Expediting Your Patent Application in Indonesia: The DGIP–JPO Patent Prosecution Highway

Patent, Intellectual Property

In the race for innovation, speed is everything. According to statistical data published by the Japan Patent Office (JPO), among the ASEAN6 Patent Offices (the six ASEAN countries with the highest Patent rankings), the Directorate General of Intellectual Property of Indonesia (DGIP) is recorded as the office with the shortest total pendency—meaning the duration from filing to grant—at only around 3.4 years. In contrast, other ASEAN Patent Offices generally remain in the range of 4.5 to 7 years. This figure aligns with Indonesia’s ongoing efforts to accelerate examination, including through the utilization of the Patent Prosecution Highway (PPH) scheme.   What is even more interesting is that, as the only office implementing PPH with all ASEAN6 Patent Offices, the JPO serves as a strategic gateway for Applicants seeking protection across the ASEAN region. The JPO reports the following statistics: The time to obtain a patent grant in Japan through the fast-track route can be achieved in approximately 4.9 months; and Patent grants in ASEAN Offices through the PPH scheme can be achieved in around 1 year, with grant rates exceeding 90%.     In addition to illustrating examination performance, JPO’s data also shows that the PPH route with DGIP as the Office of Later Examination (OLE) has been actively utilized by international Applicants. Since the program’s initiation in 2013, the number of PPH requests designating DGIP as the OLE has consistently remained in the hundreds per year, reaching a peak in 2019. Although the numbers later declined, they have re-emerged significantly in 2024. This indicates that the DGIP–JPO PPH scheme is not merely a procedural option on paper, but a pathway genuinely used by global businesses when entering the Indonesian and ASEAN markets.   Given this background and the fact that DGIP records the fastest total pendency among the ASEAN6, Applicants can structure the following two-step strategy: Designate Japan as the primary examination hub, either as the first filing country or as the International Searching Authority (ISA/JP) under the Patent Cooperation Treaty (PCT); and Utilize the PPH scheme for accelerated access to ASEAN, with Indonesia as a key destination given its comparatively shorter time to grant.   This combination creates a highly compelling narrative for businesses and technology owners. The JPO provides fast and high-quality examination at the “upstream” stage, while DGIP offers one of the fastest routes to grant in the “downstream” ASEAN region. For companies that view ASEAN as a growth market, this combination can significantly reduce risks and shorten timelines in the patent application process.   Number of PPH requests with DGIP as the Office of Later Examination (OLE) per PPH application year. Source: Japan Patent Office (JPO), “PPH Statistics.”   How Does the DGIP–JPO PPH Actually Work?   In simple terms, the PPH is a cooperative framework between Patent Offices that allows one Office to rely on the search and examination results produced by another. In essence, patent examination under the PPH can be accelerated at DGIP by leveraging the examination work products issued by the JPO.   Institutionally, the DGIP–JPO PPH scheme did not emerge overnight. The trial phase of the DGIP–JPO PPH program was first launched in 2013 as an effort to test the use of JPO examination results to expedite the process in Indonesia. As utilization increased and positive responses were received from Applicants, the cooperation was extended multiple times. Under the latest agreement, the DGIP–JPO PPH program has been renewed once again and will continue until 2026. These periodic extensions indicate that the PPH is considered successful by both Offices—reducing examination burdens on one side while providing a stable acceleration route for Applicants on the other.   According to DGIP’s official guidelines, the DGIP–JPO PPH scheme is divided into two categories:   1. PPH Based on JPO National Work Products Under this scheme, a PPH request is filed for a patent application that has already entered DGIP, by referring to its corresponding application at the JPO. The main requirements for filing a PPH request under this scheme include: The application at DGIP and the corresponding application at the JPO that forms the basis of the PPH must share the same earliest date (whether a priority date or filing date), either through the Paris Route or the PCT Route. The earliest application in the patent family must have been filed at either DGIP or the JPO as a national office. At least one JPO application must have claims that have been determined to be patentable/allowable, as reflected in a Decision to Grant, Notification of Reasons for Refusal, Decision of Refusal, or Appeal Decision. All claims submitted for examination under the PPH at DGIP must “sufficiently correspond” to the claims considered patentable/allowable at the JPO—that is, the claim scope must be identical, similar, or narrower through the addition of limiting features supported by the specification. A PPH request can only be made if DGIP has not yet begun substantive examination of the application.   2. PCT-PPH Based on PCT International Work Products (WO/ISA, WO/IPEA, IPER) In this scheme, in addition to national work products, the guidelines also provide for PCT-PPH. Here, the basis for acceleration is no longer the JPO’s national office actions but the JPO’s international work products in its capacity as: WO/ISA – Written Opinion of the International Searching Authority WO/IPEA – Written Opinion of the International Preliminary Examining Authority IPER – International Preliminary Examination Report   The main requirements include: The latest International Work Product must indicate that at least one claim is patentable/allowable with respect to novelty, inventive step, and industrial applicability. The DGIP application and the corresponding PCT international application must share the same earliest date (whether through national phase entry, priority basis, or as a derivative/divisional). All claims filed at DGIP must “sufficiently correspond” to the claims considered patentable/allowable in the relevant International Work Product.   PPH MOTTAINAI Beyond the two main pathways above, the JPO has also introduced the concept of PPH MOTTAINAI. In simple terms, “mottainai” in Japanese conveys a sense of regret when something…

[Important Update] Japan Adopts Letter of Consent for Trademark Registration - AFFA IPR

[Important Update] Japan Adopts Letter of Consent for Trademark Registration

Trademark

The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” to overcome conflicts with earlier Trademark registrations.   However, the Japan Patent Office (JPO) recently announced that evidence must be provided in addition to a consent letter obtained from the earlier registrant when applying Article 4(4) of the Japan Trademark Law. This evidence must convince the JPO examiner that there is no likelihood of confusion between earlier and junior marks, not only at present but also in the future.   Article 4(4) of the Japan Trademark Law, which is newly introduced in April, states:   Trademark applications will not be rejected under Article 4(1)(xi) as long as the applicant obtains consent from the owner of the cited mark and it is unlikely to cause confusion with the cited owner or its exclusive or non-exclusive licensee when used on goods or services designated under the application.   Trademark Examination Guidelines for Article 4(4) Provides:   The requirement of being ‘unlikely to cause confusion’ must be satisfied at the time of the JPO examiner’s decision and in the future. To satisfy the requirement, the following factors will be assessed: Similarity between marks Recognition of mark Uniqueness of mark Significance of mark (House mark or product brand) Possibility of business expansion Relatedness of goods and service Consumers Trade practices involving actual use of mark Where both marks are identical and used on same goods and service, the examiner will find “likely to cause confusion” in principle. Applicant must provide evidence to demonstrate the unlikelihood of confusion based on the actual use of both marks. For example: Different color, font or combination between literal element and figurative element of respective mark Different position to place the mark or to accompany with other distinctive mark Difference in speific purpose or price of respective goods Different sales channel Different seasons to use the mark Different territory to use the mark Mutual covenants to take necessary actions if confusion is likely to occur between the marks An agreement between the parties to keep the present use or configuration of both marks in the future will be required to strengthen the unlikelihood of confusion in the future.   It is important to note that “Letter of Consent” is not available to Trademark applications filed with the JPO before April 1, 2024, even if they are pending examination.   Similarly, international registrations registered at the World Intellectual Property Organization (WIPO) or subsequently designated to Japan before April 1, 2024, can’t use the consent. Should you need further information regarding Trademark registration in Japan or other countries, please email us at [email protected].