We have summarized the situation of intellectual property protection in Indonesia, a developing country with continuing stable growth, and a member of the VISTA group. We would be happy if it served your enterprises in Indonesia.
Summary
The Directorate General of Intellectual Property, Department of Justice and Human Rights administers intellectual property protection in Indonesia. Its main work consists of receiving applications and issuing grants for patents, simplified patents (corresponding to utility models), industrial designs, marks, and copyrights; and of registering trade secret and layout designs of integrated circuits. Furthermore, many applications are filed through intellectual property consultants (corresponding to patent attorneys in Japan). Major international treaties of which Indonesia is a member are the following: Paris Convention, Patent Cooperation Treaty, TRIPS Agreement, and the Berne Convention (Indonesia is not a member of the Madrid Protocol).
Table 1. Outline of Various Legal Divisions.
| |
Patents |
Simplified patents |
Industrial designs |
Marks |
| Local representative |
Necessary |
| Language of application |
Indonesian |
| Examination system |
Exists |
Exists |
Exists |
Exists |
| Request for examination |
Within 36 months of application |
Within 24 months of application |
None |
None |
| Publication of application |
18 months from application |
3 months from application |
3 months from application |
Announcement after conclusion of examination |
| Duration |
20 years from application |
10 years from application |
10 years from application |
10 years from application (renewal possible) |
| Opposition proceedings |
None |
None |
None |
Available (within 60 days of publication) |
| Trial for invalidation |
None (rather, file of complaints with the Commercial Court) |
| Limitations on enforceability of rights |
Compulsory licenses; licenses exploited by the government; exploitation by prior users; use for educational and/or research purposes |
Compulsory licenses; licenses exploited by the government; exploitation by prior users; use for educational and/or research purposes |
Educational and/or research purposes (no prior user’s right) |
No prior user’s right |
| Remarks |
Examination period may last up to 36 months from request for examination |
Examination period may last up to 24 months from request for examination |
Examination period may last up to 6 months from the end of publication |
Examination period begins within 30 days of application and lasts up to 9 months |
Examination periods for industrial designs and marks last one or more years, in reality.
Table 2. Changes in Numbers of Applications (2004-2006)
| |
Patents |
Simplified patents |
Industrial designs |
Marks |
| 2004 |
3,668 |
209 |
4,396 |
49,311 |
| 2005 |
4,304 |
195 |
5,114 |
54,651 |
| 2006 |
4,612 |
268 |
4,926 |
54,250 |
(Source: JETRO chitekizaisan joho moho taisaku manual [Japan External Trade Organization [JETRO] manual on intellectual property rights--provisions against imitation].
Patents
Indonesia receives applications numbering in the four thousands to lower five thousands per year, and 90% of these are applications from abroad. In fact, applications with claims for priority or entering via PCT are common, and substantive examinations are conducted, but apparently the examinations often draw upon search results in developed countries.
The country with the most patent applications in Indonesia is judged to be the United States, followed by Japan.
-- Points Requiring Caution during Application --
Things requiring caution when one applies directly to Indonesia or under the Paris Convention are as follow.
- 1. The language of procedures is Indonesian. However, the applicant is allowed to register an application date with a submission of the specification in English (the Indonesian translation must be submitted within 30 days of the application date, in such a case).
- 2. The required documents are the
(1) application form, claims of invention, specification, necessary drawings, and abstract;
(2) power of attorney document (the applicant must submit this at the time of the application; general powers of attorney are not accepted);
(3) assignment documentation (required when the applicant[s] and the inventor[s] are different; due within 16 months from the application date, and an extension is possible);
(4) priority certificate(s) (required when the applicant applies under the Paris Convention);
(5) declaration (when the applicant[s] and inventor[s] are one and the same).
- 3. The application is published 16 months from the application date or priority date, and third parties are free to declare opposition to grant of a patent. However, the opposition to grant is only used as information for the examination and may be considered to correspond to Japan’s provision by a third party of relevant information on the prior art et cetera.
Furthermore, the applicant must take care because without a request of examination within 36 months of the application date, the application will be considered withdrawn.
Also, if the applicant files for an Indonesian national phase application of a PCT application, the international patent publication, et cetera must be included. Priority certificates are not required in this case.
[Other Points to Note]
-
- Conversion or division of applications is allowed.
- No exception for loss of novelty exists.
- No provisional application or internal priority program exists.
- There is no means of redress for passed deadlines.
- For any change of name, the company’s registration certificate and prescribed power of attorney document are required.
-- Requirements for Patentability --
Novelty, inventive step, and industrial applicability are the requirements for patentability.
Reasons given for nonpatentability are that the inventions entail disturbance of public order and morality, methods for inspecting or curing people or animals, mathematical theories, organisms (except for microorganisms), and methods for the production of animals or plants (except for microorganisms).
-- After Registration --
Appeals are accepted only if an application is rejected. However, Indonesia’s patent office does not allow others to request a trial for invalidation regarding a patent that has been registered. Rather, one must file a complaint with the Commercial Court to seek invalidation. There is no extension system for the duration of a patent.
The injured party of a patent violation is the one who must declare the violation.
[Simplified Patents]
The simplified patent corresponds to Japan’s utility model.
-- Subjects of Protection --
Simplified patents may protect inventions of products that have practical value due to their shape, configuration, structure, or a combination of these, as well as novelty.
[Industrial Designs]
About 5,000 applications for industrial designs are submitted per year, and about eighty percent of these are domestic applications. Among foreign applications, the greatest number enters from Japan.
-- Points Requiring Caution during Application --
Things requiring caution when one applies to Indonesia are as follow.
- 1. The language of procedures is Indonesian.
- 2. The required documents are the
(1) application form, drawing of the design, sample of the design, photograph, and explanation;
(2) power of attorney document (the applicant must submit this at the time of the application; general powers of attorney are not accepted);
(3) assignment documentation (required when the applicant[s] and the inventor[s] are different);
(4) priority certificate(s).
- 3. No system corresponding to secret designs or related designs systems is in place.
- 4. There is a system corresponding to Japan’s system of applications for system designs and partial designs.
-- Requirements for Registration --
The examiners only judge based on novelty. In the past, applications with even small differences from previous ones have been registered. However, in recent years the examiners have widened their scope of considerations when judging on novelty and come to judge whether or not a new application is substantially identical to previous designs.
-- Examination --
Third parties are given opportunity to file opposition to grant of an industrial design right through the publication of the applications.
Formerly, only designs answered by oppositions to grant underwent substantive examinations, but now substantive examinations are being enforced for all applications.
There is no system for hearing appeals. Those who wish to appeal with an objection must file a complaint with the Commerce Court.
-- After Registration --
The injured party of an industrial design violation is the one who must declare the violation.
[Marks]
About 50,000 applications for marks are filed every year, and seventy percent of these come from within Indonesia. Among foreign applications, the greatest number enters from the United States.
In Indonesia, many times people who do not own marks apply for the rights to them before the legitimate owners do. Apparently, many times former employees and former agents file these applications without permission from the companies that properly own the rights to them.
If someone else has applied for a mark right before one’s own application of it, the legitimate applicant needs to file opposition to the earlier application based on the distinctness of the mark involved and ill intent on the part of the other applicant.
-- Points Requiring Caution during Application --
Things requiring caution when one applies to Indonesia are as follow.
- 1. The language of procedures is Indonesian.
- 2. The required documents are the
(1) categorization of the product(s) or service using the mark;
(2) declaration of ownership of the mark;
(3) power of attorney document (the applicant must submit this at the time of the application; general powers of attorney are not accepted);
(4) sample of the printed mark;
(5) priority certificate(s).
- 3. A system for collective marks is in place.
- 4. No system for defensive marks is in place.
- 5. The applicant may apply for up to three categories for the mark with one application.
-- Requirements for Registration --
- 1. Subjects that may be registered are marks used for products or service, geographic indications, and indications of sources (geographic indications and indications of sources only receive protection once registered).
- 2. Three-dimensional marks, smells, and sounds are not recognized as marks.
- 3. Marks that are not distinctive are rejected.
-- Examination --
All applications receive examinations, which end within 9 months. After the examination process, third parties are given opportunity to file opposition to grant of protection.
Only if an application is rejected may the applicant request an appeals trial.
-- After Registration --
The injured party of a mark violation is the one who must declare the violation.
-- Challenging Others’ Rights --
Filing of opposition to grant of a mark, removal of a mark due to disuse (arbitrated by the marks section), and revocation suits are possible means of ending a mark’s protection.
[Laws Corresponding with Japan’s Unfair Competition Prevention Law]
Indonesia lacks a law corresponding to Japan’s Unfair Competition Prevention Law.
Currently, exercising rights by registering patents or other rights protections based on the Indonesia Patent Law is the most effective means of fighting unfair competition.
Trade secrets are protected by a trade secrets law. This law is meant to protect trade secrets by registering them in the same way in which patents, et cetera are registered.
Note: Bibliography: Moho taisaku manual Indonesia-hen [Manual for provisions against imitation: Indonesian edition].
OSAKA
