Extending patent deadlines in Indonesia

Date: 2019-03-12
Author: Karen Bentley

Indonesia, the fourth most populous country in the world, is an increasingly popular patent filing destination. Perhaps in recognition of the need to continue to enhance the reputation of Indonesia as a patent filing destination, recent changes to Indonesian patent regulations introduce some leeway for patent applicants when it comes to some deadlines. And an extension of the deadline to pay annuity debts that accrued under the old law is very welcome news for those who missed the first deadline, and with it, their ability to file future applications in Indonesia.

1. Payment of annuity debts accrued under the old Indonesian law

As detailed in our earlier article, under the old Indonesian patent law, a patent could only be deemed abandoned, and no longer subject to annuity payments, by the patent owner submitting a request of abandonment to the Directorate General of Intellectual Property (DGIP). As such, patent owners who attempted to abandon their patents by non-payment of annuities without submitting the abandonment request still owed an obligation of annuity payment to the DGIP. And while a new law in August 2016 removed the obligation on patent owners to pay annuities on patents that lapse, the new law did not eliminate the old law obligation. Patent owners in Indonesia were still liable for any ‘annuity debt’ that accrued under the old law. And unless any such debt was settled in full by 16 February 2019, the DGIP intended to refuse to accept any new patent applications from that patent owner, essentially barring them from obtaining patent protection in Indonesia from February 2019 onwards.

In a circular dated 17 February 2019, the DGIP confirmed that they were extending the deadline to pay back annuities by 6 months from the date of the circular ie by 17 August 2019. DGIP acknowledged that many patent owners were still not aware of the obligations. But on the other hand, DGIP had also been overwhelmed with payments, and required more time themselves to process the payments.

This is welcome news for patent holders who have only just been made aware of their annuity debt obligation. And indeed, if you are still unsure of whether you or a client have patents on which a debt is owed, FPA Patent Attorneys can assist by identifying such patents and the outstanding debt amount, and assisting with payment in order to secure future patent filing rights Indonesia.

2. Missed filing and prosecution deadlines

A new regulation has recently been enacted which now provides patent applicants with an opportunity to revive an application that lapsed as a result of a particular action not having been taken by the deadline. If, within 6 months of the missed deadline the applicant pays the requisite fees and provides an acceptable explanation of the reasons why the deadline was missed, a lapsed application can be revived in particular circumstances including:

  • Failing to file a translated specification
  • Failing to respond to a patent office notification of inadequacies identified during the post-filing administrative review
  • Failing to comply with the administrative requirements and/or payment of fees
  • Failing to file an examination request and pay the fees
  • Failing to respond to the examination report (in the extended period)

Again, in a jurisdiction which has some relatively short deadlines, this ability to revive a case when you inadvertently missed a deadline should come as welcome news to patent applicants.