IPOPHL amends inter partes rules (2020)

To provide speedy, quality and effective legal remedies to resolve IP disputes, the Intellectual Property Office of the Philippines (IPOPHL) issued the Amendments to the Rules and Regulations on Inter Partes Proceedings (Memorandum Circular No. 2019-024) that took effect on 15 February 2020. The salient portions of the circular are as follows:

FILING AND SERVICE BY PRIVATE COURIER

  • The filing and service of pleadings, motions, manifestations, service of interlocutory orders, notices, summons, decisions, final orders, and other processes can now be made by private courier.

FILING REQUIREMENTS FOR OPPOSITION AND PETITION

  • A flash drive that contains the PDF and Word files of all the pleadings and supporting documents shall also be filed with the Opposition or Petition.
  • Filings that are not in compliance with the Rules may be rejected within fifteen (15) days after filing or actual receipt by the BLA. If rejected, the BLA shall issue an order, and the party concerned shall be given five (5) days to comply with the order.
  • The above-mentioned rejection is not a bar to the resubmission of the same provided that it is filed within the period to file the opposition or cancellation case.

COMPLETING OR CURING DEFECTS

  • The parties shall be given five (5) days from receipt of the order of the BLA to comply or cure any of the following defects:
  1. Non-payment, in full or in part, of the filing fees and other applicable fees;
  2. Failure to attach any of the following documents to the Opposition, Petition or Answer:
    1. Verification;
    2. Certification of Non-Forum Shopping;
    3. Special Power of Attorney of the representative who signed the pleadings, the verification and the certification of non-forum shopping; or
    4. Proof of the authority to issue or execute the Special Power of Attorn
  3. Failure to attach the originals of the above-mentioned documents.
  • The concerned party has five (5) days to complete or cure the defects, which may be extended for another five (5) days upon motion by the concerned party based on meritorious grounds that shall be explicitly stated and payment of the applicable fees.
  • A second five (5) day extension may also be granted based on the above-mentioned conditions.
  • Failure to complete or cure the defect shall cause the dismissal of the case. However, the final order issued by the Assistant Director is appealable to the Director.

APOSTILIZATION

  • Due to the recent adherence of the Philippines to the Apostille Convention, which took effect on 14 May 2019, the Verification and Certification of Non-Forum Shopping, documents showing the authority of the signatory, affidavits and other supporting documents executed and notarized abroad can now be apostilled in lieu of authorization/legalization. However, the execution and Apostille of these documents must have been done before the filing of the case or the Answer.
  • For purposes of filing an Opposition or an Answer, the Apostille may be secured after the filing of the case provided that the execution of the documents are done before the filing of the Opposition and the Apostille is submitted before the issuance of the order of default or the preliminary conference.

POSTING OF NOTICE TO ANSWER AND OTHER INTERLOCUTORY ORDERS ON THE IPOPHIL WEBSITE

  • The Bureau of Legal Affairs (BLA) shall post the Notice to Answer and other interlocutory orders on the IPOPHIL website if they cannot be served to the other party because of the following reasons:
  1. The party, counsel of record or representative of record refuses to receive the Notice to Answer and other interlocutory orders issued by the BLA;
  2. The party, counsel of record or representative of record has moved out of the address without informing IPOPHIL of the new address; or
  3. The party, counsel of record, or representative of record provided an incomplete address.
  • The concerned party shall have the period prescribed in the Notice to Answer or interlocutory order to comply with the order, reckoned from the date of posting on the website.

 DECISIONS AND FINAL ORDERS

  • No motion for reconsideration of the decision or final order of the Hearing/Adjudication Officer or the Assistant Director shall be allowed.
  • The 10-day period to file a Memorandum of Appeal to the Director of the BLA from the decision of the Hearing/Adjudication Officer or the Assistant Director may be extended upon motion of the Appellant based on a meritorious ground.
  • The 10-day period to file a comment to the above-mentioned Memorandum of Appeal may also be extended upon motion of the Appellee based on a meritorious ground.
  • If the decision, final order or resolution promulgated by the Hearing/ Adjudication Officer, Assistant Director, or Director cannot be served to the concerned party, the BLA shall post the decision, final order or resolution on the IPOPHIL website. Within ten (10) days after posting the decision or final order on the IPOPHL website, the Appellant may file the appropriate appeal.

The full text of the Amendments to the Rules and Regulations on Inter Partes Proceedings is available [here].