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of Law and Human Rights No. 30 of 2019 on Procedures for the Granting of Compulsory Patent Licensing, which later has been replaced by the Regulation of the Minister of Law and Human Rights No. 14 Year 2021 on the Amendment to the Minister of Law and Human Rights No. 30 of 2019 on Procedures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].

FAQs: Scope and Ownership of Patents in Indonesia - AFFA IPR

Frequently Asked Questions about Scope and Ownership of Patents in Indonesia

PatentLeave a comment

Types of Protectable Inventions Q: Can a Patent be obtained to cover any type of invention, including software, business methods and medical procedures?   A: The Patent Law was enacted in 2016 and the government eventually issued the much-anticipated Patent examination guidelines in 2019. The current Law differs from its predecessor in that it does not recognise the patentability of various types of subject matter, such as business methods, computer programs per se, new uses for existing products and new forms of existing compounds.   Article 4(c)(3) of the Patent Law excludes the patentability of business methods. Such patentability can, however, be recognised if the computer-implemented business method has technical character through technical means, as further explained by Annex 3, section 2.4 of the technical guidelines.   Article 4(d) of the Patent Law also excludes the patentability of computer programs. However, computer-implemented inventions are patentable, as described in Annex 3, section 2.1 of the technical guidelines. A computer-implemented invention is an invention that is realised using a medium such as a computer: one or more features of the invention are fully or partly realised by a computer program. The distinguishing feature of a computer-implemented invention is a program feature. A computer program is considered an invention if it involves a technical means such as a computer, server, phone, censors or devices, and when run on a computer, it produces a further technical feature outside normal physical interactions between the computer program (software) and the computer. Computer-implemented inventions can be categorised as process inventions (which include methods) and product inventions (which include systems, devices, computer programs, computer-readable storage media, or a combination of these).   Furthermore, article 4(f)(1) of the Patent Law excludes the patentability of new uses of existing products. This also excludes patentability of second or further medical use, which was previously patentable under the former Patent Law (the previous Patent Law was Law No. 14 Year 2001 on Patents). The Swiss-type second medical use format (previously used as an alternative for method-of-treatment claims that were otherwise not patentable under the previous Patent law) is no longer patentable under the current legislation. Several exceptions are discussed in Annex 1, section 5.2 of the technical guidelines, such as new uses for existing products being patentable when the protection of claims is directed to compound X with the feature of disease Y as a limiting or distinguishing feature. In cases of this kind, the claim protection is intended to allow a pharmaceutical industry body to produce a drug X that is indicated to treat only disease Y. The disease feature must be completely novel and inventive, must not involve the same action mechanism as the prior art and must be supported by clinical trial data, in vivo testing or in vitro testing in the description. The dosing regimen, administration time or frequency, patient group and action mechanism of the drug cannot be the distinguishing feature in product-for-new-use claims. An example of a patentable claim would be ‘compound X for use in treating allergy’, where the prior art indicated compound X for use as a pesticide.   Article 4(f)(2) of the Patent Law excludes the patentability of new forms of existing compounds. Based on Annex 1, section 5.3 of the technical guidelines, new forms include chemical chirality such as enantiomers or diastereomers, crystal forms, solvate forms, hydrate forms, salts, prodrugs and metabolites of existing compounds. Patentability can be acknowledged for new forms that result in meaningful e;cacy improvement, which is further explained in Annex 1, section 2 of the technical guidelines. Meaningful efficacy improvement may include increased bioavailability, improvement in stability, increased solubility, decreased toxicity, improvement in safety, improvement in potency, broader activity spectrum, decreased production cost or decreased treatment period. The meaningful e;cacy improvement should be supported by experimental data.   Article 9 of the Patent Law also further excludes the patentability of methods of examination, treatment, medication or surgery applied to humans or animals. This is further explained in Annex 1, section 6 of the technical guidelines. In vitro, ex vivo and in silico methods of examination or diagnosis are still patentable under this law. Non-therapeutic methods of treatment, such as cosmetic treatments, diet or other non-health-related treatments, are still patentable. In vivo methods of examination, therapeutic methods of treatment, methods of surgery and methods of medication applied to humans or animals are not patentable.   Also excluded in Article 9 of the Patent Law are living organisms. An exception is made for microorganisms such as yeast, fungi, bacteria and actinomycetes. An exception also applies to human cells and plant cells. Embryos, seeds, parts of plants, tissues, organs, transgenic plants and genetically altered animals are not recognised as patentable. New strains should be described specifically and the difference from known strains from the same species should be described for the novelty to be acknowledged. A novel microorganism with a different taxonomy is acknowledged as inventive. In relation to living organisms, patentability for essential biological processes for producing plants or animals is also excluded. Non-biological processes or microbiological processes are, however, patentable. Non-essential biological processes are biological processes that need human intervention, such as plant tissue isolation methods. Microbiological processes are biological processes that include microorganisms, such as fermentation. Artijcial insemination, cross-pollination and other processes that can occur naturally without human intervention are not patentable.   Nucleotides such as DNA, cDNA, primers, genes, vectors or transformants are patentable. Patentable nucleotides are nucleotides in the form of isolated nucleotides. Genes can be characterised by a polynucleotide sequence, an amino acid sequence or a mutation code. Vectors can be characterised by DNA sequence, DNA restriction map, molecular weight and number of base pairs. Transformants can be characterised by one host cell and the introduced gene (sequence). The novelty of gene sequences is examined with basic local alignment search tool (BLAST) searches (used in bioinformatics) or National Center for Biotechnology information databases. Gene sequences are acknowledged as inventive when the se’uence activity is different, at least qualitatively.   Patent Ownership Q: Who owns…

Various Intellectual Properties in Football - AFFA IPR

Various Intellectual Properties in Football

Intellectual Property1 Comment

At the beginning of May 2024, the United Nations (UN) General Assembly declared May 25 as the World Football Day. This date was chosen to commemorate the 100th anniversary of the first football competition at the 1924 Olympics held in Paris, France. The UN hopes this day will always be celebrated as a day of world unity, which can unite cultural differences and socio-economic barriers.   As the most widely played sport, Football also involves a lot of Intellectual Property, with a turnover of up to trillions of dollars. This includes Trademarks, Patents, Industrial Designs, Copyrights, Trade Secrets, Domain Names, and License Agreements. Below, we describe some of the Intellectual Property we most often encounter in Football.   Trademark   Every competition and tournament certainly has a name. We know the FIFA World Cup, UEFA Champions League, English Premier League (EPL), and Asian Football Confederation (AFC). These names are synonymous with quality and entertaining games. Most importantly, they are all registered Trademarks that unauthorized parties cannot use arbitrarily. You cannot just produce and sell t-shirts with the UEFA Champions League logo without permission from the Union des Associations Européennes de Football.    Trademarks in football are not only related to competition; several names of top players have also been registered as Trademarks. For example, “CR7” belongs to Cristiano Ronaldo, “Leo Messi” belongs to Lionel Messi, and even Mbappe’s celebration pose. You might also want to read: Kylian Mbappé Has Trademarked His Iconic Goal Celebration – Why Is It Possible?   Patent An innovation that cannot be separated from modern football is the Video Assistant Referee (VAR). With this technology, referee decisions on the field can be more accurate, not controversial. VAR, whose patent is owned by Hawk-Eye Innovations (part of Sony), was first used at the 2018 FIFA World Cup in Russia. With VAR, the referee can quickly check whether a goal is legal, a player is caught offside, or cameras from many sides cover other violations.   As a Patent, FIFA pays royalties to Hawk-Eye Innovations for its use. Hawk-Eye also maximizes its income by marketing this technology to 90 countries worldwide. However, with a cost per season of around USD 6.2 million, not all leagues worldwide can afford to use it.   The Patent for football also includes the ball itself. In almost every World Cup event, the ball is presented with more sophisticated technology than before, which is expected to increase the accuracy of the players’ shots.   Industrial Design   Like the ball in football, the shoes players use may contain patent-protected innovations. But if not, the shoes and all the clothes we see are registered as Industrial Design.   Football jerseys or costumes are one of a football club or team’s biggest sources of income. For diehard fans, wearing a jersey when watching a match or even going to the mall is a matter of pride and proof of their support for their favorite team.   However, jerseys are also among the Intellectual Property most often pirated. As true fans, of course, we can choose to only buy the original because only then is the money we spend commensurate with the quality we get, and most importantly, the income will go to the club we support.   Copyright   League and match materials, images, promotions, or other content related to football broadcasts fall into the Copyright category. Each match is owned by a different owner, who also sells broadcast rights to TV stations in each region.   These Copyright holders even opened a bidding scheme to give the highest buyers the opportunity to obtain the Broadcasting Rights. Because it costs a lot of money to get the rights, it is understandable that the Broadcasting Rights holders are very protective of the material they own. They don’t let other parties broadcast it in the regions they already cover, or prosecution will be carried out.   Trade Secret   Playing strategies, including technical details of formations and other confidential information, can be categorized as Trade Secrets. These secrets give each team a competitive advantage by not revealing certain important information to the public or rival teams. All team members, including the technical and health trainers, are bound by a Non-Disclosure Agreement (NDA).   Domain Name   The Domain Name associated with each league and competition is very important in maintaining its online presence and marketing. Fifa.com, uefa.com, and the-afc.com have been registered to prevent cybersquatting and Trademark misuse. The fifa.com domain, for example, is available in various languages to make it easier to access and search for the latest information and to disseminate official information to all media and football fans throughout the world.   License Agreement   Licensing Agreements may include Trademark Licenses to produce and sell merchandise, mobile phone applications, video games, and more. Game developers who want to present a team with the appropriate club name or accurate appearance of the players have to pay significant royalties to FIFA.   Finally, in organizing football, we must be aware of and involve all related Intellectual Properties (IPs). In fact, IP is the financial generator in every activity. Therefore, don’t forget to involve IPs in every tournament you run and reap the benefits. Should you need further information regarding Licensing Agreements, Trademark registration, Patents, Industrial Designs, Copyrights, or other Intellectual Property, please do not hesitate to contact us at [email protected].

FAQs: Patent Enforcement Proceedings in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Enforcement Proceedings in Indonesia

Patent

Lawsuits and Courts Q: What legal or administrative proceedings are available for enforcing Patent rights against an infringer? Are there specialized courts in which a Patent infringement lawsuit can or must be brought?   A: In Indonesia, Patent owners can enforce their rights against infringers through various legal and administrative proceedings. Some of these proceedings include the following: Civil Lawsuit: Patent owners can file a civil lawsuit against infringers in a commercial court. The court can grant temporary injunctive relief, damages, and other remedies to the Patent owner. However, legal costs cannot be borne by the losing party. Criminal Complaint: Patent owners can file a criminal complaint against infringers with the civil investigator, the Indonesian Police Force, or both. The police will investigate the complaint and, if they find evidence of infringement, can prosecute the infringer. If convicted, the infringer can face imprisonment, a fine, or both.   The commercial courts are responsible for handling Intellectual Property cases in Indonesia, and they have been established in Jakarta, Makassar, Medan, Semarang, and Surabaya to specifically deal with commercial matters, such as bankruptcy and Intellectual Property cases, according to President Decree No. 97 of 1999. However, the judges who preside over Patent infringement matters do not necessarily have the required technical backgrounds. Hence, the presence of expert witnesses in Patent litigation cases is essential. In cases of infringement, the jurisdiction is determined by the defendant’s domicile. If the Patent holder or claimant is located outside Indonesia, the case must be filed with the Commercial Court of Central Jakarta, as specified in article 144 of the Patent Law.   Trial Format and Timing Q: What is the format of a Patent infringement trial?   A: Civil proceedings in Indonesia are conducted in writing and oral arguments. The judges will listen to the oral arguments of each party one at a time, and they rely heavily on the documentary evidence. Witnesses of fact can also provide oral evidence before the court. However, a witness statement or affidavit alone will not be sufficient since it is considered merely supplementary documentary evidence. In general, the procedure of the trial is as follows:   Attendance at the first hearing after the court summons both plaintiff and defendant; Attendance at the second hearing, when the defendant files its response to the plaintiff’s cancellation suit; Preparation of the plaintiff’s reply to the defendant’s response to the suit; Attendance at the third hearing to file the plaintiff’s reply; Attendance at the fourth hearing when the defendant files its response to the plaintiff’s reply; Preparation of the plaintiff’s evidence to be submitted to the court; Attendance at the fifth hearing to submit the plaintiff’s evidence and review the defendant’s evidence; Preparation and filing of the conclusion of the case based on documents and evidence filed with the court by both plaintiff and defendant; Attendance at the sixth hearing on the filing of the conclusion of the case;  Attendance at the seventh hearing to hear the judges’ decision; and Issuance of the court’s decision.   For Patent civil disputes, pursuant to article 145(4) of the Patent Law, the trial can be conducted privately if both parties make requests to the Court of Commerce for the trial to be private. This is to protect the secrecy of processes that would be easily manipulated or improved by a person knowledgeable in the relevant field.   Note that by law the court of commerce must issue its decision within 180 days of the date of filing of the civil suit in Patent matters. However, for criminal actions the process may take longer depending on the complexity of the case and the number of witnesses and evidence presented. However, it typically lasts between six to 18 months.   Unlike in various jurisdictions where there are specialised courts or judges that specialise in Intellectual Property matters, Indonesia does not have such a system. Bear in mind that the court of commerce discussed above also caters to non-IP matters if the dispute is of a commercial nature. Also, the judges do not have science backgrounds – hence the importance of involving expert witnesses during the suit. Expert witnesses may be called upon to provide their opinions on technical or scientific matters that are relevant to the case.   Indonesia has not adopted the jury system, and judges play an important and active role in court hearings. Furthermore, precedents are considered to be merely advisory in nature and they do not have binding legal force as in common law systems.   Proof Requirements Q: What are the burdens of proof for establishing infringement, invalidity and unenforceability of a Patent?   A: As per article 1865 of the Civil Code, the party making the claim is responsible for providing evidence to support it. Therefore, in a Patent infringement case, the claimant must prove that infringement has occurred by showing the evidence.   However, article 145 of the Patent Law allows the reversal of the burden of proof to the defendant in a Patent invalidation lawsuit involving a patented process if: The product resulting from the patented process is new; or The product is suspected of being produced using the patented process, but the Patent holder cannot determine the process used to make the product even after making enough efforts to find out.   A Patent owner holds exclusive rights to exploit their Patent and prevent others from using, making, importing, renting out, delivering, supplying for sale or rental, or conducting any other activity involving the patented product or process. However, in cases involving patented processes where the resulting product is new and the Patent holder cannot determine how the defendant produced it, the burden of proof can be reversed, as per article 145 of the Patent Law. In such cases, the court will require the defendant to prove that their product does not involve a patented process. The judge will also safeguard the defendant’s interests by potentially closing the proceedings to the public.   Standing to Sue Q: Who…

International IP Index 2024: Indonesia to catch up on IP Commercialization - AFFA IPR

International IP Index 2024: Indonesia to Catch Up on IP Commercialization

Intellectual Property1 Comment

Every year, the United States Chamber of Commerce releases the “International Intellectual Property Index,” which ranks countries worldwide based on their growth in Intellectual Property, commercialization of Intellectual Property assets, law enforcement, system efficiency, and membership and ratification of international treaties. This year, Indonesia is ranked 49th out of 55 countries, or 7th from the bottom. What caused it?   The International Intellectual Property (IP) Index is a comprehensive assessment of the intellectual property framework of countries worldwide. It indirectly shows a country’s policies in encouraging innovation, creativity, economic growth, and wider investment opportunities.   Intellectual Property Becomes an Important Decision for Investment   Intellectual Property as an asset must be recognized. Today’s large companies are at the forefront thanks to their Intellectual Property assets. Technology companies such as Tesla, Apple, Microsoft, and even Walt Disney became rich thanks to the Copyrights, Patents, Trademarks, Industrial Designs, and Trade Secrets they owned. Therefore, when a country cannot provide a climate conducive to protecting Intellectual Property (IP), it is considered to have failed to protect the wealth of its citizens and its business ecosystem. If this is the case, it makes sense that investment in the lowest-rank countries will be smaller than in the upper-rank countries.   The International IP Index published by the United States Chamber of Commerce was first published in 2012. At that time, it only described the performance of 11 countries: the United States, Australia, Brazil, Chile, China, India, England, Canada, Malaysia, Mexico, and Russia. The 12th edition, released in February 2024, has experienced an increase from the previous year, covering 53 countries. This year’s 55 countries have covered over 90% of the world economy’s Gross Domestic Product (GDP), so it is hoped to represent the condition of world IP.   From Southeast Asian countries, the IP Index maps the performance of Singapore, Malaysia, the Philippines, Brunei, Vietnam, Thailand, and Indonesia as samples. Unfortunately, Indonesia is indeed the lowest in Southeast Asia.   The following is the overall ranking of the 2024 International IP Index:   1 United States 95,48% 29 Peru 49,82% 2 United Kingdom 94,12% 30 Chile 49,72% 3 France 93,12% 31 Colombia 48,84% 4 Germany 92,46% 32 Saudi Arabia 48,42% 5 Sweden 92,12% 33 Brazil 46,52% 6 Japan 91,26% 34 United Arab Emirates 46,00% 7 The Netherlands 91,24% 35 Jordan 44,70%  8 Ireland 89,38% 36 Honduras 42,16% 9 Spainl 86,44% 37 Philippines 41,58%  10 Switzerland 85,98% 38 Brunei 41,08%  11 South Korea 84,94% 39 Ghana 40,88%  12 Singapore 84,92%  40 Vietnam 40,76% 13 Italy 83,90% 41 Ukraine 40,30%  14 Australia 80,70% 42 India 38,64% 15 Hungary 76,90% 43 Thailand 38,28%  16 Canada 76,22% 44 Kenya 37,88% 17 Israel 72,74% 45 South Africa 37,28%  18 Greece 71,42% 46 Argentina 37,00% 19 Poland 70,74% 47 Nigeria 36,34%  20 New Zealand 69,36% 48 Egypt 33,86% 21 Taiwan 67,34% 49 Indonesia 30,40% 22 Morocco 62,76% 50 Ecuador 29,58% 23 Mexico 59,98% 51 Kuwait 28,42% 24 China 57,86% 52 Pakistan 27,42% 25 Dominican Republic 55,30% 53 Algeria 26,36% 26 Costa Rika 55,04% 54 Russia 25,00% 27 Malaysia 53,44% 55 Venezuela 14,10% 28 Turkiye 51,04%   Why is Indonesia’s Ranking Low?   Indonesia’s performance in the index fell 0.02% from the previous year but remained at the same rank.   Indonesia’s Performance based on Indicators Source: 2024 International IP Index – U.S. Chamber of Commerce   From the graph above, it can be seen that the number of Patents owned by Indonesia still needs to be stronger, unable to keep up with the growth of Copyrights, Trademarks, and Industrial Designs. Among all the IPs used as indicators, only Copyright is closest to the Asian average performance.   For other indicators, Indonesia is quite good regarding system efficiency but very low in IP asset commercialization. It is the country with the lowest score for this indicator, recorded at only 4.17%. It is below Ecuador, Venezuela, Ghana, Kenya, Russia, and even Vietnam.   Indonesia’s ranking based on the Commercialization of IP Asset Indicator Source: 2024 International IP Index – U.S. Chamber of Commerce   The commercialization of IP Assets is an indicator that measures the presence of barriers and incentives for the commercialization and licensing of IP assets. In more detail, this indicator includes barriers to technology transfer, registration and disclosure requirements of licensing agreements, direct government intervention in setting licensing terms, and the existence of tax incentives for the creation and commercialization of IP assets.   In particular, the United States Chamber of Commerce assesses that Presidential Regulation of the Republic of Indonesia Number 77 of 2020 concerning Procedures for Implementing Patents by the Government has gone far beyond the stated goals and circumstances for the issuing of compulsory licenses under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, minimum standards for the regulation by national governments of different forms of IP as applied to nationals of other World Trade Organization (WTO) member nations. This presidential regulation is considered to hinder the transfer of technology on Patents, and Biopharmaceutical patentability standards are outside international norms.   However, Indonesia is generally at the bottom of the ranking because its commercialization foundation still needs to be stronger. Public awareness of IP still needs to improve; the knowledge of IP as an asset is minimal. There are still many people who do not appreciate IPs, not because they cannot afford to buy, but because the tendency to enjoy the IPs without paying still exists. Copyright growth is high, but the market hopes these works can be enjoyed for free. As a result, creators scream, and their productivity decreases. This also causes the innovation climate in Indonesia is not good. Because the public still needs to consider innovation to be something that can be commercialized, the growth of Patents from Indonesia is low. dapat dikomersialisasikan, pertumbuhan Paten dari Indonesia pun rendah. To change this mentality, more than education is needed; concrete steps from the government and private sectors are needed to give the highest appreciation to every existing IPs from within and outside the…

AI-A-Threat-to-Our-Intellectual-Property

AI: A Threat to Our Intellectual Property?

Patent, Intellectual Property, Copyright

AI: A Threat to Our Intellectual Property? AI is a branch of computer science that deals with creating intelligent agents, which are systems that can reason, learn, and act autonomously. AI research has been highly successful in developing effective techniques for solving a wide range of problems, from self-driving cars, medical diagnosis, product recommendations, creating articles or songs based on voice collections, and processing very realistic images.   The sophistication of AI also makes the operation of an application no longer need to be done manually. For example, not by carrying out a series of actions or commands via menu clicks but simply by writing down the command, the AI will carry out the operation automatically. However, this sophistication is open to controversy because the basis of AI’s capabilities comes from a collection of data taken without permission from what is already available on the internet. This is undoubtedly dangerous for Intellectual Property.   In general, AI can harm Intellectual Property in the following 3 (three) ways:   1. AI Can Copy Your Work AI can be trained on a massive dataset of text, images, and code. This means that it can learn to reproduce your work, even if you have taken steps to protect it, such as copyrighting it.   2. AI Can Create Derivative Works AI can be used to create new works based on your original work. For example, an AI could be used to create a new painting based on your existing painting.   3. AI Can Use Your Work Without Attribution AI can be used to create new works that do not give you credit for your original work. This can happen if the AI is not properly trained or if the person using the AI does not understand the importance of attribution.   Recognizing the potential for Intellectual Property infringement that AI-based applications can carry, several countries have taken steps to prevent further disputes. Some of these countries are Japan and the European Union.   AI Copyright Protection for Japanese Artists Agency for Cultural Affairs Government of Japan) on May 30th, the statement “Regarding the relationship between AI and copyright” divides AI use into two stages: First Stage AI can be used for research and education purposes without requiring Copyright permission, but this has limitations if it exceeds recognized necessary limits or harms the Copyright holder’s interests.  Second Stage If AI-generated works are published or sold as reproductions and infringe Copyright laws, the Copyright holder has the right to take legal action, potentially leading to criminal penalties.   The document emphasizes strict penalties for Copyright Infringement through AI-generated works that are almost identical or clearly dependent on existing copyrighted works. Japan plans to raise awareness about these issues through seminars and collaborate with legal experts to proactively regulate commercial AI and protect the copyrighted works of Japanese artists and creators.   This approach signifies Japan’s commitment to shield copyrighted creative work, data, and materials from commercial AI use, potentially impacting AI developers and users aiming to exploit stolen art and creative works for profit. The move marks a potential turning point in the fight against Copyright Infringement by AI, providing more vital protection for artists’ Intellectual Property.   In the next article, we will discuss The Artificial Intelligence Act (AIA) the European Union’s draft for AI regulation related to the protection of Intellectual Property.   If you need further information regarding the registration and protection of Intellectual Property in Indonesia and abroad, don’t hesitate to contact us via [email protected]. Sources: IBM PC Watch  

Patent-Prosecution-Highway-between-Indonesia-and-South-Korea-affa

Patent Prosecution Highway between Indonesia and South Korea

Patent, Intellectual Property

Patent Prosecution Highway between Indonesia and South Korea Starting this December, the Indonesian Patent Office (DGIP) and the Korean Intellectual Property Office (KIPO) began implementing the Patent Prosecution Highway (PPH) program. This program aims to ensure that South Korean companies entering Indonesia can obtain Patent Examinations more quickly, from 40 months to just 18.4 months.   This KIPO PPH collaboration with DGIP is the 10th Bilateral PPH after previously collaborating with IMPI (Mexico – July 1, 2012), IPOPHL (Philippines – May 1, 2015), TIPO (Taiwan – July 1, 2015), EAPO (Eurasia Patent Office – January 1, 2019), IPVN (Viet Nam – June 1, 2019), SAIP (Saudi Arabia – July 1, 2019), INPI (Brazil – April 1, 2020), and MyIPO (Malaysia – December 1, 2020 ), INPI (France – September 1, 2022). It is called Bilateral PPH because it is still a pilot program, before finally becoming Global PPH, as has been implemented in IP5 countries (China, Japan, USA, & EU) and other 24 countries, such as the UK, Singapore, Australia, and Russia.   The Basic Concept PPH  Where an Office of First Filing (OFF) has assessed the patentability of a Patent Application, an Office of Second Filing (OSF) offers the Applicant accelerated examination for the corresponding Application, provided that certain conditions are met. Those conditions include sufficient correspondence in the claims of the two applications and the search and examination results of an OFF being made available to an OSF.   Under the PPH program, the examination results of an OFF are used to expedite the application process in an OSF, thereby reducing the workload and improving patent quality. If deemed patentable by an OFF, the corresponding application is filed in advance for accelerated examination in an OSF.   This PPH program is divided into two categories: PPH using the National Work Products and PPH using the PCT International Products from the KIPO. The following are the procedures for each category:   1. PPH using the National Work Products from the KIPO Applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application filed with the DGIP and satisfies the following requirements under the DGIP-KIPO Patent Prosecution Highway (PPH) pilot program based on the KIPO application.   When filing a request for the PPH pilot program, an applicant must submit a request form to the DGIP.   The offices may terminate the PPH pilot program if the volume of participation exceeds a manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot program is terminated. The PPH pilot program will be in effect for three (3) years commencing on 8 December 2023 and will end on 8 November 2026. However, the program may be extended after a joint DGIP – KIPO review and assessment of the program implementation.   Requirements a. Both the DGIP application on which PPH is requested and the KIPO application(s) forming the basis of the PPH request shall have the same earliest date (whether a priority date or a filing date). For example, the DGIP application (including the PCT national phase application) may be either: an application that validly claims priority under the Paris Convention from the KIPO application(s) except for a complex priority. Example: A. Paris Route B. PCT Route C. PCT Route – Domestic Priority D. Paris Route – Complex Priority E. Paris Route – Divisional Application F. PCT ROUTE an application that provides the basis of a valid priority claim under the Paris Convention for the KIPO application(s) (including PCT national phase application(s)). Example: A. Paris Route   B. PCT Route a PCT national phase application where both the DGIP application and the KIPO application(s) are derived from a common PCT international application having no priority claim. Example: A. Direct PCT Route B. Direct PCT & Paris Route C. Direct PCT & PCT Route D. Direct PCT & PCT Route   b. Patent applications have been initiated in the Office of the KIPO or the DGIP. Patent applications belong to a patent family of which at least the earliest application was filed with the DGIP or the KIPO acting as a national office. The DGIP application which validly claims priority direct PCT applications is also eligible. Example: A. Paris Route BUT the First Application is from the Third Country B. PCT Route BUT the First Application is from the Third Country c. At least one corresponding application exists in the KIPO and has one or more claims that are determined to be patentable/allowable by the KIPO. The corresponding application(s) can be the application that forms the basis of the priority claim, an application derived from the KIPO application that forms the basis of the priority claim (e.g., a divisional application of the KIPO application or an application that claims domestic priority to the KIPO application, example:   or a KIPO national phase application of a PCT application.  Example: A. PCT Route B. Direct PCT Route C. Direct PCT & PCT Route D. Direct PCT & PCT Route Claims are “determined to be patentable/allowable” when the KIPO examiner identifies the claims as patentable/allowable in the latest office action, even if the application is not granted for patent. The office’s action includes: Decision to Grant a Patent Notification of Reasons for Refusal Decision of Refusal Appeal Decision For example, if the following routine expression is described in the “Notification of Reason for Refusal” of the KIPO, those claims are clearly identified to be patentable/allowable. “<Claims which has been found no reason for refusal> At present for an invention concerning Claim, no reason for refusal is found.”   d. All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as patentable/allowable in the KIPO. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the DGIP are of the same or similar scope as the claims in…