Steps to Take When a Patent Application is Deemed Withdrawn in Indonesia - AFFA IPR

Steps to Take When a Patent Application is Deemed Withdrawn in Indonesia

Patent, Intellectual Property1 Comment

Document completeness and compliance with regulations are crucial in the Patent registration process. If there are deficiencies in the documents or if certain requirements are not met, the Patent application may be considered withdrawn by the Directorate General of Intellectual Property (DGIP) in Indonesia. So, what steps should the applicant take next?   When a Patent application is considered withdrawn, the applicant will receive a “Notification of Patent Deemed Withdrawn” from DGIP, meaning that the application will not proceed further.   However, if the applicant wishes to continue the examination process, the applicant must immediately submit a “Request for Further Examination.” This request must be filed within a maximum of six (6) months from the issuance date of the Notification of Considered Withdrawal.    Additionally, the applicant must pay an additional fee of 50% of the application fee to submit the Request for Further Examination. After submission, the applicant will need to wait for a response from DGIP’s Formality Section, which will review the application and decide whether the Patent examination process can proceed.   Therefore, if you face challenges in completing the required documents or drafting a proper Patent application, it is highly recommended to consult with a trusted Patent Consultant to navigate this issue effectively. Otherwise, the applicant risks losing Patent rights and suffering financial losses, as the initial registration fees that have been paid will not be refunded (forfeited).   You might also want to read: 5 Stages of Patent Registration Process in Indonesia Should you need more information about Patent applications in Indonesia or globally, feel free to contact us at [email protected].

6 Key Principles of Patent Protection in Indonesia - AFFA IPR

6 Key Principles of Patent Protection in Indonesia

Intellectual Property, Patent1 Comment

Through Law Number 65 of 2024 on Patents, the Indonesian Government has revised the definition of “invention” to mean an inventor’s idea manifested in solving a specific problem in the field of technology, which can take the form of a product or process, or the improvement and development of an existing product or process.   Meanwhile, a Patent is an exclusive right granted by the state to an inventor for an invention that meets the criteria of patentability, namely novelty (new), inventive step, and industrial applicability. For Utility Models, the requirements include at least novelty, incremental improvements to existing products or processes, practical utility, and industrial applicability.   If you are an inventor, a Patent will protect your invention by granting you legal rights, enabling you to enjoy the economic benefits of your invention.   However, six key principles form the foundation of Patent protection and are crucial for safeguarding technological innovations and inventions. These principles are:   First-to-File: This principle states that the first party to file a Patent application is granted Patent rights, not the first to invent or use it. Therefore, Patent owners must file their applications as soon as possible. Patent Information: Every Patent application must include complete information about the invention, such as descriptions, claims, and drawings illustrating how the invention works. This information will be published once the application is approved, allowing the public to refer to it and encouraging further technological advancements. Protection Is Granted Only by Application: Patents are only granted if the inventor or an authorized party submits an official application. Without an application, Patent rights will not be awarded, even if the invention meets patentability requirements. Obligation to Pay Annual Fees: After a Patent is granted, the Patent holder must pay annual fees to maintain the Patent rights. Failure to pay these fees can result in the cancellation of the Patent, making the invention part of the public domain. Universal Substantive Examination: Every Patent application undergoes a substantive examination to ensure the invention meets the requirements of novelty, inventive step, and industrial applicability. This process ensures that only truly innovative inventions are granted Patent protection. Territorial Protection: Patent rights are territorial, meaning protection is only valid in the country or region where the Patent is registered and approved. To secure protection in other countries, the inventor must file separate Patent applications in those countries.   By understanding these six principles, innovators and industry players can take the necessary steps to legally protect their inventions and maximize their economic potential.   You might also want to read: Indonesia’s Patent Law Amendment: Excluded Inventions and Change in Novelty Grace Period Should you need more information about Patent protection in Indonesia or globally, feel free to contact us at [email protected].

Indonesia’s Patent Law Amendment: Excluded Inventions and Change in Novelty Grace Period - AFFA IPR

Indonesia’s Patent Law Amendment: Excluded Inventions and Change in Novelty Grace Period

Patent, Intellectual Property2 Comments

On October 28, 2024, Indonesia introduced significant updates to its Patent System through Law No. 65 Year 2024, amending Law No. 13 Year 2016 on Patents. These changes aim to align Indonesia’s Patent System with global technological advancements while strongly emphasizing national interests. For international stakeholders and Patent applicants, this article highlights the crucial changes related to what does not constitute an invention and the updated novelty grace period.   What Is Not Included as an Invention According to Article 4 of the Patent Law, inventions do not include the following: Aesthetical creations; Schemes; Methods to conduct: – Mental activities; – Games: and – Businesses: Computer programs, except for the inventions that are implemented using computers; Presentations of information; and Theories and methods in the field of science and mathematics.    Previously, discoveries in the form of new use of existing and/or known product; and/or new forms from existing compound that do not generate significantly enhanced efficacy and contain different relevant known chemical structures to the compound, did not constitute inventions. The removal of this provision is intended to accommodate developments related to new uses for existing and/or known products that are still considered Inventions and can be granted a Patent. The Patent for such new use does not prevent the public from producing the product as long as they do not mention or indicate the patented use. Examples: Dapagliflozin: The first-use patent for diabetes has expired and has entered the public domain, so the public can use Dapagliflozin with the indication for diabetes without infringing the second-use patent. The second-use patent, which is for kidney disease, is still under patent protection. Snakehead Fish Extract: The first-use patent for cancer has expired and has entered the public domain, allowing the public to use Snakehead Fish Extract for cancer without infringing the second-use patent. The second-use patent, which is for COVID-19, is still under patent protection.   Furthermore, the term “computer program” refers to a computer program that only contains a program without technical characteristics, technical effects, or problem-solving capabilities. Problem-solving that involves a computer program, which in its implementation uses a computer, computer network, or other programmable equipment, can be considered an Invention, hereafter referred to as a computer-implemented Invention.   Examples of problem-solving involving a computer program that can be considered an Invention are: a computer program used for navigation based on the global positioning system (GPS) in motor vehicles; a computer program used to maintain a safe distance from the vehicle in front by automatically adjusting the vehicle’s speed; and a computer program used to control the electrical connectivity of household equipment.   Extended Novelty Grace Period One of the most notable updates is the extension of the novelty grace period. Previously, an invention disclosed within six months before the filing date under specific conditions would not lose its novelty. The amendment extends this period to 12 months, providing greater flexibility for inventors to publicly showcase their work without risking Patent eligibility.   Key Conditions for Grace Period: Exhibition Disclosure: Public display at recognized exhibitions in Indonesia or abroad. Experimental Use: Research and development purposes in Indonesia or abroad. Scientific Disclosure: Presentations during scientific sessions, such as thesis defenses or research discussions. Confidentiality Breaches: Unauthorized disclosure by third parties.   This extension demonstrates Indonesia’s commitment to fostering innovation by allowing inventors more time to refine and file their applications, encouraging global and domestic filings. For a deeper dive into the broader implications of the revised Patent Law, read our comprehensive guide: The Ultimate Guide to the Amendment of the Indonesian Patent Law. Should you need to know how this new definition impacts your business or invention, feel free to contact us at [email protected].

FAQs: The Legal Framework of Trademark Protection in Indonesia - AFFA IPR

Frequently Asked Questions about the Legal Framework of Trademark Protection in Indonesia

Trademark, Intellectual Property

Prevailing Laws and Regulations Q: What is the primary legislation governing Trademarks in Indonesia?   A: Law No. 20 2016 on Marks and Geographical Indications (the Trademark Law) is the primary law concerning Trademark in Indonesia. Several provisions in the Trademark Law were then amended under the Law No. 11 Yeat 2020 in Job Creation, and then further amended under the Law No. 6 Year 2023 on the Enactment of a Replacement Government Regulation in Lieu of the Law No. 2 Year 2022 on Job Creation as Law.   Moreover, there are several by-laws that regulate more specific matters, such as, but not limited to:   Government Regulation No. 28 2019 concerning Types and Tariffs of Non-Tax State Revenues Applicable to the Ministry of Law and Human Rights. This regulation sets the official fees for various actions that can be filed before the Directorate General of Intellectual Property (DGIP) under the Ministry of Law and Human Rights of the Republic of Indonesia. Government Regulation No. 22 2018 concerning International Registration of Marks Under the Protocols Relevant to the Madrid Agreement Concerning the International Registration of Marks. This regulation covers all aspects of international registrations filed to or from Indonesia. Government Regulation No. 90 2019 concerning The Trademark Appeal Commission, which was established on 29 August 1995 concerning Procedures for Application, Examination and Settlement of Appeals at the Mark Appeal Commission. The Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 12 2021 concerning Amendments to the Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 67 of 2016 concerning Trademark Registration Decree of the Director General of Intellectual Property in the Field of Trademarks. The ministerial regulation prescribes, among others, the requirements of registration, classes of goods and services, rectification of issued certificates and recordals.   International Law Q: Which international Trademark agreements has Indonesia signed?   A: Indonesia has ratified various agreements concerning Trademarks, such as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the Trademark Law Treaty and the Paris Convention.   Regulators Q: Which government bodies regulate the Trademark Law?   A: The Directorate General of Intellectual Property (DGIP) under the Ministry of Law and Human Rights of the Republic of Indonesia is the relevant body that administrates the protection of all Intellectual Properties, including Trademarks. The DGIP goes beyond regulating and implementing the law, it is also responsible for proactively disseminating the information pertaining to the importance of IP protection through various means, such as podcasts, YouTube videos, Instagram posts and seminars conducted around Indonesia. Should you need more information regarding Legal Framework of Trademark in Indonesia, please do not hesitate to contact us via [email protected].

[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].