Supreme Court and IPOPHL to work on speeding up disposal of IPR cases

Published on August 5, 2019

The Intellectual Property Office of the Philippines (IPOPHL) has paid the Supreme Court (SC) justices a courtesy visit which yielded encouraging discussions on various approaches that can ease crowding dockets and bring faster resolution to pending intellectual property rights (IPR) related cases. 

Last July 24, IPOPHL Director-General (DG) Josephine R. Santiago elevated to Chief Justice (CJ) Lucas P. Bersamin the office's request for more special commercial courts (SCCs) with the power to issue search warrants, in relation to IPR cases, that are enforceable nationwide. 

Currently, SCCs are spread only across Metro Manila, namely in the cities of Pasig, Makati, Manila, and Quezon. 

"We believe the designation of additional SCCs to be located in Metro Visayas, Metro Mindanao, and Metro Northern Luzon will further bolster the Philippines' standing in the areas of rule of law and administration of justice and will be beneficial, as this will serve a greater number of stakeholders," DG Santiago said. 

The request is made amid increased IPR cases over the years, relating particularly to trademark infringement.

Another solution the IPOPHL suggested to the High Court for a speedier resolution of IPR cases is to consider the designation of select Regional Trial Courts (RTCs) to specialise in and focus solely on IPR cases. 

At present, IPR cases are lodged with RTCs designated as SCCs which handle not just IPR cases but all commerce-related cases. The SCCs are also now docketed with drug-related cases which, like IPR cases, have significantly risen in volume in recent years. 

To strengthen the basis of its recommendation, the IPOPHL will submit to the SC a report that shows how other countries that established courts focusing on IPR cases can result in effective disposal and declogging of dockets. 

The IPOPHL also sought for the creation of a technical working group (TWG) or subcommittee composed of legal practitioners in the field of intellectual property, members of the IPOPHL, and SCCs' judges to make the currently implemented 2010 Special Rules on IPR congruent with all other rules and policies issued thereafter the said guidelines, such as the Revised Guidelines for Continuous Trial of Criminal Cases and the Ease of Doing Business Act of 2018, among several others. 

"The recommendation to revise the Rules was based on several consultations with the SCC Judges, intellectual property stakeholders, and organizations to address some gaps and to further streamline the procedure," DG Santiago said. 

CJ Bersamin was amenable to the proposals raised by the IPOPHL.

The SC Justice said the designation of additional SCCs or of special IPR courts is possible, considering that Congress has increased the number of RTCs overall. 

As to amending the Special Rules on IP, CJ Bersamin has tasked Justice Diosdado M. Peralta to take charge in revisiting the said procedural guidelines. 

"The CJ himself proposed that IPOPHL sit in the TWG and/or subcommittee that will revise the rules. The IPOPHL would be pleased to actively participate in the move to amend the rules. In fact, we have prepared a comprehensive list of provisions we believe to be ripe for revision and we are ready to discuss this at the proper time and venue," the IPOPHL chief added. 

While efforts to expedite the disposal of IPR cases at the courts are ongoing, IPOPHL encouraged the use of its alternative dispute resolution (ADR) services which offers mediation. 

Mediation allows parties to settle their domestic or cross-border IPR disputes out of the courts. When conducted effectively, it can save parties from the hassles experienced and larger costs incurred when filing disputes before the courts. 

With the successful delivery of its mediation services—registering an average settlement rate of 45.4% in the five years through 2018—IPOPHL aims to see the utilisation of arbitration, its other ADR service, move in the same positive direction.

"We continue to work towards strengthening arbitration as we hope to see it conducted not only at the administrative level but also at the courts," DG Santiago added. 

The IPOPHL will hold in September an arbitration workshop where a pool of arbitrators will be trained with the full credit of a Mandatory Continuing Legal Education. The workshop is seen as among IPOPHL’s major efforts this year to bolster the use of arbitration in resolving IPR disputes.