By: Wulan Mogesmiranti, Patent Attorney, and Andrew F. Diamond, Foreign IP Consultant, Januar Jahja and Partners
On 8 June 2020, the Indonesian Directorate General of Intellectual Property (DGIP) announced that it had formally renewed their Memorandum of Understanding (MOU) with the Japan Patent Office (JPO). Issued as part of a Joint Statement of Intent with the JPO, a key component is the renewal of the Patent Prosecution Highway (PPH) program, which has been in place between these two patent offices since 01 June 2013. Interestingly, as part of the renewal, a slight modification has been made to the timing of a PPH request in Indonesia, which will hopefully increase the program’s effectiveness, speed, and thus its popularity among eligible applicants.
Currently, the JPO is the only patent office with which Indonesia has an agreement in place for PPH participation. According to one source, since the program started, there have been at least 1,500 PPH requests filed. In fact, the number should be higher as theoretically the PPH program offers eligible applicants an opportunity to expedite examination and grant of their patents in Indonesia, and Japanese applicants are among the most active filers in Indonesia.
However, there may be a common misconception that only Japanese applicants are eligible for participation in the PPH program in Indonesia. In fact, that is not the case and instead the PPH route is also available to non-Japanese applicants via the PCT system as long as they have a positive examination report from the JPO (Written Opinion/International Preliminary Examination Result) or via the Paris Convention as long as they claim priority from a Japanese application and have a positive examination result from the JPO.
Beyond the misconception as to who is eligible to participate, it is also possible that historically the PPH program has not been used as much as possible because perhaps there were questions as to whether it made much of a difference in terms of examination/grant time. Now, a new change to the sequence of the PPH request in Indonesia could have a very positive effect on these examination/grant times going forward.
Previously, a PPH request could be made at any time from when the application was published until before grant. Now, the PPH request can only be filed once the application has passed the publication period but before the First Examination Result (1st Office Action) has been completed/issued. Then, assuming the below listed formalities have been completed, the examination will be completed within six months from the date that the PPH request is filed, according to the Patent Office’s announcement.
These changes provide for a definitive timeframe within which substantive examination must be completed, whereas before it was more open-ended. This should only have a positive influence on the speed with which PPH requests are examined, making it a more attractive option should an eligible applicant wish to expedite examination and grant of their Indonesian patent applicaiton.
In order to validly request for participation in the PPH program, an eligible applicant must bear in mind the following:
- Application formalities have been completed (Notification of Completed Formality Examination should be attached to PPH request);
- Official fee for substantive examination has already been paid (proof should be attached to PPH request);
- The application has passed the publication period (should be attached to PPH request);
- Substantive examination stage I of the application has not yet been conducted by the Patent Examiner;
- Completed PPH request form;
- Scope of the submitted claims is similar to or narrower than the scope of the claims which have a positive examination result from the JPO;
- A positive examination result issued by the JPO; and
- Translation of that examination result in English and Indonesian.
Additionally, the official fee to request PPH must be paid to the Indonesian IP Office. This official fee is currently IDR. 5,000,000- (approx. USD 350).
If an eligible applicant can comply with the above and timely submit the PPH request, they will have the opportunity to accelerate examination of their patent and obtain the notification of grant in a relatively short period of time. Further, considering the ongoing Covid-19 situation, it is useful to note that the PPH request can be submitted via the Indonesian IP Office’s online system.
The main issue facing eligible applicants appears to be one of timing. Since the PPH request must be filed between the completion of the publication period but before the start of substantive examation, there is a potentially small but nondefinable period of time for such PPH requests to be timely filed. As such, applicants should be aware of exactly when the publication period will end and be ready to quickly file the PPH request so they do not squander this useful opportunity to expedite examination and grant of their Indonesian patents.