The Supreme Court has approved the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (“Revised IP Rules”), amending A.M. No. 10-3-10-SC, the Rules of Procedure for Intellectual Property Rights Cases (“Old IP Rules”).
The Revised IP Rules were published on 17 October 2020 in the Manila Bulletin and Philippine Star and became effective on 16 November 2020.
A copy of the law is available here.
The Revised IP Rules institutes a global amendment of reglementary periods, clarifying these to pertain to calendar days.
The amended Rule 1, Section 3 of the Revised IP Rules clarifies that they will generally apply in cases involving intellectual property rights. The two (2) exceptions when the regular procedure under the Rules of Court will apply are when the regional trial court issues a special order to that effect because the civil or criminal action involves several intertwined issues, and to a suppletory extent.
Whereas all orders issued by the regional trial court under the Old IP Rules were immediately executory, Rule 1, Section 4 of the Revised IP Rules excepts from such immediately executory nature: (1) the order of destruction issued under Rule 20 of the Revised IP Rules, where a motion for reconsideration is filed, and (2) the order of release of seized goods where a search warrant is quashed.
In the Old IP Rules, pleadings, motions, oppositions, defenses, or claims require verification and the submission of supporting documents, but Rule 1, Section 5 of the Revised IP Rules now requires the same only of pleadings.
Rule 1, Section 6 of the Revised IP Rules requires the branch clerk of court to notify the Director-General of the Intellectual Property Office, within thirty (30) calendar days [previously one (1) month], of the filing of any suit or proceeding involving an intellectual property right. The same notification requirement will apply when the action pertains to an application for civil or criminal search warrant in anticipation of an action to be filed, or if such application is an incident to a pending action.
Rule 2, Section 1 amends the scope of intellectual property rights cases, which are civil in nature, for which the Revised IP Rules will apply. Instead of Infringement of Patent under Section 76 of Republic Act No. 8293, as amended (“IP Code”), the Revised IP Rules now applies to Repetition of Infringement of Patent under Section 84 of the IP Code. Moreover, the Revised IP Rules will not apply to actions concerning imported merchandise or goods bearing infringing marks or trade names, under Section 166 in relation to Section 163, actions for cancellation of the registration of a collective mark, under Section 167 in relation to Section 163, and Breach of Contract, under Section 194 of the IP Code. Finally, the coverage of the Revised IP Rules has been expanded to cover Infringement of Plant Variety Protection under Section 47 of Republic Act No. 9168 or the Plant Variety Protection Act.
Apart from special commercial courts in Quezon City, Manila, Makati, and Pasig, special commercial courts in the cities of Baguio, Iloilo, Cebu, Cagayan De Oro, and Davao have now been authorized under Rule 2, Section 2 of the Revised IP Rules to issue writs of search and seizure enforceable nationwide.
Rule 3, Section 2 of the Revised IP Rules expands the persons who have standing to file an action thereunder to an exclusive licensee to a copyright. Meanwhile, Rule 3, Section 4 modifies the list of prohibited pleadings by now allowing (1) motions to dismiss, grounded on the trial court’s lack of jurisdiction over the subject matter, litis pendentia, res judicata, and prescription; (2) a reply, in instances when an actionable document is attached in the answer; (3) a motion for extension of time to file pleadings, provided that only one (1) such motion may be filed, such extension not to exceed thirty (30) calendar days; (4) a motion for postponement based on acts of God, force majeure, or physical inability of the witness to appear and testify, in any case accompanied by the original official receipt of payment of postponement fee; (5) motion for a bill of particulars; and (6) intervention.
Under Rule 3, Section 6 of the Revised IP Rules, the trial court which issued the writ of search and seizure may lift such writ and order the return of the seized goods if no case is subsequently filed within forty-five (45) calendar days [previously thirty-one (31) calendar days] from the date of issuance of the writ. The Revised IP Rules has also expanded to allow situations wherein seized goods are destroyed, when deemed hazardous under Rule 20 therein.
The modes of service of summons, orders, court processes, and answers, have been expanded under Rule 4, Section 2, to include (1) substituted service; (2) service by electronic means, for foreign private juridical entities not registered in the Philippines, or with no resident agent, that is doing business, as defined by law; and (3) extraterritorial service of summons in accordance with international conventions.
The period within which to file an answer has been extended, under Rule 4, Section 3 of the Revised IP Rules, to thirty (30) calendar days [previously fifteen (15) days] from the service of summons, whereas the answer to counterclaims must be filed and served within fifteen (15) calendar days [previously ten (10) days] from service of the answer. Moreover, the answer must now contain the evidence intended to substantiate the allegations in support thereof.
New provisions under Rule 5, Section 3 and 4 of the Revised IP Rules, have been added to permit the use of modes of discovery, even through electronic means, particularly depositions and production and inspection of things and documents.
Rule 6, Section 1 and 5 of the Revised IP Rules further entrenches the resort to court-annexed mediation (“CAM”) and judicial dispute resolution (“JDR”), such modes of dispute resolution being extensions of the pre-trial proceedings. The parties will be referred to CAM on the day of the termination of the pre-trial, and JDR shall be resorted to when the CAM fails. Moreover, Rule 6, Section 6 clarifies that the failure of either party to submit their respective pre-trial briefs, or to appear in the pre-trial, CAM, or JDR, merits the dismissal of their pleading with prejudice, unless otherwise ordered. The adverse party who submits a pre-trial brief and who appears at pre-trial will be entitled to a judgment on the counterclaim unless the court requires evidence ex parte for a judgment. Finally, where the submission of draft decisions was previously mandatory, the same may now be required by the trial court in the pre-trial order only if so desired.
Rule 7, Section 1 of the Revised IP Rules explicitly requires parties’ representatives to the clarification hearings to present the requisite special power of attorney or resolution for such purposes. Rule 7, Section 3 now allows the postponement of trial based on acts of God, force majeure, or physical inability of the witness to appear and testify, in any case accompanied by the original official receipt of payment of postponement fee.
Meanwhile, Rule 7, Section 4 of the Revised IP Rules provides that evidence presented during the trial and not otherwise admitted by the parties or ruled upon by the court during the pre-trial shall be offered orally immediately after the completion of the presentation of evidence of the party concerned. Thereafter, the opposing party shall immediately raise the objections on the offer of evidence, and thereafter, the court shall at once rule on the offer and objections in open court.
Under Rule 7, Section 5 of the Revised IP Rules, the trial court may also order the submission of memoranda and draft decisions, the latter previously being mandatory, immediately after an oral ruling on the last offer of evidence.
Rule 10, Section 1 of the expands the applicable criminal cases where the Revised IP Rules will apply to include Cybersquatting under Section 4(a)(6)(i) and (iii) of Republic Act No. 10175, the Cybercrime Prevention Act of 2012; Infringement of Plant Variety Protection under Sections 47 and 56 of Republic Act No. 9168 or the Plant Variety Protection Act; Sections 3(b) and 4 of Republic Act No. 8203 or the Special Law on Counterfeit Drugs; and Sections 3 and 4 of Republic Act No. 10088 or the Anti-Camcording Act of 2010, which involves intellectual property rights.
Rule 11, Section 4 of the Revised IP Rules establishes the precedence of the court where a criminal action is subsequently filed for purposes of custody over the records and seized goods pursuant to a previously issued search warrant. Where a criminal action is subsequently filed, it shall be the duty of the applicant or private complainant to file a motion for the immediate transfer of the seized goods and records of the case with the court which issued the warrant, within ten (10) calendar days from the filing of the information in the trial court, which motion shall be immediately acted upon by the issuing court. Failure of the applicant or private complainant to comply therewith shall subject the seized goods to disposal and/or destruction under Rule 20 by the issuing court. Nevertheless, if upon hearing of a motion for such purpose, when no criminal complaint is subsequently filed, and with notice to appropriate government agencies, but the seized goods are hazardous under Rule 20, the trial court shall order the destruction of the same. Destruction thereof will also be ordered in instances when the trial court requires the parties to show case why the search warrant should not be quashed, and compliance with the show cause order is deemed insufficient.
Rule 13 Section 1 of the Revised IP Rules now provides the simultaneous setting of the pre-trial and arraignment of the accused. Rule 13 of the Revised IP Rules also expands the period to file additional judicial affidavits during pre-trial from three (3) days to five (5) days after the termination of the pre-trial.
Rule 16 of the Revised IP Rules now adopts the admissibility of apostilled foreign official documents, in addition to consularization as a means of authenticating foreign official documents, consistent with the revised rules of evidence. An electronic document is now admissible in evidence if it complies with the rules on admissibility under the Rules on Electronic Evidence.
Rule 17 Section 4 of the Revised IP Rules grants the court the power to appoint one (1) expert, aside from ordering the creation of a committee of three (3) experts in patent infringement cases, to provide advice on the technical aspects of the patent.
For the first time, the Revised IP Rules list what shall be accepted as proof of actual use of a mark in trademark infringement and unfair competition cases under Rule 18, Section 2. Moreover, Rule 18 Section 9 of the Revised IP Rules now includes a new provision on market survey as evidence to prove primary significance, distinctiveness or status of a mark and/or likelihood of confusion.
Additionally, Rule 20 on Order of Destruction was overhauled in the Revised IP Rules to include disposal of infringing goods, related objects, or devices, specifying the manner or method of disposal and/or destruction thereof. For the first time, the Revised IP Rules codified the distinction between destruction and disposal and defined and classified which goods are hazardous and non-hazardous. Courts may now also issue an order disposing of them by way of donation for humanitarian use, subject to conditions. However, those classified as hazardous shall only be subject to destruction.