Mitha Fuji Adiati and Iis Riskaningsih, Januar Jahja and Partners
*This article originally appeared in Managing IP (April 2021), https://www.managingip.com/article/b1rfk8ld0m5cpn/changes-for-patent-applications-simple-patents-and-excess-fees-in-indonesia
Since the start of 2021, the Indonesian IP Office has issued two new regulations and one official announcement that affect both rights-holders and day-to-day practice in Southeast Asia’s most populous country and largest economy.
While some of these changes have been expected as they are the implementing regulations for the previously reported on Job Creation Law that came into effect in November 2020, some of these changes were unexpected and should be carefully noted by interested parties.
The two ministerial regulations and the official announcement are summarised below.
Ministerial Regulation No. 13/2021
Ministerial Regulation No. 13/2021 is an amendment of Ministerial Regulation No. 38/2018 concerning patent applications and focuses specifically on simple patents.
First, Ministerial Regulation No. 13/2021 formalises the addition of a new criteria to the registrability of simple patents; that is, in addition to the previous requirements of novelty, development of an existing product or process, and industrial applicability, “has a practical use” is now required for grant of a simple patent.
Ministerial Regulation No. 13/2021 also seeks to formalise the changes made in Law No. 11/2020 Concerning Job Creation aimed at accelerating examination and grant of simple patents, with a comparison as follows:
- Administrative examination within five days of filing date (previously 14 days);
- Completion of required documents within 28 days of filing date (previously one month from the issuance of notification regarding missing requirements);
- Publication to take place no later than 14 days from filing date and publication period shall be 14 days (previously three months and one week at the latest for a period of two months);
- Request for substantive examination shall be filed simultaneously with application (previously at the latest six months from filing date);
- Substantive examination shall take no more than two months (previously six months); and
- Final decision on application to be made no later than six months from filing date (previously 12 months).
Further, the Ministerial Regulation No. 13/2021 allows third parties to submit opinions, objection, explanations or other rebuttals to simple patent applications, which shall be used as additional material for consideration by the Examiner during substantive examination.
Ministerial Regulation No. 14/2021
Ministerial Regulation No. 14/2021 is an amendment to Ministerial Regulation No. 30/2019 concerning procedures for granting compulsory licenses for patents.
As widely reported, previously a patent holder had the obligation to make a product or use a process in Indonesia within 36 months from the grant date, with the stated goal of supporting technology transfer, absorption of investment and/or provision of employment opportunities in the country. In practice, this proved to be difficult for many patent holders, with extensive lobbying taking place to revoke this provision (Article 20 of the 2016 Patent Law).
Instead of revoking it, the 2020 Job Creation Law loosened the ‘implementation’ requirement. Article 107(2) states that ‘implementation’ now includes making, importing, or licensing the patented product, or products resulting from a granted process, or products resulting from the granted methods, systems and uses.
At the same time, Ministerial Regulation No. 14/2021 eliminates the relevant provisions from the previous regulation that provided up to five years of postponement. Now, such postponement is no longer available under current law and regulations, although previously filed requests for postponement that were in process will still be examined by the patent office.
It is hoped that these changes will simplify in some small way the ease of doing business in Indonesia, as well as enhance the overall investment ecosystem, though the elimination of the postponement period could be viewed unfavorably by some patent holders.
Excess claims and descriptions payment
Announcement No. HKI.3-KI.05.01-247 dated March 1 2021 seeks to clarify the previously ambiguous situation regarding excess claim fees and also excess page fees. Excess claim fees are due to be paid on each claim exceeding 10, while excess page fees are due to be paid on each page of the description exceeding 30 pages. These fees are paid to the Indonesian IP office at the time of filing. However, previously it was unclear if these excess fees must be paid again for each time the claims and/or description were amended.
Now, the announcement removes any uncertainty on this issue by providing clear examples concerning the calculation of excess claim fees, which are as follows:
- If the applicant submits 15 claims when filing a patent application, there are five excess claims (15-10=5) to be paid, and then further amendments are submitted in the amount of:
- 20 claims: thus, there will be excess claim fees to be paid for five amended claims, so that the total excess claims will be 10 claims.
- 12 claims: thus, there are no additional fees for the amended claims so that the total excess claims will still be five claims.
- The applicant submits five claims when filing a patent application; there are no excess claims fees to be paid. If the applicant later submits an amendment with 12 claims, there will be two excess claims charged.
With the above examples, there should be no more uncertainty resulting in possible double payment of excess claims fee by an applicant. Further, the announcement states that any paid excess claim fees cannot be refunded. While the announcement does not give any specific examples with regards to calculation of excess page fees, it is understood that such calculation will follow the same pattern as for excess claim fees.
In summary, the issuance of Ministerial Regulations Nos. 13/2021 and 14/2021 and the official announcement for excess fees should accelerate the simple patent application process and provide clarity for patent holders in calculating excess fees that should prevent overpayments and hopefully help avoid additional costs during the substantive examination process.