Rules on inter partes proceedings amended in the Philippines
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Rules on inter partes proceedings amended in the Philippines

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New rules affecting deadlines for actions in inter partes cases in the Philippines come into effect on June 30 2022, as Editha R Hechanova of Hechanova & Co explains

Starting from June 30 2022, the amended Rules and Regulations on Inter Partes Proceedings issued by the Intellectual Property Office of the Philippines (IPOPHL) under IPOPHL Memorandum Circular No. 2022-013, shall take effect.

This amendment is pursuant to IPOPHL’s vision to modernise its adjudication procedures to benefit stakeholders in terms of accessibility of services, resiliency, and cost efficiency.

The amended rules will apply to all inter partes cases including appeals to the Director of the Bureau of Legal Affairs (BLA), the adjudication bureau of the IPOPHL, filed from June 30 2022. The salient points of the circular are summarised here.

Reduction in period to file opposition

The present rule mandates the filing of the verified opposition or a motion for extension to file the opposition within 30 days from the date of publication in the IPOPHL Gazette. It allows the opposer three extensions on meritorious grounds of 30 days each.

Under the amended Rules, the filing of the verified notice of opposition or motion for extension is still 30 days from the publication in the Gazette, but the motion for extension is reduced to 45 days, and no further extension is allowed.

This new extension period applies equally to the filing of the verified answer.

Period to appeal increased

The existing rule is that the period to appeal the first-instance decision of the adjudication officer (AO) is 10 days from receipt of the decision.

The amended rules increase this period to 15 days, and allow an extension period of 15 days, upon proper motion and payment of the filing fees.

Effectively, the period to appeal has been increased from 20 calendar days to 30 days.

Period to submit documents

Under both the current and amended rules, in the case of oppositions, the execution of documents (such as power of attorney and affidavit of witnesses) must have been done before the filing of the opposition. The authentication of these documents by apostille or consularisation can be made after the filing and must be submitted before the issuance of a default order or the conduct of the preliminary conference.

Under the revised rules, the submission of these apostilled or consularised documents must be done during the period of inspection and comparison of the documents.

If there is a default order, the submission must be made within 10 days from receipt of the default order.

If the respondent is not in default, and mediation failed, the submission must be done during the preliminary conference, and the period of submission, presentation, and comparison of the documents shall not exceed 45 days from the time the case was assigned to the AO.

These periods apply to cancellation cases.

Issuance of decisions

After the lapse of the reglementary period within which to file the position paper, the AO shall declare the case submitted for decision.

The AO shall issue the decision within 20 calendar days, subject to extension of another 20 days, or a total of 40 days.

This same period applies to the director of the BLA/IPOPHL for appealed cases.

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