PHIL PHARMAWEALTH, INC., G.R. No.

167715 lactam antibiotic in a mammalian subject, which

Petitioner, comprises co-administering to said subject a beta-lactam
Present: antibiotic effectiveness increasing amount of a compound
of the formula IA. The scope of the claims of the Patent
CARPIO, J., Chairperson, extends to a combination of penicillin such as ampicillin
- versus - NACHURA, sodium and beta-lactam antibiotic like sulbactam sodium.
PERALTA,
ABAD, and 7. Patent No. 21116 thus covers ampicillin
MENDOZA, JJ. sodium/sulbactam sodium (hereafter Sulbactam
Ampicillin). Ampicillin sodium is a specific example of
Promulgated: the broad beta-lactam antibiotic disclosed and claimed in
PFIZER, INC. and PFIZER (PHIL.) INC., the Patent. It is the compound which efficacy is being
Respondents. November 17, 2010 enhanced by co-administering the same with sulbactam
sodium. Sulbactam sodium, on the other hand, is a
specific compound of the formula IA disclosed and
claimed in the Patent.

8. Pfizer is marketing Sulbactam Ampicillin under the

brand name Unasyn. Pfizer's Unasyn products, which
x--------------------------------------------------x come in oral and IV formulas, are covered by Certificates
of Product Registration (CPR) issued by the Bureau of
Food and Drugs (BFAD) under the name of complainants.
DECISION The sole and exclusive distributor of Unasyn products in
the Philippines is Zuellig Pharma Corporation, pursuant to
a Distribution Services Agreement it executed with Pfizer
PERALTA, J.: Phils. on January 23, 2001.

9. Sometime in January and February 2003, complainants

Before the Court is a petition for review on certiorari seeking to annul and came to know that respondent [herein petitioner]
submitted bids for the supply of Sulbactam Ampicillin to
set aside the Resolutions dated January 18, 2005[1] and April 11, 2005[2] by several hospitals without the consent of complainants and
the Court of Appeals (CA) in CA-G.R. SP No. 82734. in violation of the complainants' intellectual property
rights. x x x
xxxx
The instant case arose from a Complaint[3] for patent infringement filed
10. Complainants thus wrote the above hospitals and
against petitioner Phil Pharmawealth, Inc. by respondent companies, Pfizer, demanded that the latter immediately cease and desist
from accepting bids for the supply [of] Sulbactam
Inc. and Pfizer (Phil.), Inc., with the Bureau of Legal Affairs of the
Ampicillin or awarding the same to entities other than
Intellectual Property Office (BLA-IPO). The Complaint alleged as follows: complainants. Complainants, in the same letters sent
through undersigned counsel, also demanded that
xxxx
respondent immediately withdraw its bids to supply
6. Pfizer is the registered owner of Philippine Letters
Sulbactam Ampicillin.
Patent No. 21116 (the Patent) which was issued by this
Honorable Office on July 16, 1987. The patent is valid
11. In gross and evident bad faith, respondent and the
until July 16, 2004. The claims of this Patent are directed
hospitals named in paragraph 9 hereof, willfully ignored
to a method of increasing the effectiveness of a beta-
 complainants' just, plain and valid demands, refused to
comply therewith and continued to infringe the Patent, all infringement and unfair competition with damages against herein petitioner.
to the damage and prejudice of complainants. As In said case, respondents prayed for the issuance of a temporary restraining
registered owner of the Patent, Pfizer is entitled to
protection under Section 76 of the IP Code. order and preliminary injunction to prevent herein petitioner from
importing, distributing, selling or offering for sale sulbactam ampicillin
x x x x[4]
products to any entity in the Philippines. Respondents asked the trial court
Respondents prayed for permanent injunction, damages and the forfeiture
that, after trial, judgment be rendered awarding damages in their favor and
and impounding of the alleged infringing products. They also asked for the
making the injunction permanent.
issuance of a temporary restraining order and a preliminary injunction that
would prevent herein petitioner, its agents, representatives and assigns,
On August 24, 2004, the RTC of Makati City issued an Order [10] directing
from importing, distributing, selling or offering the subject product for sale
the issuance of a temporary restraining order conditioned upon respondents'
to any entity in the Philippines.
filing of a bond.
In an Order[5] dated July 15, 2003 the BLA-IPO issued a preliminary
injunction which was effective for ninety days from petitioner's receipt of
In a subsequent Order[11] dated April 6, 2005, the same RTC directed the
the said Order.
issuance of a writ of preliminary injunction prohibiting and restraining
[petitioner], its agents, representatives and assigns from importing,
Prior to the expiration of the ninety-day period, respondents filed a Motion
distributing or selling Sulbactam Ampicillin products to any entity in the
for Extension of Writ of Preliminary Injunction[6]which, however, was
Philippines.
denied by the BLA-IPO in an Order[7] dated October 15, 2003.

Meanwhile, on November 16, 2004, petitioner filed a Motion to

Respondents filed a Motion for Reconsideration but the same was also
Dismiss[12] the petition filed with the CA on the ground of forum shopping,
denied by the BLA-IPO in a Resolution[8] dated January 23, 2004.
contending that the case filed with the RTC has the same objective as the
petition filed with the CA, which is to obtain an injunction prohibiting
Respondents then filed a special civil action for certiorari with the CA
petitioner from importing, distributing and selling Sulbactam Ampicillin
assailing the October 15, 2003 and January 23, 2004 Resolutions of the
products.
BLA-IPO. Respondents also prayed for the issuance of a preliminary
mandatory injunction for the reinstatement and extension of the writ of
On January 18, 2005, the CA issued its questioned Resolution[13] approving
preliminary injunction issued by the BLA-IPO.
the bond posted by respondents pursuant to the Resolution issued by the
appellate court on March 23, 2004 which directed the issuance of a
While the case was pending before the CA, respondents filed a
temporary restraining order conditioned upon the filing of a bond. On even
Complaint[9] with the Regional Trial Court (RTC) of Makati City for
date, the CA issued a temporary restraining order [14] which prohibited
petitioner from importing, distributing, selling or offering for sale
In the first issue raised, petitioner argues that respondents' exclusive right to
Sulbactam Ampicillin products to any hospital or to any other entity in the
monopolize the subject matter of the patent exists only within the term of
Philippines, or from infringing Pfizer Inc.'s Philippine Patent No. 21116 and
the patent. Petitioner claims that since respondents' patent expired on July
impounding all the sales invoices and other documents evidencing sales by
16, 2004, the latter no longer possess any right of monopoly and, as such,
[petitioner] of Sulbactam Ampicillin products.
there is no more basis for the issuance of a restraining order or injunction
against petitioner insofar as the disputed patent is concerned.
On February 7, 2005, petitioner again filed a Motion to Dismiss [15] the case
for being moot and academic, contending that respondents' patent had
The Court agrees.
already lapsed. In the same manner, petitioner also moved for the
reconsideration of the temporary restraining order issued by the CA on the
Section 37 of Republic Act No. (RA) 165,[17] which was the governing law
same basis that the patent right sought to be protected has been extinguished
at the time of the issuance of respondents' patent, provides:
due to the lapse of the patent license and on the ground that the CA has no
jurisdiction to review the order of the BLA-IPO as said jurisdiction is Section 37. Rights of patentees. A patentee shall have
vested by law in the Office of the Director General of the IPO. the exclusive right to make, use and sell the patented
machine, article or product, and to use the patented
process for the purpose of industry or commerce,
On April 11, 2005, the CA rendered its presently assailed Resolution throughout the territory of the Philippines for the term of
the patent; and such making, using, or selling by any
denying the Motion to Dismiss, dated November 16, 2004, and the motion person without the authorization of the patentee
for reconsideration, as well as Motion to Dismiss, both dated February 7, constitutes infringement of the patent.[18]

2005.

It is clear from the above-quoted provision of law that the exclusive right of
Hence, the present petition raising the following issues:
a patentee to make, use and sell a patented product, article or process exists

a) Can an injunctive relief be issued based on an action of only during the term of the patent. In the instant case, Philippine Letters
patent infringement when the patent allegedly infringed Patent No. 21116, which was the basis of respondents in filing their
has already lapsed?
complaint with the BLA-IPO, was issued on July 16, 1987. This fact was
b) What tribunal has jurisdiction to review the decisions admitted by respondents themselves in their complaint. They also admitted
of the Director of Legal Affairs of the Intellectual
Property Office? that the validity of the said patent is until July 16, 2004, which is in
conformity with Section 21 of RA 165, providing that the term of a patent
c) Is there forum shopping when a party files two actions
with two seemingly different causes of action and yet pray shall be seventeen (17) years from the date of issuance thereof. Section 4,
for the same relief?[16]
Rule 129 of the Rules of Court provides that an admission, verbal or
written, made by a party in the course of the proceedings in the same case,
In this connection, pertinent portions of Section 5, Rule 58 of the same
does not require proof and that the admission may be contradicted only by
Rules provide that if the matter is of extreme urgency and the applicant will
showing that it was made through palpable mistake or that no such
suffer grave injustice and irreparable injury, a temporary restraining order
admission was made. In the present case, there is no dispute as to
may be issued ex parte.
respondents' admission that the term of their patent expired on July 16,
2004. Neither is there evidence to show that their admission was made
From the foregoing, it can be inferred that two requisites must exist to
through palpable mistake. Hence, contrary to the pronouncement of the CA,
warrant the issuance of an injunctive relief, namely: (1) the existence of a
there is no longer any need to present evidence on the issue of expiration of
clear and unmistakable right that must be protected; and (2) an urgent and
respondents' patent.
paramount necessity for the writ to prevent serious damage.[19]

On the basis of the foregoing, the Court agrees with petitioner that after July
In the instant case, it is clear that when the CA issued its January 18, 2005
16, 2004, respondents no longer possess the exclusive right to make, use
Resolution approving the bond filed by respondents, the latter no longer had
and sell the articles or products covered by Philippine Letters Patent No.
a right that must be protected, considering that Philippine Letters Patent No.
21116.
21116 which was issued to them already expired on July 16, 2004. Hence,
the issuance by the CA of a temporary restraining order in favor of the
Section 3, Rule 58, of the Rules of Court lays down the requirements for the
respondents is not proper.
issuance of a writ of preliminary injunction, viz:

(a) That the applicant is entitled to the relief In fact, the CA should have granted petitioner's motion to dismiss the
demanded, and the whole or part of such relief consists in
restraining the commission or continuance of the acts petition for certiorari filed before it as the only issue raised therein is the
complained of, or in requiring the performance of an act propriety of extending the writ of preliminary injunction issued by the
or acts, either for a limited period or perpetually;
BLA-IPO. Since the patent which was the basis for issuing the injunction,
(b) That the commission, continuance or non- was no longer valid, any issue as to the propriety of extending the life of the
performance of the act or acts complained of during the
litigation would probably work injustice to the applicant; injunction was already rendered moot and academic.
or

(c) That a party, court, or agency or a person is As to the second issue raised, the Court, is not persuaded by petitioner's
doing, threatening, or attempting to do, or is procuring or
argument that, pursuant to the doctrine of primary jurisdiction, the Director
suffering to be done, some act or acts probably in
violation of the rights of the applicant respecting the General of the IPO and not the CA has jurisdiction to review the questioned
subject of the action or proceeding, and tending to render
the judgment ineffectual. Orders of the Director of the BLA-IPO.
 [i]n cases involving specialized disputes, the practice has
It is true that under Section 7(b) of RA 8293, otherwise known as been to refer the same to an administrative agency of
the Intellectual Property Code of the Philippines, which is the presently special competence in observance of the doctrine of
primary jurisdiction. The Court has ratiocinated that it
prevailing law, the Director General of the IPO exercises exclusive cannot or will not determine a controversy involving a
appellate jurisdiction over all decisions rendered by the Director of the question which is within the jurisdiction of the
administrative tribunal prior to the resolution of that
BLA-IPO. However, what is being questioned before the CA is not a question by the administrative tribunal, where the
decision, but an interlocutory order of the BLA-IPO denying respondents' question demands the exercise of sound administrative
discretion requiring the special knowledge, experience
motion to extend the life of the preliminary injunction issued in their favor. and services of the administrative tribunal to determine
technical and intricate matters of fact, and a uniformity of
ruling is essential to comply with the premises of the
RA 8293 is silent with respect to any remedy available to litigants who regulatory statute administered. The objective of the
doctrine of primary jurisdiction is to guide a court in
intend to question an interlocutory order issued by the BLA-IPO. Moreover, determining whether it should refrain from exercising its
Section 1(c), Rule 14 of the Rules and Regulations on Administrative jurisdiction until after an administrative agency has
determined some question or some aspect of some
Complaints for Violation of Laws Involving Intellectual Property Rights question arising in the proceeding before the court. It
simply provides that interlocutory orders shall not be appealable. The said applies where the claim is originally cognizable in the
courts and comes into play whenever enforcement of the
Rules and Regulations do not prescribe a procedure within the claim requires the resolution of issues which, under a
regulatory scheme, has been placed within the special
administrative machinery to be followed in assailing orders issued by the
competence of an administrative body; in such case, the
BLA-IPO pending final resolution of a case filed with them. Hence, in the judicial process is suspended pending referral of such
issues to the administrative body for its view.[22]
absence of such a remedy, the provisions of the Rules of Court shall 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 Based on the foregoing, the Court finds that respondents' initial filing of
resorted to the filing of a special civil action for certiorari with the CA to their complaint with the BLA-IPO, instead of the regular courts, is in
question the assailed Orders of the BLA-IPO, as they cannot appeal keeping with the doctrine of primary jurisdiction owing to the fact that the
therefrom and they have no other plain, speedy and adequate remedy in the determination of the basic issue of whether petitioner violated respondents'
ordinary course of law. This is consistent with Sections 1 [20] and 4,[21] Rule patent rights requires the exercise by the IPO of sound administrative
65 of the Rules of Court, as amended. discretion which is based on the agency's special competence, knowledge
In the first place, respondents' act of filing their complaint originally with and experience.
the BLA-IPO is already in consonance with the doctrine of primary However, the propriety of extending the life of the writ of preliminary
jurisdiction. injunction issued by the BLA-IPO in the exercise of its quasi-judicial power
is no longer a matter that falls within the jurisdiction of the said
This Court has held that:
administrative agency, particularly that of its Director General. The
resolution of this issue which was raised before the CA does not demand the
exercise by the IPO of sound administrative discretion requiring special civil action of certiorari), or the institution of two (2) or more actions or
knowledge, experience and services in determining technical and intricate proceedings grounded on the same cause on the supposition that one or the
matters of fact.It is settled that one of the exceptions to the doctrine of other court would make a favorable disposition.[26]
primary jurisdiction is where the question involved is purely legal and will
ultimately have to be decided by the courts of justice.[23] This is the case The elements of forum shopping are: (a) identity of parties, or at least such
with respect to the issue raised in the petition filed with the CA. parties that represent the same interests in both actions; (b) identity of rights
asserted and reliefs prayed for, the reliefs being founded on the same facts;
Moreover, as discussed earlier, RA 8293 and its implementing rules and (c) identity of the two preceding particulars, such that any judgment
regulations do not provide for a procedural remedy to question interlocutory rendered in the other action will, regardless of which party is successful,
orders issued by the BLA-IPO. In this regard, it bears to reiterate that the amount to res judicata in the action under consideration.[27]
judicial power of the courts, as provided for under the Constitution, includes
the authority of the courts to determine in an appropriate action the validity There is no question as to the identity of parties in the complaints filed with
of the acts of the political departments.[24] Judicial power also includes the the IPO and the RTC.
duty of the courts of justice to settle actual controversies involving rights
which are legally demandable and enforceable, and to determine whether or Respondents argue that they cannot be held guilty of forum shopping
not there has been a grave abuse of discretion amounting to lack or excess because their complaints are based on different causes of action as shown
of jurisdiction on the part of any branch or instrumentality of the by the fact that the said complaints are founded on violations of different
Government.[25] Hence, the CA, and not the IPO Director General, has patents.
jurisdiction to determine whether the BLA-IPO committed grave abuse of The Court is not persuaded.
discretion in denying respondents' motion to extend the effectivity of the
writ of preliminary injunction which the said office earlier issued. Section 2, Rule 2 of the Rules of Court defines a cause of action as the act
Lastly, petitioner avers that respondents are guilty of forum shopping for or omission by which a party violates a right of another. In the instant case,
having filed separate actions before the IPO and the RTC praying for the respondents' cause of action in their complaint filed with the IPO is the
same relief. alleged act of petitioner in importing, distributing, selling or offering for
sale Sulbactam Ampicillin products, acts that are supposedly violative of
The Court agrees. respondents' right to the exclusive sale of the said products which are
covered by the latter's patent. However, a careful reading of the complaint
Forum shopping is defined as the act of a party against whom an adverse filed with the RTC of Makati City would show that respondents have the
judgment has been rendered in one forum, of seeking another (and possibly same cause of action as in their complaint filed with the IPO. They claim
favorable) opinion in another forum (other than by appeal or the special that they have the exclusive right to make, use and sell Sulbactam
 COA in the case before this Court and sought what seems
Ampicillin products and that petitioner violated this right. Thus, it does not to be different reliefs. Petitioner asks this Court to set
matter that the patents upon which the complaints were based are different. aside the questioned letter-directive of the COA dated
October 10, 1988 and to direct said body to approve the
The fact remains that in both complaints the rights violated and the acts Memorandum of Agreement entered into by and between
violative of such rights are identical. the PNOC and petitioner, while in the complaint before
the lower court petitioner seeks to enjoin the PNOC from
conducting a rebidding and from selling to other parties
In fact, respondents seek substantially the same reliefs in their separate the vessel T/T Andres Bonifacio, and for an extension of
time for it to comply with the paragraph 1 of the
complaints with the IPO and the RTC for the purpose of accomplishing the memorandum of agreement and damages. One can see
that although the relief prayed for in the two (2)
same objective.
actions are ostensibly different, the ultimate objective
in both actions is the same, that is, the approval of the
sale of vessel in favor of petitioner, and to overturn the
It is settled by this Court in several cases that the filing by a party of two letter directive of the COA of October 10,
apparently different actions but with the same objective constitutes forum 1988 disapproving the sale.[31]

shopping.[28] The Court discussed this species of forum shopping as follows:

Very simply stated, the original complaint in
the court a quo which gave rise to the instant In the instant case, the prayer of respondents in their complaint filed with
petition was filed by the buyer (herein private the IPO is as follows:
respondent and his predecessors-in-interest)
against the seller (herein petitioners) to enforce the
alleged perfected sale of real estate. On the other A. Immediately upon the filing of this action, issue an ex
hand, the complaint in the Second Case seeks to parte order (a) temporarily restraining respondent, its
declare such purported sale involving the same real agents, representatives and assigns from importing,
property as unenforceable as against the Bank, distributing, selling or offering for sale Sulbactam
which is the petitioner herein. In other words, in Ampicillin products to the hospitals named in paragraph 9
the Second Case, the majority stockholders, in of this Complaint or to any other entity in the Philippines,
representation of the Bank, are seeking to or from otherwise infringing Pfizer Inc.'s Philippine Patent
accomplish what the Bank itself failed to do in the No. 21116; and (b) impounding all the sales invoices and
original case in the trial court. In brief, the other documents evidencing sales by respondent of
objective or the relief being sought, though Sulbactam Ampicillin products.
worded differently, is the same, namely, to
enable the petitioner Bank to escape from the B. After hearing, issue a writ of preliminary injunction
obligation to sell the property to respondent.[29] enjoining respondent, its agents, representatives and
assigns from importing, distributing, selling or offering for
sale Sulbactam Ampicillin products to the hospitals named
in paragraph 9 of the Complaint or to any other entity in
In Danville Maritime, Inc. v. Commission on Audit,[30] the Court the Philippines, or from otherwise infringing Pfizer Inc.'s
Philippine Patent No. 21116; and
ruled as follows:
C. After trial, render judgment:
In the attempt to make the two actions appear to be
different, petitioner impleaded different respondents (i) declaring that respondent
therein PNOC in the case before the lower court and the has infringed Pfizer Inc.'s
 Philippine Patent No. 21116
and that respondent has no (3) disposing of the
right whatsoever over infringing goods
complainant's patent; outside the channels
of commerce.
(ii) ordering respondent to pay complainants the
following amounts: (b) After hearing, issue a writ of preliminary injunction:
(a) at least P1,000,000.00 as actual damages;
(1) enjoining Pharmawealth,
(b) P700,000.00 as attorney's fees and litigation expenses;
its agents,
(d) P1,000,000.00 as exemplary damages; and
representatives and
(d) costs of this suit.
assigns from
(iii) ordering the condemnation, seizure
importing,
or forfeiture of respondent's infringing
distributing, selling or
goods or products, wherever they may
offering for sale
be found, including the materials and
infringing sulbactam
implements used in the commission of
ampicillin products to
infringement, to be disposed of in such
various government
manner as may be deemed appropriate
hospitals or to any
by this Honorable Office; and
other entity in the
Philippines, or from
(iv) making the injunction permanent.[32]
otherwise infringing
Patent No. 26810;

In an almost identical manner, respondents prayed for the following in their (2) impounding all the sales
invoices and other documents
complaint filed with the RTC: evidencing sales
(a) Immediately upon the filing of this action, by Pharmawealth of sulbactam
issue an ex parte order: ampicillin products; and
(1) temporarily restraining Pharmawealth, (3) disposing of the infringing goods
its agents, representatives and assigns outside the channels of commerce.
from importing, distributing, selling or
offering for sale infringing sulbactam (c) After trial, render judgment:
ampicillin products to various government and
private hospitals or to any other entity in (1) finding Pharmawealth to
the Philippines, or from otherwise have infringed Patent No.
infringing Pfizer Inc.'s Philippine Patent No. 26810 and
26810. declaring Pharmawealth to
have no right whatsoever over
(2) impounding all the sales plaintiff's patent;
invoices and other
documents (2) ordering Pharmawealth to
evidencing sales by pay plaintiffs the following
pharmawealth of amounts:
sulbactam ampicillin
products; and
 (i) at
least P3,000,0 It bears to reiterate that what is truly important to consider in determining
00.00 as whether forum shopping exists or not is the vexation caused the courts and
actual
damages; parties-litigant by a party who asks different courts and/or administrative
(ii) P500,000.00 as attorney's agencies to rule on the same or related causes and/or to grant the same or
fees and P1,000,000.00 as litigation expenses;
(iii) P3,000,000.00 as substantially the same reliefs, in the process creating the possibility of
exemplary conflicting decisions being rendered by the different fora upon the same
damages; and
(iv) costs of this suit. issue.[34]
(3) ordering the
condemnation,
Thus, the Court agrees with petitioner that respondents are indeed guilty of
seizure or forfeiture
of Pharmawealth's forum shopping.
infringing goods or
products, wherever
they may be found, Jurisprudence holds that if the forum shopping is not considered willful and
including the deliberate, the subsequent case shall be dismissed without prejudice, on the
materials and
implements used in ground of either litis pendentia or res judicata.[35] However, if the forum
the commission of shopping is willful and deliberate, both (or all, if there are more than two)
infringement, to be
disposed of in such actions shall be dismissed with prejudice.[36] In the present case, the Court
manner as may be
finds that respondents did not deliberately violate the rule on non-forum
deemed appropriate
by this Honorable shopping. Respondents may not be totally blamed for erroneously believing
Court; and
that they can file separate actions simply on the basis of different patents.
[33]
(4) making the injunction permanent. 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

It is clear from the foregoing that the ultimate objective which respondents filed with the BLA-IPO as well as the petition for certiorari filed with the

seek to achieve in their separate complaints filed with the RTC and the IPO, CA. On these bases, only Civil Case No. 04-754 should be dismissed on the

is to ask for damages for the alleged violation of their right to exclusively ground of litis pendentia.

sell Sulbactam Ampicillin products and to permanently prevent or prohibit

petitioner from selling said products to any entity. Owing to the substantial WHEREFORE, the petition is PARTLY GRANTED. The assailed

identity of parties, reliefs and issues in the IPO and RTC cases, a decision in Resolutions of the Court of Appeals, dated January 18, 2005 and April 11,

one case will necessarily amount to res judicata in the other action. 2005, in CA-G.R. No. 82734, are REVERSED and SET ASIDE. The
petition for certiorari filed with the Court of Appeals is DISMISSED for
being moot and academic.
Civil Case No. 04-754, filed with the Regional Trial Court of Makati City,
Branch 138, is likewise DISMISSED on the ground of litis pendentia.

SO ORDERED.