By: Diega V. Webster
The Intellectual Property Office of the Philippines (IPOPHL) recently issued Memorandum Circular No. 2019-024, amending the Rules and Regulations on Inter Partes Proceedings in resolving intellectual property disputes.
Since 1998, IPOPHL has implemented these rules and regulations on opposition and cancellation cases for trademarks, patents, utility model registrations, industrial design registrations, and registrations of topography or layout design of integrated circuits, and in petitions for compulsory licensing. It has been amended several times—in 2005, and again in 2011, and then in 2016—to reflect the improvements made by IPOPHL on the proceedings. The most recent amendment was issued last December 20, 2019.
The major changes to the Rules include the following:
- Posting of notices and orders in the IPOPHL website. Interestingly, the Rules now recognize technological advances by allowing electronic modes for service and filing, a novel approach to modes of filing and service that is different from the Rules of Court, from which the Rules were derived. Electronic filing has already been allowed in specific courts and offices, such as the Supreme Court and the Department of Justice but is yet to be rolled out to its full effectivity. As of date, while the Supreme Court requires the submission of pleadings and motions in electronic form through CDs or e-mail, parties and counsels are still required to file and serve hard copies thereof, which does not quite fulfill the purpose of electronic filing.The IPOPHL, however, has made use of its website as somewhat of a bulletin board, where notices and orders may now be posted for compliance of the parties, and in which the date of posting in the website is binding to the parties. Very few government agencies and corporations use this method to expedite proceedings, and IPOPHL may pave the way for more government offices to follow its example.Thus, the Bureau of Legal Affairs (BLA) of IPOPHL may post notices and orders in the website if the party, counsel, or its representative a) refuses to receive a copy of the notice or order; b) has moved out of the address without due notice to the BLA; or c) has an incomplete address on record. The reckoning period from compliance to a notice or order published on the IPOPHL website shall begin from the date of posting.Another amendment to the Rules is the new requirement of filing pleadings and supporting documents in PDF and Word files stored in a flash drive. This is similar to the current practice of the Supreme Court requiring electronic documents to be filed together with hard copies through CDs or e-mail.
- Rejection of filings. The new Rule 2, Section 7 provides for the power of the BLA to reject filings that are not compliant with the Rules within 15 days from actual receipt. If rejected, the BLA shall issue an order listing down the deficiencies, which the concerned party is obligated to fulfill within 5 days from receipt of the order.However, rejection of pleadings and documents is not a bar to resubmission provided that they are filed within the period to file the opposition or cancellation case.
- Acceptance of apostilled documents. An Apostille is a certificate that authenticates the origin of a public document. It is issued by a country that is a party to the Apostille Convention to be used in another country which is also a party to the Convention. The Philippines has been a party to the Apostille Convention since May 14, 2019. For the updated list of all “Apostille Countries,” this link is helpful.This considerably reduces the burden of authentication of foreign documents, which can be inconvenient, costly, and time-consuming. Before, a document executed and notarized abroad needed to be certified by the relevant government agency or office and authenticated by the Department of Foreign Affairs (DFA), or what we colloquially know as the “red ribbon.” Now, countries will only need “apostilled” documents by the host government for these to be validly used in the Philippines or in another Apostille country.Rule 2, Section 9 (a) also now allows the authenticated or apostilled document to be secured after the filing of the answer provided that 1) the execution of the documents was done prior to the filing, and 2) the authenticated or apostilled document must be submitted before the preliminary conference.
- Powers of the Assistant Director. Some changes have also been made to the powers of the Assistant Director. For instance, the appeal of decisions and final orders issued by the Assistant Director are now appealable to the Director in accordance with Rule 9 or the rules of appeal, as provided for in the new Rule 2, Section 8 (c).Also, Rule 2, Section 14 now provides that the assignment or raffle of cases shall now be done by the Director, and the Assistant Director may only do such duty in the Director’s absence.
- Reassignment of cases. Rule 2, Section 14 now allows the reassignment or raffle of cases to another hearing/adjudication officer a) in the interest of justice, b) in the exigency of the service, or c) for purposes of efficiency.
- Appeals. Deadlines on filing appeals of decisions or final orders issued by the hearing/adjudication officer or the Assistant Director may now be extended through a motion of the party concerned, which must state meritorious grounds, provided that the motion is filed within the 10-day period to file appeals, and is accompanied by the payment of the appeal fees. Comments to the memorandum of appeal may also be extended under the same conditions.
- Motions for reconsideration. The new Rules have also prohibited the filing of motions for reconsideration of decisions and final orders issued by the hearing/adjudication officer, the Assistant Director, and the Director General in an appeal.
In summary, the changes to the Rules have streamlined some of the processes about the filing of documents and appeals. The acceptance of apostilled documents is a notable streamlining method, as well as the more lenient approach in reassignment or re-raffle of cases. The recognition of technological advances is also laudable, but not unexpected for a forward-looking government agency like IPOPHL. The Rules have made inter partes proceedings more practical and efficient, as it unburdens concerned parties from the technicalities that filings and pleadings usually have. Rather, the Rules have made hearing/adjudication officers, including the Director and Assistant Directors, focus on the merits of the cases with which they are faced, instead of the procedural infirmities. Concerned parties are also given the chance to “repair” their filings by completing the deficiencies, and non-completion is without prejudice to re-filing.
The amendment of the Rules, in general, promotes the protection of intellectual properties in the Philippines and is a notable development to intellectual property law.