Government Regulation No. 36 of 2018 regarding Recordation of the Intellectual Property License Agreements
Under GR 36/2018, any application to record an IP license agreement submitted before 27 July 2018 will still be processed under the provisions of MR 8/2016. The provisions of MR 8/2016 that do not conflict with GR 36/2018 are still considered valid.
Important points of GR 36/2018:
Minimum Requirements for License Recordal
IP license agreements in foreign languages should be translated into Bahasa Indonesia. IP license agreements must not contain any provisions that may lead to unfair competition. The agreements should at least contain the following provisions:
Under GR 36/2018, the recordal of an IP license agreement will be valid for the term of the license agreement. This is different from the provision of MR 8/2016 which stipulates that a recordal of an IP license agreement will be valid for five (5) years.
The provision under GR 36/2018 may be applicable to those IP rights that do not require registration in order to be protected (e.g., copyright and trade secrets).
If a copyright license agreement covers several copyright works under different titles and the related rights consist of several titles or work of Intellectual Property objects with the same parties in the License Agreement, the applicant can submit one recordal application to cover those copyright works.
Amendment and Revocation
If there is any amendment to the name of either the licensor or the licensee, or the licensed IP rights, the applicant should file a new application for IP license recordal to the DGIP. However, if the amendment is related to: (i) a party’s address; (ii) a provision on whether the license is exclusive or non-exclusive, as well as any possible sublicensing clauses; (iii) term; (iv) territory; or (v) termination, the applicant only has to notify the amendment to the DGIP.
A recordal of an IP license agreement can also be revoked based on: a) consent of both the licensor and the licensee; b) court decision; or c) other reason justified based on prevailing laws and regulations.
Notification of License Recordal
GR 36/2018 stipulates that the DGIP will issue a confirmation letter of the IP license recordal within two (2) days after the examination process is complete. This would supplement relevant provisions in MR 8/2016 that stipulate that the approved recordal request will be published on the DGIP’s official website.
Kusno Hadi Kuncoro (Patent & Trademark Attorney at Batavia Patentservis Asia)