PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
2.4 Specialised Bodies/Organisations for the Resolution of Disputes As discussed in 2.3 Courts With Jurisdiction , certain RTCs are designated by the Supreme Court to serve as special commercial courts for the resolution of IP disputes. The BLA also han- dles administrative complaints involving IP rights disputes. 2.5 Prerequisites to Filing a Lawsuit Generally, there are no prerequisites specifically required for filing an IP lawsuit. However, to be able to file a civil action for dam- ages, it must be shown that the infringer had known or had reasonable grounds to know of the patent. This is presumed if the words “Philippine Patent” with the number of the patent are placed on the patented product, or on the container in which it is supplied to the public. For criminal actions, there must have already been a final judgment of infringement in a pre- vious civil action against the same accused. Moreover, the criminal action must be brought within three years from its commission. 2.6 Legal Representation Parties in IP matters, whether filed before the court or before the BLA, need to be represented by lawyers. 2.7 Interim Injunctions Preliminary injunction and temporary restraining order (TRO) may be availed of by the patentee. A preliminary injunction may be granted by the court in civil cases and by the BLA in administra- tive cases when it is established that: • the applicant is entitled to the relief demand- ed;
• the commission, or non-performance of the act or acts complained of would probably work injustice to the applicant; or • that a party or any person is doing, threaten- ing, or attempting to do, or is procuring or suffering to be done some act or acts prob- ably in violation of the rights of the applicant respecting the subject of the action, and tending to render the judgment ineffectual. Jurisprudence also provides four requisites for the issuance of preliminary injunction, namely: • clear and unmistakable right to be protected; • there is a material and substantial invasion of such right; • there exists an urgent need for the writ to pre- vent irreparable injury to the applicant; and • no other ordinary, speedy, and adequate rem- edy exists to prevent the infliction of irrepara- ble injury. The patentee to an infringement case may also avail themselves of a TRO. For civil cases, if it appears from the facts that great or irreparable injury would result to the applicant before the matter can be heard on notice, the court may immediately issue a TRO effective only for a period of 20 days from service on the party or person sought to be enjoined. Within this period, the court must order said party to show cause why the injunction should not be granted, determine whether the prelimi- nary injunction shall be granted, and accordingly issue the corresponding order. If the matter is of extreme urgency and the appli- cant will suffer grave injustice and irreparable injury, the judge may issue ex parte a TRO effec- tive for 72 hours from its issuance. Within this period, a summary hearing shall be conducted
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