The Philippines: Proposed amendments to inter partes proceedings

On April 5 2016, the Intellectual Property Office of the Philippines (IPOPHL) posted its proposed amendments to the implementing rules and regulations on inter partes proceedings inviting comments from the public. The proposed amendments are intended to simplify and speed up the resolution of cases before the Bureau of Legal Affairs (BLA), the adjudicating bureau of the IPOPHL.

Under Rule 2, inter partes cases refer to: (1) oppositions to applications for trade mark and service mark registrations, (2) petitions to cancel trade mark and service mark registrations, patents, utility models and design registrations, and (3) petitions for compulsory licensing.

The following are the major proposed amendments:

• The hearing/adjudication officers are given the authority to issue and sign decisions and final orders, and to issue orders of defaults, and entry of judgment.

• The assistant director of the BLA is given the authority to assign cases to the different hearing/adjudication officers; referring cases to mediation; issuing final orders of dismissals in cases where the opposer or petitioner fails to cure defects in filing; and to issue entry of judgment.

• Allowing the submission of authenticated documents, particularly documents executed outside the Philippines that need consularisation, after the filing of the case but before the order of default or conduct of the preliminary conference, provided that said documents are executed prior to the filing of the opposition. At present, the authentication by the relevant Philippine consulate office of documents executed outside the Philippines must have been done before the filing of the verified notice of opposition or cancellation, which rule has caused a number of cases to be dismissed on this technicality.

• The Hearing/Adjudication Officers are given 60 days from the date the cases are submitted for resolution, their decisions or final orders.

• The procedure for the filing of a motion for reconsideration from a decision or final order is expressly provided, giving the party 15 days to file the motion for reconsideration, and for the adverse party to file its comment from receipt of the order to file the same, and the decision of the director is appealable to the director general of the IPOPHL within 30 days from receipt of the decision on the motion for reconsideration. Under the current rules, the aggrieved party has the option to either file a motion for reconsideration or file an appeal directly to the director general of the IPOPHL within 30 days from receipt of the decision or final order.

Editha R Hechanova

Hechanova & Co., Inc.Salustiana D. Ty Tower104 Paseo de Roxas AvenueMakati City 1229, PhilippinesTel: (63) 2 812-6561Fax: (63) 2 888-4290editharh@hechanova.com.ph

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