A Complete Guide to Filing a Patent Appeal in Indonesia

In the practice of Patent registration in Indonesia, not all applications result in the grant of a Patent. It is not uncommon for applicants to face rejections, corrections to the description and claims, or even objections to Patent grant decisions. To ensure fairness, accuracy, accountability, and public trust in the Patent protection system, the law provides a legal mechanism in the form of a Patent Appeal Application through the Patent Appeal Commission.

 

The Patent Appeal Commission serves as an alternative dispute resolution mechanism outside of litigation, allowing applicants or interested parties to obtain an independent and objective reassessment of the previous examination results. This mechanism also ensures consistency and technical specialization, as the examination is conducted by a panel consisting of Senior Patent Examiners and subject-matter experts.

 

The Patent Appeal Commission as a Dispute Resolution Option

The Patent Appeal Commission provides a mechanism for:

• Independent review
• Non-litigation dispute resolution before escalation to court
• Assessment based on the principles of:
  • Fairness and accuracy
  • Accountability and trust
  • Consistency and specialization

Accordingly, the Patent Appeal Commission acts as a guardian of the quality of national Patent decisions.

 

Legal Basis for Filing a Patent Appeal

Pursuant to Article 67 of Law Number 65 of 2024, a Patent Appeal must be submitted in writing to the Patent Appeal Commission and is subject to a fee for appeals against:

• Rejection of a Patent Application
• Corrections to the description, claims, and/or drawings after the Patent has been granted
• Patent grant decisions

 

The parties entitled to file a Patent Appeal are the Applicant or their Authorized Representative, as well as any other interested party or their Authorized Representative.

 

Types of Patent Appeal Applications

1. Appeal Against Rejection of a Patent Application
   Rejection of an application includes situations where:
   • The invention fails to meet the requirements of Articles 3, 4, 5, 7, 8, 9, Article 24 paragraph (3), Article 25 paragraphs (3) and (4), Article 26, Article 39 paragraph (2), Articles 40 and 41 of Law No. 13 of 2016; or
   • In the case of a Simple Patent (Utility Model), the invention fails to meet the requirements of Articles 121 and 122 paragraph (1).
2. Appeal Against Corrections
   Corrections after a Patent has been granted are limited to:
   • Restriction of claim scope
   • Correction of translation errors in the description
   • Clarification of ambiguous or unclear descriptions
3. Appeal Against Patent Grant Decisions
   Patent grant decisions include cases where:
   • The invention is deemed to have complied with Article 54 and Article 24 paragraph (3) of Law No. 13 of 2016; or
   • In the case of a Simple Patent (Utility Model), the invention is deemed to have complied with Articles 121 and 122 paragraph (1).

 

Time Limits for Filing a Patent Appeal
(As regulated under Articles 68–70 of Law No. 65 of 2024)

• Appeal against rejection of the application:
  Must be filed within 3 months from the date the rejection notice is issued.

• Appeal against corrections after Patent grant:
  Must be filed within 3 months from the date the Patent Approval Notice is issued.

• Appeal against Patent Grant:
  Must be filed within 9 months from the date the Patent is officially granted.

 

Appeal Forms and Required Documents

The appeal form can be downloaded from the official Directorate General of Intellectual Property (DGIP) website and must be accompanied by the following mandatory documents:

1. A detailed written explanation of the appeal reasons
2. Supporting evidence and legal arguments
3. Proof of payment
4. Copies of the disputed Description, Claims, and Drawings
5. Rejection or Patent grant notification letter
6. Copies of the originally submitted Description, Claims, and Drawings
7. Copies of all substantive examination correspondence
8. Power of Attorney (if filed through an Attorney/Representative)

 

Permissible Grounds for Filing a Patent Appeal

The appeal must not contain new inventions or broaden the scope of protection, and must be presented in:

• A clear correction matrix
• A complete explanation of objections to the Patent grant decision

 

Examination by the Patent Appeal Commission

Every Patent Appeal Application must undergo:

• Administrative examination
• Substantive examination

 

For this purpose, the Chairperson of the Patent Appeal Commission forms an odd-numbered Appeal Panel, consisting of:

• Senior Patent Examiners with the rank of ‘Pembina Utama Muda.’
• Subject-matter experts in accordance with technical requirements.

 

Authority of the Patent Appeal Commission

The Commission has the authority to:

• Summon the Applicant, Patent Holder, and Examiner
• Summon witnesses and experts
• Conduct further and on-site examinations
• Request additional evidence
• Issue decisions on Patent appeal applications

 

Decision of the Patent Appeal Commission

• Is determined based on the results of substantive examination
• Is pronounced in an open court session for the public
• Is recorded and announced by the Minister
• Is officially delivered to the parties or their Authorized Representatives

 

Legal Actions After the Patent Appeal Commission Decision

After the Patent Appeal Commission decision is pronounced and delivered to the parties, two legal consequences may arise:

1. If the appeal is granted, the Directorate General of Intellectual Property (DGIP) is obligated to implement the decision in accordance with its ruling, whether by continuing the patent grant process, conducting the ordered corrections, or validating the disputed Patent. In this case, the Patent dispute is deemed administratively resolved.
2. If the appeal is rejected, the interested party retains the right to pursue further legal remedies through a lawsuit before the Commercial Court. This constitutes the litigation stage, which may be pursued if the applicant believes the Appeal Commission’s decision still infringes upon their legal rights. Accordingly, the Patent Appeal Commission functions as the final administrative safeguard before a patent dispute proceeds to judicial litigation.

 

Should you need further information regarding Patent Appeal Applications in Indonesia, please contact us through the channels below and get a FREE 15-minute consultation:

 

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