Amending Patent Claims in Indonesia
The Indonesian Patent Law allows Patent claims amendment at several stages from filing up to 3 months after the notice of grant has been issued by the Indonesian Patent Office under the Directorate General of Intellectual Property (DGIP). We herewith summarize under which circumstances the claim amendments are allowable in Indonesia.
Legal Basis
The Law No. 13 year 2016 on Patents (hereinafter referred to as the “Patent Law”) regulates all aspects of patent protection in Indonesia, including the amendment of claims during various stages of the patent lifecycle. Article 39 of the Patent Law regulates the amendment of various natures. The rule of thumb when it comes to amendment is to ensure that it does not broaden the scope of protection initially applied for. Another rule of thumb to live by is that amendments are always possible provided that the application has not been granted by DGIP.
Article 67 and 69 of the Patent Law has made it possible for the post-grant amendment via the Patent Board of Appeal. However, the scope may be limited to the corrections on descriptions, claims, and/or figures once the application has been granted.
We herewith summarize the viability of claim amendments at various stages of the patent lifecycle for your perusal:
- Amendments Prior to Publication
The amendment of claims are possible, provided that the scope of protection is not broader than the originally filed claims.
- Amendments After Publication
The amendment of claims are possible, provided that the scope of protection is not broader than the originally filed claims.
- Amendments Filed During the Substantive Examination Request
The amendment of claims are possible, provided that the scope of protection is not broader than the originally filed claims.
- Amendments after the Issuance of the Examination Results
The amendments can still be filed after the examiner issues the examination results. From time to time, the examiner also suggests amendments for clarity’s sake. Please note that this is the last step when it comes to the pre-grant amendment and therefore the amendments shall be filed before the examiner issues the notice of grant/notice of rejection. Similar to the previous steps, the amendment is allowable provided that the the scope of protection is not broader than the originally filed claims.
- Post-Grant Claim Amendments
The post-grant amendment shall be filed by 3 months from the date of the Notice of Grant to the Patent Board of Appeal. The amendment is limited to several issues, such as the corrections on descriptions, claims, and/or figures (may be due to the translation errors that were only picked up after the issuance of the Notice of Grant), limitation of the scope of claims, and clarifications on the content of the descriptions that are vague in nature.
The decision by the Patent Board of Appeal shall be issued within 6 months from the date when they start the examination.
Should you have any questions about patent amendments of various nature, please contact us at [email protected].
