Key Proposed Amendments to the Indonesia’s Patent Law

1. DEFINITION OF INVENTION

Invention means an idea of an inventor embodied into a specific problem solving activity in the field of technology in

the form of product or process, or refining and developing

product or process.

Invention means an idea of an inventor embodied into a specific problem solving activity in the field of technology in

the form of product or process, or refining and developing

product and/or process, systems, methods and uses.

Reasons:

• The rapid development of technology, Internet of Things, 5G Technology, Artificial Intelligence, has given rise to different interpretations of the category of invention claims, so that many applications related to this technology have been rejected. Also, to keep up with developments in international practice, it is necessary to change the definition of invention.

• Adjusting Law Number 6 of 2023 concerning the Stipulation of Government Regulation in Lieu of Law Number 2 of 2022 concerning Job Creation into Law: (1) Addition of the category of Simple Patents “Simple Methods” and (2) Implementation of Patents-methods, systems, and uses.

2. NOT INCLUDE IN INVENTIONS

Inventions do not include:

c. rules and methods in conducting activity of:

1. involving mental activity;
2. games; and
3. business.

Inventions do not include:

c. methods in conducting activity of:

1. involving mental activity;
2. games; and
3. Business.

Reason:

• Rules = Methods

Inventions do not include:

d. rules and methods containing only computer program;

Inventions do not include:

d. computer program;

Reasons:

• Computer Program is fully within the scope of the Copyright Law;
• Computer Program means a set of instructions that are expressed in the form of languages, codes, schemes, or in any form that is intended for a computer to perform specific functions or to achieve certain outcomes.
• Inventions implemented on computers, their arrangements are grouped into categories of systems, methods, and uses, in accordance with the expansion of the definition of Inventions to be regulated in the proposed amendment.

Inventions do not include:

f. discovery in the form of:

1. new use of existing and/or known product; and/or
2. new forms from existing compound which does not generate significantly enhanced efficacy and contains different relevant known chemical structures to compound.

Reasons:

• This article is an obstacle to the industrialization of local drugs that should be able to encourage public welfare, especially in the health sector, in addition to being an incentive award.
• Causing the local industry that was previously a drug producer to become an industry that only operates as a distributor, or an industry in the form of finished drugs to switch to an industry that only makes the packaging of the drug and not the elements of the drug.

Inventions do not include:

c. any theory and method in the field of science and mathematics;

Inventions do not include:

f. any theory and method in the field of science and mathematics;

Reason:

• Theory and method in the field of science and mathematics are not inventions because they do not fit the definition of invention because they do not solve specific problems in the field of technology.

3. NOVELTY GRACE PERIOD

The Invention is not deemed to have been published provided that within period of 6 (six) month prior to the Filing Date.

The Invention is not deemed to have been published provided that within period of 12 (twelve) month prior to the Filing Date.

Reasons:

• Inventors (researchers) have published their research results in advance in the form of scientific journals, both nationally and internationally, before the research results are registered for Patents in Indonesia. As a result, the novelty value of the invention is anticipated so that it cannot be granted a Patent.
• Countries that provide a 12-month grace period include the United States, Australia, Japan, Malaysia, South Korea, and Singapore.

4. REQUIREMENT OF PATENT HOLDERS

1. A Patent holder is required to make the products or to use the process in Indonesia.
2. Making product manufactures or using process as referred to in Para (1) must encourage technology transfer, investment absorption and/or job vacancy provision.

Patent holders as referred to in Article 20 shall make a statement regarding the implementation of the Patent in Indonesia and notify the Minister at the end of each year.

Reasons:

• Complementing the provisions of Article 20 of the Job Creation Law which has amended the provisions of Article 20 of the Patent Law by affirming that Patents must be implemented in Indonesia.
• Mechanisms to monitor the implementation of Patents.

5. CHARGES FOR EXCESS CLAIMS SUBMITTED IN APPLICATION

The Application as referred to in Para (1) is filed by the Applicant or his/her Proxy to the Minister in writing in Indonesian language and with a payment of fee.

In case of the Application as referred to in Para (2) is submitted with a claim amount of more than 10 (ten), a fee will be charged for the excess claims.

Reasons:

• Additional provisions in Article 24 by adding an article that regulates that in the event that an Application is submitted with a claim amount of more than 10 (ten), the excess claim will be subject to a fee.
• To prevent Patent applicants from not knowing the provisions regarding the limitation of the number of claims and excess number of claims as stated in Government Regulation Number 28 of 2019 concerning Types and Tariffs for Types of Non-Tax State Revenue applicable to the Ministry of Law and Human Rights (PP PNBP).

6. TITLE OF INVENTION AS PATENT APPLICATION IDENTITY

The Application as referred to in Article 24, must at least contain:

a. the date, month, and year of application;

b. name, full address, and nationality of the Inventor;

c. name, full address, and nationality of the Applicant in the event that the Applicant is not a legal entity;

d. name and full address of the Applicant in the event that the Applicant is a legal entity;

e. name and full address of the Proxy in the event that the Application is filed by a Proxy; and

f. Country and the first Filing Date of the Application in the event that the Application is filed with Priority Right.

g. the title of invention.

Reasons:

• Addition of Regulations in Article 24 of the Patent Law by adding an article that regulates that in the event that an Application is submitted with a claim amount of more than 10 (ten), the excess claim will be subject to a fee.
• To prevent Patent applicants from not knowing the provisions regarding the limitation of the number of claims and excess number of claims as stated in Government Regulation Number 28 of 2019 concerning Types and Tariffs for Types of Non-Tax State Revenue applicable to the Ministry of Law and Human Rights (PP PNBP).

The Application as referred to in Para (1) must be attached by the following requirements:

a. the title of Invention;

b. the description of Invention;

c. claim(s) of Invention;

d. an abstract of Invention;

e. drawings mentioned in the description which are required to clarify the Invention, if the Application is attached with drawings;

f. a power of attorney, in the event that the Application is filed by a Proxy;

g. statement of ownership of the Invention by Inventor;

h. letter of transferring Invention ownership right in the event that an Application is filed by an Applicant who is not an Inventor; and

i. letter of evidence on storing microorganism in the event that an Application is related to microorganism.

j. statement of origin of genetic resources and/or traditional knowledge if the invention relates to genetic resources and/or traditional knowledge.

7. INVENTION RELATED TO AND/OR DERIVED FROM GENETIC RESOURCES AND/OR TRADITIONAL KNOWLEDGE

1. If an Invention is related to and/or derived from genetic resources and/or traditional knowledge, it must be clearly and correctly mentioned the origin of the genetic resources and/or traditional knowledge in the description.
2. Information regarding genetic resources and/or traditional knowledge as referred to in Para (1) is determined by an official institution authorized by the government.
3. Benefit sharing and/or access to the utilization of genetic resources and/or traditional knowledge as referred to in Para (1) is exercised in accordance to the provisions of legislation and treaties on genetic resources and traditional knowledge.

1. If an Invention is related to and/or derived from genetic resources and/or traditional knowledge, it must be clearly and correctly mentioned the origin of the genetic resources and/or traditional knowledge in the description and in the Patent application form.
2. Information regarding genetic resources and/or traditional knowledge as referred to in Para (1) is recorded and announced electronically.
3. The information as referred to in Para (2) is intended for consideration of the distribution of results and/or access to the utilization of genetic resources and/or traditional knowledge.
4. The distribution of results and/or access to the utilization of genetic resources and/or traditional knowledge as referred to in Para (3) is carried out in accordance with the provisions of laws and regulations and international agreements in the field of genetic resources and traditional knowledge.

Reasons:

• The provisions related to information on genetic resources and/or traditional knowledge that must be determined by an official institution recognized by the government are considered very difficult for Patent Applicants because until now there is no institution that has been designated and given the authority to determine the origin of genetic resources and/or traditional knowledge.
• Indonesia has ratified the Budapest Treaty on April 4, 2022 with Presidential Regulation Number 44 of 2022. This agreement is officially entitled the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. This agreement regulates international recognition of the storage of microorganisms for the purposes of patent procedures.
• The International Regulation in the form of a treaty related to Genetic Resources and Traditional Knowledge has been agreed upon at the Diplomatic Conference on Genetic Resources and Associated Traditional Knowledge which took place on May 13-24, 2024 in Geneva.

8. OBLIGATION TO DECLARE AND SELECT THE POWER OF ATTORNEY ADDRESS AS LEGAL DOMICILE IN INDONESIA

An Application filed by an Applicant who does not reside or does not have permanent domicile in the territory of the State Unitary of the Republic of Indonesia must be filed by his/her Proxy in Indonesia.

1. An Application filed by an Applicant who does not reside or does not have permanent domicile in the territory of the State Unitary of the Republic of Indonesia must be filed by his/her Proxy.
2. The applicant as referred to in Para (1) is required to state and select the address of the Attorney as the legal domicile in Indonesia.

Reasons:

• The appointment of power of attorney and legal domicile in Indonesia aims to not complicate services due to distance and travel time.

9. APPLICATION WITH PRIORITY RIGHTS FILED MORE THAN 12 MONTHS FROM THE FILNG DATE

1. An Application with Priority Rights must be filed within a period of not later than 12 (twelve) months as from the priority date.
2. Apart from having to comply with the provisions as referred to in Article 25, the Application with Priority Rights as referred to in Para (1) must be supplemented with priority document validated by an authorized official in the pertinent country.
3. The priority document that has been validated by an authorized official in the pertinent country as referred to in Para (2) must be submitted to the Minister not later than 16 (sixteen) months as from the priority date.
4. If the terms as referred to in Para (1), Para (2), and Para (3) are not fulfilled by the Applicant, the Application is deemed to be filed without Priority Right.

5. In the event that an Application with Priority Rights is not submitted within a period of 12 (twelve) months, the Application may still be submitted within a period of no later than 4 (four) months from the end of the period for submitting Priority Rights by paying a fee.

Reasons:

• The number of claims examined should be in accordance with the number of claims paid. But in reality, the Examiner does not examine/check whether the excess claims have been paid or not. As a result, the examiner can give a decision on the entire claim submitted even though the payment for the excess claim has not been made. Therefore, it is necessary to amend Article 34 Para (2) of the Patent Law by adding a minimum requirement letter d which regulates additional claim costs if submitted with a claim amount of more than 10 (ten).
• The obligation to complete translations in English and Indonesian if the description is in a language other than English facilitates the substantive patent examination process.

10. MINIMUM REQUIREMENTS FOR GRANTING ACCEPTANCE DATE

1. An Application which has fulfilled minimum requirements is given a Filing Date and recorded by the Minister.
2. The minimum requirements as referred to in Para (1) include:
   1. the Application data as referred to in Article 25 Para (1);
   2. the Application data as referred to in Article 25 Para (2) point a to point e; and
   3. receipt of payment of Application fee.
3. In the event that the description of Invention as referred to in Article 25 Para (2) point b is written in foreign language, the description must be supplemented with its translation in Indonesian Language and must be submitted not later than 30 (thirty) days as from the Filing Date as referred to in Para (1).
4. If the description of Invention written in foreign language is not supplemented with its translation in Indonesian language within time limit as referred to in Para (3), the Application is deemed to be withdrawn.

1. Additional minimum requirements: additional claim costs if submitted with more than 10 (ten) claims. 
2. If the description is written in a foreign language other than English, the description must be accompanied by translations into English and Indonesian.

Reasons:

• The number of claims examined should be in accordance with the number of claims paid. But in reality, the examiner does not examine/check whether the excess claims have been paid or not. As a result, the examiner can give a decision on the entire claim submitted even though the payment for the excess claim has not been made. Therefore, it is necessary to amend Article 34 Para (2) of the Patent Law by adding a minimum requirement letter d which regulates additional claim costs if submitted with a claim amount of more than 10 (ten).
• The obligation to complete translations in English and Indonesian if the description is in a language other than English facilitates the substantive examination process for Patents.

11. ELIMINATION OF EXTENDING TIME TO COMPLETE REQUIREMENTS

1. In the event that the requirements and administrations of Application as referred to in Article 25 have not been completed, the Minister notifies the Applicant in written to complete the requirements within a period of not later than 3 (three) months as from the date of the notification by the Minister.
2. The period as referred to in Para (1) may be extended not later than 2 (two) months. 
3. The extension as referred to in Para (2) may be extended not later than 1 (one) month after the expiry with subject to fee.

1. In the event that the requirements and administrations of Application as referred to in Article 25 have not been completed, the Minister notifies the Applicant in written to complete the requirements within a period of not later than 3 (three) months as from the date of the notification by the Minister.
2. The period as referred to in Para (1) may be extended not later than 2 (two) months. 

Reasons:

• In practice, the procedure in Article 35 Para (3) regarding the extension of time for a maximum of 1 (one) month with a fee is rarely used. In several Applications, there are Applicants who submit the procedure in Article 35 Para (1) but still do not fulfill the requirements so that the application is considered to be withdrawn.

12. SUBMISSION OF APPLICATION LETTER TO CONTINUE EXAMINATION OF APPLICATIONS CONSIDERED WITHDRAWN AND WITHDRAWN APPLICATIONS

If an Applicant does not complete the requirements and administrations of Application within a period as referred to in Article 35 Para (1), Para (2), Para (3), and/or Para (6), the Minister notifies the Applicant in writing that the Application is deemed to be withdrawn.

1. If an Applicant does not complete the requirements and administrations of Application within a period as referred to in Article 35 Para (1), Para (2), Para (3), and/or Para (6), the Minister notifies the Applicant in writing that the Application is deemed to be withdrawn.
2. In the event that the Application is deemed to be withdrawn as referred to in Article 36, a request for reconsideration may be submitted subject to a fee.
3. The reconsideration as referred to in Para (2) may be submitted no later than 6 (six) months from the date of the notification letter that the application is deemed to be withdrawn.
4. The reconsideration as referred to in Para (2) is submitted only to complete the requirements and/or completeness of the Application.

Reasons:

• The implementation of re-submission of an application for a Patent that is considered withdrawn has been implemented through Article 102 of the Regulation of the Minister of Law and Human Rights Number 38 of 2018 concerning Patent Applications so that to emphasize the legal basis for implementing the policy, changes are made in Article 36. 
• In an effort to provide an opportunity for the patent application that is considered withdrawn to be examined again, changes are made by regulating the opportunity for the Applicant to be able to submit an application to continue the examination of the Application that is considered withdrawn.

13. CHANGES IN PATENT APPLICATION DATA

1. Application may be amended to:
   a. the Application data as referred to in Article 25 Para (1) point b, point e, and/or point f; and/or
   b. the Application data as referred to in Article 25 Para (2) point a to point e.
2. The amendment to description concerning Invention and/or claim or several claims of Invention as referred to in Article 25 Para (2) point b and point c may be carried out provided that the amendment does not extend the scope of Invention which has been applied for in the original Application.

1. Application may be amended to:
   a. the Application data as referred to in Article 25 Para (1) point a to point f; and/or
   b. the Application data as referred to in Article 25 Para (2).
2. The amendment to description concerning Invention and/or claim or several claims of Invention as referred to in Article 25 Para (2) point a to e may be carried out provided that the amendment does not extend the scope of Invention which has been applied for in the original Application.
   a. Changes as referred to in Para (1) and Para (2) are subject to fees.

Reasons:

• Changes to Para (1) letters a and b are adjusted to changes to Article 25 of the proposed amendments. 
• The addition of Para (2a) was made to regulate costs resulting from changes to Article 39 Para (1).

14. ACCELERATED PATENT ANNOUNCEMENT

In certain circumstances in accordance with the prevailing legislation, the announcement as referred to in Para (2) may be carried out at the earliest of 6 (six) months as from the Filing Date upon a request from the Applicant with reason and subject to fees.

In certain circumstances in accordance with the prevailing legislation, the announcement as referred to in Para (2) may be carried out at the earliest of 3 (three) months as from the Filing Date upon a request from the Applicant with reason and subject to fees.

Reasons:

• To improve efficiency and speed of service, it is necessary to change the provisions of Article 46 Para (3) of the Patent Law regarding the earliest time limit for faster announcement of Patent Applications that have met the requirements from 6 (six) months to 3 (three) months.
• This change in Article 46 Para (3) is a form of DGIP innovation to provide faster service with reasons and charged a fee.

15. SUBSTANTIVE EXAMINATION

Substantive examinations are conducted in accordance with the provisions in Article 3 Para (1), Article 4, Article 5, Article 7, Article 8, Article 9, Article 25 Para (3) and Para (4), Article 26, Article 39 Para (2), Article 40, and Article 41.

Substantive examinations are conducted in accordance with the provisions in Article 3 Para (1), Article 4, Article 5, Article 7, Article 8, Article 9, Article 24 Para (3), Article 25 Para (3) and Para (4), Article 26, and Article 39 Para (2).

Reasons:

• To implement the principle of unity of invention, a substantive examination can be conducted on an Application consisting of more than one unrelated Invention as regulated in Article 24 Para (3) which stipulates that each Application is submitted for one Invention or several Inventions that are a single, interrelated Invention.
• Article 24 Para (3) of the Patent Law is one of the bases for a substantive examination, so the examiner can order the Applicant to file a divisional Application. By including Article 24 Para (3) of the Patent Law, it will minimize the loss of potential state revenue due to the failure to file a divisional Application.
• In addition, references to Articles 40 and 41 of the Patent Law need to be removed because these articles are related to administrative examinations, not substantive examinations.

15. EARLY EXAMINATION

1. Substantive examination can be conducted earlier after the application is declared complete.
2. Submitted through an application to the Minister and subject to a fee.
3. Submitted no later than before the Application is announced.
4. The results of the earlier substantive examination are provided after the announcement period ends.
5. If there are views and/or objections during the announcement period, the Application is made through the mechanism for submitting views and/or objections in (Article 49).
6. The results of the earlier substantive examination are provided no later than 30 (thirty) months after the announcement period ends.

Reasons:

• It is an accommodation of DGIP innovation in accelerating public services in the field of Patents. If the administrative requirements of the Patent Application have been declared complete and given a receipt date, the substantive examination should be able to be carried out earlier without waiting for the publication period or carried out simultaneously with the publication period while still taking into account objections from other parties.

15. SUBSTANTIVE RE-EXAMINATION

Substantive re-examination procedures:

1. Submitted in writing to the Minister with a fee for:
   a. rejection decision;
   b. correction of description, claim, and/or image after the Application is granted a Patent;
   c. decision to grant a Patent
   d. decision to withdraw; and/or
   e. decision to be deemed withdrawn. 
2. The Minister is required to provide a decision to approve or reject the application for re-substantive examination no later than 12 (twelve) months from the date of the application for re-substantive examination.

Reasons:

• Re-examination is a process carried out by the Patent Office to ensure the validity of a Patent in order to improve Patent Services so as to provide legal certainty for Inventors and encourage innovation. 
• Some countries that carry out Re-examination: United States, Australia, Canada, Denmark, Dominican Republic, New Zealand, Norway, South Korea, Moldova, and Singapore.

16. APPEAL COMMISION AND APPEAL PROCEDURE

Further provisions regarding membership, duties, functions, and authorities of Patent Appeal Commission are regulated by a Ministerial Regulation.

Further provisions regarding the requirements and procedures for the appointment and dismissal of members, organizational structure, duties, functions and authorities of Patent Appeal Commission are regulated by Ministerial Regulation.

1. An appeal petition may be filed with respect to:
   a. Application refusal;
   b. correction of description, claim(s) and/or drawing(s) after the Application is granted a Patent; and/or
   c. decision to grant a Patent.
2. Appeal petition is filed in writing by the Applicant or his/her Proxy to Patent Appeal Commission with a copy to the Minister subject to fees.

3. In the case of an appeal against a decision to grant a Patent as referred to in Para (1) letter c being filed by an appellant who does not reside or has no permanent domicile in the territory of the Republic of Indonesia, the appeal must be filed through a Power of Attorney.

4. In the case of the respondent appealing against a decision to grant a Patent as referred to in Para (1) letter c not residing or having no permanent domicile in the territory of the Republic of Indonesia, the respondent in the appeal must appoint a Power of Attorney.

The Patent Appeal Commission is required to send notification letter within a period of 14 (fourteen) Days as from the date of the decision to accept or to refuse:

1. appeal petition with respect to Application refusal;
2. appeal petition for correction of description, claim(s) and/or drawing(s) after granting the Application of Patent; and
3. appeal petition with respect to the decision to grant a Patent.

Further provisions regarding the procedures for applying, examining and resolving Patent appeals are regulated by Government Regulation (previously regulated in the Minister of Law and Human Rights Regulation).

17. COMPULSORY LICENSING

A compulsory License is non-exclusive.

1. Compulsory licenses are granted based on the principle of benefit and are non-exclusive.
2. The granting of a Compulsory License is carried out with the following provisions:
   a. The scope of the granting of a Compulsory License is limited according to the purpose of granting the Compulsory License; and
   b. The period of granting a Compulsory License is limited according to the purpose of granting the Compulsory License.
3. The granting of a Compulsory License as referred to in paragraph (1) cannot be transferred, except in relation to parts or assets of the company that obtains the Compulsory License.
4. The granting of a Compulsory License is prioritized to meet the needs of the domestic market.

Reasons:

• In accordance with the provisions of TRIPs Article 31 regarding the principle of individual merit, scope and duration of compulsory licenses, the principle that compulsory licenses cannot be transferred except in relation to parts of the company or other parties in good faith who utilize the compulsory license, and compulsory licenses are prioritized to meet domestic market needs so as to improve the economy.
• The transfer of a compulsory license may only be carried out if the party receiving the transfer is a party that is still affiliated with the company receiving the compulsory license and operates in the same business sector.

18. PATENT AS COLLATERAL OBJECT OF FIDUCIA

1. Patent rights may be used as collateral object of fiducia.
2. Provisions on terms and conditions to use Patent as collateral object of fiducia are regulated by a Government Regulation.

1. Patent rights may be used as collateral object of fiducia.
2. Provisions on terms and conditions to use Patent as collateral object of fiducia are implemented in accordance with the provisions of laws and regulations in the field of fiduciary guarantees.

Reasons:

• In order to harmonize and make Patents effective as objects of fiducia, it is also necessary to refer to the terms and procedures for submitting patent rights as objects of fiducia regulated by banking financial institutions and non-bank financial institutions.

19. GOVERNMENT USE OF PATENT

1. Government may use a Patent in Indonesia on the following grounds:
   1. related to national defense and security; or
   2. extreme urgency for the interest of the public.
2. The Government use of a Patent as referred to in Para (1) is undertaken restrictively, to satisfy national needs, and non-commercially.
3. The Government use of a Patent as referred to in Para (1) is regulated by a Presidential Regulation.
4. The Government use of a Patent as referred to in Para (3) is conducted for a definite period and may be extended after hearing consideration from the Minister and relevant ministers and/or heads of relevant institutions. 

1. Government may use a Patent in Indonesia on the following grounds:
   1. related to national defense and security; or
   2. extreme urgency for the interest of the public.
2. The Government use of a Patent as referred to in Para (1) is undertaken restrictively, to satisfy national needs, and non-commercially.
3. The Government use of a Patent as referred to in Para (1) is regulated by a Presidential Regulation.
4. The Government use of a Patent as referred to in Para (3) is conducted for a definite period and may be extended after hearing consideration from the Minister and relevant ministers and/or heads of relevant institutions.
5. In the event that the Government does not or has not yet intended to implement the Patent itself as referred to in Para (1) letter a, implementation of the Patent may only be carried out by the Patent Holder with the approval of the Government.
6. The Patent Holder as referred to in Para (5) is exempted from the obligation to pay annual fees until the Patent can be implemented.

Reasons:

• In the TRIPs agreement which is an international reference in Patent regulation, the provisions of Article 31 letter f TRIPs do not limit the implementation of Patents by the Government solely for domestic needs. This can be seen in the formulation of Article 31 letter f TRIPs which reads: (f) any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use. This means that the provisions of TRIPs actually still provide space for the implementation of Patents for needs abroad.

The Government use of a Patent as referred to in Article 109 Para (1) point b includes:

a. pharmaceutical and/or biotechnologies products that are expensive and/or necessary for treating epidemic diseases, diseases which cause significant permanent disability, and diseases which constituted as Public Health Emergency of International Concern (PHEIC).

The Government use of a Patent as referred to in Article 109 Para (1) point b includes:

a. pharmaceutical and/or biotechnologies products that are expensive and/or necessary for treating epidemic diseases, diseases which cause significant permanent disability, and diseases which constituted as Public Health Emergency of International Concern (PHEIC).

Article 111A:

1. The Minister may decide on the implementation of Patents by the Government for the import of pharmaceutical products that have been granted a Patent in Indonesia but cannot yet be produced in Indonesia for the treatment of human diseases.
2. The Minister may decide on the implementation of Government Use of Patents for the export of pharmaceutical products that have been granted a Patent and produced in Indonesia for the treatment of human diseases based on requests from developing or underdeveloped countries.

Reasons:

• In an emergency situation such as covid-19, if medical devices are not covered, the government cannot enforce the patent because the law does not give the government the authority to enforce patents in the form of medical devices.
• The grouping of materials in Chapter VII Part Three of the Patent Law which regulates materials regarding Compulsory Licenses is considered inappropriate and should be placed in the same Para in the Implementation of Patents by the Government. For this reason, it is necessary to reposition the substance in Article 93 of the Patent Law into Chapter VIII concerning the Implementation of Patents by the Government in Article 111A.

20. LAWSUIT AGAINST DECISION TO GRANT OR REJECT PATENT

1. Invalidation of a Patent based on a lawsuit as referred to in Article 130 point b is carried out if:
   a. a Patent according to provisions as referred to in Article 3, Article 4, or Article 9 should not have been granted.
   b. a Patent which comes from genetic resources and/or traditional knowledge does not comply with the provisions in Article 26;
   c. the pertinent Patent is the same as other Patent that has been granted to other party for the same Invention;
   d. the granting of a compulsory License is incapable to prevent the exploitation of a Patent in a form and way that harm the public interest within 2 (two) years as from the date of the grant of compulsory License or as from the date of the grant of first compulsory License in regards to several compulsory Licenses; or
   e. the Patent Holder violates the provisions as referred to in Article 20.

1. Invalidation of a Patent based on a lawsuit as referred to in Article 130 point b is carried out if:
   a. a Patent according to provisions as referred to in Article 3, Article 4, or Article 9 should not have been granted.
   b. a Patent which comes from genetic resources and/or traditional knowledge does not comply with the provisions in Article 26;
   c. the pertinent Patent is the same as other Patent that has been granted to other party for the same Invention; or
   d. the Patent Holder violates the provisions as referred to in Article 20.

Reasons:

• Article 132 Para (1) letter d is repealed, because the reason related to the failure to achieve the objectives of granting a compulsory license is regulated in Article 132 Para (1) letter d of the Patent Law as a reason for canceling the granting of a Patent in cases in the Commercial Court. This is considered inappropriate because the failure to achieve the objectives of granting a compulsory license is not a reason for canceling the granting of a Patent, because the problem is not with the granting of the Patent but lies with the responsibility of the recipient of the compulsory license who is unable to carry out the objectives set.

2. A lawsuit for invalidation on the grounds as referred to in Para (1) point a and point b is filed by the third party to the Patent Holder through the Commercial Court.

2a. A lawsuit for invalidation on the grounds as referred to in Para (1) point a and point b (Patents relating to genetic resources and/or traditional knowledge that do not meet the provisions referred to in Article 26 of the proposed amandments) is filed by:

a. a prosecutor or other party representing national interests against the Patent Holder or recipient of a Compulsory License to the Commercial Court; or

b. a third party to the Patent Holder through the Commercial Court.

Reasons:

• For paragraph (2a) the State Attorney has the authority to enforce the law, provide legal assistance, provide legal considerations, carry out other legal actions, and provide legal services for the State or government agencies and state institutions or business entities where there are government interests in them.
• The legal problems handled are within the scope of Civil Law or State Administrative Law. If associated with this, it would be appropriate for the State Attorney to act as a representative of the State in the event of a lawsuit for the revocation of a Patent related to genetic resources and/or traditional knowledge.
• Thus, it is necessary to change the provisions in Article 132 of the Patent Law by adding norms related to the authority of the Prosecutor as a State Attorney representing national interests to file a lawsuit for a Patent related to genetic resources and/or traditional knowledge

21. ANNUAL FEE FOR PATENT HOLDER

1. Annual fee for the first time must be paid not later than 6 (six) months as from the date of issuance of Patent certificate.
2. Payment of annual fee as referred to in Para (1) for Patent and simple Patent, comprises of annual fee for the first year which is payable as from the Filing Date to the year when a Patent is granted plus annual fee for the following year.
3. Subsequent annual fee is paid not later than 1 (one) month before the same date of the Filing Date in the following year of the protection period.
4. Exception for the annual fee as referred to in Para (2) is regulated by a Government Regulation.

1. Annual fee for the first time must be paid not later than 6 (six) months as from the date of issuance of Patent certificate.
2. Payment of annual fee as referred to in Para (1) for Patent and simple Patent, comprises of annual fee for the first year which is payable as from the Filing Date to the year when a Patent is granted plus annual fee for the following year.
3. Subsequent annual fee payments must be paid annually and must be made no later than 1 (one) month before the same date as the Receipt Date for the following year’s protection period.
4. Annual fee payments that exceed the time limit as referred to in Para (3) are given a grace period of 6 (six) months and are subject to a fine of 100% (one hundred percent) calculated from the amount of annual fees owed.

Reasons:

• For the obligation to pay annual fees, the following may only be made for the Annual Fee in the current year and may not be made by means of advance payment. Therefore, in order to provide clarity on the payment mechanism for Patent Holders to pay the Annual Fee only for the protection period in the current year, it is necessary to add the phrase “must be paid annually” in Article 126 Para (3) of the Patent Law.

22. EXCEPTIONS FROM CRIMINAL PROSECUTION AND OBJECT OF CIVIL LAWSUIT

Except from the criminal provisions as referred to in Chapter XVII and civil lawsuit against:

a. importation of Patented pharmaceutical product in Indonesia and the product has been legally marketed in a country provided that the product is imported in accordance with the provisions of legislation; and

b. production of Patented pharmaceutical product in Indonesia within a period of 5 (five) years before the termination of the Patent protection with the purpose to process the permit and to do marketing after the termination of concerned Patent protection.

Except from the criminal provisions as referred to in Chapter XVII and civil lawsuit against:

a. importation of Patented pharmaceutical product in Indonesia and the product has been legally marketed in a country provided that the product is imported in accordance with the provisions of legislation; and

b. production of Patented pharmaceutical product in Indonesia within a period of 5 (five) years before the termination of the Patent protection with the purpose to process the permit and to do marketing after the termination of concerned Patent protection.

Reasons:

• The 5 (five) year time limit as stipulated in Article 167 letter b of the Patent Law is considered less supportive of the domestic pharmaceutical industry that wants to develop generic drugs for research purposes.
• Therefore, in order to encourage the domestic pharmaceutical industry to develop generic drugs for research purposes, it is necessary to amend the provisions in Article 167 letter b of the Patent Law by removing the 5 (five) year time limit.
• Thus, for research purposes, the development of domestic generic drugs is no longer limited by a time period and such actions cannot be prosecuted criminally or sued civilly.