13. G.R. No. 161693. June 28, 2005.

MANOLO P. SAMSON, petitioner, vs. HON. VICTORIANO B. CABANOS, In his capacity as Acting
Presiding Judge, Regional Trial Court of Antipolo City, Branch 71, PEOPLE OF THE PHILIPPINES and
CATERPILLAR, INC., respondents.

PETITION for review on certiorari of the orders of the Regional Trial Court of Antipolo City, Br. 71.

FACTS: Petitioner was charged with the crime of unfair competition before the RTC of Antipolo City in an
Information that states: for violation of Sec. 168.3 (a) in relation to Secs. 123.1 (e), 131.3 and 170 of RA
8293 otherwise known as the Intellectual Property Code of the Philippines, committed as follows:

above-named accused, owner/proprietor of ITTI Shoes Corporation located at F.P. Felix Avenue, Cainta,
Rizal, did then and there willfully, unlawfully and feloniously distribute, sell and/or offer for sale
CATERPILLAR products such as footwear, garments, clothing, bags, accessories and paraphernalia which
are closely identical to and/or colorable imitations of the authentic Caterpillar products and likewise using
trademarks, symbols and/or designs as would cause confusion, mistake or deception on the part of the
buying public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of the
following internationally famous marks: “CATERPILLAR”, “CAT”, “CATERPILLAR”, “CAT”, “CATERPILLAR
& DESIGN”, “CAT AND DESIGN”, “WALKING MACHINES” and “TRACK-TYPE TRACTOR & DESIGN”.

Petitioner moved to quash the information on the ground that the court has no jurisdiction over the
offense charged in the Information. He argued that Section 170 of Republic Act (R.A.) No. 82934 provides
that the penalty for violation of Section 168 thereof is imprisonment from two (2) to five (5) years and a
fine ranging from fifty thousand pesos (P50,000.00) to two hundred thousand pesos (P200,000.00), and
R.A. No. 76915 amending Batas Pambansa (B.P.) Blg.129 vested the Metropolitan Trial Courts (MTC)
exclusive original jurisdiction over all offenses punishable with imprisonment not exceeding six (6) years
irrespective of the amount of the fine.7

ISSUE: Which court has jurisdiction over criminal and civil cases for violation of intellectual property
rights?
HELD: THE RTC. Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal
penalty for infringement of registered marks, unfair competition, false designation of origin and false
description or representation, is imprisonment from 2 to 5 years and a fine ranging from Fifty Thousand
Pesos to Two Hundred Thousand Pesos, to wit:

Section 163 of the same Code states that actions (including criminal and civil) under Sections 150, 155,
164, 166, 167, 168 and 169 shall be brought before the proper courts with appropriate jurisdiction under
existing laws, thus—

SEC. 163. Jurisdiction of Court.—All actions under Sections 150, 155, 164 and 166 to 169 shall be brought
before the proper courts with appropriate jurisdiction under existing laws. (Emphasis supplied)

The existing law referred to in the foregoing provision is Section 27 of R.A. No. 166 (The Trademark Law)
which provides that jurisdiction over cases for infringement of registered marks, unfair competition, false
designation of origin and false description or representation, is lodged with the Court of First Instance
(now Regional

Trial Court)—

SEC. 27. Jurisdiction of Court of First Instance.—All actions under this Chapter [V - Infringement] and
Chapters VI [Unfair Competition] and VII [False Designation of Origin and False Description or
Representation], hereof shall be brought before the Court of First Instance.

We find no merit in the claim of petitioner that R.A. No. 166 was expressly repealed by R.A. No. 8293.
The repealing clause of R.A. No. 8293, reads—

SEC. 239. Repeals.—239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act
No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code;
Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed.
(Emphasis added)

Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in its entirety, otherwise, it would
not have used the phrases “parts of Acts” and “inconsistent herewith;” and it would have simply stated
“Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the
Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended are
hereby repealed.” It would have removed all doubts that said specific laws had been rendered without force
and effect. The use of the phrases “parts of Acts” and “inconsistent herewith” only means that the repeal
pertains only to provisions which are repugnant or not susceptible of harmonization with R.A. No. 8293.
Section 27 of R.A. No. 166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had
R.A. No. 8293 intended to vest jurisdiction over violations of intellectual property rights with the
Metropolitan Trial Courts, it would have expressly stated so under Section 163 thereof.

Moreover, the settled rule in statutory construction is that in case of conflict between a general law and
a special law, the latter must prevail. Jurisdiction conferred by a special law to Regional Trial Courts must
prevail over that granted by a general law to Municipal Trial Courts.

In the case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations
of intellectual property rights to the Regional Trial Court. They should therefore prevail over R.A. No. 7691,
which is a general law. Hence, jurisdiction over the instant criminal case for unfair competition is properly
lodged with the Regional Trial Court even if the penalty therefor is imprisonment of less than 6 years, or
from 2 to 5 years and a fine ranging from P50,000.00 to P200,000.00.

In fact, to implement and ensure the speedy disposition of cases involving violations of intellectual
property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated February 19, 2002
designating certain Regional Trial Courts as Intellectual Property Courts. On June 17, 2003, the Court
further issued a Resolution consolidating jurisdiction to hear and decide Intellectual Property Code and
Securities and Exchange Commission cases in specific Regional Trial Courts designated as Special
Commercial Courts.

IN VIEW WHEREOF, the petition is DISMISSED. The temporary restraining order issued by this Court on
February 18, 2004 is hereby LIFTED.
 15. GR 174379 August 31, 2016 J. Leonen
E.I. Dupont De Nemours and Co. (assignee of inventors David Carino, Jonas Duncia and Pancras
Wong) v. IPO Director Emma Francisco, Bureau of Patents Director Efipanio Velasco, Therapharma,
Inc.

FACTS
 Petitioner is a Delaware- based corporation. In 1987, petitioner filed an application for PH patent before
Bureau of Patents.

 Said application was for Angiotensin II Receptor Blocking Imidazole (losartan), an invention related to
the treatment of hypertension and congestive heart failure. The product (under the brandnames Cozaar
and Hyzaar) was produced and marketed by Merck, Sharpe, and Dohme Corporation, licensee of
petitioner.

 Said application was handled by a Filipino lawyer, Atty. Nicanor Mapili.

 In 2000, petitioner’s new counsel, Ortega, et al., sent the IPO a letter requesting that an office action be
issued on the petitioner’s patent application.

 On January 30, 2002, IPO Patent Examiner sent an office action (Paper No. 2) stating that there were no
documents shown that the authority to prosecute the patent application was transferred from Atty.
Mapili to Ortega, et al. Hence, an official revocation of Power of Attorney of Atty. Mapili and appointment
of Ortega, et al. by petitioner is required before further action can be undertaken on the patent
application. Also, it was noted by the Examiner that the application was deemed abandoned since it took
13 years for petitioner to request for an office action.

 On May 29, 2002, petitioner replied to Paper No. 2 by submitting a Power of Attorney authorizing Ortega,
et al. to handle its patent application.

 Petitioner also filed petition for revival of its patent application.

 In its petition, they argued that it was only in 1996 that they became aware of Atty. Mapili’s death when
its senior-level lawyer visited PH, and that it was only on January 30, 2002, that it received a notice of
abandonment sent by IPO (Paper No. 2).
 On April 18, 2002, Director of Patents denied the petition for revival for having been filed out of time.
It ruled that although it appears that Atty. Mapili was remiss in his obligations as counsel for the
petitioner, the abandoned application cannot be revived because of the limitations provided in Rule 115
of Revised Rules of Practice.

 Petitioner appealed to Director-General of IPO. On August 26, 2002, said appeal was denied.

 On November 21, 2003, petitioner appealed to CA.

 On August 31, 2004, CA granted the appeal allowing the revival of the patent application. CA believed
that petitioner should be accorded some relief from the gross negligence of its former counsel, Atty.
Mapili.

 IPO moved to reconsider. Meanwhile, Therapharma moved for leave to intervene arguing that CA’s
decision affected its “vested” rights to sell its own product. Therapharma alleged that it was granted
application by BFAD for a losartan product “Lifezar,” a medication for hypertension, and that prior to
its application, it made sure that no patent application for similar products exists and that petitioner’s
application was considered abandoned by the Bureau of Patents.

 In January 2006, CA granted the motion for leave to intervene of Therapharma.

 Petitioner moved to reconsider. In August 2006, CA reversed its August 31, 2004 decision ruling that the
public interest would be prejudiced by the revival of petitioner’s patent application. CA held that
petitioner and Atty. Mapili were inexcusably negligent. CA also found that Therapharma had already
invested P20M to develop its own losartan product.

 On October 19, 2006, petitioner filed the present case. Petitioner argues that it was not negligent in the
prosecution of its patent application since it was Atty. Mapili or his heirs who failed to inform it of
 crucial developments with regard to its patent application. It argues that as a client in a foreign country,
it does not have immediate supervision over its local counsel so it should not be bound by its counsel's
negligence.

ISSUE/RULING
WON the patent application of petitioner should be revived – NO
 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 4 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.

 Sec. 113 of 1962 Revised Rules of Practice, an abandoned patent application may only be revived within
4 months from the date of abandonment, provided it is shown to the satisfaction of the Director that the
delay was unavoidable. An application not revived within the specified period shall be deemed forfeited.

 Sec. 113 has since been superseded by Section 133.4 of the Intellectual Property Code, Rule 930 of the
Rules and Regulations on Inventions, and Rule 929 of the Revised Implementing Rules and Regulations
for Patents, Utility Models and Industrial Design. The period of four (4) months from the date of
abandonment, however, remains unchanged.

 According to the records of the Bureau of Patents, Trademarks, and Technology Transfer Chemical
Examining Division, petitioner filed its patent application on July 10, 1987. It was assigned to an
examiner on June 7, 1988. An Office Action was mailed to Atty. Mapili, on July 19, 1988. Because
petitioner failed to respond within the allowable period, the application was deemed abandoned on
September 20, 1988. Under Sec. 113, petitioner had until January 20, 1989 to file for a revival of the
patent application. Its Petition for Revival, however, was filed on May 29, 2002, 13 years after the date
of abandonment.

 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 same would still be denied since these regulations only provide a 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.

 Even assuming that the 4-month period could be extended, petitioner was inexcussably negligent in the
prosecution of its patent application. Negligence is inexcusable if its commission could have been
avoided through ordinary diligence and prudence. It is also settled that negligence of counsel binds the
client as this "ensures against the resulting uncertainty and tentativeness of proceedings if clients were
allowed to merely disown their counsels' conduct."
 Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond to the Office
Action sent by the Bureau of Patents, Trademarks, and Technology Transfer on June 19, 1988. Because
of his negligence, petitioner's patent application was declared abandoned. He was again negligent when
he failed to revive the abandoned application within 4 months from the date of abandonment.

 Petitioner tries to disown Atty. Mapili 's conduct by arguing that it was not informed of the abandonment
of its patent application or of Atty. Mapili's death. By its own evidence, however, petitioner requested a
status update from Atty. Mapili only on July 18, 1995, 8 years after the filing of its application. It alleged
that it only found out about Atty. Mapili 's death sometime in March 1996, as a result of its senior patent
attorney's visit to the Philippines. Although it was in petitioner's discretion as a foreign client to put its
complete trust and confidence on its local resident agent, there was a correlative duty on its part to be
diligent in keeping itself updated on the progress of its patent applications. Its failure to be informed of
the abandonment of its patent application was caused by its own lack of prudence.

 In Bernardo v. CA, "no prudent party will leave the fate of his case entirely to his lawyer. It is the duty
of a party-litigant to be in contact with his counsel from time to time in order to be informed of the
progress of his case." Even if Atty. Mapili's death prevented petitioner from submitting a petition for
revival on time, it was clearly negligent when it subsequently failed to immediately apprise itself of the
status of its patent application.
 Furthermore, 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 4-month period in Sec. 111 of 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,
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.

 Moreover, Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its petition
for revival is granted. Even without a pending patent application and the absence of any exception to
extend the period for revival, petitioner was already threatening to pursue legal action against
Therapharma if it continued to develop and market its losartan product, Lifezar. Once petitioner is
granted a patent for its losartan products, Cozaar and Hyzaar, the loss of competition in the market for
losartan products may result in higher prices. For the protection of public interest, petitioner’s patent
application should be considered a forfeited patent application.

WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and the Amended Decision
dated August 30, 2006 of the Court of Appeals are AFFIRMED. SO ORDERED.