IPOPHL imposes mandatory mediation for IP disputes

Intellectual Property Office of the Philippines (IPOPHIL) Director General Josephine Santiago

The government will require intellectual property (IP) disputes to first try settling their rows outside court, preventing parties from jumping to litigation where both sides can’t win.

Starting on Friday, parties in dispute over IP cases will be required to undergo mediation, which is a more cost-efficient approach according to the Intellectual Property Office of the Philippines (IPOPHL).

The value in this approach, IPOPHL Director General Josephine Santiago said, is the possibility of reaching a compromise, instead of going to court where only one party wins.

“In mediation, they can make a compromise agreement with mutually beneficial terms. That’s the value here,” she pointed out.

Prior to this proposal, disputes on IP are required to be referred to mediation, which is being handled by IPOPHL. The mediation itself, however, is not mandatory.

This led to around 900 cases going straight to court instead, a more time consuming and expensive process, from 2011 to August of this year, according to IPOPHL data.

In that period, a total of 2,063 IP cases were referred to mediation, but only 55.7 percent or some 1,150 cases underwent mediation.

Of this figure, 1,140 cases are done with mediation, wherein 42.9 percent of which have agreed to settle. IPOPHL hopes the settlement rate can improve through this new policy on mandatory mediation.

“Right now, the yearly average of cases that accept mediation is 40 to 45 percent of intellectual property disputes. If they don’t accept mediation, they return to litigation and that process is quite long not to mention expensive,” Santiago said.

Through mandatory mediation, IPOPHL said it is also aligning its procedures with the court system, which also advocates mediation.

Through Memorandum Circular No. 008 s. 2018 on the Revised Rules for Mediation issued recently, IPOPHL said the mediation of IP cases will be mandatory for the following:

• Administrative complaints for Intellectual Property Rights violations and/or unfair competition;
• Inter partes cases;
• Disputes involving technology transfer payments;
• 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, the Bureau of Legal Affairs, and the Documentation, Information and Technology Transfer Bureau

/kga