The Law No. 11 Year 2020 on Job Creations (hereinafter referred to as “the Omnibus Law”) was finally signed by the President of the Republic of Indonesia, Joko Widodo, on November 2, 2020. The Omnibus Law is 1,187 pages long and it consists of numerous revisions to the existing laws that are aimed to spur job creations in Indonesia. While it puts a stronger emphasis on the Employment Law, the Omnibus Law – after several amendments – also impacted key provisions in the Law No. 13 Year 2016 on Patents (hereinafter referred to as “the Patent Law”) and the Law No. 20 Year 2016 on Marks and Geographical Indications (hereinafter referred to as “the Trademark Law”). We herewith list the changes and revisions for your perusal:
- Changes to the Patent Law
- Simple Patent
Article 3 of the Patent law has been revised to the following:
(1) A Patent is granted for a novel invention, which has inventive steps and can be applied industrially.
(2) Whereas a Simple Patent for a novel invention, which is the development of a product or a process that already exists and can be applied industrially.
(3) The development of an existing product or process can cover:
- Simple products:
- Simple processes; or
- Simple methods.
In addition, Article 122 of the Patent Law also regulates the following requirements regarding the Substantive Examination Request for a Simple Patent:
(1) A Simple Patent is only granted for one Invention.
(2) The Request for the Substantive Examination for a Simple Patent shall be done at the same time as the time of the filing of the application with official fees.
(3) If the Substantive Examination Request is not filed at the time of filing of the Simple Patent application or if the Official Fees are not paid, then the Simple Patent application is considered withdrawn.
Whereas Article 123 of the Patent Law which regulates the publication period is amended as under:
(1) The publication of a Simple Patent shall be done no later than 14 days from the date of filing of the Simple Patent Application.
(2) The publication as referred to (1) shall be done for 14 working days.
(3) The Substantive Examination is conducted after the publication has ended.
(4) Except for the provisions in Article 48 Para (3) and (4), an opposition against a Simple Patent application is used as a determining factor during the Substantive Examination Stage.
Article 124 of the Patent Law is also amended so that the Substantive Examination period is cut by half:
(1) The Minister shall issue a decision to grant/reject a Simple Patent no later than 6 months from the date of the application date of the Simple Patent.
(2) A Simple Patent which is granted by the Minister shall be recorded and published via electronic or non-electronic media.
(3) The Minister issues a Simple Patent certificate to the Patent Owner as the proof of ownership.
- Use Requirements in Indonesia remain in place despite the initial plan and proposal to scrap it altogether
The initial plan to scrap Article 20 of the Patent Law was scrapped at the very last minute. Nevertheless, the Use Requirements have become “more accommodating” since it lists importation and licensing as the definition of use. Article 20 has been reworded as under:
(1) A Patent shall be used/performed in Indonesia.
(2) 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.
- Changes to the Compulsory-Licensing
Article 82 which regulates Compulsory-Licensing has been reworded as under:
(1) A Compulsory-License is a License to use/perform a Patent which has been granted by a Ministerial Decree or based on a request under the following conditions:
- A Patent has not been used/performed in Indonesia as per Article 20 for 36 months after it was granted;
- A Patent which has been used/performed by a Patent Holder or by the Licensee in a way that is detrimental to the public interest or
- A Patent resulting from the development of the existing Patents granted earlier could not be implemented without using the other party’s Patents which are still under protection.
(2) The Compulsory-License request will be subject to the payment of official fees.
- Changes to the Trademark Law
Some provisions in the Trademark Law have also been revised in the Omnibus Law. The most notable changes are as under:
- Functional 3D Mark is no longer registrable in Indonesia
According to the revised Article 20 of the Trademark Law, a Mark cannot be registered if:
- It is contrary to the state ideology, prevailing laws, and regulations, religious values, decency, or public order:
- It is the same, related to, or simply states the goods and/or services covered in the application;
- It contains a misleading element concerning the origin, quality, type, size, option, the purpose of use of the goods and/or services covered in the application or if the application is a name of a plant variety that is registered for the same goods and/or services;
- It contains inaccurate information regarding the quality, benefit, or efficacy of the goods and/or services that are produced;
- It lacks distinguishing elements;
- It is a common name and/or public symbol; and/or
- It contains a shape that is functional.
- Shorter Substantive Examination period
Article 23 of the Trademark Law circumvents the Substantive Examination period from 150 working days to 30 days if there is no opposition or 90 days if there is an opposition. The amended provision is as under:
(1) A Substantive Examination is an examination that is conducted by an Examiner for every Trademark Application.
(2) All oppositions and/or objections are considered in the Substantive Examination.
(3) If there is no opposition filed by the end of the publication period, the Substantive Examination will then be carried out.
(4) The Substantive Examination shall be concluded within no later than 30 working days if there is no opposition filed by the end of the publication period.
(5) If there is an opposition filed within 30 working days from the date of the end of the publication period as referred to in Article 17, a Substantive Examination shall be carried out.
(6) A Substantive Examination as referred to Para (5) shall be concluded within no later than 90 working days.
(7) If there is a need to conduct a Substantive Examination, an Expert may be assigned as an expert examiner.
(8) The examination conducted by an Expert referred to in Para (7) is deemed the same as the examination conducted by an Examiner under the decree by the Minister.
Should you require further information, please do not hesitate to contact Mr. Emirsyah Dinar at [email protected].