NEW PATENT LAW ENACTED

In the effort of enhancing legal protection for the inventors and patentees, the Indonesian Parliament, recently passed new legislation concerning Patent amending the old law, enacted on August 26, 2016.

Several significant points to be noted among others are as follows:

1. New Inclusions in the scope of Simple Patent

Other than products, new process and development of the existing process are now included as subject matter for Simple Patent.

2. Second use and second medical use

New use of an existing/known product and/or new form of an existing compound without significant enhancement of efficacy, being second use and second medical use, shall no longer be patentable.

3. Substantive Examination Request

A request for substantive examination upon divisional application or patent conversion (from patent to simple patent and v.v.) must be filed by the time the application is filed, otherwise it will be deemed withdrawn.

4. Force Majeure in Formal Procedure

In the fulfillment of filing requirements, an applicant affected by any event of force majeure (e.g. war, revolution, riot, strikes, any natural disasters or other emergency circumstances), may file a request for another extension of time i.e. 6 (six) months at the longest as from the due date of the first 6 (six)-months extension.

5. Time Limit for Responding Office Action

A response to an office action must be filed at no later than 3 (three) months as from the date of notification, which is extendable for 2 months, plus another 1 month against payment of fee.

Force majeure circumstances mentioned in point 4 also applies in time limit for responding office action.

6. Annuity Payment

• New mechanism for patent annuity payment eliminates the obligation to pay outstanding annuities which is under the old law remains due to the patentee although the patent deemed null and void.
• According to the new law, the first annuity payment shall be attended at no later than 6 (six) months as from the issuance date of the letters patent, the payment of which must include fees for the next year annuity;
• The next payment of annuity shall be attended at no later than 1 (one) month before the date of which is the same date as the filing date within the next protection period;
• The annuity payment can be postponed for no longer than 12 (twelve) months by filing a request to the Ministry of Laws within 7 days before the annuity date against payment of 100% extra official fee calculated from the total annuity fees.

7. Bolar Provision for Pharmaceutical Patent

Under the new Law, any third parties may start to produce the patented product within 5 (five) years (which is much earlier than the time limit set-forth under the old law, ie. 2 years) prior to expiration of the patent protection for the purpose of marketing and obtaining license from The Ministry of Health, Drugs and Food Controller.

8. Post-grant Opposition

While the old Law did not provide post-grant opposition, it is now possible for any third party to challenge a patent after grant within 9 months as from the date of notification of the grant before the Patent Appeal Board.

9. Appeal Procedure

In addition to appeal to overturn rejection of an application, under the new Law the applicant may also file an appeal petition against any rectification upon description, claims, and/or patent drawing upon grant to the Paten Appeal Board.

10. Compulsory License

The provisions on the grant of compulsory licensing provided under the new law are extended to include the following:

• To produce pharmaceutical products which are patented in Indonesia for the purpose of treatment on human in disease;
• To import pharmaceutical products which are patented in Indonesia, yet not feasible for production in Indonesia for the purpose of treatment on human in disease;
• To export pharmaceutical products which are patented and produced in Indonesia for treatment on human in disease by the request of developing or under-developed countries.

11. Criminal Penalties

• Included in the criminal provisions: any person who committed patent infringement causing harm or defect to health and/or environmental shall be liable for max. 7-year imprisonment and max. IDR 1 billion fine.
• To induce a more deterrent effect to infringer, the imposition of fine penalties has been increased to a max of IDR 500 million (for simple patent), and max of IDR 1 billion (for patent).

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