Director General Josephine R. Santiago of the Intellectual Property Office of the Philippines (IPOPHL) recently issued IPOPHL Memorandum Circular No. 16-007 which amended the Revised Rules and Regulations on Inter Partes Proceedings (IPC Rules). The Revised IPC Rules took effect on 29 July 2016, and shall apply to all Inter Partes cases still pending as of that date. Inter Partes cases include oppositions to applications for trademark registrations, petitions to cancel trademark registrations, petitions to cancel invention patents, utility model registrations, industrial design registrations, or any claim or parts of a claim, and appeals before the IPOPHL's Bureau of Legal Affairs (BLA) and the Office of the Director General, respectively.
Notable amendments include the following:
A. Other Modes of Service Accepted
Prior to the amendments, modes of service were either personal service or service by registered mail made to the IPOPHL and the opposer, petitioner, or respondent as the case may be.
The modes of service were expanded to now include personal service, registered mail, courier service and other similar means as the Director General may deem appropriate. Service can now be made: (1) to the address of a party's legal counsel of record; or (2) to the address of a party's representative of record, if such party has no legal counsel; or (3) if a party has no legal counsel or representative on record, to the address of a party as appearing in its pleadings or as indicated in other relevant record of the Bureau or the IPOPHL, such as intellectual property rights certificate of registration or applications.
As a result, there are more avenues for service to concerned parties and this minimizes the chances that a party will not be duly notified.
B. Expanded Authority of Hearing/Adjudication Officers
Under the amended IPC Rules, Hearing/Adjudication Officers may now issue and sign decisions and final orders, and perform other functions. Previously, they were only authorized to administer oaths and affirmations, issue summons, subpoena duces tecum and ad testificandum, interlocutory orders and preliminary rulings on questions raised, to conduct preliminary and clarificatory hearings, and perform other functions as provided in the Rules.
C. Verification and Certification of Non-Forum Shopping
Previously, the execution and authentication of the Verification and Certification of Non-Forum Shopping must have been done before the filing of the Inter Partes Case. These two requirements must be attached to the Opposition or Petition when filed. The opposer or the petitioner had five (5) days from receipt of the order directing completion of formality defects, extendible for another 5 days upon motion based on meritorious grounds.
Under the amendments, for the purposes of filing an Opposition, the authentication may be secured after the filing of the case provided that the execution of the documents are done prior to such filing. Further, the authentication must be submitted before the issuance of the order of default or conduct of the preliminary conference. Also, the 5-day period is non-extendible. Failure to cure the defect within the 5-day period will cause the dismissal of the case.
Taking the two amendments together, more time is now afforded to a client in a foreign jurisdiction to secure the authentication of the needed documents. However, once the party is ordered to submit the original authenticated documents, the client only has 5 days to do so, under pain of having the case dismissed.
D. Extensions for Filing a Verified Notice of Opposition or Verified Answer
Previously, in no instance shall the filing of the Verified Notice of Opposition exceed ninety (90) days from the date of publication. Likewise, in no instance shall the filing of the Verified Answer exceed 90 days from receipt of the copy of the Notice to Answer.
The amended IPC Rules now allow each party to request two extensions of thirty (30) days each, upon motion based on meritorious grounds and payment of fees. This gives the parties more time to collate evidence and to execute the pertinent authority documents and secure authentication of the same.
E. Allegations of Fraud, Accident, Mistake and Excusable Negligence Now Allowed
A new section was added, clearly declaring that allegations of fraud, accident, mistake and excusable negligence will be taken into account in resolving issues involving delays in the parties' filing of pleadings and compliance to orders. This was not explicitly allowed before, although it was the practice of complaining parties to raise these arguments, if possible.
F. Raffle of Cases
Previously, it was not clear how cases were assigned to Hearing/Adjudication Officers for disposition. The amended IPC Rules now state that the Director BLA /Assistant Director - BLA shall raffle the case to the Hearing/Adjudication Officers if the respondent is in default or if the case is not resolved or dismissed through Alternative Dispute Resolution.
G. No Resetting of Preliminary Conference
Under the amended IPC Rules, no resetting of the preliminary conference is allowed. Thus both parties must be present for the preliminary conference on the date set by the Hearing/Adjudication Officers, under pain of being declared in default.
H. Definite Timeline for Decisions
Decisions and final orders in Inter Partes Cases were previously issued and signed only by the Director - BLA or by the Committee of Three in petitions to cancel patents. The Director - BLA and the Committee of Three did not have a time period within which to issue a decision. Thus, some cases took years before being resolved.
Under the amended IPC Rules, Hearing/Adjudication Officers shall issue the decisions or final orders within sixty (60) days from the date the case is deemed submitted for decision.
This gives parties a definite timeline within which to expect a resolution of the case. Should the decision take longer than 60 days, parties may file motions for the urgent resolution of the case. Likewise, the Hearing/Adjudication Officers may be subject to an administrative case if an unreasonable amount of time has passed without any decision being issued.
I. Process for Appeals
Prior to the amendments, since the decision or order is issued by the Director - BLA or the Committee of Three, the decision was appealable to the Director General within thirty (30) days after receipt of a copy of the decision by the parties. The IPO Amended Rules on Appeal allow the filing of one motion for reconsideration of the Bureau Director's decision prior to appeal. Also, an additional period of fifteen (15) days within which to file the appeal is allowed, upon motion based on meritorious grounds and payment of fees. If there is no timely motion for reconsideration, appeal, or request for additional time to file appeal, the decision of the Bureau Director becomes final and executory. The entry of judgment is issued by the Director - BLA.
In the amended IPC Rules, a party has ten (10) days after receipt of the decision or final order to file an appeal to the Director - BLA with payment of the applicable fees. The appeal shall be immediately denied if it is filed out of time and/or is not accompanied by payment of the fee.
After receipt of the appeal, the Director - BLA shall issue an order for the adverse party to file comment within a non-extendible period of 10 days from receipt of the order.
The Director - BLA shall decide on the appeal within 30 days from the lapse of the period for the filing of a comment, whether a comment is filed or not. Within 30 days after receipt of the decision by the Director - BLA, a party may file an appeal to the Director General.
If a party/counsel of record/representative refuses to receive a copy of the decision, final order, or resolution or has moved out of the address on record, the BLA shall post the decision, final order or resolution in the IPOPHL website. A concerned party has 10 days after posting in the IPOPHL website to file an appeal with payment of the applicable fee.
Lastly, if no appeal is filed, the entry of judgment is issued by the Hearing/Adjudication Officers who signed the decision or final order.
The amendments to the IPC Rules were issued to streamline the process for resolving Inter Partes intellectual property disputes. While we anticipate that all involved, including the IPOPHL, will go through an adjustment process, we believe that the changes will largely be beneficial to stakeholders and practitioners.