A.M.
NO. 02-1-06-SC
Re:
Proposed Rule
on Search and Seizure in Civil Actions for Infringement of Intellectual
Property Rights.
EN
BANC
RESOLUTION
Acting on the letter
of the Chairman of the Committee on Revision of the Rules of Court
submitting
for this Court’s consideration approval the Proposed Rule in Search and
Seizure on Civil Actions for Infringement of Intellectual Property
Rights,
the Court resolved to APPROVE the same.
The Rule shall take
effect on February 15, 2002 following its publication in two (2)
newspapers
of general circulation on or before January 2002.
HILARIO
G.
DAVIDE, JR.
Chief
Justice,
JOSUE N.
BELLOSILLO
,
Associate Justice
, JOSE A.R. MELO,
Associate
Justice,
REYNATO S.
PUNO,
Associate Justice
,
JOSE C. VITUG
Associate
Justice,
SANTIAGO
M.
KAPUNAN
,
Associate Justice
VICENTE V. MENDOZA,
Associate Justice
ARTEMIO V.
PANGANIBAN,
Associate Justice
,
LEONARDO A. QUISUMBING,
Associate Justice
BERNARDO
P.
PARDO
,
Associate Justice
,
ARTURO B. BUENA
Associate
Justice
Associate Justice
CONSUELO
YNARES-SANTIAGO
SABINO R. DE LEON
Associate
Justice
ANGELINA
SANDOVAL-GUTIERREZ
,
Associate Justice
, ANTONIO T. CARPIO
Associate
Justice
RULE
ON SEARCH
AND SEIZURE IN CIVIL ACTIONS FOR INFRINGEMENT OF INTELLECTUAL PROPERTY
RIGHTS
SECTION 1. Coverage.
– This Rule shall govern the provisional seizure and impounding of
documents
and articles in pending and intended civil actions for the purpose of
preventing
infringement and preserving relevant evidence in regard to alleged
infringement
under Republic Act
No.
8293, otherwise known as the Intellectual Property Code of the
Philippines,
Article 50 of the Agreement on Trade Related Aspects of Intellectual
Property
Rights, otherwise known as TRIPS and other related laws and
international
conventions.
SEC. 2. The writ
of search and seizure. – Where any delay is likely to cause
irreparable
harm to the intellectual property right holder or where there is
demonstrable
risk of evidence being destroyed, the intellectual property right
holder
or his duly authorized representative in a pending civil action for
infringement
or who intends to commence such an action may apply ex parte
for
the issuance of a writ of search and seizure directing the alleged
infringing
defendant or expected adverse party to admit into his premises the
persons
named in the order and to allow the search, inspection, copying,
photographing,
audio and audiovisual recording or seizure of any document and article
specified in the order.
SEC. 3. Where
application filed. – The application shall be filed with any of the
Regional Trial Courts of the judicial region designated to try
violations
of intellectual property rights stationed at the place where the
alleged
violation occurred or is to occur, or the place to be searched, at the
election of the applicant: Provided, however, that where the
complaint
for infringement has already been filed, the application shall be made
in the court where the case is pending.
SEC. 4. Verified
application and affidavits. – The applicant shall file a verified
application
alleging the ground upon which it is based and the specific description
and location of the documents and articles to be searched, inspected,
copied
or seized and their value. It shall also state the name applicant, his
representative, witnesses and counsel who will attend the search in the
event that the application is granted. The application shall be
supported
by affidavits of witnesses who personally know the facts and by the
authenticated
or certified documents.
The application shall
contain a certification against forum shopping as prescribed by Section
5, Rule 7 of the 1997 Rules of Civil Procedure.
The applicant shall
undertake in his application that he will not use any of the documents,
articles or information obtained by reason of the search and seizure
for
any purpose other than in the action in which the writ is issued.
SEC. 5. Examination
of applicant; record; confidentiality of proceedings. – The
application
shall be acted upon within twenty-four (24) hours from its filing. The
judge must, before issuing the writ, examine in the form of searching
questions
and answers, in writing an under oath or affirmation, the applicant and
the witnesses he may produce on facts personally known to them. The
examination
of the applicant and his witnesses shall be recorded. Their sworn
statements
and their affidavits shall form part of the record of the case.
The hearing on the
application for the writ shall be held in the chambers of the judge.
Court
personnel shall maintain the confidentiality of the application
proceeding.
The court may require
the applicant to give other information necessary for the
identification
of the articles and documents to be searched, inspected, copied or
seized
and the premises to be searched. Where feasible, it may direct the
applicant
to submit copies and photographs of the documents or articles to be
seized
and impounded.
SEC. 6. Grounds
for the issuance of the order. – Before the Order can be issued,
the
evidence proffered by the applicant and personally evaluated by the
judge
must show that:chanroblesvirtuallawlibrary
(a)
the
applicant is the right holder or his duly authorized representative;
(b) there
is probable
cause to believe that the applicant’s right is being infringed or that
such infringement is imminent and there is a prima facie case for final
relief against the alleged infringing defendant or expected adverse
party;
(c)
damage, potential
or actual, likely to be caused to the applicant is irreparable;
(d) there
is demonstrable
risk of evidence that the alleged infringing defendant or expected
adverse
party may destroy, hide or remove the documents or articles before any
application inter partes can be made; and
(e) the
documents
and articles to be seized constitute evidence of the alleged infringing
defendant’s or expected adverse party’s infringing activity or that
they
infringe upon the intellectual property right of the applicant or that
they are used or intended to be used as means of infringing the
applicant’s
intellectual property right.cralaw
SEC. 7. When
writ
may issue. – If the judge is satisfied with the proof of facts upon
which the application is based, he shall issue the writ requiring the
search,
inspection or copying of the subject documents or articles or
commanding
the sheriff to take them into his custody subject to the control of the
court. The enforcement of the writ shall be supervised by an
independent
Commissioner to be appointed by the court.
SEC. 8. Contents
of the writ. – The writ shall contain the following:chanroblesvirtuallawlibrary
(a)
an order
to the alleged infringing defendant, expected adverse party or to the
person
who appears to be in charge or in control of the premises or residing
or
working therein to permit the persons named in the writ to enter into
the
premises for the purpose of searching, inspecting, copying, or removing
from the premises and transferring to the custody of the sheriff and
subject
to the control of the court the subject documents and articles;
(b) an
order to the
alleged infringing defendant, expected adverse party or to the person
in
charge or in control of the premises to disclose to the sheriff serving
the writ the location of the documents and articles subject of the writ.
(c) the
period when
the writ shall be enforced which in no case shall be more than ten (10)
days from the date of issuance by the court.
(d) the
names of
the applicant or his agent or representative and the Commissioner who
shall
supervise the enforcement of the writ; and
(e) other
terms and
conditions that will insure the proper execution of the writ with due
regard
to the rights of the alleged infringing defendant or expected adverse
party.cralaw
It shall also
contain
a warning that violation of any of the terms and conditions of the writ
shall constitute contempt of court.
SEC. 9. Bond and
its conditions. – The applicant shall be required to post a cash
bond,
surety bond or other equivalent security executed in favor of the
defendant
or expected adverse party in a reasonable amount to be fixed by the
court
in its order granting the issuance of a writ of search and seizure. The
bond shall be conditioned on the undertaking of the applicant that he
will
pay all the costs which may be adjudged to defendant or expected
adverse
party and all damages which the latter may sustain by reason of the
issuance
of the writ.
SEC. 10. When
writ shall be served. – The writ shall be served only on weekdays
and
from 8 o'clock in the morning to 5 o'clock in the afternoon. However,
the
court may direct that the writ be served on any day and any time for
compelling
reasons stated in the application and duly proved.
SEC. 11. To whom
writ shall be served. – The writ shall be served on the alleged
infringing
defendant or expected adverse party in the place to be searched.
If the alleged infringing
defendant or expected adverse party cannot be found in the premises,
the
writ shall be served on his agent or representative. In the absence of
an agent or representative, it shall be served on the person in charge
or in control of the premises, or residing or working therein who is of
sufficient age and discretion. If such person is absent, the sheriff or
proper officer shall post the papers on the premises and proceed with
the
enforcement of the writ.
SEC. 12. Commissioner,
duties, qualifications and fees. – The enforcement of the writ
shall
be supervised by the independent Commissioner appointed by the court in
the performance of his duty, the Commissioner shall:chanroblesvirtuallawlibrary
(a)
give
impartial advice to the alleged infringing defendant, expected adverse
party or to the person in charge of the premises to be searched as to
the
meaning and coverage of the writ.
(b)
attempt to achieve
agreement on a suitable search procedure
(c)
assess what documents
or articles come within the terms of the writ
(d)
ensure the accuracy
of the list of documents and articles searched, inspected, copied or
seized
by the sheriff;
(e)
prepare his own
report on the search and seizure and verify and sign the return
prepared
by the sheriff, and
(f)
generally, assist
in the proper execution of the writ.cralaw
The
Commissioner shall
be a member of the Philippine Bar and of proven competence, integrity
and
probity. He shall receive such reasonable compensation as may be
determined
by the court which can be charged as cost of suit.
SEC. 13. Search
to be conducted in the presence of defendant, his representative,
person
in charge of the premises, or witnesses. – The premises may not be
searched except in the presence of the alleged infringing defendant,
expected
adverse party or his representative or the person in charge or in
control
of the premises or residing or working therein who shall be given the
opportunity
to read the writ before its enforcement and seek its interpretation
from
the Commissioner. In the absence of the latter, two persons of
sufficient
age and discretion residing in the nearest locality.
SEC. 14. Manner
of search and seizure; duties of the sheriff. – Upon service of the
writ in accordance with section 11 hereof, the sheriff, under the
supervision
of the Commissioner, shall search for the documents and articles
specified
in the writ, and take them in his custody subject to the control of the
court.
If the subject articles
are not capable of manual delivery, the sheriff shall attach to them a
tag or label stating the fact of seizure and warning all persons from
tampering
with them.
The sheriff shall,
in the presence of the applicant or his representative, and under the
supervision
of the Commissioner, prepare a detailed list of the seized documents
and
articles. He shall give an accurate copy of the same to the alleged
infringing
defendant, expected adverse party, his agent or representative, to the
person in charge or in control of the premises or residing or working
therein
in whose presence the search and seizure were made. In the absence of
the
person in charge or in control of the premises or residing or working
therein,
the sheriff must, in the presence of at least two witnesses of
sufficient
age and discretion residing in the same locality, leave a copy of the
receipt
in the place in which he found the seized property. Where no witnesses
are available in the same locality, the copy of the receipt shall be
left
by the sheriff in the presence of two witnesses residing in the nearest
locality The applicant or his representative and the Commissioner shall
also be given a copy of the receipt.
After the sheriff
has taken possession of the documents and articles, he shall deliver
them
to a bonded warehouse or government warehouse for safekeeping. The
applicant
or his representative shall be allowed access to said materials for the
purpose of examining them.
The applicant shall
be responsible for the necessary expenses incurred in the seizure and
safekeeping
of the documents and articles in a bonded warehouse or government
warehouse.
SEC. 15. Use of
reasonable force to effect writ. – The sheriff, if refused
admittance
to the premises after giving notice of his purpose and authority or in
the absence of the alleged infringing defendant or expected adverse
party,
his agent or representative, or person in charge or in control of the
premises
or residing or working therein who is of sufficient age and discretion,
may use reasonable force to gain entry to the premises or any part of
the
building or anything therein, to enforce the writ or to liberate
himself
or any person lawfully aiding him when unlawfully detained therein.
SEC. 16. Seizure
of computer disks or other storage devices. – The seizure of a
computer
disk or any storage device may be executed in any of the following
manner:chanroblesvirtuallawlibrary
(a)
by the
physical taking thereof,
(b) by
copying its
contents in suitable device or disk provided by the applicant; or
(c) by
printing out
the contents of the disk or device with the use of a printer.cralaw
When the
computer disks
or storage device cannot be readily removed from the computer to which
they are fitted, the sheriff may take the subject computer from the
custody
of the alleged infringing defendant, expected adverse party or person
in
charge or in control of the premises or residing or working
therein.
SEC. 17. Sheriff’s
return. – The sheriff who executed the writ shall, within three
(3)
days from its enforcement, make a verified return to the court which
issued
the writ. The return shall contain a full statement of the proceedings
under the writ and a complete inventory of the documents and articles
searched,
inspected or copied or seized and impounded, with copies served on the
applicant, the defendant or expected adverse party and the Commissioner.
If not all of the
documents and articles enumerated in the order and writ were seized,
the
sheriff shall so report to the court and state the reasons therefor.
All
objections of the defendant expected adverse party or person in charge
of the premises on the manner and regularity of the service of the writ
shall be included by the sheriff in his return.
SEC. 18. Discharge
of writ by the defendant or expected adverse party. – Without
waiting
for the return to be filed by the sheriff, the defendant, expected
adverse
party or the party whose property has been searched, inspected, copied
or seized may file a motion with the court which issued the writ for
its
discharge with prayer for the return of the documents and articles
seized.
The writ may be discharged
on any of the following grounds:chanroblesvirtuallawlibrary
(a)
that
the writ was improperly or irregularly issued, or excessively enforced;
(b) that
the bond
is insufficient;
(c) that
the safeguards
provided in the writ have been violated by the applicant or the
sheriff;
or
(d) that
the documents
and articles seized are not infringing copies or means for making the
materials
alleged to infringe the intellectual property right of the applicant.cralaw
The writ may
be discharged
in a summary hearing by the court after notice to the applicant, the
sheriff
and the Commissioner.
If the court finds
that the bond is insufficient, it shall order a new bond to be filed by
the applicant within a reasonable time. The discharge of the writ based
on the insufficiency of the bond may only be made if the applicant
fails
to post the new bond within the period fixed by the court.
SEC. 19. Proceedings
on return. – Five (5) days after issuance of the writ, the issuing
judge shall ascertain if the writ has not been served or the return has
been made by the sheriff. If the writ was not served or no return was
made,
it shall summon the sheriff and the applicant to whom the writ was
issued
and require them to explain why the writ was not served or why no
return
has been filed as the case may be. If the return has been made, the
judge
shall, after notice to the applicant, the alleged infringing defendant
or expected adverse party, the sheriff and the Commissioner, ascertain
whether the provisions of this Rule and applicable laws have been
complied
with.
SEC. 20. Failure
to file complaint. – The writ shall also, upon motion of the
expected
adverse party, be set aside and the seized documents and articles
returned
to the expected adverse party if no case is filed with the appropriate
court or authority within thirty-one (31) calendar days from the date
of
issuance of the writ.
SEC. 21. Claim
for damages. – When the writ is discharged on any of the grounds
provided
in this Rule, or where it is found after trial that there has been no
infringement
or threat of infringement of an intellectual property right, the court
upon motion of the alleged infringing defendant or expected adverse and
after due hearing, shall order the applicant to compensate the
defendant
or expected adverse party upon the cash bond, surety bond or other
equivalent
security for any injury or damage the latter suffered by the issuance
and
enforcement of the writ. Should the damages exceed the amount of the
bond,
the applicant shall be liable for the payment of the excess.
When a complaint
is already filed in court, the motion shall be filed with the same
court
during the trial or before appeal is perfected or before judgment
becomes
executory, with due notice to the applicant setting forth the facts
showing
the defendant’s right to damages and amount thereof. The award of
damages
shall be included in the judgment in the main case.
Where no complaint
is filed against the expected adverse party, the motion shall be filed
with the court which issued the writ. In such a case, the court shall
set
the motion for summary hearing and immediately determine the expected
adverse
party’s right to damages.
A judgment in favor
of the applicant in its principal claim should not necessarily bar the
alleged infringing defendant from recovering damages where he suffered
losses by reasons of the wrongful issuance or enforcement of the writ.
The damages provided
f or in this section shall be independent from the damages claimed by
the
defendant in his counterclaim
SEC. 22. Judgment.
– If it appears after trial that the seized documents and articles are
bound to infringe the intellectual property right of the applicant or
that
they constitute the means the means for the production of infringing
goods,
the court shall order their destruction or donation to charitable,
educational
or religious institutions with the prohibition against bringing the
same
in to the channels of commerce. In the latter case, infringing
trademarks
or trade names found on labels, tags and other portions of the
infringing
materials shall be removed or defaced before the donation. In no case
shall
the infringing materials be returned to the defendant.
If the court finds
no infringement, the seized material shall be immediately returned to
the
defendant.
SEC. 23. Direct
filing, provisional docketing and deposit of prescribed filing fee. –
The Regional Trial Courts specially designated to try violations of
intellectual
property rights shall keep a distinct and separate logbook for writs of
search and seizure. The application for a writ of search and seizure
filed
directly with the said courts shall be given a provisional docket
number.
The prescribed filing fee shall be deposited with the branch clerk of
court
and properly receipted for and transmitted to the Clerk of Court within
twenty-four (24) hours from issuance of the order granting or denying
the
application for said writ. If a formal complaint is filed thereafter,
the
Clerk of Court may make a reassessment of the filing fee.
SEC. 24. Separate
logbook. – In every court, there shall be a logbook under the
custody
of the Clerk of Court wherein shall be docketed and entered within
twenty-four
(24) hours after the issuance or denial of the writ search and seizure,
the filing of such application and other particulars thereof. All the
subsequent
proceedings concerning the writ of search and seizure shall be
faithfully
recorded in the separate logbook.
SEC. 25. Effect
of violation. – A violation of any of the terms and conditions of
the
order and the writ of search and seizure or any provision of the Rule
shall
constitute contempt of court.
SEC. 26. Writ
not a bar to other measures. – The availment of the writ of search
and seizure under this Rule shall not prevent the applicant from
resorting
to other provisional measures or remedies provided in existing laws and
procedural rules.
SEC. 27. Effectivity.
– This Rule shall take effect on February 15, 2002 after its
publication
in two (2) newspapers of general circulation not later than January 30,
2002.
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