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Print articleThe International Comparative Legal Guide to: Patents 2018
November, 2017 - Enrique Manuel, Vida Panganiban-Alindogan
1. PATENT ENFORCEMENT
1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant’s choice?
Patents are enforced against an infringer either through a civil action before the Regional Trial Court (“RTC”) or an administrative action before the Bureau of Legal Affairs (“BLA”) of the Intellectual Property Office of the Philippines (“IPOPHL”). The factors that usually influence a claimant’s choice are cost and time considerations.
1.2 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
In the RTC, proceedings are commenced by the filing of the complaint, payment of the necessary filing fees and the service of summons on the defendant. Upon receipt of the summons, the respondent may file either a Motion to Dismiss, or an Answer, setting out the defendant’s affirmative and/or negative defences including any counterclaims. The case is then set for a pre-trial conference, where the parties, among others, discuss the possibility of settlement or the referral of the case to alternative models of dispute resolution, proposed stipulation of facts, issues to be resolved, and documents and witnesses to be presented at trial. It may take anywhere from six to 12 months from the filing of the complaint for the case to reach proper trial in court. The pre-trial procedural stages in the BLA are substantially similar to those before the RTC. However, since the proceedings in the BLA are administrative in nature and not strictly governed by technical rules of procedure and evidence, it usually takes five to seven months from the filing of the complaint for the case to reach trial in the BLA.
1.3 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
Upon motion of any party showing good cause therefor, the court in which an action is pending may: (a) order any party to produce and permit the inspection and copying or photographing, by or on behalf of the moving party, of any designated documents, papers, books, accounts, letters, photographs, objects or tangible things, not privileged, which constitute or contain evidence material to any matter involved in the action and which are in his possession, custody or control; or (b) order any party to permit entry upon designated land or other property in his possession or control for the purpose of inspecting, measuring, surveying, or photographing the property or any designated relevant object or operation thereon. The order shall specify the time, place and manner of making the inspection and taking copies and photographs, and may prescribe such terms and conditions as are just.
Footnotes: Enrique T. Manuel heads the firm's Intellectual Property Department. He counsels clients on all aspects of IP, including , specialized and strategic IP portfolio management for patents, trademarks, and copyrights, IP protection and enforcement, infringement and unfair competition, branding and trademark issues, as well as related areas involving licensing transactions, technology transfer, entertainment, publishing, music, computer, Internet, domain name and privacy issues. Vida M. Panganiban-Alindogan’s practice area includes, among others, the management, prosecution and enforcement of intellectual property rights. She is a member of the Asian Patent Attorneys Association, Intellectual Property Association of the Philippines, the Integrated Bar of the Philippines and the International Trademark Association. |
