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
As part of its membership in Lex Mundi, Tilleke & Gibbins has published an updated edition of its Guide to Doing Business in Thailand for 2021. This guide outlines all of the key factors for starting and operating a business in the Thai market. Issues covered include: Investment incentives Financial facilities Exchange controls Import and export regulations Structures for doing business Requirements for the Establishment of a Business Operation of the Business Cessation or Termination of the Business Labor legislation, relations, and supply Tax Immigration requirements This publication is part of Lex Mundi’s Guides to Doing Business series prepared by member firms in more than 100 jurisdictions worldwide. The guides serve as a useful resource when planning an international business strategy or researching a new market.
Indonesia’s e-filing system became a vital tool for remote IP filings during the COVID-19 pandemic. Now that the increasingly feature-rich system is fully in place, it is worth considering which points could be improved in future iterations.
A liquidated damages clause is a quick and straightforward way to determine the amount of compensation payable by a breaching party to the aggrieved party in the event of IP infringement or another contract violation. The enforceability of such a clause in Vietnam remains a controversial topic, but some recent IP-related cases may shed some light on the applicability of such provision.