Voluntary Licensing
Q: Are they any restrictions on the contractual terms by which a Patent Owner may license a Patent?
A: Several minimum requirements should be met. A licence agreement should contain:
- the date, month, year and place where the licence agreement was signed;
- name and address of the licensor and the licensee;
- the object of the licence agreement;
- provisions regarding the exclusivity or non-exclusivity of the licence, including sub-licensing;
- the term of the licence agreement;
- the area where the license agreement applies; and
- the party responsible for paying annual fees for the Patent (see Government Regulation No. 36 Year 2018 on Intellectual Property License Agreement Recordal).
If either the licensor or licensee resides outside of Indonesia or are foreign nationals, the application for recording the licence agreement must be submitted through a registered IP consultant.
The licence agreement should be recorded before the Patent Office in order to have a binding legal effect to any third party.
Compulsory licences
Q: Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?
A: Compulsory licences can be requested if a Registered Patent has not been used or worked in Indonesia within 36 months (three years) of registration. Other conditions that allow compulsory licensing include the implementation of a Registered Patent would be in the public interest, and it is not possible to obtain a licence to implement a Patent.
Note that there are previous steps that need to be shown to obtain a compulsory licence. The applicants must show evidence that they intend to use the Patent based on their capability, and that attempts were made to contact the patent holder to obtain a licence for a maximum of 12 months but a favourable response was not received. The Ministry should also be in agreement that the patent can be performed in Indonesia on an economically feasible scale and provide benefits to society.
See Regulation of the Minister of Law and Human Rights No. 30 of 2019 on Procedures for the Granting of Compulsory Patent Licensing, which later has been replaced by the Regulation of the Minister of Law and Human Rights No. 14 Year 2021 on the Amendment to the Minister of Law and Human Rights No. 30 of 2019 on Procedures for the Granting of Compulsory Patent Licensing.
Should you need more information regarding Patent Licensing in Indonesia, please do not hesitate to contact us via [email protected].
