Tuesday, May 5, 2015

Philippines patent litigation confusion

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The Makati Regional Trial Court has dismissed a patent case filed by Merck Canada against two local pharma companies Sahar and Suhitas. The basis of the case was patent infringement relating to two pain reliever drugs Xibra and Torico imported and distributed by the two companies.

A Search and Seizure Order was executed in October 2013 leading to seizure of various products, on the basis of patent infringement. The full case began leading to a decision last week. The court dismissed the case and ordered the return of all seized documents and items. The basis of the court decision was “forum shopping” since Merck had filed a similar case at the IPO.

Meanwhile a separate Search and Seizure Order was executed in June 2014 against 3 other pharma retailers, leading to seizure of the same products on the basis of patent infringement. A case for infringement was filed at the IPO's Bureau of Legal Affairs. The IPO's Bureau of Legal Affairs initially dismissed the case but later reversed its decision on appeal, in favour of Merck.

The Makati Regional Trial Court stated, “The plaintiff in this case [has already] filed a patent infringement and damages with an application for preliminary injunction and temporary restraining order before the Intellectual Property Office.” Because the same patent and facts existed in 2 cases, one of which had been decided, the court dismissed the case.

The decision is odd since the parties differed and so it cannot be said that the facts are the same. So IP holders will not be inspired by this decision. However the real message is about the IPO's administrative litigation system.  The fact that the court deferred to it illustrates its importance in IP litigation in the Philippines. And that it decided infringement here suggests the IPO is the best place for IP holders to bring cases.

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