18 October, 2016
The Indonesian Directorate General of Intellectual Property has issued a new circular that clarifies how the authorities will handle annuity payments for patents that were granted before the enactment of the Law No. 13 of 2016 on Patent (the new patent law). As explained below, all owners of existing Indonesian patents will need to make additional annuity payments before the end of this year to ensure compliance.
The new patent law, enacted on August 26, 2016, introduced changes in how annuity payments are calculated, moving to a system where an annuity payment is due at the beginning of the protection period in order to receive protection for the following period. This change from the past system, under which annuity payments were previously due at the end of each protection period, left patent owners wondering how their payments would be impacted under the new law.
The circular answers this question, and the impact is significant for all owners of existing patents. Under the circular, any unpaid annuities for patents registered before August 26, 2016, must be paid according to the rules set out in the new patent law. The circular sets up a transition period for payment to be made between August 26 and December 30, 2016. Failure to submit the annuity payment by December 30, 2016, will result in the patent being canceled.
This means that all patent owners who wish to maintain their patents must pay an annuity before December 30, 2016. Every owner of an Indonesian patent should therefore urgently review their patent portfolio to assess the annuity payments that need to be made, so as to ensure that their granted patents are not cancelled under the new law.
This requirement is set out in Circular HKI-3-08.OT.02.02 of 2016, dated September 30, 2016, and made available to the public on October 12, 2016. In the November issue of our Informed Counselnewsletter, we will provide expanded details and analysis on annuity fee calculation in Indonesia under the new patent law.
For further information, please contact:
Somboon Earterasarun, Director, Tilleke & Gibbins
somboon.e@tilleke.com
