New Provisions on Patent Regulations in Indonesia
In the last 12 months, the patent laws and regulations in Indonesia have welcomed some significant developments. The Indonesian Government had enacted four implementation regulations for Law No. 13 of 2016 concerning Patent (“Patent Law 2016”) namely:
- Ministry of Law and Human Rights Regulation No. 3 of 2019 concerning Patent Appeal Commission (”MLHR Reg. No. 3/2019”);
- Ministry of Law and Human Rights Regulation No. 39 of 2018 concerning Procedures on Grant of Compulsory Patent License (”MLHR Reg. No. 39/2018”);
- Ministry of Law and Human Rights Regulation No. 38 of 2018 concerning Patent Application Procedure (”MLHR Reg. No. 38/2018”); and
- Ministry of Law and Human Rights Regulation No. 15 of 2018 concerning Patent Implementation by Patent Holder (”MLHR Reg. No. 15/2018”).
The key highlights of the above regulations are as follows:
MLHR Reg. No.3/2019
This regulation concerns appeals by applicants in respect of patent application rejections as well as corrections of description, claims and/or drawings, after the grant of patent. Appeals are also allowed to be brought by third parties in respect of the decision on grant of a patent.
The regulation regulates the time frame and procedures for appeals, including deadline for submission of the appeal. Pursuant to this regulation, a decision shall be given within nine months from the date of the filing of the appeal. Further, this regulation also regulates the composition of the patent appeal commission.
MLHR Reg. No.39/2018
This regulation is related to Article 20 of Patent Law 2016 and Article 2 of MLHR Reg. No. 15/2018, which stipulates that:
” Article 20
- A Patent Holder shall be obligated to make a product or implement a process in Indonesia.
- The production or the application of a process as referred to in paragraph (1) must support the transfer of technology, absorption of investment, and/or provision of employment.”
This regulation governs the procedures for an application and grant of compulsory patent license, which is a license for a party to implement a patent, and granted by the minister based on a request of compulsory license filed by a party. The Minister may grant a compulsory license on the following grounds:
- patent holder fails to carry out the obligation to produce products or use process in Indonesia within the period of 36 months after the patent is granted;
- patent has been implemented by patent holders or licensee in the form and way that jeopardises public interest; or
- patent that is the result of development from a previously-granted patent which is unable to be implemented without using other parties’ patent that is still under protection.
In the event the Minister grants a compulsory license, the Minister shall issue a decree on the grant of such license which shall state, among others, the reasons for the grant of the compulsory license, the validity period of the license, the amount of royalty to be paid and the payment method, and whether the license is for the entire scope of the patent or part thereof.
In addition to the above, the Minister may grant compulsory license in respect of:-
- production of pharmaceutical products to treat human diseases;
- import of pharmaceutical products to treat human diseases, so long as the products cannot be produced in Indonesia;
- export of pharmaceutical products that are produced in Indonesia to treat human diseases upon the request from developing countries and undeveloped countries.
MLHR Reg. No.38/2018
This regulation sets out in more detail the requirements, formalities and procedures in respect of the following:
- requirements and procedures for submission of patent application;
- application submitted with priority right;
- application based on the Patent Cooperation Treaty;
- procedures on change and division of the application;
- procedures for withdrawal of application;
- terms and procedures for substantive examination;
- certification; and
- requirements and procedures for recording amendment on application data.
The regulations serve to provide clarity on a number of procedures for example:
- it introduces detailed steps for patent applications filed under the Patent Cooperation Treaty (“PCT”) including for:
- application submission;
- international search or preliminary examination;
- international publication; and
- national phase.
- it stipulates steps for deposit of microorganism and submission of information of microorganisms. Microorganism depository certificates may now be obtained from either of the following institutions:
- institutions which are acknowledged under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms 1980 (currently InaCC for Indonesia); or
- other institutions, as appointed by the Minister of Law and Human Rights.
It is envisaged that this regulation will improve patent practice and prosecution in Indonesia as it provides clarity on procedures and requirements.
MLHR Reg. No. 15/2018
Under this regulation, a patent holder must manufacture products or implement the process in Indonesia. Failure to do so will result in deletion of the patent.
The patent holder may postpone the implementation of the patent for a maximum of five years by submitting the request for postponement, along with reasons for postponement to the Minister. The period for postponement will be calculated from the date of grant of patent postponement request.
The deadline to file the postponement request is three years from date of grant of patent.
For patents granted before the enactment of Patent Law 2016, the deadline for the submission of postponement request is on 22 August 2019 i.e. three years from the date of the enactment.
This alert is for general information only and is not a substitute for legal advice.