IP/Legal Practice In Indonesia

• Patents are granted for inventions that are new, involve an inventive step, and can be applied in industry. While simple patents are granted for every new invention, development of an existing product or process, and can be applied in industry. Simple patents are granted for inventions in the form of products which not only differ in technical characteristics, but must have a more practical function/use than previous inventions due to their shape, configuration, construction or components which include tools, goods, machines, compositions, formulas, compounds. , or system. Simple patents are also granted for inventions that are new processes or methods;
• Simple Patent claims are limited to one independent claim, while patents have no limit on the number of claims;
• Technological progress in Simple Patents is simpler than technological progress in patents.

Directorate General of Intellectual Property (DGIP) is the apex body which is responsible for all legal and administrative matters relating to registration, assignment and licensing of a patent in Indonesia. Directorate of Patent, Integrated Circuit Layout Design and Trade Secret are the specialized bodies within the DGIP which look after the registration of patents in Indonesia. Some of the duties undertaken by DGIP which regard to patent administration are as follows:

• Policies in relation to the application, publication, classification, search, examination, certification, maintenance, transfer etc. of patents, integrated circuit layout designs and trade secrets;
• Technical and Administrative Assistance and Supervision;
• Preparation of Reports with regard to Patents; and
• The formation and running of the Patents Appeal Commission.

There are two ways to apply for a patent in Indonesia:

1. Directly to the Directorate General of Intellectual Property (DGIP)

If there is a provisional application, then file within 12 months to secure the priority date.

2. Through the Patent Cooperation Treaty (PCT)

If there is an international application then one can apply to the DGIP and convert the application into an Indonesian patent application. This is called ‘entering the national phase’. The time limit for the PCT national phase entry in Indonesia is 31 months from the earliest date of priority and 12 months for the Direct Paris Route application. These terms can be extended for 3 months since the expiry of 31 months as of International Filing Date, filed with acceptable reason and additional fee, or extended for 12 months since the expiry of 31 months as of Priority Date, filed with acceptable reason and additional fee.

Once an application has been filed, it is followed by Publication. The publication period in Indonesia lasts for six months. After the publication stage has been passed, the application will proceed to examination provided the applicant has filed for the examination request.

Article 4 The Patent Act (Law No. 13 of 2016) enumerates what cannot be invention(s):

• esthetical creation;
• scheme;
• rules and methods in conducting activity of:
  • involving mental activity;
  • games; and Business
• rules and methods containing only computer programs;
• presentation of information; and
• discovery in the form of:
  • new use of existing and/or known product; and/or
  • o new forms from existing compound which does not generate significantly enhanced efficacy and contains different relevant known chemical structures to compound.

As per Article 9 of The Patent Act (Law No. 13 of 2016), Inventions which cannot be granted Patent include:

• any process or product of which its publication, usage or implementation contravenes the prevailing legislation, morality, public order, or decency;
• any method of examination, treatment, medication, and/or surgery applied to humans and/or animals;
• any theory and method in the field of science and mathematics;
• all living organisms, except microorganisms; or
• any biological process which is essential to produce plant or animal, except non-biological process or microbiological process.

The following are the grounds on which the Patent Application might be rejected in Indonesia:

• If the criteria enumerated below for grant of a patent are not fulfilled:
  • There should be an element of novelty.
  • It should not be obvious and should involve an inventive step.
  • There is an application of the said invention in the industry.
• There is a lack of clear and full description of the invention in the patent application.
• There is no description of the origin of the invention or if it is based on generic or traditional knowledge.
• That the invention is non-patentable.
• The patent application qualifies as a non-invention.
• Products and processes which are contrary to law, religion, public order or morality.

When a Patent is registered in Indonesia, the Patent holders get the following exclusive right:

• The right to create, use, sell, import, lease or deliver, or supply etc. for the purpose of selling, leasing or delivering, the patented product.
• The right to use the patented production process to create a new product.

The following documents are required to be filled mandatorily in Indonesia:

1. Patent Description;
2. Claim(s);
3. Abstract;
4. Invention Drawing(s) in PDF and Drawing(s) for Publication in JPG;
5. Oath or Declaration to indicate Ownership of Invention by Inventor;
6. Assignment of Ownership (if the inventor and Applicant are different persons or Applicant is a legal entity);
7. Power of Attorney (if Application is filed by a consultant);
8. Validation to indicate Micro and Small-sized Enterprises (if the Applicant is a Micro or Small Enterprise);
9. Deed of Establishment (if Applicant is an educational institution or government R&D agency);
10. Certified copy of the priority document (if filed by claiming priority right).

The application should be filed in Indonesian. However, if patent claims and descriptions are filed in English, it is permitted to submit the translation into Indonesian within one month from the filing date. If an application is filed by a person or legal entity other than the inventor, it is necessary to provide a scanned copy of the signed Assignment Deed between the applicant and the inventor. Power of Attorney, Statement of Ownership, and Assignment Deed from Inventor(s) to Applicant(s) can be submitted within 3 months of filing. The period can be extended for another 2 months on request and further for another one month with an additional fee.

The grounds on which a third party can oppose the grant of patent on the following grounds:

• Non-fulfillment of requirements of patent.
• The invention subject of the issued patent satisfies one of the non-invention criteria or the non-patentable criteria; and/or
• The issued patent is the same as the invention in a previously issued patent.

Standard Patents typically take 3-5 years from the date of filing, while Simple Patents can take up to two years to process. Standard patent applications are open to examination and opposition claims from any third parties for a period of six months after they are published in the Official Gazette (typically about 18 months from the date of filing). The inventor must formally request a substantive examination after this six-month term of publication (this must be done within 36 months of the date of filing). Simple patents are assessed after publication and published three months or more after the date of filing. Up to 12 months after this initial application has been submitted, applicants from Convention countries may assert the “priority date” of a preceding application filed in a member country.

The Patent Office is obligated by law to grant a Patent or to reject the Patent application within a statutory period of thirty months after the receipt date of the request for substantive examination if Substantive Examination is requested after publication ends or at the end of publication if Substantive Examination is requested before publication end. A Patent certificate will be issued and the invention shall be listed in the General Register of Patent. In case of rejection, the Patent Office shall send a notification of rejection to the applicant or his proxy. The applicant may file an appeal against the rejection to the Patent Appeal Commission not later than three months after receipt of the notice of rejection.

The first annuity must be paid no later than 6 months from the date of the patent grant. The first annuity payment will include the years from filing until granted plus one following year. The next annuity is to be paid no later than 1 month before the same date of the Filing Date within the protection period of the following year. If the annuity has not been paid until the specified period, the Patent is deemed to be invalidated.