|
(Petitions
for Cancellations of a Mark Patent, Utility Model, Industry Design, Opposition
to Registration of a Mark & 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
1
DEFINITION OF TERMS
Section 1. Definition
of Terms – Unless otherwise indicated, the following terms
shall be understood as follows:
(a)
“Bureau” means the Bureau of Legal Affairs of the Intellectual
Property Office;
(b)
“Chief Hearing Officer” means the officer within the Bureau who
examines immediate supervision over any Hearing Officer. His title
or official designation may differ from the words “Chief Hearing
Officer” depending on the structure of the Office;
(c)
“Court” means a court of general jurisdiction such as Regional
Trial Court;
(d)
“Director” means the Director of the Bureau of Legal Affairs;
(e) “Director General” means the head of the Intellectual Property
Office;
(f)
“Hearing Officer” means the Officer within the Bureau authorized to
exercise the functions of “Hearing Officer” in these Regulations.
The title or official designation of such officers may differ from the
words “Hearing Officers” depending on the structure of the Office;
(g)
“IP Code” means Republic Act No. 8293 otherwise known as the
Intellectual Property Code of the Philippines;
(h)
“Office” means the Intellectual Property Office;
(i)
“Regulations” means this set of rules and regulations and such
Regulations as may be formulated by the Director of the Bureau of Legal
Affairs and approved by the Director General;
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.
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:
(1)
if it is not new as provided in Sections 23 and 24 of the IP Code;
(2)
if it is not industrially applicable as provided in Section 27 of the IP
Code; or
(3)
if it is excluded from patent protection as provided in Section 22 of the
IP Code.
(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
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.
(a)
The decision or order of the Director or the Committee of Three shall
become final and executory fifteen (15) days after receipt of a copy
thereof by the party affected unless within the said period, a
motion for reconsideration is filed with the Director or an appeal to the
Director General has been perfected.
(b)
Interlocutory orders shall not be appealable.
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 is
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 constitute 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
|