Alert 378 - Philippines - Intellectual Property Office (IPO) signs rules for procedure for mediation proceedings


In the spirit of promoting and encouraging the use of Alternative Dispute Resolution, the IPO has signed Rules of Procedure for IPO Mediation Proceedings. 

The Rules, which took effect on 21 October 2010, introduce compulsory mediation in the following cases:
  1. Administrative complaints for violation of IP Rights and/or Unfair Competition (IP Violations).
  2. Inter Partes cases (Opposition and Cancellation).
  3. Disputes in relation to technology transfer payments.
  4. Disputes relating to the terms of a licence involving an author’s rights to public performance or other communication of his work.
  5. Cases appealed to the Office of the Director General from decisions of the Bureau of Legal Affairs and Documentation or the Information and Technology Transfer Bureau.
  6. Cases referred to mediation during the ‘settlement period’ declared by the Director General.  (Any case commenced before the Mediation Rules came into effect may be referred to mediation during this period).

Mediation in IPO proceedings is not new.   Previously, parties had an opportunity to negotiate and settle during the preliminary conference, which was established for this purpose.

With the new Rules formally requiring mediation, however, parties should expect the following changes:
  1. Proceedings are likely to take an additional three to five months. 
  2. The authority given to a counsel/agent must be by way of a Company Secretary’s Certificate or a Board Resolution.
  3. Additional official fees of approximately US$100-US$300, depending on the number of mediation sessions.
  4. Dismissal of the case, or a declaration that the party concerned is in default, for failure to attend the mediation.

Parties must choose a mediator from a list of accredited mediators.  Mediations will be held at the newly created IPO Mediation Office.