On 20 December 2019, the Intellectual Property Office of the Philippines (IPOPHL) promulgated IPOPHL Memorandum Circular No. 2019-024 entitled "Amendments to the Rules and Regulations on Inter Partes Proceedings" (Circular).

Effectivity

The Circular officially takes effect on 15 February 2020.

What the Circular says

Filing and service of pleadings

Courier service is now explicitly recognized as an allowable mode of filing and service for pleadings, motions, manifestations, and service of interlocutory orders, notices, summons and other processes.

The Circular further states that if a party, counsel, or representative refuses to receive notices to answer or other interlocutory orders issued by the Bureau of Legal Affairs (BLA), or has moved out of the address provided without informing IPOPHL, or if the address provided is incomplete, the BLA shall post the notice or order on the IPOPHL website. The party shall have the period prescribed in the notice or order to comply, reckoned from the date of posting on the IPOPHL website.

Filing requirements and action on deficiencies

In addition to printed copies, filings must include a flash drive containing the PDF and Word files of all pleadings, together with the PDF files of all supporting documents, unless exempted by the BLA.

Filings which do not comply with the Rules may be rejected within fifteen (15) days after filing or receipt by the BLA. If rejected, the BLA shall apprise the party concerned of the deficiencies in the filing, to be complied with within five (5) days.1

Authentication and apostillation

Documents executed and notarized abroad -- including affidavits, certifications, authorizations, object evidence, among other supporting documents -- can now be authenticated through apostillation following the Philippines' accession to the Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents. The Convention took effect in the Philippines on 14 May 2019.2

These documents should have been executed, authenticated or apostillized prior to the filing of the opposition, petition, or answer. However, for purposes of filing the opposition or answer, the apostille may be secured after filing as long as the documents were executed prior to filing the opposition or answer, respectively. Further, the apostille must be submitted before the issuance of the order of default or conduct of the preliminary conference.

Appeals

The decisions or final orders of the hearing/adjudication officer or the Assistant Director of the BLA are no longer subject to reconsideration. Instead, within ten (10) days after the receipt of the decision or final order, a party may appeal the decision to the Director of the BLA, through a memorandum together with the payment of the applicable fees.

Actions to Consider

The Circular now allows the IPOPHL to post notices to answer and interlocutory orders on its website, thus, parties are advised to visit the IPOPHL website regularly to be apprised of developments in their pending inter partes cases.

Parties with documents executed in Apostille-contracting countries no longer need to have their notarized documents authenticated by the Philippine Embassy or Consulate General for the purpose of submitting evidence before the IPOPHL. This will reduce the time and costs necessary to prepare for inter partes cases.


1 The amendment does not state a reckoning point from which the 5-day period is counted. In other provisions of the Rules, the period for curing defects in the filing is reckoned from the receipt of the order from the BLA.

2 Public Advisory: Apostille Convention on Authentication of Documents Takes Effect in PH on 14 May 2019
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