The following are some important points and/or changes in the two ministerial regulations issued by the Indonesia’s Ministry of Law and Human Rights during end of 2018 until 2019.
- Minister Regulation No. 38 of 2018 concerning Patent Application, effective on December 28, 2018.
- Time limit for filing a divisional application during substantive examination stage has now been specified to 3 months.
In the previous practice, a divisional application could be filed at any time before the issuance of final decision of the parent application. Under new regulation, Applicant could still file a divisional application voluntarily before issuance of first office action. However, in case a divisional application is to be made during substantive examination stage, i.e. after issuance of any office action or commencement of communication with the patent Examiner involving suggestion to divide an application due to unity of invention issue, the new regulation allows filing of a divisional application only within three months from the submission date of the applicant’s response to the office action stating that the applicant agrees to file a divisional application. Within such 3 months period, the Examiner shall not conclude a final decision over the parent application. Further, in the absence of Applicant’s filing of a new divisional application after prescribed 3 months period, then the Examiner will examine any of the first group of claims. Applicant should be aware of losing its right to pursue the remaining group(s) of claims.
- Petty patent applications derived from the PCT application cannot be filed in Indonesia.
In previous practice, Applicant could file a petty patent application derived from a PCT or a non-PCT application. Under new regulation, an application based on the PCT can only be filed as a (standard) patent application. The Indonesian Patent Office (DGIP) will only accept petty patent applications based on non-PCT applications.
In addition, while conversion from patent to petty patent, or vice versa, is still recognized under new patent law for non-PCT-derived applications, a patent application derived from a PCT application cannot be converted into a petty patent application.
- Accelerated patent substantive examination (PPH or ASPEC).
According to the new regulation, applicants may file a request for accelerated patent substantive examination under PPH (bilateral cooperation between DGIP and a foreign IP Office, currently only Japan Patent Office) or ASPEC (regional cooperation between DGIP and ASEAN countries). Request for accelerated examination under ASPEC can be submitted before final stage of Office Action and until now there is no official fee is prescribed by the DGIP for this service. In a different manner, similar request under PPH could be filed only after a patent application passes the publication period in Indonesia but before the issuance of first Office Action. The request under PPH is subject to an official fee in amount of IDR 5.000.000.
- Possibility of filing a request for judicial review against withdrawn decision’s of patent or petty patent applications.
As it is known from previous practice, in the event that a patent application has been considered withdrawn (by DGIP or voluntarily by the Applicant), it cannot further proceed for reinstatement. However, considering the importance of the invention for the applicant, the new regulation allows applicants to file a request for judicial review against a DGIP’s decision to withdraw a patent or petty patent application. The request must include a reason, and is subject to a fee based on the statutory provisions. This request for judicial review must be filed within six months from the date of the notification of withdrawal. However, at the time of writing, while many requests for judicial review have been filed by practitioners, and some of which were given positive decisions with revocation of withdrawn cases at numerous stages followed by reinstatement back to normal procedures, there are still no provisions regarding official fee as penalty for filing a request for such judicial review. This provision will be very helpful for many relevant applicants. Details of provisions and fees need to be set furthermore by the DGIP.
- Shorter time for fulfillment of missing formality requirements for petty patent application.
According to new regulation, applicants must provide any missing formality requirements within a maximum of one month from the date of issuance of the DGIP’s notification of the missing formality requirements. There is no possibility for extension. This one-month period for fulfillment of the formality requirements is a drawback to the previous three-month allowance under the old regulation.
- Possibility of filing recordal of change of pending patent applications.
Under previous practice, recordal of change was only permissible for granted patents. However, the new regulation allows applicants to record the change of name, address, and assignment, for both granted patents and patent applications.
- Substantive examination and patentability requirements.
Although a manual for substantive examination procedure has not yet been issued for use by patent practitioners, the new regulation summarizes the overall aspects of examination of patent applications in Indonesia, which includes examination of novelty, inventive step, and industrial applicability. The application must also fulfill other requirements, such as: clarity of disclosure of the invention; unity of the invention; consistency of the disclosure of the invention; support of claims by the description; sufficiency of the disclosure of the invention; and clarity of the claims.
During examination, Patent Examiner may consider to use following documents:
- Patent application documents filed in Indonesia or abroad that have been issued before the filing date of the application (or the priority date if the application claims the priority right);
- Patent documents granted in Indonesia or abroad where the date of publication is before the filing date of the application (or the priority date if the application claims the priority right);
- Non-patent documents published (in Indonesia or abroad) before the filing date of the application (or the priority date if the application claims the priority right);
- An application filed in Indonesia published on or after the filing date of the application for which a substantive examination is being carried out, but the filing date or priority date of such application was filed in Indonesia earlier than the filing date or the priority date of the subject application for which the substantive examination is being examined;
- Evidence of general knowledge that has been made known in the field of technology (prior art) to the invention specified in the application; and
- Comments or objections filed by the community, as well as rebuttal or explanations of the comments or objections.
From practitioners’ point of view, during the last 12 months, patent examination has been improved in term of speed of process which is generally faster. However, quality and accuracy of office actions resulted were sometime still not consistent.
- Relaxation for the preparation and submission of a microorganism certificate for a microorganism-related invention.
In previous practice, applicants could only submit a microorganism certificate from a foundation or international depository authority recognized by Budapest Treaty. Under new regulation, applicants may submit certificates from either a foundation or institution recognized by the Budapest Treaty, or from a local scientific foundation or institution approved by the Indonesia’s Ministry of Law and Human Rights.
Information that must be contained in the microorganism certificate are: sufficient explanation of characteristics or specifications of microorganism; name of microorganism; date of submission for deposition; name of the depository authority; and accession number of the microorganism.
This certificate should be filed within three months from filing date, and an extension can be requested.
B. Minister Regulation No. 3 of 2019 concerning Patent Appeal Commission (PAC), became effective on 12 February 2019
Under the new regulation, the authority of PAC is now extended to also accept, examine and decide on:
- appeal filed against the refusal of an application, which is to be filed within 3 (three) months as of the delivery date of the notification of refusal;
- appeal filed in relation to post-grant request for correction to description, claims, and/or drawings, which is to be filed within 3 (three) months as of the delivery date of the notification of allowance;
- appeal filed against a notification of allowance (post-grant opposition), which is to be filed within 9 (nine) months as of the date of the notification of allowance.
Kusno Hadi Kuncoro (Patent & Trademark Attorney at Batavia Patentservis Asia)