TRADEMARK LAW No. 20/2016
Indonesia New Trademark Act No. 20 / 2016 that came into force on 27 November 2016, amend the prior regulation. The amendment enhances trademarks in line with international conventions and standards. In addition, the amendment will help to boost the development of the creative economy and trade of Indonesian products in the international market.
Below are some of the key changes under the New Trademark Law:
- The New Trademark Law introduces protection to Non Traditional Marks in the form of (a) Sound Marks; (b) 3D marks; and (c) Hologram Marks.
- New Trademark Law introduces minimum requirements for filing a trademark application. A filing date will be assigned as long as the applicant (a) fills in an application form; (b) provides the relevant trademark label; and (c) pays the official fees.
- Shortening the application procedures that all mark applications will enter into the publication stage first (during which period any interested third party can oppose a trademark application) and following the end of the publication period, the application will enter the substantive examination stage and there will be no longer second examination.
- Allows submission of a renewal application within 6 months before the end of the registration period and within 6 months after the end of the protection period (different charges for the 2 options above).
- Heavier criminal sanctions, with respect to trademark infringement that will endanger human health, the environment and will cause death. This addition is designed to act as a deterrent against infringes and counterfeiters.
- Provision on the protection of Geographical Indications.
- Trademark application can be assigned while in the process
- Trademark applications based on the Madrid Protocol are now acceptable (this will be subject to further implementing regulations).
- The timeframe will be faster under the New Trademark Law approximately within 9 (nine) months for smoothly application
- The increasing of Official Fee and there will be no limitation of kind of goods in any classes of application
PATENT LAW No. 13/2016
Indonesia new Patent Law No. 13/2016 has came into effect on August 26, 2016.
Below are some important changes in this new Patent Law:
- The scope of protection of simple patent has been widened, not only for new products or the improvement of existing products, but also for the process or the improvement of existing processes;
- A patent shall not be granted for the invention (discovery) of a new use of known or existing products and/or new form of an existing compound that did not provide any significant improvement in efficacy and have a difference of related chemical structure which had been previously known of the compound
- Affirmation on how to disclose or describe a patent specification or claims in the application are as follows:Patent specifications must clearly and comprehensively disclose/describe how the invention can be implemented by the expert in the respective field;
- Claims must clearly and consistently disclose/describe with regard to the substance of the invention, and also must be supported in the specification;
- If the invention is related to or sourced from genetic resources or traditional knowledge, the related genetic resources or traditional knowledge must be disclosed clearly and correctly in the patent specification. This regulation is in line with the Nagoya Protocol which is intended for Access Benefit Sharing as an effort to protect Genetic Resources and Traditional Knowledge;
- Revision of errors in the Patent Certificate can be conducted. The Patent Holder or his proxy may request a correction of the patent certificate which shall be made in writing to the Minister in case there are some errors in the patent registration certificate and/or the attachments. In case the error is caused by the Applicant, the correction request will be subjected to a charge of the official fee. In case the error was not caused by the Applicant, the correction request is free of charge.
- The Patent Appeal Commission’s authority is expanded that they have the duty to receive, examine, and decide:
- The appeal against the rejection of an application;
- The appeal against a correction of the description, claims and/or images after the application is granted (post grant amendment); and
- The appeal against the decision of a granted patent.
- An appeal petition shall be filed at the latest 3 months from the date of dispatch of the letter of refusal. An appeal petition against correction upon the description, claim, and/or image after the application was granted shall be filed at the latest 3 months from the date of dispatch of the letter of notification of allowance (granted). An appeal petition against the decision of a granted patent shall be filed at the latest 9 months from the date of notification of allowance.
There are some changes in the patent annuity payment mechanism as follows:
- The first payment (back fees) of the annuity patent must be made at the latest 6 (six) months from the date of the patent certificate issued; otherwise the patent shall be affirmatively deleted by the Ministry; The first time payment is calculated from the Filing date up to the grant date of the patent plus the annual fee for the next annuity (will be further stipulated by the Government Implementing Regulation);
- The next annuity payment shall be made at the latest 1 (one) month prior to the same date as the filing date in the next year of the protection period;
- Payment of annuity fees may be postponed for a maximum period of 12 (twelve) months from the deadline for the annuity payment by submitting a request to the Minister to use this grace period mechanism which has to be filed at the latest 7 (seven) days before the deadline ends;
- The payment using the grace period mechanism will be subjected to an additional 100% (one hundred percent) of the total amount of the respective annuity fees;
While using the grace period mechanism and the patentee has not made the annuity payment, the following shall apply:
- The patentee cannot prohibit another party to exercise or implement the said patent, conduct a license nor assign said patent to any third party;
- Any third party cannot exercise or implement said patent; and
- The patentee cannot file a civil lawsuit or criminal case proceeding;