PHILIPPINES Law and Practice Contributed by: Mark Leo Bejemino, Maria Patricia Cruz and Edward King Chua, Villaraza & Angangco
1.4 Structure of Main Proceedings on Infringement/Validity An infringement action and a patent validity (nullity) proceeding are separate and distinct actions that may be filed and conducted independently. However, because a determination of validity directly affects the enforceability of a patent, a pending nullity proceeding may constitute a prejudicial question that must first be resolved before the infringement case can proceed. Accordingly, the court may suspend the infringement action pending the outcome of the validity challenge. Nonetheless, in an infringement action, if the court finds the patent or any of its claims to be invalid, it may order the cancellation of the affected claims or of the entire patent. Such cancellation is thereafter recorded in the IPOPHL register and published in due course, producing the same effect as a formal nullity proceeding before the IPOPHL. While third-party observations are allowed, there are no patent opposition proceedings in the Philippines. A patent nullity proceeding may only be initiated once the patent has been granted. 1.5 Timing for Main Proceedings on Infringement/Validity While there is no prescriptive period for instituting an infringement action, damages cannot be recovered for acts of infringement that occurred more than four years before the action is instituted. In contrast, pat ‑ ent invalidity (nullity) actions may be filed at any time during the term of the patent. A party is notified of an infringement or nullity action through the service of summons or notice to answer, which may be effected personally, through substituted service, by registered mail or courier, or by electronic means when permitted by the IPOPHL or the courts. For parties located abroad, service may be made via registered mail, courier or electronic means, or through diplomatic or consular channels, which gen ‑ erally extends the service period. Summons or notices to answer are typically issued within a few days to a couple of weeks from the filing of the action. All procedural deadlines – such as for filing answers, evidence and submissions – are counted from the
date of valid service. Delays or difficulties in serving a foreign defendant correspondingly delay the com ‑ mencement of these periods. Service must be com ‑ pleted before the case can proceed; no hearings or evidence deadlines run until service is perfected. In an infringement action, once the complaint is filed, a summons is issued requiring the respondent to file a verified answer within 30 days. After the answer is filed, the case undergoes a pretrial conference and mediation to explore the possibility of amicable set ‑ tlement. If no settlement is reached, the case pro ‑ ceeds to trial, where each party may present wit ‑ nesses and evidence. For infringement actions filed with the IPOPHL, hearings typically commence within a few months of filing, and decisions are generally issued within two to three years, depending on case complexity and docket load. Court-filed infringement actions usually take longer, due to heavier caseloads. While hearings in court cases also begin within a few months, decisions are generally rendered after two to five years. These timelines may vary depending on pleadings, motions, discovery and the availability of parties and counsel. In patent nullity proceedings, the respondent must submit a verified answer within 30 days from receipt of the notice. After submission, the parties are referred to mandatory mediation to explore settlement. If set ‑ tlement fails, a preliminary conference is conducted for the submission, presentation, inspection and com ‑ parison of evidence. Thereafter, parties submit their respective position papers within an agreed period. Upon submission of the position papers, or upon the lapse of the period, the case is deemed submitted for decision. Unlike in infringement actions, there are no hear ‑ ings in patent nullity proceedings, and the decision is based merely on the pleadings submitted by the parties. Therefore, patent nullity cases are decided much faster, with decisions usually issued after one to two years. 1.6 Requirements to Bring Infringement Action An infringement action may only be filed after the pat ‑ ent serving as the basis for the action has been grant ‑
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