By Carola Monintja
Receiving a notification of grant for an invention is always a celebratory moment and a great relief for us (as patent agents) and the client. Why? Because this moment means the waiting is over, the long correspondences and hours spent preparing the responses, the arguments and the amendments have fully paid off, and now there is only a small step to a fully registered patent with the issued certificate.
As we all know, patent registration is the golden ticket that enables the patentee to monetize his hard work and achieve recognition for his invention. In this case, once the patent is successfully licensed, the patentee may then enjoy his right to royalty. When we talk about the patentee’s “right”, we also must take a look at the patentee’s “obligation”. We know that one of these obligations is settling the maintenance fee for his patent yearly. But in Indonesia, there is another obligation for a patentee, namely, to apply his invention in the form of manufacturing the product or using the process in Indonesia within 3 years from the date of grant (Article 20 of the Patent Law). The failure of the patentee in producing the product or using the process of his invention in Indonesia according to the stipulations will leave open a chance for third parties to file a request for a compulsory license of the said invention.
Article 20 has been a great point of contention for the Indonesian government, as foreign countries have objected to this regulation and requested for a more lenient policy against this issue. A lot of factors impede the obligation for the implementation (also known as “working requirement”) of a patent in Indonesia, for example: the lack of resources (particularly natural resources), lack of skilled labour, prohibitive costs, and various other reasons.
The Indonesian government has offered a win-win solution on this issue, where with the Ministry of Law and Human Rights Regulation No. 15 Year 2018, patentees may now file a deferment of this obligation for patents within 3 (three) years of the granted date for all patents granted under the new Patent Law, or until 26 August 2019 for all patents granted under the old patent law.
With this regulation in mind, we urge you to check your patents to ensure that they do not fall afoul of the stipulations and contact us for further information.
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