Concerned individuals or entities must take note of the various requirements and changes introduced by the Amended Rules in relation to the reglementary periods, the modes of filing and service, and the resolution of inter partes cases.
Quisumbing Torres is able to advise on inter partes cases and other IP disputes and may assist in navigating the Amended Rules to ensure that benefits from the same are maximized and effectively availed of.
In more detail
Below are the salient changes introduced by the Amended Rules:
1. Requirement of filing and service by electronic mail
- Under the Amended Rules, it is now mandatory for the filing and service of pleadings, motions and manifestations, as well as the service of decisions, final orders, interlocutory orders, notices, summons and other processes to be done through electronic mail.
- Rule 2, Section 5 of the Amended Rules provides that all pleadings and submissions must be filed using the email address email@example.com, and copies of decisions, final orders, interlocutory orders, notices, summons and other processes shall be served via the email address firstname.lastname@example.org to the email address of the party's counsel or representative. For this purpose, opposers and petitioners are required to indicate their email addresses on all pleadings.
- Pleadings and submissions are deemed filed on the date the IPO receives the email. Parties must attach their evidence to the email. For large files, parties are allowed to do the following:
- Use compressed (zip) files and Google Drive, among others
- Send multiple emails containing the evidence, provided that the IPO receives the pleading and the evidence on the same date or within a period of five calendar days from receipt of the IPO's acknowledgment
- Parties have three calendar days from the date of electronic transmission by the IPO of the decision, order, entry of judgment, notice, summons or other processes within which to acknowledge receipt thereof by sending a reply email to the email address email@example.com. The date of the acknowledgment is deemed the date of receipt thereof by the party. If a party fails to acknowledge receipt within the required period, the party concerned is deemed to have received the decision, order or notice on the date of transmission via email.
2. Single pleading involving two or more applications or registrations
- Under the Amended Rules, a single pleading (Opposition, Petition or Answer) involving two or more applications for trademark registration or two or more registrations is now allowed, provided that it involves the same parties. In such instance, each application or registration opposed or sought to be cancelled still constitutes one and distinct case, requiring the payment of applicable fees corresponding to each and every application opposed, or registration or patent sought to be cancelled.
- For this purpose, the opposer or petitioner may submit only a single power of attorney and/or proof of authority of the signatory, including verification and certification of non-forum shopping.
3. Submission of required documents and payment of applicable fees
- Under the Amended Rules, the IPO will send an email acknowledging receipt of a party's Opposition, Petition or Motion of Extension. The opposer or petitioner has five calendar days from receipt of the IPO acknowledgment within which to submit the following required documents, if any of which was not earlier attached in the submission:
- Verification and certification of non- forum shopping
- Affidavits of witnesses, documentary or object evidence
- Other supporting documents mentioned in the pleading, together with their translation in English if not in the English language
- Power of attorney or other proof of authority of the party's counsel or representative to sign the pleading and the required documents, and to represent the party to the case
- With respect to the payment of the applicable fees, the Amended Rules require the opposer or petitioner to pay within a period of five calendar days from receipt of the electronic statement of account from the IPO. Proof of payment thereof must be sent to the IPO via email within three calendar days from the date of actual payment.
4. Timeline for the filing of Oppositions and Answers
- Rule 7, Section 2 and Rule 2, Section 9(d) of the Amended Rules provide for a shorter extension period for the filing of Oppositions and Answers.
- Under the Amended Rules, only a single extension of 45 calendar days from the original due date to file the Opposition or the Answer, as the case may be, may be granted upon filing of the proper motion.
- This is in contrast to the current rules, which give the relevant party as long as 120 calendar days, in the form of three motions for extensions of 30 calendar days each, to file the Opposition or the Answer.
- Concerned individuals or entities must take note of the new reglementary periods to avoid the dismissal of the Opposition (on the part of the opposer) or declaration in default (on the part of the respondent).
5. Changes in the conduct of hearings/conferences
- The Amended Rules, which now refer to preliminary conferences as "hearings/conferences," introduce a period for the conduct of the same, which is 45 calendar days from the date the case was raffled to the adjudication officer. This amendment is in line with the IPO's goal of streamlining procedures for inter partes cases.
- The procedure in the current rules for the conduct of hearings/conferences is adopted by the Amended Rules. Immediately after receiving the records of the case, the Adjudication Officer must conduct hearings/conferences for the purposes of submission and/or presentation for inspection and comparison of the required documents attached to the pleadings. However, the Amended Rules now expressly provide that failure to submit or present during the period for inspection and/or comparison the originals and/or certified copies of the documentary evidence and object evidence renders the same inadmissible.
- Further, under the current rules, a party who fails to attend the preliminary conference or whose representative attends without the appropriate authorization is deemed to have waived the right to submit position papers. This provision is no longer found in the Amended Rules and thus, the said party may still submit position papers.
6. Timeline for the rendition of decision/resolution
- Rule 2, Section 16 of the Amended Rules provides for a shorter period of 20 calendar days, extendible for another 20 calendar days for justifiable reasons, from the date the case is deemed submitted for decision within which the Adjudication Officer must issue a decision or final order. This is shorter than the period provided under the current rules, which give Adjudication Officers 60 calendar days from the date the case is deemed submitted for decision to render judgment.
- The same timeline for the resolution of the appeal by the Director is provided under the Amended Rules. This is in contrast to the period of 30 calendar days from the lapse of the period for the filing of a comment provided under the current rules.
7. Timeline for the filing of an appeal to the Director, and a comment thereto
- In contrast to the other provisions of the Amended Rules, which generally shortened reglementary periods, the Amended Rules lengthened the period within which to file an appeal with the Director, and a comment thereto.
- Under Rule 9, Section 2(a) of the current rules, a party has only 10 calendar days from receipt of the decision or final order of the Adjudication Officer within which to file an appeal to the Director. The Amended Rules provide for a longer period of 15 calendar days, extendible for another 15 calendar days upon motion from receipt of the decision or final order, within which to file a memorandum of appeal to the Director.
- The same liberality is adopted for the filing of a comment, giving the appellee a longer period of 15 calendar days, also extendible for another 15 calendar days upon motion from receipt of the appeal, within which to file a comment.
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