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Philippine Lawyers Association vs Agrava

Doctrine:
The practice of law is not limited to the conduct of cases or litigation in court; it embraces the preparation of
pleadings and other papers incident to actions and social proceedings, the management of such actions and
proceedings on behalf of clients before judges and courts, and in addition, conveying.
Parties:
Philippine Lawyers Association as petitioner.
Celedino Agrava, in his capacity as Director of the Philippines Patent Office as respondent.
Nature:
This is the petition filed by the Philippine Lawyer's Association for prohibition and injunction against Celedonio
Agrava, in his capacity as Director of the Philippines Patent Office.
Facts:
On May 27, 1957, respondent Director issued a circular announcing that he had scheduled for June 27, 1957 an
examination for the purpose of determining who are qualified to practice as patent attorneys before the
Philippines Patent Office. According to the circular, members of the Philippine Bar, engineers and other persons
with sufficient scientific and technical training are qualified to take the said examination. It would appear that
heretofore, respondent Director has been holding similar examinations.
The Philippine Lawyers Association then filed a petition for prohibition and injunction contending that one who
has passed the bar examinations and is licensed by the Supreme Court to practice law in the Philippines and who
is in good standing, is duly qualified to practice before the Philippines Patent Office, and that consequently, the
cat of the respondent Director requiring members of the Philippine Bar in good standing to take and pass an
examination given by the Patent Office as a condition precedent to their being allowed to practice before said
office, such as representing applicants in the preparation and prosecution of applications for patent, is in excess of
his jurisdiction and is in violation of the law.
In his answer, respondent Director, through the Solicitor General, maintains that the prosecution of patent cases
"does not involve entirely or purely the practice of law but includes the application of scientific and technical
knowledge and training, so much so that, as a matter of actual practice, the prosecution of patent cases may be
handled not only by lawyers, but also engineers and other persons with sufficient scientific and technical training
who pass the prescribed examinations as given by the Patent Office; . . . that the Rules of Court do not prohibit
the Patent Office, or any other quasi-judicial body from requiring further condition or qualification from those
who would wish to handle cases before the Patent Office which, as stated in the preceding paragraph, requires
more of an application of scientific and technical knowledge than the mere application of provisions of law; . . .
that the action taken by the respondent is in accordance with Republic Act No. 165, otherwise known as the
Patent Law of the Philippines, which similar to the United States Patent Law, in accordance with which the United
States Patent Office has also prescribed a similar examination as that prescribed by respondent. . . .
Issue:
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Whether the circular holding special examinations for members of the Bar in order to practice before the Patents
Office is in accordance with the law?
Ruling:
No. Therefore, Practice before Patents Office is considered as practice of law and there shall be no further
requirement for members of the Bar to practice in the said office. According to the Supreme Court, practice of law
includes such appearance before the Patent Office, the representation of applicants, oppositors, and other
persons, and the prosecution of their applications for patent, their oppositions thereto, or the enforcement of
their rights in patent cases. In the first place, although the transaction of business in the Patent Office involves the
use and application of technical and scientific knowledge and training, still, all such business has to be rendered in
accordance with the Patent Law, as well as other laws, including the Rules and Regulations promulgated by the
Patent Office in accordance with law. Not only this, but practice before the Patent Office involves the
interpretation and application of other laws and legal principles, as well as the existence of facts to be established
in accordance with the law of evidence and procedure.
In support of the proposition that much of the business and many of the act, orders and decisions of the Patent
Director involve questions of law or a reasonable and correct evaluation of facts, the very Patent Law, Republic
Act No. 165, Section 61, provides that:
. . . . The applicant for a patent or for the registration of a design, any party to a proceeding to cancel a
patent or to obtain a compulsory license, and any party to any other proceeding in the Office may appeal
to the Supreme Court from any final order or decision of the director.
In other words, the appeal is taken to this Tribunal. If the transaction of business in the Patent Office and the acts,
orders and decisions of the Patent Director involved exclusively or mostly technical and scientific knowledge and
training, then logically, the appeal should be taken not to a court or judicial body, but rather to a board of
scientists, engineers or technical men, which is not the case.
Regarding the contention that our Patent Law is patterned with the Patent Law of the United States, the
provisions of Section 78 certainly and by far, are different from the provisions of the United States Patent Law as
regards authority to hold examinations to determine the qualifications of those allowed to practice before the
Patent Office. While the U.S. Patent Law authorizes the Commissioner of Patents to require attorneys to show
that they possess the necessary qualifications and competence to render valuable service to and advise and assist
their clients in patent cases, which showing may take the form of a test or examination to be held by the
Commissioner, our Patent Law, Section 78, is silent on this important point. Our attention has not been called to
any express provision of our Patent Law, giving such authority to determine the qualifications of persons allowed
to practice before the Patent Office.
Pronouncement:
In conclusion, we hold that under the present law, members of the Philippine Bar authorized by this Tribunal to
practice law, and in good standing, may practice their profession before the Patent Office, for the reason that
much of the business in said office involves the interpretation and determination of the scope and application of
the Patent Law and other laws applicable, as well as the presentation of evidence to establish facts involved; that
part of the functions of the Patent director are judicial or quasi-judicial, so much so that appeals from his orders
and decisions are, under the law, taken to the Supreme Court.
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For the foregoing reasons, the petition for prohibition is granted and the respondent Director is hereby prohibited
from requiring members of the Philippine Bar to submit to an examination or tests and pass the same before
being permitted to appear and practice before the Patent Office. No costs.
RE: Practice of Law
The practice of law is not limited to the conduct of cases or litigation in court; it embraces the preparation of
pleadings and other papers incident to actions and social proceedings, the management of such actions
and proceedings on behalf of clients before judges and courts, and in addition, conveying. In general, all
advice to clients, and all action taken for them in matters connected with the law corporation services,
assessment and condemnation services contemplating an appearance before a judicial body, the
foreclosure of a mortgage, enforcement of a creditor's claim in bankruptcy and insolvency proceedings,
and conducting proceedings in attachment, and in matters of estate and guardianship have been held to
constitute law practice as do the preparation and drafting of legal instruments, where the work done
involves the determination by the trained legal mind of the legal effect of facts and conditions. (5 Am. Jur. p.
262, 263). (Emphasis supplied).
Practice of law under modern conditions consists in no small part of work performed outside of any court
and having no immediate relation to proceedings in court. It embraces conveyancing, the giving of legal
advice on a large variety of subjects, and the preparation and execution of legal instruments covering an
extensive field of business and trust relations and other affairs. Although these transactions may have no
direct connection with court proceedings, they are always subject to become involved in litigation. They
require in many aspects a high degree of legal skill, a wide experience with men and affairs, and great
capacity for adaptation to difficult and complex situations. These customary functions of an attorney or
counselor at law bear an intimate relation to the administration of justice by the courts. No valid
distinction, so far as concerns the question set forth in the order, can be drawn between that part which
involves advice and drafting of instruments in his office. It is of importance to the welfare of the public
that these manifold customary functions be performed by persons possessed of adequate learning and
skill, of sound moral character, and acting at all times under the heavy trust obligations to clients which
rests upon all attorneys. (Moran, Comments on the Rules of Court, Vol. 3 (1953 ed.), p. 665-666, citing In
re Opinion of the Justices (Mass.), 194 N.E. 313, quoted in Rhode Is. Bar Assoc. vs. Automobile Service
Assoc. (R. I. ) 179 A. 139, 144). (Emphasis ours).