Substantive Examination Timeline Re-Affirmed In A Recent D.G.'S Circular ( IP Update 03-2011 )

Backlogs during substantive examination stage of patent application have been one of the classic recurring problems not only at the Indonesian Patent Office, but also at various patent authorities elsewehere. In Indonesia, however, the Directorate General of Intellectual Property (DGIP) in recent years has managed to significantly reduced such backlogs through implementing more effective measures in the examination procedures.

While in many cases backlogs are occuring at the DGIP either due to the relatively low and steady number of patent examiners compared to the increasing number their annual workloads or due to difficulties in finding prior art documents relevant to the examination purpose, it is also not rare that delays are resulted from the inability of applicants to provide the patent office examiners with timely response to the official actions issued.

For addressing this particular problem, the Director General of IPR recently issued an Official Circular directed to applicants of Indonesian patent applications as well as to Indonesian registered IPR Consultants who may act on behalf of the applicants as their legal proxy before the DGIP.

The Circular basically reaffirms the mandatory timeline for applicant(s) of an Indonesian patent application to respond to first official action issued by the respective patent office examiner, which is three months from the date of issuance of the official action. Should the applicant be unable to submit the required response within the mandatory three months, the DGIP shall issue an Official Warning Notice for the applicants to respond immediately, by which the response deadline would also be extended for two months since the issuance of the warning. Failure to submit timely response in accordance to the extended timeline shall render the application officially withdrawn.

Additionally, the Circular also sets that should there be any existing delay at the applicant’s side in responding to any second or later official action issued by the respective patent office examiner upon an Indonesian patent application at the time of the issuance of the Circular, the applicant shall be given one final chance until April 30, 2011, to submit the required response or the application shall also be rendered as officially withdrawn.

In view of this Circular, AMR PARTNERSHIP is now sending out notification to each client whose response to an official action is still outstanding, in order to assure that the timeline set by the DGIP can be duly met as to keep the respective application in good order.

Official actions are issued by the patent office examiner during substantive examination stage of an Indonesian patent application in order to communicate with the applicants regarding any substantial objection, suggestion for changes or amendments, editorial correction, or any other additional requirements in respect of the application. While there is no limitation on both the minimum and the maximum number of official actions an examiner may issue upon each application, normally every examiner would issue official action at least once for each case, with more than three official actions for one case being the most uncommon of the practice.