IPO Philippines Cases Mediation, Now Mandatory

The Intellectual Property Office (IPO) has recently made widely known the Revised Rules on Mediation . It is otherwise known as IPOPHL Memorandum Circular No. 008, Series of 2018. As a result, mediation is now a need for cases filed with the IPO.

How IPO cases were handled before the IRR

Before the release of the Revised Rules on Mediation, Intellectual property cases filed with the IPO are only referred for mediation. Any one of the parties may refuse to undergo mediation. Should any of the parties refuse, the case will be referred back to the source bureau. In the case of appeal, the Office of the Director General will oversee the continuation of the arbitration. The office of the Director General also handles appeal proceedings.

New changes following the IRR

With the release of the IRR, parties to a case are now required to undergo mediation. This happens at the IPO’s Alternative Dispute Services. Parties who do not appear during mediation shall cause the dismissal of the case. Or, it may render such party in default.

When is Mediation mandatory

Mediation is now mandatory for the following intellectual property cases, for instance:

administrative complaints for violation of intellectual property rights and/or unfair competition;
inter partes cases including oppositions and petitions for cancellation;
technology transfer payment disputes;
disputes relating to the terms of a license involving the author’s rights to public performance or other communication of his work; and
appeals to the Office of the Director General from the decisions of the Bureau of Copyright and Other Related Rights
appeals to the Bureau of Legal Affairs, and the Documentation, Information and Technology Transfer Bureau.

Intellectual property violation not submitted to mediation

cases with application for Temporary Restraining Order
application for Preliminary Injunction
attachment application
other ancillary remedies
lastly, cases requested to not be under mediation.

The mediation period lasts for sixty days from the time the case is submitted for mediation. Likewise, a thirty day extension may be given upon the request of both parties to the originating office. Mediator’s approval is required.

If the mediation is successful because the parties agree to a compromise agreement, the compromise agreement will be submitted for the approval of the originating office. Therefore, the originating office will make sure that the terms is not contrary to law, public policy, morals or good custom. Also, the originating office will check if any part of the compromise agreement follow the above guidelines.

Approved compromise agreements bear the effect of a decision or judgement on the merits. They are immediately executory and must be enforced. Adjudication or appeal proceedings will continue if the mediation is unsuccessful and the parties fail to agree.