Trademark Application in Fiji

Intellectual Property, Trademark

Trademark application in Fiji is either national or based on a national UK registration certificate issued by the United Kingdom Comptroller-General (and not an EU or Madrid registration). Applications for independent registration undergo examination and advertising for opposition before registration, whereas “UK-based” applications are to be registered as of right without examination, advertising or opposition. Priority rights under the Paris Convention do not apply in Fiji as it is not a signatory to the Convention. We use the old British trademark classes and not the international Nice classes, so goods in international Nice classes would need to be reclassified into the relevant local classes. Requirements In order to file a Trademark in Fiji, we need the following documents/information in order to file the application: A list of the goods on which the applicant proposes to use its trademark; An electronic image of the trademark; A signed original of the Authorisation of Agent; A completed form of the Information Sheet; Filing details including the proper name, address, and occupation of the applicant; If the local application is to be UK-based, we will also need a certified copy of the United Kingdom registration certificate issued by the UK Comptroller General. The estimated time frame for completion is approximately 12-18 months. Should you require further information, please contact us at [email protected].

The Use of Registered Patents by the Government: The Indonesian Perspective

Intellectual Property

Several patent registrations are possible to be used by the Government of the Republic of Indonesia as regulated under Article 109 to 120 of the Indonesian Patent Law. However, there are 2 main determinants that will need to be met first: The patent is related to national security and defence, such as explosive materials, firearms, and explosive ammunition; or There is an urgent need to use the patent for the benefit of the people of the Republic of Indonesia. For instance, in the event of an epidemic of a disease where the cure may only be possible by using registered patents; in the field of agriculture, the use of registered patents by the Government may be needed to counter crop failure caused by pests and/or natural disasters. The use of registered patents by the Government should also be established by a Presidential Decree. The use should also be done with no profit gaining purpose in mind and it is only limited within a certain period. Please note that the use may be extended unilaterally by the Government. The extension should be supported by the recommendation from relevant ministries. For instance, if it is related to health issues, then the extension of the use of registered patents by the Government can only be done after receiving a recommendation from the Ministry of Health. The Patent Holders will always be kept in the loop with regard to the use of their patents in Indonesia by the Government since the Government will send the copy of the Presidential Decree to the Patent Holders. The use of registered patents by the Government related to national security and defence include: Firearms; Ammunitions Military grade explosives; Interceptions; Surveillance; Espionage; Encoding device and analysis encoding devices; Other country’s defence and security process and/or devices. Whereas the use of registered patents by the Government in the event of an urgent need for the benefit of the people include: Pharmaceutical and/or biotechnology products with unaffordable price tags and/or which are needed to counter an epidemic that may result in fatalities of many people, cause significant disabilities, and is considered as a global health issue; Chemical and/or biotechnology products related to agriculture that are needed for food security; Animal drugs that are needed to counter plaguing pests and/or animal diseases; and/or Process and/or products to counter natural disasters and/or environmental disasters. Please note that during the use of registered patents related to national security and defence, the Patent Holders will not be able to exercise its exclusive rights to use, sell, import, lease, assign, produce, and prohibit other parties without their prior consent. Whereas the use of registered patents by the Government in the event of an urgent need for the benefit of the people does not diminish the rights of the Patent Holders to use, sell, import, lease, assign, produce, and prohibit other parties without their prior consent. Registered patents which can threaten or endanger Indonesia’s defence and national security can only be used and exercised by the Government. If the Government has not used them yet, the Patent Holders should obtain prior approval to use from the Government. During the use of the registered patents by the Government, the Patent Holders is exempted from paying annuity fees for its patents. The use of registered patents by the Government is recorded in the Patent Gazette and is published in electronic or conventional media. Please note that their decision to use registered patents is final and binding, hence no possible legal avenue to dispute or challenge the use of registered patents by the Patent Holders. Legal notice The contents of this publication, current at the date of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication. Please contact [email protected] or contact us via our website should you have any question regarding this article.  

MEET US AT INTA 2018 ANNUAL MEETING IN SEATTLE!

Event

It is our pleasure to announce that our representative, Mr. Emirsyah Dinar, will attend the upcoming INTA Annual Meeting 2018 in Seattle, WA, the United States of America from May 19 to May 23, 2018. We would be grateful if you could indicate your preferred date and time to meet by visiting http://affa.setmore.com or by contacting us at emirsyah.dinar.co.id if you are unable to find the suitable time slot. It would be a great opportunity to connect and discuss potential collaboration between our firms. Thank you and we look forward to meeting you soon in Seattle! Best regards,   Achmad Fatchy/Emirsyah Dinar

Reviving a Lapsed Patent Registration in Indonesia

Intellectual Property

The Directorate General of the Intellectual Property Office of the Republic of Indonesia has announced that all lapsed patent registrations due to non-payment are able to be revived. This decision is based on several considerations, namely the goodwill of the patent holders to settle the debt arising from the non-payment, untimely and even missed delivery of the notifications from the Patent Office to the patent holders and/or to the legal proxy in Indonesia, lack of information disclosure by the patent office regarding the payment deadlines, and quite often the non-payment was not due to the patent holder’s fault. Another reason, and perhaps the main reason, for the decision is the need of the government to collect the debt that has arisen from the non-payment. While this can be seen as a golden opportunity to revive lapsed patents, the patent holders should also take into account the payment information of the lapsed patent registrations that have been passed on from the Patent Office to the State Wealth Office and Auction Office under the Ministry of Finance. It is not uncommon to find discrepancies in information about how much the patent holders should pay that is held by the Patent Office and by the State Wealth Office and Auction Office under the Ministry of Finance. It is imperative that double checking with both institutions should be done before making a full payment and to check if it is still possible to revive a patent registration that has been transferred from the Patent Office to the State Wealth Office and Auction Office under the Ministry of Finance. In accordance to the decision by the Directorate General of Intellectual Property of the Republic of Indonesia, the revival can be done by filing the letter of revival request which should be accompanied by the proof of payment of the debt and the interests.  However, the patent holder should also submit a written undertaking stating that they will not take any legal action against another party for infringement of the revived patent during the lapsed period. Given the lack of guideline to whether the other party should immediately stop using the lapsed patent once the revival request has been filed and approved, this particular requirement leaves grave concerns for the parties who have already used the patent with an assumption that the patent has lapsed due to non-payment. Should you have any query please do not hesitate to contact us at [email protected].  

INTA to Assist Trademark Law Development in Timor Leste

Intellectual Property

AFFA Intellectual Property teamed up with several colleagues from private practices in Timor Leste and Portugal to discuss Intellectual Property Protection in Timor Leste on December 1st 2017. The event was initiated by INTA and the Embassy of the United States of America in Timor Leste. The discussions were attended by several government agencies, such as the Ministry of Justice and National Police of Timor-Leste (PNTL), as well as local and international businesses who operate in the country. INTA, as well as the panels, discussed the current state of the Trademark protection in Timor Leste, followed by how the collaboration can be extended to support the development of Intellectual Property Rights Protection in Timor Leste. AFFA Intellectual Property, which has a permanent office in Timor Leste, presented the current practice in Indonesia and how Timor Leste can learn from it. The topic of Timor Leste’s interest to join ASEAN was also discussed. As you know, the introduction and hopefully the harmonization of IP law is one of the prerequisites for Timor Leste to join the ASEAN. While the Trademark Bill is not yet ready to be discussed by the Parliament, it is hoped that discussions like this will foster the importance of Intellectual Property Protection in the country. For cautionary notices in Timor Leste, please do not hesitate to contact us at [email protected]. *image retrieved from https://tl.usembassy.gov/u-s-embassy-supports-intellectual-property-rights-protection-timor-leste/

The House of Representatives Passed the New Patent Law; Local Inventors to Receive Royalties and Subsidized Annuity Fees

Patent

The House of Representatives passed the new Patent Law during the general assembly at the House of Representatives in Jakarta on July 28, 2016. The new Patent Law is hoped to ensure the national technology development as well as providing both local and international inventors with more certainty of law. The new Patent Law is consistent with the Government’s goal to increase output based research in encouraging inventors and researches to obtain Patent protections for their inventions. The Ministry of Law and Human Rights of Indonesia also aims to increase the welfare of the People of the Republic of Indonesia through the utilization of Patents, more specifically Patents related to health case, environment, defense, and most importantly genetical resources (GR). The new Patent Law is hoped to stimulate the number of local Patent applications filed in order to improve the economy of Indonesia, as well as to increase the general welfare of the local inventors. To increase the number of local Patent filings in Indonesia, the new Patent Law will subsidize the annuity fees for the first 5 years for universities and other education institutions. The inventors of governmental bodies will also be awarded with royalties proportionate to their inventions. The Ministry of Finance issued a regulation last year pertaining the share of royalty to be paid to the inventors, which currently stands at 40% for the inventors and 60% for the institutions (both private and Government). A full study of the recently passed Patent Law will be published soon. Source: Directorate General of Intellectual Property of Indonesia, July 2016

Amendments to the Indonesian Patent Law: Outsourced Substantive Examination, Restoring Lapsed Patent Registrations, Genetic Resources, and many more.

Intellectual Property

The Directorate General of Intellectual Property of Indonesia proposed several amendments to the current Patent Law No. 14 2001 as it may no longer be relevant to the ever changing technology and rapid growth of innovation both in Indonesia and overseas. The amendment also aims to increase the number or patent applications from Indonesia through incentives, e-filing system and easier annuity payment method. The suggested amendments also include the provision of outsourced role of substantive examination to external patent examiners. Another provision that is worth highlighting is the obligation by the patent applicant to identify the origin of Genetic Resource and/or Traditional Knowledge in a patent description document if the invention is related to Genetic Resource and/or Traditional Knowledge. The proposed amendments are currently under discussion at the House of Representatives of Indonesia. We believe the Amendment will be passed by the end of 2016. For a comprehensive article regarding the amendments to the Indonesian patent law, please contact us at [email protected].

Panduan Pendaftaran Merek Di Eropa

Trademark

Dengan semakin maraknya pemasaran produk-produk yang berasal dari Indonesia di luar negeri, maka kebutuhan untuk mendapatkan hak atas Merek dari produk-produk tersebut merupakan salah satu komponen keputusan bisnis yang tidak dapat dikesampingkan. Saat ini, negara-negara Eropa seperti Belanda, Jerman, Swiss, Perancis, dan Italia merupakan tujuan ekspor bagi perusahaan-perusahaan Indonesia. Berdasarkan pengalaman kami, maka produsen makanan dan minuman asal Indonesia memiliki minat yang sangat tinggi untuk melindungi Mereknya di Eropa. Ada 2 cara untuk melindungi Merek anda di Eropa, di antaranya: 1. Permohonan Langsung ke Negara Tujuan Anda dapat melakukan permohonan pendaftaran Merek di negara tertentu yang merupakan pasar bagi produk anda. Kelebihan dari menggunakan cara ini adalah biaya yang relatif tidak terlalu mahal apabila anda hanya ingin mendapatkan hak atas Merek di negara-negara tertentu saja. Dengan cara ini, kami dapat menggunakan associate kami di negara-negara tertentu untuk melakukan permohonan pendaftaran Merek di negara-negara tertentu.  Biaya yang dibutuhkan bervariasi karena bergantung pada biaya resmi yang ditetapkan oleh Kantor Merek masing-masing negara. Jangka waktu yang dibutuhkan mulai dari pengajuan permohonan sampai pencetakan sertifikat pendaftaran Merek berbeda di tiap negara. Menurut pengalaman kami, anda membutuhkan setidaknya 18 bulan di Italia sementara di Jerman dan Perancis hanya membutuhkan 4-7 bulan saja. Hal ini dipengaruhi oleh sistem birokrasi setiap negara.   Kami sangat menyarankan untuk menggunakan metode ini apabila anda hanya tertarik untuk mendapatkan hak atas Merek anda di negara tertentu saja, mengingat biaya yang diperlukan akan semakin tinggi seiring bertambahnya jumlah negara yang diinginkan. 2. Permohonan Merek Uni Eropa Cara yang kedua adalah dengan mengajukan 1 permohonan pendaftaran Merek untuk 28 Negara Anggota Uni Eropa. Cara ini memang lebih murah apabila perusahaan memiliki pasar yang sangat luas di Eropa karena hanya membutuhkan 1 pendaftaran yang dapat melindungi hak atas Merek perusahaan anda di 28 Negara Anggota. Permohonan dapat diajukan di European Union Intellectual Property Office (EUIPO) atau di Kantor Merek Negara Anggota. Manajemen portfolio akan menjadi sangat mudah bagi anda karena anda hanya akan mendapatkan 1 sertifikat pendaftaran Merek, dibandingkan 28 sertifikat berbeda untuk 28 Negara Anggota. Namun, apabila permohonan Merek ini ditolak oleh salah satu Negara Anggota, maka permohonan Merek ini akan gugur untuk 27 Negara Anggota Lainnya. Anda juga tidak dapat memilih Negara Anggota tertentu saja apabila ingin menggunakan metode ini. Dengan demikian, maka sangat disarankan untuk melakukan pengecekan Merek secara menyeluruh di semua Negara Anggota Uni Eropa sebelum memutuskan untuk melakukan permohonan pendaftaran Merek. Waktu yang dibutuhkan mulai dari permohonan pendaftaran hingga pencetakan sertifikat pada umumnya adalah 6-12 bulan. Apabila ada oposisi dari pihak lain terhadap Merek anda, maka waktu yang dibutuhkan adalah sekitar 12-18 bulan sampai adanya keputusan dari EUIPO. Setelah permohonan pendaftaran dikabulkan oleh EUIPO, maka Merek anda akan berlaku selama 10 tahun dan dapat diperpanjang untuk 10 tahun berikutnya. Jika anda membutuhkan saran yang lebih detil dan spesifik mengenai pendaftaran dan perpanjangan  Merek di Eropa, silahkan hubungi kami di [email protected].

Draft Presidential Decree on the Implementation of Patents by Patent Holders

Patent

As a response to many critics of Article 20 of the Law No. 13 Year 2016 on Patents (Patent Law), the Government of the Republic of Indonesia has finally issued a draft Presidential Decree on the Implementation of Patents by Patent Holders. As you may be aware, Article 20 of the Patent Law puts an immense pressure on the Patent Holder to either use the patented process or manufacture the patented products in Indonesia. Failure to do so, the patent registration may be subject to invalidation. While Article 20 of the Patent Law may be seen to have noble purposes – such as to speed up the transfer of technology and to incentivize foreign direct investments in Indonesia, this Article was proven to be one of the Articles many Patent Applicants and/or Holders – especially from the pharmaceutical industry – criticized since in actual business practice, setting up manufacturing plants is not always feasible given many factors such as cost, labour law, and restrictions on shares that may be owned by foreign entities in particular industries. Article 3 of the draft Presidential Decree stipulates that Patent Holders that have not manufactured their patented products or use their patented process are able to request the postponement of the implementation of a Registered Patent as stipulated in Article 20 of the Patent Law as long as the Patent Holder meets the following conditions: The Patent Holder does not have the capability to implement the patent and/or The implementation of the patent does not have justifiable economy value. The Patent Holder may request the postponement after 24 months at the earliest and 30 months at the latest effective from the Registration Date. The postponement request shall be granted after 36 months from the Registration Date. Kindly be advised that the Ministry will conduct an examination and there is still a chance that they will reject the request. Please bear in mind that the draft will be subject to revisions. We will inform you once the Presidential Decree has been finally passed. For more information regarding Patent Law and Patent Practice in Indonesia, please contact us at [email protected].

The Indonesian Government to Issue Implementing Regulation for the Patent Law

Patent

Following several protests from various Chambers of Commerce around the world, the Government of the Republic of Indonesia is set to issue implementing regulation of Article 20 of Law No. 13 Year 2016 on Patents. The article stipulates that the Patent Holder shall manufacture the patented products or to use the patented process in Indonesia. The aim of this provision is not other than to support technology transfer and to increase the level of Direct Foreign Investment in Indonesia. This provision is meant to reflect the content of Article 7 of the TRIPS Agreement which stipulates that the IP enforcement shall contribute to the promotion of innovation and the dissemination of technology.   While the draft content remains out of public sight, we are adamant that the content of the Regulation will revolve on the authority of the Ministry of Law and Human Rights to form a specialized unit which role is to decide whether or not the Patent Holder can delay the manufacturing or the use of Patented Invention in Indonesia or not.   We shall update you with the draft bill once it is made available to public.   Should you have any question please contact us at [email protected] or visit our website for future updates regarding Patent Law in Indonesia.