Philippines

INTELLECTUAL PROPERTY P H I L I P P I N E S

• e , I ,

OFFICE ORDER19 7 Series of 2010

SUBJECT: MECHANICS FOR IPO-MEDIATION AND SETTLEMENT PERIOD

Pursuant to the authority of the Director General of the Intellectual Property Office of the Philippines under Sec. 7.1 of Rep. Act No. 8293, Intellectual Property Code of the Philippines and Office Order No. 154, Rules of Procedure for IPO Mediation Proceedings, a Settlement Period is hereby declared from January 31 to February 28, 2011.

1. Re ferral of Cases

The conc erned officials of the Bureau of Legal Affairs, DITTB and ODG are hereby directed to undertake the following activities:

1.1 Audit l and make an inventory of all the cases in their dockets ; 1.2 Refer the following cases for mediation, subject to limitations under Section1 2

and Section 33 of the Rules of Procedure for IPO Mediation Proceedings:

I Audit means to che ck and ensure that all pleadings and orders are all attached to the records of the case

2 Sect ion J. Cov erage - Th e following cases shall be required to undergo 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 term s of a licen se invol ving the author's right s to publi c performance or other communication of his work; e. Cases appealed to the Office of the Director Gene ral from decisions of the Bureau of Legal Affairs ("BLA") and the Documentation, Info rmation and Technology Transfer Bureau ("DITTI3 "); and f. All other cases which may be referred to mediation during the settlement period declared by the Director General.

Cases with pending application for Temporary Restraining Order/P reliminary Injunction, attachment or other ancillary remedies shall not be referred to mediation unless the parties, in jo int written motion, pray that the case be made to undergo mediation.

In cases covered under par. (e), the mediation shall be referred to a mediator other than the one who medi ated the case in the BLA or DITTB unless otherw ise requested by both parti es. In the event the parties, afte r an unsuccessful mediation, advise the IPO Mediation Office of their intent ion

Republic of the Philippines INT ELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave ., Makati Ci ty 1200 Philippi nes • www.ipo phi l.go v.ph Telephone : +632-7525450 to 65 • Facs imile: +632-8904862 • ema il: mail@ ipoph il.gov.ph

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a. All pending cases not yet submitted for decision as of October 21 , 2010; and b. Cases already submitted for decision as of October 21,2010 shall be referred

to the mediation at the discretion of the referring office. These cases should still have the possibility of settlement, considering, among other factors, age of the case, relationship of the parties and other relative circumstances.

1.3 Closely coordinate with IPOPHL Mediation Offi ce on the scheduling of cases for the initial Mediation Conference;

1.4 Issue an Order on or before December 29, 2010 referring the above-mentioned cases for mediation. The Order should be made in compliance with the 2nd

paragraph of the Section 3 of the Rules of Pro cedure for IPO Mediation Proceedings, to wit:

"The Order ref erring a case to the IPO Mediation Office shall indicate the specific date and time when the parties shall pro ceed to the Mediation Office, with or without their respective counsels. It shall also direct parties to be present before the IPO Mediation Office in person or through a duly authorized

to submit their dispute to arbit ration , the originating office shall dismiss the case upon proof that arbitration proceedings has commenced pursuant to the pertinent rules if and when arbitration is available.

3 Section 3. Commencement of mediation - Upon the effect ivity of these Rules, cases filed before the BLA and DIITB as well as appeals made before the Office of the Director General shall be referred to the IPO Med iation Office immediately, Provided, that in Inter Partes and IPV cases, and in appeals to the Director General, the case shall be ref erred to mediation only after the fili ng of the answe r or comment to the appeal. Any case fi led before the effectivity of these Rules, wherein no decision has been rendered, may be ref erred to the IPO Mediation Office during the Settlement Period. Once a case is referred to mediation, the adjudica tion proceedings therefore shall be suspended until the case is returned by the IPO Mediation Offi ce for resumption of proceedings in accordance with these Rule s.

The Order referring a case to the IPO Mediation Office shall indicate the spec ific date and time when the parties shall proceed to the Med iation Office, with or without their respective counsels. It shall also direct parti es to be pres ent before the IPO Mediation Office in person or through a duly authorized representative with a Special Power of Atto rney , or if the party is a partnership , association or corporation, to be repre sented by an authorized representati ve authorized by a Secret ary's Certifica te or Board Resolut ion , with the written authority of the representative specifica lly stating that he or she is fully empowered to offer, nego tiate, acce pt, decid e and enter into a compromise agreement. Further, the Order shall state that a party not present in person, or in the case of a corporation, partnership or asso ciation, its most senior officer, to be reach able by phon e or any communication facilit y durin g each mediation sess ion to recei ve any query or other communicat ion from the mediator or the IPO Mediation Office . A copy of the Order shall be furn ished the IPO Mediation Office.

Upon the appearance of the part ies at the IPO Mediation Office, the Med iation Head or his duly authorized represen tative shall brief the part ies on mediation as an alternative interest-ba sed conflict resolut ion process and sha ll ass ist the par ties in the selection and appo intment of their mediator. Before commencing the mediation process, parties will be required to sign an agreement to mediate on an agreed date to manifest their com mitment and sincerity to prepare for and enga ge in a meaningful settlement process.

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representative with a Special Power of Attorney, or if the party is a partnership, association or corporation, to be represented by an authorized representative authorized by a Secretary 's Certificate or Board Resolution, with the written authority of the representative specifically stating that he or she is fully empowered to offer, negotiate, accept, decide and enter into a compromise agreement. Further, the Order shall state that a party not present in person, or in the case of a corporation, partn ership or association, its most senior officer, to be reachable by phon e or any communication facility during each mediation session to receive any query or other communication fr om the mediator or the IPO Mediation Office. A copy of the Order shall be furnished the IPO Mediation Office. "

1.5 Enjoin their respective docket clerk s to ensure that the record s of the cases are sent to the IPOPHL Mediation Office at least three (3) days before the init ial Mediation Conference.

2. Accreditation of Mediators. In order to become an accredited mediator of the IPOPHL, one must meet the qualification s and comply with the requirements set forth belo w.

2.1 Qualifications of Mediators. An appli cant must possess all of the following minimum qualifications at the time of submission of the application to join the IPOPHL Mediation Office's List of Accredited Mediators:

a. Have finished a bachelor' s degree , preferably engineers , psychologists, chemists, teachers, doctors, busine ssmen and lawyers;

b. At least 37 year s old unless by reason of his expertise, one of younger age may qualify;

c. Wi th good moral cha racter; d. Trustworthy and able to handle confidential information; e. Creati ve in giving proper options to the parties; f. At least seven (7) years of experi ence in mediating cases or 10 legal

practice involving intellectual property disputes; and g. Proficient in oral and written communication.

2.2 Requirements for Application. All appli cants must submit the following requirements to IPOPHL Mediation Office on or before January 4, 2011:

a. Application letter b. Curriculum vitae (please include character references with contact

information); c. 1 (2 x 2 picture) and 1 (l x I picture) with white background; and d. NBI clearance.

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2.3 Selection Process. The selection of prospective mediators shall be based on their education, trainin g, experience, and background. There will also be a panel interview for each applicant on January 6 - 7, 2011.

Applicants shall attend an "Integrated Mediators ' IP Rights and Skills Training" on January 18-21,2011;

2.4 Accreditation. The IPOPHL Mediation Office shall endorse the applicants who have successfully completed the required training for accreditation as IPOPHL mediators to the Director General. All accredited Mediators shall sign a contract of service indicating the terms and conditions of their accreditation, including their remuneration. For this purpose, the rules and requirements under RA 9184 and the Implementing Rules and Regulations shall be strictly observed.

2.5 Renewal of Accreditation. The accreditation shall last for a period of one year. Accredited Medi ators who mediate at least twelve (12) cases and successfully settle at least six (6) cases shall be accredited for another year. Those who fail to mediate and settle the required number of cases shall loose their accreditation.

2.6 Scrutiny Desk and IPOPHL Employees. The IPOPHL Mediation Office shall designate a pool of experienced mediators and IP experts from among the IPOPHL employees to form part of the Scrutiny Desk. Upon request of the Mediator, the Scrutiny Desk shall provide advice and guidance on substantive matters as well as technical and legal issues related to the case under mediation. As a general rule , IPOPHL Employees shall not be allowed to mediate.

3. Mechanics for the Settlement

3.1 Conduct of Mediation . Mediators shall conduct mediations in accordance with the Rules of Procedure for IPO Medi ation Proceedings.

3.2 Schedule of Mediation. The IPOPHL Mediation Office shall schedule the Mediation Proceedings of the parties. They shall inform the originating office of the specifi c date and time when the parties shall be first required to appear for purposes of including such information in the "Order" as indicated in item 1.4.

3.3. Supervision. The Medi ators shall mediate cases under the supervision of the IPOPHL Mediation Office.

3.4. Period of Mediation . The initial mediation conference as well as all the subsequent mediation proceedings maybe conducted beyond the durati on of the

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Settl ement Period as long as tne referral was made within the time specified in item 1, Referral of Cases of this Mechanics, provided the period prescribed in Section 6 of IPO Mediation Proceedings is complied.

3.5. Suspension of Adjudication. As indicated in Section 3 of the Rules of Procedure for IPO Mediation Proceedings, "once a case is referred to mediation, the adj udication proceedings therefore shall be suspended until the case is returned by the IPO Mediation Office for resumption of proceedings in accordance with these Rules. "

3.6. Appointment of Mediator. As indicated in Section 3 of the Rules of Procedure for IPQ Mediation Proceedings, "Upon appearance of the parties at the IPO Mediation Office. the Mediation Head or his duly authorized representative shall brief the parties on mediation as an alternative interest-based conflict resoluti on process and shall assist the parties in the selection and appointment of their mediator. "

Should the parties fail to agree on a Mediator, each party, starting with the complainant, shall be asked to alternately delete the name of the mediator whom they do not wish to appoint from among the list of accredited Medi ators. The pers on whose name is the last one remaining on the list shall be designated as the Medi ator. In the event that such mediator is not available, they may opt to appoint the Mediation Head or choose the second rem aining name in the list.

3.5 Authority of the Mediation Head. (a) For cases filed after October 20, 2010 which are required to be referred to mediation under Sec tion 1 of the IPO Mediation Proceeding, the parties may choose the Mediation Head to mediate their case or defer the referral for medi ation until the commencement of the Settlement Period; (b) If the appointed medi ator is absent without a reasonable cause, the parties may opt to appoint the Mediation Head or choo se another Med iator from the IPOPHL Mediation Office' s List of Accredited Mediators; and (c) After a failed mediation by any of the mediators, the parties may still request the Mediation Head to further mediate the case.

4. Payment of Mediators , Claims

4.1 To professionalize mediation through the accreditation of highly qualified medi ators, the follo wing mediation fees shall be collected;

4.2. Once the parties agree to mediate in accordance with Sec tion 3 of the Rules of Procedure for IPO Mediation Proceedings, the IPOPHL Medi ation Office shall issue a Statement of Account (SOA ) to each party on the same day. Each party shall pay a discounted medi ation fee of PI , 000 .00 to the IPO Cashier. After the Settlement Period , the regular mediation fees under

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Section 7 of the Rules of Procedure for IPO Mediation Proceedings shall apply;

4.3. Mediators shall submit a monthly Mediators' Claims to the IPOPHL Mediation Office before the 5th day of the month and their fees shall be paid every io" day of the month. The Mediators' fee shall be paid through a check to be picked up at the Cashier's Office;

5. Mediation Report

The IPOPHL Mediation Office shall submit Mediation Report to the Director General within sixty (60) days following the expiration of the Settlement Period. The Report shall contain the accredited mediators who have mediated during the Settlement Period. It shall also include statistics of the following (a) cases referred for mediation, (b) cases where parties refused mediation, (c) settled cases; (d) unsettled cases; and (e) cases where mediation was discontinued.

After the Settlement Period, the IPOPHL Mediation Office shall continuously submit a Mediation Report at least once every three (3) months to the Director General with copies furnished to the originating office.

Strict compliance with this Office Order is hereby enjoined.

ATTY.RI~O R.~LOR Director General