IPOPHL seeks mandatory mediation for all IP cases
The Intellectual Property Office of the Philippines (IPOPHL) has proposed to revise the rules on mediation, making this process mandatory for all IP cases in order to encourage more parties to resolve IP cases without going to court and align all its procedures with all other courts in the country.
Based on the Draft Memorandum Circular on Revised Rules on Mediation, mandatory mediation covers all IP cases from administrative complaints, inter parties cases, disputes involving technology transfer payments, disputes relating to the terms of 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, the Bureau of Legal Affairs, and the Documentation, Information and Technology Transfer Bureau.
However, mandatory mediation does not cover IP violation cases with application for temporary restraining order/preliminary injunction, or attachment, or other ancillary remedies, shall not be submitted to mediation unless the parties, through joint motion request that the case be mediated.
The proposed circular also said that a case filed in any of the originating bureau or an appeal to the DG shall be submitted to the BLA’s Alternative Dispute Resolution Services (ADRS) immediately after the filing of the answer or comment to the appeal.
The order submitting the case to mediation shall direct the parties to appear before the ADRS for a pre-mediation conference. Each party shall pay the amount of R4,000 in mediation fees.
Failure of the party who initiated the case to appear during the mediation and or pay the mediation fees shall be grounds for dismissal of the case. If the respondent fails to appear or pay the fees, he shall be declared in default. If the mediation is successful, the ADRS shall within 5 days from the parties submission of the compromise agreement, refer the agreement to the head of the originating bureau/ office. After further revision or modification, parties will enter into an approved compromise agreement which shall have the effect of a decision or judgment on the merits and shall be immediately executory and enforced accordingly.
A mediation is deemed unsuccessful if within 60 days from submission of the case to mediation the parties are unable to settle their dispute. The mediator shall declare the mediation as unsuccessful and forthwith terminate the proceedings by issuing a Notice of Non-Settlement of Dispute. The 60-day period, however, maybe extended for another 30 days upon joint written request of parties to the originating office with the concurrence of the mediator. Should no agreement be reached within the additional period, the mediation proceedings shall likewise be terminated.
In meritorious instances, however, the IPOPHL proposed that parties may request for more time to finalize the agreement.
If mediation fails and/or terminated, the ADRS shall advice the head of the originating bureau/office and furnish said office of a copy of the Notice of the Non-Settlement of Dispute.
The IPOPHL is still in the process of soliciting comments from the public to the draft amendment to the rules of procedure of IPO Mediation Proceedings until May 21, 2018.
In pushing for mandatory mediation, the agency said that mediation will enhance the ADR program, align its procedures with the court system and other government quasi-judicial agencies, and harmonize its procedure to that of the commercial courts that handle IP infringement, civil and criminal cases.
IPOPHL mediation service is effective so far in contributing to the fast resolution of cases. The IPOPHL mediation service is thus, at par with international standards. IPOPHL mediators are experts in the field of IP practice and mediation. They are trained by the best international professionals from the World Intellectual Property Organization.
Its record shows that the majority of cases filed before the IPOPHL are Inter Partes cases relating to trademark. Mediation is very useful in the settlement of trademark case due to its commercial nature. In view of the foregoing, the IPOPHL will implement mandatory mediation of cases filed within its concerned bureaus.