Judicial Administration Structure for IP Disputes: Philippines
Information provided by:
Intellectual Property Office of the Philippines (IPOPHL)
| Supreme Court of the Philippines | ||||||
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| Court of Appeals1 | ||||||
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| Secretary of Trade and Industry2 | |
Regional Trial Courts3 | ||||
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| Intellectual Property Office (IPOPHL) (administrative instance and first and appellate levels) |
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| Administrative Jurisdiction First administrative instance: Jurisdiction to hear pre-grant oppositions to applications for the registration of marks; post-grant actions for cancellation of trademarks, patents, utility models, and industrial designs (Bureau of Legal Affairs) Jurisdiction to hear administrative infringement complaints, provided that total damages claimed are not less than PHP 200,000, with the power to order provisional remedies (Bureau of Legal Affairs) Jurisdiction to resolve disputes relating to the terms of a license involving the author's right to public performance or other communication of the author’s work (Bureau of Copyright and Related Rights) Power to resolve disputes on technology transfer payments (Documentation, Information and Technology Transfer Bureau) Appellate administrative instance (Director General, IPOPHL): Exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, the Director of Copyright and Other Related Rights, and the Director of the Documentation, Information and Technology Transfer Bureau, as well as Enforcement functions (Director General, IPOPHL): Enforcement functions supported by concerned agencies such as the Philippine National Police, the National Bureau of Investigation, the Bureau of Customs, the Optical Media Board, and the local government units, among others |
Civil Jurisdiction Civil actions involving infringement of intellectual property rights, unfair competition and false designation of origins |
Criminal Jurisdiction Criminal actions involving infringement of intellectual property rights, unfair competition and false designation of origins |
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| 1. Appeals from decisions of the Director General in the exercise of appellate jurisdiction in respect of decisions of the Director of Patents, the Director of Trademarks and the Director of Copyright and Other Related Rights 2. Appeals from decisions of the Director General in the exercise of appellate jurisdiction in respect of decisions of the Director of Documentation, Information and Technology Transfer Bureau 3. Regional Trial Courts designated by the Supreme Court as Special Commercial Courts |
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The Intellectual Property Office of the Philippines (IPOPHL) conducts administrative adjudication of IP disputes at both the first and appellate levels.
At the first administrative instance:
The Bureau of Legal Affairs adjudicates oppositions to the registration of marks; cancellation of registrations of marks, patents, utility models, and industrial designs. It also decides complaints for violations of laws involving intellectual property rights where the total damages claimed are not less than two hundred thousand pesos (PHP 200,000).
The Bureau of Copyright and Related Rights resolves disputes relating to the terms of a license involving the author's right to public performance or other communication of the author's work. It accepts, reviews and decides on applications for the accreditation of collective management organizations or similar entities.
The DITTB resolves disputes on technology transfer payments.
At the appellate instance, the Director General of the IPOPHL has jurisdiction to consider appeals from decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, the Director of Copyright and Related Rights and the Director of the Documentation, Information and Technology Transfer Bureau (DITTB). The Director General also has jurisdiction to consider petitions for compulsory licensing.
The decisions of the Director General, except those in respect of decisions of the DITTB (disputes regarding technology transfer payments), may be appealed to the Court of Appeals. The decisions of the Director General in respect of decisions of the DITTB may be appealed to the Secretary of the Department of Trade and Industry.
Regional Trial Courts (RTC) in the Philippines, designated as Special Commercial Courts, have jurisdiction on cases involving intellectual property (IP) rights (civil or criminal actions). Their decisions are appealable to the Court of Appeals (CA) and the decisions of the CA may be appealed to the Supreme Court.
Civil Action
An IP rights holder may file a civil action to recover damages for violation of IP rights. In infringement cases, the award of damages shall either be the reasonable profit the IP rights holder would have made had there been no infringement, or the profit that the infringer actually received from the infringement. In the event that such damages cannot be ascertained with reasonable certainty, the RTC or the appellate courts may award as damages a reasonable percentage of the amount of the gross sales of the infringer in connection with the use of the IP rights. In cases where actual intent to mislead the public or to defraud the IP owner is shown, the damages may be doubled upon the discretion of the court.
Other forms of relief, such as injunctions and the impounding of the counterfeit products, sales invoices and other documents evidencing sales, are also available as remedies to the IP rights holder.
Criminal Action
A criminal action may be initiated by filing a complaint with the prosecutor. The prosecutor then conducts a preliminary investigation to determine if there are reasonable that justify the filing of criminal information in the RTC.
After the filing of the criminal information, the RTC will issue a warrant of arrest. The accused has the option to post bail. Once the accused is arrested and/or posts bail, he or she will be arraigned and appropriate proceedings will be conducted by the RTC. The IP rights holder may participate in the civil aspects on claims for damages in criminal actions.
The following are the relevant rules of procedure for IP Cases:
1. Revised Rules of Procedure for Intellectual Property Rights Cases, A.M. No. 10-3-10-SC, 06 October 2020.
2. Revised Uniform Rules on Appeal in the Office of the Director General, Memorandum Circular 2020-041, 22 September 2020.
3. Rules on Inter Partes Proceedings as amended by Office Order Nos. 018 (s.1998), 079 (s.2005), 099 (s.2011), and 14-068 (s.2014), and Memorandum Circular No. 16-007 (2016).
4. Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights as amended by Office Order Nos. 012 (s.2002) and 186 (s.2010) and Memorandum Circulars Nos. 17-012 and 17-015 (2017).
The IPOPHL maintains statistics on IP Cases.
1. Supreme Court of the Philippines: https://sc.judiciary.gov.ph/decisions/
2. Court of Appeals: https://services.ca.judiciary.gov.ph/csisver3-war/
3. Intellectual Property Office of the Philippines:
https://onlineservices.ipophil.gov.ph/ipcaselibrary/main.html