We published a more in-depth article entitled “A Brief Look At The 2020 Revised Rules Of Procedure For Intellectual Property Rights Cases” on Mondaq [link] on 28 October 2020.
The Supreme Court of the Philippines recently promulgated the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (A.M. 10-3-10-SC), which shall take effect on 16 November 2020. The aim of the revised rules of procedure for IP rights cases is to facilitate and expedite the resolution of IP rights cases in the Philippines. Some of the salient portions of the Revised Rules are as follows:
- The Supreme Court increased the number of Special Commercial Courts that have the authority to issue writs of search and seizure that can be enforced nationwide.
- The Complaint and Answer must now include the evidence of the parties.
- Judicial affidavits are now required in lieu of affidavits
- A motion to dismiss can now be filed based on the following grounds:
- the court has no jurisdiction over the subject matter;
- there is another action pending between the same parties for the same cause; or
- the cause of action is barred by a prior judgment or by the statute of limitations.
- A reply can now be filed when an actionable document is attached to the answer.
- A motion for postponement can now be filed if it is based on acts of God, force majeure, or physical inability of the witness to appear and testify.
- The revised rules now allows for substituted services of summons, orders, and other court processes
- Extraterritorial service of summons, as provided for in international conventions to which the Philippines is a party, is now allowed.
- The courts may now allow a deponent to give his or her deposition through electronic means.
- Court-Annexed Mediation (CAM) and Judicial Dispute Resolution (JDR) now take place after the termination of the pre-trial.
- The following motions are now prohibited in criminal cases:
- Motion for judicial determination of probable cause;
- Unmeritorious motion for reinvestigation of the prosecutor recommending the filing of information once the information has been filed before the court or if the motion is filed without prior leave of court;
- Motion for bill of particulars that does not conform to Section 9, Rule 116 of the Rules of Court; and
- Motion to suspend the arraignment based on grounds not stated under Section 11, Rule 116 of the Rules of Court.
- Once the court has acquired jurisdiction over the person of the accused, the arraignment of the accused and the pre-trial are now set simultaneously.
- Aside from ordering the creation of a committee of three experts in patent infringement cases, the court can now appoint one expert to provide advice on the technical aspects of the patent.
- Rule 17 (evidence in patent cases) shall also apply to infringement cases involving utility models and industrial designs with corresponding registrability reports.
- The revised rules provided a list of evidence that shall be accepted as proof of actual use of the mark in trademark infringement and unfair competition cases.
- A market survey can be recognized as evidence to prove the primary significance of a mark to the relevant public (including its distinctiveness, descriptive or generic status, strength, or well-known status) and/or likelihood of confusion.
- Aside from filing a motion for the destruction of the seized infringing goods, the right-holder can now file a motion for the disposal of the seized infringing goods. However, hazardous goods, related objects, and devices should only be subject to destruction.
The full text of A.M. 10-3-10-SC is available [here].