Legal f inesse
OCTOBER — DECEMBER 2011
QUARTERLY NEWSLETTER OF FORTUN NARVASA & SALAZA R
The Supreme Court released last October 2011 the
Rules of Procedure for Intellectual Property Rights Cases. The new 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 a 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 cases before municipal and metropolitan trial
courts.
• www.fnslaw.com.ph
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 the case of juridical persons, proof of capacity to sue must be attached to
the complaint. The affidavits shall be in question-andanswer 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 issue 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.
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.
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Legal f inesse
OCTOBER — DECEMBER 2011
QUARTERLY NEWSLETTER OF FORTUN NARVASA & SALAZA R
• www.fnslaw.com.ph
{continued from previous
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 ensures 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, dispenses
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.
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. LF