This document provides a brief introduction to Indonesia's patent system. It outlines the key IP laws in Indonesia related to patents, trademarks, copyright, and other areas. It describes Indonesia's obligations under international treaties and the structure of the country's patent office and examination system. The document explains Indonesia's patentability criteria, application process, substantive examination, and post-grant procedures and obligations for patent holders. It also discusses some issues in Indonesia's patent system such as litigation and the government's ability to utilize patents deemed vital to national interests.

1. Indonesian Patent System:
A Brief Introduction
{ Prayudi Setiadharma, S.H., M.IP.

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. 29/2000
IPR regimes in Indonesia

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 Protocol
International contractual obligations
for Indonesia on IPR protection

4. STRUCTURE OF INDONESIAN
IPR/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.  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/product
Law no. 14/2001 on Patents –
Basic Concepts

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 Requirements
under Indonesian Patent Law (Article 2)

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 information
SUBJECT MATTERS
NOT REGARDED AS INVENTION

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. KINDS OF APPLICATION ELIGIBLE FOR
FILING IN INDONESIA
BASIC/
NON-CONVENTION
No Priority Date Applicable
A
APPLICATION
for P
Patent/Utility Model
P
L
PARIS 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. 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. Patent Application Filing Procedures
Minimum 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.  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 stage
Publication Period

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.  Backlogs – only 70 examiners, more than 3000
examinations a year.
 Examiners hesitate to conduct full-examination.
 No formal option to expedite.
PROBLEMS AT THE SUBSTANTIVE
EXAM. STAGE

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.  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. 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.  Implementation within Indonesia  no
sanction  failure to comply may be grounds
for other party’s request for Compulsory
Licensing.
DUTIES OF PATENTEE

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. PATENT LITIGATION
C
Civil action
Patent O
Invalidation Subs. Valid,
Double-Pat., M
Misconduct in
M
Compul. Lcs.
E
R
Patent
Civil action C
Misappropriation 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.  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 fine
PATENT INFRINGEMENT ISSUES

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. THANK YOU
{ Copyright © 2012
Prayudi Setiadharma