New Ministerial Regulations in Indonesia

By Denise Mirandah and Patrick Mirandah

The Ministry of Law and Human Rights (“MOLHR”) ratified the MOLHR Regulation No. 38 of 2018 concerning Applications for Patents (“Regulations”) on 28 December 2018. 

These Regulations were issued to clarify the provisions of the Patents Law No. 13 of 2016, in particular, Articles 29, 32, 33 (3), 42, 43 (3), 56 and 61 (5). As will be seen below, the scope and coverage of these Articles is now clearer.

Article 29 – Terms & Procedures for Filing Patent Applications

In general, the terms and procedures for filing a patent application under these Regulations has not changed much from the existing provisions; applications can be filed electronically or manually. The important addition to the formality requirements under Article 5 of the Regulations is that in addition to the Power of Attorney and the Deed of Assignment, the Ownership Statement document signed by the inventor/s that the invention is theirs and can be legally proven must be enclosed. With regard to writing specifications, Article 10 directs that the writing of the Invention in Abstract must not exceed 200 (two hundred) words.

Article 32 – Claiming Priority Rights

There are no changes concerning applications with Priority Rights; such applications must be submitted within 12 (twelve) months from the priority date of the country of origin as per Article 36 of the Regulations. The Certified Priority document must be submitted to the Directorate General of Intellectual Property Rights (“DGIP”) no later than 16 (sixteen) months from the date of priority. If the pre-requisites are not met, then the application is considered to be submitted without using Priority Rights.

Article 33 – Filing of International Applications

The amendments concern the submission of an application under the Patent Cooperation Treaty (“PCT”) which is not set forth under the old Patent Law. The international applications can be submitted by using the DGIP as a Receiving Office or a Destination Office. This is accompanied by costs which will be regulated with a Regulation on Types and Tariffs for Non-Tax State Revenues that will be issued soon. As per Article 45(7) of the Regulations, it is crucial that all documents are translated to the Indonesian language otherwise the application is deemed to be withdrawn.

Article 42 – Requests for Changes in Particulars for Patent Applications

Article 42 relates to the procedure for requesting changes of particulars in patent applications. A significant change concerns transfer of ownership rights and amendments of the name, address and citizenship of the applicant. A recordal of transfer of ownership rights is now possible for pending applications,. These changes under Article 51 of the Regulations are permissible as long as the applicant can attach supporting evidence to show data changes and proof of payment for requests for the said data changes.

Article 43 – Withdrawal of Applications

The procedure for withdrawing applications remains unchanged i.e. the withdrawal of the application must still be submitted in writing to the Minister before the application is granted a patent. In such a case, the official fees relating to the patent application will not be refunded. As per Article 59 of the Regulations, the announcement of the withdrawal of the application is to be announced via electronic or non-electronic media.

Article 56 – Substantive Examination

Procedures for substantive examination remain the same. Applications for substantive examination are to be done manually or electronically within 36 months from the filing date, as per Article 61 of the Regulations.

Article 64 of the Regulations states that the substantive examination is to be carried out the expiration of the announcement period. This is in accordance with paragraph 1 of Article 48 of Law Number 13 Year 2016 concerning Patent.

Articles 73 and 74 of the Regulations address the issue of applications for extensions of time to respond to the substantive examination reports. The first extension is given for two months with no charge. Subsequently, an extension of 1 month may be permitted by the Minister but this is subject to the payment of a fee. This regulation also states that if the response from the applicant does not meet the conditions stated in the substantive examination report, the application will be rejected and the applicant can submit a review request to the Patent Appeal Commission.

Article 92 – Request for Corrections of Patent Certificates

Article 92 (2) of the Regulations states that corrections can only be done to a Patent Certificate if there is an error when issuing the certificate or the applicant makes the error. For corrections due to errors when issuing the certificate, the applicant does not have to bear any costs. For corrections due to the applicant's fault, a fee will be charged. A notification will be sent in cases where the corrections are due to errors of the applicant while a new certificate will be issued in cases where the errors arose at the time of issuance of the Certificate. In such instances, the old certificate must be returned to the DGIP Office. In all other circumstances, only a notification will be issued.

Article 102 – Revival of Patent Applications

In addition, the Regulations also provide an avenue for revival of patent applications deemed withdrawn, by submitting a request for a judicial review of a withdrawal decision . The request is to be submitted within 6 (six) months from the date of the withdrawal notice along with the reasons to revive and payment of the requisite fees.

Conclusion

With the introduction of these regulations, it is hoped that there is uniformity in interpreting the provisions contained in the Patent Law and that it will be a useful guide for both applicants and the DGIP.

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