Phil. Lawyer's Association v. Agrava (G.R. No.L12926, Feb 16,1959)

FACTS:

Philippine Lawyer's Association filed a petition for prohibition and injunction against Celedonio Agrava, in his capacity as

Director of the Philippines Patent Office.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 petitioner,Philippine Lawyer's Association contends 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. The
respondent, in reply, maintains 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 as a matter of actual practice so as to
include engineers and other individuals who passed the examination can practice before the Patent office. Furthermore, he
stressed that for the long time his holding tests, this is the first time that his right has been questioned formally.


ISSUE:
Whether or not appearance before the patent Office and the preparation and the prosecution of patent applications, etc.,
constitutes or is included in the practice of law.

HELD:

Yes. The Supreme Court ruled that the 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. As stated in 5 Am. Jur,The practice of law is not limited to the conduct of
cases or litigation in court; it embraces the preparation of pleadings and 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.
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.The Supreme Court ruled that under the present law, members of the Philippine Bar authorized by the Supreme Court to practice
law, and in good standing, may practice their profession before the Patent Office, since 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, taken to the Supreme Court.
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.