INDONESIA PATENT LAW UPDATE:
LAW NO. 13 OF 2016
The new Indonesian Law No. 13 of 2016 has came into force on August 26, 2016, replacing the prior Law No. 14 of 2001.
Limitations on Patentability is an important change under the new Law that Patentees need to be aware of, while other notable changes include among others, electronic filing procedures, extended authority of Patent Appeal Commission, payment of Annual Fees and transition period of annuity payment.
Simple Patent/Utility Model
Scope of protection for Simple Patent/Utility Model is extended so as not to merely cover new products or improvement of those existing, but to also include protection towards new processes or improvement of existing processes (Article 3 par (2)).
Second Medical Use
Invention shall not include discovery in the form of use of existing/known products (second use/second medical use) (Article 4 point (f)).
Online filing system is introduced in the new Law. This is a significant progress as applications are currently still being filed manually at the IPO. While we can understand that certain adjustments would still be needed, the new system should simplify application process at the IPO (Article 24 par (4).
Disclosure of Genetic Resources/Traditional Knowledge
For Inventions that are related to certain genetic resources or traditional knowledge, information on such should be clearly and properly disclosed in the Description. This is to comply with the provision on Access Benefit Sharing in Nagoya Protocol (Article 24).
Extension of Deadline for Formality Requirements
Late submission of formality requirements are allowed within 3 (three) months. A request for an extension can be submitted in writing for another 2 (two) months. A final 1 (one) month extension remain possible, of which shall be submitted in writing and subject to payment of official fee (Article 35).
Patent Appeal Commission
The authority of Patent Appeal Commission is now extended to also accept, examine and decide on Article 63):
a. Appeal filed against the refusal of an application, which is to be filed within 3 (three) months as of the delivery date of the Notification of Refusal;
b. Appeal field in respect to post-grant request for correction to description, claims, and/or drawings, which is to be filed within 3 (three) months as of the delivery date of the Notification of Allowance;
c. Appeal filed against a Notification of Allowance (post-grant opposition), which is to be filed within 9 (nine) months as of the date of the Notification of Allowance.
Payment of Annual Fees
If the prior Law had created uncertainties with the sudden collection of outstanding annual fees of abandoned Patents, the issue should no longer be an issue as changes have been made with respect to annual fees payment mechanism.
The new Law requires payment of back annual fees to be made within 6 (six) months as of the date of the Notification of Allowance, and payment of annual fees for the subsequent year must be made at the latest 1 (one) month prior to the same date as the Filing Date within the subsequent protection period. Failure to pay by the due date will cause the Patent null and void, unless a grace period of 12 (twelve) months is requested in writing to the DGIP.
The above request is to be submitted at the latest 7 (seven) days prior to the due date and a penalty of 100% from the total amount of back annual fee shall apply.
Transition Period of Annuity Payment
With the enforcement of the new Patent Law No. 13 of 2016, there will be a transition period of annuity payment as below:
a. For the annuities which are still outstanding and due before the enforcement of Patent Law No. 13 of 2016, the procedure and calculation method shall apply the provisions of Art. 114 of Patent Law No. 14 of 2001.
b. For the annuities which are still outstanding and due after the enforcement of Patent Law No. 13 of 2016, the procedure and calculation method shall apply the provisions of Art. 126 of Patent Law No. 13 of 2016.
c. Payment of the annuities which are due after the enforcement of Patent Law No. 13 of 2016, is possible to be made for the present and forthcoming year annuities for the protection period of 2016 to 2017 from August 26, 2016 until December 30, 2016, at the latest.
d. In compliance with the provisions of Art. 134 (1) of Patent Law No. 13 of 2016, Patents which annuity payment is failed to be made within the period referred to in point (c) above shall be considered as null and void.
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