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Indonesian Patent System: A Brief Introduction

Prayudi Setiadharma, S.H., M.IP.

Patent Law no. 14/2001

Trademark Law no. 15/2001

Copyrights Law no. 19/2002

Industrial Designs Law no. 31/2000

IC Layout Designs Law no. 32/2000

Trade Secrets Law no. 30/2000

Geographical Indications Incorporated within the

Trademark Law Government Regulation on GI

Application Rules & Procedures being promulgated

Plant Variety Rights Protection (PVP)/Plant Breeder’s Rights

Law no. 29/2000

IPR regimes in Indonesia

Paris Convention

Bern Convention

TRIPS Agreement

Patent Cooperation Treaty (PCT)

WIPO Copyright Treaty

WIPO Publishers and Performers Treaty

There are ongoing debates and discussions on whether or not Indonesia should join the Madrid Protocol

International contractual obligations for Indonesia on IPR protection

STRUCTURE OF INDONESIAN IPR/PATENT SYSTEM

appointmentPatent Examiners

DIRECTORATE OF PATENTS

Director of Patents

DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY RIGHTS

(DGIP)

Director General of Intellectual Property Rights

DEPARTMENT OF LAWS AND HUMAN RIGHTS

Minister of Laws and Human Rights

First to File system;

Protection Period 20 years (10 years for utility model) no extension;

Substantive Examination upon Request by the applicant no later than 36 months since Filing date.;

Invention: technologically specific problem-solving activities in the form of process, product, or development from existing process/product

Law no. 14/2001 on Patents – Basic Concepts

Novelty not anticipated by any disclosure prior to Filing Date;

Inventive Steps not obvious to any person skilled in the art at the time of the filing date;

Industrial Applicability implementable in industrial manner;

Substantive Patentability Requirements under Indonesian Patent Law (Article 2)

Aesthetic creations; Schemes; Rules and Methods to perform activities

related to: - mental activities; - games; - business; Rules and Methods related to Computer

Programs; Presentation of any particular information

SUBJECT MATTERS NOT REGARDED AS INVENTION

- Process/product contravening laws, public order, and morality;

- Method of treatment/medication/surgery applicable to human and/or animals;

- Scientific and mathematic theories and methods;

- Living Organisms except Micro-organisms - Essential biological process to produce

plants or animals, except non-biological or micro-biological process.

Inventions excluded from Patentability (Article 7)

KINDS OF APPLICATION ELIGIBLE FOR FILING IN INDONESIA

A

P

P

L

I

C

A

T

I

O

N

BASIC/

NON-CONVENTION

APPLICATION

for

Patent/Utility Model

PARIS CONVENTION

APPLICATION

for

Patent/Utility Model

PCT-BASED

APPLICATION

for Patent only

Filing no later than 12 months from Priority Date

CHAPTER 1: Entry to National Phase no later than 30 months from Priority Date

CHAPTER 2: Entry to National Phase no later than 31 months from Priority Date

No Priority Date Applicable

Rules and procedures are being modified as to abolish the separation of Chapter I and II.

Thus all PCT-based application will be using the same deadline of 31 months from the

respective Priority Date

FLOW OF INDONESIAN PATENT APPLICATION PROCESS

APPLICATION

MIN.

ADM.

REQ.

COMPLETED?

FILING DATE

ADMINISTRATIVE

EXAMINATION

SIX MONTHS

PUBLICATION

PERIOD

COMPLETED?

SUBS.EXAM.

REQUEST

CONSIDERED

AS

WITHDRAWN

SUBSTANTIVE

EXAMINATION

PATENTABLE?

ALLOWED TO

GRANT

REFUSAL

SUCCEED? APPEAL

Incomplete

No

18 mts

No

Not Filed

No Insufficient

≤ 36 mts

Yes in ≤

3 mts

≤ 36 mts Filed

Yes

Yes

Complete

Sufficient Yes in ≤ 30

days

≤ 3 mts

≤ 12 mts

CERTIFICATE

Possible for

Challenge?

STATE

ADMINISTRATION

COURT

Theoretically

possible, yet

still no precedent

Minimum requirement :

Specification Document in Indonesian language English may be filed first, translation to follow in 1 (one) month; Applicant name & address;

Foreign-based filing must through local registered IPR Consultant Power of Attorney must be furnished within three months;

PCT-based application must be accompanied by copy of International Publication Sheet;

Declaration of Entitlement, Assignment from the inventor(s) and certified copy of priority document(s) shall be furnished within three months.

Patent Application Filing Procedures

After 18 months from Filing Date; lasts for 6 months theoretically can be expedited by request.

Issued in Patent Gazette digital version available at IPDL site still inaccurate;

Third party may file opposition used as reference by the examiner at substantive examination stage

Publication Period

Mandatorily must be concluded in 36 months;

Examiner issues Official Actions may be more than once

No “temporary suspension”;

Results from corresponding applications in other countries may help a lot.

SUBSTANTIVE EXAMINATION

Backlogs – only 70 examiners, more than 3000 examinations a year.

Examiners hesitate to conduct full-examination.

No formal option to expedite.

PROBLEMS AT THE SUBSTANTIVE EXAM. STAGE

Issuance of Notice of Allowance, to be followed by Letters Patent in 3-6 months;

Post-grant amendment not possible – except for cancellation of some claims.

Subject to payment of back-annuities calculated from the year of filing – no later than the first anniversary of the grant.

PATENT GRANTING

Annuities must be paid every year, deadline at the anniversary of the granting date each year.

2,5% surcharge per month for late payment.

Revocation of the patent if fail to pay annuities for three consecutive years.

Annuities for the 18th, 19th and 20th year must be settled in the 18th year.

DUTIES OF PATENTEE: ANNUITIES (Article 18)

Payment is due on Anniversary of grant date, BUT annuity year is computed from filing date easily leads to a CONFUSION;

CALCULATION METHOD:

- Record the filing date and grant date.

- Calculate the expiration date.

- Determine the last anniversary of grant date before expiration and put it as a deadline of 20th annuity payment.

- Make a countdown to determine the annuity year due for the first anniversary of grant date.

DUTIES OF PATENTEE: ANNUITIES (Article 18)

Implementation within Indonesia no sanction failure to comply may be grounds for other party’s request for Compulsory Licensing.

DUTIES OF PATENTEE

No clauses that will harm Indonesian economy, or that will restrict Indonesians’ access to posses and develop the patented technology;

Must be recorder at the IPO, otherwise no binding effect to third party;

Still no Government Regulation concerning Patent Licensing – Unenforceable?

PATENT LICENSING

PATENT LITIGATION

Patent

Invalidation

Patent

Infringement

Patent

Misappropriation

Subs. Valid,

Double-Pat.,

Misconduct in

Compul. Lcs.

Inventorship/

Ownership

Issues

Damage/

Interlocutory

Injunction

C

O

M

M

E

R

C

I

A

L

C

O

U

R

T

S

U

P

R

E

M

E

C

O

U

R

T

Duty of

Confidentiality

DISTRICT

COURT

HIGH

COURT

Civil action

Civil action

Civil action

Criminal action

Criminal action

Appeal Cassation

Cassation

Restricted to literal infringement No “Doctrine of Equivalent”

Expedited civil court proceedings No appeal through H.C. ≤180 days Commercial Court/≤60 days Supreme Court

Criminal action max. 4 years imprisonment and/or ± USD 50,000.00 fine

PATENT INFRINGEMENT ISSUES

Utilization of Patent by the Government one-sided take over by the govt. for patents considered vital to national interests/needs compensation for patent holders

Parallel Importation non-infringement for pharm.prod. already imported by the pat. provided the importation complies with relevant regulation;

Bolar Provision others may utilize a pharmacy patent 2 years before expiration for obtaining marketing & production license from FDA.

IMPORTANT ISSUE TO NOTE

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Copyright © 2012

Prayudi Setiadharma