Optimizing Patent Protection in Indonesia through the Enactment of New Patent Law

On 28 October 2024, the President of the Republic of Indonesia enacted Law No. 65 of 2024, serving as the third amendment to the Law No. 13 of 2016 on Patent (“Patent Law”). The amendment aims to provide an enhanced legal framework on patent and support societal needs of faster, more effective and efficient patent services in Indonesia.

The key changes introduced in this New Patent Law are including:

Revised Definition of Patentable Invention

The New Patent Law now includes “systems”, “methods”, and “use” as types of patentable invention. This change can certainly support inventors in obtaining patent protection for their inventions in such forms.

This Law also provides clarity on the IP protection that can be granted upon computer programs. While a mere computer program is not categorized as an invention, computer programs which are associated with a specific piece of hardware or integrated into a system (i.e., computer-implemented inventions) can now be protected as a patent. This is especially important in a globalized market where patent protection can play a crucial role in securing intellectual property rights.

Another significant revision introduced is the removal of prohibition on new use of a known product (i.e. second use and second medical use), which previously considered as a non-patentable subject matter. This is especially beneficial for the pharmaceutical industry, where discovering new uses for existing compounds can lead to significant medical breakthroughs.

New Structure of Patent Registration Procedure

Since the Government aims to improve patent services in Indonesia, some notable modifications relating to the registration procedure have been made, including:

• Grace period for prior disclosed invention has been extended from 6 months to 12 months;
• Grace period for claiming priority right is now available for 4 months as from the priority deadline;
• The option of re-instating a patent application that has been deemed withdrawn is now available;
• Expedited publication will now be held within 3 months since the filing date (previously within 6 months);
• Early substantive examination can now be requested to help expediting the registration process; and
• The applicants can file a request for re-examination upon DGIP’s decision on the applications made at the substantive examination stage.

Obligation to Provide Declaration of Use

Patent holders are now obliged to provide a declaration of use of their patents (known also as “working statement”) to the Minister by the end of each year. It is expected that an implementing regulation to further regulate this provision will be issued in the near future.

Compulsory License

The New Patent Law provides amendments to the provision relating to compulsory licensing to align with the TRIPs Agreement. One of the most significant changes introduced in this Law is the complete removal of the provision of compulsory license upon pharmaceutical products. Instead, the necessity of patented pharmaceutical products to treat human disease is now being regulated through the government use scheme.

Grace Period to Attend Annuity Fee

This Law now gives patent holders with the opportunity to attend to the payment of annuity fee within 6 months grace period after the deadline. This grace period allows patent holders to retain their patent rights and avoid losing the protection of their patents due to missed payments, which could otherwise result in the forfeiture of the patent.

Bolar Provision

The Law removes the time restriction in the Bolar Provision, thereby granting pharmaceutical companies greater flexibility to access the patented pharmaceutical products in order to conduct further research and development before the expiration of a particular patent period.

Based on the important amendments outlined above, it is expected that more inventors will be encouraged to register their inventions for patent protection. This will address the needs of inventors, foster domestic innovations, and support foreign inventors in registering and implementing patents in Indonesia to meet domestic demands. This will foster a vibrant innovation ecosystem, strengthen the country’s intellectual property landscape, and support the development of solutions that address both local and global challenges.

We would be pleased to assist you should you wish to explore more about the key changes highlighted above. Please do not hesitate to contact our team through Mrs. Risti Wulansari at risti.wulansari@kk-advocates.com and Ms. Rizka Khairunnisa at rizka.khairunnisa@kk-advocates.com.