The Government of the Republic of Indonesia has issued the Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 14 Year 2021 on the Changes of the Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 30 Year 2019 on Patent Compulsory Licensing Granting Procedure. The amended regulation highlights several changes, including the grounds of granting of a patent compulsory license and most importantly the removal of the opportunity for patent holders to postpone the working of their registered patents.
Grounds to grant a compulsory license based on request:
- The Patent Holder does not perform its obligations to perform the patent as per Article 107 point 2 of the Law No. 11 Year 2020 on Job Creations within 36 months after the patent has been granted. For your information, Article 107 point 2 of the Law No. 11 Year 2020 on Job Creations stipulates the conditions of use/performance of Patent in Indonesia as the following:
The patent performance as referred to in (1) is as under:
- The use/performance of a Patented product by manufacturing, importing, or licensing the patented product;
- The use/performance of a Patented process by manufacturing, importing, or licensing the product which has been resulted from a patented process; or
- The use/performance of a Patented method, system, and use by manufacturing, importing or licensing a product which has been resulted from a method, system, and use which has been patented.
- The patent is performed by the patent holder of the licensee in a way that is detrimental to the public interest.
- The patent that is resulted from the development of a prior registered patent cannot be performed without using the patent of the other party which is still registered.
In addition, the regulation also stipulates the following:
- The Minister via the Director General of Intellectual Property can send a notification letter to the Patent Holder regarding the obligation to perform the patent if the patent holder has not performed its patent within 36 months from the grant date.
- The notification letter will be done for the patent which is requested to be licensed in compulsory manner.
- The notification above will be announced electronically to the public to inform that the Patent Holder has not performed the patent in Indonesia.
The regulation also abolishes Article 39 to 44 of the Ministerial Regulation No. 30 Year 2019 on the Procedure to Grant Patent Compulsory License. The abolished articles are as under:
(1) Patent holders are required to make products or using processes in Indonesia.
(2) Creating a product or using a process as referred to in paragraph (1) must support technology transfer, investment absorption, and / or provision of employment.
In the event that the Patent Holder has not been able to do so Patents in Indonesia as referred to in Article 39, the Patent Holder can delay the implementation of the manufacture products or use of a Patent process in Indonesia.
A suspension of application for patents in Indonesia may be granted within a maximum period of 5 (five) years with submit a request to the Minister accompanied by any reason.
Postponement of Use of Patents as referred to in Article 41 it is submitted within a maximum period of 3 (three) years from the date the Patent was granted.
In the event that the Minister approves the request for postponement of Use of Patents in Indonesia as referred to in Article 42, the Minister notifies the Patent Holder.
Postponement of Use of Patents in Indonesia as referred to referred to in Article 43 is granted
Patent Performance Postponement No Longer Valid
In accordance with the Law No. 13 Year 2016 on Patents, patent holders shall perform or work their registered patents within 36 months from the date of grant. Otherwise, they may be susceptible to compulsory-license request by any third party. In addition, the failure to perform or work a registered patent as per Article 20 of the Law No. 13 Year 2016 on Patents (as well as Article 107 Para (2) of the law No. 11 year 2020 on Job Creations) may also pose a revocation risk at the Court of Commerce. The work-around to overcome these limitations used to be available, namely by requesting a working postponement of a registered patent.
However, as regulated by the new regulation, it is no longer possible for the holders of registered patents in Indonesia to request for the postponement of their registered patents. The removal is in line with the spirit of the Indonesian Patent Law to ensure that all patents that are registered in Indonesia should be performed either through direct performance by the holders or through licensing.
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