KHO V. CA (G.R. NO.

115758)

Facts:

Petitioner, doing business under the name and style KEC Cosmetics Laboratory, alleges that it is the registered owner of copyright and patent
registration of the Chin Chun Su container and medicated cream. Hence, petitioner filed a complaint to enjoin respondent Summerville Company from
advertising and selling cream products under the same brand name Chin Chun Su as it will mislead the public and damage petitioner’s business. The
trial court granted the injunction. On appeal, the writ was dissolved. The trial court ruled to bar petitioner from using the mark Chin Chun Su.

Issue:

Whether or not petitioner is entitled to the exclusive use of the trademark Chin Chun Su based on her copyright and patent registration over the product.

Ruling: NO.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined
to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive
step and is industrially applicable. Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The
name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition.

In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it
before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee her right to the exclusive use
of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having
proven that she has registered a trademark thereto or used the same before anyone did.

FERNANDO U. JUAN v. ROBERTO U. JUAN

Facts:

Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in his laundry business on July 4, 1994. He then opened
his laundry store at No. 119 Alfaro St., Salcedo St., Makati City in 1995. Thereafter, on March 17, 1997, the National Library issued to him a certificate of
copyright over said name and mark. Over the years, the laundry business expanded with numerous franchise outlets in Metro Manila and other
provinces. Respondent Roberto then formed a corporation to handle the said business, hence, Laundromatic Corporation (Laundromatic) was
incorporated in 1997, while "Lavandera Ko" was registered as a business name on November 13, 1998 with the Department of Trade and Industry (DTI).
Thereafter, respondent Roberto discovered that his brother, petitioner Fernando was able to register the name and mark "Lavandera Ko" with the
Intellectual Property Office (IPO) on October 18, 2001, the registration of which was filed on June 5, 1995. Respondent Roberto also alleged that a
certain Juliano Nacino (Juliano) had been writing the franchisees of the former threatening them with criminal and civil cases if they did not stop using
the mark and name "Lavandera Ko." It was found out by respondent Roberto that petitioner Fernando had been selling his own franchises.

Thus, respondent Roberto filed a petition for injunction, unfair competition, infringement of copyright, cancellation of trademark and name with/and
prayer for TRO and Preliminary Injunction with the Regional Trial Court (RTC) and the case was raffled off at Branch 149, Makati City. The RTC issued a
writ of preliminary injunction against petitioner Fernando in Order dated June 10, 2004. On July 21, 2008, due to the death of respondent Roberto, the
latter was substituted by his son, Christian Juan (Christian). Pre-trial conference was concluded on July 13, 2010 and after the presentation of evidence
of both parties, the RTC rendered a Resolution dated September 23, 2013, dismissing the petition and ruling that neither of the parties had a right to the
exclusive use or appropriation of the mark "Lavandera Ko" because the same was the original mark and work of a certain Santiago S.
Suarez (Santiago). According to the RTC, the mark in question was created by Suarez in 1942 in his musical composition called, "Lavandera Ko" and
both parties of the present case failed to prove that they were the originators of the same mark.

Petitioner appealed to CA but CA dismissed due to technical grounds.

Petitioner files Certiorari under Rule 45 with the SC.

Issue:

WHETHER OR NOT A MARK IS THE SAME AS A COPYRIGHT.

Held:

No. The Ruling of RTC is erroneous.

The law on trademarks, service marks and trade names are found under Part III of Republic Act (R.A.) No. 8293, or the Intellectual Code of the
Philippines, while Part IV of the same law governs copyrights.

"Lavandera Ko," the mark in question in this case is being used as a trade name or specifically, a service name since the business in which it pertains
involves the rendering of laundry services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. As such, the basic contention
of the parties is, who has the better right to use "Lavandera Ko" as a service name because Section 165.2 [13] of the said law, guarantees the protection
of trade names and business names even prior to or without registration, against any unlawful act committed by third parties. A cause of action arises
when the subsequent use of any third party of such trade name or business name would likely mislead the public as such act is considered unlawful.
Hence, the RTC erred in denying the parties the proper determination as to who has the ultimate right to use the said trade name by ruling that neither of
them has the right or a cause of action since "Lavandera Ko" is protected by a copyright.

By their very definitions, copyright and trade or service name are different. Copyright is the right of literary property as recognized and sanctioned by
positive law.[14] An intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he is
invested, for a limited period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them.[15] Trade name, on
the other hand, is any designation which (a) is adopted and used by person to denominate goods which he markets, or services which he renders, or
business which he conducts, or has come to be so used by other, and (b) through its association with such goods, services or business, has acquired a
special significance as the name thereof, and (c) the use of which for the purpose stated in (a) is prohibited neither by legislative enactment nor by
otherwise defined public policy.[16]

Section 172.1 of R.A. 8293 enumerates the following original intellectual creations in the literary and artistic domain that are protected from the moment
of their creation, thus:

172.1 Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the
moment of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-
visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

As such, "Lavandera Ko," being a musical composition with words is protected under the copyright law (Part IV, R.A. No. 8293) and not under the
trademarks, service marks and trade names law (Part III, R.A. No. 8293).

Considering, therefore, the above premise, this Court deems it proper to remand the case to the RTC for its proper disposition since this Court cannot,
based on the records and some of the issues raised by both parties such as the cancellation of petitioner's certificate of registration issued by the
Intellectual Property Office, make a factual determination as to who has the better right to use the trade/business/service name, "Lavandera Ko."

In-N-Out Burger, Inc vs Sehwani, Inc

Facts:

Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of US, which is a signatory to the Convention of Paris on Protection
of Industrial Property and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Petitioner isengaged mainly in the restaurant
business, but it has never engaged in business in the Philippines. Respondents Sehwani, Incorporatedand Benita Frites, Inc. are corporations organized
in the Philippines.On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau of Trademarks (BOT) of the IPO for "IN-N-
OUT"and "IN-N-OUT Burger & Arrow Design." Petitioner later found out, through the Official Action Papers issued by the IPO on 31 May 2000,that
respondent Sehwani, Incorporated had already obtained Trademark Registration for the mark "IN N OUT (the inside of the letter "O"formed like a star)."
Petitioner eventually filed on 4 June 2001 before the Bureau of Legal Affairs (BLA) of the IPO an administrativecomplaint against respondents for unfair
competition and cancellation of trademark registration. Respondents asserted therein that theyhad been using the mark "IN N OUT" in the Philippines
since 15 October 1982. Respondent then filed with the BPTTT an application for theregistration of the mark. BPTTT approved its application and issued
the corresponding certificate of registration in favor of the respondent.On Dec 22, 2003, IPO Director of Legal Affairs rendered a decision in favor of
petitioner stating petitioner had the right to use itstradename and mark in the Philippines to the exclusion of others. However, the decision also includes
that respondent is not guilty of unfair competition. Upon appeal by petitioner, the new IPO Director General declared that respondents were guilty of
unfair competitionon December 23, 2005. On 18 July 2006, the Court of Appeals promulgated a Decision reversing the Decision dated 23 December
2005 of the IPO Director General. The appellate court declared that Section 163 of the Intellectual Property Code specifically confers upon theregular
courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases involving provisions of the Intellectual Property Code,particularly trademarks.
Hence, the present petition.

Issue:

(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving unfair competition(2) Whether respondent Sehwani is liable of unfair
competitionHeld: (1) Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the concurrent jurisdiction of civil courts and
theIPO over unfair competition cases. Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the petitioner's administrativecase against
respondents and the IPO Director General have exclusive jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.(2) Yes. The
evidence on record shows that the respondents were not using their registered trademark but that of the petitioner. Further,respondents are giving their
products the general appearance that would likely influence purchasers to believe that these products arethose of the petitioner. The intention to deceive
may be inferred from the similarity of the goods as packed and offered for sale, and, thus,

action will lie to restrain such unfair competition. Also, respondent’s use of IN
-N-OUT BURGER in busineses signages reveals fraudulentintent to deceive purchaser

Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17 November 2010

Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under the brand name “Unasyn.” Sometime in January
and February 2003, Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals without the Pfizer’s
consent. Pfizer then demanded that the hospitals cease and desist from accepting such bids. Pfizer also demanded that Pharmawealth immediately
withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and forfeiture of the infringing products. A preliminary
injunction effective for 90 days was granted by the IPO’s 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 (CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) a complaint for infringement and unfair competition, with
a prayer for injunction. The RTC issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping. Nevertheless, the CA issued a temporary restraining order.
Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making the case moot, and
that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted to the Director General. The CA denied all the motions.
Pharmawealth filed a petition for review on Certiorari with the Supreme Court.

Issues:

a) Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two seemingly different causes of action and yet pray for the same relief?

Held:

a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that "[the] patentee shall have 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, throughout the territory of
the Philippines for the term of the patent; and such making, using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent."

Clearly, the patentee’s exclusive rights exist only during the term of the patent. Since the patent was registered on 16 July 1987, it expired, in
accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to
make, use, and sell the products covered by their patent. The CA was wrong in issuing a temporary restraining order after the cut-off date.

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA
concerns an interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory
orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for certiorari to
the CA is the proper remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

c) Yes. Forum shopping is defined as the act of a party against whom an adverse judgment has been rendered in one forum, of seeking another (and
possibly favorable) opinion in another forum (other than by appeal or the special civil action of certiorari), or the institution of two (2) or more actions or
proceedings grounded on the same cause on the supposition that one or the other court would make a favorable disposition.

The elements of forum shopping are: (a) identity of parties, or at least such 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; (c) identity of the two preceding particulars, such that any judgment
rendered in the other action will, regardless of which party is successful, amount to res judicata in the action under consideration. This instance meets
these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the rights allegedly violated and the acts allegedly violative of such
rights are identical, regardless of whether the patents on which the complaints were based are different. In both cases, the ultimate objective of Pfizer
was to ask for damages and to permanently prevent Pharmawealth from selling the contested products. Relevantly, the Supreme Court has decided that
the filing of two actions with the same objective, as in this instance, constitutes forum shopping.

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.

G.R. No. 174379

E.I DUPONT DE NEMOURS AND CO., (assignee of inventors Carino, Duncia and Wong), Petitioner
vs.
DIRECTOR EMMA C. FRANCISCO (in ger capacity as DIRECTOR GENERAL OF THE INTELLECTUAL PROPERTY OFFICE), DIRECTOR
EPIFANIO M. VELASCO (in his capacity as the DIRECTOR OF THE BUREAU OF PATENTS, and THERAPHARMA, INC., Respondents
E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation organized under the laws of the State of Delaware. 4 It is the
assignee of inventors David John Carini, John Jonas Vytautas Duncia, and Pancras Chor Bun Wong, all citizens of the United States of America. 5

On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the Bureau of Patents, Trademarks, and Technology
Transfer.6 The application was for Angiotensin II Receptor Blocking Imidazole (losartan), an invention related to the treatment of hypertension and
congestive heart failure.7 The product was produced and marketed by Merck, Sharpe, and Dohme Corporation (Merck), E.I. Dupont Nemours' licensee,
under the brand names Cozaar and Hyzaar.8

The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili), a local resident agent who handled a majority of E.I. Dupont Nemours'
patent applications in the Philippines from 1972 to 1996.9

On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell, 10 sent the Intellectual Property
Office11 a letter requesting that an office action be issued on Philippine Patent Application No. 35526. 12

In response, Patent Examiner Precila O. Bulihan of Intellectual Property Office sent an office action marked Paper No. 2 on January 30, 2002,13 which
stated:

The appointed attorney on record was the late Atty. Nicanor D. Mapili. The reconstituted documents provided no documents that will show that the
authority to prosecute the instant application is now transferred to the present counsel. No official revocation on record is available.

Therefore, an official revocation of the Power of Attorney of the former counsel and the appointment of the present by the applicant is therefore required
before further action can be undertaken.

On May 29, 2002, E.I. Dupont Nemours replied to the office action by submitting a Power of Attorney executed by Miriam Meconnahey, authorizing
Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and Carbonell to prosecute and handle its patent applications. 15 On the same day, it also filed a
Petition for Revival with Cost of Philippine Patent Application No. 35526. 16

In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty. Mapili, did not inform it about the abandonment of the application,
and it was not aware that Atty. Mapili had already died. 17 It argued that it discovered Atty. Mapili's death when its senior-level patent attorney visited the
Philippines in 1996. 18 It argued that it only had actual notice of the abandonment on January 30, 2002, the date of Paper No. 2. 19 Thus, it argued that its
Petition for Revival was properly filed under Section 113 of the 1962 Revised Rules of Practice before the Philippines Patent Office in Patent Cases
(1962 Revised Rules of Practice).20

On April 18, 2002, the Director of Patents denied the Petition for Revival for having been filed out of time. 21

E.I. Dupont Nemours appealed the denial to the Director-General of the Intellectual Property Office on August 26, 2002. 24 In the Decision25 dated
October 22, 2003, Director-General Emma C. Francisco denied the appeal and affirmed the Resolution of the Director of Patents.

On November 21, 2003, petitioner filed before the Court of Appeals a Petition for Review seeking to set aside the Intellectual Property Office's Decision
dated October 22, 2003. 26

27
On August 31, 2004, the Court of Appeals granted the Petition for Review. In allowing the Petition for Revival, the Court of Appeals stated:

After an exhaustive examination of the records of this case, this Court believes that there is sufficient justification to relax the application of the above-
cited doctrine in this case, and to afford petitioner some relief from the gross negligence committed by its former lawyer, Atty. Nicanor D. Mapili[.] 28

29
The Office of the Solicitor General, on behalf of the Intellectual Property Office, moved for reconsideration of this Decision on September 22, 2004.

In the interim, Therapharma, Inc. moved for leave to intervene and admit the Attached Motion for Reconsideration dated October 11, 200430 and argued
that the Court of Appeals' August 31, 2004 Decision directly affects its "vested" rights to sell its own product. 31

Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs its own application for a losartan product "Lifezar," a
medication for hypertension, which the Bureau granted.32 It argued that it made a search of existing patent applications for similar products before its
application, and that no existing patent registration was found since E.I. Dupont Nemours' application for its losartan product was considered abandoned
by the Bureau of Patents, Trademarks, and Technology Transfer.33 It alleged that sometime in 2003 to 2004, there was an exchange of correspondence
between Therapharma, Inc. and Merck. In this exchange, Merck informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the
Philippines and that it would pursue any legal action necessary to protect its product. 34

On January 31, 2006, the Court of Appeals issued the Resolution35 granting the Motion· for Leave to Intervene.

E.I. Dupont Nemours moved for reconsideration on February 22, 2006, assailing the Court of Appeals' January 31, 2006 Resolution.38

On August 30,. 2006, the Court of Appeals resolved both Motions for Reconsideration and rendered the Amended Decision39 reversing its August 31,
2004 Decision.

The Court of Appeals ruled that the public interest would be prejudiced by the revival of E.I. Dupont Nemours' application.40 It found that losartan was
used to treat hypertension, "a chronic ailment afflicting an estimated 12.6 million Filipinos," 41 and noted that the presence of competition lowered the
price for losartan products. 42 It also found that the revival of the application prejudiced Therapharma, Inc.' s interest, in that it had already invested more
than P20,000,000.00 to develop its own losartan product and that it acted in good faith when it marketed its product. 43

The Court of Appeals likewise found that it erroneously based its August 31, 2004 Decision on E.I Dupont Nemours' allegation that it took seven (7) to
13 years for the Intellectual Property Office to act on a patent application. 44 It stated that while it might have taken that long to issue the patent, it did not
take that long for the Intellectual Property Office to act on application. 45 Citing Schuartz v. Court of Appeals,46 it found that both E.I. Dupont Nemours and
Atty. Mapili were inexcusably negligent in prosecuting the patent application. 47

On October 19, 2006, petitioner E.I. Dupont Nemours filed before this Court this Petition for Review on Certiorari.

Issues:

Whether the Court of Appeals erred in denying petitioner's appeal for the revival of its patent application on the grounds that (a) petitioner committed
inexcusable negligence in the prosecution of its patent application; and (b) third-party rights and the public interest would be prejudiced by the appeal;

Whether Schuartz applies to this case in that the negligence of a patent applicant's counsel binds the applicant; and

Whether the invention has already become part of public domain.

Held:

1. No.

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:

Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice, a patent application is deemed abandoned if the applicant fails to prosecute the
application within four months from the date of the mailing of the notice of the last action by the Bureau of Patents, Trademarks, and Technology
Transfer, and not from applicant's actual notice. Section 11 l(a)

states:

Rule 929. Revival of Application. - An application deemed withdrawn for failure to prosecute may be revived as a pending application within a period of
four (4) months from the mailing date of the notice of withdrawal if it is shown to the satisfaction of the Director that the failure was due to fraud, accident,
mistake, or excusable negligence. A petition to revive an application deemed withdrawn shall be accompanied by:

(a) A showing of a justifiable reason for the failure to prosecute;

(b) A complete proposed response; and

(c) Full payment of the required fee.

No revival shall be granted to an application that has been previously revived with cost.

An application not revived in accordance with this Rule shall be deemed forfeited.

Even if the delay was unavoidable, or the failure to prosecute was due to fraud, accident, mistake, or excusable negligence, or the Petition was
accompanied by a complete proposed response, or all fees were paid, the Petition would still be denied since these regulations only provide a four (4 )-
month period within which to file for the revival of the application. The rules do not provide any exception that could extend this four (4)-month period to
13 years.

Petitioner’s patent application, therefore, should not be revived since it was filed beyond the allowable period.

2. Yes. Contrary to the posturing of petitioner, Schuartz is applicable.

Petitioner attempts to distinguish itself from Schuartz by arguing that the petitioners in Schuartz had actual notice of abandonment while petitioner here
was only able to have actual notice when it received Paper No. 2.

The four (4 )-month period in Section 111 156of the 1962 Revised Rules of Practice, however, is not counted from actual notice of abandonment but from
mailing of the notice. Since it appears from the Intellectual Property Office's records that a notice of abandonment was mailed to petitioner's resident
agent on July 19, 1988,157 the time for taking action is counted from this period. Petitioner's patent application cannot be revived simply because the
period for revival has already lapsed and no extension of this period is provided for by the 1962 Revised Rules of Practice.

VI
The right of priority given to a patent applicant is only relevant when there are two or more conflicting patent applications on the same invention.
Because a right of priority does not automatically grant letters patent to an applicant, possession of a right of priority does not confer any property rights
on the applicant in the absence of an actual patent.

Petitioner argues that its patent application was filed on July 10, 1987, within 12 months from the prior filing of a U.S. patent application on July 11,
1986.158 It argues that it is protected from becoming part of the public domain because of convention priority under the Paris Convention for the
Protection of Industrial Property and Section 9 of Republic Act No. 165. 159

Respondent Therapharma, Inc., on the other hand, argues that a mere patent application does not vest any right in the applicant before the issuance of
the patent.160 It argues that the "priority date" argued by petitioner is only relevant in determining who has a better right to the patent among the other
applicants who subsequently apply for the same invention. 161

Under Section 31 of the Intellectual Property Code, a right of priority is given to any patent applicant who has previously applied for a patent in a country
that grants the same privilege to Filipinos. Section 31 states:

SECTION 31. Right of Priority. - An application for patent filed by any person who has previously applied for the same invention in another country which
by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application:
Provided, That:

a. the local application expressly claims priority;

b. it is filed within twelve (12) months from the date the earliest foreign application was filed; and

c. a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines.

A patent applicant with the right of priority is given preference in the grant of a patent when there are two or more applicants for the same invention.
Section 29 of the Intellectual Property Code provides:

SECTION 29. First to File Rule. - If two (2) or more persons have made the invention separately and independently of each other, the right to the patent
shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date.

Since both the United States162 and the Philippines163 are signatories to the Paris Convention for the Protection of Industrial Property, an applicant who
has filed a patent application in the United States may have a right of priority over the same invention in a patent application in the
Philippines.164 However, this right of priority does not immediately entitle a patent applicant the grant of a patent. A right of priority is not equivalent to a
patent. Otherwise, a patent holder of any member-state of the Paris Convention need not apply for patents in other countries where it wishes to exercise
its patent.

It was, therefore, inaccurate for petitioner to argue that its prior patent application in the United States removed the invention from the public domain in
the Philippines. This argument is only relevant if respondent Therapharma, Inc. had a conflicting patent application with the Intellectual Property Office. A
right of priority has no bearing in a case for revival of an abandoned patent application.