1.

Phil Lawyers Assoc v Agrava

Facts:
i. Respondent Dir. Celedonio Agrava of the Phil Patent Office issued a circular announcing the
examination to qualify those who can be patent attorneys before the said office.
ii. Lawyers, engineers and others with sufficient technical training can take the exam
iii. Phil Lawyers Assoc assails the circular saying that anyone who passed the Bar and is in good
standing is qualified to practice. The imposition of this condition precedent is in excess of
the resps JD
iv. Resp contends that:
a. the prosec of patent cases is not entirely the practice of law but requires technical and
scientific knowledge.
b. He is empowered under the Patent Law of the Philippines w/c is the same as the US
Patent Law that allows the Patent Office to prescribe a similar exam
Issues:
i. W/N the appearance, preparation and prosecution of patent applications constitute practice
of law
ii. W/N the Dir of Patents Office has the right to impose qualifications on lawyers for
practicing before said office
Ruling:
i. Yes.
a. The practice of law is not limited to the conduct in court litigation. It covers work that
involves the determination by a trained legal mind of the legal effects of facts and
conditions such as preparation of pleadings and papers incident to actions and social
proceedings, all advices to clients and all action taken on matters in connection with
law, as well as preparation and execution of legal instruments. Although these are not
directly connected with court proceedings, they are always subject to become involved
in litigation.
b. The conduct in assisting clients with their patent application involves largely the
interpretation of the Patent Law and other related laws and the presentation of
evidence to establish facts for which lawyers are trained to perform.
ii. No.
a. The Philippine Patent Law is silent about the power of the Director to impose
qualifications such as sufficient knowledge and expertise in the scientific and technical
matters related to patent application that may take the form of an examination. Unlike
the US Patent Law, our own law only requires that the rules and regulations
promulgated by the Dir of Patent are not inconsistent with law.
b. If the Patent Dir will be allowed as the head of the Patent Office to require examinations
for the practice of lawyers before his office, then other bureaus chiefs may also be
allowed to conduct similar examinations.
c. The functions of the Patent Director are judicial and quasi-judicial in nature so much so
that his orders and decisions are subject to be taken before the Supreme Court.
- Lawyers authorized by SC to practice law and are in good standing may practice their profession
before the Patents Office.