Expediting inter partes cases

In the Philippines, intellectual property is protected to foster creativity and resourcefulness as well as to attract foreign investments and develop local products. To this end, the State protects the exclusive rights of trademark and patent owners over their intellectual property by providing for several remedies for its enforcement. Administrative action before the Intellectual Property Office (IPO) is one of such remedies. The Bureau of Legal Affairs (BLA), the quasi-judicial arm of the IPO, has the jurisdiction to hear Inter Partes proceedings, which are limited to patent and trademark related cases. Inter Partes is a Latin phrase which means "having or involving adverse parties."

To achieve a more efficient and expeditious disposition of Inter Partes cases in the BLA, the IPO promulgated Office Order No. 79, Series of 2005, which outlines the amendments to the earlier Regulations on Inter Partes Proceedings (Amendments) and prescribes the summary rules on Inter Partes cases. These Amendments took effect on Sept.1, 2005. To ensure the smooth implementation of the summary rules, the BLA subsequently issued the Guidelines for the implementation of these amendments (BLA Memorandum Circular No. 03, Series of 2005).

The Amendments to the Regulations on Inter Partes Proceedings and its corresponding Guidelines cover the following Inter Partes proceedings:

Petition to cancel an invention patent, utility model registration, industrial design registration, or any claim or parts of a claim;

Petition to cancel registration of topography or layout design of integrated circuits;

Petition for Compulsory Licensing or a license to exploit a patented invention;

Opposition against the registration of a mark published for oppositions; and

Petition to cancel the registration of a mark.

One of the significant amendments is the requirement to file the affidavits of witnesses and the originals of the documents or other requirements together with the Petition or Opposition. These documents shall constitute the "Exhibits" of the Petitioner or Opposer. For instance, to file a Verified Notice of Opposition, where a person seeks to oppose a trademark application because he believes he would be damaged by the registration of a mark, the Amendments now require certified copies of the various Certificates of Registration (CORs) of a mark from other countries to be filed together with the Verified Notice of Opposition. Under the old Regulations, photocopies of the CORs can be initially attached to the Verified Notice of Opposition and its certified copies can be presented subsequently during the pre-trial for marking purposes or during the trial itself. The Amendments will expedite proceedings since original documents are already made available at the first instance.

Under the Amendments, it is now likewise required that the Respondent file a verified Answer together with the originals of the documents and other requirements within 30 days from receipt of the Notice to Answer. These documents shall also constitute the "Exhibits" of the Respondent. Under the old Regulations on Inter Partes Proceedings, the Respondent was given 15 days from service of summons to file the Answer. With this amendment, it is expected that the proceedings would be expedited because of the immediate presentation of respondentís evidence, while at the same time affording the respondent more time to gather and submit original documents.

With the evidence of both parties attached to their respective pleadings, there would no longer be a need to present witnesses during a trial. Rather, the Verified Petition or Opposition and Reply, if any, and its marked "Exhibits" shall constitute the entire evidence for the Petition or Opposer. On the other hand, the verified Answer and Rejoinder, if any, and its marked "Exhibits" shall constitute the evidence for the Respondent.

Under the Amendments, the affidavits of the witnesses, provided they are notarized or duly authenticated by the concerned Philippine consular or diplomatic office, will be admitted in evidence.

With the present amendments, the parties are not given any opportunity to confront the witnesses and cross-examine them based on their executed affidavits. The only way therefore for any of the parties to rebut the allegations of an opposing party’s witness is to present the affidavit of his own witness. The parties, however, are given an opportunity to respond to a witness’ allegations through a Reply (in case of a Petitioner or Opposer) or a Rejoinder (in case of a Respondent). Additional documents may be further submitted to form part of such party’s "Exhibits".

Under the Amendments, the Director of the BLA may, within 15 days after the last responsive pleading has been filed, render a decision based on the pleadings filed. In case a decision based on the pleadings is not rendered, a preliminary conference will be scheduled.

In lieu of the Pre-Trial Conference under the Old Regulations, the BLA may opt to schedule a preliminary conference within 45 days but not less than 30 days from receipt of the last pleading for the following purposes: (1) Submission of the case for mediation; (2) Possibility of an amicable settlement; and (3) Clarification of issues.

By this time, the parties have already gathered and filed all the necessary evidence, making it more likely that a settlement will be concluded.

In the event a settlement is not reached, the preliminary conference would proceed and, upon its termination, the Hearing Officer shall issue an order requiring the parties to submit their respective position papers and, if desired, draft decisions within a non-extendible period of 10 days from receipt of the order. Within 45 days from the date on which the case was submitted for decision, the Director of the BLA shall render a decision.

With the implementation of the Amendments, intellectual property rights holders can now expect the speedy resolution of inter partes cases.

(The author is an Associate of Angara Abello Concepcion Regala & Cruz Law Office (ACCRALAW). He may be contacted at tel. no. 830-8000 or e-mail at [email protected]. Website: www.accralaw.com)