ASIAN PATENT ATTORNEYS ASSOCIATION Recognized Group of Indonesia COUNTRY REPORT 58 th Council Meetings, Jeju, Korea, 16-19 October 2010 Compilation by APAA Group Indonesia (Mrs. Migni Myriasandra Noerhadi) 1. Statistics on the total numbers of Patent, Utility Model Design, and Trademark applications filed with the patent and trademark office in your jurisdiction in 2009. If available, statistics broken down to show the numbers filed by domestic v. foreign applicants would be of interest to the APAA membership. PATENT APPLICATIONS 2009 Table 1: DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY RIGHTS (DGIP) INDONESIAN PATENT OFFICE DATA CONCERNING PATENT APPLICATIONS AND PATENT GRANTED 2009* PATENT PCT+NON PCT SIMPLE PATENT (UTILITY MODEL DESIGN) Domestic Foreign TOTAL Domestic Foreign TOTAL Appl. Granted Appl. Granted Appl. Granted Appl. Granted Appl. Granted Appl. Granted 1. January 21 11 316 155 337 166 24 3 - - 24 3 2. February 33 8 312 183 345 191 17 7 1 1 18 8 3. March 30 16 324 243 354 259 15 17 1 6 16 23 4. April 25 8 342 189 367 197 26 3 4 2 30 5 5. May 27 6 324 137 351 143 12 5 9 3 21 8 6. June 28 7 416 220 444 227 17 11 6-23 11 7. July 24 12 314 165 338 177 22 7 6-28 7 8. August 31 7 317 260 348 267 25 5 3 2 28 7 9. September 20 4 362 179 382 183 21 5 2 1 6 10. October 26 2 297 142 323 144 21 3-2 5 11. November 29 5 348 127 377 132 18 4 5 4 8 12. December 121 16 431 282 552 298 29 11 1 4 15 YEAR TOTAL 2009 415 102 4,103 2,282 4,518 2,384 247 81 38 25 188 106 1
Table 2: DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY RIGHTS (DGIP) INDONESIAN PATENT OFFICE DATA CONCERNING PATENT APPLICATIONS AND PATENT GRANTED (as of 1991 - Jun 30, 2010) PATENT PCT+NON PCT SIMPLE PATENT (UTILITY MODEL DESIGN) Domestic Foreign TOTAL Domestic Foreign TOTAL Appl. Granted Appl. Granted Appl. Granted Appl. Granted Appl. Granted Appl. Granted PATENT APPLICATION 1991-2002 1,196 106 35,823 9,593 37,019 9,699 1,136 262 537 280 1,673 542 2003 201 16 3,099 2,828 3,300 2,844 163 61 29 6 192 67 2004 227 33 3,441 2,610 3,668 2,643 177 78 32 21 209 99 2005 235 24 4,069 1,634 4,304 1,658 163 60 32 13 195 73 2006 288 33 4,324 1,728 4,612 1,761 242 61 26 12 268 73 2007 284 70 4,850 1,741 5,134 1,811 209 79 34 20 243 99 2008 387 219 4,747 1,944 5,134 2,163 214 69 34 204 248 273 2009 415 102 4,103 2,282 4,518 2,384 247 81 38 25 188 106 2010 (June) 214 57 2,118 1,070 2,332 1,127 132 38 339 4 471 42 Total 3,447 660 66,574 25,430 70,021 26,090 2,683 789 1,101 585 3,687 1,374 Table 3: DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY RIGHTS (DGIP) DIRECTORATE OF TRADEMARK DATA CONCERNING NEW APPLICATIONS AND RENEWAL 2009 TRADEMARK New Applications Renewal Domestic Foreign Trademark Servicemark Applications TRADEMARK APPLICATIONS 2009 1. January 2,574 374 2,336 612 858 2. February 2,988 472 2,727 733 1,051 3. March 3,783 348 3,318 812 1,271 4. April 3,460 278 2,994 744 985 5. May 3,340 354 2,931 763 819 6. June 3,480 298 2,986 792 983 7. July 3,264 448 3,009 703 939 8. August 3,177 372 2,786 763 877 9. September 2,098 777 2,875 2,253 626 10. October 2,909 392 2,555 807 896 11. November 2,964 683 2,890 757 899 12. December 3,722 222 3,200 734 986 YEAR TOTAL 2009 37,759 5,018 34,607 10,473 11,190 2
Table 4: DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY RIGHTS (DGIP) DIRECTORATE OF TRADEMARK DATA CONCERNING NEW APPLICATIONS AND RENEWAL (up to June 2010) TRADEMARK New Applications Renewal Domestic Foreign Trademark Servicemark Applications TRADEMARK APPLICATIONS 2001 26,128 12,520 23,699 4,726 10,223 2002 20,423 9,581 25,568 4,436 12,412 2003 28,317 8,023 30,461 5,879 10,607 2004 35,626 13,685 32,041 6,808 10,462 2005 30,734 10,082 33,139 7,677 13,835 2006 36,644 16,005 33,354 8,238 12,604 2007 32,181 11,078 33,991 9,265 11,757 2008 33,555 14,051 38,643 14,338 10,876 2009 37,759 5,018 34,607 10,473 11,190 2010 (June) 21,130 2,578 18,877 4,831 6,197 TOTAL 302,497 102,621 304,380 76,671 110,163 Table 5: INDONESIAN INDUSTRIAL DESIGN OFFICE DATA CONCERNING APPLICATIONS, REGISTATIONS, OPOSITIONS AND REJECTIONS 2009 INDUSTRIAL DESIGN Applications Domestic Foreign Registrations Opositions Rejections INDUSTRIAL DESIGN APPLICATIONS 2009 1. January 222 36 32 13 9 2. February 417 56 116 13 12 3. March 277 69 90 4 36 4. April 303 58 129 2 9 5. May 290 53 111 3 3 6. June 289 67 126 4 23 7. July 286 62 223 11 19 8. August 360 25 214 14-9. September 272 36 189 11 100 10. October 288 40 145 13 202 11. November 381 49 407-135 12. December 216 49 263 8 104 YEAR TOTAL 2009 3,601 600 2,045 96 652 Note (*) Information from the official source at the Directorate General of IPR, Indonesia 3
2. Any noteworthy changes in intellectual property laws or examination standards in the past year. A. The Noteworthy changes in Trademark Law In Trademark : Changes in limitation on items covered in each application Changes in official fee in the Directorate General of IPR in Indonesia On 28 May 2009, the Government of the Republic of Indonesia has enacted a Government Regulation Number 38 of 2009 concerning Types and Tariffs for Non-Tax State Revenues, which is valid as of 03 June 2009. Included in this new regulation is the new provision on official fees for filing trademark applications, whereas the charge for an application only covers maximum of 3 (three) items of goods/services, while for the remaining listed goods/services (if any) will be charged separately. B. The noteworthy changes in Patent Law a. Requirement and Registration Procedures for the Recording of Patent Assignments On June 7, 2010 Indonesian Government issued a Presidential Regulation No. 37 of 2010 concerning Requirement and Registration Procedures for the recording of patent assignment. This regulation which has been long awaited by the IP Practitioner and also owners provide some implementing regulations of Law No. 14 of 2001 concerning Patent, especially for some provision in Chapter V regarding the Transfer and License of a Patent. The regulation is specifically issued to fulfill the needs of certainty because before this regulation took effect, it was not possible to record assignments of granted patents, where particularly article 66 paragraph (5) Law No. 14 of 2001 concerning Patents stipulates that The requirements and procedures for the recording of Patent transfer shall be further regulated by Presidential Decree. Further, Article 66 paragraph (3) stipulates that All forms of Patent transfer as referred to in paragraph (1) must be recorded and announced, with the payment of a fee. In the past this provision has create major issues due to the unavailability of the necessary provision which can be used as an implementing regulations. However, the issuance of Presidential Regulation No.37 of 2010 finally solved all that issues where the new regulation creates guidance to conduct the recording of patent assignment and also fulfills the order of Law No. 14 of 2001 concerning Patent. Presidential Regulation No. 37 of 2010 stipulates several crucial matters as follows: i). For the application of the Recording of Patent Assignment s Registration which completes the required documents, the Directorate General of IP shall register the Recording of Patent Assignment in the General List within 30 (thirty) days from the time the applicant completes the required documents. ii). If the applicant did not complete the required documents, the Directorate General of Intellectual Property Right within 30 (thirty) days shall notify the 4
Applicant to complete the required document at the latest 60 (sixty) days from the receipt date of notification of the Directorate General. Whereas if the Applicant did not comply within the certain period of time and procedures as mentioned above, the application of the Recording of Patent Assignment is assumed to be withdrawn. iii). In the event that the heirs refuse to become the holder of the rights, therefore they shall submit the Statement Letter (to release the rights) and inform the Directorate General by attaching the said Statement Letter, so that the related rights will be canceled. b. As far as License Agreement and Compulsory License is concerned, those two subjects will be further regulated by the Government Regulation which is now still being prepared by the Directorate General of Law and Regulation. 3. An outline of any court decisions which might have an effect on IP creators or owners. A. Trademark Case In theory, even though the Court Decision that has been final and legally binding become one of source of law, there are no obligation for the Judges to obey and implement them in the same cases that will be examine by them in the future. This situation occurred since the legal principles concerning the court decision which is adopted by Indonesian law cannot exactly and directly become permanent Jurisprudence to bind and obligate the judges to obey them. However, even without the court decision or jurisprudence, the wise and prudent judges could actually make a positive breakthrough with their decision based on their own believes, which in the end may set everything out. Therefore in principle, the final and binding court decision may have a certain and direct effect to the IP creators or owners. However, the said final and binding decision may not become a deterrent effect for the bad faith party in registering their trademark. Further, apart from becoming a doctrine, the said court decisions (whether it is positive or negative) ultimately can become a benchmark to measure in the levels the awareness, legal enforcement and legal certainty in the field of Intellectual Property Rights and Remedies in Indonesia. These are the levels that indirectly become an impact to the IP creators/owners/holders in general and to the IP legal developments itself in particular. Sample of cases Cancellation against trademark GUCHI on behalf of Harianto This case is about a cancellation case brought by Guccio Gucci SpA as the genuine proprietor of well-known trademark Gucci (Plaintiff) against Harianto (Defendant) who has registered a similar trademark which is GUCHI. The Plaintiff use unfair advantage 5
of the well-known of trademark Gucci as their basis argument against trademark registration filed by Defendant. It was found that the Trademark GUCHI is considered to have substantial similarity with trademark GUCCI, which has been widely known by the public and have been registered in many countries such as Indonesia, Taiwan, South Korea, Thailand, Italy, France and Mexico. The decision of this case was made in favor of the Plaintiff. This case set an example to anyone who is going to create or register their trademark (IP creators/owners/holders) not to file any names and/or designs that have been wellknown and claim that trademark concerned as their trademark in order to avoid problems in the future. Cancellation Action against trademark CONRAN Jasper Conran (Plaintiff) was intended to file his trademark application in Indonesia. However, he is aware that there is a local businessman named Franky Prayogo (Defendant) which already has a trademark registration for CONRAN that might become a bar to his applications. To avoid a rejection from the Trademark Office, the Plaintiff files a cancellation action through the Jakarta Commercial Court. After a long court proceeding, the Panel of Judges at the Jakarta Commercial Court decides that there is no substantial similarity between both trademarks. In addition, while the civil case was still on going at the Jakarta Commercial Court, the Defendant files a complaint to the Police claiming that the Plaintiff has conducted an infringement due to the Plaintiff s products have substantial similarity have been circulated in the market while the application has not been granted. Based on the said complaint, the Police then seized by the Plaintiff s products at the Department Stores. Even though the Commercial Court decision was not in the Plaintiff favor, it means that both trademarks can be registered co-exist. Meanwhile, for the criminal case, the case is now being examined by the Public Prosecutor and waiting for the hearing soon. B. Patent Case There is one interesting case which is involving a pharmaceutical company in Indonesia which is a subsidiary of a pharmaceutical industry domiciled in United States of America as a patent holder for certain patented drug formulas in Indonesia (Plaintiff) against a Local Pharmaceutical Company (Defendant). The Defendant has launched and sold medicine products using a similar formula owned by the Plaintiff without any consent or license agreement from the Plaintiff. The issue is whether there is an infringement by the Defendant, since the patent product belong to the Plaintiff was still valid (was still valid a few months before the expiration date) and it was found that the Defendant had infringed the patent product as they had launched and marketed/sold the products for commercial purposes which is contravene to Article 135 (b) of Law No. 14 of 2001 concerning Patent. Article 135 (b) is a provision which is exempted from the criminal 6
provisions stipulating that the production of a pharmaceutical product protected by a patent in Indonesia in a period of 2 (two) years before the termination of the patent protection with the purpose to process the permit and to do marketing after the termination of the patent protection. Therefore, the Plaintiff brought a civil lawsuit for legal damages before the Commercial Court against the Defendant based on patent infringement. Although the defendant had obtain marketing approval from the Health Authority, the panel of judges considered that there was an infringement because the Defendant had been proven to use the patent formula belonging to Plaintiff while the patent protection was still valid. Nevertheless, the panel assumed that the license agreement was not registered yet in the Directorate General of Intellectual Property Rights, as the regulation on License agreement is still pending due to the non existing License Regulation. Therefore, it was not enforced to the third party. Thus, the petition of patent holder for legal damages was not accepted. 7