1. POWER PHILIPPINE LAWYERS VS time must be taken and passed.

The Respondent states

AGRAVA thatthe promulgation of the Rules of Practice of the United
States Patent Office in Patent Cases is authorized by the
United States Patent Law itself which provides: The
This is the petition filed by the Philippine Lawyer’s Commissioner of Patents, subject to the approval of the
Association for prohibition and injunction against Secretary of Commerce may prescribe rules and
Celedonio Agrava, in his capacity as Director of the regulations governing the recognition of agents, attorneys,
Philippines Patent Office. or other persons representing applicants or other parties
before his office, and may require of suchpersons, agents,
Facts: or attorneys, before being recognized as representatives of
applicants or other persons, that they shall show they are of
On May 27, 1957, respondent Agrava issued a circular
good moral character and in good repute, are possessed of
announcing that he had scheduled for June 27, 1957 an
the necessary qualifications to enable them to render to
examination for the purpose of determining who are
applicants orother persons valuable service, and are
qualified to practice as patent attorneys before the
likewise to competent to advise and assist applicants or
Philippines Patent Office, the said examination to cover
other persons in the presentation or prosecution of their
patent law and jurisprudence and the rules of practice
applications or other business before the Office. x x x
before said office. According to the circular, members of
Respondent Director concludes that Section 78 of Republic
the Philippine Bar, engineers and other persons with
Act No. 165 being similar to the provisions of law just
sufficient scientific and technical training are qualified to
reproduced, then he is authorized to prescribe the rules and
take the said examination. It would appear that heretofore,
regulations requiring that persons desiring to practice
respondent Director has been holding similar
before him should submit to and pass an examination. We
examinations. Petitioner contends that anyone has passed
reproduce said Section 78, Republic Act No. 165, for
the bar exams and is licensed by the Supreme Court to
purposes of comparison :SEC. 78. Rules and regulations.
practice law, has good standing, thus duly qualified to
— The Director subject to the approval of the Secretary of
practice before the Patent Office, and therefore the act of
Justice, shall promulgate the necessary rules and
requiring members of the Bar in good standing to take and
regulations, not inconsistent with law, for the conduct of all
pass an examination given by the Patent Office as a
business in the Patent Office.
condition precedent to be allowed to practice before said
office is a clear excess of his jurisdiction and violation of Issue/s:
the law. On the other hand, respondent claimed that he is
expressly authorized by the law to require persons desiring WHETHER OR NOT MEMBERS OF THEBAR
to practice or to do business before him to submit an SHOULD FIRST TAKE AND PASS
examination, even if they are already members of the bar. ANEXAMINATION GIVEN BY THE PATENTOFFICE
He contends that our Patent Law, Republic Act No.165, is BEFORE HE COULD BE ALLOWED TO PRACTICE
patterned after the United States Patent Law; and of the LAW IS THE SAID OFFICE. whether or not appearance
United States Patent Office in Patent Cases prescribes an before the patent Office and the preparation and the
examination similar to that which he had prescribed and prosecution of patent applications ,etc., constitute or is
scheduled.(a) Attorney at law. — Any attorney at law in included in the practice of law. WHETHER OR NOT
good standing admitted to practice before any United DIRECTOR OF THEPATENT OFFICE IS
States Court or the highest court of any State or Territory AUTHORIZED TOCONDUCT AN EXAMINATION
of the United States who fulfills the requirements and FOR PATENTATTORNEYS IS CONTRARY TO LAW.
complied with the provisions of these rules may be Decision:
admitted to practice before the Patent Office and have his
name entered on the register of attorneys.(c) Requirement The petition for prohibition is granted and the respondent
for registration. — No person will be admitted to practice Director is hereby prohibited from requiring members of
and register unless he shall apply to the Commissioner of the Philippine Bar to submit to an examination or tests and
Patents in writing on a prescribed form supplied by pass the same before being permitted to appear and practice
theCommissioner and furnish all requested information before the Patent Office.
and material; and shall establish to the satisfaction of the
Commissioner that he is of good moral character and of Ratio Decidendi: The Supreme Court has the exclusive and
good repute x x x In order that the Commissioner may constitutional power with respect to admission to the
determine whether a person x x x has the qualifications practice of law in thePhilippines1 and to any member of the
specified, satisfactory proof of good moral character and Philippine Bar in good standing may practice law
repute, x x x an examination which is held from time to anywhere and before any entity, whether judicial or quasi-
judicial or administrative, in the Philippines. The practice application of the Patent Law and other laws applicable, as
of law is not limited to the conduct of cases or litigation in well as the presentation of evidence to establish facts
court; it embraces the preparation of pleadings and other involved; that part of the functions of the Patent director
papers incident to actions and social proceedings, the are judicial orquasi-judicial, so much so that appeals from
management of such actions and proceedings on behalf of his orders and decisions are, under the law, taken to the
clients before judges and courts, and in addition, Supreme Court
conveying. In general, all advice to clients, and all action
taken for them in matters connected with the law
corporation services, assessment and condemnation 1. PHILIPPINE LAWYER’S ASSOCIATION
services contemplating an appearance before a judicial VS. CELEDONIO AGRAVA, in his capacity as
body, the foreclosure of a mortgage, enforcement of a Director of the Philippines Patent Office
creditor’s claim in bankruptcy and insolvency proceedings,
and conducting proceedings in attachment, and in matters G.R. No. L-12426 February 16, 1959
of estate and guardianship have been held to constitute law
FACTS:
practice as do the preparation and drafting of legal
instruments, where the work done involves the A petition was filed by the petitioner for prohibition and
determination by the trained legal mind of the legal effect injunction against Celedonio Agrava, in his capacity as
of facts and conditions. (5 Am. Jur. p. 262, 263).(Emphasis Director of the Philippines Patent Office. On May 27,
supplied).Practice of law under modern conditions consists 1957, respondent Director issued a circular announcing
in no small part of work performed outside of any court and that he had scheduled for June 27, 1957 an examination for
having no immediate relation to proceedings in court. It
embraces conveyancing, the giving of legal advice on a the purpose of determining who are qualified to practice as
large variety of subjects, and the preparation and execution patent attorneys before the Philippines Patent Office. The
of legal instruments covering an extensive field of business petitioner contends that one who has passed the bar
and trust relations and other affairs. Although these examinations and is licensed by the Supreme Court to
transactions may have no direct connection with court practice law in the Philippines and who is in good standing,
proceedings, they are always subject to become involved in is duly qualified to practice before the Philippines Patent
litigation. They require in many aspects a high degree of Office and that the respondent Director’s holding an
legal skill, a wide experience with men and affairs, and examination for the purpose is in excess of his jurisdiction
great capacity for adaptation to difficult and complex and is in violation of the law. The respondent, in reply,
situations. These customary functions of an attorney or maintains the prosecution of patent cases “ does not involve
counselor at law bear an intimate relation to the entirely or purely the practice of law but includes the
administration of justice by the courts. No valid distinction application of scientific and technical
so far as concerns the question set forth in the order, can be
knowledge and training as a matter of actual practice so as
drawn between that part which involves advice and
to include engineers and other individuals who passed the
drafting of instruments in his office. It is of importance to
examination can practice before the Patent office.
the welfare of the public that these manifold customary
Furthermore, he stressed that for the long time he is holding
functions be performed by persons possessed of adequate
tests, this is the first time that his right has been
learning and skill, of sound moral character, and acting at
all times under the heavy trust obligations to clients which questioned formally.
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
ISSUE:
Assoc. vs. Automobile Service Assoc. (R. I. ) 179 A.139,
144). (Emphasis ours). The practice of law includes such Whether or not the appearance before the patent Office and
appearance before the Patent Office, there presentation of the preparation and the prosecution of patent application,
applicants, oppositors, and other persons, and the etc., constitutes or is included in the practice of law.
prosecution of their applications for patent, their
oppositions thereto, or the enforcement of their rights in
patent cases. In conclusion, we hold that under the present HELD:
law, members of the Philippine Bar authorized by this
Tribunal to practice law, and in good standing, may The Supreme Court held that the practice of law includes
practice their profession before the Patent Office, for the such appearance before the Patent Office, the
reason that much of the business in said office involves the representation of applicants, oppositors, and other persons,
interpretation and determination of the scope and and the prosecution of their applications for patent, their
opposition thereto, or the enforcement of their rights in
patent cases. Moreover, the 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. The practice of law
is not limited to the conduct of cases or litigation in court
but also embraces all other matters connected

with the law and any work involving the determination by

the legal mind of the legal effects of facts and conditions.
Furthermore, the law provides that any party may appeal to
the Supreme Court from any final order or decision of the
director. Thus, if the transactions of business in the

Patent Office 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.

Xxx

This Court in the case of Philippine Lawyers Association

v.Agrava, (105 Phil. 173,176-177) stated:

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. (5 Am. Jr. p. 262, 263). (Emphasis
supplied)