Neptali L. Bulilan
The special rules on intellectual property litigation, otherwise known as the ‘Rules of Procedure in Intellectual Property Rights Cases’, took effect 15 days after publication in two national newspapers.
The special rules on intellectual property litigation, otherwise known as the ‘Rules of Procedure in Intellectual Property Rights Cases’, took effect on November 9, 2011, 15 days after publication in two national newspapers.
With these special rules in place, the adjudication process for IP rights cases, in both civil and criminal procedures, has been streamlined.
“A period not exceeding 30 days will be allotted to the plaintiff and a similar period to the
defendant as prescribed in the pre-trial order.”
In civil procedures, the rules apply to all civil actions for violations of IP rights provided for in the Republic Act 8293 or the IP Code, as amended, including civil actions for patent infringement, utility model and industrial design infringement, trademark infringement, unfair competition, actions concerning trademark licence contracts, actions concerning imported merchandise or goods bearing infringing marks and trade names, actions for cancellation of the registration of a collective mark, false designations of origin, false description or representation, breach of contract, civil actions for infringement of copyright, and infringement of moral rights, performers’ rights, producers’ rights, broadcasting rights, and other violations of IP rights as may be defined by law.
Among the salient features of these rules on civil procedure are:
The executive nature of orders issued by the special commercial courts— any order issued by the special commercial court is immediately effective unless restrained by a superior court.
- The nationwide enforceability of search and seizure writs issued by the special commercial courts in the national capital region—Quezon City, Manila, Makati, and Pasig. These courts will have authority to act on applications for search and seizure writs in civil actions for violations of the IP Code.
- Limitation on pleadings—the only pleadings allowed are complaints, compulsory counterclaims and cross-claims pleaded in the answer, and the reply to the cross-claims. All the pleadings will be verified and contain, as annexes, documents that support the allegations in the affidavits.
- The plaintiff ’s counsel or representative is allowed to serve summons, orders and other
- No more default order—should the defendant fail to answer the complaint within the prescribed period, the court, motu proprio or on motion of the plaintiff, will render judgment as may be warranted by the allegations in the complaint, as well as the affidavits and other evidence on record, unless the court in its discretion requires the plaintiff to submit additional evidence.
Simplified trial procedure
Judicial affidavits in lieu of direct testimonies—judicial affidavits will serve as the direct testimonies of the witness/es during the trial, subject to cross-examination.
Fixed trial period—a period not exceeding 30 days will be allotted to the plaintiff and a similar period to the defendant as prescribed in the pre-trial order. No extension will be allowed by the judge except for justifiable reasons.
Mandatory submission of draft decisions—immediately after the oral ruling on the last offer of evidence, the court will order the parties to simultaneously submit their respective draft decisions within a nonextendible period of 30 days. If a ruling is written, the court will order the parties to simultaneously submit their respective draft decisions within a non-extendible period of 30 days from receipt of the order.
Shortened period to render judgment
Within 45 days of the following situations:
- Pre-trial—where the case is submitted for decision after pre-trial, the court will render judgment within 45 days of pre-trial.
- Submission of position papers—where position papers from the parties are required, the court will render judgment within 45 days of receiving the last position paper.
- Clarifying hearing—where a clarifying hearing is held, the court will render judgment within 45 days of its end.
- Trial—within 60 days of receiving of the draft decision of the parties, the court will render judgment.
- Judgment is enforced pending appeal—unless restrained by a higher court, the judgment of the court shall be executed even pending appeal.
These salient features of the special rules have addressed the delaying tactics used by defendants in IP cases. So infringers beware: you can no longer hide under the technicalities of the court procedure.