PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
6.3 Types of Remedies Neither the IP Code nor the applicable rules and regulations distinguish between the remedies that may be availed of for different IP rights. The procedure prescribed by the regulations in the cancellation of a patent shall be applied, with the necessary adjustments, to the cancellation of a utility model registration and a design reg- istration. 6.4 Injunctions Pending Appeal For cases filed before the courts, the Rules for IP Rights Cases provide that any order issued by the court shall be immediately executory, unless restrained by the Supreme Court or the Court of Appeals, except in the following instances: • order of destruction where a motion for reconsideration is filed; and • order of release of seized goods where a search warrant is quashed. The Rules on Inter Partes Proceedings provide that, unless restricted by the Director of the IPOPHL, the decision or order to cancel the pat- ent, claim or part of a claim shall be immediately executory even pending appeal. 7. Appeal 7.1 Special Provisions for Intellectual Property Proceedings Appeals before the IPOPHL Director General are governed by the Uniform Rules while the appeal proceedings before the courts are primarily gov- erned by the Rules of Court. Under the Uniform Rules, the filing of an appeal memorandum or a motion for extension of time must be done exclusively via email. Further, it is
plus attorney’s fees and other expenses of litiga- tion, and secure an injunction for the protection of his/her rights. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages, provided that the award does not exceed three times such amount. If the damages are inadequate or can- not be readily ascertained, the court may award a sum equivalent to a reasonable royalty. Furthermore, the court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringe- ment be disposed of outside the channels of commerce or destroyed, without compensation. For wilful infringement, the offenders shall, with- out prejudice to the institution of a civil action for damages, be criminally liable and, upon convic- tion, shall suffer imprisonment for not less than six months but not more than three years and/or a fine of not less than PHP100,000 but not more than PHP300,000, at the discretion of the court. Should an order to pay damages and/or injunc- tion be issued, non-compliant defendants may be cited in contempt by the court. 6.2 Rights of Prevailing Defendants A prevailing defendant may recover damages should a counterclaim be asserted during a patent infringement action and attorney’s fees if stipulated or where the court deems it just and equitable. Moreover, in cases where prelimi- nary injunction is availed of, the defendant may recover damages if it is finally decided that the applicant was not entitled to such.
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