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RULES AND REGULATIONS ON
INTER PARTES PROCEEDINGS
[PETITION FOR CANCELLATION OF A MARK, PATENT, UTILITY MODEL,
INDUSTRIAL DESIGN, OPPOSITION TO REGISTRATION OF A MARK AND COMPULSORY LICENSING]
FULL TEXT
 
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  

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

    (b) Petition for Compulsory Licensing or a license to exploit a patented invention. 

1.2. Trademark Cases  

    (a) Opposition against the registration of a mark published for opposition; and  

    (b) Petition to cancel the registration of a mark. 


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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