PHILIPPINES Law and Practice Contributed by: Mark Leo Bejemino, Maria Patricia Cruz and Edward King Chua, Villaraza & Angangco
ed, and it covers damages only for acts of infringe ‑ ment committed within four years prior to the filing of the action. In asserting different types of patents under the IP Code, product patents are generally easier to enforce because the infringing product can be examined directly, whereas process patents present greater evidentiary challenges, as the protected process may not be visible or readily accessible. Establishing infringement of process patents often requires techni ‑ cal expertise and more extensive discovery. The IP Code provides for a reversal of the burden of proof in cases involving process patents, particularly when the patented process produces a new prod ‑ uct or there is a substantial likelihood that the same product was made using the patented process, and the patentee cannot determine the exact process employed by the alleged infringer. In such cases, the burden shifts to the alleged infringer to demonstrate that the process used is different from the patented process. This rule addresses the inherent difficulty of proving infringement of processes that are not readily observable. 1.7 Pre-Action Discovery/Disclosure Pre-action discovery or disclosure is generally not available in the Philippines; discovery mechanisms under the rules may only be availed of after the com ‑ mencement of an action. Nonetheless, prior to filing an action, a person who desires to perpetuate his or her own testimony or that of another person regarding any matter may file a verified petition in the court of the place of the resi ‑ dence of any expected adverse party. The petition shall show: • that the petitioner expects to be a party to an action in a court of the Philippines but is presently unable to bring it or cause it to be brought; • the subject matter of the expected action and his or her interest therein; • the facts which he or she desires to establish by the proposed testimony and his or her reasons for desiring to perpetuate it;
• the names or a description of the persons he or she expects will be adverse parties and their addresses so far as known; and • the names and addresses of the persons to be examined and the substance of the testimony which he or she expects to elicit from each. The petition shall ask for an order authorising the peti ‑ tioner to take the depositions of the persons to be examined named in the petition for the purpose of perpetuating their testimony. Whether the deposition is taken pre-action or during the pendency of an action, the deponent may only be examined regarding any matter, not privileged, that is relevant to the subject of the pending action, whether relating to the claim or defence of any other party, including the existence, description, nature, custody, condition and location of any books, documents or other tangible things, and the identity and location of persons having knowledge of relevant facts, subject to the following guidelines during presentation of the deposition as evidence during the hearing. • Any deposition may be used by any party for the purpose of contradicting or impeaching the testi ‑ mony of the deponent as a witness. • The deposition of a party or of anyone who at the time of taking the deposition was an officer, direc ‑ tor or managing agent of a public or private cor ‑ poration, partnership or association that is a party may be used by an adverse party for any purpose. • The deposition of a witness, whether or not a party, may be used by any party for any purpose if the court finds that: (a) the witness is dead; (b) the witness resides more than 100 km from the place of trial or hearing, or is out of the Philip ‑ pines, unless it appears that his or her absence was procured by the party offering the deposi ‑ tion; (c) the witness is unable to attend or testify be‑ cause of age, sickness, infirmity or imprison ‑ ment; (d) the party offering the deposition has been un ‑ able to procure the attendance of the witness by subpoena; or (e) upon application and notice, such exceptional
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