Patents & Trademarks
Patents and trademarks in Indonesia – a comprehensive legal overview. Prepared in association with ABNR, a leading global law firm, this is an extract from The Pharma Legal Handbook: Indonesia, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
In order to obtain patent or trademark protection, the applicant must register them with the Directorate General of Intellectual Property (“DGIP”).
Trademark registrations are valid for 10 years and may be extended for another period of 10 years indefinitely.
Patent registrations are valid for a single term of 20 years (10 years for simple patents) as of the date of registration and is not renewable.
2. What agencies or bodies regulate patents and trademarks?
DGIP of the Ministry of Law and Human Rights (“MOLHR”).
3. What products, substances and processes can be protected by patents or trademarks and what types cannot be protected?
Under the Patent Law, a patent can be granted to an invention that fulfills the following criteria:
- Original, meaning that as of the date of registration the invention is different to any technology which has been disclosed;
- Contains inventive steps, meaning that the invention has not been predicted by persons having the relevant technical skills. While, for a simple patent, the invention must be an improvement/perfection of the existing product or process; and
- Is applicable to industry.
Patent cannot be granted to the following:
- process or product whose announcement, use, or implementation is contradictory with legislation, religion, public order, or morality;
- Methods of examination, treatment, medication and/or surgery applied to humans and/or animals;
- Theory and methods in the field of science and mathematics;
- Living things, except microorganisms; or
- Biological processes that are essential for producing plants or animals, except for nonbiological processes or microbiological processes.
Trademarks are granted to signs that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color arrangements, in the form of 2 and/or 3 dimensions and / or 3 (three) dimensions, sounds, holograms, or a combination of those elements to distinguish goods or services produced by people or legal entities in the activities of trading goods or services.
4. How can patents and trademarks be revoked?
Patents can be revoked partially or entirely based on:
- request from the patent holder that is granted by the MOLHR;
- final and binding decision of a court to revoke the patent;
- patent revocation decision is issued by the Patent Appeal Commission; or
- The patent holder does not fulfill the obligation to pay annual fees.
Revocation of registered trademarks can be done on the basis of the following:
1. request by the registered trademark owner or its proxy;
2. initiative of the MOLHR upon the recommendation of the Mark Appeal Commission if the trademark:
- has similarity in principal and/or its entirety with a Geographical Indication;
- is contrary to the state ideology, legislation, morality, religion, decency, or public order; or
- has similarity in its entirety with traditional cultural expressions, non-object cultural heritage, or names or logos that have been hereditary traditions.
3. final and binding decision of the commercial court upon a claim by interested third parties that the trademark has not been used for 3 consecutive years in the trading of goods and/or services from the date of registration or last use.
5. Are foreign patents and trademarks recognized and under what circumstances?
In general, registration of patents and trademarks in Indonesia applies territorially. Thus, any use of patent and trademark in the territorial of Indonesia will be protected only upon the registration of which by the DGIP.
Indonesian Patent Law recognizes three types of patent registration:
- Domestic Patent Registration;
- Registrations of patents with priority rights; and
- Registration of patents using the Patent Cooperation Treaty 1970 (“PCT”) administered by Intellectual Property Organization (WIPO).
The PCT Systems makes it possible to seek patent protection for an invention simultaneously in many countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. Nevertheless, the registration of patent in Indonesia by utilizing PCT Systems will still require formal registration with the DGIP.
As one of the members of the World Trade Organization (“WTO”), Indonesia is bound by the provisions of Trade Related Aspects of Intellectual Property Rights (TRIPs). Therefore, Indonesia recognizes priority rights.
Priority Rights is the right for legal entities/ individuals (holders of rights to the trademark) to submit applications originating from countries incorporated in the Paris Convention for the Protection of Industrial Property or Agreement Establishing the WTO to obtain recognition that the date of receipt in the country of origin is the priority date in the destination country which is also a member of one of the two agreements, as long as the submission is carried out within a predetermined period based on the Paris Convention for the Protection of Industrial Property.
Recently, Indonesia officially become the 100th member of the Protocol Relating based on the Madrid Agreement on the International Registration of Marks. Membership was made official by the deposit of an Indonesian instrument of accession, at the World Intellectual Property Organization on 2 October 2017. The Madrid Protocol came into force in Indonesia with the issuance of Government Regulation No. 22 of 2018 (“Regulation 22/2018”) on the Registration of International Marks based on the Madrid Agreement on the International Registration of Marks. Through the introduction of Regulation 22/2018, Indonesian trademark holders will able to utilize the Madrid System as an alternative method for the registration of their marks within the jurisdiction of Madrid Protocol member states and/or organizations.
6. Are there any non-patent/trademark barriers to competition to protect drugs or devices?
Most non-patent/trademark barriers to competition are outlined in various chapters above.
7. Are there restrictions on the types of drugs or devices that can be granted patent and trademark protection?
There are no restriction on the type of drugs or medical devices that can be granted patent and trademark protection in Indonesia to the extent that the products have complied with the prevailing laws and regulations, particularly in the health and intellectual property sectors.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
Every license agreement of patent or trademark that is registered in Indonesia must be filed with the DGIP for recordation. Otherwise, the license agreement cannot be enforceable on third parties.
Thus, assuming that the foreign licensor has registered the patent or trademark in Indonesia with the DGIP, the license agreement must be submitted to the DGIP. However, if the foreign licensor has not registered its patent or trademark in Indonesia, there is no requirement to register the patent or trademark license agreements with a foreign licensor.