The Philippine Intellectual Property Office issued IPOPHL Memorandum Circular No. 16-007 introducing further amendments to the Rules and Regulations on Inter Partes Proceedings, which apply to trademark opposition and cancellation cases, cancellation of patents, utility models and industrial designs and petition for compulsory licensing of patents. The revised rules took effect on 29 July 2016.
The key amendments are:
- Hearing officers are now authorized to issue and sign decisions and final orders. Prior to the amendment, all decisions and final orders were signed by the Director of the Bureau of Legal Affairs ("BLA").
- Authentication of documents in support of the opposition/petition may be secured after the filing of the case provided that (1) the execution of documents (signing and notarisation) was done prior to the filing; and (2) authenticated documents must be submitted before the issuance of the order of default or before the preliminary conference.
- In Notices of Oppositions or Motions for Extension of Time to file the opposition, Answers and Petitions, the BLA may issue an order requiring the party to complete or cure defects within five days of receipt. The 5-day period is no longer extendible. Failure to complete or cure the defect shall cause the dismissal of the case or the respondent being declared in default.
- The period to file the Notice of Opposition and the Answer to a Notice of Opposition may now be extended to up to 120 days.
- In case of delay in the filing of pleading/compliance, the BLA shall take into account allegations of fraud, accident, mistake and excusable negligence.
- Should a respondent be declared in default, the hearing officer shall require the opposer/petitioner to submit or present within 10 days the originals and/or certified copies of documentary and object evidence, if necessary.
- The hearing officers shall issue decisions within 60 days from the date the case is deemed submitted for decision.
- The prohibition against motions for reconsideration of decisions and final orders is now omitted.
- One step has been added to the appeals process. The decisions and final orders (now signed by the hearing officers) should be appealed first to the Director of the BLA before the appeal to the Director General.
- There is a non-extendible period of 10 days to appeal the decision or final order of the hearing officer. The same period is given to the other party to comment.
- The Director shall decide on the appeal within 30 days from the lapse of the period for the filing of a comment.
- Within 30 days after receipt of the decision of the Director of BLA, a party may appeal the same to the Director General.
- If a party or its counsel refuses to receive a copy of a decision, final order or notice, or has moved out of the address on record, the IPO shall post the decision, final order or notice in the IPOPHL website. For appeal purposes, the appeal period shall be counted from the date of posting in the website.
The amendments are helpful since, among others, parties are given additional time (from 90 to 120 days) to submit the required documents. The legalization requirement for certain documents was also relaxed as it may now be done after the deadline. IP owners welcome this as the previous rules were overly strict on formalities.
