Earlier this year the Indonesian Government issued the Ministry of Law and Human Rights Regulation No. 8 Year 2016 (the “Regulation”) on the recordal of Intellectual Property (IP) Licensing Agreements.
The Regulation applies to trademarks, patents, copyrights and neighboring rights and other intellectual property. The Regulation addresses a previous deficiency in Indonesia in that, without recordation, parties didn’t have the ability to enforce their licensed IP against third parties.
Previously without the implementing Regulation in place, parties were unable to record their licenses. Thus, the implementing Regulation presents a welcome development for parties in protecting their trademarks and other intellectual property in Indonesia.
The licensing recordal requirements and processes as stipulated in the Regulation are set forth below.
Recordal of licensing agreementsRequirements
Recordal of IP licensing agreement can be accomplished by:
- a) Filing an electronic request through the official Directorate General of IP (DGIP) website;
- b) Filing a written request to the Ministry of Law and Human Rights (MOLHR);
When filing a request, the following documents must be submitted to DGIP (or uploaded, if the request is done electronically):
- a) a copy of the licensing agreement;
- b) a copy or the official excerpt of the evidence of ownership of the trademark, patent, copyright and neighboring rights, industrial design, layout design of integrated circuit, trade secret being licensed;
- c) an original Power of Attorney, if the recordal request is filed through a proxy; and
- d) an original document evidencing official payment for recording a license agreement.
In addition to the above documents, the applicant must also upload or submit a statement letter which provides that the licensed IP being recorded is an object of IP which:
- a) is still valid;
- b) is not detrimental to the Indonesian economy;
- c) does not hamper technology development; and
- d) does not contravene Indonesian laws and regulations, good norms and public order.
Who should file the record
If the owner of the IP being licensed is a foreign entity, the recordal request must be submitted by the Indonesian IP Consultant. The same also applies if the recordal request is filed by a foreign entity.
Examination of licensing agreements
After filing, the request will be examined by the DGIP officer to see if the request meets all the requirements. The examination will take place within 10 working days after the recordal request is accepted.
If the DGIP indicates there are further necessary information and/or documents to submit, the applicant must provide the further information and/or documents within 10 working days after receiving the notification from the DGIP.
Once the submission is deemed completed, then the request will be recorded and published on the official DGIP website.
The time period for the recordal is 5 years. If the 5-year period finishes, the applicant can file a new request by paying the official fees in accordance with the prevailing laws and regulations.
Present Situation on License Recordal
To date more than 20 applications have already been filed. All of these applications, however, are still in the examination stages.
The Regulation provides a great step forward for Indonesia as it continues to take steps to enhance and further the positive development of intellectual property rights and processes.