IP – Page 19 – AFFA Intellectual Property Rights

Indonesian Discord Users Could Face 1 Billion Rupiah Fine for Streaming Anime Illegally

Intellectual PropertyBy AFFA IPR August 11, 2023

“Every person who unlawfully and/or without permission of the Author or Copyright holder distributes Works or their copies for Commercial Use shall be sentenced to imprisonment for up to 4 years and/or fine up to Rp 1,000,000,000.00!” As connoisseurs of the entertainment industry, whether in music, feature films, or animated series, we certainly understand that all forms of entertainment are works protected by Copyright. Article 3 of Law No. 28 of 2014 concerning Copyright states that Works mean any scientific, artistic, and literary works resulted from inspiration, ability, thought, imagination, dexterity, skill or expertise expressed in a tangible form. Furthermore, Article 4 of the Indonesian Copyright Law states that Copyright Holder means an Author as the Copyright owner, the party acquiring a lawful right from the Author, or other parties who acquire subsequent rights from the party such acquiring lawful rights. Suppose other parties wish to use the Work, they must obtain written permission from the Copyright Holder or Related Rights Owner in the form of a License Agreement, which may include details of the distribution of Royalty as compensation for using the Work. In other words, if there is no license agreement moreover and there is an attempt to take advantage of a work without permission, it can be said that there has been a Copyright Infringement. What is meant by taking advantage of this can be something other than a paid activity. For example, as has recently been done by several influencers who want to take advantage of the hype of anime “One Piece” to increase their followers on the Discord platform. They openly hold a viewing event in their group, also promoted on their social media accounts. Even though it is not paid, the watching together event can be considered Copyright Infringement. Because watching together activities via unauthorized streaming activities on an authorized platform, if carried out without permission, has violated the exclusive rights of the Author or Copyright Holder to obtain economic benefits for their work. One of them is the distribution of Works or their copies, as stipulated in Article 9 Paragraph (1) letter e of the Copyright Law, with the threat of punishment as stated in the first paragraph of this article. Apart from illegal distribution activities for unauthorized watching events, the Discord application itself has provided strict rules: “You may not use Discord to stream, upload, or share any content that infringes on the copyrights or other Intellectual Property rights of others. This includes, but is not limited to, streaming movies, TV shows, music, or other copyrighted content without the permission of the copyright holder.” The rules regarding Copyright on Discord can be accessed via https://discord.com/terms, and each violator can receive the following sanctions: Having your account suspended or terminated Being sued by the copyright holder for copyright infringement Having to pay damages to the copyright holder Suppose we specifically discuss the latest One Piece episodes that are currently being talked about. In that case, we can watch them for free and legally in Indonesia via the iQIYI and Bstation/Bilibili platforms, complete with Indonesian subtitles. However, if you want to watch it with a higher image resolution, the Bstation platform provides a Premium (paid) option. Remember, whether it’s free or paid, whatever shows we get on the platform, we have no right to distribute or broadcast them again without permission. As regulated in the following Bstation/Bilibili User Agreement: “Unless otherwise authorized by Bstation/Bilibili in writing, you shall not (and shall not allow, encourage or facilitate any third party to) modify, copy, adapt, maliciously spread, lease, lend, sell or translate the Services or any part thereof, or create derivative works related to them, and shall not obtain their source code through reverse engineering, decompilation, disassembly or other similar acts..” Furthermore, suppose it is proven that there has been a violation of the law and user agreement. In that case, Bstation has the right to suspend or stop providing part or all of the services to you unilaterally without notice and would like to ask you to compensate for any losses to the extent permitted by law. Thus, it can be concluded that the activity of watching together (via illegal, unauthorized streaming) on legal platforms whose sources come from legal platforms has become illegal if done without permission. Apart from exposing you to imprisonment for up to four years and/or a maximum fine of one billion Rupiah, you will also lose all access to the accounts you have worked so hard to build. This illegal watching together activity (on any platform) is no different from moviegoers who are still legally illiterate, and recording or distributing it live via Instagram is an act against the law. If you have committed a Copyright Infringement or need further consultation regarding organizing a legal watching together activity according to Copyright Law in Indonesia, please don’t hesitate to contact us via [email protected].

3 Proven Methods to Accelerate the Patent Examination Process in Indonesia

Patent, Intellectual PropertyBy AFFA IPR August 7, 2023

The Directorate General of Intellectual Property of the Republic of Indonesia under the Ministry of Law and Human Rights of the Republic of Indonesia (from now on 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 needs, depending on where you file your Patent applications in other jurisdictions: 1. ASEAN Patent Examination Co-operation (ASPEC) The ASPEC was launched on 15 June 2009. The first regional Patent work-sharing program involves nine participating ASEAN Member States (AMS) IP Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Vietnam. The program aims to accelerate the patent examination process by encouraging each 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 in 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 helpful reference in producing high-quality examination reports. Hence, if you can obtain the examination results from other countries in the participating Patent Offices, 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 to the second Patent Office. The following documents shall accompany the ASPEC Request Form: 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/patentable. or a PCT ASPEC request, the Patent applicant must 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/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 first IP Office to be allowable/patentable. Please remember that the request to utilize ASPEC can only be made 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 significant improvement in lead or pendency times compared to the processing time for non-ASPEC patent applications in Indonesia. 2. Indonesia-Japan Patent Prosecution Highway (Indonesia-Japan PPH) The Japan Patent Office (JPO) and the DGIP initiated a Patent Prosecution Highway Program (PPH) on June 1, 2013. Since then, the PPH has been chosen by many applicants who have previously filed their base applications in Japan to accelerate 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 note that an official fee of Rp 5,000,000.00 will be incurred for requesting the PPH acceleration program. When it comes to the requirements, the DGIP will require the applicant to provide the following documents to start the accelerated 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 and OLE examination results; and OEE/OLE in English and/or in the Indonesian language. Based on our experience, the time it takes from filing the PPH request until the issuance of the decision to grant will not be more than 7 to 12 months – a significant 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 from Other Patent Offices In case none of the options above apply to you, you may 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 to make it easier for the decision making process by the examiners. For any questions about Patent applications in Indonesia, please do not hesitate to contact us at [email protected].

Brushstrokes & Trademarks Indonesia’s Copyright Quirk

Intellectual Property, TrademarkBy AFFA IPR August 2, 2023

Article 65 of the Indonesian Copyright Law crafts a vibrant patchwork in the legal tapestry of intellectual property rights. It explicitly prohibits the registration of a work of art, specifically a painting, as a copyright when it is used as a logo or distinguishing mark for a trade of goods or services or represents a symbol for an organization, business entity, or legal entity. This law paints a clear boundary line in the diverse field of intellectual property rights, where copyrights and trademarks often play tug-of-war. However, an intriguing paradox has emerged in practice. Many parties try to draw double protection by registering the exact artistic representation as both a Trademark and Copyright – in other words, trying to overdo it by “double kill.” This practice takes advantage of a perceived grey area between the two distinct protections, aiming to arm the creator with an extra layer of legal armor. By doing so, they attempt to circumvent the spirit of Article 65, setting up a fascinating legal conundrum and an escalating tug-of-war between the copyright and trademark protection regimes in Indonesia. In the past, there have been some warnings by the Indonesian Copyright Office to unilaterally withdraw the recorded copyrights if they are found to have breached Article 65 of the Copyright Law. A solution to this discrepancy lies in tightening the enforcement by the Indonesian IP Office, ensuring that the lines dividing trademarks and copyrights remain as sharp and clear as the brushstrokes of a master artist. Thus, Article 65 of the Indonesian Copyright Law continues to challenge the art and business words, forcing them to think outside the frame without doubling down on the protection for the same object illegally. Should you have any questions about Copyright Recordation in Indonesia or abroad, please get in touch with us via [email protected].

AFFA IPR: Your Source for Indonesia’s Patent Protection Guide Available on Lexology

Patent, Intellectual PropertyBy AFFA IPR July 31, 2023

We are excited to announce that AFFA Intellectual Property Rights (IPR) has contributed to Lexology, showcasing our commitment to excellence and knowledge sharing. Check out our latest article, “Patent Protection Guide in Indonesia – Getting the Deal Through.” Lexology is a premier legal news and analysis website, delivering international legal updates, insights, and analysis. With over 450 articles published daily from over 800 top law firms and service providers worldwide, it’s a trusted source for legal professionals and decision-makers. At AFFA IPR, we recognize the significance of being associated with Lexology. As one of the leading sources of legal insights, the platform provides valuable, up-to-date information to a global audience. By sharing our expertise, we aim to contribute meaningfully to the legal discourse and offer valuable insights to our peers and clients. Stay updated with the latest developments and insights by following our page on Lexology. Engage with our content, leave comments, and share your thoughts as we foster an open dialogue and collaborative learning environment. For downloadable copies of our articles, reach out to [email protected]. Join us on Lexology as we continue to empower businesses with valuable Intellectual Property insights.

Boom or Bust: The Risk of Patenting a Nuclear Weapon in Indonesia

Patent, Intellectual PropertyBy AFFA IPR July 28, 2023

Oppenheimer, a Christopher Nolan film, has been screened in Indonesia since July 19, 2023. IP practitioners, especially patent observers, must take advantage of this film. Apart from being studded with stars, starting from Cillian Murphy, Emily Blunt, Matt Damon, and Kenneth Branagh to Robert Downey Jr., this film raises the ethical side of an invention that shook the world. As the title suggests, this film exposed Julius Robert Oppenheimer‘s life as the Scientific Director of the Manhattan Project, which developed the first atomic bombs in the United States. After the success of the bomb ending World War II, Oppenheimer became a vocal critic of nuclear weapons. He saw firsthand the destructive power of these weapons and came to believe that they posed a severe threat to humanity. He also thought the patent system was inappropriate for controlling nuclear weapons and was known for not pursuing patents for his inventions. But for that vision, he was ostracized by the US government. A new change came a few years later through the Atomic Energy Act of 1954, specifically Section 218. This act, also known as the Price-Anderson Act, was enacted in response to the development of nuclear energy and the need to regulate its use in the United States. Section 218 of the US Atomic Energy Act states that no patent may be granted for any invention or discovery that is useful solely in utilizing unique nuclear material or atomic energy in an atomic weapon. Any invention or discovery specifically intended for creating or enhancing atomic bombs or other nuclear weapons cannot be granted a patent under this law. The prohibition on patents for atomic weapons is part of the broader regulatory framework aimed at controlling and safeguarding nuclear technology and materials to prevent their misuse and proliferation. The law aims to ensure that nuclear technology is used for peaceful and controlled purposes, such as energy production and medical applications, rather than for weapons of mass destruction. The Indonesian Context In Indonesia, if a Patent application is related to nuclear (weapons), then it is related to the interests of state defense and security as regulated in Article 50 of Law Number 13 of 2016 on Patents: Article 50 (1) If an Invention relates to the interests of state defense and security, the Minister determines that the Application for the Invention is kept private after consulting with the agency administering government affairs in the state defense and security field. (2) The Minister shall let the Applicant or his Proxy know in writing about the determination of the unannounced Application as referred to in section (1). (3) Unannounced application documents consulted with government agencies, as referred to in section (1), are exempt from the provisions as referred to in Article 45 section (1). (4) Government agencies, as referred to in section (1), must maintain the confidentiality of the Invention and Application documents consulted. Thus, it can be concluded that the. Patents related to national security and defense (for example, nuclear weapons) can be protected. It is just that some provisions still prevent these applications from being published to the public in the publication stage for six months due to susceptible and sensitive information that should not be known by the public. In addition, if the Patents are related to weapons, then by law the government can only implement them based on national defense and security considerations. This is regulated in Article 109 of the Patent Law. The implementation itself must be non-commercial and for domestic protection needs only. Article 110 of the Patent Law itself further explains the types of inventions that are “vulnerable” to the use of patents by the government unilaterally, including: firearms; ammo; military explosives; interception; tapping; reconnaissance; encryption devices and cipher analysis devices; and/or other state defense and security processes and/or equipment. In Indonesia alone, there are around 139 patents related to nuclear technology that have been filed so far. However, this request is not directly related to nuclear weapons technology. Based on an accessible patent database, 51 applications were filed by applicants from Russia, 30 from the United States, and 23 from Indonesia. Should you have any questions about Patent Protection in Indonesia or abroad, please contact us at [email protected]. Source: LEMELSON-MIT BELFER CENTER Law No. 13 of 2016 on Patents (Patent Law)

The Whitest Paint: Innovation for a Hot Planet

Patent, Intellectual PropertyBy AFFA IPR July 24, 2023

Scientists at Purdue University, Indiana, United States have developed a new white paint that could revolutionize the cooling industry. The paint, which is made from a combination of titanium dioxide, barium sulfate, and silica, can reflect sunlight more effectively than any other white paint on the market. This means that it can help to keep buildings cooler in hot weather, reducing the need for air conditioning. The potential benefits of this new paint are enormous. In the United States alone, air conditioning accounts for about 15% of all electricity consumption. If this new paint could be widely adopted, it could help to reduce electricity demand and emissions significantly. In addition to the environmental benefits, the new paint could also have significant economic implications. The cooling industry is worth billions of dollars, and this new paint could open up new markets for businesses that manufacture and sell paint. The intellectual property implications of this new paint are also significant. Xiulin Ruan, a professor of mechanical engineering at Purdue University, and his students who developed the paint have filed for a new patent this July, and there will likely be a great deal of interest from other companies in licensing the technology. The development of this new white paint is a breakthrough in the fight against climate change because it could be used in a variety of applications, including roofing, siding, insulation, or even cars. Intellectual property stakeholders should be paying close attention to this technology. Even though the patent application for the new paint is still pending, the scientists who developed the paint are likely to be granted a patent, which would give them exclusive rights to the technology. The Culmination of Years of Research Back in 2020, Dr. Ruan and his students unveiled their creation: a type of white paint that can act as a reflector, bouncing 95 percent of the sun’s rays away from the Earth’s surface, up through the atmosphere, and into deep space. A few months later, they announced an even more potent formulation that increased sunlight reflection to 98 percent. The paint’s properties are almost superheroic. It can make surfaces as much as eight degrees Fahrenheit cooler than ambient air temperatures at midday, and up to 19 degrees cooler at night, reducing temperatures inside buildings and decreasing air-conditioning needs by as much as 40 percent. “It is cool to the touch, even under a blazing sun,” Dr. Ruan said. Unlike air-conditioners, the paint doesn’t need any energy to work, and it doesn’t warm the outside air. In 2021, Guinness declared it the whitest paint ever, and it’s since collected several awards. And in July 2023, they applied patent application for the lightweight version. If you have some innovations that need to be protected in Indonesia, don’t hesitate to contact us via [email protected]. Source: New York Times

Indonesia’s IP Odyssey: Tackling Counterfeiters on Indonesian E-Commerce Sites

Intellectual Property, TrademarkBy AFFA IPR July 17, 2023 2 Comments

According to the Priority Watch List (PWL) 2023 report, the United States Trade Representative (USTR) still places Indonesia, Argentina, Chile, India, Russia, China, and Venezuela on an investment blocklist because it is prone to piracy practices. In particular, the Notorious Markets for Counterfeiting and Piracy 2022 report, also released by USTR, listed various Indonesian sites on the watch list. Even though in October 2021, Indonesia’s five largest e-commerce companies, namely Tokopedia, Shopee, Lazada, Bukalapak, and Blibli, signed a law enforcement cooperation agreement in the field of Intellectual Property (IP) together with the Directorate General Intellectual Property, Criminal Investigation Agency, and the Directorate General of Customs and Excise. Their target then was clear: Indonesia was released from PWL 2022. In fact, since 2018, Indonesia is still on this list. Specifically, USTR stated that U.S. rights holders continue to face challenges in Indonesia concerning adequate and effective IP protection and enforcement. There continues to be widespread piracy and counterfeiting, and concerns regarding IP enforcement remain, including lack of enforcement against counterfeit goods, and the lack of deterrent-level penalties for IP infringement in physical markets and online. Furthermore, USTR provides lays out the current challenges faced by and improvements made by Indonesian e-commerce that are on the watch list. Challenges In general, right holders note a high volume of counterfeit products, with some openly labeled “replicas” of branded products. Several e-commerce sites have established notice and takedown processes and have made several improvements to their anti-counterfeiting systems, but right holders continue to push for the sites to invest more significant resources into developing proactive anti-counterfeiting protocols, as well as into increasing the speed of takedowns and transparency of takedown procedures. Right holders have also expressed frustration with several e-commerce sites’ “repeat infringer” policy, which states that sellers with more than three infringement reports submitted by the same brand are “eligible” to be taken down, instead of “will be” taken down. Right holders state that both the site’s “repeat infringer” policy and “major infringer” policy require brands to expend significant effort and resources to report infringement, and they urge the sites to instead use proactive measures like keyword filtering to allow for automated removal of counterfeit listings. Progresses Made by E-Commerce Sites in Indonesia Despite the challenges, the aforementioned sites have ramped up their efforts in battling against the counterfeits. In 2022, Shopee launched a pilot program for its new brand protection portal and, with a newly hired global brand protection director, increased its engagement with right holders. Whereas Tokopedia launched its new Intellectual Property portal to increase the ease and efficiency of submitting notices of infringement and tracking the progress of the resolution of the notices. Additionally, right holders have noted that Tokopedia has invested resources in a seller education campaign and has implemented some new technologies to increase proactive monitoring of product postings, that could detect and remove counterfeit listings before they are shown to users. Tokopedia also introduced the “penalty points” system and repeat offender system to counter the evergrowing counterfeit demands and markets. Reporting counterfeit goods helps to protect consumers and businesses from being harmed by these illegal products. It also helps to ensure that the e-commerce platforms are fair and safe for everyone to use. But as seen from the screenshot above, for us to report counterfeit products, there is already a limit that only the owner or their authorized representatives can report. In other words, complaints for listing takedown or removal of goods from e-commerce, from ordinary users who have nothing to do with the owner of the Trademark or Copyright cannot be continued. On the other hand, this policy prevents false reporting from disturbing users. Then if you are indeed the right holders or official representative, what documents are needed for reporting and requesting the removal of goods from e-commerce? Documents Required for Trademark Infringement Report Proof of Trademark ownership in the form of a Trademark; Certificate that has been registered and issued by the Ministry of Law and Human Rights of the Republic of Indonesia, or similar documents; Recommended Retail Price (RRP) from Trademark Owner; This document is one of the economic evidence tools that can help e-commerce determine whether the listing to be taken down violates the Trademark. If the price of the goods sold in the listing is far below the RRP, then there is an indication that the product is counterfeit or that the seller is practicing price dumping. Proof of your legal identity; and Power of attorney from the Trademark holder/owner in accordance with the document proof of Trademark ownership that you have attached (if you are not the owner of the Trademark but are the beneficiary of the power of attorney from the Trademark owner to make a report). Documents Required for Copyright Infringement Report Proof of Copyright ownership in the form of a Copyright Recordation that has been registered and issued by the Ministry of Law and Human Rights of the Republic of Indonesia, or similar documents; Proof of your legal identity; and Power of attorney from the Copyright holder/owner in accordance with the document proof of Copyright ownership that you have attached (if you are not the owner of the Copyright but are the beneficiary of the power of attorney from the Copyright owner to make a report). According to our experience, the average takedown listing request that we submit is accommodated by e-commerce within 2-3 weeks. If you need further assistance in the process of reporting counterfeit products or listing takedown in e-commerce sites in Indonesia, don’t hesitate to contact us via [email protected]. Sources: 2022 Review of Notorious Markets for Counterfeiting and Piracy Priority Watch List 2023 Tokopedia IP Report Directorate General Intellectual Property

How to Upcycle Without Violating Trademark Law

Intellectual PropertyBy AFFA IPR July 14, 2023

Upcycling is the process of transforming waste materials into new products of higher quality or value. This trend has been growing in popularity in recent years, and it is now estimated that resale could account for 20% of a luxury company’s revenue by 2030. According to Vogue magazine, upcycling was the biggest fashion trend of spring/summer 2021. As of June 2023, the hashtag #upcycle has over 6.2 million posts on Instagram alone. For brand and trademark owners, upcycling can raise legal concerns. For example, if a company uses a trademarked brand name on an upcycled product without the permission of the trademark owner, this could be considered Trademark Infringement. However, there are some exceptions to this rule. For example, in the United States, trademark owners cannot prevent the use of their trademarks on upcycled products if the use is “noncommercial and non-confusing.” This means that the use of the trademark cannot be used to sell the product or to imply that the product is endorsed by the trademark owner. In addition, trademark owners may be able to prevent the use of their trademarks on upcycled products if the use is likely to dilute the trademark. Dilution occurs when the use of a trademark weakens the distinctiveness or reputation of the trademark. Overall, the legal implications of upcycling for brand and trademark owners are complex. However, by understanding the law, trademark owners can protect their brands and trademarks while still supporting the upcycling movement. Should you have any questions about Trademark Infringement in Indonesia, please contact us at [email protected]. Source ipwatchdog.com

Procrastination’s Price: The Costly Consequence of Late Trademark Renewal in Indonesia

Intellectual PropertyBy AFFA IPR July 12, 2023

In accordance with the Law No. 20 Year 2016 on Trademark and Geographical Indications (the Trademark Law), a Trademark owner may renew its registered Trademark within 6 months before the due date – which is calculated from 10 years from the date of application. Before the enactment of the current Trademark Law, a registered Trademark would be automatically removed from the register if the owner forgot to renew it. The only option to “revive” the Trademark back then would be to refile a new application. However, as we all are aware, in the riveting realm of intellectual property law, time is not just money – it is the undisputed king, and deadlines are not mere suggestions, they are royal commands. While meeting renewal deadlines is of utmost importance, but what unfolds when a Trademark owner takes a memory misstep and lets the renewal lapse into the abyss of forgetfulness? Well, it is not the end of the world – the Trademark owner just has to pay more official fees – more or less double – to keep the Trademark alive. This is regulated by the Trademark Law where it allows a Trademark to still be renewed even after the deadline has passed. However, the grace period is only limited to 6 months after the deadline. Please note that it is technically impossible to renew the Trademark after the grace period has lapsed. Refiling the Trademark is the only feasible option. When is the earliest time a Trademark can be renewed? A registered Trademark can be renewed within 6 months before the deadline. Requirements Please note that in order to file a Trademark renewal, a Trademark owner should submit a Statement of Use of Mark. No active evidence of use will need to be submitted to the Trademark Office. All foreign Trademark owners should appoint a legal proxy to renew a registered Trademark. Therefore, a power of attorney will also need to be signed and submitted as well. Timeline Upon the submission of a renewal application, the Trademark Office will issue a renewal application receipt. Please also note that unlike in the past, the Trademark renewal notification/certificate is issued within a day. Should you have any questions about Trademark renewal in Indonesia, please contact us at [email protected].

Indonesia’s IP Odyssey: Unraveling the Ins and Outs of IP License Agreement Recordal

Intellectual PropertyBy AFFA IPR July 5, 2023 7 Comments

In Indonesia, it is a legal obligation to record all intellectual property (IP) license agreements under laws relating to trademarks, patents, designs, and copyrights to ensure they are legally enforceable and binding to all relevant third parties. By law, any IP license agreements that are not recorded will not have any legal effect against all relevant third parties. Nevertheless, the agreements will still only be binding between the contracting parties. In recent times, there have been increasing demands by IP owners to record IP license agreements, because such recorded license agreements are often requested by SNI (the Indonesian National Standardisation Body) and BPOM (Indonesian Food and Drugs Administration) to issue certain yet separate licenses. The Directorate General of Intellectual Property (DGIP) under the Ministry of Law and Human Rights (MOLHR) is in charge of receiving the recordal applications for the license agreements. The DGIP is empowered by Government Regulation No. 36 Year 2018 on the Recordation of Intellectual Property License Agreement (Government Regulation No. 36/2018) to carry on this function. While the practice of recording IP licensing agreements has actually been done for many years before the enactment of Government Regulation No. 36/2018, we noted that the DGIP only started issuing the notifications of the recordal of license agreements after 2018 for the recordals that were filed many years before that. Until then, many who had recorded them simply held on to the “recordal filing receipts” as an evidence of recordal. In general, Government Regulation 36/2018 regulates various requirements and procedures for recording intellectual property license agreements and specifies the following matters: License agreements Recordation procedures Recordation excerpts Changes and revocations As a general rule of thumb, the IP holder (“Licensor”) is authorized to grant a license to another party (“Licensee”) who wishes to use the Licensor’s exclusive rights. Such a license can only be granted based on an agreement made in writing in Indonesian – hence the agreements signed in English or other languages must be sworn translated into Bahasa Indonesia. In addition, the license agreement must stipulate the following points: Place & Date of the letter signing Details of the parties including the address Object of trademark license (trademark/patent/copyright/industrial design registration number) Terms of use (exclusive, non-exclusive, sub-licensable, or not) Duration of the agreement Territory For patents, the agreement shall stipulate the party tasked with the responsibility of paying the annuity. However, be mindful that the term of the agreement shall not be longer than the protection period of the licensed IP. The license agreement must not entertain any stipulations that might inflict harm upon Indonesia’s economic vitality or the nation’s strategic interests. Moreover, it must not cultivate an environment for unjust business competition, nor should it stand in contradiction to the existing legislative framework in Indonesia. It is equally critical that such an agreement does not breach the bounds of religious adherence, ethical conduct, or public order. Recordation Procedure A submission of a Recordation Request must be formally made to the Minister written in the Indonesian language, accompanied by the following documents: A copy of the license agreement which has been notarized by a Notary Public in the relevant country where the parties reside; Official excerpts from the intellectual property certificate; A power of attorney letter (if applied for by proxy). It is noteworthy that the use of a proxy is mandatory if the Licensor and Licensee are foreigners or reside outside Indonesia; Copy of the identity card/passports of the signatories; Deed of Incorporation of the parties bound to the agreement; and Proof of payment of the official fees, which will be paid by the proxy. According to Government Regulation No. 36/2018, the submitted request will be reviewed within five business days following the receipt of a fully completed application. The applicant will be informed if the application is incomplete, and they will be given a period of 30 business days from the date of notification to perfect it. However, thanks to DGIP’s innovation – POP Merek (POP Trademark), most of the IP license agreement recordal notifications are issued within a day. Amendment and Revocation A recorded IP license agreement can be amended and revoked. When it comes to amendments, they are limited to the name of the Licensor and/or Licensee or the subject of the license agreement, and other information (such as the address of the related parties, provisions related to the exclusivity of the license, and so forth). A recorded IP license agreement can only be revoked under the following conditions: The agreement between the Licensor and the Licensee; The resolution of a court proceeding; or Additional elements, in accordance with Ministerial Regulation No. 8 of the year 2016 on the Procedure for Registering Conditions and Methods for the Application of Recording Intellectual Property Licensing Agreements. Should you require further information and assistance regarding IP license agreement recordal in Indonesia, please contact us at [email protected]; [email protected]; or [email protected].

Tag Archives: IP