The Philippine Intellectual Property Office (“IPOPHL”) has amended the Revised Rules of Mediation and the Rules of Procedure for IPOPHL Mediation Outside Litigation (“Mediation Outside Litigation Rules”), through Memorandum Circular No. 2020-047, Amendments to the Revised Rules on Mediation (“MC 2020-047”) and Memorandum Circular No. 2020-048, Amendment to the Rules of Procedure for IPOPHL Mediation Outside of Litigation (“MC 2020-048”), respectively, both dated 21 December 2020, instituting online videoconferencing as a means of carrying out mediation proceedings under both rules.

MC 2020-047

MC 2020-047 amended Section 2 of the Revised Rules of Mediation by requiring the bureau or office where mediation cases are filed to issue an order stating that the case is submitted for mandatory mediation, directing the parties to inform the Bureau of Legal Affairs-Alternative Dispute Resolution Service (“BLA-ADRS”) of the names, addresses, telephone numbers, email addresses, and other contract details of attendees or representatives to the proceedings, with a statement that parties not present or without a representative shall make themselves available via remote communication to receive queries or communications from the BLA-ADRS. Parties represented must email the BLA-ADRS a scanned copy of their representative’s appropriate proof of authority, or the representative must present the same during the pre-mediation conference. The BLA-ADRS shall also communicate with the parties or representatives to set the date and time of the online pre-mediation conference.

A new Section 3 has been included in the Revised Rules of Mediation stating that the pre-mediation conference will be done via online videoconference, hosted or moderated by the BLA-ADRS, during which parties may opt to use the World Intellectual property Office (“WIPO”) option for mediation. Such option is a joint dispute resolution procedure between the IPO and the WIPO to facilitate the mediation of intellectual property disputes.[1]

MC 2020-047 transposes the former Section 3 into Section 4, mandating that mediation proceedings be conducted via online/virtual videoconferencing, and no longer within the IPO’s physical premises. Nevertheless, the parties may opt for a physical conference or meeting, agreeing therefor to the venue.

The former Section 4 of the Revised Rules of Mediation has now been transposed to Section 5, with MC 2020-047 now stating that fees will be automatically adjusted in accordance with changes in the IPOPHL fee structure. Parties shall now pay the fees within five (5) days after the conduct of online pre-mediation conference and sending the scanned proof of payment to the BLA-ADRS.

MC 2020-047 transposed the former Section 5 of the Revised Rules of Mediation to Section 6, and has adjusted the language to reflect the preference for online videoconferencing. Particularly, non-appearance in has been amended to read as non-participation in online proceedings, with the consequence being dismissal of the case for non-participation of the party who initiated the case, and declaration in default for the respondent.

Finally, the former Section 6 and 7 have been moved up to Sections 7 and 8, respectively, instituting email as the means for parties to submit their compromise agreement, for the approved compromise agreement to be sent back to the parties, for mediators to furnish the parties a Notice of Non-Settlement of Dispute, and for the parties to submit a written request to extend the sixty (60)-day mediation period for another thirty (30) days. 

MC 2020-048

Section 2 of the Mediation Outside Litigation Rules has been amended to allow the filing of a request for mediation with the BLA-ADRS to be done via email, with the requesting party availing of prescribed IPO payment modes or facilities to pay the filing fees, thereby emailing a scanned copy of the receipt to the BLA-ADRS.

Now transposed to Section 3 of the Mediation Outside Litigation Rules, MC 2020-048 streamlined the former Section 4, on the commencement of mediation, by mandating the BLA-ADRS to issue a notice of acceptance of request for mediation, upon submission of the request and payment of filing fees, furnishing the parties copies thereof via email. Then, the BLA-ADRS shall, within three (3) days from sending of the notice, communicate with the parties or their representatives to set the date and time of the online pre-mediation conference. Parties must then provide the BLA-ADRS with the names, addresses, telephone numbers, emails, and other contact details of the proposed attendees or their representatives, with party emailing the BLA-ADRS a scanned copy of the special authority empowering the representative accordingly.

MC 2020-048 introduced a new Section 4 which states that the pre-mediation conference will be done via online videoconference, hosted or moderated by the BLA-ADRS, during which parties may opt to use the World Intellectual property Office (“WIPO”) option for mediation. 

Section 5 of the Mediation Outside Litigation Rules has been amended so that mediation proceedings shall no longer be conducted within the IPOPHL’s physical offices, but shall be carried out via online/virtual videoconferencing. Nevertheless, the parties may opt for a physical conference or meeting, agreeing therefor to the venue.

Finally, the former Section 3 of the Mediation Outside Litigation Rules has been transposed to Section, with MC 2020-048 imposing the extension fee for sessions that go beyond eight (8) mediation sessions, and subjecting the filing and extension fees to automatic adjustment in accordance with changes in the IPO fee structure.

Both MC 2020-047 and MC 2020-048 will take effect thirty (30) days after publication in a newspaper of general circulation and posting in the IPOPHL website.