By: Wulan Mogesmiranti, Patent Attorney, and Andrew F. Diamond, Foreign IP Consultant, Januar Jahja and Partners
The Indonesian IP Office (DGIP) recently announced that a patent assignment recordal can only be processed after the patent at issue has been granted, thereby effectively prohibiting recordals of assignment for pending patent applications. This new policy was both announced and took effect in July 2020.
Previously, the DGIP allowed recordals of assignment for patent applications that had not yet been granted. Now, the DGIP has announced that the recordal of patent assignment can be requested only once the patent has been granted. The main consequence of this change in policy is that the patent holder will have to wait longer before a recordal of assignment can be filed/recorded with the Indonesian Patent Office.
The legal basis for this decision is found in Article 1(1) of the Indonesian Patent Law (No. 13 Year 2016), which states that “Patent shall mean an exclusive right granted by the State to an Inventor for his invention in the field of technology, for a certain time, to exploit his invention or to authorize another person to exploit it.” Thereby, the position of the Indonesian Patent Office is that this article only refers to granted patents and therefore those rights can only be transferred to another person for exploitation after grant.
In order to file an application for recordal of assignment of a granted patent, based on Presidential Regulation No. 37 Year 2010 the requirements are as follows: (1) payment of the official fee (currently IDR 700,000- or approx. USD 50); (2) proof that the annuity fee for the ongoing year has been paid; (3) Power of Attorney signed by the assignee; (4) notarized copy of the assignment document signed by both parties, which must be translated into Indonesian; and (5) a certified copy of the granted patent certificate.
For pending patent applications, the DGIP’s recent announcement does not affect the ability of applicants to file a request for change of the applicant’s data pursuant to Article 51 of Government Regulation No. 38 of 2018, which allows for changes to the applicant’s name and/or address (as well as citizenship if the applicant is an individual). Further, it is still possible to request for change of the application data related to the proxy, inventors, priority details, title of the invention, and total claims.