Problems relating to Trade and Investment on Indonesia

17. Implementation of intellectual property rights ("IPRs")
Issue	Issue details	Requests	Reference

(1) Unauthorised Applicant's Voluntary Submission of Corresponding Foreign Patents

- It takes 6 to 7-years in average in Indonesia for the examination to begin from the filing date of patent application. To expedite issuance of patent right, it is preferable to allow the applicant's voluntary submission of the corresponding patents application overseas. However, no such provision is incorporated into the Law.
Article 28 of Indonesia Patent Law enables the Directorate General to request a copy of the documents pertaining to the substantive examination of the first patent application overseas. However, it does not provide for the applicant's voluntary submission of materials concerning the corresponding patent application overseas.

- Malaysia and Singapore have adopted modified substantive examination (MSE) system that expedites examination by submission of the registered claim in the corresponding patents application overseas.
Vietnam and Thailand employ in substance modified substantive examination (MSE) system, without, however, legislative provisions. It is requested that Indonesian Patent Office considers adoption of the MSE system.

- Indonesia Patent Law, Article 28

(2) Unauthorised Filing of Divisional Applications upon Examiner's Decision of Refusal	- Applicants are not authorised to file divisional applications upon examiner's decision of refusal.	- It is requested that Directorate General of IPRs (DJHKI) takes steps to enable filing divisional applications upon examiner's decision of refusal.	- Indonesia Patent Law, Article 36
	(Action) - Patent Act (No.14 Year 2001) under Article 36 provides: "An applicant may request that an application be divided if the said application contains a number of inventions that do not constitute a unity of invention as referred to in Article 21." "The request for the division of an application as referred to in paragraph (1) may be filed at the latest before the original application is granted a decision as referred to in Article 55 paragraph (1) or Article 56 paragraph (1)."

(3) High Cost of Filing Patent Application

- The costs are too expensive at Indonesian Sub-Directorate of Patent. Especially expensive is the annual maintenance fee (ANF) corresponding to the pending applications in aggregate ANF payable upon filing the application.

- It is requested that DJHKI takes steps to repeal or reduce the amount of ANF.

(4) The System that voids the Patent Right from failure to pay the Annual Patent Fee

- Patent right will be maintained for 3-years after patent holder's ceasing to pay the annual fee, and patent holder shall be liable to pay the annual fee and the additional collection during the period of no payment of the annual fee.
In major countries such as the U.S. and EU, generally, certain additional payment/ recovery period is provided so that there can be no continuation of the patent right without the patent holder's intent.
A member firm adopts the patent rights management, whereby non-payment of annual fee equals waiver of patent right, so that making the system change for waiver of patent right on the Indonesian cases alone, means its assumption of additional cost and work-time.

- It is requested that GOI aligns the waiver provisions in line with the world major states and introduces the system whereby additional payment or non-payment of annual fee shall be regarded as lapsed, with retroactive effect to its filing date.

- Patent Act Article Nos. 88, 89, 90, 115, & 116

(5) Insufficient Disclosure of IPRs Information	- In the developing countries, including Indonesia, where needs for patent issuance are rising, due to the inadequate database for statistical data and information such as the number of pending patent application, it is difficult for the patent applicant to ascertain the risks from the patents of other firms.	- It is requested that DJHKI takes steps to: -- advance collaboration with Patent Offices of the leading countries and -- perfect its own database IPRs.
	(Improvement) - Statistical Information in Indonesia such as the application numbers may be ascertained at "Intellectual Property Application Status Search": Directorate General of Intellectual Property (http://www.dgip.go.id/).

(6) Rampant Counterfeits/ Pirate Editions / Inadequate Clampdown

- Products bearing similar trademarks (mainly manufactured in PRC) are rampant in the Indonesian market. Although legislative schemes are well organised, there is absence of mechanism to clamp down on the counterfeits.

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