Supreme Court’s Revised Rules on IP Cases Improves Litigation,  Driving Innovation and Creativity

December 23, 2020

The Intellectual Property of the Philippines (IPOPHL) said the Supreme Court’s (SC) 2020 Special Rules on the Prosecution of Intellectual Property (IP) Cases is testament to the whole-of-society work in ensuring an effective and speedy adjudication of IP rights cases – essential in creating an environment that fosters innovation, investments and entrepreneurship.  

"The Revised Rules is yet another example of the whole-of-nation approach in promoting and enhancing the intellectual property system, where the judiciary and executive branches, as well as the private sector, have worked in synergy, guided by the shared vision of enhancing judicial processes in adjudication of IP rights cases," IPOPHL Director General Rowel S. Barba said at the SC'S Dec. 16 media launch for the Rules. 

The Rules revised the 2010 version and took effect on Nov. 16, 2020. Specifically, it makes IP litigation less costly, faster and in sync with newer laws such as the Revised Guidelines for Continuous Trial of Criminal Cases and the Ease of Doing Business Act of 2018, to name a few.

“There are other provisions added that could encourage IP owners to take legal recourse in seeking justice and, possibly, increase convictions against IP violators,” Barba said. 

He added this effort in the judiciary complements IPOPHL's ongoing work in streamlining its administrative and quasi-judicial processes and making its alternative dispute mechanisms more accessible to all through offering the service online. 

For his part, Chief Justice Disodado M. Peralta said the Revised Rules is the latest action of the top court to institutionalize procedural reforms that can improve judicial proceedings.

“The 2020 IPR Rules are designed to foster a legal atmosphere that ultimately spurs creative activity and innovation, technology transfer and foreign investment in the Philippines,” Peralta said.

Among the Rules’ salient provisions include:

1. Reducing the period for rendering judgment on regular cases to 60 days from 90 days;
2. Allowing additional Special Commercial Courts to issue writs of search and seizure in civil and criminal actions;
3. The revised order of destruction which includes 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.
4. A list, for the first time, on what shall be accepted as proof of actual use of a mark in trademark infringement and unfair competition cases. 
5. Accepting market survey as an evidence to prove primary significance, distinctiveness, or status of a mark and/or likelihood of confusion; and
6. Mandating the training of judges and court personnel by the Philippine Judicial Academy in coordination with the Office of the Court Administrator.

The push to revise the rules was initiated by IPOPHL in 2019 through former Director General Josephine R. Santiago. The effort stemmed from the office’s consultations with various special commercial court judges, IP rights holders, and IP organizations to address some gaps and bring more clarity to procedures.  

The revisions were made by the technical working group (TWG) which was created and was composed of the following:

The TWG members and other IP stakeholders engaged in extensive discussions and exchange of best practices to draw up and approve the modified rules this year even amid the challenges brought by the COVID-19 pandemic.

Department of Trade and Industry Secretary Ramon M. Lopez said the green light on the Revised Rules is a timely move as the country scouts for steady sources of growth to bounce back from the pandemic’s battering effect on the economy.

“With IP as a catalyst for our country’s goal, we believe the judiciary’s activities on IP rights will enhance the government’s efforts to accelerate our economic recovery. This is important given that many businesses, especially MSMEs have been significantly affected by the economic challenges caused by the COVID-19 pandemic,” Lopez said.### (Janina Lim, Media Relations Officer)