The Directorate General of Intellectual Property of the Republic of Indonesia under the Ministry of Law and Human Rights of the Republic of Indonesia (hereinafter referred to as “DGIP”) has established various procedures under which the examination of a patent application may be accelerated. Under these procedures, DGIP will advance an application out of turn for faster examination if the applicant files the following special requests through the ASPEC program, Indonesia-Japan PPH program, or simply by providing the examiner in charge the granted corresponding claims from other Patent Offices, such as the USPTO, JPO, EPO, and others.
We herewith summarize the options that may suit your need, depending on where you file your patent applications in other jurisdictions:
1. ASPEC
The ASEAN Patent Examination Co-operation ( hereinafter referred to as “ASPEC”) was launched on 15 June 2009 and it is the first regional patent work-sharing program which involves nine participating ASEAN Member States (AMS) IP Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Viet Nam. The program aims to accelerate the patent examination process by encouraging each of the participating Patent Offices to share search and examination results to allow applicants in the participating countries to obtain corresponding patents faster and more efficiently.
Since ASPEC aims to reduce duplication on the search and examination work done, it is hoped that the search and examination work done on a corresponding application can be used as a useful reference in producing high-quality examination reports.
Hence, if you can obtain the examination result from other countries in the participating Patent Offices, then the examination results or reports can be used as the basis of examination acceleration, as long as the corresponding claims are the same.
When requesting ASPEC, the patent applicant is required to submit an ASPEC Request Form in the second Patent Office. The ASPEC Request Form shall be accompanied by the following documents:
1. a copy of the Search and Examination (S&E) report or the Examination report (“minimum documents”) of a corresponding application from the first IP Office; and
2. a copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the first IP Office to be allowable/patentable.
For PCT ASPEC request, the patent applicant is required to indicate that the request is for PCT ASPEC in the ASPEC form. The completed ASPEC request form shall be submitted together with the following documents:
1. a copy of the written opinion/international preliminary examination report (“WO/ISA, WO/IPEA or IPER”) established by an ASEAN International
Searching Authority/International Preliminary Examining Authority (ASEAN ISA/IPEA) (“minimum documents”) relating to a corresponding application from the first IP Office; and
2. a copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the first IP Office to be allowable/patentable.
Please be mindful that the request to utilize ASPEC can only be done after the application has finished the publication stage. Based on our experience, the time it takes from filing the ASPEC request until the issuance of the decision to grant will not be more than 12 months – a great improvement in lead or pendency times compared to the processing time for non-ASPEC (or PPH) patent applications in Indonesia.
2. Japan-Indonesia Patent Prosecution Highway (Indonesia-Japan PPH)
The Japan Patent Office (hereinafter referred to as the “JPO”) and the DGIP have initiated a Patent Prosecution Highway Program (hereinafter referred to as the “PPH”) back on June 1, 2013, and since then, the PPH has been chosen by many applicants who have previously filed their base applications in Japan as the method of accelerating the patent applications in Indonesia. The PPH request can be filed at any time as long as it is before the deadline to request the substantive examination stage. Please also be mindful that there will be an official fee of Rp 5.000.000,00 incurred for requesting the PPH acceleration program.
When it comes to the requirements, the DGIP will require the applicant to provide the following documents in order to start the accelerate examination process:
- All formality documents required to file the application have been submitted and the DGIP will issue the notice of formality documents completion, which should also be provided by the applicant;
- Proof of payment to file a substantive examination request;
- The application should have passed the Publication of Period of 6 months;
- PPH Form (filled in);
- Corresponding claims which should be equivalent or less compared to the claims granted by the JPO;
- OEE ad OLE examination results; and
- OEE/OLE in English and/or in Bahasa Indonesia.
Based on our experience, the time it takes from filing the ASPEC request until the issuance of the decision to grant will not be more than 7 to 12 months – a great improvement in lead or pendency times compared to the processing time for non-ASPEC (or PPH) patent applications in Indonesia.
3. Providing Corresponding Registered Claims
In case none of the options above apply to you, you mal also provide the examiners at the DGIP with the corresponding granted claims from other well-established Patent Offices, such as the USPTO, UKIP, EP, AUIPO, SIPO, JPO, etc. The provision of the corresponding granted claims from the aforementioned Patent Offices will make it easier for the examiners at the DGIP to expedite the examination.
Please note that the documents should be provided with equivalent English translation.
For any questions related to patent application in Indonesia, please do not hesitate to contact us at [email protected].
