Legal Updates on Indonesia’s New Law: Patent and Mark

After 6 (six) sessions of intense discussion or approximately 6 (six) months, the Indonesian parliament has newly enacted two laws in relation to Intellectual Property, those are Law No. 13 of 2016 regarding Patent Law and Law No. 20 of 2016 regarding Marks and Geographic Indication. There are several amendments made by the Indonesian Parliament to overcome development and increase investment to Indonesia.

UPDATES ON LAW NO. 13 OF 2016 REGARDING PATENT, EFFECTIVELY ENFORCE FROM 26 AUGUST 2016

Computer Program is Patentable, the new Patent Law allows the program which contains characters, technical effect and problem solving features, whether tangible or intangible forms. While the previous Patent Law did not allow computer program to be patented. One of the computer programs that can be patented is algorithm, encrypting information, etc.

Additional Exclusions on Patent Law also covering:
a. new use for known-patent product and/or recognizes; and
b. New form of existing compound which not showing any increase of efficacy and contains no
changes on chemical structure.

Genetic Resources or Traditional Knowledge. Any invention is related to and/or derived from genetic resources and/or traditional knowledge, should clearly and correctly declare the origin of the genetic resources and/or traditional knowledge in the description. The reason of mentioning the origin of genetic resources and/or traditional knowledge is so that the genetic resources and/or traditional knowledge is not claimed by other cou ntries and in order to support the Access and Benefit Sharing.

Obligation of Patent Holders, to produce or manufacture its product in Indonesia in order to support transfer of technology, absorbing investment and/or job opportunities.

More Clarity in Application Procedure, once the patent is granted, in the period of at least 2 (two) months since the notification of granted patent, the Ministry shall issue the patent certificate. Furthermore, in the event the patent holder appeals against correction of the description, claims and/or drawings after the patent is granted (Post Grant Amendment) can be submitted at the latest of 3 (three) months.

Extension on the scope of protection for Simple Patent also covers processes for Simple Patent. While in the previous Patent Law only regulating products that can be protected by simple patent.

Parallel Import and Bolar Provisions regulates the exemption from criminal provisions and civil lawsuit on possibility of importing and producing patented pharmaceutical products in Indonesia and producing such patented pharmaceutical products within the period of 5 (five) years prior to the expiration of such protection only for the purpose of processing permits (such as distribution and production permit), while the marketing can be done after the expiration of the patent protection.

Maintenance Fees, the first annuity fee must be done 6 (six) months commencing from the date of patent certificates is issued. However, the Patent Holder may be exempted from annuity fee if such patent is related to patent on national defence and security or urgent need for public interest.

UPDATES ON LAW NO. 20 OF 2016 REGARDING TRADEMARK AND GEOGRAPHICAL INDICATION LAW

On 27 October 2016, new Indonesia Trademark Law has been enacted. Some of the most important points based on our review, inter alia protection of Non-Traditional Trademark, Online Application, New Trademark Application Process, Madrid Protocol, and time period for trademark renewal.

First, regarding the Protection of Non-Traditional Trademark, Article 1 Indonesia Trademark Law define type of trademark which can be protected as follow, “….displayed graphically in the form of pictures, logos, names, words, letters, numbers, color composition, in the form of two (2) dimensions and/or 3 (three) dimensions, sound, hologram, or a combination of 2 (two) or more of these elements…”. Based on the provision mentioned before, Indonesia now protecting non-traditional trademark, however the types of non-traditional trademark that can be protected are limited to: Sound mark, three-dimension, and hologram. Furthermore, please noted that in order to file non-traditional trademark, the application have to displayed graphically. For instance, sound mark application need to be provided by its notation and the sound itself as required by the law.

Second, the New Trademark Law now accommodates online trademark application. According to the information we received, an online application may offer a cheaper application fee, however due to some matters such as the online system is new among IP process in Indonesia, some trial and error may be found.

Not only, new type of trademark that can be protected, and providing online trademark application, but the process of trademark application based on New Trademark Law is also different. The difference to the Trademark Law No. 15/2001 is the new trademark law put Publication phase prior to substantive examination. For your perusal, the process shall be as follows:

Based on Trademark Law No. 15/2001:

Formality Check → Substantive examination → Publication → No Opposition → Registration

New Trademark law:

Formality Check → Publication → No Opposition → Substantive examination →Registration

Furthermore, the time period of trademark application to certification process shall be faster, according to the new trademark law. The total trademark application process will not exceed 12 (twelve) months referring to the law. However, as a practitioner, due to bureaucracy in Indonesia, the process still take longer time.

Fourth, based on Article 52 New Trademark Law, Indonesia starts to receive international mark application through Madrid Protocol. Meanwhile, further provision will be regulated under the Government Regulation.

Last but not least, referring to Article 35 Paragraph (3) and Paragraph (4) Indonesia New Trademark Law, to file trademark renewal application can be started 6 (six) months before the expiry date, and 6 (six) months after the expiry date with paying additional charge. Based on this new law, the trademark owner has more time to file trademark renewal application, since the Trademark Law provide an opportunity to file the renewal after the expiry date.