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Patent engineering staff specialized in patent affairs : Masanori KAWAHITO
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§Information on Intellectual Property in Indonesia§



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 (2001-2015)

  Patents Simplified patents Industrial designs Marks
2001 3,929 221 2,514 39,000
2002 3,877 209 2,431 30,241
2003 3,326 196 1,601 36,980
2004 3,693 209 901 49,743
2005 4,325 197 577 41,122
2006 4,635 270 632 53,233
2007 5,174 247 567 44,797
2008 5,156 248 4,375 48,939
2009 4,553 290 4,669 44,458
2010 5,694 651 96 49,077
2011 5,897 295 79 54,779
2012 76 4 31 1,806
2013 7,542 352 4,316 63,705
2014 8,092 337 3,785 49,239
2015 9,269 410 4,011 49,470

(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.


In a case where the applicant files a PCT application for the entry into, it is required to file (i) a document(s) stating information regarding the nationality of the inventor(s) and detailed requirements stipulated by the treaty, (ii) Power of Attorney, and (iii) an original or notarized copy of priority certificate.

Indonesian translations of the application documents must be filed within thirty (30) days from the date on which the procedure for the entry into the Indonesian national phase was started (Rule 5, Article 24 of the Patent Law).

The deadline for filing a PCT application for the entry into the Indonesian national phase was previously stipulated as, according to the chapter 1, within 30 months from the earliest priority date and, according to the chapter 2, within 31 months from the earliest priority date. However, the 31-months deadline currently applies to both of the chapter 1 and the chapter 2.


[Other Points to Note]

  • Conversion or division of applications is allowed.
  • 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. Adopt one application multi-classification system.


-- 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].



Update

Registration of Patent Assignment

Under a Presidential Decree No. 37 issued on June 7, 2010, in a case where a patent is assigned by inheritance, gift, grant, testament, or written agreement, an application for registration of the patent assignment must be filed with the Directorate General of Intellectual Property Rights.

The required documents for the application for registration of the patent assignment are as follow.

  • 1. Originals of letters patent
  • 2. Attestation and declaration translated in Indonesian, and assignment document
  • 3. Power of attorney document
  • 4. Receipt for payment of the fee for the registration of the patent assignment
  • 5. Copy of a receipt for payment of the annuity for the current year

- Procedure -

In a case where the application for registration of the patent assignment is accepted via a formal procedure, a notification of completion of the registration of the assignment is issued within 30 days after the acceptance, and a certificate of the registration of the patent assignment is issued.
In addition, the assignment is registered, and noted in the Patent Publication.





Restoration of right of priority

According to a circular letter issued by the Indonesian Patent Office on February 10, 2011, the Indonesian Patent Office has made an official announcement to make its position widely known regarding regulations on restoration of right of priority stipulated under the PCT Rules.


- Content of the announcement -

The restoration of right of priority (Rules 26 bis.3 and 49 ter.2) is not conformity with the Indonesian domestic law. Therefore, even in a case where an international patent application satisfies any of the “criteria for restoration” stipulated under PCT Rules 26 bis.3 and 49 ter.2, the international patent application is deemed to be withdrawn, and fees cannot be refunded.


Note that PCT Rules 26 bis.3 and 49 ter.2 stipulate that where an international application has an international filing date which is later than the expiration date of the 12-month priority period under the Paris Convention but within 2 months from the expiration date (within 14 months from the priority date), restoration of the right of priority is allowed if the failure to file the international application within the priority period is due to a reason that meets any of the following criteria adopted by the receiving office or the designated office.


< Criteria for judgment of whether to restore a priority right >

The failure to file the international application within the priority period:

(i) occurred in spite of due care (stricter criteria); or

(ii) was unintentional (less strict criteria).

(Which one of the criteria is to be adopted is entrusted to determination of the receiving office or the designated office)





Due date for filing a Response to an Office Action

According to a circular letter issued by the Indonesian Patent Office on February 23, 2011, the Indonesian Patent Office has issued a notification regarding the due date for filing a Response to an Office Action for the purpose of improving the quality of examination and solving delays in examination.


- Content of the Announcement -

  • 1. The Applicant is given three months to file a Response when the first Office Action is issued in connection with an application filed by the Applicant.
  • 2. If the Applicant did not file a Response within the given period or the Response is incomplete due to informality, etc., the Applicant will receive a reminder to file a Response. The Applicant needs to file a Response within two months from the date on which the reminder was issued.
  • 3. If the Applicant still fails to file a Response, a decision of rejection will be issued, or the application will be deemed to be withdrawn.
  • 4. The Applicant and the attorney of the Applicant are not allowed to file an appeal against the decision of rejection or the withdrawal of the application.




Launch of Patent Prosecution Highway (PPH) Pilot Program

According to an announcement made by the Japan Patent Office on April 15, 2013, the Japan Patent Office made an agreement with the Directorate General of Intellectual Property Rights (DGIPR) to launch a pilot program of Patent Prosecution Highway (PPH).

PPH is a system that enables the application whose claims have been determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon request from an applicant.


- Content of the PPH Pilot Program -

  • 1. The PPH pilot program will be started on June 1, 2013. By using the PPH, Japanese companies will be able to obtain patent rights faster through an accelerated procedure in Indonesia.
  • 2. In the PPH, the Japan Patent Office can conduct international searches and international preliminary examinations for the PCT applications filed with the DGIPR on or after June 1, 2013.
    This contributes to develop an environment in which research and development achievements by Japanese companies in Indonesia are properly protected.




Exception to Loss of Novelty

The loss of the novelty of an application can be regarded as an exception in the following cases:

  • (i) The invention became publicly known within 12 months before the filing date of an Indonesian patent application despite the intention of an Applicant having the right to be granted a patent on the invention (Indonesian Patent Act Article 4(2)).
  • (ii) The Applicant having the right to be granted a patent on the invention conducted a test for the purpose of research or development within 6 months before the filing date of an Indonesian patent application (Indonesian Patent Act Article 4(1)).
  • (iii) The invention was published, within 6 months before the filing date of an Indonesian patent application, in an international exhibition held in Indonesia or other countries, or in a national exhibition which is publicly acknowledged (Indonesian Patent Act Article 4(1)).

The term "prior art" as in the novelty requirements means art which was published, on or before the filing date or priority date, in writing or orally in Indonesia or other countries and practiced, or published so that the art is practicable by a skilled person.

Note that prior art includes art disclosed in an earlier application published after the filing of a later application. An earlier application means an application having a filing date or priority date prior to the filing date or priority date of a later application.





* Change in Trademark Official Fee Structure and Increase in Trademark Official Fees (updated on August 29, 2014)

Under the Government Regulation No. 45/2014 regarding Non-Taxable State Revenue, the official fees for filing a trademark application, an opposition, and an appeal have been increased (from July 3, 2014).

Regarding the trademark application, the official fee structure has been also changed as well as the increase in official fees. According to the new official fee structure, up to 10 items of goods/services per class can be filed. Note that an additional official fee is charged for every 10 items of goods/services exceeding the first 10 items. (Even in a case where less than 10 items are filed, no reduction in official fee is made.)





* Revision in Official Fees for IP prosecution-related actions, such as filing of an application, in Indonesia (updated on September 8, 2014)

The official fees, such as a filing fee, regarding IP prosecution in Indonesia have been revised as follows from July 3, 2014 (IDR 1 = JPY 0.01, on September 8, 2014).

    Previous Official Fees New Official Fees
Patent Filing of application IDR 575,000 IDR 750,000
Additional fee for each claim exceeding the first 10 claims IDR 40,000 IDR 50,000 *1
Simple Patent Filing of application IDR 125,000 IDR 500,000
Additional fee for each claim exceeding the first 10 claims IDR 40,000 IDR 50,000 *1
Industrial Design Filing of application IDR 600,000 IDR 800,000
Change of name/address IDR 150,000 IDR 200,000
Filing of assignment IDR 400,000 IDR 550,000
Registration of license IDR 250,000 IDR 350,000
Acquisition of registration certificate IDR 100,000 IDR 150,000
Acquisition of priority certificate IDR 100,000 IDR 150,000
Trademark Filing of application IDR 600,000(up to 3 items of goods/services) IDR 1,000,000(up to 10 items of goods/services) *2

*1 With this revision, in a case where the specification carries more than 30 pages, an additional official fee of IDR 5,000 is charged for each page exceeding the first 30 pages.

In a case where the specification is written in a foreign language other than Indonesian language, the additional official fee is charged based on the number of pages of the specification written in the foreign language. In this case, an Indonesian translation of the specification must be submitted within 30 days. In a case where the Indonesian translation of the specification carries more pages than the original specification written in the foreign language, the additional official fee must be paid for each page exceeding the original pages.


*2 Before the revision, an additional official fee of IDR 50,000 was charged for each item of goods/services exceeding the first 4 items of goods/services. In contrast, after the revision, an additional official fee of IDR 1,000,000 is charged for every 10 items of goods/services exceeding the first 10 items of goods/services.





* Controlling Internet Websites Containing Negative Content (updated on November 28, 2014)

The Ministry of Communication and Information of Indonesia has issued Regulation No. 19 of 2014 on Controlling Internet Websites Containing Negative Content (2014 Regulation). The 2014 Regulation aims to implement "the safe and healthy use of the internet" for all groups of society by blocking access to websites that contain pornographic materials or websites that violate the laws pertinent to intellectual property right.

(Announcement date: August 8, 2014)

The 2014 Regulation mainly includes provisions on the following matters:

  • 1. Procedures for reporting websites with negative content to the Ministry by governmental institutions, law enforcers, and the public;
  • 2. Compulsory blocking of accesses to internet websites reported by internet service providers; and
  • 3. Procedures to unblock reported websites found not to contain negative content.

(Cited from Indonesian Intellectual Property News of October 28, 2014 provided by JETRO Bangkok)





*Regulations on Intellectual Property License Agreement Recordal (updated on July 1, 2016)

On February 24, 2016, the Indonesian government issued the regulations on requirements and procedures for recordal of intellectual property license agreement. The Indonesian trademark law has required that a recordal of a trademark license agreement be filed with the Directorate General of Intellectual Property (DGIP) of Indonesia. However, it had not been possible to file with the DGIP a request for recordal of a trademark license agreement due to the absence of implementing regulations and guidelines on the recordal of license agreements. A notification of a trademark license agreement had been accepted in practice.

It is now possible to officially file a request for recordal of a trademark license agreement. A recordal of a trademark license agreement is valid for five years. This period may be prolonged after expiration of the duration by refiling the request for recordal. A request for recordal of a trademark license agreement can be filed in writing but cannot be filed online at present.

One of the advantages to be provided by the new regulations is that in a case where a petition for revocation of a trademark is filed due to non-use of the trademark, use of the trademark by the licensee may avoid the revocation of the trademark.

The new regulations are applied to licenses not only for trademarks but also for patents, designs, copyright, semiconductor mask works, and trade secrets.





*Indonesia's amended patent law (article updated September 21, 2016)

Indonesia's amended patent law was put into effect on August 28, 2016. Any patent applications which were pending at the time of enforcement of the new law are being handled according to the law prior to revision (law No. 14 of 2001) with the exception of a portion of procedures. The major revisions to the law are as follows:

  • 1. Process inventions can now be protected by simple patents.
  • 2. Second use and second medical use included in a discovery are no longer patentable.
  • 3. The provision on exceptions to lack of novelty now stipulates that the disclosure of an invention in an academic publication for the purposes of a scientific forum within a university or public scientific organization will not negate novelty of the invention if a patent application is filed within six months of the disclosure.
  • 4. The grace period for late payment of patent maintenance fees has been done away with, and failure to pay the maintenance fee in a timely manner will result in the patent being deemed as canceled. However, the patent holder will no longer be required to pay unpaid maintenance fee in such a case. While patent applications that were pending at the time the new law came into effect will be processed in accordance with the prior version of the law, the amended law will apply with regards to payment of maintenance fees for these patents.
  • 5. A system for filing opposition to a granted patent has been newly established.





Patent and Trademark Attorney


Secretariat and Administration Department PCT Applications Department Manager
Office Manager / IP Manager
Patent&Trademark Attorney
Specialist
Masanori KAWAHITO
Masanori KAWAHITO Born 1972

I am proud and happy to be an aid in protecting the intellectual property of our clients, and I thoroughly apply myself every day.
With the strengthening of my language ability and law minded competence, in addition to my objective of comprehending the most up-to-date laws, I am devoted to providing our clients with excellent service.

Tokyo Legal Department Trademark Division Manager / Legal Department
Patent&Trademark Attorney
Researcher
Yuki YAMAZAKI
Yuki YAMAZAKI Born 1987
Majored in law at Nihon University
Specialties: Design & Trademark

The environment surrounded by intellectual property is increasing daily on a worldwide scale. Bearing that in mind while always in accordance with the expectations of the client, I will work hard to grow and improve my skills.
Osaka Legal Department Trademark Division Manager
Legal Department
Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation
Researcher
Kazunori TAKEDA
Kazunori TAKEDA Majored in science of business law.
Specialized in design, trademark, copyright, computer program registration, semiconductor circuit layout-design registration.

As a patent attorney, I feel a great responsibility for establishing and protecting our clients窶・important intellectual property rights.
I will make every effort to be of great assistance to our clients.



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