August 15, 2016
The Intellectual Property Office of the Philippines (IPOPHL) recently issued Memorandum Circular No. 16-007 further amending the current Rules and Regulations on Inter Partes Proceedings, the rules that govern proceedings related to oppositions to trademark applications, petitions to cancel trademark registrations, petitions to cancel invention patents, utility model registrations, industrial design registrations, or claims and appeals before the Bureau of Legal Affairs and the Office of the Director General. The last amendment of the regulations was made through Office Order No. 99, series of 2011.
The recent amendments to the Rules and Regulations on Inter Partes Proceedings are quite substantial. Among the main changes include the grant of authority to Hearing Officers or Adjudication Officers of the Bureau of Legal Affairs to issue and sign Decisions and Final Orders in the Inter Partes Case where before, only the Director of the Bureau of Legal Affairs, in case of trademarks, or the Committee of Three, in cases of petitions to cancel patents, are authorized to sign Decisions and Final Orders.
The other essential amendment to the Rules and Regulations on Inter Partes Proceedings is the addition of thirty (30) days to the total period to file the opposition, and thirty (30) days to file the answer to the opposition or petition. Prior to the new amendments, the total period to file these pleadings was ninety (90) days.
Among the key amendments brought by IPO Memorandum Circular No. 16-007 are as follows:
- The Memorandum Circular allows the filing of a third motion for extension of 30 days to file the opposition. This brings the total period to file the opposition and supporting documents to 120 days instead of the previous period of 90 days.
- The Memorandum Circular also allows the filing of a third motion for extension of 30 days to file the Answer. This brings the total period to file the Answer and supporting documents to 120 days instead of the previous period of 90 days.
- The new rules allow the authentication of the supporting documents to be done after the filing of the case provided that the execution of the documents are done prior to such filing and provided further, that the authentication must be submitted before the issuance of the order of default or conduct of the preliminary conference.
- The Adjudication or Hearing Officers now have the power to issue and sign decisions and final orders.
- The appeal process has been amended by the new Memorandum Circular. An appeal from any Decision or Final Order by the Hearing Officer or Adjudication Officer to the Director of the Bureau of Legal Affairs has to be filed within 10 days from receipt of the Decision or Final Order.
IPO Memorandum Circular No. 16-007 became effective last July 29, 2016. Only cases filed after this effectivity date will be governed by the new provisions. A copy of circular is available here.