Amendments to Indonesian Patent Law Come into Effect

Several fairly significant amendments to Indonesian Patent Law came into effect on August 28, 2016. Some of the key changes include:

  1. Claims directed to second use or second medical use are no longer permitted. This change to Indonesia’s law aligns the country with other countries such as India and Vietnam which also prohibit such claims.
  2. Statement of Ownership. The amendments require the submission of a Statement of Ownership of an invention, signed by the applicant, when filing a patent application. Such a requirement is already in existence for trademarks and industrial designs.
  3. Statements regarding Genetic Resources and Traditional Knowledge. The amendments require that inventions related to and/or derived from genetic resources or traditional knowledge to clearly stipulate in the specification the origin of the genetic resources or traditional knowledge.
  4. Use of patents as fiduciary objects. The amendments allows patents to be used as fiduciary objects (such as a guarantee between a debtor and a creditor). Under the previous law, patents could not be used for such securitization.
  5. Introduction of online filing. Under the amendments, an online filing system will be introduced to allow applicants to file patent applications on the Internet. Previously, applicants had to manually file patent applications at the Directorate General of Intellectual Property’s Office.
  6. Restructuring of the grace period for paying annuities. Under Indonesian patent law, a patent will be considered null and void if annuities are not paid by the requisite due date. However, according to the amendments, an extension of up to 12 months can be requested. Under the previous law, annuities could be paid up to three years from the due date. If annuities were not paid within three consecutive years, the patent would be deemed null and void. Moreover, even if a patent was allowed to lapse due to non-payment of annuities, a Patentee was still obligated to pay the annuities. As a result of the amendments, this obligation to pay outstanding annuities has been eliminated.
  7. Availability of post-grant oppositions. Post-grant oppositions of patents are now available to third parties in addition to pre-grant oppositions.
  8. Expansion of the Appeal Commission Authority. The role of the Patent Appeal Commission (Commission) has been expanded as a result of the amendments. Previously, the Commission only examined appeal petitions of rejected patent applications. Now the Commission has the authority to receive, examine and decide on the appeal petitions of:
    1. A refused application;
    2. A correction of a patent specification, claims, and/or drawings after the application has been granted; and
    3. Notice of a grant decision with respect to a post-grant opposition.
  9. Scope of simple or “petty” patents. The scope of simple patents has been expanded to include new processes or the development of an existing process.
  10. Additional exemptions to patent infringement. Two acts are now specifically excluded from patent infringement. These acts include:
    1. Importation of a pharmaceutical product patented in Indonesia where the product is legally marketed in another jurisdiction without the permission of the patent owner; and
    2. Manufacturing of a pharmaceutical product which is patented in Indonesia within five years before the patent expires, for purposes of licensing and marking after the patent expires (e.g., a “Bolar” exemption).
      The exemption regarding importation of a pharmaceutical product described in a) is intended to help ensure that pharmaceutical products are reasonably priced and that access to such products is widened. This exemption can be exercised if it is proven that the price of a certain pharmaceutical product in Indonesia is very high compared to the price in the international market. The exemption is limited to “pharmaceutical products” and does not allow parallel imports of non-pharmaceutical products.
  11. Expansion of the scope of compulsory licenses. Under the new law, a grant of a compulsory license can be made to:
    1. Produce a pharmaceutical product patented in Indonesia for the treatment of a disease;
    2. Import a pharmaceutical product patented in Indonesia that cannot be manufactured in Indonesia presently for purposes of treating a disease; and
    3. Export a pharmaceutical product patented in Indonesia that is manufactured in Indonesia for the purpose of treating an endemic disease (such as upon request by a developing or least developed country).

Please continue to watch the BRIC Wall Blog for updates on Indonesian patent law.

This post was written by Lisa L. Mueller.

An Overview of the USTR’s 2016 Special 301 Report

On April 12, 2016, the Office of the United States Trade Representative (USTR) released its 2016 Special 301 Report (Report). The Report is an annual review of the state of intellectual property rights (IPR) protection and enforcement in U.S. trading partners around the world and is conducted by the Office pursuant to Section 182 of the Trade Act of 1974, as amended by the Omnibus Trade and Competitiveness Act of 1988, The Uruguay Round Agreements Act, and the Trade Facilitation and Trade Enforcement Act of 2015 (19 U.S.C. §2242).

The Report identifies a number of wide ranging concerns, including: (1) the deterioration in IPR protection and enforcement in several trading partners; (2) reported inadequacies in trade secret protection in China, India, and elsewhere; (3) troubling “indigenous innovation” policies that may unfairly disadvantage U.S. right holders in markets abroad; (4) the continuing challenges of online copyright piracy; (5) measures that impede market access for U.S. products embodying IPR and U.S. entities that rely upon IPR protection; and (6) other ongoing systemic IPR enforcement issues in many trading partners around the world.

During the 2016 Special 301 process, seventy-three (73) trading partners were reviewed. Following extensive research and analysis, eleven (11) countries were placed on the priority watch list and twenty-three (23) on the watch list. The countries on the priority watch list and watch list are as follows:

Priority Watch List

Algeria

Argentina

Chile

China

India

Indonesia

Kuwait

Russia

Thailand

Ukraine

Venezuela

Watch List 

Barbados

Bolivia

Brazil

Bulgaria

Canada

Colombia

Costa Rica

Dominican Republic

Ecuador

Egypt

Greece

Guatemala

Jamaica

Lebanon

Mexico

Pakistan

Peru

Romania

Switzerland

Turkey

Turkmenistan

Uzbekistan

Vietnam

In the next series of posts, the BRIC Wall Blog will examine in detail the Report’s findings on the countries included on the priority watch list and watch list.

This post was written by Lisa Mueller.