GR No L-12426
February 16, 1959
Facts
Celedonio Agrava, Director of the Philippine Patents Office, issued a circular requiring all patent attorneys to undertake an examination before they will be allowed to practice law before the said office. Aggrieved, the Philippine Lawyers Association filed a petition for prohibition and injunction against Celedonio Agrava in his capacity as the Director of the Philippine Patents Office.
The petitioner, Philippine Lawyer’s Association, contends that one who passed the Bar Examination and is licensed by the Supreme Court to practice law in the Philippines and of good standing is qualified to practice before the Philippine Patents Office. Moreover, they argued that the act of the Director of requiring conditions to be qualified to practice before the said office is in excess of his jurisdiction and is in violation of law.
Celedonio Agrava, respondent, contends that the prosecution of patent cases does not only involved the practice of law but also the application of scientific and technical knowledge and thraining, that the Rules of court does not prohibit him from requiring further condition or qualification for those who wish to handle patent cases, that the action of the Director is in accordance with Republic Act No. 165, and that the patent law of United States to which RA 165 is patterned authorized the Director of Patents to hold examinations required as a qualification for the practice before the Office.
Issues
Whether or not appearance before the Patent Office and the preparation and prosecution of patent applications, etc., constitutes or is included in the practice of law?
Held
Yes. 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 special 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 incorporation 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.
The Supreme Court held that the practice of law includes “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.” Although the business transactions in the Patents Office involves the use of scientific and technical knowledge, all such business should be done in accordance with the Patent Law and all other laws with which need the interpretation and application of such laws with the use of a legal knowledge, training, and experience which a licensed lawyer has been prepared for. Since it has been held that appearance before the Patents Office is a practice of law, a member of the bar and of good standing shall be allowed to practice law in the said office without the need for another examination or other conditions imposed thereof.