Integrated Bar of the Philippines Makati Chapter


IP Law Updates - Developments That Took Place in the Year 2011

Atty. Maria Trinidad P. Villareal

The year 2011 may be considered as a “banner year” for developments in the practice of intellectual property laws. Led by a pro-active Director General, in the person of Atty. Ricardo R. Blancaflor, the Intellectual Property Office of t h e Philippines (t h e “IPOPHL”) was at the fore-front of activities meant to strengthen IP protection in the country. 

The IPOPHL at the start of 2011, rolled out to its employees and to the public, its “Roadmap 2011”- programs and projects geared towards supporting the IPOPHL's eight strategic goals, mission and its vision. Some of the activities undertaken and/or spearheaded by the IPOPHL in the year 2011 were:      
1. The holding of the First Philippine Anti -Counterfeiting and Piracy Summit in celebration of the Intellectual Property Week (the “IP Summit”) from October 24-28. The Summit was conducted in partnership with different government agencies and private IP organizations.
The World Intellectual Property Organization's (WIPO) Regional Workshop on the Dangers of Counterfeit Goods to Public Health; the International Trademark Association 's ( INTA) Anti -Counterfeiting Committee Roundtable on Combating Counterfeiting on the Internet and Landlord Liability Measures; and the IPR Business Partnership Workshop on Effective Control Measures.
2. The entry into of various Memoranda of Agreement with the Philippine Ports Authority, the Manila International Airport Authority, Securities and Exchange Commission, Philippine Economic and the Optical Media Board, among others, to achieve better coordination among various government agencies for the effective enforcement of IP laws.
3. The institutionalization of mediation which is now mandatory in most cases filed before the IPOPHL's Bureau of Legal Affairs (BLA), as an alternative mode of dispute resolution, via the promulgation of the new Mediation Rules, as well as the launching of the IPOPHL's Arbitration Services in April 2011 in partnership with the Philippine Dispute Resolution Center, resulting in the IPOPHL being the only IP office in the Asia Pacific region to have a multi-door justice system comprising of a quasi-judicial function for adjudicating IP conflicts and two alternatives.
4. The laying down of six paths for an “IP Friendly Philippines”, namely: (a) taking of a “holistic approach” to effective IP rights (IPR) enforcement; (b) heightening of public education and awareness to build an IP friendly constituency; (c) institution and capacity building of relevant government and private institutions toward an IPR regime; (d) promising to provide timely and quality-IPR adjudication and other forms of dispute resolution; (e) continuing policy, advocacy and legislative reforms; and (f) sustained international relations.
5. Amendments made to the IPOPHL's internal rules of procedures.
In connection with the foregoing, the IPOPHL, through the BLA, promulgated its Office Order No. 99, Series of 2011 (the Amendments to the Inter Partes Rules). A summary of the amendments to the Rules which took effect on July 17, 2011, is provided hereunder, to wit:
a. The ultimate period within which to file an Opposition (subject to the timely filing of Motions for Extensions of Time to do so), shall now be 90 days from date of posting on the IPO's E-Gazette of an application that will be the subject of an Opposition. The old Rules allowed for an ultimate period of 120 days from the IPOPHL's E-Gazette posting date (Section 2, amended Rule 7, New Rules) for submission of a Verified Notice of Opposition and its supporting documents. A like period of 90 days from receipt of verified Oppositions/Cancellation petitions is given, within which a respondent should file an Answer to an Opposition or a Cancellation Petition [Section 9 (a) and (b), amended Rule 2];
b. An opposer and a respondent to an Opposition/Cancellation action are still required to submit originals or certified copies of supporting documents to an Opposition/Cancellation Petition/Answers thereto. However, for the purpose of meeting an ultimate deadline for submission of an Opposition or an Answer, in lieu of originals or certified documents, photocopies thereof, and photographs of object evidence, may be submitted in the meantime [Sections 7 (c) and 9 (c), amended Rule 2]. A party that was unable to submit original documents or certified copies of documents on the ultimate deadline for submission thereof will have until the date of a preliminary conference to do so. [Section 13 (c), amended Rule 2].   If the case is referred to mediation, a preliminary conference will only be conducted after the mediation has failed, but the final date for submission of original or certified copy documents will still be on the date that was originally set for a case's preliminary conference;
c. An opposer, petitioner in a cancellation case, or a respondent in Opposition and Cancellation cases, may be given a further period of 5 days from receipt of a BLA Order, to attach the originals or certified copy documents, which 5-day period may be further extended by another 5 days upon motion filed, based on meritorious grounds which must be explicitly stated in the motion, and upon payment of the applicable fees. [Section 8 (c); Section 9 (c), amended Rule 2];
d. The amended Rules now explicitly state that a Verification and Certification on Non-Forum Shopping page of either an Opposition, Cancellation Petition or Answer must be accompanied by documents showing the authority of the person signing the Verification/Certification page to have done so, and if these documents are executed and notarized (outside of the Philippines), these must be authenticated by the proper Philippine diplomatic or consular office. The new Rules further clarify that the execution and signing of these documents must be done before the filing of an Opposition, Cancellation, Petition or Answer. [Section 7 (b); Section 9 (a), amended Rule 2];
e. Section 14 of the amended Rule 2 now provides that a party, through the filing of an appropriate motion and payment of the applicable fees, may submit as documentary evidence, those which already form part of the records of other cases already filed with the BLA, regular courts or other tribunals. For these to be acceptable to the BLA, said documents must be secured from and certified by the appropriate personnel or official of the BLA, a court or tribunal in possession of the original documents filed;
f. The Rules no longer permit the filing of a Reply, Rejoinder and a Sur-Rejoinder (Section 11, amended Rule 2);
g. The holding of mediation proceedings in all inter partes cases is now mandatory, but the parties via a proper motion withdrawing the case, may manifest their preference to submit their dispute to arbitration (Section 12, amended Rule 2);
h. If a Motion for Extension of Time to Submit a Verified Notice of Opposition is filed, apart from paying the IPO fees therefor, the movant is also already required to pay the IPO fees for the filing of an Opposition and other applicable fees:
(i) The filing of an unverified notice of opposition is no longer permitted; if such is filed, the same shall be treated and acted upon as a motion for extension of the period to file a notice of opposition;
(ii) A party who filed an unverified notice of opposition or a motion for extension of time to file verified notice of opposition prior to July 17, 2011 was allowed to utilize the old 120-day maximum period allowed under the old IPC Rules, through the filing of appropriate motion(s) for extensions; and
i. The filing by a party of a notice of opposition, cancellation petition or an answer requires submission of proof of service of such pleading to the other party. If no proof of service is submitted, the concerned party shall be required to submit such proof.
The IPOPHL, in February 2011, also issued an Office Order amending certain provisions of its IRR on administrative complaints for IPR Violations, or what is commonly referred to as the “IPV Rules”. Under this Order, the BLA Director may issue ex-parte, a 72-hour temporary restraining order (TRO) that may be granted on grounds of extreme urgency and that the applicant therefore will suffer grave injustice and irreparable injury. If the evidence warrants, the TRO may be extended up to 20 days. During this period, the application for the issuance of a writ of preliminary injunction may be heard, with said writ, if granted, being in place for the entire period of the proceedings, or until a case is decided. The amendments now explicitly allow the introduction of forensic evidence, which the IPOPHL envisions to modernize the adjudication process.
6. Efforts to Improve Existing Philippine IPR legislation/ Practice
The IPOPHL was also actively involved in lobbying for the approval on 3rd reading of House Bill No. 3481, amending the IP Code's provisions on copyright. The Bill which is now referred to as the Copyright Bill, if enacted into law, will create a Bureau of Copyright within the IPOPHL, which Bureau shall be responsible for, among others, regulating collective management entities and agents in behalf of artists; exempt non-profit reproduction of copyrighted works for the use of visually-impaired persons; treat as an aggravating circumstance to the offense of copyright infringement, acts considered as constituting circumvention of technological measures.
The Bill is currently with the Senate (SBN 2842) and is awaiting passage into law. Finally, the Supreme Court En Banc promulgated A.M. No. 10-3-10 SC or the Rules of Procedure for IPR Cases, that took effect on November 8, 2011. The Rules will govern both civil and criminal actions for IPR violations cases. The important features of the Rules are:
a. The designation of the Special Commercial Regional Trial Courts of Manila, Quezon City, Makati City and Pasig City to have the authority to hear applications for and issue search warrants in criminal complaints that may be implemented anywhere in the Philippines. Previously only the Manila and Quezon City courts had such authority with search warrants generally being issued on a per jurisdiction basis;
b. An explicit provision that allows IPR court judges to order or grant Motions for Destruction of Seized Infringing/Counterfeit Goods/Evidence for the Commission of Infringing Acts, even before trial on the merits of IPR violation cases has terminated, after a separate and summary hearing on said Motions are conducted if an Order for Destruction of Seized Goods is granted after the applicant therefor posts a bond, the courts will allow only samples of the infringing items retained to be presented as evidence in the main cases for infringement or unfair competition. The early destruction of the infringing items will address the problems of the huge costs incurred by the IP owners in the storage/warehousing of the items while protracted litigation of IPR cases is taking place, as well as preventing the possibility that said items may find their way back into the channels of trade;
c. The proceedings in IPR violations cases are generally summary in nature, in that the provisions of the Special Rules
(a) require that the Affidavits of witnesses be in “Question and Answer” format already   attached to the Complaint/Answer;
(b) provide for specific periods for the parties to commence and terminate presentation of evidence in criminal and civil cases, as well as the periods within which Decisions on the Cases should be rendered;
(c) except in instances when the courts will require clarificatory hearings, judgment on the cases will be rendered without trial being held, on the bases of position papers, affidavits, documentary and real evidence submitted by the parties;
(d) that during the preliminary investigation stage for criminal complaints, unless there are pending motions to quash a search warrant or to suppress evidence, the investigating prosecutor may already dismiss a complaint, if on the bases of the complaint and witnesses’ affidavits/supporting submitted, it is shown that the complaint is patently without basis or merit; and
(e) a court that issued a search warrant may lift the same and order the return of seized goods, upon motion of the party whose goods had been seized, where no criminal complaint is filed within 31 calendar days from date of issuance of the order .
This New Year, we will hopefully see more developments in the field of IPR protection.