Patent Translation Submission Requirement in Indonesia - AFFA IPR

Patent Translation Submission Requirement in Indonesia

Patent, Intellectual Property

In accordance with the latest amendment of the Indonesian Patent Law, all foreign applicants who wish to file patent applications in Indonesia have to provide the Indonesian IP Office (DGIP) with the following:   ⁠If the description is written in foreign languages other than English, the description shall be complemented with the English and Indonesian translations; or If the description is written in English, it shall be complemented by an Indonesian translation.   This new policy is aimed to enable the examiners to examine the applications more thoroughly, since in the past some applicants from non-English speaking countries only provided the description, claims, and figures in their languages and then in Indonesia.    Please be mindful of the deadline to submit the above within 30 working days from the filing date. Should you require any assistance for patent translation in Indonesia, please do not hesitate to contact us at [email protected].

The Ultimate Guide to the Amendment of the Indonesian Patent Law - AFFA IPR

The Ultimate Guide to the Amendment of the Indonesian Patent Law

Patent, Intellectual Property6 Comments

The Indonesian IP world has just gotten more exciting after the enactment of the Law No. 65 Year 2024 on the Third Amendment to the Law No. 13 Year 2016 on Patents on 28 October 2024. The amendment is designed to be in line with the current technological practices around the world, while at the same time putting a special emphasis on the national interest. It also aims to make Indonesia’s Patent System more adaptable and responsive to contemporary needs.   Please note that as the result of this amendment, several official fees have increased as well. The actions that are subject to the increase include the acceleration of publication, substantive examination request for both invention patent and simple patent, and the appeal before the patent board of appeal/appeal commission. Whereas for recordals (data amendment,  assignment and license), certificate correction, filing and annuity fees remain the same.   The key theme of the amendment is divided into 28 parts below.  Please note that the amendment has the following conditions:   Patent applications that have been submitted and processed but are not yet completed will continue to be processed based on the provisions of patent legislation prior to the enactment of this Law. The protection period for simple patent applications submitted under Law No. 14 of 2001 on Patents and Law No. 13 of 2016 on Patents, as amended by Law No. 6 of 2023 on the Establishment of Government Regulation in Lieu of Law No. 2 of 2022 on Job Creation as Law, is calculated from the Filing Date. Patents granted under Law No. 14 of 2001 on Patents shall remain valid until the end of their protection period.   Should you need more information regarding the proposed amendment of Patent Law in Indonesia, please do not hesitate to contact us via [email protected].  

Unraveling the Global Complexity of IP Crime: Money Laundering and More! AFFA IPR

Unraveling the Global Complexity of IP Crime: Money Laundering and More!

Patent, Intellectual Property, Trademark, Copyright, Industrial Design1 Comment

Intellectual Property (IP) Crime negatively impacts the economy and consumer safety and has become structurally more complex, posing a worldwide threat to economic and social security.   According to the recently released report “Uncovering the Ecosystem of Intellectual Property Crime,” published this October by the European Union Agency for Law Enforcement Cooperation (Europol) and the European Union Intellectual Property Office (EUIPO), it is revealed that 6% of imported products entering the European Union are counterfeit, with a value exceeding 2 billion euros) annually. This figure represents only the seized products, mainly packaging materials, toys, cigarettes, and CDs/DVDs. Imagine if we could account for the undetected counterfeit goods distributed worldwide.   So, why is tackling IP crime so challenging? The report highlights that this form of crime is highly networked and involves corrupt officials, money laundering, and even tax officers. EUIPO labels these facilitators as IP Crime Enablers!   How significant is their role, and how do they perpetuate Intellectual Property crime? Here are the details.   Intellectual Property Crime – The Definition   In the document, “IP Crime” refers to illegal activities involving the theft, infringement, or unauthorized use of Intellectual Property (IP) rights, which include Copyrights, Industrial Designs, Trademarks, Patents, Geographical Indications, and Trade Secrets. The document categorizes IP crime primarily as:   Counterfeiting Manufacturing, importing, distributing, storing, or selling goods that bear the Trademark of a genuine brand without permission. Examples: Counterfeit Pharmaceuticals: Production and distribution of fake pharmaceutical products that can pose severe health risks to consumers. For instance, counterfeit Semaglutide injection pens falsely labeled as containing the active ingredient were found to contain other substances, leading to serious health incidents​. Counterfeit Automotive Parts: The production and distribution of fake automotive parts, like brake pads and wheel rims, infringe Trademarks and pose serious safety risks. Piracy Unauthorized copying, use, reproduction, and distribution of materials protected by IP rights, such as digital media, software, and entertainment. Example: Digital Piracy: Illicit streaming services that distribute copyrighted content (like movies and sports events) without authorization. In one case, a streaming service was operating across multiple countries, generating significant revenue through illegal broadcasts​.   The Mechanics of IP Crime   IP criminals exploit weaknesses in the global supply chain, legal loopholes, and infrastructure to operate with resilience and evade law enforcement efforts. This structured approach allows them to profit significantly while remaining difficult to prosecute due to their operations’ multi-jurisdictional and often hidden nature. The structured process criminal networks use to conduct IP crimes ranges from obtaining infringing items to laundering the proceeds. Here are the key phases:   Infringing IP Rights (Acquisition Phase) This is the initial stage where IP rights are intentionally violated. Criminals produce counterfeit goods by replicating brand logos, labels, or pirated content. This phase may involve either manufacturing counterfeit products directly or diverting legitimate products from the supply chain. Common sources for counterfeit goods include China, Hong Kong, and Türkiye. Transportation and Distribution Phase After acquiring the counterfeit items, networks transport them globally, often abusing the legal logistical and shipping sectors to move goods across borders. Criminals use sophisticated smuggling techniques, including splitting shipments and hiding counterfeit items within legitimate products to avoid detection. Marketing and Retail Phase Criminals use both online and offline methods to market and sell counterfeit products. Online marketplaces, social media platforms, and even the dark web provide anonymity and access to large audiences. Offline, counterfeit goods may also be sold through physical retail outlets or open markets. Dealing with Profits and Risks (Money-Laundering Phase) The final stage involves managing the profits from these illegal sales. Criminal networks employ money laundering techniques to disguise the origins of their profits. This includes investing in legal businesses, conducting physical cash transfers, or using complex digital financial systems to reintegrate funds into the economy.   Parties Also Involved in Intellectual Property Crimes In addition to the 4 (four) phases of crime above, Europol and EUIPO mapped the parties involved in IP crimes, making these crimes complex and challenging to eradicate.   Criminal Enablers These are illegal activities or crimes that help facilitate IP crime: Corruption: Bribery or manipulation within organizations to ease illegal processes. Forced Labour: Exploitation of labor, often under inhumane conditions, to produce counterfeit goods. Cybercrime: Digital crimes that support IP crime, such as phishing, malware, or data theft. Money Laundering: Concealing the profits from IP crime by converting illegal earnings into legitimate assets. Document Fraud: Creating fake documents to disguise the origin or legitimacy of counterfeit goods. Environmental Crime (Envicrime): Illegal activities that harm the environment, often associated with the improper disposal of waste from counterfeit production. Non-Criminal Enablers These are lawful activities or structures that criminals misuse to facilitate IP crime: Professional Expertise: Use of skills from professionals (e.g., lawyers, technicians) to support illegal IP activities. Use of Legal Business Structures (LBS): Legal businesses that provide a front for illegal IP activities, such as follows: Trading Companies or Factories These legitimate businesses can be set up or inserted into the supply chain to disguise the production or distribution of counterfeit goods. Factories or production sites can be used to produce counterfeit goods under the guise of legitimate products. Warehouses or Logistics Service Providers Legitimate warehouses or logistics companies can be used to store or transport counterfeit goods without raising suspicion. For example, counterfeit goods can be hidden among legitimate products in international shipments. Physical Retail Stores Appearing legitimate stores can be used to sell counterfeit goods to consumers without their knowledge. Counterfeit goods can be sold alongside legitimate products, making it difficult for consumers to tell the difference. Online Stores or Marketplace Platforms Many IP criminals use e-commerce websites or accounts on platforms like Amazon, eBay, or social media to sell counterfeit products. These platforms often give the impression of a legitimate business, making it easier for criminals to reach consumers at a wide range. Front or Shell Companies These companies are technically legitimate but serve only as a front for illegal activity. They are often used to launder money…

Key Proposed Amendments to the Indonesia's Patent Law - AFFA IPR

Key Proposed Amendments to the Indonesia’s Patent Law

Patent, Intellectual Property

The proposed amendments to Indonesia’s Patent Law, specifically the second revision of Law No. 13 of 2016 on Patents, are designed to modernize the country’s legal framework to better align with the evolving economic environment, international obligations, and the rapid pace of technological advancement. These updates aim to make Indonesia’s Patent System more adaptable and responsive to contemporary needs, while also harmonizing it with international standards.   The key focus of the proposed amendments is to align Indonesia’s Patent Regulations with global agreements, such as the TRIPS Agreement under the World Trade Organization (WTO). This alignment is crucial to ensuring that Indonesia’s Patent System meets international standards, thereby enhancing the protection of intellectual property within the country. The proposed amendments also seek to simplify the Patent Registration process, making it more efficient and accessible, which is expected to encourage greater innovation and research. By improving these processes, the government aims to boost Indonesia’s economic competitiveness and attract more investment in research and development.   The process of drafting these proposed amendments involved extensive consultation and collaboration. Internal discussions within the Ministry of Law and Human Rights (Kemenkumham), coupled with Focus Group Discussions (FGDs) with various stakeholders, played a significant role in shaping the draft. The Academic Manuscript and draft law underwent continuous refinement, ensuring the proposed changes were well-founded and thoroughly considered.   The proposed amendments introduce several critical updates to the Patent Law. One of the most significant changes is the redefinition of what constitutes an invention, particularly in light of new technologies like the Internet of Things (IoT), 5G, and Artificial Intelligence (AI). The novelty grace period has also been extended from six to twelve months, allowing inventors more time to secure their Patents after initial publication. Additionally, the proposed amendments clarify and strengthen the enforcement of Patent Rights, providing clearer guidelines on what constitutes infringement and how it can be addressed.   Other important changes include provisions that simplify the Patent Application process and allow for re-examinations, giving the applicants the much needed opportunity to correct or improve their applications post-submission. The proposed amendments also allow Patents to be used as fiduciary guarantees, thereby enhancing their value as financial instruments. Furthermore, the proposed law introduces measures to facilitate the transfer of technology, ensuring that Patents contribute to broader economic and technological growth in Indonesia.   We herewith summarize the key proposed amendments for your perusal:   Current Patent Law Proposed Amendments 1. DEFINITION OF INVENTION Article 1 (2):  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. Article 1 (2) to be amended as follows:  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 Article 4(c):  Inventions do not include: c. rules and methods in conducting activity of: involving mental activity; games; and business. Article 4(c) to be amended as follows:  Inventions do not include: c. methods in conducting activity of: involving mental activity; games; and Business. Reason: Rules = Methods Article 4(d):  Inventions do not include: d. rules and methods containing only computer program; Article 4(d)to be amended as follows:  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. Article 4(f):  Inventions do not include: f. discovery in the form of: new use of existing and/or known product; and/or new forms from existing compound which does not generate significantly enhanced efficacy and contains different relevant known chemical structures to compound. To be repealed 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. Article 9(c):  Inventions do not include: c. any theory and method in the field of science and mathematics; To be moved to Article 4(f) 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 Article 6(1):  The Invention is not deemed to have been published provided that within period of 6 (six) month prior to the Filing Date. Article 6(1) to be amended as follows:   The Invention is not deemed to have been published provided that within period of 12 (twelve) month prior…

Consequences of Late Payment Annuity Payment in Indonesia - AFFA IPR

Consequences of Late Patent Annuity Payment in Indonesia

Patent, Intellectual Property

Indonesian Patent Law No. 13 of 2016 outlines the process for maintaining your Patent throughout its 20-year term. This involves making timely annuity payments to the Indonesian Patent Office, hereafter called the Directorate General of Intellectual Property (DGIP). Here’s a breakdown of the key points:   First Annuity Payment This covers the period from your filing date up to one year after the grant date. It’s crucial to settle this payment within 6 months of receiving the grant notice. There’s  no grace period. Missing this deadline  invalidates your Patent, with no option for revival. No outstanding debt is created in this case.   Subsequent Annuity Payments These become due one month before the anniversary of your original filing date for each remaining year of the Patent’s lifespan.  For example, if you filed your Patent application on November 9th, all subsequent annuity payments would be due on October 9th of each year.   Late Payment Option If you anticipate missing a deadline, you can request an extension from the DGIP through a registered and reliable Patent Consultant. This request must be submitted within 7 working days before the original due date. An extension allows for a maximum 12-month grace period, but comes with a penalty – a 200% surcharge on the official fee for the missed annuity.   Consequences of Missing Payments   Failing to make timely annuity payments, including missing the initial deadline or neglecting to request an extension with a surcharge, will result in the DGIP  invalidating your Patent. This means you lose all legal protection for your invention in Indonesia.   Recommendations:   Carefully record your Patent’s filing date and grant date to ensure timely payments. Consider setting calendar reminders for upcoming annuity deadlines. Consult a registered Patent Consultant for assistance with managing these payments and navigating potential late payment scenarios.   By staying informed and adhering to the regulations, you can ensure your Patent remains valid and enforceable throughout its 20-year term in Indonesia.   Should you have any questions about Patent annuity payments in Indonesia, please do not hesitate to contact us at [email protected].   Source: Law No. 13 of 2016 on Patents (Patent Law)

FAQs: Patent Office Proceedings in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Office Proceedings in Indonesia

Patent, Intellectual Property

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…

FAQs: Patent Licensing in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Licensing in Indonesia

Patent, Intellectual Property

Voluntary Licensing Q: Are they any restrictions on the contractual terms by which a Patent Owner may license a Patent?   A: Several minimum requirements should be met. A licence agreement should contain: the date, month, year and place where the licence agreement was signed; name and address of the licensor and the licensee; the object of the licence agreement; provisions regarding the exclusivity or non-exclusivity of the licence, including sub-licensing; the term of the licence agreement; the area where the license agreement applies; and the party responsible for paying annual fees for the Patent (see Government Regulation No. 36 Year 2018 on Intellectual Property License Agreement Recordal). If either the licensor or licensee resides outside of Indonesia or are foreign nationals, the application for recording the licence agreement must be submitted through a registered IP consultant.   The licence agreement should be recorded before the Patent Office in order to have a binding legal effect to any third party.   Compulsory licences Q: Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?   A: Compulsory licences can be requested if a Registered Patent has not been used or worked in Indonesia within 36 months (three years) of registration. Other conditions that allow compulsory licensing include the implementation of a Registered Patent would be in the public interest, and it is not possible to obtain a licence to implement a Patent.   Note that there are previous steps that need to be shown to obtain a compulsory licence. The applicants must show evidence that they intend to use the Patent based on their capability, and that attempts were made to contact the patent holder to obtain a licence for a maximum of 12 months but a favourable response was not received. The Ministry should also be in agreement that the patent can be performed in Indonesia on an economically feasible scale and provide benefits to society.    See Regulation of the Minister of Law and Human Rights No. 30 of 2019 on Procedures for the Granting of Compulsory Patent Licensing, which later has been replaced by the Regulation of the Minister of Law and Human Rights No. 14 Year 2021 on the Amendment to the Minister of Law and Human Rights No. 30 of 2019 on Procedures for the Granting of Compulsory Patent Licensing. Should you need more information regarding Patent Licensing in Indonesia, please do not hesitate to contact us via [email protected].

FAQs: Patent Remedies in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Remedies in Indonesia

Patent, Intellectual Property

Monetary Remedies for Infringement Q: What monetary remedies are available against a Patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation, or be punitive? How are royalties calculated?   A: All laws about Intellectual Property assets allow the infringed to seek damages through the Court of Commerce. However, there is no known formula for determining the damages to be awarded. When seeking damages, the plaintiff considers the combination of material loss and immaterial loss. The latter often has a significantly higher amount. Still, we have not seen any landmark cases where the Court of Commerce awards the plaintiff with the total sought damages based on material and immaterial loss.   The compensation shall be given based on a final and binding decision of a civil or criminal court.   Injunctions Against Infringement Q: To what extent can a temporary injunction or a final injunction against future infringement be obtained? Is an injunction effective against the infringer’s suppliers or customers?   A: Regarding injunctions, the Patent Law allows the rights holder to request a provisional injunction to stop the entry and circulation of infringing items, secure or confine them, and avoid greater losses.   The injunction petition shall be filed before the Court of Commerce.   Banning Importation of Infringing Products Q: To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?   A: Banning the importation of infringing products is only practically possible if it is related to Trademark or Copyright infringement, which can be done by filing a Customs IP Recordal Application before the Indonesian Customs and Excise. Even then, it is only possible if the rights holder is an Indonesian individual or holds a share in an Indonesian company.   Attorneys’ Fees Q: Under what conditions can a successful litigant recover costs and attorneys’ fees?   A: Attorney’s fees shall be borne by the party that receives legal services from the entrusted attorney. Hence, seeking compensation from the other party for the legal fees already incurred by the claimant or plaintiff will not be possible.   Wilful Infringement Q: Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defense to a charge of wilful infringement?   A: There are no additional remedies available against deliberate or wilful infringement. The Patent Law does not specify the threshold level that constitutes wilful or intentional infringement. The Patent Law only states that without a patent holder’s permission, it is prohibited to make, use, sell, import, rent, deliver, or provide any patented product for sale or rent. Additionally, using a patented process to make a product or taking other actions, as mentioned above, is prohibited without the patent holder’s permission. In summary, this provision sets out the exclusive rights of a patent holder. It prohibits others from using, selling, or making the patented product or process without permission (see Article 160 of the Patent Law).   The Limits for Lawsuits Q: What is the time limit for seeking a remedy for Patent infringement?   A: The Patent Law does not regulate any specific time limit for filing a Patent infringement or compensation claim. As long as the Patent is still registered, the holder has the right to enforce it.   Patent Marking Q: Must a Patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the implications of false Patent marking?   A: The Patent Law does not regulate the obligation concerning Patent marking.   Should you need more information regarding Patent Remedies in Indonesia, please do not hesitate to contact us via [email protected].

IP Infringement Risks - Is Building Replicas of Classic Cars One of Them? AFFA IPR

IP Infringement Risks – Is Building Replicas of Classic Cars One of Them?

Patent, Intellectual Property, Trademark, Industrial Design

Owning a rare classic car, even at a high price, can be a source of pride. What’s unique is that several classic cars, such as the Porsche 911, Shelby Cobra 427, and Ford Mustang GT500, which are widely used by Indonesian celebrities, are local manufacturers, aka custom or modified results from different cars. How is this practice viewed from an Intellectual Property law perspective?   In the production of vehicles, or in this case specifically four-wheeled cars, there are at least three categories of Intellectual Property (IP) related to it, namely Trademarks, Industrial Designs, and Patents. Let’s describe the details one by one.   Car Name & Logo are the Exclusive Rights of the Trademark Owner   According to the Trademark Law, a Trademark is a sign in the form of an image, name, word, letters, numbers, color arrangement, or a combination of these elements, which has distinguishing power and is used in trading activities for goods or services. The names and logos of well-known cars such as Porche, Shelby Cobra, and Ford Mustang are the property of Porche AG, Carroll Hall Shelby Trust, and Ford Motor Company, respectively. These Trademarks have been registered and recognized as well-known marks and are protected in many countries, including Indonesia.   The trademark’s ownership and protection are valid for ten years and can be extended. Therefore, there is very little chance for you to own or commercialize this Trademark in Indonesia without establishing official cooperation with the Trademark owner or its official distributor in Indonesia.   Regarding the use of Trademarks without permission, Article 100, paragraphs (1) and (2) of the Trademark Law clearly states, “Every person who without right uses a Trademark which is completely the same as a registered Trademark belonging to another party for similar goods and/or services which produced and/or traded, shall be punished with imprisonment for a maximum of 5 years and/or a fine of a maximum of IDR 2 billion.”   Industrial Design – Aesthetic External Appearance Protection   Another IP that is closely related to cars is Industrial Design. According to its definition, Industrial Design is the creation of a form of configuration, or composition of lines or colors, or lines and colors, or a combination thereof in a three-dimensional or two-dimensional form which gives an aesthetic impression and can be realized in three-dimensional or two-dimensional patterns and can be used to produce a product, industrial commodity, or handicraft.   Industrial Design protects the appearance of the car’s external design, whether as a whole or just in part, such as the design of the front bumper, rear bumper, rim shape, or even the threads of the tires. Industrial design can also protect the appearance of the dashboard, steering wheel, chair shape, and even the design of the pedal brake clutch, as well as the gear shift lever. Several Industrial Designs registered by Porche AG Source: Word Intellectual Property Office (WIPO)   As an Intellectual Property, Industrial Designs have a protection period of 10 years and cannot be extended. So, legally, you can use an expired design without getting approval from the owner. However, suppose you use a design that is still protected. In that case, Article 54 of the Industrial Design Law states that a maximum prison sentence of four years and/or a maximum fine of IDR 300,000,000.00 (three hundred million rupiah) awaits you.   Patent & Cars Innovations   Patents are another category of IP that can be contained in a car. If Industrial Design concerns an aesthetic external appearance, then a Patent only covers certain parts that include innovations in the field of technology. For example, braking sensor systems, light automation, or airbag systems are all protected Patents, and anyone who wants to use them must pay royalties to the Patent owner.   And if there is a violation or use of a Patent without permission, Article 161 of the Patent Law states that each person can be punished with imprisonment for a maximum of four years and/or a fine of a maximum of IDR 1,000,000,000 (one billion rupiah). Meanwhile, criminal sanctions, as regulated in Article 162 of the Patent Law for violations of Simple Patents, are imprisonment for a maximum of 2 (two) years and/or a fine of a maximum of IDR 500,000,000 (five hundred million rupiah).   If we are talking about modified cars, most of the technology contained in the original car will not be available. Firstly, because it is technically incapable of adopting the technology; secondly, it does not obtain a license for the Patent. That’s where modified cars become technically unsafe products because of a technological imbalance in their manufacture.   Legal Solution: Original Car Modification   Although since 25 September 2023, the Minister of Transportation of the Republic of Indonesia has promulgated Ministerial Regulation Number PM-45 of 2023 concerning Vehicles Customization, this regulation only regulates technical requirements regarding how modifications can and cannot be carried out so that the car is roadworthy, and provides a sense of security to users, as well as the requirements for a modification workshop to apply for a certificate, without touching on the Intellectual Property side.   Article 1 of Ministerial Regulation No. PM-45 of 2023 clearly states that modification or customization of motorized vehicles includes changes to the axle distance, construction, and/or materials, as well as changing the engine brand and engine type of a motorized vehicle for one’s benefit or individual.   However, it should be noted that customization by order by a custom workshop for one’s own or individual interests, if there is an Intellectual Property violation in it, is still at risk of receiving a complaint from the owner of the Trademark, Industrial Design and/or Patent, and may be subject to criminal sanctions as stated in each article of Intellectual Property law applicable in Indonesia.   For this reason, several legal practices widely implemented worldwide focus on making their own modified cars. An example of this is done by Mitsuoka Motor, a Japanese modification company that changes Japanese-manufactured…

FAQs: Patent Defences in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Defences in Indonesia

Patent

Patent Invalidity Q: How and on what grounds can the validity of a Patent be challenged? Is there a special court or administrative tribunal in which to do this?   A: Article 130 of the Indonesian Patent Law regulates several grounds to invalidate a Patent. Most notably, an invalidation decision issued by the Court of Commerce or the decision by the Patent Board of Appeal.   According to article 132 of the Patent Law, there are several grounds that can be used to challenge the validity of a registered Patent at the Court of Commerce (It should infringe articles 3, 4 and 7 of the Patent Law – therefore the patent should have not been granted). On the obvious level, a Patent may be susceptible to invalidation if it is not considered novel, does not have inventive steps, or is not industrially applicable. For simple Patents, the plaintiff can simply challenge its novelty and industrial application. On more specific notes, a Patent registration can be challenged if it infringes article 4 (list of the things not considered as inventions) and article 9 (list of inventions that cannot be granted Patents) of the Patent Law.   Another practical invalidation method is to see if the plaintiff has worked its Patent in Indonesia pursuant to article 20 of the Patent Law, which states that a registered Patent must be worked or used in Indonesia to remain in force. Failure to work or use the patent in Indonesia may result in any third party fling for invalidation of the Patent at the court of commerce. However, to date, there has not been any challenge against the non-compliance of article 20 in Indonesia.   Also, a Patent registration may also be invalidated if it fails to disclose the source of genetic resources and/or traditional knowledge in the Patent description document (see article 26 of the Patent Law).   The burden of proof lies with the plaintiff.   Absolute Novelty Requirement Q: Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?   A: The Patent Law and the examination guideline issued by the Patent Office adopt the ’absolute novelty’ approach. It simply states that the Patents examined shall only be registered if they are deemed novel – which means there should be no similar or identical invention at the time of fling. However, the Patent Law allows the disclosure of an invention for education research and development purposes for up to six months before the filing date, and even 12 months in the event the disclosure was made due to a trade secret infringement.   Obviousness or Inventiveness Test Q: What is the legal standard for determining whether a Patent is ‘obvious’ or ‘inventive’ in view of the prior art?   A: The patent examination guideline issued by the Patent Office does not stipulate further about the ’obviousness or inventive test’. It simply states that the patents examined shall only be registered if they have inventive steps.   Patent Unenforceability Q: Are there any grounds on which an otherwise valid Patent can be deemed unenforceable owing to misconduct by the inventors or the Patent owner, or for some other reason?   A: The Patent Law does not regulate the unenforceability of a registered Patent owing to misconduct by the inventors or the Patent owner.   Prior User Defence Q: Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the Patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?   A: The Patent Law also provides an opportunity for a prior user of a disputed Patent to defend itself if that user can prove that the use of the disputed patent does not rely on a specification, claims and figures identical to those of the registered Patent. Nevertheless, the prior use must be recorded at the Patent Office to be officially recognised as such (see article 14 of the Patent Law). Should you need more information regarding Patent defences in Indonesia, please do not hesitate to contact us via [email protected].