572

SUPREME COURT REPORTS ANNOTATED

Administrative Remedies in Intellectual Property Cases

ANNOTATION
ADMINISTRATIVE REMEDIES IN INTELLECTUAL
PROPERTY CASES
By
*
DAVID ROBERT C. AQUINO, CSEE
________________
1. Administrative Remedy, p. 573
2. Where these proceedings take place, p. 574
3. The rule on forum shopping, p. 575
4. Procedure at a glance, p. 575
5. Stopgap measures, p. 578
________________
Under the present regime of Republic Act No. 8293,
otherwise known as the Intellectual Property Code1 of
the Philippines, the Intellectual Property Office (IPO) 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 catego_______________
*

Member, Sub-Committee on the Revision on the Rules on Criminal

Procedure, Supreme Court. Former Director IV, Senate of the Philippines

and currently the Director for the Internal Affairs Service, PDEA.
1

Now sporting the name IP Philippines.

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Administrative Remedies in Intellectual Property Cases

ries are copyright, trademarks and patents. Without going
into what these three are, suffice it to say that owners of
these intellectual properties are afforded by law and by
applicable rules and regulations of the IPO certain
remediescivil, criminal and administrative.
Separate laws govern civil and criminal remedies and
rules, particularly by the Rules of Court promulgated by
the Philippine Supreme Court. There is, however, one
remedy, which is common to all three areas of intellectual
property in terms of rational, essence, nature and
procedure and that is the administrative machinery in
place by virtue of statute and implementing rules and
regulations.
1. Administrative Remedy
Resort to administrative remedies is deemed as faster, less
expensive and in line with the governments policy of
utilizing alternative modes of dispute resolution. More
importantly, it is less adversarial in terms of procedure and
summary in nature. Moreover, it should be noted that
intellectual property disputes often involve issues that
are highly technical nature and will require the specialized
expertise of people knowledgeable in the same. Hence, the
specialized divisions of the IP Philippines which hear and
resolve IP issues.
It is also interesting to note that the law and the
implementing rules also allow the parties to a dispute to
resort to mediation. This is encouraged in some cases such
as disputes regarding terms of technology transfer
arrangements and the terms and conditions of a license
involving the authors right to public performance or other
public exploitation of his work. It should be underscored
that this mode of alternative dispute resolutionmediation
offers a less hostile environment since the proceedings

are non-adversarial in nature. The limitation on this

particular mode, however, is that the mediator can only
facilitate the proceedings but has no authority to bind the
parties unlike in arbitration proceedings.
574

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SUPREME COURT REPORTS ANNOTATED

Administrative Remedies in Intellectual Property Cases

2. Where these proceedings take place

There are two agencies of the government that are
mandated to adjudicate cases relating to intellectual
property disputes and these are the Department of Trade
and Industry (DTI) and the IP Philippines through its
Legal Affairs. One would askwhy the DTI and IP
Philippines when we could simply delegate this function to
the ADR machinery established by the Supreme Court or
why not just create special courts for the purpose? As
previously stated, IP issues, more often that not, involve
technical matters that are best handled by people specially
trained and educated for the purpose. Hearing officers of
the IP Philippines Legal Affairs have the requisite
education, training and experience to properly hear and
adjudicate disputes of this nature. To simply throw this
function to special courts would unduly burden an already
taxed judicial system.
The DTIs authority to adjudicate cases involving
violations of trade and industry laws is based on Executive
Order No. 913. Its jurisdiction was further defined under
Administrative Order No. 1, series of 2000. This
administrative issuance classified intellectual property
laws as trade and industry laws. It is important to note
that EO No. 913 did not specify the jurisdictional amount
of damages claimed for DTI to act on a case. As such, any
provincial and regional offices of the DTI and its Office of
Legal Affairs may accept complaints even if there are no
damages claimed or where there are damages claimed
regardless of the amount. As with procedures found in
other departments in our system of government, the
decision of the DTI hearing officer-in-charge is appealable
to the Department Secretary.

The IP Philippines, on the other hand, has original

jurisdiction if the total damages
claimed are two hundred
2
thousand pesos and above. It also has the power to grant
provi_______________
2

Section 10.2.
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Administrative Remedies in Intellectual Property Cases

sional remedies and award damages to intellectual
property owners as well as to cite in contempt those who
disobeyed the orders, resolutions or decisions issued. Note,
however, that the initiation of an action with this office is
independent and without prejudice to the filing of an action
with the regular courts.
According to IP Philippines, the filing of administrative
complaints is a relatively new service starting as it did last
May of 2001 right after the publication of the rules. This
was accompanied with the hiring of the necessary hearing
officers, stenographic reporters, sheriffs and other support
staff. To fully discharge its mandate under the law, it has
also entered into separate agreements with other agencies
of the government such as the Philippine National Police.
3. The rule on forum shopping
The rule against forum shopping applies to quasi-judicial
proceedings before quasi-judicial agencies. Initiatory
pleadings filed before the IP Philippines must contain a
sworn certification against forum shopping. The
certification is to the effect that the plaintiff or petitioner
has not therefore commenced any action or filed any claim
involving the same issues in any court, tribunal or quasijudicial agency and to the best of his knowledge no such
other action or claim is pending therein. If there is such
other action or claim, a statement of the present status
thereof and if he should thereafter learn that the same or
similar action or claim has been filed or pending, he shall
report the same within 5 days.

 4. Procedure at a glance
The procedure in administrative cases is akin to that
followed in regular courts. In fact, the Rules of Court has a
suppletory effect to the rules of procedure implemented by
IP Philippines as follows:
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Administrative Remedies in Intellectual Property Cases

1. Filing of Complaint.IP Philippines takes
cognizance of the case after it is filed and payment
of the filing fee;
2. Raffle of Cases.The case is then raffled to a
specific hearing officer;
3. Notice to Answer.Within three (3) days from
receipt of the complaint, the Hearing Officer
prepares the Notice to Answer and sends it together
with a copy of the complaint to the Respondent by
mail or by personal service;
4. Answer.Respondent is required to answer in
writing the complaint within ten (10) days from
receipt thereof, either by specially denying the
material allegations of the complaint or alleging
any affirmative defense. If Respondent fails to
answer within the time allowed, the Hearing
Officer motu proprio or upon motion of the
complainant with notice to the respondent, and
upon proof of such failure, shall declare the
respondent in default. The complainant is then
allowed to present his evidence ex parte to which
judgment may be rendered granting the
complainant such relief as warranted;
5. Notice of Pre-Trial Conference.Within fifteen (15)
days from receipt of the answer or last pleading, the
Hearing Officer-in-Charge prepares the notice of
PreTrial Conference which shall be set immediately
or on a date fixed in the notice. The notice requires
the parties to submit their respective pre-trial
briefs at least three (3) days before the date set for
pre-trial conference. Failure to submit the Pre-Trial

Brief pursuant to these Regulations may be a cause

for dismissal of the action with prejudice. The
Hearing of Motion to grant provisional remedies
shall be scheduled prior to the date set for Pre-Trial
Conference;
6. Pre-Trial Conference.Presence of the parties
themselves is required for the pre-trial conference
for
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Administrative Remedies in Intellectual Property Cases

purposes of accepting an offer of compromise but
their presence may be dispensed with if counsel/s
are with power of attorney or the appropriate
corporate authorization;
7. Trial.The Hearing Officer shall set the case for
successive and continuous daily hearings for the
reception not only of the evidence in chief but also
on any provisional remedy prayed for in the
complaint or petition. The hearing of the case on
the merits or the reception of evidence shall be
terminated within ninety (90) days and in the case
of provisional remedies, the hearings or reception of
evidence thereon shall be terminated within thirty
(30) days;
8. Filing of Memorandum and Decision.Upon
termination of the period for the reception of
evidence and the evidence is formally offered, the
case shall be decided within thirty (30) calendar
days from submission of the case for resolution
whether or not the parties submit a final pleading
such as a memorandum. Decisions are sent by mail
or personal service within three (3) days or by
publication as the case may require;
9. Appeal.After fifteen (15) days from receipt of the
copy of the decision by the parties involved, and no
motion for reconsideration is filed or an appeal to
the Director General is made, the decision becomes
final and executory. The decision of the DirectorGeneral on appealed cases is final and executory

unless the same is appealed to the Court of Appeals

or to the Supreme Court; and
10. Enforcement and/or Execution.As soon as a
decision has become final and executory, it shall
issue an order of execution deputizing the Sheriff or
such other duly authorized government agent,
officer or personnel to execute the same.
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SUPREME COURT REPORTS ANNOTATED

Administrative Remedies in Intellectual Property Cases

5. Stopgap measures
The procedure illustrated above is not without provisional
remedies, which a party may avail of during the pendency
of the case. IP Philippines, after due process, may impose
one (1) or more of the following provisional administrative
remedies:
1. The issuance of cease and desist orders specifying
the acts that the respondent shall cease and desist
from and is required to submit a compliance report
within a reasonable time as fixed in the order;
2. The acceptance of a voluntary assurance of
compliance or discontinuance which may include
one or more of the following:
a. to comply with the provisions of the intellectual
property law violated;
b. to refrain from engaging in unlawful and unfair
acts and practices, subject of the formal
investigation;
c. to recall, replace, repair or refund the money value
of defective goods distributed in commerce;
d. to reimburse the complainant the expenses and
costs incurred in prosecuting the case before it;
3. The respondent to submit periodic compliance
reports and files a bond to guarantee compliance of
his undertaking.

4. The condemnation or seizure of products which are

subject of the offense, for disposal in such manner
as may be deemed appropriate;
5. The forfeiture of paraphernalia and all real and
personal properties which have been used in the
commission of the offense;
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Administrative Remedies in Intellectual Property Cases

6. The imposition of administrative fines in such
amount as deemed reasonable. Additional fine may
be imposed in the event of a continuing violation;
7. The cancellation of any permit, license, authority, or
registration which may have been granted, or the
suspension of the validity thereof for such period of
time as it may deem reasonable;
8. The withholding of any permit, license, authority or
registration which is being secured by the
respondent;
9. The assessment and award of damages;
10. Censure; and
11. Other analogous penalties or sanctions such as
those provided under the Intellectual Property
Code
In addition to those mentioned, IP Philippines may issue
preliminary injunctions or temporary restraining orders or
even a preliminary attachment at any stage of the
proceedings prior to the judgment or final order.
Finally, while it can be said that the new statutory
regime regarding intellectual property in place is fairly
a new one, compared with its counterparts in the world, its
observance and implementation in a country that is
wracked and plagued with intellectual property theft
such as music and film piracy is seen as a pivotal step
towards establishing a stable ground for intellectual
property growth and protection.
o0o

580

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