August 22, 2016

On July 11, 2016, the Director General of the Intellectual Property Office of the Philippines (IPOPHIL) signed IPOPHIL Memorandum Circular No. 16-007 which amended the existing Rules and Regulations on Inter Partes Proceedings as revised by Office Order No. 99, series of 2011. The amendments made to the existing rules and regulations were due to  IPOPHIL’s aim to “achieve a more efficient and expeditious resolution” of inter partes cases including 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 Bureau of Legal Affairs and the Office of the Director General, respectively.  The highlight of the recent amendment is that Hearing Officers/Adjudication Officers are now authorized to issue and sign Decisions and Final Orders, which authority used to be only limited to the Director of the Bureau of Legal Affairs or to the Committee of Three, in cases of petitions to cancel patents.

A list of the important rule changes are as follows:

• Rule 2, Section 5 specifies the different methods for service of notice of decisions and other processes. This rule clarifies the acceptable methods of service, which were not enumarated under the current version of the rules.

• Rule 2, Section 6 was amended to expand the express powers of the Adjudication/Hearing Officers by including the power “to issue and sign decisions and final orders” among other things that they are currently authorized to do under the existing rules.

• Rule 2, Section 7 provides an exception to the current rule that authentication and execution of documents be done before the filing of the case. This proposed amendment provides that for purposes of filing an opposition, “the authentication may be secured after the filing of the case provided that the execution of the documents aforementioned are done prior to such filing and provided further, that the authentication must be submitted before the issuance of the order of default or conduct of the preliminary conference under Section 13 of this Rule.” [Emphasis supplied].

• Rule 2, Section 8(c) was amended to limit the period to cure any defect in the verified notice of opposition including motions for extension of time to file notice of opposition and petition for cancellation to 5 days from receipt of order. No extensions of the said 5 day period will be allowed.

• Rule 2, Section 9 provides for the allowance of a third motion for extension of time to file an Answer. In this amendment, the grant for a second motion for extension of 30 days shall be based on “meritorious” grounds. This appears to be more lenient than the current requirement for a second motion for extension, which shall be based on “compelling” grounds. The new rule also allows for a third motion for extension of another 30 days, which “may be granted on compelling grounds and upon payment of the applicable fees; Provided that in no instance shall the filing of the answer exceed one hundred twenty (120) days from the date of the receipt of the copy of the Notice to answer.” Under the current rules, the maximum period within which a party can file an Answer is limited to 90 days.

• A new Section 13 in Rule 2 is added, to read: “In resolving issues involving delays in the parties’ filing of pleadings and compliance to orders, the Bureau shall take into account allegations of fraud, accident, mistake and excusable negligence.“

• Rule 2, Section 13 is renumbered to Rule 2, Section 14 and amended to provide details for the raffle of cases, submission of original and/or certified true copies of documentary exhibits in case respondent is in default, the instances when preliminary conference shall be conducted and when Position Papers are required to be filed.

• Rule 2, Section 16 tackles the “Submission for Decision”. Section 16 provides for a 60-day period within which the Hearing/Adjudication Officers shall issue decisions or final orders from the time the case is submitted for decision.

• Rule 7, Section 2 is similar to the proposed amendment to Section 9 of Rule 2, which provides for the allowance of a third motion for extension to file an opposition and relaxes the requirement for the grant of a second motion for extension. In this amendment, the grant for a second motion for extension of 30 days shall be based on “meritorious” grounds. This appears to be more lenient than the current requirement for a second motion for extension which shall be based on “compelling” grounds.  The new rule which allows for a third motion for extension of 30 days “may be granted on compelling grounds and upon payment of the applicable fees; Provided that in no instance shall the filing of the answer exceed one hundred twenty (120) days from the date of the aforementioned publication.” Under the current rules, the maximum period within which a party shall file an opposition is limited to 90 days.

• Rule 9, Section 1 provides an additional requirement for decisions and final orders issued by the office. The proposed amendment adds that a decision or final order shall be “duly signed by the appropriate authority,” apart from the existing requirements that it must be in writing, and must state clearly distinctly the factual and legal basis for the decision or final order.

• Rule 9, Section 2 includes the complete process of appeal from any decision or final order by an appropriate authority in the IPOPHIL to a Director, and until it reaches the Director General. Under the current rules, this provision only pertains to decisions or final orders already for appeal to the Director General. This has been amended to include an appeal from the Decision or Final Order issued by the Hearing Officer/Adjudication Officer to the Director of the Bureau of Legal Affairs, which has to be filed within 10 days from receipt of the Decision or Final. The Director of the Bureau of Legal Affairs shall decide the appeal within 30 days from the lapse pf the period for the filing of a comment. The amendment also provides that in case a party or his representative is unwilling or unable to receive a copy of the decision/final order/resolution, the Bureau shall post the same in the IPOPHIL website. The 10-day period to appeal will then be counted from the day the decision/final order/resolution was posted in the website.

The amendments shall govern cases filed upon the effectivity of IPOPHIL Memorandum Circular No. 16-007.  It became effective last July 29, 2016.