RULE
2 INTER
PARTES
PROCEEDINGS, THE PARTIES TO THE PROCEEDINGS;
JURISDICTION; PROCEDURE;
EVIDENCE
Section 1. The
contested or inter partes proceedings are:
1.1. Patent Cases
1.2. Trademark Cases
Section
2.
Parties in inter partes proceedings. The Petitioner in a
cancellation
proceeding and in a compulsory licensing proceeding and the Opposer in
an opposition proceeding shall be deemed to be in the position of
a plaintiff while the Respondent in a cancellation, compulsory
licensing
or opposition proceeding shall be in the position of defendant, with
respect
thereto. The Petition for Cancellation, Petition for Compulsory
Licensing
and Notice of Opposition shall correspond to the Complaint, while the
Answer
thereto shall correspond to the Answer. The taking of testimony
orally
before the Director or any Hearing Officer, the introduction of
documentary
evidence during the hearings and the submission of briefs or memoranda,
shall correspond to trial.
Section 3. Original
jurisdiction over inter partes proceedings. The Director
shall
have original jurisdiction over inter partes proceedings. Such
inter
partes proceedings shall be heard before the Director, any Hearing
Officer
or other ranking official of the Bureau designated by the Director but
all decisions and final orders shall be signed by the Director.
Section 4. Right
of foreign corporation to sue in trademark or service mark enforcement
action. Any foreign national or juridical person whether or
not
engaged in business in the Philippines may bring a petition for
opposition,
cancellation or compulsory licensing: Provided, that the country of
which
he or it is a national, or domiciled, or has a real and effective
industrial
establishment is a party to any convention, treaty or agreement
relating
to intellectual property rights or the repression of unfair
competition,
to which the Philippines is also a party, or extends reciprocal
rights
to nationals of the Philippines by law.
Section 5. Jurisdiction
of the courts in patent cancellation. The courts shall have
jurisdiction
over petition for the cancellation of the patent where such petition is
based on the grounds enumerated in Section 67 or Section 68 of Republic
Act No. 8293. However, where any of the grounds in Sections 67 or
68 has been raised together with the grounds for cancellation stated in
Sections 49, 61, 109 or 120 in a petition for cancellation of a patent,
utility model or industrial design or where any of such grounds
or
issues has been raised in an administrative case for violation of laws
involving intellectual property rights, all parties in the petition or
administrative case shall be prohibited from instituting a separate
action
in court based on Section 67 or Section 68 of Republic Act No.
8293.
Section
6.
Rules of procedure to be followed in the conduct of hearing of
inter
partes cases. In the conduct of hearing of inter partes
cases,
the rules of procedure herein contained shall be primarily
applied.
The Rules of Court, unless inconsistent with these rules, may be
applied
in suppletory character, provided, however, that the Director or
Hearing Officer shall not be bound by the strict technical rules of
procedure
and evidence therein contained but may adopt, in the absence of any
applicable
rule herein, such mode of proceedings which is consistent with the
requirements
of fair play and conducive to the just, speedy and inexpensive
disposition
of cases, and which will give the Bureau the greatest possibility to
focus
on the technical grounds or issues before it.
Section
7.
Powers of Hearing Officer. A Hearing Officer
designated to
conduct hearings and investigation shall be empowered to administer
oaths
and affirmations, issue subpoena and subpoena duces tecum to compel
attendance
of parties and witnesses and the production of any book, papers,
correspondence
and other records which are material to the case, and to make
preliminary
rulings on questions raised at the hearings, with the ultimate decision
being left to the Director or any final order.
Section
8.
Workflow/procedure in inter partes proceedings.
(a) The
Petition
for Cancellation, Compulsory Licensing or Notice of Opposition shall be
filed with the Bureau which shall check if the complaint is in due form
and thereafter, shall issue an order for the payment of the required
fee.
(b) After
payment
of the required fee, the petitioner, his counsel or representative
shall
submit to the Bureau a copy of the official receipt and present the
original
thereof for comparison. Within twenty four (24) hours from
receipt of the proof of payment of the required fee, the Assistant
Director
of the Bureau shall acknowledge receipt of the papers by
assigning
the Inter Partes Case Number, docket the same and then assign the case
to any of the Hearing Officers through raffle under the rules
promulgated
by the Director General.
(c)
Within three
(3) working days from receipt of the petition by the Bureau, the
Hearing
Officer to whom the petition is assigned shall immediately
prepare
and send, in the name of the Director, to all parties required to be
notified
in the IP Code and these Regulations the necessary orders, notice of
publication,
summons, and other notices, either by registered mail or by personal
delivery.
Section 9. Summons
and answer. The summons shall require respondent to answer
the
petition (and not to file a motion to dismiss) within fifteen (15) days
from service of the summons.
(a) Answer.
The respondent shall answer the petition in writing, either by denying
specifically the material allegations of the petition or by alleging
any
lawful defense. He shall file his answer together with the sworn
statements and documentary evidence and serve copies thereof upon the
petitioner
or opposer.
(b)
amended, the
time fixed for the filing and service of the answer shall, unless
otherwise
ordered, run from receipt of notice of the order admitting the amended
petition or opposition from service of such amended petition. The
original answer shall be considered as answer to the amended petition
unless
a new answer is filed within ten (10) days from notice or service.
(c) No
motion
to dismiss. No motion to dismiss shall be entertained.
Instead,
all grounds for dismissal shall be pleaded as affirmative defenses, the
resolution of which shall be made in the decision on the merits.
The Hearing Officer may, for good cause shown, conduct a hearing on any
of the affirmative defenses if this will promote expediency in the
resolution
of the pending case.
Section 10. Pre-trial.
Upon joinder of issues, the designated clerk of the Bureau
shall prepare
the Notice of Pre-Trial upon receipt of invitation from the Hearing
Officer
setting the date of the pre-trial conference. The pre-trial
conference
shall be set within two (2) months but not earlier than one (1) month
from
receipt of the Answer or other pleading. The notice of pre-trial
shall be delivered by personal delivery or registered mail within two
(2)
days from the date on which instruction was given to the clerk.
The
notice of pre-trial shall require the parties to submit a pre-trial
brief
containing the following:
(a) A brief
statement
of the parties’ claims and defenses;
(b)
Suggestions,
if any, for simplification of issues;
(c) A
list of documents
they intend to produce as evidence, together with appropriate markings
as exhibits as well as the identification of witnesses and a statement
of the substance and purpose of their testimony during the hearing on
the
merits. These documents must be produced for examination during
the
pre-trial conference without prejudice to the presentation of
additional
documents during the trial if the party was prevented from producing
the
same during the pre-trial on account of fraud, accident, mistake,
excusable
negligence or such other reason which the Director or Hearing Officer
deems
justifiable in the interest of justice and fair play;
(d) A
statement whether
they can stipulate on facts not covered by admissions in their
pleadings.
If so, they should come with drafts of matters they are ready to
stipulate
on;
(e) A
statement whether
they are open to the possibility of an amicable settlement; if so, they
should be prepared on the pre-trial date to submit their minimum
demands
for purposes of settlement; and,
(f) Such
other matters
as may aid in the prompt disposition of the action.
Each party shall file
with the Bureau and serve on the adverse party said pre-trial briefs at
least three (3) days before the date of pre-trial conference fixed in
the
notice.
As counsel needs
the consent of his client for purposes of accepting an offer of
compromise,
the attendance not only of the attorneys of record but also of the
parties
themselves, is required for the pre-trial conference. Presence of
any party may be dispensed with if his counsel is provided with a
notarized
power of attorney or the appropriate corporate authorization to make
admissions
and/or to accept and approve compromise proposals.
The failure of the
petitioner/opposer to appear when so required shall be cause for
dismissal
of the action with prejudice. A similar failure on the part of
the
respondent shall be cause to allow the petitioner/opposer to present
his
evidence ex parte and the Director to render judgment on the basis
thereof.
Section 11. (a)
Dismissal for failure to prosecute. If the
petitioner/opposer
does not appear at the time and place designated in the Notice of
Pre-trial
Conference or a Notice of Hearing or in a subsequent order, or failed
to
prosecute his case for an unreasonable length of time, or fail to
comply
with these Regulations or any order of the Bureau, the petition or
notice
of opposition, as the case may be, may be dismissed for failure
to
prosecute and judgment rendered for the respondent to recover his costs
from the petitioner/opposer, provided, however, that the Bureau may
cancel
the patent or trademark registration where it finds evidence
independent
of the petitioner’s submission. Within fifteen (15) days
after
receipt of the Order of Dismissal, the petitioner/opposer may file a
motion
to set aside such order if his failure to appear was by reason of
fraud,
accident, mistake or excusable negligence.
(b) Effect of
failure of respondent to answer. If the respondent fails to
answer
within the period herein provided, the Hearing Officer shall, upon
motion
of the petitioner/opposer or motu propio, declare the respondent in
default
and forthwith receive evidence ex parte and submit his recommendations,
to the Director. No service of papers other than substantially
amended
or supplemental pleadings and final orders or decisions shall be
necessary
on a party in default unless he files a motion to set aside the
Order
of Default within fifteen (15) days from receipt thereof on any of the
grounds mentioned in the preceding paragraph, in which event he shall
be
entitled to notice of all further proceedings regardless of whether the
order of default is set aside or not.
Section 12. Conduct
of hearings. Should the Hearing Officer be absent on any scheduled
date of hearing, the hearing shall automatically be conducted by his
Chief
Hearing Officer or, upon instruction of the Director, by any
other
Hearing Officer. All hearings shall be continuous until
terminated
and no postponement of hearings, specially those scheduled by agreement
of the parties, shall be allowed over the objection of any party.
However, in extremely meritorious cases and upon written motion filed
with
the Hearing Officer at least three (3) days before the scheduled
hearing
with proof of personal service upon the other party or parties, a
postponement
may be granted.
Section 13. Order
of trial. The following procedure shall be observed during the
hearing
of the case:
(a) The
petitioner
shall submit to the Hearing Officer and serve on the adverse party the
sworn statement of the witnesses (which shall constitute the
direct
testimony of the affiants) and other documentary evidence at least
three
(3) days before the scheduled hearing and shall make his witnesses
available
for cross-examination by respondent during the scheduled hearing.
(b) The
respondent
shall then present the sworn statements of witnesses (which shall
constitute
the direct testimony of the affiants) and other documentary evidence
and
shall make his witnesses available for cross-examination by petitioner
during the scheduled hearing.
(c) The
petitioner
and the respondent may, in succession, present rebuttal and
sur-rebuttal
evidence, with the direct testimony of witness being reduced into
affidavit
form, as herein prescribed.
(d) If
the testimony
of the witness residing outside the Philippines is to be taken, said
witness
may testify personally in his own behalf, or the direct examination may
be in the form of an authenticated affidavit and be submitted
within
the period fixed by the Hearing Officer, and the opposing party may
cross-examine
the witness through written interrogatories in the manner prescribed by
the Rules of Court. The party presenting the witness shall bear
the
expenses pertaining thereto and shall obtain the necessary approval for
the deposition. Submission of the Answer to cross interrogatories
to the Bureau shall be made within six (6) months from the date of the
issuance of the Letters Commission. Said period may be extended once
for
very justifiable reasons. In no case, however, shall the submission of
said Answer exceed one (1) year from date of issuance of Letters
Commission.
Otherwise, the testimony of said foreign witness shall be stricken out
by the Hearing Officer, motu propio or upon motion of the opposing
party.
(e)
Failure to present
the sworn statement of the witnesses and documentary evidence at the
pre-trial
shall be deemed a waiver of the right to present evidence during
the hearing.
Section 14.
Demurrer
to evidence not allowed. No demurrer to evidence shall be
entertained
after the presentation of petitioner’s evidence. Respondent shall
forthwith present evidence in its behalf.
Section 15. Director
or Hearing Officer not bound by technical rules of evidence. The
Director, Chief Hearing Officer or any Hearing Officer shall receive
relevant
and material evidence, rule on offer of evidence and exclude all
irrelevant
matter, and shall act according to justice and fairness. The
Bureau
in the exercise of its power to investigate and hear cases within its
jurisdiction
shall not be strictly bound by the technical rules of evidence.
The
Bureau shall, however, take judicial cognizance of the official acts
of
the legislative, executive and judicial departments of the Philippines,
the laws of nature, scientific facts as published in treatises,
periodicals,
or pamphlets and other facts which are of public knowledge or general
knowledge
as would enable the Director, Chief Hearing Officer or Hearing Officer
to rule upon the technical issues in the case.
Section 16. Judgment
on the pleadings. When an answer fails to tender an issue or
otherwise admits the material allegations of the adverse party’s
pleading,
the Director may, on motion of said adverse party, render judgment on
such
pleadings.
Section 17. Summary
judgment. Any party seeking to recover upon a petition, a
claim,
counterclaim or cross-claim or against whom a petition, claim,
cross-claim
or counterclaim is asserted may, at any time after the issues are
joined,
move with supporting affidavit, depositions or admissions of parties,
for
a summary judgment in his favor as to all or any part thereof.
The
motion shall be served at least ten (10) days before the time specified
for the hearing. The adverse party may file with the Bureau and
serve
opposing affidavits at least three (3) days prior to the day of
hearing.
After the hearing, the judgment sought shall be rendered forthwith if
the
pleadings, depositions and admissions on file, together with the
affidavits,
show that there is no genuine issue as to any material fact and that
the
moving party is entitled to a judgment as a matter of law.
Section 18. Transcript.
The stenographer or such other personnel as may be authorized
by the
Director shall take down notes of all the proceedings in the
hearing.
At the end of each hearing, he shall immediately transcribe all
notes
taken thereat and deliver said notes as well as the transcript thereof,
duly certified, initialled on each page and signed by him on the last
page,
to the Hearing Officer, to be attached to the record of the case at
least
ten (10) days before the next hearing or the date of the first day in a
scheduled series of continuous hearings.
Section
19.
Introduction of document belonging to another case.
Whenever
a party in an inter partes proceeding desires to submit, as his own
evidence,
a document filed in another case, separate from the case being heard,
he
should, for such purpose, secure a certified copy of such document,
paying
the required fee therefor.
Section 20. Case
not to be discussed informally unless in presence of both parties.
It is strictly and absolutely forbidden for the Director or for
any
Hearing Officer or any employee of the Bureau who may have anything to
do directly or indirectly with the hearing, decision, or preparation of
the decision, in any pending inter partes case, to discuss informally
the
case or any phase thereof with any of the contending parties or their
attorneys,
except in the presence of the adverse party or his attorney.
Section 21.
Equitable
principles may be applied. In all inter partes proceedings,
the
equitable principles of laches, estoppel and acquiescence, when
applicable,
may be considered and applied.
Section
22.
Submission of memoranda and draft decision. Parties shall
be required
to submit their memoranda within one (1) month from receipt of the
order
of admissibility of exhibits. Unless otherwise provided for by
special
laws, the appropriate final pleadings required of the parties to be
submitted
shall include a draft of the decision/resolution they seek, stating
clearly
and distinctly the facts and the law upon which it is based. The
Hearing Officer may adopt, in whole or in part, either of the parties’
draft decisions/resolutions, or reject both. This requirement
shall
likewise be applied to orders other than the final judgment.
Section
23.
Hearing Officer’s report. Within one (1) month from
the date
on which the case was submitted for decision, the Hearing Officer, in
consultation
and coordination with the Chief Hearing Officer, shall submit his
report,
findings and draft of the decision through the Chief Hearing Officer
who
shall affix his initial thereon for approval of the
Director.
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