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Date Filed: 03 August 2018

WHEREAS, Republic Act No. 9285, also known as the Alternative Dispute Resolution Act of 2004, directed all government agencies to encourage and actively and actively promote the use of Alternative Dispute Resolution (“ADR”) as an efficient tool and procedure for resolving disputes or cases;

WHEREAS, the Intellectual Property Office of the Philippines (“IPOPHL”) enhanced its ADR Program, whereby cases filed in the IPOPHL are referred to mediation;

WHEREAS, under the current Rules and Regulations (Office Order No. 154, Series of 2010), while the referral of cases to mediation is mandatory, the actual mediation of cases is not;

WHEREAS, mediation so far has been effective and efficient in resolving IP cases filed in IPOPHL;

WHEREAS, there is a need to fully maximize the benefits of mediation, particularly, in expediting the resolution of IP cases;

NOW, THEREFORE, and pursuant to the authority of the Director General under Section 7.1 of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines, the Rules on Mediation are hereby revised as follows:

Section 1. Coverage. The following cases shall undergo mandatory mediation:

a)   Administrative complaints for violation of Intellectual Property Rights (“IPV”) and/or Unfair Competition;

b)   Inter Partes cases (“IPC”);

c)    Disputes involving technology transfer payments;

d)   Disputes relating to the terms of a license involving the author’s rights to public performance or other communication of his work; and

e)   Appeals to the Office of the Director General from the decisions of the Bureau of Copyright and Other Related Rights (“BCORR”), the Bureau of Legal Affairs (“BLA”), and Documentation, Information and Technology Transfer Bureau (“DITTB”).

Intellectual Property Violation (IPV) 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 written motion, request that the case be mediated.

Section 2. Commencement of mediation proceedings. A case filed in any of the originating bureau or an appeal to the Director General shall be submitted to the BLA’s Alternative Dispute Resolution Service (ADRS) immediately after the filing of the answer or comment to the appeal. The proceeding in the originating bureau/office is suspended until the case is returned by the ADRS to the originating bureau/office.

The Order submitting the case to mediation shall direct the parties to appear before the ADRS for a pre-mediation conference on the date and time indicated therein. The parties themselves shall appear before the ADRS. Parties, including partnership, association or corporation, or any juridical person, however, may be represented.  The  representative(s)  shall  submit  to  ADRS  proof  of  written authority such as Special Power of Attorney, Secretary’s Certificate or Board Resolution, stating that the representative(s) is/are fully empowered to offer, negotiate, accept, decide and enter into a compromise agreement. The Order shall also state that a party not present in person, or in the case of a corporation, partnership or association, its most senior officer, should make himself reachable by phone or any communication facility during each mediation session to receive any query or other communication from the mediator or the ADRS.

During  the  pre-mediation  conference,  the  parties  shall  be  briefed  on mediation process and shall be assisted in the selection and appointment of their mediator from the list of IPOPHL accredited mediators.

Section 3. Venue. The mediation proceedings shall be conducted within the IPOPHL offices. Upon the request of both parties, however, the mediation may be conducted at any venue, provided all related expenses, including transportation, food and accommodation, shall be borne by both parties or as they may agree upon.

Section 4. Mediation Fees. Each party shall pay a non-refundable fee of Four Thousand (P4,000.00) Pesos. The initial payment will entitle the parties to have four (4) sessions at a maximum of one (1) hour per session. Additional session may be held subject to payments of an extension fee of Two Thousand (P2,000.00) Pesos each party. The extension fee will entitle the parties of two (2) one-hour sessions. The mediation fees cover the mediator’s compensation, administrative costs and other related expenses. Both parties shall pay the mediation fees during the pre-mediation conference. On meritorious grounds, a party may be allowed to pay the mediation fees five (5) days after the pre- mediation conference or the issuance of the Statement of Account by the ADRS.

Section 5. Effect of the failure of parties to appear during the mediation and/or  pay  the  appropriate  mediation  fees. The  failure  of  the  party  who initiated the case, such as the oppose, petitioner or complainant, to appear for mediation for including the pre-mediation conference without, and/or to pay the fees shall be grounds for dismissal of the case. On the other hand, if the respondents fails to appear and/or to pay the fees, he shall be declared as in default. For this purpose, a party shall be considered absent if the representative fails to show the appropriate and valid authorization.

Consistent with the objective of expeditious resolution of disputes, a party may be excused for non-appearance in any mediation meeting or session including the pre-mediation conference only once, and only if a valid cause or explanation is submitted through a motion together with the payment of fee therefore within five (5) days after the mediation meeting.

The ADRS shall immediately return the case to the originating bureau/office with the notice of failure of a party to appear during mediation and/or to pay the fees.

Section 6. Successful mediation. If the mediation is successful, the Alternative Dispute Resolution Service shall, within five (5) days from the parties’ submission of their compromise agreement, refer the agreement to the head of the originating bureau/office. The latter shall, within three (3) days from receipt of the draft decision based on Compromise Agreement, approve the same unless the  terms  or  part  thereof  is  contrary  to  law,  public  policy,  morals  or  good customs, in which case the agreement shall be sent back to the parties, through the ADRS for revision or modification. Upon parties’ revision or amendment of the agreement, the same shall be returned again to the originating office for approval.

An approved Compromise Agreement shall have the effect of a decision or judgment on the merits and shall be immediately executory and enforced accordingly in accordance with the pertinent rules of IPOPHL and suppletorily, the Rules of Court.

Section 7. Non-Settlement of dispute. If within sixty (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 period of sixty (60) days, however, may be extended for another thirty (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, wherein the parties are already finalizing the terms and conditions of their settlement and/or completing legal and formal requirements in relation thereto, or any analogous circumstances, the parties may file a written request or motion with the originating bureau/office, together with the payment of applicable fees, for extension of time to finalize the agreement. The originating bureau/office shall evaluate the request or motion taking into account the extension of time sought and the possibility of successful settlement.

If mediation fails and/or is 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. Unless the parties agree to submit their dispute to an arbitration proceeding, the originating bureau/office shall resume the adjudication proceedings. If they agree to refer to arbitration, the originating bureau/office shall dismiss the case.

Section 8. Confidentiality. All mediation conferences shall be conducted in private, and the proceedings thereto, including all incidents, shall be kept strictly confidential. As such, any admission and statement made during mediation shall be inadmissible in a proceeding, unless otherwise specifically provided by law.

To safeguard the confidentiality of mediation proceedings, parties and their counsels as well as anyone present during the mediation shall not pass on any information  obtained  in  the  course  of  the  negotiation  and  discussions  in mediation to any other person, nor mention the same through other means and in any document or pleading, which may be ordered expunged from the records.

Anyone  who  violates  the  confidentiality  rule  will  be  subject  to  proper sanctions pursuant to the Alternative Dispute Resolution Act of 2004 and its Implementing rules, and may also be held liable for contempt.

Section 9. Applicability of the Revised Rules. These Revised Rules shall apply to cases filed with the originating bureau/office on or after becoming effective. These Revised Rules shall also apply to cases filed before effectively but which have not yet been submitted to mediation.

Section 10. Repealing Clause. Office Order No. 154, s. 2010, and all other office Memoranda, Memorandum circulars, Rules or Regulations inconsistent with these Revised Rules are hereby repealed.

Section 11. Separability Clause. If any action or provision of these Administrative Guidelines shall be declared unconstitutional or void by any court of competent jurisdiction, or   the applicability thereof to any person or circumstances shall be held invalid, the constitutionality and validity of the remainder  of  these  Administrative  Guidelines  and  the  applicability thereof to other persons and circumstances shall not be affected thereby, and to this end the sections and provisions of these Administrative Guidelines are declared to be severable.

Section 12. Effectivity. These Rules shall take effect thirty (30) days after publication in a newspaper of general circulation and posting in the IPOPHL website.

Section 13. Submission to the University of the Philippines Law Center. The Bureau of Legal Affairs is hereby directed to immediately file three (3) certified copies of these Rules with the National Administrative Registry at the University of the Philippines Law Center.

Done this 26th day of July, 2018, Taguig City.

(SGD) JOSEPHINE R. SANTIAGO LL.M.
Director General