EN BANC

A.M. No. 10-3-10-SC

RULES OF PROCEDURE
FOR INTELLECTUAL PROPERTY RIGHTS CASES

Rule 1
GENERAL PROVISIONS

SEC 1. Title. — These Rules shall be known and cited as the "Rules of Procedure
for Intellectual Property Rights Cases."

A.M. No. 10-3-10-SC otherwise known as the Rules of Procedure for Intellectual
Property Rights Cases was proposed in the form of Memorandum (Re: Report on the
Proposed Special Rules on IP Litigation) wherein pursuant to the previous resolutions and
issuance of the court, the chairperson, Associate Justice Jose Portugal Perez, and
members of the Sub-Committee of the Rules of Procedure for IP Cases submits the final
draft of the rules of Procedure for Intellectual Property Rights Cases for the Court’s
consideration and approval of Hon. Chief Justice Corona and signed on October 18, 20111

The Intellectual Property of the Philippines is mandated to implement all

forms of intellectual property protection. This protection consists not only in registering
designs, literary works or inventions but also in the prosecution and
adjudication of disputes arising from intellectual property rights.
Although intellectual property covers literary works, inventions or designs but also the
whole gamut of intellectual property related activities; the IP Philippines is concerned
with three main areas of intellectual property. These main categories are copyright,
trademarks and patents. Without going into what these three are, suffice it to say that
owners of these intellectual properties are afforded2

SEC. 2. In what courts applicable. — These Rules shall be observed by the

Regional Trial Courts designated by the Supreme Court as Special Commercial
Courts.

Before A.M. No. 10-3-10-SC was implemented certain administrative orders was
created recognizing the special courts among are as follows:

A.O. No. 113-95 designated special intellectual property courts to promote the
efficient administration of justice and to ensure the speedy disposition of intellectual
property cases.

A.O. No. 104-96,3 on the other hand, was issued pursuant to Section 23 of BP
1294 which transferred the jurisdiction over such crimes from the MTC and MTCC to the

1
https://www.wipo.int/edocs/lexdocs/laws/en/ph/ph097en.pdf
2
Administrative Remedies in Intellectual Property Cases, 544 SCRA 572, February 12, 2008
3
A.O. No. 104-96 (B) Violations of intellectual property rights such as, but not limited to, violations of Art. 188 of
the RPC (substituting and altering trademarks, trade names, or service marks), Art. 189 of the RPC (unfair
competition, fraudulent registration of trademarks, trade names, or service marks, fraudulent designation of
origin, and false description) P.D. No. 49 (protection of intellectual property rights), P.D. No. 87 (an act creating the
videogram regulatory board), R.A. No. 165 as amended (the trademark law) shall be tried exclusively by the RTC in
accordance with the established raffle scheme except those covered by AO No. 113-95 dated October 2, 1995, in
which case, the designated RTC shall continue to observe the provisions therein.
4
SEC. 23. Special Jurisdiction to try special cases. – The Supreme Court may designate certain branches of the
Regional Trial Courts to handle exclusively criminal cases, juvenile and domestic relations cases, agrarian cases,
urban land reform cases which do not fall under the jurisdiction of quasi-judicial bodies and agencies, and /or such
other special cases as the Supreme Court may determine in the interest of a speedy and efficient administration of
justice.
RTC and which furthermore gave the Supreme Court the authority to designate certain
branches of the RTC to exclusively handle special cases in the interest of the speedy and
efficient administration of justice. Accordingly, the RTC was vested with the exclusive and
original jurisdiction to try and decide intellectual property cases.

The transfer of jurisdiction from the MTC and MTCC to the RTC did not in any way
affect the substantive rights of petitioners. The administrative orders did not change the
definition or scope of the crime of unfair competition with which petitioners were charged.

Both administrative orders therefore have the force and effect of law, having been
validly issued by the Supreme Court in the exercise of its constitutional rule-making
power. The trial court, being a subordinate court, should have followed the mandate of
the later A.O. 104-96 which vested jurisdiction over the instant case on the RTC.5

SEC. 3. Applicability of the regular rules. — When the court determines that
the civil or criminal action involves complex issues, it shall issue a special order
that the regular procedure prescribed in the Rules of Court shall apply, stating
the reason therefor.

Where applicable, the Rules of Court shall apply suppletorily to proceedings

under these Rules

In cases wherein there is a need to resolve complex issues, in the absence or when
the rules of procedures in intellectual property cases are silent and the necessity requires
to resolve the issue on the said case, the court who acquires jurisdiction shall issue a
special order declaring the adaptation of the regular Rules of court shall be applied.

These requirements notwithstanding, the Intellectual Property Office's own

Regulations on Inter Partes Proceedings (which governs petitions for cancellations of a
mark, patent, utility model, industrial design, opposition to registration of a mark and
compulsory licensing, and which were in effect when respondent filed its appeal) specify
that the Intellectual Property Office "shall not be bound by the strict technical rules of
procedure and evidence.6

Rule 2, Section 6 of these Regulations provides:

Section 6 Rules of Procedure to be Followed in the Conduct of Hearing of Inter Partes

Cases

In the conduct of hearing of inter partes cases, the rules of procedure herein contained
shall be primarily applied. The Rules of Court, unless inconsistent with these rules, may
be applied in suppletory character, provided, however, that the Director or Hearing Officer
shall not be bound by the strict technical rules of procedure and evidence therein
contained but may adopt, in the absence of any applicable rule herein, such mode of
proceedings which is consistent with the requirements of fair play and conducive to the
just, speedy and inexpensive disposition of cases, and which will give the Bureau the
greatest possibility to focus on the technical grounds or issues before it.7

SEC. 4. Executory nature of orders. — Any order issued by the court under
these Rules is immediately executory unless restrained by a superior court

Orders may be in the form of decision, final orders restraining order, preliminary
injunction and summons are to be carried into operation or effect unless restrained by
the higher courts. However, it also provides certain exemption such as the Authority of
the President to regulate the price of the drugs and medicine.

5
Tan vs. Bausch & Lomb, Inc. 478 SCRA 115 , December 15, 2005
6
Palao vs. Florentino III International, Inc. 814 SCRA 448 , January 18, 2017
7
REGULATIONS ON INTER PARTES PROCEEDINGS (1998)' Rule 2, sec. 6.
 The power to impose maximum retail prices over drugs and medicines shall be
exercised within such period of time as the situation may warrant as determined by the
President of the Philippines. No court, except the Supreme Court of the Philippines, shall
issue any temporary restraining order or preliminary injunction or preliminary mandatory
injunction that will prevent the immediate execution of the exercise of this power of the
President of the Philippines.8

SEC. 5. Verification and supporting documents. — Any pleading, motion,

opposition, defense or claim filed by any interested party shall be supported
by verified statements that the affiant has read the same and that the factual
allegations therein are true and correct of his personal knowledge or based on
authentic records, and shall contain as annexes such documents as may be
deemed by the party submitting the same as supportive of the allegations in
the affidavits.

SEC. 6. Duty of the clerk of court. — It shall be the duty of the branch clerk of
court to notify in writing the Director-General of the intellectual Property
Office (IPO) of any action, suit or proceeding involving a copyright, trademark,
service mark, patent, industrial design, utility model, undisclosed information
and technology transfer agreement. Such notice shall set forth: the names and
addresses of the litigants and the copyright, trademark, service mark, patent
or design registrations involved and, where applicable, the numbers of their
certificates of registration. The notice shall be submitted within one (1) month
after the filing thereof.

8
SEC. 17. Republic Act No. 92502 amending some provisions of Republic Act 8293