Draft IRR for Enforcement of New PH IP Code

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OFFICE ORDER NO. ____________
Series of 2013
SUBJECT: RULES AND REGULATIONS IN THE EXERCISE OF
ENFORCEMENT FUNCTIONS AND VISITORIAL POWER OF
THE INTELLECTUAL PROPERTY OFFICE, AND CREATING
THEREBY AN INTELLECTUAL PROPERTY RIGHTS (IPR)
ENFORCEMENT OFFICE.
WHEREAS, the State recognizes that an effective intellectual and industrial property
system is vital to the development of domestic creativity, facilitates transfer of
technology, attracts foreign investments, and ensures market access;
WHEREAS, the State recognizes that the use of intellectual property bears a social
function and to this end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and the common good;
WHEREAS, it is the policy of the State to enhance the enforcement of intellectual
property rights in the country and to protect and secure the exclusive rights of
scientists, inventors, artists and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people;
WHEREAS, it is the policy of the State to enhance the enforcement of intellectual
property rights in the Philippines;
WHEREAS, Section 7 (c), (d) and (e) of the Intellectual Property Code, as amended
by Republic Act 10372, expressly provides:
“SEC. 7. The Director General and Deputies Director General. –
“xxx
“(c) Undertake enforcement functions supported by concerned agencies
such as the Philippine National Police, the National Bureau of
Investigation, the Bureau of Customs, the Optical Media Board, and the
local government units, among others;
“(d) Conduct visits during reasonable hours to establishments and
businesses engaging in activities violating intellectual property rights
and provisions of this Act based on report, information or complaint
received by the office;
“(e) Such other functions in furtherance of protecting IP rights and
objectives of this Act.”
NOW THEREFORE, considering the above premises and pursuant to the express
provisions of Section 7 subsection (c), (d) and (e) of the Intellectual Property Code, as
amended by Republic Act No. 10372, the following rules and regulations are hereby
adopted and promulgated:

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RULE I
GENERAL PROVISIONS
Section 1. Title. These Rules shall be known and cited as the “Rules of Procedure on
Intellectual Property Rights (IPR) Enforcement”
Section 2. Applicability. These Rules shall govern the procedure in the exercise of
enforcement functions of the Intellectual Property Office of the Philippines
(IPOPHL), and the exercise of visitorial power based on information, report, and
complaint received by IPOPHL.
Section 3. Construction. These Rules shall be construed and interpreted consistent
with the constitutional rights of a person against unreasonable search and seizure, and
to due process of law.
Section 4. Definition of Terms.
a. Administrative Action - is an official action taken by the Deputy Director
General or an officer-in-charge for IPR Enforcement after the
implementation of the visitorial order which may include, but not limited
to, the issuance of compliance orders and/or filing of appropriate charges
before the Department of Trade and Industry (DTI), the local government
units concerned, or other government agencies.
b. Complaint – is a verified written document signed by a right holder or
authorized representative setting forth the nature of the violation of
intellectual property rights and the enforcement action requested as
defined under these Rules.
c. Counterfeit Goods – shall mean any goods, including packaging, bearing
without authorization a trademark which is identical to the trademark
validly registered with the IPOPHL or a well-known mark declared as
such by a competent authority in the Philippines in respect of such goods,
or which cannot be distinguished in its essential aspects from such a
trademark, and which thereby infringes the rights of the owner of the
trademark in question.
d. Enforcement Action – is any action taken by the IEO relative to the
complaint or report with the end view of ensuring compliance with the
provisions of the Intellectual Property Code, as amended by Republic Act
No. 10372.
e. IPR Enforcement Office (IEO) – is the office created under these rules to
undertake enforcement functions and conduct visits as provided for under
the Intellectual Property Code, as amended.
f. IPR Enforcement Officer – is a duly designated personnel tasked to
evaluate and validate the complaint or report filed before the IEO for
recommendation of the appropriate action to the Deputy Director General
or an officer-in-charge for enforcement.
g. Mission Order – is an order issued by the Deputy Director General or an
officer-in-charge to any IPOPHL personnel or detailed law enforcement
officers to undertake specific enforcement actions.

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h. Pirated Goods - shall mean any goods which are made without the consent
of the right holder or person duly authorized by the right holder and which
are made directly or indirectly from an article where the making of that
copy would have constituted an infringement of a copyright or a related
right.
i. Report – is any information, written or verbal, received by IPOPHL
pertaining to a violation of IPR.
j. Visitorial Order – is the order issued by the Deputy Director General or an
officer-in-charge relative to the conduct of visits to establishments and
business premises subject of a complaint allegedly violating IPR and/or
any provisions of the Intellectual Property Code, as amended.
Rule II
IPR ENFORCEMENT OFFICE
Section 1. IPR Enforcement Office. The IPR Enforcement Office (IEO) shall be
headed by the Deputy Director General or an officer-in-charge for IPR Enforcement
and assisted by duly designated IPOPHL personnel, and detailed/assigned law
enforcement officers.
Section2. Functions of the IPR Enforcement Office. The IEO shall have the following
functions, duties, and responsibilities:
a.) To receive and docket complaints or reports relating to IPR violations from
right holders or authorized representatives, other government agencies, and the
public in general;
b.) To evaluate the complaint or report and take appropriate action thereon to
ensure enforcement of IPR;
c.) To coordinate with the right holders, industry associations and/or relevant
government agencies in the conduct of its enforcement functions;
d.) To formulate policies and programs to ensure enforcement of IPR, and to
prepare an annual report on the accomplishments, progress, and challenges of
IPR enforcement in the country;
e.) To keep all records of enforcement such as, but not limited to, complaints,
reports, minutes of enforcement meetings, post-operation reports, and other
similar or related documents.
f.) To provide assistance in the enforcement of orders, writs, and processes issued
by Bureau of Legal Affairs and the Office of the Director General.
Section 3. IPR Enforcement Office. The IEO shall be headed by the Deputy Director
General or an officer-in-charge to handle IPR enforcement. He shall have the
following powers and functions:
a) To designate an IPR Enforcement Officer to evaluate and validate
complaints and/or reports of IPR violations;

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b) To issue visitorial orders relative to any complaints or reports received by
the IEO on IPR violations;
c) To issue compliance order to any business establishments or entities
inspected and noted to be violating IPR;
d) To issue necessary mission orders;
e) To initiate formal charge and/or administrative complaints before the
Department of Trade and Industry (DTI), the local government units
concerned, or other government agencies.
f) To exercise such other powers as may be necessary to ensure compliance
of the provisions of the Intellectual Property Code, as amended.
Section 4. Assistance of Law Enforcement Agencies and other Government Offices.
In the exercise of its enforcement functions, particularly in the conduct of visits to
business establishments, IPOPHL, through IEO, shall be accompanied by the
concerned law enforcement agencies. If necessary, the Deputy Director General or an
officer-in-charge for IPR Enforcement may request from the concerned law
enforcement agencies a detail of law enforcement officers in IEO to ensure the
smooth implementation of its enforcement functions.
RULE III
IPR ENFORCEMENT ACTIONS
Section 1. Who May File a Complaint. Any right holder or authorized representative
may file a verified complaint under these Rules.
Section 2. Form and Contents of the Complaint. The complaint shall be verified and
shall contain the following:
a. Name and address of the complainant;
b. Power of attorney/authority of the authorized representative;
c. Certificate of registration of the intellectual property involved from the
issuing-Philippine government agency or in case of a well-known mark, a
declaration/certification by a competent authority in the Philippines to that
effect;
d. Name and address of the respondent;
e. Nature of the IPR violation;
f. Complete details of the place or establishment to be subjected for visit;
g. Certification against non-forum shopping.
Section 3. Covered Intellectual Property Rights Violations. For purposes of these
Rules, only enforcement against manufacturing, production, importation, exportation,
distribution, trading, and offering for sale, including other preparatory steps necessary
to carry out the sale of counterfeit and pirated goods shall be covered by the exercise
of IPOPHL’s enforcement power and provided that there is no pending case before
any office, tribunal, quasi judicial body, or court involving the same issue/s or subject
matter.
The subsequent filing of a complaint by the right holder or representative involving
the same issue or subject matter before any office, tribunal, quasi judicial body, or
court shall immediately divest the IEO of its jurisdiction.

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Section 4. Actions on the Complaint. A complaint for IPR enforcement under these
Rules shall, upon payment of the required fees, be referred to an IPR Enforcement
Officer who shall evaluate and validate the allegations of the complaint, and upon due
evaluation thereof and finding of evidence of violation of IPR, recommend to the
Deputy Director General or an officer-in-charge for IPR Enforcement any or all of the
following enforcement actions:
a. Issuance of notice/warning to the respondent/s to observe compliance with
the provisions of the Intellectual Property Code, as amended;
b. Issuance of visitorial order on the subject premises;
c. Issuance of compliance order against the respondent/s; or
d. Immediate filing of administrative complaint before the DTI, the local
government unit concerned,or other government agencies
e. Referral of the case to a law enforcement agency for case build-up;
f. Recommendation of application for search warrant;
g. Dismissal of the complaint;
h. Referral of the case to other government agencies for filing of charges for
violation of other laws, rules or regulations; or
i. Such other actions necessary to ensure compliance with the provisions of
the IP Code, as amended.
Section 5. Filing of Report. The IEO may receive any and all reports and information
relative to intellectual property rights violations for the purpose of monitoring
violations of the provisions of the IP Code, as amended, and possible case build-up
thereof.
Section 6. Actions on the Report. Reports and information received by IEO shall be
duly recorded and validated by the designated IPR Enforcement Officer. Upon
recommendation of the IPR Enforcement Officer, the concerned right holder or
authorized representative shall be required to coordinate with the IEO to pursue and
maintain enforcement actions on the report. Failure of the right holder or authorized
representative to initiate the necessary complaint within one (1) month from notice
shall cause the dismissal of the report, and due notice thereof shall be relayed to the
informant on the apparent lack of interest of the right holder to pursue the complaint.
Section 7. Confidentiality of Records. In order not to affect the outcome of the
enforcement actions of the IEO, the records relating to the complaint and/or report as
well as the recommendation of the IPR Enforcement Officer, shall be treated as
confidential and shall not be divulged to any person until any enforcement action, as
defined under Section 4 Rule III of these Rules, has been issued/conducted by the
IEO.
Section 8. Issuance of Visitorial Order. After due evaluation, the Deputy Director
General or an officer-in-charge may issue a visitorial order on the subject business
establishment for the purpose of ensuring compliance with the provisions of the
Intellectual Property Code, as amended. The visitorial order shall in no case be valid
for more than ten (10) days from issuance thereof.

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Section 9. Contents of Visitorial Order. The visitorial order shall contain the
following:
a. Name and address of business establishment;
b. Name of respondent/s, if identified;
c. Nature of the complaint;
d. Subject intellectual property rights;
e. Names of authorized personnel;
f. Period of effectivity of the order.
Section 10. Procedure in the Service of Visitorial Order. In the conduct of visit to the
subject business establishment, the authorized personnel thereof must act with
courtesy to the owner/s, employee/s, and/or representative/s of the business
establishment.
Upon arrival at the premises, the authorized personnel must identify themselves as
such, and present to the owner/s employee/s, or representative/s of the business
establishment the visitorial order. The nature of the visit and the complained IPR
violation must be duly explained.
If upon arrival at the premises, the authorized personnel together with the product
specialist or right holder or representative/s have seen in plain view the presence of
counterfeit and/or pirated goods, and they have reasonable ground to believe that the
business establishment is engaged in the manufacturing, production, importation,
exportation, distribution, trading, and offering for sale, including other preparatory
steps necessary to carry out the sale of counterfeit and/or pirated goods, the said
determination shall be forthwith relayed to the owner/s, employee/s, or
representative/s of the business establishment. Any objections or justifications by the
owner/s, employees/s or representative/s of the business establishment shall be noted
by the authorized personnel.
The said determination and objection, if any, must be duly stated in the post-operation
report and shall serve as the basis of enforcement actions under these Rules.
Section 11. Submission of Report and Recommendation. Within ten (10) days from
the conduct of visit, a post-operation report together with the recommendation thereof
must be submitted to the Deputy Director General or an officer-in-charge for IPR
Enforcement for appropriate enforcement action.
Section 12. Issuance of Compliance Order. The Deputy Director General or an
officer-in-charge for IPR Enforcement may issue a compliance order to the concerned
business establishment before the appropriate administrative action is initiated.
Section 13. Compliance Period. Any person or business entity served with a
compliance order relative to the complained violation of IPR or provisions of the IP
Code may avail of the compliance period of not more than sixty (60) days to avoid
being subjected to an administrative action.
Section 14. Filing of Administrative Action. If there is reasonable ground to believe
that a violation of the relevant trade and consumer laws, or local government

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ordinances has been committed, the IEO may initiate the appropriate charges before
the DTI, the local government units concerned, or other government agencies.
RULE IV
FINAL PROVISIONS
Section 1. Separability Clause. – If any section or provision of these Rules shall be
held to be invalid, the remaining provisions shall remain in full force and affect as
completely as if the part held invalid had not been included therein.
Section 2. Furnishing of Certified Copies. – The IPOPHL Financial Management and
Administrative Service (FMAS) is hereby directed to immediately file three (3)
certified copies of these Rules with the University of the Philippines Law Center, and
one (1) certified copy each to the Office of the President, the Senate of the
Philippines, House of Representatives, the Supreme Court of the Philippines, and the
National Library.
Section 3. Effectivity. These Rules shall take effect within fifteen (15) days from
publication in a newspaper of general circulation.

Draft IRR for Enforcement of New PH IP Code

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