Amendments to the Rules and Regulations on Inter Partes Proceedings

May 27, 2014

IPO OFFICE ORDER NO. 068-14

 

WHEREAS, one of the strategic goals of the Intellectual Property Office of the Philippines (IPOPHL) is to provide speedy, quality and effective legal remedies and be the forum of choice to resolve IP disputes; cCESTA

WHEREAS, in support of the aforementioned goal, the Bureau of Legal Affairs ("BLA") continuously reviews and streamlines its operations, systems, processes, including administrative procedures, in resolving disputes and controversies involving IP rights;

WHEREAS, the Rules and Regulations on Inter Partes Proceedings were amended/modified per Office Order No. 79, s. 2005 which took effect on 01 September 2005, Office Order No. 12, s. 2009 (Amendments to the IPO Uniform Rules on Appeal), and Office Order No. 99, s. 2011 which became effective on 17 July 2011;

WHEREAS, there is a need to further amend the existing rules in order to achieve a more efficient and expeditious resolution of Inter Partes cases in the Bureau of Legal Affairs;

NOW, WHEREFORE, the Regulations on Inter Partes Proceedings, as amended are hereby further amended as follows:

SECTION 1. Rule 2, Section 7 is hereby amended to read, as follows:

Section 7. Filing Requirements for Opposition and Petition. — (a) The opposition or petition must be in writing, verified and accompanied by a certification of non-forum shopping, and in due form as prescribed by these Rules. The opposer or petitioner shall file only the original of the opposition or petition, with proof of service to the respondent or representative/agent on record. The periods to file the opposition or petition are provided in the succeeding rules.

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(b) The opposer or petitioner shall attach to the opposition or petition the affidavits of witnesses, documentary or object evidence, which must be duly-marked starting from Exhibit "A", and other supporting documents mentioned in the notice of opposition or petition together with the translation in English, if not in the English language. The verification and certification of non-forum shopping as well as the documents showing the authority of the signatory or signatories thereto, affidavits and other supporting documents, if executed and notarized abroad, must have been authenticated by the appropriate Philippine diplomatic or consular office. The execution and authentication of these documents must have been before the filing of the opposition or petition.

(c) For the purpose of the filing of the opposition, the opposer may attach, in lieu of the originals or certified copies, photocopies of the documents mentioned in the immediately preceding paragraph, as well as photographs of the object evidence, subject to the presentation or submission of the originals and/or certified true copies thereof under Sections 13 and 14 of this Rule.

SECTION 2. Rule 2, Section 8, paragraphs (c) and (d), are hereby amended to read as follows: ECSaAc

(c) The opposer, including those who file a motion for extension of time to file notice of opposition, or the petitioner shall be given a period of ten (10) days from receipt of the order to complete or to 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:

(i) Verification;

(ii) Certification of non-forum shopping;

(iii) Special Power of Attorney of representative(s) who sign the pleadings, the verification, and the certification of non-forum shopping; and the proof of authority to issue or execute the Special Power of Attorney; and

(iv) Proof of authentication by the appropriate Philippine diplomatic or consular office, of the foregoing documents, if executed abroad.

Provided, that if what are attached to the opposition or petition are mere photocopies of the abovementioned documents, the opposer or petitioner shall be required to submit the originals within 10 days from receipt of the order.

The 10-day period to complete or cure the defects in the filing may be extended for another 5 days upon motion by the opposer or petitioner based on meritorious grounds which shall be explicitly stated in the motion, and upon payment of the applicable fees. A second 5-day extension may be granted based on the aforementioned conditions. No third extension shall be allowed.

Failure to complete or cure the defect shall cause the dismissal of the case.

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(d) If the opposition or petition is determined to be compliant with the requirements, or upon compliance with the order provided in par. (c), the Bureau shall immediately issue a Notice to Answer, addressed to and served upon the respondent or representative/agent on record.

SECTION 3. Rule 2, Section 9, paragraph (d) is hereby amended to read as follows: AHCcET

(d) The respondent shall be given a period of 10 days from receipt of the order to complete or to cure any of the following defects:

(1) Non-payment in full or in part of the applicable fees, for motions for extension to file answer;

(2) Failure to attach any of the following documents:

(i) Verification;

(ii) Special Power of Attorney or representative(s) who sign the pleadings, the verification; and the proof of authority to issue or execute the Special Power of Attorney; and

(iii) Proof of authentication by the appropriate Philippine diplomatic or consular office, of the foregoing documents, if executed abroad.

Provided, that if what are attached to the Answer are mere photocopies of the abovementioned documents, the respondent shall be required to submit the originals within 10 days from receipt of the order.

The 10-day period to complete or cure the defects in the filing may be extended for another 5 days upon motion by the respondent based on meritorious grounds which shall be explicitly stated in the motion, and upon payment of the applicable fees. A second 5-day extension may be granted based on the aforementioned conditions. No third extension shall be allowed.

SECTION 4. Separability Clause. — Any portion or provision of this Office Order that may be declared invalid shall not have the effect of nullifying other portions or provisions hereof as long as such remaining portions or provisions can still subsist and be given effect in their entirety.

SECTION 5. Repealing Clause. — All rules and regulations or parts thereof inconsistent herewith are hereby repealed or modified accordingly.

SECTION 6. Filing of Certified Copies. — Certified copies of these Office Order shall be filed with the UP Law Center, Department of Trade and Industry, the Senate of the Philippines, the House of Representatives, the Supreme Court of the Philippines and the National Library. ICAcaH

SECTION 7. Effectivity. — This Office Order takes effect fifteen (15) days after publication in a newspaper of general circulation.

Signed this 27th of May 2014 at Taguig City, Philippines.

 

(SGD.) ATTY. ALLAN B. GEPTYOIC-Director General