The Supreme Court released last October 2011 the Rules of Procedure for Intellectual Property Rights Cases. The new IP Rules are applicable to IP cases before the regular courts covering both civil and criminal actions.
The following are the notable features of the IP Rules:
Prior determination of issues. The trial court can make a prior determination of the issues involved in a civil case and issue a special order that instead of the new IP Rules, the regular rules of procedure under the Rules of Court will apply. Without such an initial finding, the Rules of Court will have suppletory application.
Orders are immediately executory. As a general rule, except in cases of Injunction, Receivership, Accounting, and Support, all orders and resolutions issued by the court under the Rules of Court can be stayed by the timely filing of a motion for reconsideration or appeal. The court has to resolve the motion for reconsideration or appeal of the losing party before the winning party can execute the order of the court. Under the new IP Rules, on the other hand, all orders are immediately executory, unless restrained by a superior court.
All pleadings filed have to be verified. Under the Rules of Court, generally only initiatory pleadings need to be verified by party before a notary public that all facts in the pleadings are true and correct of the party's personal knowledge or that the facts are based on authentic records. On the other hand, the new IP Rules requires that all pleadings filed by the parties must be verified.
Pleadings allowed. The new IP Rules limits the filing of pleadings in civil cases to the complaint, compulsory counterclaim, and cross-claims pleaded in the answer, and the answers thereto. The list is similar to the one contained under the Rules on Summary Procedure applicable to municipal and metropolitan trial courts.
Form of pleadings and affidavits to be filed. The new IP Rules also prescribes a detailed specification of the form and contents of the complaint and other pleadings to be filed. For a civil complaint, facts showing the capacity of a party to sue or be sued, or the authority of party to sue or be sued in a representative capacity, or the legal existence of an organized association of persons that is made a party, must be averred. In case of juridical persons, proof of capacity to sue must be attached to the complaint. The affidavits shall be in question-and-answer format and must state only facts of direct personal knowledge of the affiants. The affidavits must also show the competence of the affiants to testify to the matters stated therein.
New modes of effecting service upon a foreign private juridical entity. Courts under the new IP Rules may summons upon a foreign private juridical entity not registered in the Philippines, or one who has no Philippine agent, by personal service coursed through the appropriate court in the foreign country where the juridical entity is located, with the assistance of the Department of Foreign Affairs. Should personal service fail, service of the summons by publication once in a newspaper of general circulation in the country where the defendant may be found and by serving a copy of the summons and the court order by registered mail at the last known address of the defendant. Serving the summons by facsimile or any recognized means that can generate proof of service is also allowed as a secondary means of acquiring jurisdiction over the foreign entity. Under the Rules of Court, courts usually cannot acquire jurisdiction over a foreign private juridical entity residing abroad as either to effect such service would be too cumbersome to the claiming party or due to questions of jurisdiction.
No declaration of default. While the party who fails to answer may not be declared in default, the claimant is allowed under the IP Rules to move that judgment be rendered with respect to his claim as may be warranted by the complaint and the evidence on record.
Mandatory submission of draft decisions. The IP Rules adopts the procedure in administrative cases before the IPOPHL where the parties are required to submit their respective draft decisions. This insures the speedy disposition of IP cases as the court need only consider the draft decision submitted by the prevailing party in rendering judgment.
Affidavits executed during preliminary investigation stage form part of evidence during trial. Under the regular criminal rules of procedure, unless an affidavit executed during the preliminary investigation is identified by the witness in court during trial and formally offered in evidence, such affidavit cannot be admitted in evidence and considered by the court in resolving the case. The new IP Rules, on the other hand, dispensed with the need to formally offer said affidavits in evidence as these are deemed to automatically form part of the records of the case.
Speedy trial. In order to expedite the proceedings in criminal case, each party shall have a maximum period of sixty days to present its evidence-in-chief. This is a new provision and has no counterpart in the regular criminal rules of procedure.
Order of Destruction. In both civil and criminal cases, the court may, after due notice to the defendant and hearing, issue an order to destroy the seized infringing goods, objects and devices, including but not limited to, sales invoices, other documents evidencing sales, labels, signs, prints, packages, wrappers, receptacles, and advertisements and the like used in the infringing act.
The Supreme Court intends that, with the new IP Rules, IP cases will be resolved in a more expeditious manner.