ASIAN PATENT ATTORNEYS ASSOCIATION Recognized Group of Indonesia COUNTRY REPORT 62 nd Council Meeting, Hanoi, Vietnam, 19-22 October 2013 By Migni Myriasandra Noerhadi 1. Statistics of the total numbers of Patent, Simple Patent, Trademark, Industrial Design filed with the Directorate General of Intellectual Property Rights (DGIPR) in 2013 PATENT & SIMPLE PATENT APPLICATIONS PATENT PCT+NON PCT Year Domestic Foreign TOTAL Appl. Granted Appl. Granted Appl. Granted PATENT APPLICATIONS 1991 2009 3.233 603 64.456 24.360 67.689 24.963 2010 508 115 4.997 2.278 5.505 2.393 2011 210 95 3.010 1.196 3.220 1,291 2012 N/A N/A N/A N/A N/A N/A Jan - Aug 2013 227 59 4.330 1.643 4.557 1.702 Total 4.178 872 76.793 29.477 80.971 30.349 Year SIMPLE PATENT APPLICATIONS SIMPLE PATENT (UTILITY MODEL DESIGN) Domestic Foreign TOTAL Appl. Granted Appl. Granted Appl. Granted 1991 2009 2.551 751 762 581 3.216 1.332 2010 251 74 38 10 289 84 2011 115 23 28 3 143 26 2012 N/A N/A N/A N/A N/A N/A Jan Aug 2013 136 38 55 4 191 42 Total 3.053 886 883 598 3.839 1.484 Page 1
TRADEMARK APPLICATIONS Year TRADEMARK New Applications Renewal Applications Domestic Foreign Trademark Service mark TRADEMARK APPLICATIONS 2001-2009 281.367 100.043 285.503 71.840 103.966 2010 43.269 4.525 37.784 10,010 12,392 2011 50.653 2.543 41.071 12.125 14.560 2012 62.455 44.624 14.231 17.820 Jan Aug 2013 41.001 30.804 10.197 13.719 TOTAL 585.856 439.786 118.403 162.457 GEOGRAPHICAL INDICATION Year Application Administration Substantive Complete Examination Withdrawn Published Registered Reject 2007 6 - - - - - - 2008 1 - - - - 1-2009 5 - - 1-1 - 2010 5 1-2 - 4 1 2011 8-1 1-6 1 2012 9 1 1 - - 5 - Jan - Aug 2013 2 1 - - 5 3 - TOTAL 36 3 2 4 5 20 2 INDUSTRIAL DESIGN INDUSTRIAL DESIGN YEAR New Application Domestic Foreign Registered Rejected 2009 3,601 600 2,045 652 2010 2.987 1.060 4.538 3.683 2011 2.738 1.458 5.367 620 2012 N/A N/A N/A N/A 2013 N/A N/A N/A N/A Page 2
INTELLECTUAL PROPERTY CASE HANDLED BY JAKARTA COMMERCIAL COURT FROM JANUARY JUNE 2013 NO CASES TRADEMARK COPYRIGHT PATENT INDUSTRIAL DESIGN TOTAL 1 Ongoing 2012 30 5 1 2 38 2 New 30 2-2 34 3 Completed 35 6 1 2 44 4 Withdraw - - - - - 5 Ongoing 25 1-2 28 process TOTAL 30 2-2 Source: Jakarta Commercial Court 2. Changes in Intellectual Property laws or examination standards The Null and Void of Patent due to the negligence of Annuity Payment In early 2013 the Directorate General of Intellectual Property (DGIP) issue a notification to the patent holder regarding the obligation to pay the annuity/maintenance fee for granted patent. This action was based on Article 116 paragraph (2) of Law No. 14 of 2001 regarding Patent. The action was taken by the DGIP, since it was started from the data founded by the Audit Board of the Republic of Indonesia (BPK) at the DGIP, that there are 2.425 of patent applications which have been granted still remain unpaid. This matter becomes a problem for DGIP, since it is considered as a national debt. Pursuant to Article 88 Law No. 14 of 2001, a patent holder should pay the annual/maintenance fee. Further, if the patent holder did not fulfill his/her obligation to pay the annuity/maintenance fee the patent will be deemed Null and Void. Based on the said founding and article as regulated in Law No. 14 of 2001, DGIP issued a notification letter to the patent holder instructing them to fulfill his/her obligation to pay the annuity/maintenance fee or if they neglect to pay the said fee, the patent will be deemed Null and Void. Beside the notification letter sent to the patent holder, the DGIP also placed an announcement in their website and it is written as follow: Page 3
IMPORTANT NOTICE DIRECTOR GENERAL OF IPR WILL INVALIDATE PATENT THAT DO NOT PAY ANNUAL FEE The Directorate General of IPR cq Ministry of Law and Human Right would invalidate the patent which the patent holder does not fulfill the obligation to pay the annual fee for 3 consecutive years At the present, there are thousands of patent for which the annual fee has not been paid. Whereas in accordance with the provisions as stipulated in Law No. 14 of 2001 concerning Patent if within 3 (three) years the patent holder does not pay the annual fee, the patent will be null and void. DGIP remind to all patent holders that they have to immediately comply with their obligations to deposit the said fee to the state treasury, since it is non-tax revenue that must be settled. Many foreign patents are actually in arrears, therefore DGIP appealed to the IP Consultant who process the filing of foreign patent applications as referred hereto to also remind the patent holder to immediately fulfill their obligations More information for patents that potentially Null and Void can be checked at the DGIP This matter become a hot issue since there is still pros and cons regarding the obligation to pay the annual fee even though the patent has been abandoned or even become a public domain. Based on this issue, on June 27, 2013 APAA Indonesia Group held a Forum Group Discussion (FGD) with the topic: Dissecting problem in regard with the Null and Void of Patent due to the negligence of Annuity Payment: Solution and Anticipation. This discussion is aimed for the parties that still unclear with the notification which has been issued by the DGIP, so they can interact actively with the DGIP and understand the matters clearly. The speakers of this FGD are Mr. Razilu (Director of Information Technology) and Mr. Surahno (Head of Finance) and the participants are patent applicants, companies, universities, IP Consultants, and others. The FGD was also attended by Mrs. Corrie Naryati (Director of Patent), Mrs. Yuslisar Ningsih (Director of Copyright, Industrial Design, Layout Design and Integrated Circuit, and Trade Secret), Mr. Fatlulrahman (Director of Trademark), and the echelon II staffs of DGIP. Commencement of Patent Prosecution Highway (PPH) between DGIP and JPO In April 2013, the Indonesia s DGIP and the Japanese Patent Office (JPO) signed the Joint Statement of Intent on cooperation in the field of patent examination. Both sides agreed to commence a pilot program called Patent Prosecution Highway (PPH) as of June1, 2013. Patent applicant can now submit a PPH request for either PCT or non-pct application. The PPH is a scheme whereby patent applicants whose applications have been determined as patentable by a patent office are entitled to request, via a simple manner, an accelerated examination of the corresponding applications in another patent office. Page 4
In another arrangement between JPO and DGIP, as of June 1, 2013, the JPO will act as competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for any PCT international applications filed with the DGIP of Indonesia. On September 12 to 13, 2013 DGIP and JPO held a seminar on PPH in Jakarta. This seminar is to socialize the PPH system to the Intellectual Property Consultant in Indonesia regarding the procedure of PPH system and any related aspects. Implementation of Patent by the Government according to Article 99 103 of Law No. 14 of 2001 for Antiviral and Antiretroviral medicines On September 5, 2012 the President of the Republic of Indonesia issued a Presidential Regulation No. 76 Year 2012 regarding Implementation of Patent by the Government for Antiviral and Antiretroviral medicines. The issuance of this regulation still in relation with the previous regulation regarding the same, and the very urgency on the prevention of Human Immunodeficiency Virus/Acquired Immune Deficiency Syndrome (HIV / AIDS) and Hepatitis B in Indonesia also continuing policy toward Antiviral and Antiretroviral medicines that still patented. Further, the Presidential Decree No. 83 Year 2004 on the Implementation of Patents by Government on Anti Retroviral Drugs, as amended by Presidential Decree No. 6 of 2007 is no longer sufficient as a legal basis. Minister of Health appoint Pharmaceutical Industries as a Patent executor for and on behalf of the Government to implement patent on Antiviral and Antiretroviral medicines. Pharmaceutical Industry will remunerate the patent holder in the amount of 0.5% (zero point five percent) per year from the net selling of Antiviral and Antiretroviral medicines. The said remuneration will be ceased when the patent is expired or cancelled in accordance with the laws and regulations. The List of Antiviral and Antiretroviral medicines are as follows: NO NAME OF PATENT PATENT IMPLEMENTATION PERIOD ACTIVE SUBSTANCE HOLDER NUMBER 1 Efavirenz Merck & Co, INC ID 0 005 812 (August 07, 2013) 2 Abacavir Glaxo Group Limited ID 0 011 367 3 Didanosin Bristol Myers Squibb Company 4 Combination of Lopinavir and Ritonavir Abbot Laboratories ID 0 010 163 ID P 0023461 (May 14, 2018) (August 06, 2018) (August 23, 2018) Page 5
5 Tenofovir Gilead Sciences, Inc 6 Combination of Tenofovir and Emtrisitabin 7 Combination of Tenofovir, Emtrisitabin and Evafirenz Gilead Sciences, Inc ID 0 007 658 ID P0029476 (July 23, 2018) (November 3, 2024) Pursuant to the said Presidential Regulation, PT KIMIA FARMA (PERSERO) Tbk was appointed by and on behalf of the government to carry out the implementation of patent on antiviral and antiretroviral medicines in Indonesia based on the Ministry of Health Decree No. 109/MENKES/SK/III/2013 dated March 1, 2013. 3. Others Indonesia Formally Ratifies Nagoya Protocol and Rotterdam Protocol The Republic of Indonesia has formally ratified Nagoya protocol on May 8, 2013 when Law No. 11 of 2013 was launched. The said law pertains to the ratification of the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization. Indonesia signed the Nagoya Protocol on May 11, 2011. According to Environment Minister, the enactment of Law No. 11 of 2013 is important for Indonesia to realize its commitment to protecting biodiversity. As a part of Like Minded Megabiodiversity Countries (LMMCs), Indonesia has been a potential supplier of genetic resources. Ratification of Nagoya Protocol into its national legislation would strengthen the preservation of genetic resources as well as in the issue of biopiracy. The Government has also ratified Rotterdam protocol on May 8, 2013 with the launching of Law No. 10 of 2013 pertaining to the ratification of the Rotterdam Convention on the Prior Informed Consent (PIC) Procedure for Certain Hazardous Chemicals and Pesticides in International Trade. As people may be aware, trade in hazardous chemicals and pesticides may be important for development activities but it must be governed in such a way to protect the community. By ratifying the convention the Govt. intends to have equal rights and mutual access to information (on the circulation of hazardous chemicals and pesticides) to protect the nation from the impact of the hazardous substances. The enactment of Law No. 10 of 2013 on ratifying the Rotterdam Convention is also important to enable the country to take part in controlling the circulation of hazardous chemicals and pesticides in the world. Page 6
The enactment of the said law is a starting point for Indonesia to become a party to the Rotterdam Convention. Indonesia signed the convention on September 11, 1998. To date, at least 152 countries have ratified the convention. Currently, registration system in importation of certain hazardous chemicals and pesticides has been implemented in integrated manner via online system called Indonesia National Single Window (INSW) at Ministry of Environment. Therefore, ratification of Rotterdam Convention will technically and economically support the operation of industries which relies on said related importation. ----End of report--- Page 7