The Intellectual Property Office of the Philippines (IPOPHL) issued a Memorandum Circular No. 2022-013 on “Amendments to the Rules and Regulations on Inter Partes Proceedings” on 27 May 2022, which took effect on 30 June 2022.
These amendments are in response to challenges posed by the Covid-19 pandemic, to ensure the continuity of operations and the delivery of services by the IPOPHL, and also to benefit the stakeholders, in terms of accessibility of services, resiliency, and cost efficiency.
A summary of the relevant amendments to the Rules and Regulations on the proceedings are highlighted as follows.
- Filing and Service through E-Mail
1.1 E-mail is now the primary mode for filing, service, delivery and transmission of pleadings, motions, manifestations, services of interlocutory orders, notices, summons and other processes. Designated e-mail addresses have been set up for such purposes.
1.2 Pleadings and submissions are deemed filed on the date of receipt of e-mail. On the other hand, counsel or representative has up to three (3) days to acknowledge receipt and the date of acknowledgment shall be deemed as date of receipt. In the absence of an acknowledgement, the transmission date shall be considered as the date of receipt.
- Filing Requirements for Opposition and Petition
2.1 It is now a requirement for the submission of opposition or petition to include names and addresses including email addresses of the opposer or petitioner and other parties involved in the opposition or petition.
2.2 The following documents should also be attached in the opposition or petition proceedings:
- Verification and certification of non-forum shopping
- Affidavits of witness, documentary or object evidence
- Other supporting documents mentioned in the notice of opposition or petition in English (translation is required if documents are not in English)
- Power of Attorney or other proof of authority of the counsel or representative of the party to sign the pleadings, verification, certification of non-forum shopping, and to represent the party in the case
2.3 Further, it is allowable now to file a single pleading for opposition or petition involving more than one (1) application or registration, provided, that it involves the same parties and each application or registration or patent opposed or sought for cancellation constitute one and distinct case. The opposer or petitioner has to pay the applicable fees corresponding to each and every application opposed or registration or patent sought to be cancelled. Through this manner, the opposer or petitioner only needs to submit a single power of attorney and/or proof of authority of the signatory including the verification and certification of non-forum shopping.
- Action on the Notice of Opposition or Motion for Extension to File Notice of Opposition, and Petition
3.1 Upon receipt of the opposition, or motion for extension to file opposition or petition by the IPOPHL, the Registrar will send an acknowledgement receipt of the request. Thereafter, the opposer or petitioner has a period of five (5) days from the acknowledgement to submit any of the required documents (as mentioned in point 2.2), if any.
3.2 The opposer or petitioner has a period of five (5) days from receipt of the electronic statement of account (“e-soa”) to pay the applicable fees through IPOPHL online payment services. Proof of payment must be provided to the Registrar via email within three (3) days from the date of actual payment.
3.3 Once the opposition or petition is determined to be compliant with the requirements, IPOPHL shall immediately issue a notice to answer together with a copy of the opposition or petition to the party on record. If no email address is provided, service of interlocutory orders, notices and other processes shall be made via personal and/or courier service. If failure through personal and/or courier services, the notice to answer shall be published or posted in the IPOPHL website and shall be deemed as service to the respondent.
- Answer
4.1 The respondent has thirty (30) days to file a verified answer from receipt of a copy of the notice to answer, and upon motion on meritorious grounds, be granted an additional period of forty-five (45) days period to file the answer.
4.2 The following documents should also be attached in the answer:
- Verification and certification of non-forum shopping
- Affidavits of witness, documentary or object evidence
- Other supporting documents mentioned in the notice of opposition or petition in English (translation is required if documents are not in English)
- Power of Attorney or other proof of authority of the counsel or representative of the party to sign the pleadings, verification, certification of non-forum shopping, and to represent the party in the case.
4.3 Similarly above, a single pleading involving more than one (1) application or registration is allowed, provided, that it involves the same parties and each application or registration or patent opposed or sought for cancellation constitute one and distinct case. The respondent only needs to submit a single power of attorney and/or proof of authority of the signatory including the verification and certification of non-forum shopping.
4.4 Upon receipt of the answer, or motion for extension to file to file answer by the IPOPHL, the Registrar will send an acknowledgement receipt of the request. The respondent has a period of five (5) days from the acknowledgement receipt from the IPOPHL to submit any of the required documents for the answer (as mentioned in point 4.2), if any.
- Assignment/Raffle of Cases; Presentation, Inspection or Comparison of Evidence
5.1 The period of submission, presentation, inspection and comparison shall not exceed forty-five (45) days from the date of the case was raffled to the adjudication officer.
5.2 The Amended Rules also state that failure to submit or present during the period of inspection and/or comparison the originals and/or certified copies of the documentary evidence, and object evidence shall render the documents inadmissible.
- Submission for decision
6.1 The adjudication officers shall now issue the decisions or final orders within twenty (20) calendar days from the date the case is deemed submitted for decision, which period may be extended for another twenty (20) calendar days for justifiable reasons. This period is shorter than the previous regulations, wherein it give the adjudication officers sixty (60) calendar days from the date the case is deemed submitted for decision to provide their final judgement.
- Period to file Opposition
7.1 The verified notice of opposition has to be filed within thirty (30) days from the date of publication of the trademark application, and upon motion on meritorious grounds, be granted an additional period of forty-five (45) days period to file the opposition.
- Appeal to the Director
8.1 Within fifteen (15) days from the receipt of the decision or final order from IPOPHL, a party may file a memorandum of appeal to the Director, and upon motion on meritorious grounds, be granted an additional period of fifteen (15) days to file the appeal.
8.2 The appellant has a period of five (5) days from receipt of the electronic statement of account (“e-soa”) to pay the applicable fees through IPOPHL online payment services. Proof of payment must be provided to the Registrar via email within three (3) days from the date of actual payment.
8.3 Once the appeal is determined to be compliant with the requirements, the Director shall issue an order for the appellant to file comment within a period of fifteen (15) days from receipt of said order. The period to file a comment may be granted an additional period of fifteen (15) days upon motion on meritorious grounds.
8.4 The Director shall resolve or dispose the appeal within twenty (20) calendar days from the date of appeal is submitted for resolution or disposal, which period may be extended for another twenty (20) calendar days for justifiable reasons.
Conclusion
As mentioned above, the amended Rules and Regulations are to streamline the procedures for inter partes proceedings, and to modernise and digitalise its system, processes and records.
For any interest in filing opposition and petitions, do contact our firm so we can assist you on the amended Rules for inter partes cases.