PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
4.3 Amendments in Revocation/ Cancellation Proceedings
courts. The Rules and Regulations on Adminis- trative Complaints for Violation of Laws Involv- ing Intellectual Property Rights govern adminis- trative complaints filed before the BLA. Finally, the Rules on Inter Partes Proceedings govern cancellation cases. When cases are appealed, the Uniform Rules on Appeal (Uniform Rules) govern appeals to the Director General of the IPOPHL while the Rules of Court govern appeals to the Court of Appeals or the Supreme Court. Infringement cases, whether filed in court or with the BLA, are generally conducted through a series of hearings, giving each party at least 30 days to present its case. Fact and expert witnesses are typically heard during the trial stage. Parties are responsible for ensuring their witnesses are presented on scheduled dates within their allotted trial period. Cross-examination is an absolute right in civil cases. After direct examination, the adverse party may cross-examine the witness on mat- ters raised in direct testimony or related issues. The right to cross-examination also applies to depositions. Remedies, including damages, are typically resolved at the same time as the infringement case is decided. The court shall determine dam- ages, based on the amount claimed and the evi- dence presented, and other remedies such as injunctive relief, destruction of infringing goods, or equitable measures. For cancellation cases, preliminary conference is conducted to facilitate the resolution process through stipulations, clarifications and the sim- plification of issues, and the submission and
Amendment is possible in patent cancellation proceedings. If the IPOPHL finds that the pat- ent and the invention to which it relates meet the requirement of the IP Code – taking into consid- eration the amendment made by the patentee during the cancellation proceedings – it may decide to maintain the patent as amended. Amendment is also possible in industrial design cancellation proceedings. The restriction of the industrial design is effected in the form of an alteration of the affected features of the design. 4.4 Revocation/Cancellation and Infringement A patent cancellation proceeding and an action for infringement are based on different causes of action and, as a result, cannot be heard together. However, in an action for patent infringement, the defendant may raise as a defence the inva- lidity of the subject patent, based on the grounds upon which a petition for cancellation can be brought. If the patent or any claim is found to be invalid in a patent infringement case, the Director of Legal Affairs shall record that fact in the register of the IPOPHL and shall publish a notice to that effect in the IPOPHL E-Gazette, upon receipt of the final judgment of cancellation. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights The 2020 Revised Rules of Procedure for Intel- lectual Property Rights Cases (Rules for IP Rights Cases) primarily govern civil and crimi- nal complaints for violation of IP rights filed in
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