The 2020 Revised Rules of Procedure for Intellectual Property Rights Cases to Take Effect on November 16, 2020

October 16, 2020

The 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (2020 IPR Rules), which take effect on November 16, 2020, are the product of extensive and thorough discussions by stakeholders from various sectors, practitioners, the academe, the Intellectual Property Office of the Philippines, and the Judiciary, with the goal of improving, facilitating, and expediting cases in response to the ever-changing landscape of intellectual property (IP) rights litigation in the country. The 2020 IPR Rules are designed to foster a legal atmosphere that ultimately spurs creative activity and innovation, technology transfer, and foreign investment.

In revising the 2020 IPR Rules, the salient features of the 2019 Amendments to the Revised Rules of Civil Procedure were integrated therein. For instance, the 2020 IPR Rules now require the complaint and the answer thereto to include the evidence in support thereof. The answer shall likewise be filed within thirty (30) calendar days from service of summons, while the answer to counterclaims or cross-claims shall be filed and served within fifteen (15) calendar days from service of the answer in which they are pleaded. Replies are no longer prohibited for as long as the answer includes an actionable document. The 2020 IPR Rules also incorporate the amended provision on substituted service of summons. Extraterritorial service of summons as provided for in international conventions to which the Philippines is a party shall also be allowed. In keeping with the language of the 2019 Amendments to the Revised Rules of Civil Procedure, the 2020 IPR Rules are also now gender-sensitive.

The 2019 Amendments to the Revised Rules on Evidence were also taken into account. For instance, the 2020 IPR Rules now treat as proof of official record of public documents in the custody of a foreign office, certificates issued pursuant to a treaty or convention to which both the Philippines and the country in which such office is located are parties.

Under the 2020 IPR Rules, Special Commercial Courts in Baguio City, Iloilo City, Cebu City, Cagayan de Oro City, and Davao City shall now have authority to issue writs of search and seizure in civil and criminal actions, enforceable nationwide.

The prohibited pleadings and motions in civil cases have been modified to allow for motions to dismiss on grounds of lack of jurisdiction, litis pendentia, res judicata and prescription. Motions for postponement may also be allowed, but only on the ground of acts of God, force majeure, or justified physical inability of the witness to appear and testify.

As for criminal cases, the fine points of the highly successful Revised Guidelines for Continous Trial of Criminal Cases were adopted such as the grounds for prohibited motions, the mandatory use of judicial affidavits which constitute the direct testimonies of the witnesses who executed them, and the simultaneous setting of arraignment and pre-trial, proper scheduling of the trial of cases, strict rules on postponement, proper stipulation of facts and testimonies of witnesses, adoption of timelines and other rules intended to hasten the resolution of criminal cases.

As regards the modes of discovery, courts may now allow the use of electronic means such as teleconferencing or videoconferencing in the taking of depositions and in other modes of discovery.

For the first time, the 2020 IPR Rules also list what shall be accepted as proof of actual use of a mark in trademark infringement and unfair competition cases. Moreover, the 2020 IPR Rules include 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 to include disposal of infringing goods, related objects, or devices, specifying the manner or method of disposal and/or destruction thereof. Courts may 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.

Due to the rising number of IP rights cases and the heavy dockets of the special commercial courts, the period to render judgment has been set at sixty (60) calendar days which is shorter than the ninety (90) calendar days to promulgate decisions in regular cases.

Finally, a new provision was added for monitoring the application of and adherence to the 2020 IPR Rules, and mandates the training of judges and court personnel by the Philippine Judicial Academy in coordination with the Office of the Court Administrator.