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10/09/2020

Indonesian Intellectual Property Law: New Regulation Updates Rules on Patent Transfers

 

The Government has issued an important and long-awaited ancillary / implementing regulation for the 2016 Patent Law.[1] The new regulation, Government Regulation No. 46 of 2020 ("GR 46"),[2] sets out revised requirements and procedures for the registration of patent transfers and revokes the previous regulation on the same topic, namely, Presidential Regulation No. 37 of 2010 (the “Previous Regulation”). GR 46 entered into effect on 11 August 2020.

 

The key takeaways from GR 46 are as follows:

 

  1. recognition of waqf (wakaf) as a legitimate means of transferring a patent,
  2. online system for patent-transfer recordation,
  3. exemption from annuities in certain cases,
  4. revised mechanism for release of patents, and
  5. new rules that allow foreign applicants to have local legal domicile.

 

1. Recognition of Waqf as Legitimate Means of Patent Transfer

 

Waqf (also wakaf) refers to an inalienable charitable endowment under Islamic law that may be established over both immovable and moveable property, including intellectual property rights.

 

Under the Previous Regulation, a patent could only be transferred by way of (a) inheritance; (b) grant; (c) last will and testament; (d) written agreement; or (e) other means permitted by law.

 

GR 46 now recognizes waqf as an additional means by which patents may be transferred. The recordation of such transfer requires the submission of a waqf pledge deed issued by an authorized official to the Directorate General of Intellectual Property (“DGIP”).

 

2. Online System for Patent-transfer Recordation

 

GR 46 allows applications for the recordation of patent transfers to be made online. This is a significant development as previously such applications had to be made in person through a physical visit to DGIP.  

 

In addition, the completion of a patent transfer can now be announced through electronic and/or non-electronic media whereas previously the announcement had to be made through the official gazette for patents published by the Ministry of Law and Human Rights.

 

3. Exemption from Requirement to Pay Annuities

 

In general, the recipient of a patent transfer is responsible for paying annuities (annual maintenance fees) on the transferred patent . However, GR 46 provides exemptions in the  following circumstances: (a) the patent has been licensed to another party based on a licensing agreement; or (b) the patent is used by government in accordance with the laws and regulations on government patent use (for a discussion on government patent use, click here). 

 

4. Release of Patent Rights

 

Under the Previous Regulation, if a recipient of a patent by way of inheritance, grant, last will and testament, written agreement, or other means permitted by law is unwilling to hold the patent, then the recipient may make a declaration of patent release and submit it to the Directorate General of Intellectual Property, which will then cancel the patent.

 

However, the Previous Regulation made no provision for a situation where the recipient of a patent consists of more than one party and only one party wished to release its rights over the patent. This issue has now been resolved by GR 46:- if more than one recipient become the holders of a transferred patent, then in the event that one or more of the recipients decide to release the patent, DGIP will re-record the patent in the names of the remaining recipients. A transferred patent will only be cancelled if all of the recipients agree to release their rights over it.

 

5. Domicile of Foreign Applicant

 

Under GR 46, a foreign applicant that does not reside or have a permanent domicile in Indonesia but which wishes to apply for the recordation of a patent transfer  may do so by using the address of an intellectual property consultant based in Indonesia.

 

Previously there was some uncertainty as to whether a foreign applicant could use an IP consultant’s address as their domicile in Indonesia. GR 46 now confirms that this is permissible.

 

Contact us

 

Should you have any queries on the above or require legal advice as to how you can best protect your interests during this time of uncertainty, please contact the persons below, call us on +6221-2505125 or email us at info@abnrlaw.com.

 

Mr. Emir Nurmansyah (enurmansyah@abnrlaw.com)

Mr. Nafis Adwani (nadwani@abnrlaw.com)

Mr. Agus Ahadi Deradjat (aderadjat@abnrlaw.com)

 

[1] Law No. 13 of 2016 on Patents (Undang-Undang No. 13/2016 tentang Paten).

[2] Peraturan Pemerintah No. 46/2020 tentang Syarat dan Tata Cara Pencatatan Pengalihan Paten.

 

This edition of ABNR News and the contents hereof are intended solely to provide a general overview, for informational purposes, of selected recent developments in Indonesian law. They do not constitute legal advice and should not be relied upon as such. Accordingly, ABNR accepts no liability of any kind in respect of any statement, opinion, view, error, or omission that may be contained herein. In all circumstances, you are strongly advised to consult a licensed Indonesian legal practitioner before taking any action that could adversely affect your rights and obligations under Indonesian law.