The Directorate General of the Intellectual Property Office of the Republic of Indonesia has announced that all lapsed patent registrations due to non-payment are able to be revived. This decision is based on several considerations, namely the goodwill of the patent holders to settle the debt arising from the non-payment, untimely and even missed delivery of the notifications from the Patent Office to the patent holders and/or to the legal proxy in Indonesia, lack of information disclosure by the patent office regarding the payment deadlines, and quite often the non-payment was not due to the patent holder’s fault.
Another reason, and perhaps the main reason, for the decision is the need of the government to collect the debt that has arisen from the non-payment.
While this can be seen as a golden opportunity to revive lapsed patents, the patent holders should also take into account the payment information of the lapsed patent registrations that have been passed on from the Patent Office to the State Wealth Office and Auction Office under the Ministry of Finance. It is not uncommon to find discrepancies in information about how much the patent holders should pay that is held by the Patent Office and by the State Wealth Office and Auction Office under the Ministry of Finance. It is imperative that double checking with both institutions should be done before making a full payment and to check if it is still possible to revive a patent registration that has been transferred from the Patent Office to the State Wealth Office and Auction Office under the Ministry of Finance.
In accordance to the decision by the Directorate General of Intellectual Property of the Republic of Indonesia, the revival can be done by filing the letter of revival request which should be accompanied by the proof of payment of the debt and the interests. However, the patent holder should also submit a written undertaking stating that they will not take any legal action against another party for infringement of the revived patent during the lapsed period.
Given the lack of guideline to whether the other party should immediately stop using the lapsed patent once the revival request has been filed and approved, this particular requirement leaves grave concerns for the parties who have already used the patent with an assumption that the patent has lapsed due to non-payment.
Should you have any query please do not hesitate to contact us at [email protected].
