RULES
AND REGULATIONS ON INTER
PARTES
PROCEEDINGS [Petitions
for Cancellation of a Mark, Patent, Utility Model, Industrial
Design,
Opposition to Registration of a Mark, and
Compulsory
Licensing]
WHEREAS, the
State recognizes that an effective intellectual and industrial property
system is vital to the development of domestic creativity, facilitates
transfer of technology, attracts foreign investments and ensures market
access for our products;
WHEREAS, the State
recognizes that the use of intellectual property bears a social
function
and to this end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and progress and
the common good;
WHEREAS, it is the
policy of the State to enhance the enforcement of intellectual property
rights in the country; and, to protect and secure the exclusive rights
of scientists, inventors artists and other gifted citizens to
their
intellectual property and creations, particularly when beneficial to
the
people;
NOW, THEREFORE, pursuant
to the provisions of Republic Act No. 8293, otherwise known as the
Intellectual
Property Code of the Philippines, the following rules and regulations
on
Inter Partes Proceedings [Petitions for Cancellation of Patent,
Trademark,
Utility Model, Industrial Design, Compulsory Licensing and Opposition
to
Trademark Registration] are hereby promulgated:
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.
RULE
3 CANCELLATION
OF PATENTS
Section 1.
Cancellation of patents; Grounds.
(a)
Any interested
party may, upon payment of the required fee, petition to cancel the
patent
or any claim thereof, or parts of the claim, on any of the
following:
(i) that
what is
claimed as the invention is not patentable;
(ii)
that the patent
does not disclose the invention in a manner sufficiently clear and
complete
for it to be carried out by any person skilled in the art;
(iii)
that the patent
is contrary to public order or morality;
(iv)
that the patent
includes matters outside the scope of the disclosure contained in
the application as filed.
(b) Cancellation
by person having right to the patent. A person declared by
final
court order or decision as having the right to the patent may, within
three
(3) months after the decision has become final, seek cancellation of
the
patent, if one has already been issued.
(c)
Interested
party. A party interested in the patent shall include any
person
including a person declared by final court order or decision to be the
true and actual inventor.
Section 2.
Partial
cancellation. Where the grounds for the cancellation relate
to
some of the claims or parts of the claim, cancellation may be effected
to such extent only in which case, the Office shall reissue the amended
patent.
Section 3. Requirement
of the petition. The petition for cancellation shall be in
writing,
verified by the petitioner or by any person in his behalf who knows the
facts, specify the grounds upon which it is based, include a statement
of the facts relied upon, and filed in triplicate with the Bureau.
Copies
of printed publications or of patents of other countries, and other
supporting
documents mentioned in the petition shall be attached thereto, together
with the translation thereof in English, if not in the English
language.
Section 4. Notice
of hearing. The Hearing Officer shall serve in the name of
the
Director, notice of the filing of the petition upon the patentee and
all
persons having grants or licenses, or any other right, title or
interest
in and to the patent and the invention covered thereby, as
appears
of record in the Office, and of notice of the date of hearing thereon
on
such persons and the petitioner. Notice of the filing of the
petition
shall be published in the IPO Gazette.
Section 5.
(a)
The Committee of Three. In cases involving highly technical
issues,
on motion of any party, the Director may order that the petition
be heard and decided by a committee composed of the Director as
chairman
and two (2) members who have the experience or expertise in the field
of
technology to which the patent sought to be cancelled relates.
(b) Cancellation
of the patent by the Committee. If the Committee finds that a
case for cancellation has been proved, it shall order the patent or any
specified claim or claims thereof cancelled.
(c) Amendment
made by the patentee during the cancellation proceedings. If
the Committee finds that, taking into consideration the amendment made
by the patentee during the cancellation proceedings, the patent and the
invention to which it relates meet the requirement of the IP
Code,
it may decide to maintain the patent as amended : Provided, that the
fee
for printing of a new patent is paid within one (1) month from the date
of the decision of the committee. If the fee for the printing of
the new patent is not paid in due time, the patent shall be revoked at
the expiration of the period for payment.
(d) Publication
of the amended patent. If the patent is amended per decision of the
committee, the Bureau shall, at the same time as it publishes the
mention
of the cancellation decision, publish the abstract, representative
claims
and drawings indicating clearly what the amendments consist of.
Section 6.
Effect
of cancellation of patent or claim. The rights conferred by
the
patent or any specified claim or claims cancelled shall
terminate.
Notice of the cancellation shall be published in the IPO
Gazette.
Section 7. Patent
found invalid may be cancelled. If, in an action for
infringement
filed before the court, the court finds the patent or any claim to be
invalid,
it shall cancel the same. Such order of cancellation shall be
forwarded
to the Director who shall cause the recording and publication of notice
of such order in the IPO Gazette upon receipt of the final judgment of
cancellation by the court. Such recording shall be made in the
appropriate
register of the Office.
RULE
4 CANCELLATION
OF UTILITY MODEL REGISTRATION
Section 1. Grounds
for cancellation of utility model registration. At any
time during the term of the utility model registration, any person,
upon
payment of the required fee, may petition the Director to cancel the
utility
model registration on any of the following grounds:
(a) That the
claimed
invention does not qualify for registration as a utility model and does
not meet the requirements of registrability, in particular:
(b) That the
description
and the claims do not comply with the prescribed requirements;
(c) That any
drawing
which is necessary for the understanding of the invention has not been
furnished;
(d) That the
owner
of the utility model registration is not the inventor or his successor
in title; or
(e) That the
utility
model registration extends beyond the content of the application
as originally filed.
Section 2.
Procedure
for the cancellation of utility model. The procedure for the
cancellation of patent shall apply mutatis mutandis to the cancellation
of utility model.
Section 3.
Effect
of cancellation of utility model registration. The rights
conferred
by the registration of the utility model shall terminate upon the
cancellation
of such registration.
RULE
5 CANCELLATION
OF DESIGN REGISTRATION
Section 1. Grounds
for the cancellation of design registration. At any time
during
the term of the industrial design registration, any person upon payment
of the required fee, may petition the Director to cancel the industrial
design on any of the following grounds:
(a) that the
industrial
design does not give a special appearance to and can not serve as
pattern
for an industrial product or handicraft;
(b) that
the industrial
design is not new or original;
(c) that
the industrial
design is dictated essentially by technical or functional consideration
to obtain a technical result;
(d) that
the industrial
design is contrary to public order, health or morals; or
(e)
that the
subject matter of the industrial design extends beyond the content of
the
application as originally filed.
Section 2. Partial
cancellation. Where the grounds for cancellation relate to a
part of the industrial design, cancellation may be effected to
such
extent only. The restriction may be effected in the form of an
alteration
of the effected features of the design.
Section 3. Procedure.
The procedure prescribed by these Regulations in the cancellation of
patent
and utility model registration shall be applied mutatis mutandis in the
cancellation of design registration.
Section 4.
Effect
of cancellation. The rights conferred by the registration of
a design shall terminate upon the cancellation of such
registration.
RULE
6 PETITION
FOR
COMPULSORY LICENSING
Section 1. Patents
subject to proceedings for compulsory licensing. Invention
patents,
industrial design registration and utility model registration are all
subject
to proceedings for compulsory licensing.
Section 2. Who
may file petition for compulsory licensing; time for filing the
petition.
Upon the payment of the required fee, any person may file a
petition
for compulsory licensing at any time after the grant of the patent or
registration
of the industrial design or utility model. However, if the
petition
is based on the ground that the patented invention is not being worked
in the Philippines on a commercial scale, although capable of being
worked,
without any satisfactory reason, the petition may be filed at any time
after the expiration of a period of four (4) years from the date of
filing
of the application or three (3) years from the date of the patent
whichever
period expires last.
Section 3.
Grounds
for compulsory licensing. The Director may grant
a license to exploit a patented invention, even without the agreement
of
the patent owner, in favor of any person who has shown his capability
to
exploit the invention, under any of the following circumstances:
(a) National
emergency
or other circumstances of extreme urgency;
(b) Where
the public
interest, in particular, national security, nutrition, health or the
development
of other vital sectors of the national economy as determined by the
appropriate
agency of the Government, so requires; or
(c)
Where a
judicial or administrative body has determined that the manner of
exploitation
by the owner of the patent or his licensee is anti-competitive; or
(d) In
case of public
non-commercial use of the patent by the patentee, without satisfactory
reason;
(e) If
the patented
invention is not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory reason;
Provided,
that the importation of the patented article shall constitute working
or
using the patent.
Section 4. Requirement
to obtain a license on reasonable commercial terms. The license
will
only be granted after the petitioner has made efforts to obtain
authorization
from the patent owner on reasonable commercial terms and conditions but
such efforts have not been successful within a reasonable period of
time.
Section 5. When
a petition for compulsory licensing may be granted even without efforts
to obtain authorization from the patent owner. The
requirement
under the preceding section shall not apply in the following
cases:
(a) Where
the petition
for compulsory license seeks to remedy a practice determined after
judicial
or administrative process to be anti-competitive;
(b) In
situations
of national emergency or other circumstances of extreme urgency;
(c) In
cases of public
non-commercial use.
Section 6. Notice
to the right holder. (a) In situations of national emergency
or other circumstances of extreme urgency, the right holder shall be
notified
as soon as reasonably practicable.
(b) In the case of
public non-commercial use, where the government or contractor, without
making a patent search, knows or has demonstrable grounds to know that
a valid patent is or will be used by or for the government, the right
holder
shall be informed promptly.
Section 7.
Compulsory
licensing of patents involving semi-conductor technology. In
the case of compulsory licensing of patents involving semi-conductor
technology,
the license may only be granted in case of public non-commercial use or
to remedy a practice determined after judicial or administrative
process
to be anti-competitive.
Section 8. Compulsory
license based on interdependence of patents. If the
invention
protected by a patent, hereafter referred to as the “second patent”,
within
the country cannot be worked without infringing another patent,
hereafter
referred to as the “first patent”, granted on a prior application or
benefiting
from an earlier priority, a compulsory license may be granted to the
owner
of the second patent to the extent necessary for the working of his
invention,
subject to the following conditions:
(a) The
invention
claimed in the second patent involves an important technical advance of
considerable economic significance in relation to the first
patent;
(b) The
owner of
the first patent shall be entitled to a cross-license on reasonable
terms
to use the invention claimed in the second patent;
(c) The
use authorized
in respect of the first patent shall be non-assignable except with the
assignment of the second patent; and
(d) The
terms and
conditions of Section 95 (Requirement to obtain a license on reasonable
commercial terms), Section 96 (Compulsory licensing of patents
involving
semi-conductor technology), Section 98 (Form and contents of petition),
Section 99 (Notice of hearing), and Section 100 (Terms and conditions
of
compulsory license) of the IP Code.
Section 9. Form
and contents of petition. The petition for compulsory
licensing
must be in writing, verified by the petitioner and accompanied by
payment
of the required filing fee. It shall contain the name and address
of the petitioner as well as those of the respondents, the number and
date
of issue of the patent in connection with which compulsory
license
is sought, the name of the patentee, the title of the invention, the
statutory
grounds upon which compulsory license is sought, the ultimate facts
constituting
the petitioner’s cause of action, and the relief prayed for.
Section
10.
Notice of hearing. Upon filing of a petition, the
Director
shall forthwith serve notice of the filing thereof upon the patent
owner
and all persons having grants or licenses, or any other right, title or
interest in and to the patent and invention covered thereby as
appears
on the record in the Office, and of notice of the date of hearing
thereon,
on such persons and petitioner. The resident agent or
representative
appointed in accordance with Section 33 of the IP Code, shall be bound
to accept service of notice of the filing of the petition within the
meaning
of this Section.
Section
11.
Publication of notice. In every case, the Director
shall cause
the notice to be published in a newspaper of general circulation once a
week for three (3) consecutive weeks and once in the IPO Gazette
at
the expense of the applicant.
Section
12.
Grant of license. (a) If the Director finds
that a grant
of license under the preceding sections has been made out, he shall,
within
six (6) months from the date the petition was filed, order the grant of
an appropriate license.
(b) A compulsory
license sought for public non-commercial use shall be issued within six
(6) months from the filing of the proponent’s application or receipt of
the Board of Investment’s endorsement.
Section
13.
Terms and conditions of compulsory license. The
parties may
agree on the basic terms and conditions including the rate of royalties
of a compulsory license. In the absence of agreement between the
parties, the Director shall fix the terms and conditions including the
rate of royalties of the compulsory license subject to the following
conditions:
(a)
The scope
and duration of such license shall be limited to the purpose for which
it was authorized;
(b)
The license
shall be non-exclusive;
(c)
The license
shall be non-assignable, except with the part of the enterprise or
business
with which the invention is being exploited;
(d)
Use of
the subject matter of the license shall be devoted predominantly
for the supply of the Philippine market: Provided, that this limitation
shall not apply where the grant of the license is based on the ground
that
the patentee’s manner of exploiting the patent is determined by
judicial
or administrative process to be anti-competitive.
(e)
The
license may be terminated upon proper showing that circumstances which
led to its grant have ceased to exist and are unlikely to recur:
Provided,
that adequate protection shall be afforded to the legitimate interest
of
the licensee;
(f)
The
patentee shall be paid adequate remuneration taking into account
the economic value of the grant or authorization, except that in cases
where the license was granted to remedy a practice which was determined
after judicial or administrative process, to be anti-competitive, the
need
to correct the anti-competitive practice may be taken into account in
fixing
the amount of remuneration.
Section
14.
Amendment of compulsory license. Upon the request
of the patentee
or the licensee, the Director may amend the decision granting the
compulsory
license, upon proper showing of new facts or circumstances justifying
such
amendment.
Section
15.
Cancellation of compulsory license. Upon the
request of the
patentee, the Director may cancel the compulsory license:
(a) If the
ground
for the grant of the compulsory license no longer exists and is
unlikely
to recur;
(b) If
the licensee
has neither begun to supply the domestic market nor made serious
preparation
therefor;
(c) If
the licensee
has not complied with the prescribed terms of the license.
Section
16.
Surrender of the license by the licensee. The
licensee may
surrender the license by a written declaration submitted to the
Office.
Section
17.
Publication of the amendment, surrender, or cancellation of
the license.
The Director shall cause the amendment, surrender, or
cancellation
to be recorded in the appropriate Register of the Office, notify the
patentee,
and/or the licensee, and cause notice thereof to be published, at the
expense
of the petitioner, in the IPO Gazette.
RULE
7 OPPOSITION
TO
APPLICATION FOR REGISTRATION OF MARKS
Section 1. (a)
Who may oppose. Any person who believes that he would be
damaged
by the registration of a mark may, upon payment of the required fee and
within one (1) month after the publication of the application, file
with
the Bureau a notice of opposition to the application.
(b) Notice
of opposition. The notice of opposition shall be in writing
and
verified by the opposer or any person on his behalf who knows the
facts,
and shall specify the grounds on which it is based and include a
statement
of the facts relied upon.
Section 2. (a)
Notice
and hearing. Upon the filing of an opposition and
payment
of the required fee, the Bureau shall serve notice of the filing on the
applicant, and of the date of the hearing thereof upon the applicant
and
the oppositor and all other persons having any right, title or interest
in the mark covered by the application, as appear of record in the
Office.
(b) Notice in
case of unverified notice of opposition. The Bureau may
notify
the applicant of the fact of filing of an unverified opposition.
The applicant, after payment of the required fee, may request for a
copy
of the unverified opposition.
(c) The notice to
answer will be sent to the applicant/respondent upon the filing
of
the verified opposition.
(d) Dismissal
of opposition. The opposition will be dismissed motu propio
upon
failure of the opposer to verify, in person or by any person on his
behalf
who knows the facts, the notice of opposition within two (2) months
from
date of filing of the unverified opposition.
Section 3. Contents
of the notice of opposition. Copies of certificates of
registration
of marks registered in other countries or other supporting documents
mentioned
in the opposition shall be filed with the opposition together with the
translation in English, if not in the English language.
Section 4. (a)
Extension of period for filing the verified opposition. For
good
cause shown and upon payment of the required surcharge, the time for
filing
the verified opposition may be extended for an additional one (1) month
by the Director upon the written request of the opposer. Whenever
an extension is granted, the Director shall cause the applicant to be
notified
thereof. The petition for extension shall be filed in
triplicate.
However, in no case shall the period within which to file the verified
opposition exceed four (4) months from the date of release of the IPO
Gazette
publishing the mark being opposed. If the last day for filing of
the notice of opposition or the verified opposition falls on a
Saturday,
Sunday, holiday, non-working holiday as may be declared by the
President
of the Philippines or on a day when the Office or the Bureau is closed
for business as may be declared by the Director General, the same
shall be moved to the immediately following working day.
Section 5.
Filing
of an opposition in a form other than the original. The
party
filing the opposition may submit an opposition in a form other than the
original such as a facsimile copy or photocopy provided:
(1)
that such fax, photocopy or other form complies with the requirements
of
these Regulations and is filed within the period to file the notice of
opposition or the verified opposition, or any extension thereof,
(2) that the original copy of the verified opposition is filed
within
one (1) month from submission of the fax, photocopy or other form
and,
(3) that the original copy of the verified opposition is filed
within
the maximum period of four (4) months counted from the date of release
of the IPO Gazette publishing the mark being opposed. In all
cases,
the notice to answer shall be sent to the applicant only upon the
filing
of the original copy of the verified opposition.
RULE
8 CANCELLATION
OF REGISTRATION OF MARKS
Section1. Who
may file a petition for cancellation. Any person who believes that
he is or will be damaged by the registration of a mark may file with
the
Bureau a petition to cancel such registration.
Section 2.
When
may a petition be filed. The petition for cancellation of the
registration
of a mark may be filed:
(a) Within
five
(5) years from the date of registration of the mark under the IP
Code;
(b) at
any time,
if the registered mark becomes the generic name for the goods or
services,
or a portion thereof, for which it is registered, or has been
abandoned,
or its registration was obtained fraudulently or contrary to the
provisions
of the IP Code, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the
goods
or services on or in connection with which the mark is used. If
the
registered mark becomes the generic name for less than all of the goods
or services for which it is registered, a petition to cancel the
registration
for only those goods or services may be filed. A registered mark
shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique
product
or service. The primary significance of the registered mark to
the
relevant public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name of
goods or services on or in connection with which it has been
used.
Evidence on purchaser motivation shall not be admitted;
(c)
At any
time, if the registered owner of the mark without legitimate reason
fails
to use the mark within the Philippines, or to cause it to be used in
the
Philippines by virtue of a license during an uninterrupted period of at
least three (3) years.
Section 3. Contents
of petition for cancellation. The petition for cancellation
shall
give the name and address of the petitioner as well as those of the
necessary
party or parties respondent; and shall state the registration number
and
date of the registration sought to be cancelled; the name of the
registrant;
the statutory ground or grounds upon which cancellation is sought; the
ultimate facts constituting the petitioner’s cause or causes of
action
and the relief sought.
Section 4. Verification
of petition. A petition for cancellation filed in triplicate
shall be verified by the petitioner or by any person in his behalf who
knows the facts.
Section 5. Service
of petition and notice of hearing. Upon the filing of a
petition
for cancellation in proper form and payment of the required fee, the
Director
shall cause a copy of such petition to be served on the party or
parties
respondent, requiring such party or parties to answer the
petition.
After the issues have been joined, the Director will cause a date to be
set for the hearing of the case, which will be communicated to both
parties.
Section
6.
Power of the Bureau to cancel the mark in the exercise
of its
power to hear and adjudicate any action to enforce the rights to a
registered
mark. Notwithstanding the foregoing provisions, the court or
the Bureau shall, in the exercise of its power to hear and adjudicate
any
action to enforce the rights to a registered mark, likewise
determine
whether the registration of said mark may be cancelled in accordance
with
the IP Code.
Section
7.
Effect of filing of a suit before the Bureau or with the
proper court.
The filing of a suit to enforce the registered mark with the
proper
court or Bureau shall exclude any other court or agency from assuming
jurisdiction
over a subsequently filed petition to cancel the same mark. On
the
other hand, the earlier filing of petition to cancel the mark with the
Bureau shall not constitute a prejudicial question that must be
resolved
before an action to enforce the rights to same registered mark may be
decided.
Section
8.
Cancellation of registration. If the Bureau finds
that a case
for cancellation has been made out, it shall order the cancellation of
the registration. When the order or judgment becomes final, any
right
conferred by such registration upon the registrant or any person in
interest
of record shall terminate. Notice of cancellation shall be
published
in the IPO Gazette.
RULE
9 RECONSIDERATION;
APPEAL
Section 1. Appeal
to the Director General.
Section
2.
Grounds of and period for filing motion for
reconsideration.
Within the period for taking an appeal, the aggrieved party may
move
for reconsideration upon the grounds that the evidence is insufficient
to justify the decision or final order, or that the decision or final
order
is contrary to law.
Section
3.
Contents of motion for reconsideration and notice
thereof.
The motion shall be made in writing stating the ground or grounds
therefor,
a written notice of which shall be served by the movant on the adverse
party.
A motion for reconsideration
shall point out specifically the findings or conclusions of the
judgment
or final order which are not supported by the evidence or which are
contrary
to law, making express reference to the testimonial or documentary
evidence
or to provisions of law alleged to be contrary to such findings or
conclusions.
A pro forma motion
for reconsideration shall not toll the reglementary period of
appeal.
Section
4.
Action upon motion for reconsideration. If the
Director finds
that the judgment or final order is contrary to the evidence or law, he
may amend such judgment or final order accordingly.
Section
5.
Resolution of motion. A Motion for reconsideration
shall be
resolved within one (1) month from the time it is submitted for
resolution.
Section
6.
Second motion for reconsideration. No party shall be allowed
a second motion for reconsideration of a judgment or final order.
Section 7.
Partial reconsideration. If the grounds for a motion under
this
Rule appear to the Director to affect the issues as to only a part, or
less than all of the matter in controversy, or only one, or less than
all,
of the parties to it, he may grant reconsideration as to such issues if
severable without interfering with the judgment or final order upon the
rest.
Section
8.
Remedy against order denying a motion for
reconsideration.
An order denying a motion for reconsideration is not appealable, the
remedy
being an appeal from the judgment or final order.
Section
9.
Appeal to the Court of Appeals or Supreme Court. No motion
for
reconsideration of any decision or final order of the Director
General
shall be entertained and, the decision or final order of the
Director
General shall be final and executory unless an appeal to the Court of
Appeals
or the Supreme Court is perfected in accordance with Rule 41 of
the
Rules of Court applicable to appeals from decisions of Regional Trial
Courts.
RULE
10 EXECUTION
OF
DECISIONS PENDING APPEAL
Section 1. Order
of execution. On motion of the prevailing party with notice
to
the adverse party, and upon filing of the approved bond,
the
Director may, in his discretion, order execution to issue even before
the
expiration of the time to appeal, upon good reasons to be stated in the
order. Such execution, however, may be stayed by filing of an
approved
counterbond.
Section 2. Cancellation
of patent is immediately executory. Unless restricted by the
Director, the decision or order to cancel the patent, claim or part of
a claim by the Director shall be immediately executory even pending
appeal.
RULE
11 JUDGMENTS,
FINAL
ORDERS AND ENTRY THEREOF
Section 1.
Rendition of judgments and final orders. A judgment
or final
order determining the merits of the case shall be in writing, stating
clearly
and distinctly the facts and the law on which it is based, signed by
the
Director, and filed with the appropriate Register of the Office.
It is the filing
of the decision, judgment or final order with the Register, not the
signing
thereof, that constitutes rendition or promulgation.
Section
2.
Entry of judgments and final orders. If no appeal or
motion
for reconsideration is filed within the time provided in these
Regulations,
the Director shall forthwith cause the entry of the judgment or final
order
in the appropriate Register of the Office. The date of finality
of
the judgment or final order shall be deemed to be the date of its
entry.
The record shall contain the dispositive part of the judgment or final
order and shall be signed by the Director, with a certificate that such
judgment or final order has become final and executory.
If no appeal or motion
for reconsideration has been filed on time, the judgment or final order
rendered by the Director or the Director General, as the case may be,
becomes
final and executory, and should immediately be caused to be entered by
the Director. To ensure this action the prevailing party should
file
a motion for the entry [and execution, if proper] of the
judgment.
The date of entry is the starting point of the six months period for
filing
a petition of relief, as well as the five years period of prescription
of judgments.
This rule corrects
the erroneous practice of entering the judgment or final order long
after
it had become final and executory. Even if the physical act of
entering
the judgment or final order is done after it had become final and
executory,
the date when it became final and executory shall be deemed the date of
its entry.
FINAL
PROVISIONS
Section 1. Coverage.
These rules and regulations shall apply to all inter partes
cases pending
with the Bureau of Patents, Trademarks and Technology Transfer upon the
effectivity of the IP Code on January 1, 1998, including interference
proceedings
declared prior to the effectivity of these Regulations and all inter
partes
cases filed with the Office on and after the effectivity of the IP
Code.
Section 1.1. Trademark
applications pending on effective date of the IP Code; opposition;
interference.
The following procedure shall apply to interfering applications for
registration
in the principal register of marks under Republic Act No. 166, as
amended,
pending on the effective date of the IP Code on January 1, 1998:
(a) In all
cases
where interference may be declared under Republic Act No. 166, as
amended,
and its implementing rules and regulations, as amended, the application
which first meets the requirements for registration shall be allowed
and
published for opposition in the IPO Gazette by the Director of the
Bureau
of Trademarks in accordance with the Rules and Regulations on
Trademarks,
Service Marks, Trade Names and Marked or Stamped Containers dated 30
September
1998.
(b) The
Director
of Trademarks shall notify the other applicant or applicants of the
fact
of allowance and publication with the advice that said other applicant
or applicants have the right to file with the Bureau of Trademarks a
notice
of opposition, without need of paying the filing fee, to determine
whether
or not any of the applicant/s and or oppositor/s has the right to the
registration
of the mark including all other issues such as the registrability
of the mark.
(c)
Within five (5)
days from receipt of a notice of opposition from the other applicant or
any of them if there be more than one other applicant, the Director of
Trademarks shall endorse all the files of the allowed application and
the
application of the opposing applicant or applicants to the Bureau of
Legal
Affairs for prosecution in accordance with the provisions of these
Regulations
governing oppositions.
(d) All
other oppositors,
if any, shall file their notice of opposition with the Bureau of Legal
Affairs in accordance with these Regulations.
Section
2.
Implementation. In the interest of the service and
in order
to ensure the continued hearing and disposition of all the cases before
the Office, until the organization of the Bureau of Legal Affairs is
completed,
the functions necessary to implement these regulations shall be
performed
by the personnel of the former Bureau of Patents, Trademarks and
Technology
Transfer as may be designated by the Director General upon
recommendation
of the Chief of the Hearing Division of the Bureau of Patents,
Trademarks
and Technology Transfer who was heretofore designated as
Officer-in-Charge
or Caretaker of the Bureau of Legal Affairs.
Section 3. Separability.
If any provision in these Regulations or application of such
provision
to any circumstance is held invalid, the remainder of these
Regulations
shall not be affected thereby.
Section
4.
Effectivity. These rules and regulations shall take effect
fifteen
(15) days after publication in a newspaper of general circulation.
Done this ____ day
of _____________ 1998.
EMMA C.
FRANCISCO
Director General
|