[URGENT UPDATE] Key Changes to the Indonesian Patent and Trademark Laws after the Enactment of the Law No. 11 Year 2020 on Job Creations

Event, Intellectual Property

The Law No. 11 Year 2020 on Job Creations (hereinafter referred to as “the Omnibus Law”) was finally signed by the President of the Republic of Indonesia, Joko Widodo, on November 2, 2020. The Omnibus Law is 1,187 pages long and it consists of numerous revisions to the existing laws that are aimed to spur job creations in Indonesia. While it puts a stronger emphasis on the Employment Law, the Omnibus Law – after several amendments – also impacted key provisions in the Law No. 13 Year 2016 on Patents (hereinafter referred to as “the Patent Law”) and the Law No. 20 Year 2016 on Marks and Geographical Indications (hereinafter referred to as “the Trademark Law”). We herewith list the changes and revisions for your perusal: Changes to the Patent Law Simple Patent Article 3 of the Patent law has been revised to the following: (1) A Patent is granted for a novel invention, which has inventive steps and can be applied industrially. (2) Whereas a Simple Patent for a novel invention, which is the development of a product or a process that already exists and can be applied industrially. (3) The development of an existing product or process can cover: Simple products: Simple processes; or Simple methods. In addition, Article 122 of the Patent Law also regulates the following requirements regarding the Substantive Examination Request for a Simple Patent: (1) A Simple Patent is only granted for one Invention. (2) The Request for the Substantive Examination for a Simple Patent shall be done at the same time as the time of the filing of the application with official fees. (3) If the Substantive Examination Request is not filed at the time of filing of the Simple Patent application or if the Official Fees are not paid, then the Simple Patent application is considered withdrawn. Whereas Article 123 of the Patent Law which regulates the publication period is amended as under: (1) The publication of a Simple Patent shall be done no later than 14 days from the date of filing of the Simple Patent Application. (2) The publication as referred to (1) shall be done for 14 working days. (3) The Substantive Examination is conducted after the publication has ended. (4) Except for the provisions in Article 48 Para (3) and (4), an opposition against a Simple Patent application is used as a determining factor during the Substantive Examination Stage. Article 124 of the Patent Law is also amended so that the Substantive Examination period is cut by half: (1) The Minister shall issue a decision to grant/reject a Simple Patent no later than 6 months from the date of the application date of the Simple Patent. (2) A Simple Patent which is granted by the Minister shall be recorded and published via electronic or non-electronic media. (3) The Minister issues a Simple Patent certificate to the Patent Owner as the proof of ownership. Use Requirements in Indonesia remain in place despite the initial plan and proposal to scrap it altogether The initial plan to scrap Article 20 of the Patent Law was scrapped at the very last minute. Nevertheless, the Use Requirements have become “more accommodating” since it lists importation and licensing as the definition of use. Article 20 has been reworded as under: (1) A Patent shall be used/performed in Indonesia. (2) The patent performance as referred to in (1) is as under: The use/performance of a Patented product by manufacturing, importing, or licensing the patented product; The use/performance of a Patented process by manufacturing, importing, or licensing the product which has been resulted from a patented process; or The use/performance of a Patented method, system, and use by manufacturing, importing or licensing a product which has been resulted from a method, system, and use which has been patented. Changes to the Compulsory-Licensing Article 82 which regulates Compulsory-Licensing has been reworded as under: (1) A Compulsory-License is a License to use/perform a Patent which has been granted by a Ministerial Decree or based on a request under the following conditions: A Patent has not been used/performed in Indonesia as per Article 20 for 36 months after it was granted; A Patent which has been used/performed by a Patent Holder or by the Licensee in a way that is detrimental to the public interest or A Patent resulting from the development of the existing Patents granted earlier could not be implemented without using the other party’s Patents which are still under protection. (2) The Compulsory-License request will be subject to the payment of official fees. Changes to the Trademark Law Some provisions in the Trademark Law have also been revised in the Omnibus Law. The most notable changes are as under: Functional 3D Mark is no longer registrable in Indonesia According to the revised Article 20 of the Trademark Law, a Mark cannot be registered if: It is contrary to the state ideology, prevailing laws, and regulations, religious values, decency, or public order: It is the same, related to, or simply states the goods and/or services covered in the application; It contains a misleading element concerning the origin, quality, type, size, option, the purpose of use of the goods and/or services covered in the application or if the application is a name of a plant variety that is registered for the same goods and/or services; It contains inaccurate information regarding the quality, benefit, or efficacy of the goods and/or services that are produced; It lacks distinguishing elements; It is a common name and/or public symbol; and/or It contains a shape that is functional. Shorter Substantive Examination period Article 23 of the Trademark Law circumvents the Substantive Examination period from 150 working days to 30 days if there is no opposition or 90 days if there is an opposition. The amended provision is as under: (1) A Substantive Examination is an examination that is conducted by an Examiner for every Trademark Application. (2) All oppositions and/or objections are considered in the Substantive Examination. (3) If there is no opposition filed…

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Indonesia ranks 85th in the Global Innovation Index 2020 – remains unmoved for 3 years in a row

Event, Intellectual Property

The 13th edition of the Global Innovation Index (GII) has just been released by Cornell University, INSEAD, and the World Intellectual Property Organization (WIPO). The GII looks at the state of innovation among the 131 economies around the world and the factors that contribute to the ranks, such as institutional environment, business sophistication, knowledge & technology outputs, creative outputs, market sophistication, infrastructure, and human capital & research. Indonesia has high scores in four out of the seven GII pillars: Infrastructure, market sophistication, Knowledge & technology outputs and creative outputs, which are above average for the lower middle-income group. Conversely, Indonesia scores below average for its income group in three pillars: Institutions, Human capital & research, and business sophistication. Indonesia, which is still ranked 85th this year – remain unmoved for 3 years in a row, falls under the Lower middle-income group and its performance is still in line with the level of development, albeit it falls short compared to its lower middle income-group neighbors in ASEAN, such as Viet Nam (42nd), and the Philippines (50th). Nevertheless, Indonesia is ranked in 9th within the lower middle-income economies, just above Kenya (86th), and it sits in the14th place among 17 economies in South East Asia, East Asia, and Oceania. Unfortunately, the statistics suggest that compared to other economies in the regions, Indonesia performs below average. The report reports the strengths and weaknesses of Indonesia as the contributing factors to the innovation index when it comes to innovations. The notable strengths, among many, include domestic market scale, trade & competition, ease of resolving insolvency, QS university ranking, and gross capital information. Whereas the contributing weaknesses, among many, include the regulatory environment, government funding, PISA scales in reading, math & science, global R&D companies, knowledge workers, scientific & technical articles/bn, tertiary inbound mobility, and FDI net outflows. Will Indonesia move up the rank next year given the current situation? #innovation #inovasi #trademark #patent #copyright #industrialdesign #Indonesia

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Episode 2 – What to prepare and what to expect when it comes to a Trademark Application in Indonesia

Intellectual Property

Filing a Trademark in Indonesia can be tricky, but it also comes down to the preparation and research you do beforehand and manage your expectations. Please make sure you watch our guide on the following link before you file your Trademark in Indonesia:   #trademarklaw #Merek #Trademark #KekayaanIntelektual #KI #IP #DGIP #bisnisindonesia #intellectualproperty #indonesia

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3 Top Ways to Accelerate Your Patent Application Process in Indonesia

Intellectual Property

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 equivalent English translation. For any questions related to patent application in Indonesia, please do not hesitate to contact us at [email protected].

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AFFA IP EDUCATION SERIES ON YOUTUBE

Intellectual Property

AFFA Intellectual Property Rights – Indonesia & Timor Leste presents: AFFA IP Eduction: Episode 1 – Hal-hal yang harus diperhatikan sebelum mengajukan permohonan pendaftaran merek di Indonesia. Please see our video on the following link on Youtube – https://www.youtube.com/watch?v=pNjgpfWKYc8 We will be uploading more contents about Intellectual Property in Indonesia. Please subscribe and stay tuned!  #trademarklaw #Merek #Trademark #KekayaanIntelektual #KI #IP

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The Definition of Patent in Indonesia

Intellectual Property

The Indonesian patent scene has undergone various changes throughout the years but the very basic concept still remains – that it is an immaterial right that deserves to be protected by law. On the surface level, the Indonesian Civil Code guarantees the protection of all goods and rights which belong to a person. Specifically, Article 499 of the Indonesian Civil Code states that “the law interprets as assets all goods and rights which can be the subject of property.” As the lex specialis goes, Indonesia currently adopts Law No. 13 Year 2016 on Patents (hereinafter is referred to as “the Indonesian Patent Law“) which is the pillar of patent protection in Indonesia. Article 1 point 1 of the Indonesian Patent Law stipulates that a patent is an exclusive right granted by the state to an inventor for the invention in the field of technology for a certain time period to exclusively use the invention or to grant the rights to other parties to use it. By law, there are 2 kinds of patents in Indonesia, namely Patents and Simple Patents – both of them can cover products and processes. A Patent is valid for 20 years from the date of filing in Indonesia. To be registered in Indonesia, it has to meet 3 prerequisites, namely: *Novelty *Inventive Steps *Industrial Application It may take approximately 4 to 5 years from filing to registration, depending on the subject matter of the patent application. Whereas a simple patent is valid for 10 years from the date of filing in Indonesia. To be registered in Indonesia, it only has to meet 2 prerequisites, namely: *Novelty *Industrial Application It may take approximately 2 to 3 years from filing to registration, depending on the subject matter of the patent application. If you have any questions about patent in Indonesia, please contact us at [email protected].

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Further Closure at the Indonesian IP Office until June 4, 2020 and Online Indonesian Patent Annuity Payment

Event, Intellectual Property

The Indonesian Intellectual Property Office will remain closed until June 4, 2020 due to the spread of the Coronavirus which has not been fully contained. Nevertheless, all online-based services are working and the closure only affects the services that are normally done face to face. The online services have also been extended for Indonesian patent annuity payment which (finally) can be done online! This proves to be a much-anticipated and appreciated gesture by the Directorate General of Intellectual Property of the Republic of Indonesia since the payment of patent annuity was not possible since the closure started in March. If you have any questions, please do not hesitate to contact us at [email protected].

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The Indonesian IP Office will remain closed until May 29, 2020

Event, Intellectual Property

The Indonesian Intellectual Property Office will remain closed until May 29, 2020 due to the spread of the Coronavirus which has not been fully contained. As previously predicted by top health officials in the country, we are expecting to see the peak of the spread by the end of May or June. Therefore, it is very likely that the closure of the Indonesian Intellectual Property Office will be extended. Nevertheless, all online-based services are working and the closure only affects the services that are normally done face to face.   If you have any questions, please do not hesitate to contact us at [email protected].

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Intellectual Property Protection in Indonesia During the Covid-19 Pandemic

Intellectual Property

    Since the start of the Covid-19 Pandemic, the Indonesian Intellectual Property Office has taken appropriate measure to curb the spread of the virus by ceasing all face to face services since March 23, 2020 until May 13, 2020. However, there is a high likelihood that the face to face services will remain postponed after May 13, 2020 since there is little evidence which suggests that the spread of the virus has slowed down in Indonesia. However, worry not – since 2017 most of the Intellectual Property related services (i.e. new filings, renewals, filing oppositions, responding to office actions, etc) can be filed online. The availability of the online services have, in a way, prepped us for the pandemic since there are only minor disruptions that we have experienced in the past 2 months (i.e. not being able to pay the patent annual maintenance fees is the only problem that we have for now). Therefore, it is business as usual! Apart from the general prosecution, the Indonesian Intellectual Property Office has also made it possible for the right holders to report Intellectual Property related infringements online, which can be done at pengaduan.dgip.go.id. The right holders can also check the latest status of the actions that have been taken by the Indonesian Intellectual Property Office Once the complaint has been lodged. Should you have any questions, please let us know at [email protected].

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Remembering Achmad Fatchy, the founder of AFFA Intellectual Property Rights

Event, Intellectual Property

Dear friends and colleagues, It is with great sadness that AFFA Intellectual Property Rights announces the passing of Achmad Fatchy, our founder, leader, father, after a brief illness, on Tuesday, April 7, 2020, at the age of 55 years. Pak Fatchy – as we called him – will be lovingly remembered by his team at the firm as well as by his families, colleagues, clients, and by his close friends in the IP world. Mr. Fatchy established AFFA Intellectual Property Rights in 1999 and he has then successfully developed the firm to its current state. In the last 21 years of his sacrifices for the firm, AFFA Intellectual Property Rights has experienced tremendous growth under his leadership. His calm yet professional demeanor, impeccable business acumen, as well as his kindness to everyone he met will be missed forever. He has left us with a legacy to carry on, and we will make sure to keep providing you, our valued friends and clients, with the best IP services because he would have not wanted it any other way. Rest in peace, Pak Fatchy, We will miss you, always.

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