In an effort to modernize and align with global patent standards and to further promote innovation, Indonesia has introduced Law No. 65 of 2024, which amends numerous provisions of the Indonesian Patent Law (Law No. 13 of 2016). This amendment, the third since the original law, aims to streamline patent administration, adapt to technological advancements, and provide better protection for inventors and patent holders.

Within the revisions, there are many positive developments for rights holders, such as expanded definitions of patentable inventions, patentability of second medical use claims, and options for expedited substantive examination as well as for restoring priority rights which did not exist previously, among other notable developments.

There are also some revisions that may pose a challenge to rights holders as well, including but not limited to a shorter extension period to complete filing formalities, a requirement to submit a working statement for granted patents at the end of each calendar year, and a shortened grace period for late payment of annuities.

Overall, the revisions should help both administratively and substantively, and hopefully will promote further innovation within Indonesia and interest in its patent system from outside the country as well. As always, implementing regulations, which have not yet been issued, will also play an important part in the practical effect of these revisions.

As per the terms of Law No. 65 of 2024, these changes will only apply to granted patents and new applications filed after 28 October 2024; for applications that were filed before this date and remain pending, the previous law will apply.

Below are some of the key changes in the new Patent Law brought on by these revisions:

1. Removal of Exemptions and Limitations on Certain Inventions (Articles 4 and 9)

New Articles 4 and 9 remove certain exclusions and now recognize as patentable inventions:

• computer-implemented inventions (Art. 4(d));
• “new uses” or “new forms” of a pre-existing product of compound, paving the way for patentability of so-called ‘second medical use’ claims (old Art. 4(f)); and
• Scientific and mathematical theories and methods; (old Art. 9(c)).

Regarding computer programs, the Explanatory Notes state that a non-patentable computer program is one that only consists of a program without technical character, technical effect or problem solving. Previously, the Patent Law stated that “rules and methods containing only computer program” were non-patentable inventions.  Further, the removal of the prohibition on second medical use claims (previously found in Article 4(f)) is likewise significant.

2. Extended Grace Period for Disclosure (Article 6)

The grace period for disclosure for R&D purposes or done at official exhibitions/scientific forums or presentations has been extended from 6 months to 12 months, during which an invention can be disclosed without impacting its novelty.

3. Restoration of Priority Rights (Article 30)

For the first time, applicants claiming priority have the ability to late-file applications that have passed the 12-month priority deadline, provided that the request is made within 4 months from the 12-month deadline.

4. Changes to Formality Requirements for New Patent Applications (Articles 34-36)

The requirement of an executed Statement of Entitlement/Ownership by the inventor(s) has been eliminated (old Art. 25(2)(f)). For applications not originally filed in English, the English translation can now be submitted within 30 days of the Indonesian filing date (Art. 34(3 & 3(a)); previously, the English translation needed to be submitted at the time of filing the application. The deadline for submission of the Indonesian translation remains 30 days from the Indonesian filing date (Art. 34(3(a)).

Further, only a single 2-month extension is now allowed to complete the filing formality requirements (Art. 35(2)); previously, a final 1-month extension was available, but that is no longer the case under the new Law. However, for the first time, a formal mechanism has been introduced that allows for the reinstatement of an application due to failure to complete the filing formality requirements, as long as such request is filed within 6 months from the withdrawal notification (Art. 36).

5. Request for Early Publication (Article 46)

Under the revisions, a request for early publication must now be made within 3 months of the Indonesian filing date. Previously, it could be made up to 6 months from the Indonesian filing date.

6. Procedures for Early Substantive Examination (Article 55A)

A new option for expedited substantive examination has been introduced, provided certain conditions are met, such as completion of filing formalities and payment of relevant fees. Such a request must be made prior to publication. Further terms and conditions for early substantive examination will be contained in a forthcoming Ministerial Regulation.

7. Request for Re-Examination (Article 63A)

For the first time, applicants have been given the right to request for re-examination of their application in the event of (a) rejection, (b) need for correction in the description, claims and/or figures after grant, (c) grant decision, (d) withdrawal by applicant, and/or (e) withdrawal by Patent Office. The deadline to file such a request is nine months for all of the above except for (d) withdrawal by the applicant, in which case the deadline is 2 months from the official withdrawal notification. Further implementing regulations have been promised.

8. Expansion of Bolar Provision (Article 167)

The previous law created an exemption to criminal and/or civil liability for the use of a patented pharmaceutical product during the last five years of patent protection. Now, under revised Article 167(b) the so-called Bolar Provision has been expanded by eliminating any time limitation, so that use of a patented product with the aim of research and licensing/marketing after expiry of the patent protection period can now take place at any time during said period and not just during the last five years of protection, as previously provided for under old Article 167.

9. Additional Requirement regarding the Obligation of Patent Implementation (Article 20A)

Under new Article 20A, patent holders must submit an annual statement to the IP Office confirming that the patent is being ‘implemented’ in Indonesia. Further clarification is needed in the form of an implementing regulation to explain the type of statement that is required and the implication (if any) for submission failure, among other necessary details. Previously, no such statement was required.

10. Annual Fees and Penalties (Articles 126-128A)

The revisions establish an automatic six-month grace period for late payment of annuities; however, a 100% penalty will be assessed. Previously, the grace period was 12 months provided a formal request was made; now, there is no need for such formal request. Further regulations are expected.

While much will depend on the content and specifics of the forthcoming implementing regulations for a number of the above-discussed topics, overall these revisions signal Indonesia’s commitment to refining its IP landscape to support innovation while seeking to streamline prosecution and administration of new patent applications.

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About Januar Jahja and Partners: Established in 1986, Januar Jahja and Partners (JJP) is one of the leading intellectual property firms in all of Indonesia. Our firm and professionals have been recognized by such outlets as Legal 500, WTR 1000, IAM Patent 1000, IP Stars / Managing IP, Global IP Awards, and Chambers Asia Pacific, among others. JJP is led by industry-setting professionals with particular expertise in assisting clients to navigate the promising but sometimes confusing Indonesian IP scene. As a one-stop IP shop, JJP handles all aspects of our clients’ IP needs, including civil enforcement, investigations, dispute resolution and of course IP prosecution and litigation. For more information, please visit: www.jahja.com.