Indonesian Patent System:A Brief Introduction   {   Prayudi Setiadharma, S.H., M.IP.
   Patent Law no. 14/2001          Trademark  Law no. 15/2001          Copyrights  Law no. 19/2002          Industr...
 Paris Convention        Bern Convention        TRIPS Agreement        Patent Cooperation Treaty (PCT)        WIPO Co...
STRUCTURE OF INDONESIANIPR/PATENT SYSTEM             DEPARTMENT OF LAWS AND HUMAN RIGHTS                  Minister of Laws...
 First to File system;       Protection Period  20 years (10 years for utility        model)  no extension;       Sub...
   Novelty  not anticipated by any disclosure prior to           Filing Date;          Inventive Steps  not obvious to...
 Aesthetic creations;      Schemes;      Rules and Methods to perform activities       related to:       - mental activ...
-   Process/product contravening laws, public           order, and morality;       -   Method of treatment/medication/surg...
KINDS OF APPLICATION ELIGIBLE FORFILING IN INDONESIA     BASIC/NON-CONVENTION                            No Priority Date ...
APPLICATION            MIN.            ADM.                          COMPLETED?                                           ...
Patent Application Filing ProceduresMinimum requirement : Specification Document in Indonesian language  English  may be...
 After 18 months from Filing Date; lasts for 6         months  theoretically can be expedited by         request.       ...
 Mandatorily must be concluded in 36       months;      Examiner issues Official Actions  may be       more than once  ...
 Backlogs – only 70 examiners, more than 3000       examinations a year.      Examiners hesitate to conduct full-examina...
   Issuance of Notice of Allowance, to be         followed by Letters Patent in 3-6 months;        Post-grant amendment ...
 Annuities must be paid every year,         deadline at the anniversary of the granting         date each year.        2...
Payment is due on Anniversary of grant date, BUT annuity year       is computed from filing date  easily leads to a      ...
   Implementation within Indonesia  no          sanction  failure to comply may be grounds          for other party’s r...
 No clauses that will harm Indonesian economy, or        that will restrict Indonesians’ access to posses        and deve...
PATENT LITIGATION                                                    C                                   Civil action    P...
 Restricted to literal infringement  No        “Doctrine of Equivalent”       Expedited civil court proceedings  No a...
   Utilization of Patent by the Government one-sided         take over by the govt. for patents considered vital to     ...
THANK YOU  {   Copyright © 2012      Prayudi Setiadharma
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Indonesian Patent

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Overview on the Indonesian Patent system, in English.

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Indonesian Patent

  1. 1. Indonesian Patent System:A Brief Introduction { Prayudi Setiadharma, S.H., M.IP.
  2. 2.  Patent Law no. 14/2001  Trademark  Law no. 15/2001  Copyrights  Law no. 19/2002  Industrial Designs  Law no. 31/2000  IC Layout Designs  Law no. 32/2000  Trade Secrets  Law no. 30/2000  Geographical Indications  Incorporated within the Trademark Law  Government Regulation on GI Application Rules & Procedures being promulgated  Plant Variety Rights Protection (PVP)/Plant Breeder’s Rights  Law no. 29/2000IPR regimes in Indonesia
  3. 3.  Paris Convention  Bern Convention  TRIPS Agreement  Patent Cooperation Treaty (PCT)  WIPO Copyright Treaty  WIPO Publishers and Performers Treaty  There are ongoing debates and discussions on whether or not Indonesia should join the Madrid ProtocolInternational contractual obligationsfor Indonesia on IPR protection
  4. 4. STRUCTURE OF INDONESIANIPR/PATENT SYSTEM DEPARTMENT OF LAWS AND HUMAN RIGHTS Minister of Laws and Human Rights DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY RIGHTS (DGIP) Director General of Intellectual Property Rights DIRECTORATE OF PATENTS Director of Patents Patent Examiners appointment
  5. 5.  First to File system;  Protection Period  20 years (10 years for utility model)  no extension;  Substantive Examination  upon Request by the applicant  no later than 36 months since Filing date.;  Invention: technologically specific problem-solving activities in the form of process, product, or development from existing process/productLaw no. 14/2001 on Patents –Basic Concepts
  6. 6.  Novelty  not anticipated by any disclosure prior to Filing Date;  Inventive Steps  not obvious to any person skilled in the art at the time of the filing date;  Industrial Applicability  implementable in industrial manner;Substantive Patentability Requirementsunder Indonesian Patent Law (Article 2)
  7. 7.  Aesthetic creations;  Schemes;  Rules and Methods to perform activities related to: - mental activities; - games; - business;  Rules and Methods related to Computer Programs;  Presentation of any particular informationSUBJECT MATTERSNOT REGARDED AS INVENTION
  8. 8. - Process/product contravening laws, public order, and morality; - Method of treatment/medication/surgery applicable to human and/or animals; - Scientific and mathematic theories and methods; - Living Organisms except Micro-organisms - Essential biological process to produce plants or animals, except non-biological or micro-biological process.Inventions excluded from Patentability(Article 7)
  9. 9. KINDS OF APPLICATION ELIGIBLE FORFILING IN INDONESIA BASIC/NON-CONVENTION No Priority Date Applicable A APPLICATION for PPatent/Utility Model P LPARIS CONVENTION APPLICATION Filing no later than 12 months from Priority Date I for Patent/Utility Model C A T PCT-BASED CHAPTER 1: Entry to National Phase no later than 30 months from Priority Date I APPLICATION for Patent only CHAPTER 2: Entry to National Phase no later than 31 months from Priority Date O N Rules and procedures are being modified as to abolish the separation of Chapter I and II. Thus all PCT-based application will be using the same deadline of 31 months from the respective Priority Date
  10. 10. APPLICATION MIN. ADM. COMPLETED? FLOW OF INDONESIAN REQ. Insufficient No PATENT APPLICATION Sufficient Yes in ≤ 30 days PROCESS FILING DATE 18 mts CONSIDERED ADMINISTRATIVE Possible for COMPLETED? AS EXAMINATION Incomplete No Challenge? WITHDRAWN Complete Yes in ≤ SIX MONTHS 3 mts PUBLICATION STATE Theoretically PERIOD ADMINISTRATION possible, yet COURT still no precedent≤ 36 mts SUBS.EXAM. Not Filed REQUEST Filed SUBSTANTIVE ≤ 36 mts EXAMINATION No REFUSAL PATENTABLE? ≤ 3 mts Yes SUCCEED? APPEAL ≤ 12 mts Yes ALLOWED TO CERTIFICATE GRANT
  11. 11. Patent Application Filing ProceduresMinimum requirement : Specification Document in Indonesian language  English may be filed first, translation to follow in 1 (one) month; Applicant name & address; Foreign-based filing must through local registered IPR Consultant  Power of Attorney must be furnished within three months; PCT-based application must be accompanied by copy of International Publication Sheet; Declaration of Entitlement, Assignment from the inventor(s) and certified copy of priority document(s) shall be furnished within three months.
  12. 12.  After 18 months from Filing Date; lasts for 6 months  theoretically can be expedited by request.  Issued in Patent Gazette  digital version available at IPDL site  still inaccurate;  Third party may file opposition  used as reference by the examiner at substantive examination stagePublication Period
  13. 13.  Mandatorily must be concluded in 36 months;  Examiner issues Official Actions  may be more than once  No “temporary suspension”;  Results from corresponding applications in other countries may help a lot.SUBSTANTIVE EXAMINATION
  14. 14.  Backlogs – only 70 examiners, more than 3000 examinations a year.  Examiners hesitate to conduct full-examination.  No formal option to expedite.PROBLEMS AT THE SUBSTANTIVEEXAM. STAGE
  15. 15.  Issuance of Notice of Allowance, to be followed by Letters Patent in 3-6 months;  Post-grant amendment not possible – except for cancellation of some claims.  Subject to payment of back-annuities calculated from the year of filing – no later than the first anniversary of the grant.PATENT GRANTING
  16. 16.  Annuities must be paid every year, deadline at the anniversary of the granting date each year.  2,5% surcharge per month for late payment.  Revocation of the patent if fail to pay annuities for three consecutive years.  Annuities for the 18th, 19th and 20th year must be settled in the 18th year.DUTIES OF PATENTEE:ANNUITIES (Article 18)
  17. 17. Payment is due on Anniversary of grant date, BUT annuity year is computed from filing date  easily leads to a CONFUSION; CALCULATION METHOD: - Record the filing date and grant date. - Calculate the expiration date. - Determine the last anniversary of grant date before expiration and put it as a deadline of 20th annuity payment. - Make a countdown to determine the annuity year due for the first anniversary of grant date.DUTIES OF PATENTEE:ANNUITIES (Article 18)
  18. 18.  Implementation within Indonesia  no sanction  failure to comply may be grounds for other party’s request for Compulsory Licensing.DUTIES OF PATENTEE
  19. 19.  No clauses that will harm Indonesian economy, or that will restrict Indonesians’ access to posses and develop the patented technology;  Must be recorder at the IPO, otherwise no binding effect to third party;  Still no Government Regulation concerning Patent Licensing – Unenforceable?PATENT LICENSING
  20. 20. PATENT LITIGATION C Civil action Patent O Invalidation Subs. Valid, Double-Pat., M Misconduct in M Compul. Lcs. E R Patent Civil action CMisappropriation Inventorship/ I Ownership Issues A L S C U Civil action O Cassation P Damage/ U Interlocutory R R Patent Injunction T E Infringement M Criminal action E DISTRICT Appeal HIGH Cassation C COURT COURT Criminal action O Duty of Confidentiality U R T
  21. 21.  Restricted to literal infringement  No “Doctrine of Equivalent”  Expedited civil court proceedings  No appeal through H.C.  ≤180 days Commercial Court/≤60 days Supreme Court  Criminal action  max. 4 years imprisonment and/or ± USD 50,000.00 finePATENT INFRINGEMENT ISSUES
  22. 22.  Utilization of Patent by the Government one-sided take over by the govt. for patents considered vital to national interests/needs  compensation for patent holders  Parallel Importation  non-infringement for pharm.prod. already imported by the pat. provided the importation complies with relevant regulation;  Bolar Provision  others may utilize a pharmacy patent 2 years before expiration for obtaining marketing & production license from FDA.IMPORTANT ISSUE TO NOTE
  23. 23. THANK YOU { Copyright © 2012 Prayudi Setiadharma

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