Patenting Timetable and Costs
Q: How long does it typically take, and how much does it typically cost, to obtain a Patent?
A: The process of registering a patent in Indonesia involves several steps, including jling a Patent application, publication, examination and grant. The general process is as follows:
Filing a Patent Application: A Patent Application must be filed with the Indonesian Intellectual Property Office (DGIP). For PCT applications, the deadline will be 31 months from the earliest priority date. Late filing is possible with additional official fees.
Publication: The publication period in Indonesia lasts for six months. After the publication stage has been passed, the application will proceed to examination (as long as the applicant has filed for the substantive examination request).
Examination: After filing, the Patent Office will examine the Patent Application to determine if it meets the requirements for grant. This process may involve a review of the prior art and an examination of the novelty, inventiveness and industrial applicability of the invention.
Amendment: If the Patent Office finds that the Patent Application does not meet the requirements for grant, the applicant may be given an opportunity to respond to objections raised and amend the application to address any deficiencies. This can be in the form of an office action.
Grant: If the Patent Office determines that the Patent Application meets the requirements for grant, a Patent will be granted and the applicant will be issued a notice of allowance or grant and then will be followed with the issuance of a Patent Certificate, but very often the certificate is not issued for months or even years.
Maintenance: Once a patent has been granted, the applicant must take steps to maintain the Patent, including paying maintenance fees and renewing the patent as required. The first annuity payment must be paid within six months of the notice of allowance or grant.
On average, it takes approximately three to five years from filing to registration. We cannot comment on the costs given the variable conditions that affect it.
Expedited Patent Prosecution
Q: Are there any procedures to expedite Patent Prosecution?
A: The DGIP, under the Ministry of Law and Human Rights of the Republic of Indonesia, has established various procedures under which the examination of a Patent Application may be accelerated. Under these procedures, the DGIP will advance an application out of turn for faster examination if the applicant files the following special requests through the ASEAN Patent Examination Co-operation (ASPEC) programme, the Indonesia – Japan Patent Prosecution Highway (PPH) programme, Indonesia – South Korea PPJ programme, or simply by providing the examiner in charge the granted corresponding claims from other patent offices (eg, the US Patent and Trademark Office (USPTO), Japan Patent Office (JPO), European Patent Office (EPO) and others).
ASPEC
ASPEC is a regional Patent work-sharing programme that involves nine ASEAN member states. The programme allows each participating Patent Office to share search and examination results to help applicants obtain corresponding Patents faster and more efficiently. The goal of ASPEC is to reduce duplication of search and examination work and produce high-quality examination reports. By obtaining examination results from other countries in the participating Patent Offices, applicants can accelerate the examination process, as long as the corresponding claims are the same.
When requesting ASPEC, the Patent Applicant is required to submit an ASPEC request form to the second Patent Office. The form must be accompanied by the following documents:
- 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
- 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 or patentable.
For a Patent Cooperation Treaty (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:
- a copy of the written opinion international preliminary examination report (WO/ISA, WO/IPEA or IPER) established by an ASEAN International Searching Authority or International Preliminary Examining Authority (ASEAN ISA/IPEA) (‘minimum documents’) relating to a corresponding application from the first IP Office, and
- a copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the jrst IP office to be allowable or patentable.
The request to utilise 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.
Indonesia – Japan Patent Prosecution Highway (Indonesia-Japan PPH)
The Japan Patent Office (JPO) and the DGIP initiated a Patent Prosecution Highway Program (PPH) on 1 June 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. There will be an official fee of 5 million rupiahs incurred for requesting the PPH acceleration programme.
When it comes to the requirements, the DGIP will require the applicant to provide the following documents to start an accelerated examination process:
- all formality documents required to file the application have been submitted and the notice of formality documents completion issued by the DGIP;
- proof of payment to file a substantive examination request;
- the application should have passed the publication period of six months;
- completed PPH form;
- corresponding claims that should be equivalent or less compared to the claims granted by the JPO;
- overall equipment effectiveness (OEE) and Office of Later Examination (OLE) examination results; and
- OEE/OLE examination results 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 is no seven 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.
Indonesia – South Korea PPH
The DGIP and the Korean Intellectual Property Office (KIPO) began the PPH collaboration in December 2023. The programme will cease in December 2026. Depending on the assessment, this cooperation may be extended beyond 2026. The programme aims to ensure that South Korean companies entering Indonesia can obtain Patent Examinations more quickly, reducing the time from 40 months to just 18.5 months. The requirements and procedures are similar to the existing PPH between the DGIP and the JPO.
Providing Corresponding Registered Claims
If the above options do not apply, it is possible to provide examiners at the Patent
Office with corresponding granted claims from other well-established Patent Offices (eg, the USPTO, UK Intellectual Property Office, EPO, IP Australia, China National Intellectual Property Administration, JPO, etc). The provision of the corresponding granted claims from the aforementioned Patent Offces will make it easier for the examiners to expedite the examination.
English translations should accompany the documents.
Patent Application Contents
Q: What must be disclosed or described about the invention in a Patent Application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?
A: A Patent Application should at least contain the date of the application, the inventor’s name, full address and nationality, the applicant’s name, full address and nationality (if the applicant is not a legal entity), the applicant’s name and full address (if the applicant is a legal entity), the name and full address of the authorised representative (if the application is filed through an authorised representative), and the name of the country and the date of the first acceptance of the application (if the application is filed with priority rights).
The application should also attach the following:
- title of the invention;
- description of the invention;
- one or more claims of the invention;
- abstract of the invention;
- mentioned drawings in the description necessary to clarify the invention, if the application is accompanied by drawings;
- power of attorney if the application is filed through an attorney or agent;
- declaration of ownership of the invention by the inventor;
- assignment of ownership of the invention if the application is filed by someone other than the inventor;F and
- letter of evidence of microorganism deposit if the application relates to microorganisms (see article 5 of the Regulation of the Minister of Law and Human Rights No. 38 of 2018 on Patent Applications).
Any non-Indonesian applicant must appoint a registered IP attorney or agent to file in Indonesia.
Prior Art Disclosure Obligations
Q: Must an Inventor disclose prior art to the Patent Office Examiner?
A: The Patent Law does not oblige the applicant to disclose prior art to the examiner.
Pursuit of Additional Claims
Q: May a Patent Applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier-filed application? If so, what are the applicable requirements or limitations?
A: Filing additional or divisional applications is regulated under article 38 of the Patent Law. The applicant or the Patent Office may initiate changes or divisions in the application. Such changes or divisions may be made prior to the granting of the Patent approval decision. The provision allows for divisional applications to be filed separately, but the scope of protection in each application must not exceed the scope of protection claimed in the original application. The divisional application must meet certain requirements and is subject to a fee. It is considered to have the same filing date as the original application and excess claims are subject to the same rules as in the original application.
Patent Office Appeals
Q: Is it possible to appeal an adverse decision by the Patent Office in a court of law?
A: An appeal can be filed first before the Patent Appeal Commission. If the decision by the Patent Appeal Commission remains unsatisfactory, then the applicant can file a suit to the Court of Commerce. The Patent Board of Appeal has become increasingly attentive to the use of power of attorney for the appeal submission. The power of attorney must be signed by the applicant’s authorised person.
Oppositions or Protests to Patents
Q: Does the Patent Office provide any mechanism for opposing the grant of a Patent?
A: The Patent Law allows any third party to invalidate a granted patent before the Patent Appeal Commission within nine months of the date of grant. If the nine-month period has lapsed, then the action can only be taken by filing a lawsuit to the Court of Commerce.
Priority of Invention
Q: Does the Patent Office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?
A: The Patent Offce will determine which party has the earlier priority date when it comes to settle the priority dispute for the same invention. If the same invention with a later priority date is granted by accident by the Patent Office, then the holder of the Patent with earlier priority date can file a case before the Patent Appeal Commission within nine months form the date of the grant of the disputed patent.
Modification and Re-Examination of Patents
Q: Does the Patent Office provide procedures for modifying, re-examining or revoking a patent? May a court amend the Patent Claims during a lawsuit?
A: The Patent Law allows post-grant amendment that can be filed no later than three months from the date of grant. However, the modification is limited to the correction of descriptions, claims or figures. The correction is only limited to the limitation of the scope of claims, correcting mistranslations and clarifications for the vague descriptions (see article 69 of the Patent Law).
Patent Duration
Q: How is the duration of Patent Protection determined?
A: For Convention Patents, the protection lasts for 20 years from the Indonesian filing date, whereas for Simple Patents, the protection lasts for 10 years from the Indonesian filing date.
Should you need more information regarding Patent Office Proceedings in Indonesia, please do not hesitate to contact us via [email protected].
