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Enforcement through the courts

At trial
What level of expertise can a patent owner expect from the courts?

The court hearing the civil action will be a specialised court if highly technical questions are involved. A party may request the court to appoint two or more assessors with the necessary scientific and technical knowledge required.

In certain cases the Intellectual Property Office Bureau of Legal Affairs may allow a case to be decided by a committee of three experts. 

Are cases decided by one judge, a panel of judges or a jury?

Cases are decided by one judge or a panel of judges.  

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

The Philippines has no jury system. 

What role can and do expert witnesses play in proceedings?

Experts can appear as witnesses during trials.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The Philippine courts apply strictly the doctrine of equivalents. A party claiming under this doctrine must satisfy the ‘function, means, result’ test – that is, the infringing modification must be shown to perform substantially the same function, in substantially the same way, to achieve substantially the same result under the patent claimed to be infringed.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Yes – preliminary injunctions are available. The plaintiff must prove that it will suffer irreparable injury if the alleged infringing acts continue during trial. In regard to suppliers, if a conspiracy can be proven or a single transaction exists which connects all of the suppliers to the infringer, the suppliers can be joined in the action and any injunction will also be binding on them.

In regard to customers, a separate infringement action can be filed to stop the customer’s infringing use. If a conspiracy can be proven or a single transaction exists which connects the customer to the infringer and its suppliers, the customer can be joined in the action and any injunction issued will also be binding on it. However, if the customer’s use is carried out privately and on a non-commercial scale or for a non-commercial purpose, there is no infringement.

How are issues around infringement and validity treated in your jurisdiction?

The validity of the patent is a prejudicial question in the infringement action. Thus, if the validity of the patent is challenged and a patent infringement action is filed, the validity issue should be resolved first.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Yes – decisions issued in other jurisdictions involving similar issues have probative value.

Damages and remedies
Can the successful party obtain costs from the losing party?

Yes – the party seeking the recovery of costs and attorneys’ fees must prove that there is an agreement between the lawyer and the client for attorneys’ fees. It must be shown that the plaintiff was compelled to hire the services of the lawyer as a result of the act or omission of the defendant. Further, the lawyer must justify the amount claimed.

Litigation expenses must be proven in an itemised list with official receipts and other evidence of payment incurred.

What are the typical remedies granted to a successful plaintiff?

The typical remedies granted are monetary remedies and injunctions.

How are damages awards calculated? Are punitive damages available?

Recovery may extend to all damages sustained by the patent owner, plus attorneys’ fees and litigation expenses. The court can increase the amount of actual damages proven, but the final award should not exceed three times the amount of such actual damages.

If damages are inadequate or cannot readily be ascertained with reasonable certainty, the award is equivalent to a reasonable royalty. However, no damages can be recovered for acts committed more than four years before institution of the action.

No damages can be recovered if the infringer proves that it had no knowledge of the patent. However, an infringer will be presumed to have knowledge if the patented product, its packaging or advertising materials relating to the patented product bear the words ‘Philippine patent’ with the patent registration number.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The courts commonly grant permanent injunctions to successful plaintiffs. Permanent injunctions issued in favourable decisions are generally worded.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Where each party has two witnesses, the trial can take up to 18 months. More witnesses result in a longer trial period. On appeal, a decision can take up to one year.

How much should a litigant plan to pay to take a case through to a first-instance decision?

A patent infringement action usually costs between $4,000 and $6,000 before trial. The cost of a trial is between $6,000 and $8,000. The cost of bringing an appeal at each appeal stage is approximately $6,000 to $8,000.