Indonesia amended its Patent Law on 28 October 2024 in an effort to better align with international patent practice.
Based on our current understanding, unless explicitly indicated otherwise, applications filed before 28 October 2024 (including divisional applications filed after 28 October) will be subjected to the previous Patent Law. Applications filed on or after 28 October 2024 will be subjected to the amended Patent Law.
Some key changes are as follows:
Computer-implemented inventions (CIIs), the Internet of Things (IoT), and Artificial Intelligence (AI)
Although CIIs are already acknowledged as patentable under the previous Patent Law, inconsistent interpretation by Examiners have led to some uncertainty. To address this, the definition of “invention” has been broadened to include systems, methods, and uses, offering clearer guidance and distinguishing CIIs from traditional software protected by copyright. This standardization aims to ensure consistent legal protection for advanced technologies and better reflect their technical contributions.
Pharmaceutical inventions
Under the new Patent Law, any invention including (1) a new use of an existing substance or composition and/or known for one medical use that may be patentable for a second or subsequent medical use and (2) new form of an existing compound is patentable, provided that the new use and new form are novel and inventive. This second medical use may relate to the use of a known drug to treat a new disease or the use of a known drug to treat a known disease using a new therapeutic method. Claims directed at a new medical use of a known medicament that covers new dose/dosage regime, new mode/frequency of administration and new patient group are not allowable even if they are in the “compound which is used for” format.
Bolar provision and Parallel import
Bolar provisions under the new Patent Law allow third parties to test, use and manufacture patented pharmaceutical product at any time before the patent protection expires for the purpose of seeking approval from the Indonesian Food and Drug Authority (BPOM). Such testing, using and manufacturing process of patented pharmaceutical product is for marketing approval only, not for commercial activities.
Parallel import provisions under the new Patent Law allow the importation of patented pharmaceutical products so that prices are reasonable for the local population.
Government use
The Government may use a patent in Indonesia if it is related to national defence and security, or urgent needs and interest of society comprising pharmaceutical products, health devices and/or biotechnology that are expensive and/or needed to treat diseases that are public health emergencies. This Government Use is limited to meet domestic needs and is non-commercial. In the event that the Government cannot work the patent, the patent will be worked by the patent owner with Government approval. The Minister can enforce the Government Use to 1) import pharmaceutical products that are patented in Indonesia but cannot yet be produced in Indonesia for the treatment of diseases and 2) to export pharmaceutical products that are patented and produced in Indonesia for the treatment of diseases based on requests either from developing or underdeveloped countries. Government Use shall not compromise the rights of patent holders to exercise their exclusive rights.
Patent prosecution changes
Under the new Patent Law, if an Applicant fails to file an Indonesian application via the Paris convention by the 12-month deadline, it may be possible to request for restoration of a priority right within 16 months from the earliest priority date.
The grace period to exclude public disclosure for patentability assessment in Indonesia is extended from 6 months to 12 months, i.e., the Applicant may file the application within 12 months from the date of disclosure, provided that the public disclosure is made under prescribed circumstances.
A Statement of Ownership signed by the inventors is no longer required to be submitted when filing an application in Indonesia.
If an invention relates to genetic resources and/or traditional knowledge, a Statement of Origin must be submitted at the time of filing.
Also, there is now an opportunity to reinstate an application within 6 months from the date of the notification of withdrawal.
Early publication of an application can also be requested.
Re-examination
Re-examination can now be requested and is conducted by the Directorate General of Intellectual Property Rights (DGIP) Office. This re-examination process is primarily provided as a mechanism for applicants to continue prosecution of an Indonesian application. Example scenarios are provided as follows.
If a Notice of Allowance or Rejection is issued or the application is deemed to be withdrawn
The Applicant may request re-examination to continue prosecution of an application after a Notice of Rejection is issued for the application or the application is deemed withdrawn by the DGIP. The request for re-examination must be filed within nine months from the date of issuing the Notice of Rejection or the date that the application is deemed withdrawn.
Further, the Applicant may also request re-examination to correct allowed/granted description, claims, and/or drawings after a Notice of Allowance is issued for an application. The request for re-examination must be filed within nine months from the date of issuing the Notice of Allowance.
If Active Withdrawal was Requested
After actively withdrawing an application, the Applicant may request for re-examination to continue prosecution of the actively withdrawn application. The request for re-examination must be filed within two months from the date of the official notification notifying that the application has been actively withdrawn.
Objection on decision to grant a patent
Third parties may request re-examination if they wish to object to a decision Notice of Allowance. The request for re-examination must be filed within nine months from the date of issuing the Notice of Allowance.
Early substantive Examination
Early substantive examination can be conducted after formality requirements of an application are completed. This early substantive examination request must be filed before the application is published. The result of the substantive examination will be issued after the publication period is over.
Annual working statement
Under the new Patent Law, patentees are required to submit a “working statement”. Our understanding is this applies to all granted patents (regardless of filing and grant date) with effect 1 January 2025. The deadline to submit the “working statement” is the anniversary of the filing date.
Compulsory license
A compulsory license may be granted under certain circumstances, e.g. a patent owner fails to work his patent, the patent is implemented in any form that harms the public interest.
For more information or if you have any related questions, please do not hesitate to reach out to the team.