Regulation on Recordation of License Agreements: End of a very Long Wait

After years of waiting, the Ministry of Law and Human Rights of the Republic of Indonesia has eventually issued Regulation No. 8 of 2016 on the Requirements and Procedures for the Recordation of Intellectual Property License Agreements. The issuance of this Regulation has been long expected by many IP Rights Holders and now that the Regulation has finally been issued, the provisions pertaining use by Licensee, which by Law shall be regarded as use of by the actual Rights Holder can be enforced. Accordingly, upon License Agreements that have been appropriately filed for Recordation at the DGIPR, such Agreements become legally binding to the Parties therein as well as to any third parties. Having as much rights as the actual Rights Holders, Licensee shall also reserve the rights to bring a legal action against any third party, who are presumed to be infringing the licensed IP. In general, the provisions in the Regulation are as hereunder: Recordation of License Agreements shall be made upon:

  1. Copyrights
  2. Patent;
  3. Marks;
  4. Industrial Designs;
  5. Layout Design of Integrated Circuits; and
  6. Trade Secret
The requirements for IP upon which the License Agreement is Recorded:
  1. Still within the granted protection period (valid);
  2. Does not harm the national economic interests;
  3. Promotes technological development;
  4. Does not contradict with other prevailings laws and regulations, morality and public order.
The documents required for filing a Recordation of License Agreement:
  1. Copy of License Agreement or evidence thereof;
  2. Copy or Excerpt of the valid Registration Certificate for the relevant Patent, Industrial Design, Mark, Industrial Design, Layout Design of Integrated Circuit or Proof of Ownership of Copyright and Related Rights and Trade Secret;
  3. Original Power of Attorney, if Recordation is filed through a Proxy;
  4. Original Receipt of Payment of Recordation Fee;
Examination of formality documents will be completed within 10 (ten) working days as of the date on which Recordation is filed; Incomplete applications for Recordation will be returned to the Proxy for completion within another 10 (ten) working days as of the date of the Notification. Failure to submit the supporting document as requested within the stipulated time period, such application shall be deemed as withdrawn; Recordation of License Agreement shall be valid for 5 (five) years and extension is available upon expiration. With the Regulation in force, Rights Holders can now turn to their local representatives as Licensee for use of their IPs in Indonesia, particularly Marks, to prevent themselves being subject to cancellation lawsuit on the grounds of non-use. Bearing in mind that use by a Licensee shall be regarded as use by the Rights Holder in Indonesia, Licensee reserves as much rights as the actual Rights Holder in bringing legal actions against any third party. We therefor encourage Rights Holder to immediately Record their License Agreements with the DGIPR so that their rights as well as the rights of their Licensee in Indonesia are appropriately protected. Sigit Nugraha, SH/erb   AMR/ntm/eb