21 Oct 2016
NEW PATENT LAW

On 26 August 2016, the Indonesian Government enacted Law No. 13 of 2016 on Patents (“New Patent Law”). This new law became effective on the enactment date and replaces Law No. 14 of 2001 on the same subject matter (“Old Patent Law”).

The noteworthy provisions of the New Patent Law are as follows:

Scope of Patent Protection

The New Patent Law stipulates in its Chapter II Article 4 that what it means by ‘invention’ does not include:

 

1. aesthetic creations;
2. schemes;
3. rules and methods to perform (i) an activity which involves a mental activity; (ii) a game; and (iii) a business activity;
4. rules and methods which only contain a computer program;
5. presentation of information;
6. discovery of (i) new usage of an existing and/or known product; and/or (ii) new form of an existing compound which does not have a significant merit improvement and which chemical structure difference is already known.
   
   

Item # f is new. It was not regulated in the Old Patent Law. The New Patent Law also acknowledges patents as intangible assets that can be fiduciary collateralized.

Obligations of Patent Holders

 

The New Patent Law obligates patent holders to produce the patented products or use the patented processes in Indonesia. The exemption previously provided under the Old Patent Law is removed. The production of the patented products and use of the patented processes must be conducted within the corridors of technology transfer, capital investment and / or creation of new employment.

Registration Procedure

 

The New Patent Law simplifies the registration process. The application form can now be submitted electronically/online. Previously it could only be submitted manually/offline.

The New Patent Law stipulates a time limit for the announcement to be made by the Minister of Law and Human Rights (“Minister”), of patent applications which have fulfilled the requirements. The announcement must be made at the latest 7 days following the conclusion of a period of 18 months as of the Application Date or the Priority Date, through electronic and/or non-electronic media which is visible and accessible to all persons.

 

Applicants now have a shorter waiting time for the decision on their application. The New Patent Law regulates that the Minister must issue the decision on the application rejection or approval within 30 months as of the acceptance date of the substantive examination request (for general patent applications) and 12 months as of the filing date (for a simple patent applications).

Transfer of Patent Rights

 

The New Patent Law adds endowment or waqf (wakaf) to the list of manners by which the right to a patent transfers or be transferred. Under the new law, the right to a patent transfers or can be transferred by way of or due to:
a. inheritance;
b. a grant;
c. a testament;
d. waqf
e. a written agreement; or
f. another reason which is approved by the prevailing laws and regulations.

Payment of Annuity Fees by Patent Holders and Licensees

 

The New Patent Law changes the timeframe for the annuity fee payments as follows:

1. The first annuity fee payment must be paid at the latest 6 (six) months as of the issuance date of the patent certificate;
2. The next annuity fee payment must be made at the latest 1 (one) month before the anniversary of the Acceptance Date in the following year’s protection period;

Nonpayment of the annuity fee within the specified period will result in the deletion of the respective patent registration. Deleted patent registrations can only be revived on the basis of a Commercial Court decision.

Patent holders can apply for a postponement of the annuity fee payment to the Minister.

Criminal Sanctions

The New Patent Law increases the fines for patent infringements:

 

	General Patent	Simple Patent
New Patent Law	• 4 years imprisonment; and/or • IDR 1 billion fine	• 2 years imprisonment; and/or • IDR 500 million fine
Old Patent Law	• 4 years imprisonment; and/or • IDR 500 million fine	• 2 years imprisonment; and/or • IDR 250 million fine

 

(By: Evelyn Irmea Sinisuka)