Indonesia's draft patent law has been issued for comment.
Indonesia's draft patent law has been issued for comment. When passed, it will replace the current patent law and it is hoped that it will solve some of the shortcomings of the current framework. One of the challenges under the current patent regime is the lack of implemented regulations for some of the provisions, such as the recordal of patent licensing and prior user defense.
Recordal of patent assignments have only been possible since 2010 when the implemented regulations (Presidential Decree No. 37 of 2010) were issued. On the positive side, patent searches are accessible on the patent office website and the website itself has undergone some improvements, such as enabling structured query searches. However, it is still not possible to retrieve patent specifications online, physical copies of the specification still need to be applied for at the patent office.
The Government explained that several provisions have been introduced to motivate local innovation, one of the provisions uses a 'reward framework' for inventors within government sectors. The discussion below highlights the changes that may affect foreign patent applicants.
Excluded subject matter
Computer program
With the proposed revision to the software exception, it can potentially open the doors for computer related inventions.
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Current Law excludes the following |
Proposed Law excludes the following |
|
Rules and method about computer program |
Rules and method that only comprises of computer program |
Second medical use
The proposed law (Article 4f) creates a new exclusion from a patentable subject matter - new use of a known product. This new exclusion may potentially put a stop to the current practice of allowing SWISS type claims which are currently being used by applicants to get around the medical method treatment exclusion.
Substantive Examination
The proposed law allows the patent office to outsource substantive examinations to experts. This is likely to give the patent office greater flexibility in planning examination resources.
A statutory time frame for examinations will be introduced under the proposed law. This is in contrast to the current framework in which the time frame is set, with some degree of flexibility, by the patent office.
However, although the motivation for a statutory imposed time frame is to speed up substantive examinations, one concern is that it could be too inflexible - making the granting of extensions very difficult. Such flexibility is important in Indonesia where grants are usually based on a corresponding foreign grant, which can take a very long time.
The table below is a comparison between the current office action time frame for responding and the time frame under the proposed law.
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Current Practice |
Proposed law (Article 61) |
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|
Time to respond office action |
Three months |
Three months |
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First Extension |
One month |
Two months |
|
Second extension |
One month |
One month subject to fee payment |
|
Third and further extension |
one month (depending on the examiner) |
Up to six months subject if there is an emergency |
The "emergency grounds" for the final extension is explained to include "force majeure situations" such as wars, revolutions, riots, strikes, natural disasters and other similar situations.
The proposed law (Article 60) specifically provides the possibility to make amendments to "data error" in certificates - there is no specific provision for error correction under the current law.
The post grant amendment under the proposed law (Article 66) is likely to be of limited application because a request must be made within three months from the notice of grant. Such amendments are available to correct translation of the specification, to clarify ambiguity, to narrow the scope of claims or to reduce the number of claims. There is no further opportunity to amend after the three months.
Maintenance
Under the proposed law, the grace period for late payment is shortened. The patent is deemed cancelled if the annuity is not paid by the due date. However, the patentee may restore the patent by paying all fees within 6 months of the due date.
Under the Current Law, a patent will only be cancelled after three continuous years of unpaid annuity. The downside to this is that the annuity continues to be payable for the three year period even if the patent is subsequently cancelled. This has caused some difficulty to patent holders who did not file a formal request to cancel their patents, because they thought that they could simply allow the patent to expire after the three years. Instead, they are facing claims for the unpaid annuity.
The new law will solve the annuity problem, but patent holders need to be aware of the shortened grace period under the new law to restore a lapsed patent.
Compulsory license
The proposed law gives the state an additional means to grant a compulsory license. The state may grant this to export the patented product to other developing or least developed countries that are in need of certain pharmaceutical products due to endemic diseases.
Bolar provisions
Under the current law, a third party can use a patented invention as a defense for the purpose of seeking marketing approval during the last two years of the patent term, before launching the patented medicine after the patent expires. The proposed law will increase this to three years.
The patent law is now under review by a parliamentary committee who will then give recommendations to the parliament for it to be passed into law.
We expect that the new law will be passed in the first half of 2016.
