Summary of Implementation Guideline and Technical Guideline of Patent Substantive Examination in Indonesia TECHNICAL GUIDELINE Patent Substantive Examinations are conducted within 30 months from the application date and will focus on the following points: DESCRIPTION At Least Should Consist of: a. Description regarding one way to conduct the invention; b. If the description refers to figure, it should use the same reference as used in figures; c. Description on how the invention is implemented in industry; d. Brief description of invention for understanding regarding the invention; e. Mention of technology in closest prior art in the background of invention. Includes in the Following Order: Technical Field of Invention; Background of Invention; Brief Description of Invention; Brief Description of Drawings (if available); Detailed Description of Invention. Sufficiency of Disclosure Description should disclose the invention clearly, such that those skilled in the art can implement the said invention. This is so that the public can utilize this invention in return for the right granted to the applicant. The function of the invention should be disclosed. Prior Art Background Inventor should state what is considered as the closest prior art in the background of the invention. If the search result finds a closer prior art, the closest prior art should be mentioned in the background of the invention. In mentioning the prior art the background should be fair and honest and should not be misleading. CLAIMS Product Claims vs Process Claims There are only 2 categories of claim: Product Claims: For a physical entity (object). Products may be a compound, an equipment, a combination of equipment in a system, etc. Product claim cannot be distinguished from prior arts through its method of use. Process Claims: For an activity (method). Processes may be an activity to produce a product, an activity which use a product, or an activity which use an organism as a subject. Independent vs Dependent Claims Independent Claim consists of all features of the invention which protection is sought . Independent claim does not depend in content on another claim. Dependent Claim consists of all features from independent and/or other dependent claim and has the same category as the claim which it depends on. Dependent Claim cannot: belong to a different claim category than the claim it depends on; be broader than the claim which it depends on; contain other features which are not in the claim it depends on; refer to a subject matter from another claim for intended purpose; and only refer to a part of the claim which it depends on. Dependent Claim can depend on more than 1 claim. If a dependent claim disclose a feature which were not described previously, the independent claim should describe this feature, or the dependent claim must first describe this feature. Product by Process Claims Product by process claim is not novel just because it is produced by a novel process. Its novelty and inventive step are determined through its own product features. Feature Product claim should contain product features, process claim should contain process features. Alternative in Claims Claim may refer to alternative forms ”and/or”, but each alternative should have the same basic properties. One alternative must be able to replace another. Two Parts Form Claim (Preferable Form) First Part: Preamble consisting of technical features of said invention that is known from previous technology. Second Part: Technical features of invention which distinguish the invention from the previous technology and which protection is sought. For simple patent, all (tangible) product claim and the dependent claim thereof should be written in two parts form. Figures and Graphs and References in Claims Claims cannot contain figures or graphs, but may contain tables and mathematical formulas. For clarity, notation which refers to figures may be added and should be written uniformly between brackets ( ). Parameters in Claims Parameters are values which are properties of a product that can be measured directly. Characterization of product using only parameters are not allowed unless the invention is unable to be described using other means. Method of measurement: Too long to be described in the claim; Those skilled in the art know which method to use, because there is only one method commonly used; All measurement methods yield in the same result. Consistency Writing of claims should be consistent between one feature to another, e.g.. using present or past participle, using active or passive voice. Claims should be consistent with the description. The description should contain the same limiting features as the claims. If the description states that one feature is essential for the invention, said feature must be included in the independent claim. If some embodiments in the description are not included in the claims, the claims may be broaden to include these embodiments or these embodiment may be deleted from the description. All terms used in claims should be consistent with the description, all uncommon terms should be defined in the description. AMENDMENT Amendment cannot broaden the scope of the invention (by adding a subject matter), but may be allowed if it is intended to clarify the disclosure. UNITY Invention should have the same common inventive concept. Unity of invention can be considered for the following combination of independent claims: a. Product claim, process claim which is specifically used for the manufacture of said product; b. Process claim and equipment/apparatus claim which is specifically designed to conduct said process; and c. Product claim, process claim which is specifically used to manufacture said product and equipment/apparatus claim which is specifically designed to conduct said manufacturing process of said product. PRIORITY Priority rights are granted for the following: a. Paris convention or WTO member countries; b. Applications claiming priority which is filed within 12 months since the filing date of the priority application; c. Previous invention should have been filed by applicant of Indonesian application, or Indonesian applicant should be a rightful surrogate of the applicant of the previous application;
The Importance of Artificial Intelligence Act (AIA) in the European Union
The Importance of Artificial Intelligence Act (AIA) in the European Union In the previous article, we discussed how AI could violate Intellectual Property, and several countries have prepared regulations to deal with it. This article will discuss the importance of AIA in the European Union for fighting the Infringement of Intellectual Property based on AI. The European Parliament and the Council of the European Union, the EU’s legislative bodies, were negotiating the law’s final text. The aim was to agree on the AIA by the end of 2023. AIA is very relevant for Intellectual Property infringement in many ways: 1. The AIA requires AI providers to be transparent about how their systems work. This could make it easier for IP owners to identify and track down AI systems that are infringing on their rights. For example, if an AI system is used to create counterfeit goods, the AIA could require the provider of the AI system to disclose information about the training data that was used to create the system. This information could then be used by IP owners to identify the source of the counterfeit goods. 2. The AIA requires AI providers to take steps to mitigate the risk of IP infringement. This could include measures such as using watermarks or other techniques to protect IP-protected content from being used by AI systems without permission. For example, an AI system that is used to create images could be programmed to detect and remove watermarks. 3. The AIA provides enforcement mechanisms against AI providers that infringe IP rights. This could include fines, injunctions, and other measures. For example, if an AI provider is found to be infringing IP rights, the AIA could allow the IP owner to seek an injunction to prevent the provider from continuing to use the AI system. Overall, the AIA is a significant step forward in the fight against IP infringement using AI. By requiring AI providers to be transparent, to take steps to mitigate the risk of IP infringement, and to comply with enforcement mechanisms, the AIA could help to protect IP rights in the EU. Here are some specific examples of how the AIA could be used to address IP infringement: An AI system that is used to create images could be programmed to detect and remove watermarks. This would make it more difficult for counterfeiters to use the AI system to create fake images. An AI system that is used to translate text could be programmed to identify and remove copyrighted content. This would make it more difficult for people to use the AI system to infringe copyright by translating copyrighted works without permission. An AI system that is used to generate music could be programmed to identify and remove copyrighted melodies. This would make it more difficult for people to use the AI system to infringe copyright by generating music that sounds similar to copyrighted works. The AIA is still in the early stages of development, but it has the potential to be a powerful tool for protecting IP rights in the EU. As the AIA is finalized and implemented, it will be interesting to see how it is used to address IP infringement in a variety of contexts. If you need further information regarding the registration and protection of Intellectual Property in Indonesia and abroad, don’t hesitate to contact us via [email protected]. Sources: IBM Artificial Intelligence Act
The IP Valuation Practice in Indonesia
The IP Valuation Practice in Indonesia Measuring the value of Intellectual Property (IP) as an effort to protect intellectual works is a challenging matter. Often, the calculations carried out only partially reflect the true potential of these intellectual assets. For example, is the amount of royalties received an absolute assessment factor? Is the originality factor more valuable than novelty? Or does the closer the protection period gets to the end, the less valuable the IP will be? Considering that this valuation is also essential in providing credit, where the Government is encouraging the provision of banking credit to Intellectual Property owners to drive the national economy, in December 2023, the National Research and Innovation Agency (BRIN) as a research institution that has a lot of contact with IPs has held a “Kick Off The Role of Intellectual Property Valuators in Utilizing Research and Innovation Results.” This activity was held in collaboration with the Ministry of Law and Human Rights and the World Intellectual Property Organization (WIPO). Benefits of Intellectual Property Valuation IP valuation is beneficial if you carry out the following activities: Merger and Acquisition Sale and/or Purchase Litigation/Seeking Damages in Settlement Balance Sheet Reporting (Financial Report) Price Purchase Allocation IP Financing: Taking IP as Collateral Licensing & Identifying Worth of IP Portfolio Franchising (Initial Franchising Fee/Royalty) SPI 320 – Basis Valuation for Intangible Assets In the previous article, we explained how the National Collective Management Organization (LKMN) can actively assist appraisals and intermediaries if there is a default on Copyright-based credit. However, for Copyrights and other IPs as identifiable intangible assets, Indonesia has Indonesian Valuation Standards (SPI), which must be used as a reference for all appraisers carrying out appraisal activities in Indonesia. This mandatory nature is regulated in the Indonesian Appraiser Code of Ethics (KEPI). SPI is determined by the Indonesian Appraisal Professional Organization, better known as the Indonesian Appraisal Professional Society (MAPPI), and is based on the 2013 version of the International Valuation Standards (IVS) issued by the IVS Council, which is headquartered in London, England. Classification of Intangible Assets Based on SPI 320 1. Marketing-Related Intangible Assets Intangible assets associated with marketing activities contribute to a company’s ability to attract customers, enhance brand recognition, and generate revenue. E.g., Trademarks, Industrial Designs, and Domain Names. 2. Customer-Related Intangible Assets Intangible assets that are associated with a company’s existing customer base and contribute to its ability to generate revenue and maintain customer loyalty. These assets are valuable because they represent the relationships and interactions a company has established with its customers over time. E.g., Customer Lists, Licensing Agreements, and Trade Secrets such as Customer Databases and Exclusive Customer Agreements. 3. Artistic-Related Intangible Assets Intangible assets that are associated with creative works and expressions, including copyrights for original literary and artistic creations, trademarks protecting unique brand identifiers, design patents for distinctive visual designs, and patents covering inventive artistic processes. These assets are vital for safeguarding and commercializing artistic endeavors. 4. Contract-Related Intangible Assets Non-physical assets arising from contractual agreements, embodying legal rights and obligations. These intangibles often derive from contracts like licensing agreements, franchise agreements, or customer contracts, holding considerable value for a business. Examples include licensing rights for a popular software product, a franchise agreement granting exclusive rights, or a customer contract securing ongoing revenue streams. 5. Technology-Related Intangible Assets Non-physical assets tied to technological innovations, provide businesses with a competitive edge. These assets often result from research and development efforts, patents, or proprietary technologies. Examples include patented inventions, software algorithms, or proprietary manufacturing processes. Effective management and protection of these assets are vital for companies operating in technology-driven industries, ensuring they maintain exclusivity and market leadership in their innovations. 6. In-Process Research and Development/IPR&D Intangible Assets Ongoing research and development projects that have yet to reach completion or commercialization. These assets are valuable for companies anticipating future innovations and technological advancements. IPR&D assets may include unreleased products, prototypes, or projects in various stages of development. Factors Considered by the Appraiser: 1. Rights, privileges, or conditions attached to Ownership Rights. Ownership rights can be expressed in various legal documents. In legal jurisdictions, this document is usually called a Patent, Trademark, Copyright, know-how, database, etc. Rights owners are bound by documents that record their rights to Intangible Assets. The rights and conditions are contained in the agreement or exchange of correspondence, and these rights may or may not be transferred to the new owner of the rights. 2. Remaining economic and/or legal life (validity period) of Intangible Assets. Suppose the Income Approach is used for Intangible Assets. In that case, the Prospective Financial Information period must be the same as the Remaining Useful Life of the Intangible Asset that is the object of the assessment. If the Market Approach is used, the comparison object period is comparable and similar to the Remaining Useful Life of the Intangible Asset, which is the object of assessment. If the cost approach is used, the Remaining Useful Life is used to calculate the obsolescence of the Intangible Asset, which is the object of assessment. The factors used in measuring the Remaining Useful Life of Intangible Assets are based on, among others: a. Legal Life; Derived from the life of a Patent, Trademark, or Copyright, which provides legal protection from competition. b. Contractual Life; Derived from the age of the agreement with the customer, franchise agreement, rental agreement, or other agreement between the assignor and a third party. c. Physical Determinants; The remaining useful life of intangible assets is calculated based on the physical condition of tangible assets, which are an inseparable part of intangible assets. d, Economic Life; Economic Life can be obtained through: 1. Multiperiod Excess Earnings Method (MEEM); In this method, the appraiser must first calculate the decay factor. The decay factor can be obtained using the exponential total life divided by the negative Remaining Useful Life. 2. Convention Method. In this method, the appraiser must reveal
Prospects for Using Intellectual Property as Collateral in Indonesia
Prospects for Using Intellectual Property as Collateral in Indonesia The consequence of Indonesia’s participation as a member of the World Trade Organization (WTO) is to take essential steps, including harmonizing the legal regulations in the field of Intellectual Property (IP) with the provisions of the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement. This includes following developments in global regulations, where IP is one of the accesses to obtain banking credit internationally. It is noted that IP, such as Copyrights, Patents, and Trademarks, have become a common source of banking financing in foreign countries. This makes it easier for business people with products and/or services protected by IP law to access bank credit for capital to develop their business. Regulation v Implementation in Indonesia Since 2022, the Government has stipulated Government Regulation Number 24 of 2022 concerning Implementing Regulations of Law Number 24 of 2019 concerning Creative Economy. This confirms that IP can be pledged as collateral for financing from banks and non-bank financial institutions. This regulation has only been implemented since July 12, 2023. However, Melly Goeslaw, a singer and songwriter who has composed more than 600 songs, in her interview with Najwa Shihab, an Indonesian Senior Journalist, on the Mata Najwa podcast, which was released on the YouTube channel on January 16, 2024, admitted that her songs still cannot be applied for as loans at the bank. With the popularity of her songs, such as “Bunda” (1997) and “Ayat-Ayat Cinta” (2009), she still feels worried that she will not be able to support her children and provide them with a promising future if she is no longer productive. That’s why she proposed herself as a legislative candidate for the 2024-2029 House of Representatives of the Republic of Indonesia, hoping that existing regulations can be implemented comprehensively. The same thing was expressed by Mira Lesmana, producer of blockbuster films such as “Petualangan Sherina” (2000) and “Ada Apa dengan Cinta?” (2002). Her work as Intellectual Property has indeed been recognized, but it cannot be used as collateral to the bank. It is easier to sell than to be used as collateral. Luckily, non-bank funding institutions already understand the value of a film, so they don’t need to sell or relinquish ownership of their old IP to get fresh funds to make new films because quality films cannot be made with a low budget. The Concept of IP as a Collateral Object in the Fiduciary Guarantee System In Article 1, paragraph (1) of Law No. 42. 1999 concerning Fiduciary Guarantees, Fiduciary means transferring ownership rights to an object based on trust, provided that the object whose ownership rights are transferred remains in the control of the object’s owner. Meanwhile, a Fiduciary Guarantee is a security right for movable objects, tangible and intangible, and immovable objects, especially buildings that cannot be burdened with Mortgage Rights. From a legal aspect, Intellectual Property as Fiduciary Guarantee is regulated by the following legislation: Copyright Law Article 16 Paragraph 3 Copyright can be used as an object of fiduciary guarantee. Patent Law Article 108 Patent rights can be used as an object of fiduciary guarantee. For Industrial Design, the regulations are still in the form of an amendment, where Article 62 of the Industrial Design Bill states that Industrial Design can be used as an object of fiduciary guarantee. However, just like Trademarks, Trade Secrets, and other IP regimes, which are identifiable intangible assets, they can be categorized as objects of fiduciary collateral. Conditions for IPs as Fiduciary Guarantee For Intellectual Property to be used as collateral or fiduciary guarantee, 2 (two) conditions must be met, namely: Has been recorded or registered with the Directorate General of Intellectual Property (DGIP) as indicated by possession of a Certificate of Recordation for Copyright or Certificate of Registration for other Intellectual Property; It has been managed independently, and/or the rights have been transferred to another party, as indicated by proof of use or a License Agreement document. Obstacles in the Field Seeing the high growth in IP recordation and registration, if this regulation is implemented, interest in applying for IP as collateral will also be increased. However, as stated at the beginning, rejection still occurs a lot. Why? Because if we talk about providing bank credit to debtors, there is always the potential for bad credit/failure to pay. So, to anticipate this risk, banks generally require debtors to provide credit collateral with a definite execution value to get the total return value. In practice, collateral such as land or buildings with much potential interest takes work to get buyers at the expected value. As a result, without further understanding the economic value of IPs, calculating the credit that can be granted becomes increasingly complex, and IPs are only considered as additional collateral guarantees. Considering that there are still many other factors that are pretty complex in assessing an IP, it is felt necessary for these institutions to collaborate with other institutions that are not only able to calculate the valuation of IP assets but also legal audits that must understand the validity period, cancellation status and ownership (who is suitable to be given credit), as has been practiced abroad, including Singapore. Solutions for Intellectual Property Valuation Even though there is no particular institution for valuing IP assets in Indonesia, there are already institutions that can be further empowered to assess and even help with payments in the event of bad credit. Here are some examples that can be applied: Empowering National Collective Management Organization (LMKN) for Copyrights To facilitate the assessment of Copyright, especially music and songs, the Government and bank and non-bank financial institutions need to maximize the role and function of the LMKN, which has been established since 2014. By involving LMKN, bank and non-bank financial institutions can increasingly be confident in making music and songs as fiduciary guarantees. So far, LMKN has been tasked with collecting and distributing royalties for music and
AI: A Threat to Our Intellectual Property?
AI: A Threat to Our Intellectual Property? AI is a branch of computer science that deals with creating intelligent agents, which are systems that can reason, learn, and act autonomously. AI research has been highly successful in developing effective techniques for solving a wide range of problems, from self-driving cars, medical diagnosis, product recommendations, creating articles or songs based on voice collections, and processing very realistic images. The sophistication of AI also makes the operation of an application no longer need to be done manually. For example, not by carrying out a series of actions or commands via menu clicks but simply by writing down the command, the AI will carry out the operation automatically. However, this sophistication is open to controversy because the basis of AI’s capabilities comes from a collection of data taken without permission from what is already available on the internet. This is undoubtedly dangerous for Intellectual Property. In general, AI can harm Intellectual Property in the following 3 (three) ways: 1. AI Can Copy Your Work AI can be trained on a massive dataset of text, images, and code. This means that it can learn to reproduce your work, even if you have taken steps to protect it, such as copyrighting it. 2. AI Can Create Derivative Works AI can be used to create new works based on your original work. For example, an AI could be used to create a new painting based on your existing painting. 3. AI Can Use Your Work Without Attribution AI can be used to create new works that do not give you credit for your original work. This can happen if the AI is not properly trained or if the person using the AI does not understand the importance of attribution. Recognizing the potential for Intellectual Property infringement that AI-based applications can carry, several countries have taken steps to prevent further disputes. Some of these countries are Japan and the European Union. AI Copyright Protection for Japanese Artists Agency for Cultural Affairs Government of Japan) on May 30th, the statement “Regarding the relationship between AI and copyright” divides AI use into two stages: First Stage AI can be used for research and education purposes without requiring Copyright permission, but this has limitations if it exceeds recognized necessary limits or harms the Copyright holder’s interests. Second Stage If AI-generated works are published or sold as reproductions and infringe Copyright laws, the Copyright holder has the right to take legal action, potentially leading to criminal penalties. The document emphasizes strict penalties for Copyright Infringement through AI-generated works that are almost identical or clearly dependent on existing copyrighted works. Japan plans to raise awareness about these issues through seminars and collaborate with legal experts to proactively regulate commercial AI and protect the copyrighted works of Japanese artists and creators. This approach signifies Japan’s commitment to shield copyrighted creative work, data, and materials from commercial AI use, potentially impacting AI developers and users aiming to exploit stolen art and creative works for profit. The move marks a potential turning point in the fight against Copyright Infringement by AI, providing more vital protection for artists’ Intellectual Property. In the next article, we will discuss The Artificial Intelligence Act (AIA) the European Union’s draft for AI regulation related to the protection of Intellectual Property. If you need further information regarding the registration and protection of Intellectual Property in Indonesia and abroad, don’t hesitate to contact us via [email protected]. Sources: IBM PC Watch
Service Distruptions in Papua New Guinea
Dear friends and colleagues, Due to massive riots in parts of Papua New Guinea, we regret to inform you that we are experiencing disruptions for the time being. There will be some delays in providing you with the filing receipts and updates, but we will do our best to provide you with our responses as soon as possible. Should you require further information, please contact [email protected]
Enters Public Domain – Mickey Mouse Stars in 3 Horror Films?
Enters Public Domain – Mickey Mouse Stars in 3 Horror Films? Mainstream news channels are busy reporting that Mickey Mouse, The Walt Disney Company’s mascot, has entered the Public Domain as of January 1, 2024. As a result, many parties are immediately looking for their fortune by presenting this black mouse in various media. Uniquely, they all have a horror theme! 1. The Vanishing of S.S. Willie Straight released on January 2, 2024, on the Night Signal Entertainment YouTube channel, this is a short film less than 10 minutes long, which assumes that the film “Steamboat Willie” published in 1928, the first film to feature the character Mickey Mouse, is an actual event. Mickey, Minnie, and other animal characters are displayed in realistic form, covered in retro visuals, but with different names. The horror side is that their story ends tragically at the bottom of the river, contrasting with the cheerful original animated version. 2. Mickey’s Mouse Trap Also released on the same day is a 2-minute trailer for the film, which will be released in March 2024. This time, the story is about a serial killer who wears a Mickey Mouse-like mask and operates in an amusement park. 3. Steamboat Willie The third horror film to utilize Public Domain Mickey is the work of Director Steven LaMorte, who previously directed “The Mean One” (2022), a horror-comedy film inspired by “The Grinch” (2018). Steven admitted that filming of Steamboat Willie will take place this spring, and the concept remains a horror-comedy in the style of The Mean One. Steve confirmed to the media that his work would not violate the law because it would not use the name Mickey Mouse but Steamboat Willie. 4. Infestation: Origins Lastly, Mickey is in a PC game that up to four people can play. Here, you can play as a rat exterminator set in the 80s. But then, you are chased by a monster resembling Mickey Mouse! This game produced by Nightmare Forges can now be ordered on the Steam website, but the official release date has yet to be announced. What is Public Domain? A work or Creation, including animated films, can be protected by Copyright. Then there is the Copyright Law, which regulates the validity period of Economic Rights, which is a reference for whether we still have to obtain permission from the Creator or Copyright Holder for a Work. If the validity period has passed, the work has entered the Public Domain, and the public can use it freely without asking permission from the Creator. Why 95 Years Later? The Copyright Law in the United States stipulates that a work’s validity period is during the Creator’s life plus seventy years after the Creator dies. However, this regulation was only applied to all works published starting January 1, 1978. Meanwhile, Steamboat Willie was already present 50 years earlier. That’s why the film still has 95 years of Economic Rights and ends on December 31, 2023. Finally, Steamboat Willie only entered the Public Domain as of January 1, 2024. Now Everyone is Free to Use Mickey Mouse? Certainly not! Because the only thing in the Public Domain is Mickey Mouse in Steamboat Willie: the Black and White Mickey without gloves. What also needs to be remembered is that as a character, two types of Intellectual Property (KI) are attached to Mickey Mouse: Copyright and Trademark. If a copyright has an expiration validity period, then a trademark can be renewed every ten years. Mickey Mouse is a registered Trademark still owned by The Walt Disney Company. That’s why none of the works above that use Public Domain Mickey use the name “Mickey Mouse.” They consciously did not use this name to avoid legal disputes. They only dare to use “Mickey” or “Steamboat Willie,” common names not registered by anyone. So, even though Steamboat Willie has entered the Public Domain, that doesn’t mean you are free to produce and/or sell products that contain colored versions of images or words of Mickey Mouse. The point is that Public Domain doesn’t necessarily make your own Mickey Mouse. Mickey Mouse Still Owned by The Walt Disney Company Amid widespread news related to the Public Domain, the role of the media is needed to educate people so as not to create new problems. Because incomplete reporting can make many parties who are less aware of IP, including SMEs, subject to warning letters from Disney’s lawyers. They join in on the hype by producing products depicting colored versions of Mickey Mouse and containing the word without realizing the potential for Copyright and Trademark violations. Remember that Walt Disney is a big company in the IP business. They understand the ins and outs of Intellectual Property law. Apart from that, they also continue to update their IP-based characters and their source of income. That is the only way the validity period of Economic Rights in Copyright can continue to be extended. Steamboat Willy is only one of tens of thousands of works featuring IP-based characters, a source of income for the Walt Disney Company. Missing one will not affect its revenue, which since 2022 will be above USD 80 billion per year. From Walt Disney, we learn that creating original characters, if managed well, will be more profitable and provide long-term benefits. Instead of making imitation works that take advantage of the momentary hype. The public will also see it as a cheap work or a parody of no quality. Should you need further information about Public Domain, Copyright, or other Intellectual Property management, please do not hesitate to contact us via [email protected]. Sources: Coming Soon Variety
3 Top Ways to Accelerate Your Patent Application in Indonesia
The Directorate General of Intellectual Property of the Republic of Indonesia under the Ministry of Law and Human Rights of the Republic of Indonesia (hereinafter referred to as “DGIP”) has established various procedures under which the examination of a patent application may be accelerated. Under these procedures, DGIP will advance an application out of turn for faster examination if the applicant files the following special requests through the ASPEC program, Indonesia-Japan PPH program, or simply by providing the examiner in charge the granted corresponding claims from other Patent Offices, such as the USPTO, JPO, EPO, and others. We herewith summarize the options that may suit your need, depending on where you file your patent applications in other jurisdictions: 1. ASPEC The ASEAN Patent Examination Co-operation ( hereinafter referred to as “ASPEC”) was launched on 15 June 2009 and it is the first regional patent work-sharing program which involves nine participating ASEAN Member States (AMS) IP Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Viet Nam. The program aims to accelerate the patent examination process by encouraging each of the participating Patent Offices to share search and examination results to allow applicants in the participating countries to obtain corresponding patents faster and more efficiently. Since ASPEC aims to reduce duplication on the search and examination work done, it is hoped that the search and examination work done on a corresponding application can be used as a useful reference in producing high-quality examination reports. Hence, if you can obtain the examination result from other countries in the participating Patent Offices, then the examination results or reports can be used as the basis of examination acceleration, as long as the corresponding claims are the same. When requesting ASPEC, the patent applicant is required to submit an ASPEC Request Form in the second Patent Office. The ASPEC Request Form shall be accompanied by the following documents: 1. 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 2. 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/patentable. For 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: 1. a copy of the written opinion/international preliminary examination report (“WO/ISA, WO/IPEA or IPER”) established by an ASEAN International Searching Authority/International Preliminary Examining Authority (ASEAN ISA/IPEA) (“minimum documents”) relating to a corresponding application from the first IP Office; and 2. 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/patentable. Please be mindful that the request to utilize 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. 2. Japan-Indonesia Patent Prosecution Highway (Indonesia-Japan PPH) The Japan Patent Office (hereinafter referred to as the “JPO”) and the DGIP have initiated a Patent Prosecution Highway Program (hereinafter referred to as the “PPH”) back on June 1, 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. Please also be mindful that there will be an official fee of Rp 5.000.000,00 incurred for requesting the PPH acceleration program. When it comes to the requirements, the DGIP will require the applicant to provide the following documents in order to start the accelerate examination process: All formality documents required to file the application have been submitted and the DGIP will issue the notice of formality documents completion, which should also be provided by the applicant; Proof of payment to file a substantive examination request; The application should have passed the Publication of Period of 6 months; PPH Form (filled in); Corresponding claims which should be equivalent or less compared to the claims granted by the JPO; OEE ad OLE examination results; and OEE/OLE 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 will not be more than 7 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. 3. Providing Corresponding Registered Claims In case none of the options above apply to you, you mal also provide the examiners at the DGIP with the corresponding granted claims from other well-established Patent Offices, such as the USPTO, UKIP, EP, AUIPO, SIPO, JPO, etc. The provision of the corresponding granted claims from the aforementioned Patent Offices will make it easier for the examiners at the DGIP to expedite the examination. Please note that the documents should be provided with the equivalent English translation. For any questions related to patent application in Indonesia, please do not hesitate to contact us at [email protected].
Timor Leste’s Parliament Passed The Copyright Law
The most awaited update from Timor Leste is finally here – the Copyright Law was passed by the Parliament with 48 votes in favor, zero against, and one abstention. However, the Law may still be amended/corrected further before it is presented to the President of Timor Leste before its promulgation. The Copyright Law consists of 224 Articles which may still be subject to further correction.
Intellectual Property Protection in Indonesia
I FORMS OF INTELLECTUAL PROPERTY PROTECTION Intellectual property protection and enforcement in Indonesia have already existed in Indonesia since the Dutch Colonial Government era, where it enacted the Auteurswet Stb. No. 600 Year 1912 (Copyright), Ooctroi Wet No. 313 Year 1910 (Patent), and Reglement Industriele Eigendom No. 545 Year 1912 (Trademark). Even after the independence of Indonesia in 1945, these laws were still relevant and in force until 1961, where the government of the Republic of Indonesia enacted the Law No. 21 Year 1961 on Marks, Law No. 6 Year 1982 on Copyrights, and Law No. 6 Year 1989 on Patents. As time went by, Indonesia further ratified various international agreements concerning Intellectual Property Rights. Now, Indonesia is a party to the Trade-Related Aspects of Intellectual Property Rights (TRIPS), Madrid Protocol, Beijing Treaty on Audiovisual Performances, Berne Convention, Paris Convention, Patent Cooperation Treaty, and WIPO Copyright Treaty. Furthermore, Indonesia is also a party to several bilateral and/or regional agreements/treaties, such as the ASEAN Patent Examination Cooperation (ASPEC) and the Japan-Indonesia Patent Prosecution Highway (PPH). Currently, the grouping of Intellectual Property Rights in Indonesia is as under: Intellectual Property Protection Grouping in Indonesia Copyrights Industrial Rights Copyrights Related rights Trademarks and Geographical Indications Industrial Designs Patents – covers conventional patents and utility models/simple patents Plant Varieties Trade Secrets Integrated Circuit Layout Designs Whereas the legal basis of the protection of the above are as under: The Law No. 29 Year 2000 on Plant Varieties The Law No. 30 Year 2000 on Trade Secrets The Law No. 31 Year 2000 on Industrial Designs The Law No. 32 Year 2000 on Integrated Circuit Layout Designs The Law No. 28 Year 2014 on Copyrights The Law No. 13 Year 2016 on Patents The Law No. 20 Year 2016 on Trademarks and Geographical Indications The Law No. 11 Year 2020 on Job Creation (the Omnibus Law) i. Simple Patents/Utility Models Simple patents/utility models are governed by the Law No. 13 Year 2016 on Patents (the Patent Law) and the Law No. 11 Year 2020 on Job Creation (the Omnibus Law). Subject to registration, simple patents allow for obtaining exclusive rights if they can fulfil the following criteria: Novelty Development of known products or processes Possess practical uses Applicable commercially¹ The development of the above cover simple products, simple processes, or simple methods. Once registered, simple patents/utility models are valid for 10 years from the filing date. ii. Patents Unlike simple patents/utility models, conventional patents are not affected by the Omnibus Law and the Patent Law is the only law which governs the protection of conventional patents. Subject to registration, simple patents allow for obtaining exclusive rights if they can fulfil the following criteria: Novelty Inventive steps Applicable commercially. Conventional patents can cover both product and process patents. Once registered, conventional patents are valid for 20 years from the filing date. It is also worth mentioning that there are inventions that cannot be filed, such as aesthetical creations, schemes, business methods, computer programs per se, presentation of information, and discoveries that are considered as new uses for known products and/or new forms of existing compounds that do not result in significant increase in efficacy and there are differences in related chemical structures that have been known from the compounds.² iii. Trademarks Trademarks (as well as Geographical Indications) are regulated under the Law No. 20 Year 2016 on Marks and Geographical Indications (the Trademark Law). The basis of registration adopts the “first to file” approach and registered Trademarks are valid for 10 years – effective from the filing date. While no prior use requirement is essential for the purpose of application and registration, it is always advised to use the registered Trademarks to avoid non-use cancellation action filed by any ¹Previously, a simple patent/utility model only needs to be novel and can be applied commercially. The Omnibus Law changed the criteria in 2020. ²Article 4 of the Law No. 13 Year 2016 on Patents highlights several inventions that are not protectable in Indonesia. It is important to highlight that such limitations mean second medical use claims are no longer allowed. third parties. Furthermore, Indonesia adopts strict classification system on its e-filing platform. Any goods or services that do not exist in the system may not be filed – hence prior checking is advised. iv. Copyrights Copyrights are governed under the Law No. 28 Year 2014 on Copyrights (the Copyright Law). The Copyright protests various in the realms of art, science, and literature. The protection period starts from the first date of publication and depending on the nature of the protectable work. For instance, Softwares and other computer programs are protected for 50 years form the first publication date. Whereas songs and books are protected up to 70 years from the passing of the creator(s). II RECENT DEVELOPMENTS The Omnibus Law adjusted several provisions in both Patent and Trademark Laws in 2020. The changes focused on several aspects of patents and simple patents. The most significant change is the obligation to use or perform registered patents in Indonesia, otherwise they are prone to be invalidated or subject to compulsory licensing. This marked the end of the prior practice where it was feasible to postpone the use of registered patents by submitting written requests to the Indonesian Patent Office. The compulsory licensing can be requested if a registered patent has not been used or performed in Indonesia within 36 months. Furthermore, during COVID-19 Indonesia has pushed for the use of registered patents that deemed necessary to mitigate the virus. For instance, the President issued the Presidential Regulation No. 100 Year 2021 on Patent Use by the Government for Remdesivir. Under the regulation, the government may appoint a pharmaceutical industry to perform the patent if the nature of the use remains non-commercial. Furthermore, the patent holder will receive 1% from the nett sales of Remdesivir. Furthermore, the President also issued Presidential Regulation No. 101 Year 2021 on Patent Use by the Government for Favipiravir.
