Rule on Search and

Seizure In Civil Actions

for Infringement of IPR
Presented by
Atty. Josh Carol T. Ventura

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 A.M No. 02-1-06- Supreme Court
(took effect on Feb. 15, 2002)
Coverage
 only for searches and seizures pursuant to civil
actions for infringement ( searches and seizures
in criminal actions are covered by Sec 126 of the
Rules of Criminal Procedure)
 covers pending and intended civil actions
 governs provisional seizure and impounding of
documents and articles
 for violations under RA 8293, Article 50 of TRIPS
and other related laws and international
conventions
IP NOTES OF ATTY. JOSH CAROL
VENTURA
WRIT OF SEARCH AND SEIZURE
 Purpose is to prevent infringement or to
prevent irreparable harm on the IP holder,
 to preserve relevant evidence where there
is demonstrable risk of evidence being
destroyed
 application ex parte
 Infringing defendant/adverse party
directed to admit into his premises the
persons named in the order
IP NOTES OF ATTY. JOSH CAROL
VENTURA
WRIT OF SEARCH AND SEIZURE

 enables one to search, inspect, copy,

photograph, records audio/audio visual, seize
any document and article specified
 items to be seized shall not be used in any
criminal/administrative action or for any purpose
other than the action in which the writ is issued.
 application proceedings are considered
confidential
 may be served only from 8 to 5pm on weekdays
except if there are compelling reasons

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 REQUISITES OF WRIT
 verified petition alleging the ground
 specific description and location of documents,
articles and objects of the writ
 name of applicant, his representative, witnesses
and counsel who will be in attendance at the
execution of the writ
 affidavits corroborative of allegations
 certification against forum shopping
 undertaking not to use evidence thus seized for
any purpose other than the action for which the
writ is issued
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 Who/where to apply for the writ?
 IP holder or duly authorized representative who
has commenced or is about to commence a civil
action for infringement
 Venue – Designated special commercial courts
where any of the following occurred:
1. where the violation has occurred
2. where the violation is feared or supposed to
occur
3. where the search is to be effected
 Application to be filed in court where the civil
action for infringement is pending
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 DUTY OF THE COURT

 act on the application within 24 hours

from filing
 Judge to examine in the form of searching
questions and answers in writing and
under oath or affirmation
 Proceedings are held in the chamber of
the judge
 recorded
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 GROUNDS FOR ISSUANCE OF
THE WRIT
 applicant is the IP holder, a representative or a
successor in interest
 probable cause of an IP violation or an imminent
violation
 likelihood of irreparable damage to the applicant
 demostrable risk of destruction or concealment
of evidence
 Items to be seized constitute evidence against
defendant or they infringe applicant’s IPR or are
use to infringe applicant’s IP

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 CONTENTS OF THE WRIT
 Name of applicant, agent, representative
and the court-appointed commissioner
who will supervise the enforcement of
the writ
 Order to the defendant/adverse party or
the person in charge of the premises to
permit the persons in the writ to
a) enter c) inspect e) or remove
b) search d) copy docs/articles
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 CONTENTS OF THE WRIT
 Order to the same person to disclose to
the sheriff the location of the documents
and articles
 the period within which the writ shall be
enforced w/c shall be no more than 10
days from the date of issuance by the
court
 A warning that violation of the order
constitutes contempt of court
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 BONDS
 cash bond, surety bond or other equivalent
security in favor of defendant
 a reasonable amount of the bond is fixed by
the court
 Purpose is to answer for all the costs and
damages which the defendant may
 Charges on the bond
i. Compensation for any injury or damage due
to issuance and enforcement of the writ
ii. Liability for counterclaim is separate
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 Infringement Actions in IP Cases
 CIVIL ACTION (S. 76)  CRIMINAL ACTION (S. 84)
Who may file ? What – infringement is repeated
1. patentee Who may be held liable- Infringer or
anyone in connivance with him.
2. anyone possessing any right,
title or interest in and to the When – after finality of the judgment
patented invention of the court against the infringer
Be criminally liable therefore and
Be civilly liable for :
upon conviction shall :
3. damages sustained thereby
1. suffer imprisonment not less
4. attorney’s fees and expenses of than 6 mos but not more than 3
litigation years and or
Court may – 2. Fine not less than P 100T but
5. Upon petition order an not more than P 300T at the
injunction discretion of the court
6. Disposition/destruction of Without prejudice to institution of
infringing goods w/o civil action for damages
compensation
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 Patent Infringement
 The making, using, offering for sale,
selling or importing a patented
product or a product obtained directly or
indirectly from a patented process, or the
use of a patented process without the
authorization of the patentee constitutes
infringement (Sec. 76.1, RA 8293)

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 Contributory Infringement
 Anyone who actively induces the infringement of
a patent or provides the infringer with a
component of a patented product or of a
product produced because of a patented process
knowing it to be especially adopted for infringing
the patented invention and not suitable for
substantial non- infringing use shall be liable as
a contributory infringer and shall be jointly and
severally liable with the infringer. (Sc. 76.6)

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 Defenses in Infringement and
Revocation of Patents
 applicant was not a person entitled to apply for
the patent
 the patent as claimed, was obtained in
contravention of the rights of the petitioner
 the specification does not fully describe the
invention and the claims are not fairly based on
the matter described in the invention
 the claimed invention is not an invention within
the meaning of the act
 the claimed invention was not novel
 the claimed invention is not useful-
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 Defenses in Infringement and
Revocation of Patents
 The patentee has contravened or has not
complied with the conditions contained in
the patent
 The patent was obtained on a false
suggestion or representation

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 Damages Recoverable in Patent
Infringement
1. actually sustained damages including expenses of
litigation [award of damages may not exceed
three (3) times the amount of actual damages]
2. reasonable royalty as determined by the court
3. all profits including recovery of lost profits
NB : No damages can be recovered for acts of
infringement committed more than 4 years before
the institution of action for infringement

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 TRADEMARK INFRINGEMENT
CIVIL, CRIMINAL AND ADMINISTRATIVE
REMEDIES
CIVIL
 Owner of a TM may ask the
court for a prelim injunction if
case for infringement is strong.
 impounding of sales invoices
and other docs evidencing sales
during pendency of action(if
asked for by TM owner)
 destruction of infringing goods
 recovery of lost profits
 payment of damages(requires
notice of mark reg - eg. if “R”
w/in a circle is appended to a
mark) IP NOTES OF ATTY. JOSH CAROL
VENTURA
CRIMINAL (Steps)
1.investigate operations of the
infringer to determine
a) Identity of the
manufacturer or its affiliates
and where he manufactures
the infringing goods
b) his marketing network
2. apply for search warrant
3. Issuance of search warrant
after a finding by the judge
of probable cause.
4. recovery of lost profits
5. NBI/police conducts raid and
seizes infringing goods
 TRADEMARK INFRINGEMENT
CIVIL, CRIMINAL AND ADMINISTRATIVE
REMEDIES
 Requirements to CRIMINAL
establish an
(Steps)
infringement :
5. goods
1. placed
validity of under
plaintiff’s mark; the custody of court
2. the plaintiff’s ownership of the mark; and
6.
3.
complaint for infringement filed with
the use of the mark or its colorable imitation by the
prosecutor’s
alleged infringeroffice
results in “likelihood of confusion”
7. filing of information
8. issuance of warrant of arrest

IP NOTES OF ATTY. JOSH CAROL

VENTURA
ADMINISTRATIVE REMEDIES
 Bureau of Legal Affairs exercises original
jurisdiction in cases of IP violations where the
total damages claimed are not less than P
200,000.00
 Questions to resolve are the same as civil action
for infringement
 BLA may direct the infringer to immediately stop
the manufacture/sale of infringing goods during
its pendency
 Payment of damages
 Imposition of a fine
IP NOTES OF ATTY. JOSH CAROL
VENTURA
 COPYRIGHT INFRINGEMENT
(Remedies)
1. injunction
2. Damages,including legal costs and other expenses
3. Deliver under oath for impounding during pendency of
action
a) sales invoices & other documents to prove sales
b) Infringing copies so damage (lost sales will stop
immediately
c) Equipment used for reproduction
4. Destruction of infringing copies or devices
5. Moral and exemplary damages

IP NOTES OF ATTY. JOSH CAROL

VENTURA
 Damages Recoverable
in Copyright Infringement
Potential Injured Party
 Sec. 216 introduces a significant statutory
change in that the infringement remedies are
available to all the right holders under the act.
Hence, authors of all works under Section 172
and 173, their economic rights under Sec. 177
and their moral rights and droit de suite under
Chapters 10 and 11, as well as performers,
producers of sound recordings and broadcasting
organizations under Chapters XII,XIII and XIV ,
are all entitled to the remedies under Section
216.
IP NOTES OF ATTY. JOSH CAROL
VENTURA