Smith Kline v. CA - 1997
Smith Kline v. CA - 1997
Smith Kline v. CA - 1997
FACTS:
1. Petitioner Smith Kline & French is a corporation who owns a Phil. Letters Patent
for the patent of the drug Cimetidine. Respondent Doctors Pharma is a
domestic corporation engaged in the manufacturing and distributing
pharmaceutical products.
2. Respondent applied for compulsory licensing of its own brand of medicine from
the drug Cimetidine (for anti-ulcer) to market such product in the Philippines.
3. The petition for compulsory license was made in accordance with Sec. 34 of
RA 165, which provides for the compulsory licensing of a particular patent after
the expiration of two years from the grant of the Patent Office if the patented
invention relates to medicine or that which is necessary for public health or
safety.
4. Respondent alleged that the grant of Phil. Letters Patent 12207 was on 29 Nov
1978 – filed beyond the two-year protective period and that it had capability
to work the patented product or make use of its manufacture of medicine.
5. Petitioner opposed contending that that respondent had no cause of action and
lacked the capability to work the patented product and that it failed to
specifically divulge how the latter would use or improve the product and that
respondent was motivated by the pecuniary gain attendant to the grant of a
compulsory license. Petitioner also maintained that it was capable of satisfying
the demand of the market.
6. The BPTTT rendered a decision granting Doctor Pharma a non-exclusive and
non-transferable license to manufacture, use and sell petitioner’s patented
invention valid for the remaining lifetime of said Letters Patent 12207 and
subject to payment of royalties.
7. Petitioner appealed to the CA but the CA affirmed the decision of the BPTTT
that private respondent has shown and possesses such capability, having
personnel and machinery as well as permit to manufacture different drugs
containing the said patented ingredients.
8. The granting of the compulsory license was not just because by reason of Sec.
34 of RA 165. The Director of Patents also considered in determining that the
applicant has the capability to work or make use of the patented product in
the manufacture of a useful product.
9. Petitioner filed an MR but was denied. Hence, a petition for review on certiorari.
Petitioner alleges that: (1) the CA erred and violated international law pursuant
to the Paris Convention for the protection of industrial property and the GATT
treaty, Uruguay Round; (2) the BPTTT decision was an invalid exercise of police
power, absent a showing by evidence of the need to issue a compulsory license
over cimetidine in favor of private respondent.
ISSUE(S):
HELD: