importing, distributing and selling the governing law at the time of the issuance of
Sulbactam Ampicillin products. respondents patent, provides:
On January 18, 2005, the CA issued its questioned Section 37. Rights of patentees.A patentee
Resolution13 approving the bond posted by respondents shall have the exclusive right to make, use and sell the
pursuant to the Resolution issued by the appellate court patented machine, article or product, and to use the
on March 23, 2004 which directed the issuance of a patented process for the purpose of industry or
temporary restraining order conditioned upon the filing of commerce, throughout the territory of the Philippines for
a bond. On even date, the CA issued a temporary the term of the patent; and such making, using, or
restraining order14 which prohibited petitioner from selling by any
importing, distributing, selling or offering for sale _______________
Sulbactam Ampicillin products to any hospital or to any 16 Rollo, pp. 11-12.
other entity in the Philippines, or from infringing Pfizer 17 An Act Creating a Patent Office, Prescribing its
Inc.s Philippine Patent No. 21116 and impounding all Powers and Duties, Regulating the Issuance of Patents
the sales invoices and other documents evidencing and Appropriating Funds Therefor.
sales by [petitioner] of Sulbactam Ampicillin products.
149
 VOL. 635, NOVEMBER 17, 2010 injustice
149and irreparable injury, a temporary restraining
Phil Pharmawealth, Inc. vs. Pfizer, Inc. order may be issued ex parte.
person without the authorization of the patentee From the foregoing, it can be inferred that two
constitutes infringement of the patent.18 requisites must exist to warrant the issuance of an
It is clear from the above-quoted provision of law that injunctive relief, namely: (1) the existence of a clear and
the exclusive right of a patentee to make, use and sell a unmistakable right that must be protected; and (2) an
patented product, article or process exists only during urgent and paramount necessity for the writ to prevent
the term of the patent. In the instant case, Philippine serious damage.19
Letters Patent No. 21116, which was the basis of In the instant case, it is clear that when the CA
respondents in filing their complaint with the BLA-IPO, issued its January 18, 2005 Resolution approving the
was issued on July 16, 1987. This fact was admitted by bond filed by respondents, the latter no longer had a
respondents themselves in their complaint. They also right that must be protected, considering that Philippine
admitted that the validity of the said patent is until July Letters Patent No. 21116 which was issued to them
16, 2004, which is in conformity with Section 21 of RA already expired on July 16, 2004. Hence, the issuance
165, providing that the term of a patent shall be by the CA of a temporary restraining order in favor of the
seventeen (17) years from the date of issuance thereof. respondents is not proper.
Section 4, Rule 129 of the Rules of Court provides that In fact, the CA should have granted petitioners
an admission, verbal or written, made by a party in the motion to dismiss the petition for certiorari filed before it
course of the proceedings in the same case, does not as the only issue raised therein is the propriety of
require proof and that the admission may be extending the writ of
contradicted only by showing that it was made through _______________
palpable mistake or that no such admission was made. 19 Angeles City v. Angeles Electric Corporation, G.R.
In the present case, there is no dispute as to No. 166134, June 29, 2010, 622 SCRA 43.
respondents admission that the term of their patent 151
expired on July 16, 2004. Neither is there evidence to VOL. 635, NOVEMBER 17, 2010
show that their admission was made through palpable Phil Pharmawealth, Inc. vs. Pfizer, Inc.
mistake. Hence, contrary to the pronouncement of the preliminary injunction issued by the BLA-IPO. Since the
CA, there is no longer any need to present evidence on patent which was the basis for issuing the injunction,
the issue of expiration of respondents patent. was no longer valid, any issue as to the propriety of
On the basis of the foregoing, the Court agrees with extending the life of the injunction was already rendered
petitioner that after July 16, 2004, respondents no longer moot and academic.
possess the exclusive right to make, use and sell the As to the second issue raised, the Court, is not
articles or products covered by Philippine Letters Patent persuaded by petitioners argument that, pursuant to the
No. 21116. doctrine of primary jurisdiction, the Director General of
Section 3, Rule 58, of the Rules of Court lays down the IPO and not the CA has jurisdiction to review the
the requirements for the issuance of a writ of preliminary questioned Orders of the Director of the BLA-IPO.
injunction, viz.: It is true that under Section 7(b) of RA 8293,
_______________ otherwise known as the Intellectual Property Code of the
18 Emphasis supplied. Philippines, which is the presently prevailing law, the
150 Director General of the IPO exercises exclusive
150 SUPREME COURT REPORTS ANNOTATED appellate jurisdiction over all decisions rendered by the
Phil Pharmawealth, Inc. vs. Pfizer, Inc. Director of the BLA-IPO. However, what is being
(a) That the applicant is entitled to the relief questioned before the CA is not a decision, but an
demanded, and the whole or part of such relief consists interlocutory order of the BLA-IPO denying respondents
in restraining the commission or continuance of the acts motion to extend the life of the preliminary injunction
complained of, or in requiring the performance of an act issued in their favor.
or acts, either for a limited period or perpetually; RA 8293 is silent with respect to any remedy
(b) That the commission, continuance or non- available to litigants who intend to question an
performance of the act or acts complained of during the interlocutory order issued by the BLA-IPO. Moreover,
litigation would probably work injustice to the applicant; Section 1(c), Rule 14 of the Rules and Regulations on
or Administrative Complaints for Violation of Laws Involving
(c) That a party, court, or agency or a person is Intellectual Property Rights simply provides that
doing, threatening, or attempting to do, or is procuring or interlocutory orders shall not be appealable. The said
suffering to be done, some act or acts probably in Rules and Regulations do not prescribe a procedure
violation of the rights of the applicant respecting the within the administrative machinery to be followed in
subject of the action or proceeding, and tending to assailing orders issued by the BLA-IPO pending final
render the judgment ineffectual. resolution of a case filed with them. Hence, in the
absence of such a remedy, the provisions of the Rules of
In this connection, pertinent portions of Section 5, Court shall apply in a suppletory manner, as provided
Rule 58 of the same Rules provide that if the matter is of under Section 3, Rule 1 of the same Rules and
extreme urgency and the applicant will suffer grave Regulations. Hence, in the present case, respondents
correctly resorted to the filing of a special civil action
for certiorari with the CA to question the assailed Orders cannot or will not determine a controversy involving a
of the BLA-IPO, as they cannot appeal therefrom and question which is within the jurisdiction of the
they have no other plain, speedy and adequate remedy administrative tribunal prior to the resolution of that
in the question by the administrative tribunal, where the
152 question demands the exercise of sound administrative
152 SUPREME COURT REPORTS ANNOTATED discretion requiring the special knowledge, experience
Phil Pharmawealth, Inc. vs. Pfizer, Inc. and services of the administrative tribunal to determine
ordinary course of law. This is consistent with Sections technical and intricate matters of fact, and a uniformity of
120 and 4,21 Rule 65 of the Rules of Court, as amended. ruling is essential to comply with the premises of the
_______________ regulatory statute administered. The objective of the
20 Section 1. Petition for certiorari.When any doctrine of primary jurisdiction is to guide a court in
tribunal, board or officer exercising judicial or quasi- determining whether it should refrain from exercising its
judicial functions has acted without or in excess of jurisdiction until after an administrative agency has
its or his jurisdiction, or with grave abuse of determined some question or some aspect of some
discretion amounting to lack or excess of its or his question arising in the proceeding before the court. It
jurisdiction, and there is no appeal, or any plain, applies where the claim is originally cognizable in the
speedy and adequate remedy in the ordinary course courts and comes into play whenever enforcement of the
of law, a person aggrieved thereby may file a verified claim requires the resolution of issues which, under a
petition in the proper court, alleging the facts with regulatory scheme, has been placed within the special
certainty and praying that judgment be rendered competence of an administrative body; in such case, the
annulling or modifying the proceedings of such tribunal, judicial process is suspended pending referral of such
board or officer, and granting such incidental reliefs as issues to the administrative body for its view.22
law and justice may require. Based on the foregoing, the Court finds that
The petition shall be accompanied by a certified true respondents initial filing of their complaint with the BLA-
copy of the judgment, order or resolution subject thereof, IPO, instead of the regular courts, is in keeping with the
copies of all pleadings and documents relevant and doctrine of primary jurisdiction owing to the fact that the
pertinent thereto, and a sworn certification of non-forum determination of the basic issue of whether petitioner
shopping as provided in the third paragraph of Section 3, violated respondents patent rights requires the exercise
Rule 46. (Emphasis supplied) by the IPO of sound administrative discretion which is
21 Sec. 4. When and where petition filed.The based on the agencys special competence, knowledge
petition may be filed not later than sixty (60) days from and experience.
notice of the judgment, order of resolution. In case a _______________
motion for reconsideration or new trial is timely filed, 22 Fabia v. Court of Appeals, 437 Phil. 389, 402-403;
whether such motion is required or not, the sixty (60)- 388 SCRA 574, 585 (2002).
day period shall be counted from notice of denial of said 154
motion. 154 SUPREME COURT REPORTS ANNOTATED
If it relates to the acts or omissions of a lower court Phil Pharmawealth, Inc. vs. Pfizer, Inc.
or of a corporation, board or officer or person, in the However, the propriety of extending the life of the writ
Regional Trial Court exercising jurisdiction over the of preliminary injunction issued by the BLA-IPO in the
territorial area as defined by the Supreme Court. It may exercise of its quasi-judicial power is no longer a matter
also be filed in the Court of Appeals whether or not the that falls within the jurisdiction of the said administrative
same is in aid of its appellate jurisdiction, or in the agency, particularly that of its Director General. The
Sandiganbayan if it is in aid of its appellate jurisdiction. If resolution of this issue which was raised before the CA
it involves the acts or omissions of a quasi-judicial does not demand the exercise by the IPO of sound
agency, and unless otherwise provided by law or administrative discretion requiring special knowledge,
these rules, the petition shall be filed in and experience and services in determining technical and
cognizable only by the Court of Appeals. intricate matters of fact. It is settled that one of the
In election cases involving an act or omission of a exceptions to the doctrine of primary jurisdiction is where
municipal or a regional trial court, the petition shall be the question involved is purely legal and will ultimately
filed exclusively with the Commission on Elections, in aid have to be decided by the courts of justice.23 This is the
of its appellate jurisdiction. (Emphasis supplied.) case with respect to the issue raised in the petition filed
153 with the CA.
VOL. 635, NOVEMBER 17, 2010 Moreover,
153 as discussed earlier, RA 8293 and its
Phil Pharmawealth, Inc. vs. Pfizer, Inc. implementing rules and regulations do not provide for a
In the first place, respondents act of filing their procedural remedy to question interlocutory orders
complaint originally with the BLA-IPO is already in issued by the BLA-IPO. In this regard, it bears to
consonance with the doctrine of primary jurisdiction. reiterate that the judicial power of the courts, as provided
This Court has held that: for under the Constitution, includes the authority of the
[i]n cases involving specialized disputes, the practice courts to determine in an appropriate action the validity
has been to refer the same to an administrative agency of the acts of the political departments.24 Judicial power
of special competence in observance of the doctrine of also includes the duty of the courts of justice to settle
primary jurisdiction. The Court has ratiocinated that it actual controversies involving rights which are legally
demandable and enforceable, and to determine whether causes of action as shown by the fact that the said
or not there has been a grave abuse of discretion complaints are founded on violations of different patents.
amounting to lack or excess of jurisdiction on the part of The Court is not persuaded.
any branch or instrumentality of the Section 2, Rule 2 of the Rules of Court defines a
Government.25 Hence, the CA, and not the IPO Director cause of action as the act or omission by which a party
General, has jurisdiction to determine whether the BLA- violates a right of another. In the instant case,
IPO committed grave abuse of discretion in denying respondents cause of action in their complaint filed with
_______________ the IPO is the alleged act of petitioner in importing,
23 Geraldine Gaw Guy and Grace Guy Cheu v. Alvin distributing, selling or offering for sale Sulbactam
Agustin T. Ignacio, G.R. Nos. 167824 and 168622, July Ampicillin products, acts that are supposedly violative of
2, 2010, 622 SCRA 678; Republic v. Lacap, G.R. No. respondents right to the exclusive sale of the said
158253, March 2, 2007, 517 SCRA 255, 266. products which are covered by the latters patent.
24 Smart Communications, Inc. (SMART) v. National However, a careful reading of the complaint filed with the
Telecommunications Commission (NTC), 456 Phil. 145, RTC of Makati City would show that respondents have
159; 408 SCRA 678, 689 (2003). the same cause of action as in their complaint filed with
25 Id. the IPO. They claim that they have the exclusive right to
155 make, use and sell Sulbactam Ampicillin products and
VOL. 635, NOVEMBER 17, 2010 that petitioner
155 violated this right. Thus, it does not matter
Phil Pharmawealth, Inc. vs. Pfizer, Inc. that the patents upon which the complaints were based
respondents motion to extend the effectivity of the writ are different. The fact remains that in both complaints
of preliminary injunction which the said office earlier the rights violated and the acts violative of such rights
issued. are identical.
Lastly, petitioner avers that respondents are guilty of In fact, respondents seek substantially the same
forum shopping for having filed separate actions before reliefs in their separate complaints with the IPO and the
the IPO and the RTC praying for the same relief. RTC for the purpose of accomplishing the same
The Court agrees. objective.
Forum shopping is defined as the act of a party It is settled by this Court in several cases that the
against whom an adverse judgment has been rendered filing by a party of two apparently different actions but
in one forum, of seeking another (and possibly with the same objective constitutes forum
shopping. 28 The Court discussed this species of forum
favorable) opinion in another forum (other than by
appeal or the special civil action of certiorari), or the shopping as follows:
institution of two (2) or more actions or proceedings _______________
grounded on the same cause on the supposition that 28 City of Naga v. Asuncion, G.R. No. 174042, July
one or the other court would make a favorable 9, 2008, 557 SCRA 528, 541; Clark Development
disposition.26 Corporation v. Mondragon Leisure and Resorts
The elements of forum shopping are: (a) identity of Corporation, G.R. No. 150986, supra note 26, at p.
parties, or at least such parties that represent the same 214; Riesenbeck v. Maceren, Jr., G.R. No. 158608,
interests in both actions; (b) identity of rights asserted January 27, 2006, 480 SCRA 362, 380; First Philippine
and reliefs prayed for, the reliefs being founded on the International Bank v. Court of Appeals, 322 Phil. 280;
same facts; (c) identity of the two preceding particulars, 252 SCRA 259 (1996); Danville Maritime Inc. v.
such that any judgment rendered in the other action will, Commission on Audit, G.R. Nos. 85285 & 87150, July
regardless of which party is successful, amount to res 28, 1989, 175 SCRA701.
judicata in the action under consideration.27 157
There is no question as to the identity of parties in VOL. 635, NOVEMBER 17, 2010
the complaints filed with the IPO and the RTC. Phil Pharmawealth, Inc. vs. Pfizer, Inc.
Respondents argue that they cannot be held guilty of Very simply stated, the original complaint in the
forum shopping because their complaints are based on court a quo which gave rise to the instant petition was
different filed by the buyer (herein private respondent and his
_______________ predecessors-in-interest) against the seller (herein
26 Pulido v. Abu, G.R. No. 170924, July 4, 2007, 526 petitioners) to enforce the alleged perfected sale of real
SCRA 483, 497; Clark Development Corporation v. estate. On the other hand, the complaint in the Second
Mondragon Leisure and Resorts Corporation, G.R. No. Case seeks to declare such purported sale involving the
150986, March 2, 2007, 517 SCRA 203, 213. same real property as unenforceable as against the
27 Pentacapital Investment Corporation v. Makilito Bank, which is the petitioner herein. In other words, in
Mahinay, G.R. No. 171736 and Pentacapital Corporation the Second Case, the majority stockholders, in
v. Makilito Mahinay, G.R. No. 181482, July 5, 2010, 623 representation of the Bank, are seeking to accomplish
SCRA 284; GD Express Worldwide N.V. v. Court of what the Bank itself failed to do in the original case in the
Appeals (Fourth Division), G.R. No. 136978, May 8, trial court. In brief, the objective or the relief being
2009, 587 SCRA 333, 346-347. sought, though worded differently, is the same,
156 namely, to enable the petitioner Bank to escape from
156 SUPREME COURT REPORTS ANNOTATED the obligation to sell the property to respondent.29
Phil Pharmawealth, Inc. vs. Pfizer, Inc.
 In Danville Maritime, Inc. v. Commission on (c) P1,000,000.00 as exemplary
Audit,30 the Court ruled as follows: damages; and
In the attempt to make the two actions appear to be (d) costs of this suit.
different, petitioner impleaded different respondents (iii) ordering the condemnation, seizure or
thereinPNOC in the case before the lower court and forfeiture of respondents infringing goods
the COA in the case before this Court and sought what or products, wherever they may be found,
seems to be different reliefs. Petitioner asks this Court to including the materials and implements
set aside the questioned letter-directive of the COA used in the commission of infringement, to
dated October 10, 1988 and to direct said body to be disposed of in such manner as may be
approve the Memorandum of Agreement entered into by deemed appropriate by this Honorable
and between the PNOC and petitioner, while in the Office; and
complaint before the lower court petitioner seeks to (iv) making the injunction permanent.32
enjoin the PNOC from conducting a rebidding and from _______________
selling to other parties the vessel T/T Andres Bonifacio, 32 Rollo, pp. 70-71.
and for an extension of time for it to comply with the 159
paragraph 1 of the memorandum of agreement and VOL. 635, NOVEMBER 17, 2010
damages. One can see that although the relief prayed Phil Pharmawealth, Inc. vs. Pfizer, Inc.
for in the two (2) actions are ostensibly different, the In an almost identical manner, respondents prayed
ultimate objective in both actions is the same, that for the following in their complaint filed with the RTC:
is, the approval of the sale of vessel in favor of (a) Immediately upon the filing of this action, issue
petitioner, and to overturn the letter directive of the an ex parte order:
COA of October 10, 1988 disapproving the sale.31 (1) temporarily restraining Pharmawealth, its
_______________ agents, representatives and assigns from
29 First Philippine International Bank v. Court of importing, distributing, selling or offering for
Appeals, supra, at pp. 307-308; pp. 284-285. (Emphasis sale infringing sulbactam ampicillin
supplied.) products to various government and
30 Supra note 28. private hospitals or to any other entity in
31 Id., at pp. 716-717. the Philippines, or from otherwise infringing
158 Pfizer Inc.s Philippine Patent No. 26810.
158 SUPREME COURT REPORTS ANNOTATED (2) impounding all the sales invoices and
Phil Pharmawealth, Inc. vs. Pfizer, Inc. other documents evidencing sales by
In the instant case, the prayer of respondents in their pharmawealth of sulbactam ampicillin
complaint filed with the IPO is as follows: products; and
A. Immediately upon the filing of this action, issue (3) disposing of the infringing goods outside
an ex parte order (a) temporarily restraining respondent, the channels of commerce.
its agents, representatives and assigns from importing, (b) After hearing, issue a writ of preliminary
distributing, selling or offering for sale Sulbactam injunction:
Ampicillin products to the hospitals named in paragraph (1) enjoining Pharmawealth, its agents,
9 of this Complaint or to any other entity in the representatives and assigns from
Philippines, or from otherwise infringing Pfizer Inc.s importing, distributing, selling or offering for
Philippine Patent No. 21116; and (b) impounding all the sale infringing sulbactam ampicillin
sales invoices and other documents evidencing sales by products to various government hospitals
respondent of Sulbactam Ampicillin products. or to any other entity in the Philippines, or
B. After hearing, issue a writ of preliminary from otherwise infringing Patent No.
injunction enjoining respondent, its agents, 26810;
representatives and assigns from importing, distributing, (2) impounding all the sales invoices and
selling or offering for sale Sulbactam Ampicillin products other documents evidencing sales by
to the hospitals named in paragraph 9 of the Complaint Pharmawealth of sulbactam ampicillin
or to any other entity in the Philippines, or from products; and
otherwise infringing Pfizer Inc.s Philippine Patent No. (3) disposing of the infringing goods outside
21116; and the channels of commerce.
C. After trial, render judgment: (c) After trial, render judgment:
(i) declaring that respondent has infringed (1) finding Pharmawealth to have infringed
Pfizer Inc.s Philippine Patent No. 21116 Patent No. 26810 and declaring
and that respondent has no right Pharmawealth to have no right whatsoever
whatsoever over complainants patent; over plaintiffs patent;
(ii) ordering respondent to pay complainants (2) ordering Pharmawealth to pay plaintiffs
the following amounts: the following amounts:
(a) at least P1,000,000.00 as actual (i) at least P3,000,000.00 as actual
damages; damages;
(b) P700,000.00 as attorneys fees
and litigation expenses;
 (ii) P500,000.00 as attorneys fees these bases, only Civil Case No. 04-754 should be
and P1,000,000.00 as litigation dismissed on the ground of litis pendentia.
expenses;160 WHEREFORE, the petition is PARTLY GRANTED.
160 SUPREME COURT REPORTS ANNOTATED The assailed Resolutions of the Court of Appeals, dated
Phil Pharmawealth, Inc. vs. Pfizer, Inc. January 18, 2005 and April 11, 2005, in CA-G.R. No.
(iii) P3,000,000.00 as exemplary 82734, are REVERSED and SET ASIDE. The petition
damages; and for certiorari filed with the Court of Appeals is
(iv) costs of this suit. DISMISSED for being moot and academic.
(3) ordering the condemnation, seizure or Civil Case No. 04-754, filed with the Regional Trial
forfeiture of Pharmawealths infringing Court of Makati City, Branch 138, is likewise
goods or products, wherever they may be DISMISSED on the ground of litis pendentia.
found, including the materials and SO ORDERED.
implements used in the commission of Carpio (Chairperson), Nachura,
infringement, to be disposed of in such Abad andMendoza, JJ., concur.
manner as may be deemed appropriate by _______________
this Honorable Court; and 35 Chua v. Metropolitan Bank and Trust Company,
(4) making the injunction permanent.33 G.R. No. 182311, August 19, 2009, 596 SCRA 524,
It is clear from the foregoing that the ultimate 541; Air Materiel Wing Savings and Loan Association,
objective which respondents seek to achieve in their Inc. v. Manay, G.R. No. 175338, April 29, 2008, 552
separate complaints filed with the RTC and the IPO, is to SCRA 643, 654.
ask for damages for the alleged violation of their right to 36 Id.
exclusively sell Sulbactam Ampicillin products and to
permanently prevent or prohibit petitioner from selling
said products to any entity. Owing to the substantial
identity of parties, reliefs and issues in the IPO and RTC
cases, a decision in one case will necessarily amount
to res judicata in the other action.
It bears to reiterate that what is truly important to
consider in determining whether forum shopping exists
or not is the vexation caused the courts and parties-
litigant by a party who asks different courts and/or
administrative agencies to rule on the same or related
causes and/or to grant the same or substantially the
same reliefs, in the process creating the possibility of
conflicting decisions being rendered by the
different fora upon the same issue.34
Thus, the Court agrees with petitioner that
respondents are indeed guilty of forum shopping.
_______________
33 Id., at pp. 112-113.
34 Luis K. Lokin, Jr. v. Commission on Elections, et
al., G.R. Nos. 179431-32 and Luis K. Lokin, Jr. v.
Commission on Elections, G.R. No. 180443, June 22,
2010, 621 SCRA 385.
161
VOL. 635, NOVEMBER 17, 2010 161
Phil Pharmawealth, Inc. vs. Pfizer, Inc.
Jurisprudence holds that if the forum shopping is not
considered willful and deliberate, the subsequent case
shall be dismissed without prejudice, on the ground of
either litis pendentia or res judicata.35However, if the
forum shopping is willful and deliberate, both (or all, if
there are more than two) actions shall be dismissed with
prejudice.36 In the present case, the Court finds that
respondents did not deliberately violate the rule on non-
forum shopping. Respondents may not be totally blamed
for erroneously believing that they can file separate
actions simply on the basis of different patents.
Moreover, in the suit filed with the RTC of Makati City,
respondents were candid enough to inform the trial court
of the pendency of the complaint filed with the BLA-IPO
as well as the petition for certiorari filed with the CA. On