26/07/2010
PROCEDURES FOR THE RECORDAL OF PATENT ASSIGNMENTS
The Government closed the 1st half of 2010 by finally ending the 9-year uncertainty regarding the recordal of patent assignments through the issue of Presidential Regulation No. 37 of 2010 (“PR 37/2010”) on 7 June 2010. This regulation serves as the implementing regulation to Articles 66, 67 and 68 Law No. 14 Year 2001 on Patents (“Patent Law”).
For the past 9 years, patent holders, recipients of patent assignments and the Directorate General of Intellectual Property Rights (“DGIP”) were left in the dark on how a patent assignment should be recorded. The Patent Law, which came into force on 1 August 2001, only generally regulated on the obligation to submit an application for the recordal of their patent assignment to DGIP. However, following the submission, the application couldn’t be processed pending the issuance of the implementing regulation on the requirements and procedures for the recordal.
With the issuance of PR 37/2010, the waiting has been put to an end, but the Patent Directorate of DGIP now has the enormous task of processing the tall pile of requests for patent assignment recordal that were submitted both prior to and after the issuance of PR 37/2010. For the requests that were submitted prior to PR 37/2010, DGIP has 60 (sixty) days as of the coming into force of PR 37/2010 to notify the applicants regarding the recordal requirements that they have not complied with, although PR 37/2010 does not clearly specify the consequence in the event of DGIP’s failure to comply with the 60 days processing time frame.
Of interest is the provision in PR 37/2010 that gives to a person or entity the right to refuse the assignment of a patent to him/her/it, based on other reasons acknowledged by the law and regulations. A person or entity that refuses a patent assignment to him/her/it is under the obligation to notify DGIP by way of submitting a Statement Letter to that effect. Upon its receipt of the Statement Letter, the relevant patent may be revoked. This leads to the question of whether a certain procedure must be followed for the revocation.
Despite the 9-year gap and some remaining uncertainties, the issuance of PR 37/2010 is a breath of fresh air in the development of Intellectual Property Rights in Indonesia, in this case in the field of patent. We hope that the issuance of PR 37/2010 will soon be followed by issuance of other legal instruments / implementing regulations, which are required by Patent Law, Trademark Law and other IP related laws, such as implementing regulations on recordal of license for trademarks, recordal of license for patents and procedures on division of applications for multi-class trademark applications. (by: Inge Octalibrayani)