PCT Restoration of the Right of Priority - Update on the Indonesian position ( IP Updates 005/11 )

Previously in January 2011 on the Edition 001/11 of the AMR PARTNERSHIP IP Update we reported the position taken by the Indonesian Patent Office as either Receiving Office or Designated Country Office not to recognize any Restoration of Priority Rights invoked by incoming PCT applications to Indonesia, since the Office sees such restoration as not in compliance with the standard of protection set under the Law no.14 of 2001 concerning Patent. The position shall also remain the same under the future amendment to the present law, a draft of which currently being prepared by the government.

One controversy that might surface was that the Indonesian Patent Office at first took a rather harsh step to even withdraw any Indonesian patent application at the formality examination stage when it was evident that the application in question was initially filed at the international phase of the PCT using the aforementioned restored priority.

Such policy was consequently met with sound disagreements as concerned by applicants and practitioners alike. The main argumentation was that while a receiving/designated country office does reserve the rights to not recognize the restoration of priority granted at the international phase of a PCT application, withdrawal absolutely shall not become the consequence thereof.

Responding to this, the Patent Office at first corrected its position by revoking its policy to simply withdraw the priority-restored application at the formality examination stage. However, by not recognizing the restored priority, the Patent Office determined that any relevant PCT application shall use the actual submission date to the Indonesian Patent Office as the application’s filing date in Indonesia, a date crucial for the application’s subsequent procedures. Since the actual submission date of the application to the IPO will most likely fall after the respective international publication thereof, at the substantive examination stage in Indonesia the application indeed will fail the novelty requirement due to its prior disclosure, i.e. the international publication of its own self.

Fortunately enough, the Patent Office soon realized the flaw in its policy on restored priority, though not before the International Bureau of the WIPO stepped in and provided its legal opinion on the matter at the request of one foreign applicant whose application was affected. It is now confirmed that for any PCT application using the restoration of priority that enter the Indonesian national phase, the Indonesian Patent Office shall simply not recognize the restored priority while allowing further prosecution of the application, for which the international filing date will be used as the national filing date in Indonesia.

(amr – ps/eb)