On October 5 2010, pursuant to a national government directive to encourage the use of alternative dispute resolution to settle disputes, the Intellectual Property Office of the Philippines (IPOPHL) director general issued an order(1) mandating that the following be referred to mediation:
- administrative complaints involving IP rights violations or unfair competition;
- inter partes disputes;
- disputes involving technology transfer payments;
- disputes relating to the terms of a licence involving an author's right to public performance or other communication of his or her work;
- appeals of Bureau of Legal Affairs and Documentation, Information and Technology Transfer Bureau decisions; and
- all other disputes which may be referred to mediation during the settlement period declared by the director general.
On May 25 2011 the director general issued an order establishing the IPOPHL Arbitration and Mediation Centre to administer the alternative dispute resolution mechanisms under IPOPHL.(2)
The mediation procedure gives the parties 90 days in which, among other things, to:
- appoint a mediator;
- gather information;
- identify issues; and
- develop and agree on settlement options.
If the parties agree on a settlement, they shall proceed to execution of a compromise agreement. If not, the IPOPHL mediator shall brief the parties on the possibility of referral to arbitration as another means of settling the dispute. If the parties agree to voluntarily refer the matter to arbitration, it will be settled under the IPOPHL procedural rules for arbitration.(3) Otherwise, it will be referred to the Bureau of Legal Affairs for adjudication.
All disputes listed above shall mandatorily be referred to mediation. This rule applies irrespective of whether a party is domiciled in the Philippines. Because disputes may affect multiple jurisdictions, and because parties to a dispute may be domiciled outside the Philippines, parties now have the option of referring the matter to mediation under the World Intellectual Property Organisation (WIPO).
Recently, IPOPHL and WIPO entered into a memorandum of understanding whereby parties to all mediation proceedings can refer the matter to WIPO mediation instead of IPOPHL mediation. Thus, on October 15 2015, IPOPHL published guidelines on the referral of cases to WIPO mediation. Under the guidelines, if at least one party to a dispute is domiciled outside the Philippines, the parties can refer the matter to WIPO mediation. In this event, the IPOPHL mediation centre will notify the WIPO mediation centre, which will then conduct the mediation under its own procedural rules.
If the parties reach a settlement under WIPO mediation, the WIPO mediation centre will inform IPOPHL for the promulgation of an order of dismissal or a decision based on a compromise. Otherwise, the WIPO mediation centre will similarly inform IPOPHL, so that it can refer the case records to the proper unit for arbitration or adjudication.
This initiative is aimed at, among others, relieving the workload of the IPOPHL Bureau of Legal Affairs so that it can serve the needs of IP stakeholders more efficiently.
For further information on this topic please contact Benjamin Z Lerma at Romulo Mabanta Buenaventura Sayoc & De Los Angeles by telephone (+63 2 848 0114) or email (email@example.com). The Romulo Mabanta Buenaventura Sayoc & De Los Angeles website can be accessed at www.romulo.com.
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