An amendment to the Indonesian Patent Law no. 13 year 2016 was enacted on 28 October 2024. It introduces several notable reforms to the Indonesian patent system aimed at promoting innovation, enhancing patent procedures, and aligning patent regulations. These key changes can be summarized into five main areas.
1. What can be patented
To foster research and innovation, the new Patent Law explicitly recognizes systems, methods and uses as distinct types of inventions advantageous for patent holders. By explicitly broadening the scope of what qualifies as a patentable invention, it provides comprehensive protection for a wider range of innovations. This change not only increases legal certainty for patent holders by reducing ambiguities about eligibility but also allows inventors to protect complex technologies. Consequently, it incentivizes further investment in research and development, knowing that a greater array of innovations can be protected under patent law.
Additionally, the new law removes the exemption on Article 4(f) for patenting “new uses” and “new forms” of existing products or compounds, allowing patents for the “second medical use” of known pharmaceutical products or compounds. This change encourages research into further applications and efficacy beyond new products or compounds alone, a long-standing interest of the pharmaceutical industry.
Regarding computer programs, the programs," it is explicitly specified "computer programs, except for computer-implemented inventions." The exemption clarifies the line between non-patentable software and patentable technology. This distinction ensures that while standalone software remains outside patent protection, innovations where software plays a role in achieving a technical solution or effect can still be patented. This change strengthens protections for inventions that rely on software to achieve technical characters, technical effects and problem solving, thereby encouraging innovation in software-driven technologies without extending blanket coverage to all software. This targeted approach allows inventors to secure intellectual property rights for novel, technical solutions, promoting further advancements in fields like artificial intelligence, automation, and digital tools.
2. Patent Application processes: Streamlining, Reinstatement and Re-examination
Supporting the expansion of what can be patented, the new law extends the grace period for establishing novelty in cases of disclosure at official exhibitions, for research and development purposes, and for scientific presentations or forums by inventors, from 6 months to 12 months.
The new law also introduces an option to restore priority rights for applications that have missed the 12 months priority deadline, provided the restoration request is made within 4 months following the priority period’s expiry.
For inventions relating to genetic resources and/or traditional knowledge, the applicant only needs to provide a statement of the genetic resources and/or traditional knowledge. There is no longer the requirement that the statement should be made by official institutions recognized by the Government. This is to facilitate the establishment of an accessible database for patents regarding genetic resources and/or traditional knowledge in Indonesia.
To simplify the procedure, the statement of ownership by inventors is no longer necessary. For foreign applications with specifications in a language other than English, there is a grace period of 30 working days to submit the English translation, along with its Indonesian translation. The new law only allows a one-time extension of time at the formality stage, previously it was allowed twice, making it more challenging for applicants to comply with formality requirements. However, this change will shorten the formality examination.
The new law also provides the possibility for applicants to expedite the processing of their applications. Under the new law, not only is early publication now possible within three months from the filing date, but applicants can also request early examination, provided that the request is made before publication begins, enhancing the efficiency of the patent system.
For applications that have lapsed due to non-compliance with formal requirements, the new law formally allows applicants to file a reinstatement request within six months from the date of the withdrawal notice.
Additionally, a new re-examination system at substantive stage has been introduced in the new law, applicable to decisions to reject and grant patents as well as corrections and considered withdrawn applications within 9 months from the notices. Under the previous law, the request could only be presented before the Patent appeal commission. For withdrawn applications it is shortened to within 2 months from the notice.
At the time this Law comes into effect, Patent applications that have been submitted and processed but not yet completed shall continue to be resolved based on the regulations of Patents before this Law takes effect.
3. Post grant
The new law provides a grace period for the annuity payment of 6 months with a 100% fine for the total amount. Previously, postponements of annuity payments were allowed upon request. The new grace period structure has both advantages and disadvantages for patent holders, depending on their financial flexibility and strategic needs.
The guaranteed 6-month grace period provides a clear timeframe for late annuity payments, which can help patent holders avoid immediate loss of rights if they miss a payment deadline. It offers a predictable extension period with no need for additional paperwork or special requests. This grace period can help those who may face temporary financial setbacks, or administrative delays avoid losing their patents outright, as long as they pay within the specified time. The change simplifies the process, eliminating the uncertainty and administrative burden of filing postponement requests, which can streamline patent management.
On the downside, removing the option to request postponements could be limiting for patent holders who, under the previous law, had flexibility to request postponements for 12 months. The 100% fine is also a significant penalty, which might pose a financial burden, especially for smaller entities or independent inventors.
4. Use of the Patent
For Article 20 on the use of the patent, the new law stipulates the holder of a granted patent should provide a statement of patent implementation in Indonesia and submit it to the Patent office by the end of each calendar. However, the new law is silent on the consequences of failure to submit this statement as well as silent on the implementing regulation for this. During the socialization of the third amendment to the law, the Patent Office verbally indicated that it is a straightforward statement. However, it remains to be seen how these changes will be formally implemented, as the new law does not provide details on this aspect. Furthermore, it is unclear whether any implementing regulations will be issued to clarify the practical application of the law. We will keep in touch with the Patent Office to request more clarity on these changes as implementation unfolds. We aim to stay informed of any updates or new regulations that may impact the practical application of the new law.
5. Bolar Provisions
The Bolar provision, which allows for the use of a patented invention for research and experimental purposes, has been expanded. The new law removes the previous five-year limitation period prior to patent expiry allowing researchers to utilize the patented inventions without the time restriction. This may provide benefits and potential challenges for different stakeholders.
In terms of benefits, by removing the time restriction, researchers can now conduct experiments and develop new applications for patented inventions at any time before or even after the patent expires. This fosters a more collaborative and innovative research environment, encouraging academic institutions and companies to explore new technologies without fear of infringing patent rights.
In the pharmaceutical industry, this change may speed up the process of developing generic alternatives to patented drugs. Researchers can conduct necessary tests and trials without the constraint of waiting until the last five years of the patent, while potentially facilitating faster entry of generics into the market once the patent expires. This may lead to enhanced competition and reducing prices for consumers.
The removal of the limitation encourages collaboration between academic institutions, research organizations, and the private sector. It allows for more open research environments, potentially leading to breakthroughs that might not have occurred under stricter limitations.
On the possible challenges for Patent Holders, while the expanded Bolar provision promotes research, patent holders might be concerned about how this change could affect their market exclusivity and revenues, if generic manufacturers can enter the market once the patent expires. If researchers can use patented technologies freely, there may be concerns, particularly if it allows others to use their inventions for research, to develop competing products.
Overall, the expansion of the Bolar provision is likely to have a positive impact on research and innovation, particularly in the pharmaceutical and biotechnology sectors, while also presenting challenges to patent holders regarding the exclusivity of their inventions.
The takeaway of the changes is that Patent Law No. 65 of 2024 represents significant progress for Indonesia's patent system. By expanding what can be patented, streamlining application processes, and strengthening regulations, the new law aims to stimulate innovation and improve efficiency. These changes create valuable opportunities, especially for the research sectors paving the way for technology advancements throughout Indonesia. However, there are key considerations, potential pitfalls, and strategic steps that applicants and patent holders should keep in mind to manage the transition effectively.
Potential Pitfalls
Although the law specifies that pending applications will continue to be resolved based on the previous regulations, applicants may still encounter practical challenges. Differences between the old and new frameworks, particularly around updated procedures, could create ambiguities during the transitional period.
With the introduction of new provisions, there may be a lag before the Patent Office fully implements updated guidelines and processes. This could lead to processing delays or inconsistent handling of applications, especially in the early stages of implementation.
Changes in annuity payment grace periods, penalties, and other fee structures may add financial impacts, particularly if applicants or patent holders are not fully aware of these adjustments. It’s essential to stay informed to avoid unexpected costs.
Next Steps for Patent Holders and Applicants
Holders and applicants should actively monitor any implementing regulations or guidelines issued by the Patent Office. New details on how the law will be applied in practice are likely to emerge, so staying informed will be essential for adapting to these changes effectively.
Consider reassessing your patent portfolio and strategy in light of the expanded patentable subject matter and streamlined processes. This might include exploring new opportunities for patents under the updated provisions.
For pending applications already in progress before the new law, applicants should ensure that processing continues smoothly under the previous law.
The new law is active as of now, however, as with many regulatory changes, full implementation may require additional time. Any pending applications will be resolved under the prior patent law, but applicants may experience administrative adjustments as the Patent Office adapts its procedures.
In summary, while Patent Law No. 65 of 2024 offers significant advantages for fostering innovation and expanding patent opportunities, applicants should be proactive in managing the transition. By staying informed, reevaluating strategies, and maintaining close communication, stakeholders can minimize potential pitfalls and position themselves to take full advantage of the new system’s benefits.
