The Intellectual Property Office (IP Office) exercises original jurisdiction in administrative cases involving violation of intellectual property rights where damage claimed is not less than two hundred thousand Pesos (Php200,000.00). Its decisions are appealable to the Court of Appeals and the Supreme Court. The Department of Trade and Industry (DTI) has jurisdiction over complaints regarding violations of intellectual property rights irrespective of the total amount of damages claimed, or if no damages are claimed. Decisions of the Secretary of Trade and Industry are appealable to the Office of the President. A complainant before the IP Office must state that he has no other similar pending administrative action in any other tribunal, agency or quasi-judicial body.
The IP Office exercises original jurisdiction to resolve disputes regarding the terms of a license of an author’s right to public performance. The decision of the IP Office is appealable to the Secretary of Trade and Industry.
The Videogram Regulatory Board (VRB) has jurisdiction over violations of law involving videograms.
9.2 Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the court by the right holder?
Natural and juridical persons who are owners or holders of intellectual property rights, including their heirs and successors-in-interests have standing to assert said rights. They may be represented either by themselves or by counsel authorised to practice law in the Philippines.
The personal appearance of the parties are required only during the pre-trial conference, but their presence may be dispensed with upon showing of a valid cause or if their counsel or representative is fully authorized through a power of attorney or corporate authorization.
9.3 What authority do the administrative authorities have to order, at the request of an opposing party, a party to a proceeding to produce evidence which lies within its control?
Administrative authorities may issue subpoena ad testificandum to compel attendance of parties and witnesses. Administrative officers of the IP Office and DTI have the authority to issue subpoena duces tecum for the production of any books, papers, documents, correspondence and other records which are material to the case. By leave of the hearing officer, a party may take the deposition of any person under written interrogatories.
9.4 What means exist to identify and protect confidential informaiton brought forward as evidence?
The IP Code guarantees the confidentiality of records. The Director of the Bureau of Legal Affairs and other employees are strictly and absolutely forbidden to discuss the case or any phase thereof with either counsel in the absence of the other or with any person not having any interest or legal standing before the Bureau. However, this rule must be understood in the light of the constitutional provision recognising citizens’ right to information. Thus, the public has the right to access official records, documents and papers pertaining to official acts, transactions or decisions.
9.5 Describe the remedies that may be ordered by the administrative authorities and criteria, legislative or jurisprudential, for their use.
Administrative authorities may order the following remedies in cases involving violation of intellectual property rights:
Attachment
The IP Office may grant preliminary attachment if there is sufficient cause for the adverse party’s property to be attached as a security for the satisfaction of the judgment.
Injunction
The IPO may grant a preliminary injunction to restrain an action or require the performance of an action if there is an attempted injustice or violation of the rights of the applicant. A final injunction may be granted to have the acts complained of permanently enjoined.
Preliminary order
The Adjudication Officer of the DTI may issue a preliminary order, to require a person to refrain from, or perform, a particular act.
Preventive measures
In order to prevent the disposition or tampering of evidence, the Secretary of DTI may order the seizure of goods or paraphernalia and the padlocking of the building or warehouse where infringed goods are stored. He may also order the prevention of the departure from the country of the respondent and the vessel or aircraft used in the commission of the offence.
Other remedies
The Videogram Regulatory Board may impose a fine of not less than six thousand Pesos (Php 6,000.00) but not more than one hundred thousand Pesos (Php 100,000.00) and a non-monetary penalty consisting of closure, revocation of license or permit and confiscation of videograms involved in the violation.
The Director of the Bureau of Legal Affairs of the IP Office and the Secretary of the DTI may impose any of the following administrative penalties:
- cease and desist order;
- acceptance of voluntary compliance or discontinuance;
- condemnation or seizure of products subject of the offence;
- forfeiture of paraphernalia, real or personal properties;
- administrative fines;
- cancellation of permits licenses or registration granted;
- withholding of any permit, license or registration being secured;
- damages;
- censure;
- other analogous penalties and sanctions.
The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings.
9.6 In what circumstances, if any, do administrative authorities have authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution?
Hearing officers of administrative agencies may in the course of the proceedings propound clarificatory questions to witnesses during the perpetuation of their testimonies. As such, they are not prohibited to inquire into the identity of persons involved in the production and distribution of infringing goods.
9.7 Describe provisions relating to the indemnification of defendants wrongfully enjoined. To what extent are public authorities and/or officials liable in such situation and what "remedial measures" are applicable to them?
Administrative rules of the IP Office and DTI require an applicant for an injunction to file a bond to answer for damages that a person enjoined may sustain by reason of the injunction. Public officers are not liable for acts done in good faith in the performance of their duties. They shall be criminally liable under the anti-graft laws for causing undue injury to parties through manifest partiality, bad faith and gross inexcusable negligence. If the hearing officer is an attorney, disbarment or suspension proceedings may be instituted against him.
9.8 Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration proceedings and their cost.
Length
The actual length of the proceedings depends on the complexities of the issues raised and the course of action that the litigants are inclined to pursue.
Intellectual Property Office
- Inter partes proceedings
After the summon is sent, the respondent is required to answer the petition within fifteen (15) days. Upon joinder of the issues, a pre-trial conference shall be set within two (2) months from receipt of the answer or other pleading. During the hearing of the case, the petitioner and respondent shall submit sworn statements of the witnesses and other documentary evidence. Thereafter, they may present rebuttal and sur-rebuttal evidence. The parties shall be required to submit their memoranda within one (1) month from receipt of the order of admissibility of exhibits. Within one (1) month from the date the case is submitted for decision, the hearing officer shall submit his report, findings and draft decision to the Director for approval.
- Administrative complaints
The respondent is required to answer the complaint within ten (10) days from receipt of the summons. Upon joinder of the issues, the notice of the pre-trial shall be delivered within two (2) days from receipt of the answer or other pleading. During the trial of the case, the complainant and respondent are each given thirty (30) days to present evidence, and another thirty (30) days for rebuttal and sur-rebuttal evidence. The hearing and reception of evidence, in the case of provisional remedies, shall be terminated in thirty (30) days. All cases or any incident thereof shall be decided or resolved within thirty (30) days from submission for decision or resolution by the hearing officer.
Department of Trade and Industry
The Secretary of the Department may provide for compulsory arbitration, conciliation and mediation systems. If there is a determination of a prima facie case, the Head of Office may direct that the complaint passes through mediation or elevate the complaint to the chief hearing officer. In mediation proceedings, the mediation officer has fifteen (15) days within which to mediate the case. If the case is set for formal hearing, the hearing officer within five (5) days from receipt of the Answer, shall send a Notice of Pre-Formal Hearing. During formal hearing, the complainant and respondent shall present statements of witnesses and other documentary evidence. Thereafter, they may present rebuttal and sur-rebuttal evidence. At the parties’ request and at the hearing officer’s discretion, the parties may file their Memoranda within ten (10) days. The case is decided thirty (30) days from the time the formal hearing is terminated.
Cost
The cost of proceedings in the IP Office is based on a fee structure issued by the IP Office on 8 June 2000. The filing fee for a complaint is eight thousand Pesos (Php 8,000.00) with an additional fee of 1/10 of 1% of the damages claimed in excess of five hundred thousand Pesos (Php 500,000.00).
Other costs of litigation including lawyer’s fees may vary depending on the agreement between a party and counsel.
Data
There are no available statistical data on the actual length of the proceedings.
The Intellectual Property Office (IP Office) exercises original jurisdiction in administrative cases involving violation of intellectual property rights where damage claimed is not less than two hundred thousand Pesos (Php200,000.00). Its decisions are appealable to the Court of Appeals and the Supreme Court. The Department of Trade and Industry (DTI) has jurisdiction over complaints regarding violations of intellectual property rights irrespective of the total amount of damages claimed, or if no damages are claimed. Decisions of the Secretary of Trade and Industry are appealable to the Office of the President. A complainant before the IP Office must state that he has no other similar pending administrative action in any other tribunal, agency or quasi-judicial body.
The IP Office exercises original jurisdiction to resolve disputes regarding the terms of a license of an author’s right to public performance. The decision of the IP Office is appealable to the Secretary of Trade and Industry.
The Videogram Regulatory Board (VRB) has jurisdiction over violations of law involving videograms.
9.2 Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the court by the right holder?
Natural and juridical persons who are owners or holders of intellectual property rights, including their heirs and successors-in-interests have standing to assert said rights. They may be represented either by themselves or by counsel authorised to practice law in the Philippines.
The personal appearance of the parties are required only during the pre-trial conference, but their presence may be dispensed with upon showing of a valid cause or if their counsel or representative is fully authorized through a power of attorney or corporate authorization.
9.3 What authority do the administrative authorities have to order, at the request of an opposing party, a party to a proceeding to produce evidence which lies within its control?
Administrative authorities may issue subpoena ad testificandum to compel attendance of parties and witnesses. Administrative officers of the IP Office and DTI have the authority to issue subpoena duces tecum for the production of any books, papers, documents, correspondence and other records which are material to the case. By leave of the hearing officer, a party may take the deposition of any person under written interrogatories.
9.4 What means exist to identify and protect confidential informaiton brought forward as evidence?
The IP Code guarantees the confidentiality of records. The Director of the Bureau of Legal Affairs and other employees are strictly and absolutely forbidden to discuss the case or any phase thereof with either counsel in the absence of the other or with any person not having any interest or legal standing before the Bureau. However, this rule must be understood in the light of the constitutional provision recognising citizens’ right to information. Thus, the public has the right to access official records, documents and papers pertaining to official acts, transactions or decisions.
9.5 Describe the remedies that may be ordered by the administrative authorities and criteria, legislative or jurisprudential, for their use.
Administrative authorities may order the following remedies in cases involving violation of intellectual property rights:
Attachment
The IP Office may grant preliminary attachment if there is sufficient cause for the adverse party’s property to be attached as a security for the satisfaction of the judgment.
Injunction
The IPO may grant a preliminary injunction to restrain an action or require the performance of an action if there is an attempted injustice or violation of the rights of the applicant. A final injunction may be granted to have the acts complained of permanently enjoined.
Preliminary order
The Adjudication Officer of the DTI may issue a preliminary order, to require a person to refrain from, or perform, a particular act.
Preventive measures
In order to prevent the disposition or tampering of evidence, the Secretary of DTI may order the seizure of goods or paraphernalia and the padlocking of the building or warehouse where infringed goods are stored. He may also order the prevention of the departure from the country of the respondent and the vessel or aircraft used in the commission of the offence.
Other remedies
The Videogram Regulatory Board may impose a fine of not less than six thousand Pesos (Php 6,000.00) but not more than one hundred thousand Pesos (Php 100,000.00) and a non-monetary penalty consisting of closure, revocation of license or permit and confiscation of videograms involved in the violation.
The Director of the Bureau of Legal Affairs of the IP Office and the Secretary of the DTI may impose any of the following administrative penalties:
- cease and desist order;
- acceptance of voluntary compliance or discontinuance;
- condemnation or seizure of products subject of the offence;
- forfeiture of paraphernalia, real or personal properties;
- administrative fines;
- cancellation of permits licenses or registration granted;
- withholding of any permit, license or registration being secured;
- damages;
- censure;
- other analogous penalties and sanctions.
The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings.
9.6 In what circumstances, if any, do administrative authorities have authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution?
Hearing officers of administrative agencies may in the course of the proceedings propound clarificatory questions to witnesses during the perpetuation of their testimonies. As such, they are not prohibited to inquire into the identity of persons involved in the production and distribution of infringing goods.
9.7 Describe provisions relating to the indemnification of defendants wrongfully enjoined. To what extent are public authorities and/or officials liable in such situation and what "remedial measures" are applicable to them?
Administrative rules of the IP Office and DTI require an applicant for an injunction to file a bond to answer for damages that a person enjoined may sustain by reason of the injunction. Public officers are not liable for acts done in good faith in the performance of their duties. They shall be criminally liable under the anti-graft laws for causing undue injury to parties through manifest partiality, bad faith and gross inexcusable negligence. If the hearing officer is an attorney, disbarment or suspension proceedings may be instituted against him.
9.8 Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration proceedings and their cost.
Length
The actual length of the proceedings depends on the complexities of the issues raised and the course of action that the litigants are inclined to pursue.
Intellectual Property Office
- Inter partes proceedings
After the summon is sent, the respondent is required to answer the petition within fifteen (15) days. Upon joinder of the issues, a pre-trial conference shall be set within two (2) months from receipt of the answer or other pleading. During the hearing of the case, the petitioner and respondent shall submit sworn statements of the witnesses and other documentary evidence. Thereafter, they may present rebuttal and sur-rebuttal evidence. The parties shall be required to submit their memoranda within one (1) month from receipt of the order of admissibility of exhibits. Within one (1) month from the date the case is submitted for decision, the hearing officer shall submit his report, findings and draft decision to the Director for approval.
- Administrative complaints
The respondent is required to answer the complaint within ten (10) days from receipt of the summons. Upon joinder of the issues, the notice of the pre-trial shall be delivered within two (2) days from receipt of the answer or other pleading. During the trial of the case, the complainant and respondent are each given thirty (30) days to present evidence, and another thirty (30) days for rebuttal and sur-rebuttal evidence. The hearing and reception of evidence, in the case of provisional remedies, shall be terminated in thirty (30) days. All cases or any incident thereof shall be decided or resolved within thirty (30) days from submission for decision or resolution by the hearing officer.
Department of Trade and Industry
The Secretary of the Department may provide for compulsory arbitration, conciliation and mediation systems. If there is a determination of a prima facie case, the Head of Office may direct that the complaint passes through mediation or elevate the complaint to the chief hearing officer. In mediation proceedings, the mediation officer has fifteen (15) days within which to mediate the case. If the case is set for formal hearing, the hearing officer within five (5) days from receipt of the Answer, shall send a Notice of Pre-Formal Hearing. During formal hearing, the complainant and respondent shall present statements of witnesses and other documentary evidence. Thereafter, they may present rebuttal and sur-rebuttal evidence. At the parties’ request and at the hearing officer’s discretion, the parties may file their Memoranda within ten (10) days. The case is decided thirty (30) days from the time the formal hearing is terminated.
Cost
The cost of proceedings in the IP Office is based on a fee structure issued by the IP Office on 8 June 2000. The filing fee for a complaint is eight thousand Pesos (Php 8,000.00) with an additional fee of 1/10 of 1% of the damages claimed in excess of five hundred thousand Pesos (Php 500,000.00).
Other costs of litigation including lawyer’s fees may vary depending on the agreement between a party and counsel.
Data
There are no available statistical data on the actual length of the proceedings.