26 October 2021
In August 2021, the Directorate General of Intellectual Property (DGIP) of Indonesia’s Ministry of Law and Human Rights held a virtual session on the draft revision of Patent Law No. 13 of 2016 to apprise relevant stakeholders of the draft amendments and maintain transparency in the drafting process. The Patent Law is being amended to correspond with the Job Creation Law (Law No. 11 of 2020), which requires adjustments to regulations to bring them in line with international standards, balanced with national interests. One of the purposes of the Job Creation Law is to speed up and simplify business processes, so the proposed amendments to the Patent Law aim to support this objective.
The draft update to the Patent Law contains a number of notable changes, as laid out below.
Computer programs
Under both the current law and the draft law, computer programs are not considered inventions and thus cannot be patented. However, the draft law does allow computer-implemented inventions and computer-related inventions, while specifying that computer programs by themselves are not allowed.
Discoveries
The draft law allows patents for a new use of an existing product or for a new form of an existing compound that significantly increases efficacy and has no related chemical structural differences from the known compound. This allowance will be particularly advantageous for inventions related to second medical uses.
Application grace period
The draft law increases the time allowed for filing a patent application to 12 months after the disclosure of the invention (from the current grace period of six months). This longer allowance will especially benefit researchers and inventors who require scientific publication of their research results as well as patent protection.
Patent implementation by other parties
The draft law allows implementation of a patent not only in terms of production, but also through granting permission to other parties, such as through transfer and licensing. This change aims to bring the draft law in line with the TRIPS Agreement, which holds that patent owners have the right to assign, license, or transfer (by succession) their patents.
Statement of patent implementation in Indonesia
Previously, there was no requirement to provide a statement of patent implementation in Indonesia, but an annual statement is mandated in the draft law. Even if the patent is not implemented in Indonesia, a statement must still be provided to the DGIP at the end of each year.
Statement of origin for genetic resources and traditional knowledge
A proposed amendment in the draft law requires patent applications related to genetic resources or traditional knowledge to be accompanied by a statement of origin. This statement is meant to replace the currently required validation or verification letter from an appointed institution, because currently there is no designated institution to verify the origin of genetic resources.
Late filing of applications claiming priority rights
While previously no delay has been allowed, the new draft states that applications claiming priority rights that have missed the 12-month deadline may still be filed within four months of the deadline with an additional fee. In other words, it is possible to file patent applications claiming priority rights up to 16 months from the priority date.
Refiling
The draft law states that an application deemed withdrawn because it was not accompanied by the necessary formality documents may be filed again for an additional fee. However, the specific rules and timeframe for this are still unclear.
Substantive examination timing
One proposed amendment encourages acceleration of substantive examination by stipulating that substantive examination will take place after a request for it is filed. This is different from the current practice, under which substantive examination takes place after the end of publication period. In addition, a new provision allows applicants to request (at the time of filing or at the publication stage) a preliminary substantive examination.
Thus far, acceleration of a patent application in Indonesia has only been possible through a patent prosecution highway (PPH) request, limited to a corresponding Japanese patent application. Under the draft law, applicants can request acceleration of substantive examination after the completion of the publication period, subject to a fee. Requirements and timeframe for this are still unclear.
Repeat substantive examination
A new provision in the draft law introduces the concept of repeat substantive examination of Indonesian patent applications, whereby a patent owner who wants to review a substantive examination decision or make a change or addition to the granted claim can request a reexamination. This reexamination request can only be made for applications that have been granted, and must be filed within six months of the grant decision.
Appeals
The draft law retains the current appeal window to the Patent Appeal Commission of three months from issuance of a rejection notice, but adds that rejection of a request for repeat substantive examination can also be appealed to the Patent Appeal Commission, following this same timeframe. In addition, if the Patent Appeal Commission issues a further rejection notice, a lawsuit can be filed with the Commercial Court. The draft law states that a lawsuit against the decision of rejection from the Patent Appeal Commission can only be filed after the examination and final decision from the Patent Appeal Commission.
Compulsory licensing
A new provision in the draft law holds that a compulsory license will be ended if within two years the licensee cannot prevent the implementation of patent in a way that is detrimental to the public interest. In other words, the license will be canceled after two years if the licensee fails to secure implementation or allows ineffective implementation (such as ineffective production of drugs under a compulsory license, resulting in the supply remaining inadequate and the price too high).
Government use of patents for imported pharmaceutical products
The draft law allows the government to implement the patent for a pharmaceutical product for treatment of diseases in humans if the product cannot be produced in Indonesia.
Outlook
The objective of the draft law is to encourage the implementation of patent protection and services that are innovative, responsive to public needs, and in line with international developments. The draft law is expected to be finalized next year, as it has been included in the 2022 National Legislation Program (Prolegnas). Once it is passed, the resulting law will modernize aspects of Indonesia’s patent system in line with government priorities.
For further information, please contact:
Melinda Ambrizal, Tilleke & Gibbins
melinda.a@tilleke.com
