Professional Documents
Culture Documents
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property and creations, particularly when b neficial to the: people, for such
period as may be provided by law.
_iti,,A/
ERt'Xs-BERNABE
Associate Justice
Associate Justice
:~ /
H E N ~ B . INTJNG
As~ociate Justice
EDGAR~SSANTOS SA~U~~N
Associate Justice Associate Justice
On leav
PRISCILLA J. BAL AZAR-PADILLA
2020 REVISED RULES OF PROCED RE FOR INTELLECTUAL
PROPERTY RIGH S CASES
Rule 1
GENERAL PROVI SIONS
SEC. 3. Applicability ofthe Rules. -T ese Rules shall apply to all cases
involving Intellectual Property Rights.
When the court determines that the ivil or criminal action involves
several intertwined issues, it shall issue special order that the regular
procedure prescribed in the Rules of Cou shall apply, stating the reason
therefor.
SEC. 6. Duty of the clerk of court. -tt shall be the duty of the branch
clerk of court to notify in writing the Dir· ctor-General of the Intellectual
Property Office of the Philippines (IPO) wit in thirty (30) calendar days after
the filing of any action, suit or proceeding i volving a copyright, trademark,
service mark, patent, industrial design, and utility model, including
undisclosed information and technology tra sfer agreement where the subject
matter includes an intellectual property ri ht. Provided, that if the action
pertains to an application for civil or crimi al search warrant in anticipation
of an action to be filed, or if such applicatio is incident to a pending action,
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the notification shall be made within thir y (30) calendar days after the
issuance of an order granting or denying the application. Such notice shall set
forth: the names and addresses of the litigants and the copyright, trademark,
service mark, patent or design registrations involved and, where applicable,
the numbers of their certificates of registrati n.
CIVILPROCE
Rule2
NATURE OF PROC EDINGS
Rule3
COMMENCEMENT FACTION
SEC. 2. Who may file an action und r these Rules. - Any inteHectual
property right owner, or anyone possessing a y exclusive right, title or interest
under claim of ownership in any intellectu 1 property right, or an exclusive
licensee to a copyright, whose right may hav been violated, may file an action
under these Rules.
The complaint shall include a certific tion that the ~arty commencing
the action has not filed any other action o proceeding involving the same
issue(s) before any tribunal, agency, or quas -judicial body:nor is such action
or proceeding pending before any other tr bunal, agency or quasi-judicial
body; Provided, however, that if any such a~tion is pending, the status of the
same must be stated, and should knowledge t ere of be acquired after the filing
of the complaint, the party concerned shall u dertake to notify the court within
five (5) calendar days from such knowledge.
If upon hearing of the motion, even hen no complaint was filed but
the seized goods are hazardous under Rule 2 , upon due notice to appropriate
government regulatory agencies, the com1 hall order the destruction of the
same.
If no motion for the return of the seiz d goods is filed within sixty (60)
calendar days from the issuance of the writ u der the first paragraph, the court
shall order the disposal and/or destruction o the goods, as may be warranted
under Rule 20, after hearing with notice to t e parties.
Rule4
SUMMONS, ORDERS, COURT PROCESSES, AND ANSWER
If, for justifiable causes, the defendant cannot be served personally after
at least three (3) attempts on two (2) differe t dates, service may be effected:
6
9)
SEC. 3. Answer. - Within thirty (3 calendar days from service of
summons, the defendant shall file his or her a swer to the complaint, including
the evidence therein, and serve a copy thereo on the plaintiff. Affirmative and
negative defenses not pleaded in the answer shall be deemed waived, except
when the court has no jurisdiction over t e subject matter, when there is
another action pending between the same pa ies for the same cause, or when
the action is barred by a prior judgment orb the statute of limitations. Cross-
claims and compulsory counterclaims not asserted in the answer shall be
considered barred. The answer to countercla ms or cross-claims shall be filed
and served within fifteen ( 15) calendar da s from service of the answer in
which they are pleaded.
Rule5
MODES OF DISC VERY
Rule 6
PRE-TRIA
a) Pre-trial;
b) Court-Annexed Mediation; and
c) Judicial Dispute Resolution, if nee ssary.
The parties shall file with the court fnd furnish each other copies of
their respective pre-trial briefs in such mann r as to ensure receipt by the court
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and the other party at least five (5) calend r days before the date set for the
pre-trial.
The parties shall set forth in their pre trial briefs, among other matters,
the following:
SEC. 2. Nature and purpose of pre trial. - Before the pre-trial, the
court shall require the marking of docum ntary or object evidence by the
branch clerk of court or any authorized cou personnel.
During the pre-trial, the court shall, w th its active participation, ensure
that the parties consider in detail all of the £ llowing:
a) faf
An enumeration of the admitted ts;
b) The minutes of the pre-trial confer nee;
c) The legal and factual issue/s to be ried;
d) The applicable law, rules; and juri prudence;
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Should the opposing party fail to appear without valid cause stated in
the next preceding paragraph, the presentation of the scheduled witness will
proceed with the absent party being dee ed to have waived the rilght to
interpose objection and conduct cross-exam·nation.
The period for court-annexed media ion shall not exceed thirty (30)
calendar days and is non-extendible.
If judicial dispute resoluti~n fails, tri 1 before the original court shall
proceed on the dates agreed uponl.
I
All proceedings during the court-an exed mediation and the judicial
dispute resolution shall be confidential.
SEC. 9. Schedule oftrial. -If the cou deems it necessary to hold trial,
the court shall include in the Pre-Trial Orde the schedule of hearings, which
shall begin within sixty (60) calendar days om the termination of the pre-
trial or the clarification hearing/s, which ver is later. The trial shall be
completed not later than sixty (60) calendar days from the date of the initial
trial, excluding the period when the case is r ferred to an expert or committee
of experts under Section 4 of Rule 17.
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GANDTRIAL
The order setting the case for clarific tion hearing must be issued not
later than fifteen (15) calendar days after re eipt of the last position paper or
the expiration of the period for filing the s e and the clarification hearing
must be scheduled within fifteen ( 15) calend r days from the issuance of such
order and completed not later than fifteen ( I ) calendar days.
Rule 8
JUDGME
Where the parties are required to sub it position papers under Section
7 of Rule 6 or Section 1 of Rule 7, the courts all render judgment within sixty
(60) calendar days from receipt of the 1 st position paper, or upon the
expiration of the period to file the same.
Where the court conducted trial, it s all render judgment within sixty
(60) calendar days from the oral ruling on the last offer of evidence, or, when
required by the court, from submission of he memoranda or draft decision
under Section 5 of Rule 7, or upon the expir tion of the period to file thereof.
Rule 9
APPEAL
SEC. 2. How appeal taken. - All d isions and final orders shall be
appealable to the Court of Appeals through a petition for review under Rule
43 of the Rules of Court.
The petition for review shall be taken within fifteen (15) calendar days
from notice of the decision or final ord r of the Regional Trial Court
designated by the Supreme Court as a S ecial Commercial Court. Upon
proper motion and the payment of the full a ount of the legal fee prescribed
in Rule 141, as amended, and before the expi ation of the reglenientary period,
the Court of Appeals may grant an addition 1 period of fifteen (15) calendar
days within which to file the petition for review. No further extension shall be
granted except for the most compelling re sons, and in no case to exceed
fifteen (15) calendar days.
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CRIMINAL PRO
Rule 10
NATURE OF PROC
Rule 11
COMMENCEMENT
When the information is filed, the ve ified complaint and the judicial
affidavits of witnesses together with other e idence, in such number of copies
as there are accused, plus two (2) copies for he court's files, shall be attached
thereto.
SEC. 3. When warrant of arrest may ·ssue. - Within ten ( 10) calendar
days from the filing of the information, the j dge shall personally evaluate the
information, together with the resolution of he prosecutor and its supporting
documents. The judge may immediately dis iss the case if the evidence on
record clearly fails to establish probable c se. If the judge finds probable
cause, he or she shall issue a warrant of arr st, or a commitment order if the
accused has already been arrested. In cas of doubt on the existence of
probable cause, the judge may order the rosecutor to present additional
evidence within five ( 5) calendar days fro notice and the issue must be
resolved by the court within fifteen (15) cal ndar days from the presentation
of the additional evidence.
Upon motion of the party whose good have been seized, with notice to
the applicant, the issuing court may quash he search warrant and order the
return of the seized goods if no criminal co plaint is filed within sixty (60)
calendar days from the issuance of the searc warrant.
Rule 12
PRELIMINARY INVE TIGATION
a) The complaint shall state the full ame of the complainant and the
facts showing the capacity or auth rity of the complaining witness
to institute a criminal action in a epresentative capacity, and the
legal existence of an organized association of persons that is
instituting the criminal action. In c se of juridical persons, proof of
capacity to sue must be attache to the complaint. Where the
complainant is a juridical person ot registered in the Philippines,
documents proving its legal existen e and/or its capacity to sue, such
as a certificate of registration or e tracts from relevant commercial
registries or offices having jurisdi tion over said entities, shall be
accepted if these are originals o in case of public documents,
certified true copies thereof execu ed by the proper officer of such
registries or offices.
b) The complaint shall state the addre s of the respondent and shall be
in such number of copies as ther are respondents, plus two (2)
copies for the investigating pros cutor. The complaint shall be
subscribed and sworn to before any prosecutor or government
official authorized to administer oath, or, in their absence or
unavailability, before a notary p blic. The administering officer
must certify that he or she personal y examined the complainant and
that he or she is satisfied that the c mplainant voluntarily executed
and understood the complaint.
a) Within ten (10) calendar days afte the filing of the complaint, the
investigating prosecutor, on the b sis of the complaint, affidavits,
and other evidence accompanying the same, may dismiss the case
outright for being patently witho t basis or merit, and order the ,
release of the accused ifin custody, and/or seized articles in custody,
if any.
e) Within ten (10) calendar days fro the last written submission by
the parties or the expiration of the period for such submission, the
investigating prosecutor shall det rmine whether or not there is
sufficient ground to hold the respo dent for trial.
Before the information is filed, the person arrested may ask for a
preliminary investigation in accordance with this Rule, but he or she must sign
a waiver of the provisions of Article 125 of the Revised Penal Code, as
amended, in the presence of his or her coun el. Notwithstanding the waiver,
he or she may apply for bail and the investi ation must be terminated within
fifteen ( 15) calendar days from its inception.
Rule 13
ARRAIGNMENT AND PRE-TRIAL
Once the court has acquiredjurisdictio over the person of the accused,
the arraignment of the accused and the pre- rial shall be set simultaneously
within ten (10) calendar days from the date f the court's receipt of the case
for a detained accused, and within thirty (30 calendar days from the date the
court acquires jurisdiction over a non-det ined accused, unless a shorter
period is provided by special law or Suprem Court circular.
The pre-trial shall be terminated not la er than thirty (30) calendar days
from the date of its commencement.
Before the pre-trial, the court shall req ire the marking of documentary
or object evidence by the branch clerk o court or any authorized court
personnel.
a) Plea bargaining;
b) The stipulations or admissions ent ed into by the parties;
c) Whether, on the basis of the stipu ations and admissions made by
the parties and upon agreement o the parties, judgment may be
rendered without the need of fu er proceedings, in which event
judgment shall be rendered withi thirty (30) calendar days from
issuance of the order;
d) A clear specification of material fa ts which remain controverted;
e) Trial dates of each party;
f) Statement of the parties' respect" e theories of the case and/or
defenses;
g) A tabular presentation of the partie ' respective pre-marked exhibit
be included to facilitate the subs quent conduct of trial and to
properly guide both parties and the court;
h) A statement that the One-Day Ex mination of Witness Rule and
Most Important Witness Rule nder A.M. No. 03-1-09-SC
(Guidelines for Pre-Trial) shall be trictly followed; and
i) Such other matters intended to exp <lite the disposition of the case.
Rule 14
TRIAL AND JUD MENT
If despite the denial of the motion for 1 ave, the accused insists on filing
a demurrer to evidence, or if the accused file a demurrer to evidence without
seeking a prior leave of court, the previously scheduled dates for the accused
to present evidence shall be cancelled, and he accused shall be deemed to
have waived the right to present evidence an submits the case for judgment
on the basis of the evidence of the prosecutio
SEC. 5. Judgment. - The court shall p omulgate the judgment not later
than sixty (60) calendar days from the time t e case is submitted for decision,
with or without the memoranda. The IPO s all be furnished a copy of the
judgment.
Rule 15
APPEAL
SEC. 2. How appeal taken. - The app al shall be taken in the manner
provided under Rule 122 of the Rules of Co
Rule 16
COMMON RULES ON ADMISSIBI ITY AND WEIGHT OF
EVIDENCE
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Rule 17
EVIDENCEINPATE TCASES
If the court orders the creation of a cm mittee of three (3) experts, each
party shall, within thirty (30) calendar da s from receipt of such order,
nominate an expert, who shall then both be a pointed by the court. Thereafter,
the court shall appoint the third expert from list submitted by the experts of
each side.
Rule 18
EVIDENCE IN TRADEMARK I FRINGEMENT AND
UNFAIR COMPETITI N CASES
a) the duration, extent and geographic l area of any use of the mark; in
particular, the duration, extent nd geographical area of any
promotion of the mark, including dvertising or publicity and the
presentation, at fairs or exhibitions of the goods and/or services to
which the mark applies;
b) the market share, in the Philippin s and in other countries, of the
goods and/or services to which the nark applies;
c) the degree of the inherent or acquir d distinction of the mark;
d) the quality-image or reputation acq ired by the mark;
e) the extent to which the mark has b en registered in the world;
f) the exclusivity of registration attai ed by the mark in the world;
g) the extent to which the mark has b en used in the world;
h) the exclusivity of use attained by t e mark in the world;
i) the commercial value attributed to he mark in the world;
j) the record of successful protection f the rights in the mark;
' \".
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k) the outcome oflitigations dealing ith the issue of whether the mark
is a well-known mark; and
I) the presence or absence of ide tical or similar marks validly
registered for or used on identical or similar goods or services and
owned by persons other than the pe son claiming that his or her mark
is a well-Im.own mark.
Provided, that the mark may be well- own, regardless of whether the
mark is registered in the Philippines.
------------------~---~-----»»•,1-------,,--------------
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The test for detennining whether the ark is or has become the generic
name of goods or services on or in connect on with which it has been used
shall be the primary significance of the mark to the relevant public rather than
purchaser motivation.
Rule 19
EVIDENCE IN COPY
a) Where the statement cannot be vali nder Republic Act No. 8293,
as amended, or any other law cone ing intellectual property; or
b) Where the statement is contradicte y another statement recorded
in the international register.
Rule 20
DISPOSAL AND/OR DES RUCTION OF
INFRINGING GOODS, RELATED BJECTS, OR DEVICES
In case the infringing goods are counte feit or pirated, the procedure for
their disposal and/or destruction shall be sum ary in nature with notice to the
defendant or the accused to his or her last kn wn address to afford him or her
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the opportunity to oppose the motion. For tl is purpose, the lack of authority
of the defendant or the accused to exercise a y of the rights of the right holder
shall be a sufficient ground for the disposal and/or destruction of infringing
goods.
Pirated copyright goods means any goods which ; are copies made
without the consent of the right-holder or per on duly authorized by the right-
holder, and which are made directly or indi ectly from an article where the
making of that copy would have constituted n infringement of a copyright or
a related right.
The motion for disposal and/or destr tion shall be granted where the
violation of the intellectual property right f the owner or right-holder is
established.
In case any genuine issue is raised, sue as but not limited to, where the
infringement may involve determination of c nfusing similarity, applicability
of fair use or other limitations and exce tions, substantial equivalence,
construction of claims, and/or good faith, th court shall continue to receive
evidence of the parties during trial in suppo of their respective claims and
defenses, and the disposal and/or destructio of the goods, related objects, or
devices shall be resolved after trial.
i. Recycling;
ii. Humanitarian donation; or
iii. Other methods that do not pos any risk to the environment or
public health and safety.
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Provided that the manner of dispos 1must effectively prevent the re-
entry of the infringing goods, rel ted objects, or devices into the
channels of commerce.
Upon issuance of the order, the ovant must comply with the
following:
Within ten (10) calendar days after th disposal and/or destruction, the
movant must file a report with the court stati g that he, she, or it has complied
with the above conditions and with the order fthe court granting the disposal
and/or destruction of the seized infringing g ods, related objects, or devices.
Rule 21
REPORTORIAL REQ
Within thirty (30) calendar days fr01 the issuance of the decision or
final order, the court shall furnish the IPO a c py of the decision or final order.
Rule 22
MONITORING, EVALUATI N AND TRAINING
For this purpose, all courts covered by hese Rules shall accomplish and
submit a periodic report of data in a form t be generated and distributed by
the OCA.
Rule 23
TRANSITORY AND REPEA
Rule 24
EFFECTIVI Y
These Rules shall take effect on No ember 16, 2020 following their
publication in two (2) newspapers of nation 1 circulation.