PHILIPPINES Law and Practice Contributed by: Mark Leo Bejemino, Maria Patricia Cruz and Edward King Chua, Villaraza & Angangco
they may be considered persuasive, they do not hold binding precedent under Philippine law. 1.11 Clearing the Way There is no explicit legal obligation to “clear the way” ahead of a new product launch in the Philippines. However, businesses are generally advised to conduct thorough intellectual property due diligence to ensure that their products do not infringe on existing patents, trade marks or other IP rights. While the concept of “clearing the way” typically involves seeking a court declaration of non-infringement, such a procedure is not available in the Philippines, making this option unviable. Instead, companies can opt to conduct freedom-to-operate searches to identify potentially conflicting patents and develop strategies to avoid infringement risks. Failure to clear the way or address potential IP conflicts can lead to legal consequences, such as infringement lawsuits, injunctions and financial liabilities, including damages and attorney’s fees. In addition, the IPOPHL may intervene in cases of infringement or bad faith fil ‑ ings. Therefore, while not a formal requirement, clear ‑ ing the way through diligent IP searches is considered a prudent practice to mitigate the risk of disputes and the associated consequences. 1.12 Experts Philippine courts may rely on expert evidence to determine issues of infringement and/or validity, par ‑ ticularly in cases requiring specialised knowledge, such as patent disputes. In infringement actions where there is trial, a party’s expert witness is presented in court and is subject to cross-examination. On the other hand, in patent cancellation proceedings, expert evidence normally takes the form of an affidavit executed by an expert witness. Both parties are generally entitled to present their own respective expert witnesses, and multiple experts may be involved, depending on the complex ‑ ity of the issues at hand. The opinion of an expert witness – who must possess special knowledge, skill, experience or training – is admissible as evidence in such cases. The expert is required to maintain impar ‑ tiality, as they owe a duty to the court, and not to any party. While there are no strict limits on the length or
amount of expert evidence, the court may set reason ‑ able bounds for efficiency and fairness. In terms of procedure, each party is free to instruct and present their expert witnesses, but these experts must adhere to the rules governing expert testimony. The court does not typically appoint expert witnesses, but it may do so in specific cases where the need for impartial expertise arises. Similarly, while a technical or scientific adviser may be appointed in complex cases, this is not a routine practice. In preliminary injunction (PI) proceedings, expert evidence may also be presented, but the use of experts in such cases is generally more limited compared to the main action, as PI proceedings are typically focused on urgent, procedural matters. Therefore, expert testimony in PI cases may be less comprehensive than in the main trial, depending on the circumstances. 1.13 Use of Experiments Experiments may be used to prove/disprove infringe ‑ ment/validity. Such evidence must form part of the testimony of the person who conducted the experi ‑ ment or who has personal knowledge of such experi ‑ ment. 1.14 Discovery/Disclosure The forms of discovery available to the parties include depositions, written interrogatories, admission by adverse part, the production or inspection of docu ‑ ments or things, and physical and mental examina ‑ tion of persons. As long as relevant and necessary, the parties to a life sciences/pharma case may secure admissions or documents from the adverse party. 1.15 Defences and Exceptions to Patent Infringement Under the IP Code, the following defences are avail ‑ able in infringement actions, which apply equally to cases involving life sciences: • the patent – or any claim therein – that serves as basis for the infringement action is invalid; • international exhaustion of patent rights for drugs and medicines; • the infringing act is done privately and on a non- commercial scale or for a non-commercial pur ‑ pose, provided that the use does not significantly
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