News & Updates

The Philippine Intellectual Property Office (“IPOPHL”) issued on 27 May 2022 Memorandum Circular No. 2022-013 (“MC 2022-013”) amending  the Rules and Regulations on Inter Partes Proceedings (“Rules”).

The amendments to the Rules shall take effect and apply to all inter partes cases, including appeals to the BLA Director, filed starting 30 June 2022:

1. Filing and Service via Email (Rule 2, Section 5);

    

   • The IPOPHL formally amends the Rules in requiring the filing and service of pleadings, motions, manifestations, and service of interlocutory orders, notices, summons and other processes via email.
   • Service or delivery of copies of decisions, final orders, and entries of judgment shall also be made via email.
   • In response to the challenges brought by the COVID-19 pandemic, the IPOPHL previously issued MC 2020-031, MC 2020-034, and MC 2021-015 which require filing and service via email. However, under MC 2021-015, the service via email of decisions and final orders was only optional and not mandatory. MC 2022-013 now expressly states that the service or delivery of copies of decisions, final orders, and entries of judgment shall also be done via email.
     
     

      

2. Filing Requirements for Opposition and Petition (Rule 2, Section 7);

    

   • The opposer/petitioner is required to file the opposition/petition via email and must include the email addresses of the opposer/petitioner and the other parties, if known.
   • A single pleading for the opposition or petition involving more than one (1) application or registration is allowed, provided that it involves the same parties and each application, registration, or patent opposed or sought for cancellation shall constitute one and distinct case.
     
     

      

3. Action on the Notice of Opposition or Motion for Extension to File Notice of Opposition, and Petition (Rule 2, Section 8);

    

   • Upon receipt of the IPOPHL Bureau of Legal Affairs (“BLA”) of the opposition/petition or motion for extension, the BLA shall send an acknowledgment of the receipt. The opposer/petitioner has a period of five (5) days from receipt of the acknowledgment to submit any of the required documents which was not attached to the opposition/petition, if any.
   • The opposer/petitioner has a period of five (5) days from receipt of the electronic statement of account (“e-soa”) to pay the applicable fees through the IPOPHL online payment facilities. The proof of payment must be sent to the BLA via e-mail within three (3) days from the date of the actual payment. The e-soa payment procedure was adopted from MC 2020-034.
   • The opposition/petition may be dismissed for non-payment of fees within the prescribed period, failure to comply with the e-soa payment procedure, or failure to file the opposition or motion for extension to file opposition/petition through the prescribed mode.
   • If no email address is provided on record, service of interlocutory orders, notices, decisions or final orders, and other processes shall be made to respondent via personal service and/or courier service, or by registered mail. In case of failure of service, the notice to answer shall be published in the IPOPHL website and shall be deemed as service to the respondent.
     
     

      

4. Answer (Rule 2, Section 9);

    

   • The respondent shall file a verified answer within thirty (30) days from receipt of a copy of the notice to answer. MC 2022-013 now allows the respondent to request upon motion only an additional forty-five (45) day period to file the answer.
   • A single pleading involving more than one (1) application or registration is also allowed.
   • Upon receipt of the BLA of the answer or motion for extension, the Bureau shall send an acknowledgment of the receipt. The respondent has a period of five (5) days from receipt of the acknowledgment to submit any of the required documents which was not attached to the answer, if any.
   • The respondent shall be declared as in default if it fails to file an answer/motion for extension to file answer, including the payment of fees within the prescribed period or failure to file the answer or motion through the prescribed mode.
     
     

      

5. Assignment/Raffle of Cases; Presentation, Inspection or Comparison of Evidence (Rule 2, Section 14);

    

   • The period of submission, presentation, inspection and comparison of evidence shall not exceed forty-five (45) days from the date the case is raffled to the adjudication officer.
   • Unless there are admissions or stipulations, the failure to submit or present during the period for inspection and/or comparison of the originals and/or certified copies of the documentary evidence, and object evidence shall render these inadmissible.
     
     

      

6. Submission for Decision (Rule 2, Section 16);

    

   • The adjudication officer shall issue the decision or final order within twenty (20) calendar days from the date the case is deemed submitted for decision, which may be extended for another twenty (20) calendar days for justifiable reasons.
     
     

      

7. Period to File Opposition (Rule 7, Section 2); and

    

   • The verified notice of opposition must be filed within thirty (30) days from the date of the publication of the trademark application for opposition purposes. MC 2022-013 now allows the opposer to request only an additional forty-five (45) day period to file the opposition for meritorious grounds.
     
     

      

8. Appeal to the Director (Rule 9, Section 2).

    

   • Within fifteen (15) days from receipt of the decision or final order, a party may file a memorandum of appeal to the Director. The period to file the appeal may be extended only once for another fifteen (15) days.
   • The appellant shall follow the e-soa payment procedure, and the appeal shall be dismissed outright if the memorandum of appeal is filed out of time and/or for non-payment of fees.
   • The appellee shall file the comment within fifteen (15) days from receipt of the BLA Director’s order. The appellee may request upon motion an additional fifteen (15) day period to file the comment for meritorious grounds.
   • The BLA Director shall resolve or dispose the appeal within twenty (20) calendar days, which may be extended to another twenty (20) calendar days for justifiable reasons, from the date the appeal is submitted for resolution or disposal.
     
     

      

     For more information on this issuance, you may direct your queries to [email protected].