January 2025

Monday, 20 Jan 2025

THIRD AMENDMENTS OF PATENT LAW

 

The Government has made several amendments to Law No. 13 of 2016 concerning Patent (“Law 13/2016”) since 2020. The third amendment was enacted on 28 October 2024, and it refers to as Patent Law No. 65 of 2024 (‘Law 65/2024”). In general, Law 65/2024 was formed by the Government with 3 main objectives: (i) to encourage national innovation, (ii) to harmonize national and international patent provisions and (iii) to improve patent services itself.

These amendments can be summarized as follows:

1. Broader scope of what can be qualified as patent

Law 65/2024 provides a broader scope of what can be qualified as patent since it (i) acknowledges a system, a method and a use as a distinct invention, (ii) allows the “second medical use” and (iii) clarifies the line between non patentable software and patentable technology.

Article 1 (2) of Law 65/2024 acknowledges a system, a method and a use as a distinct invention. This acknowledgment will benefit the patent holders as it allows inventors to initiate further research related to a system, a method and a use, and to protect more complex technologies inventions.

Law 65/2024 allows the “second medical use” of known pharmaceutical products or compounds by removing the exemption of scope of invention in Article 4 (f) of Law 13/2016 so the new use may be recognized as an invention and be given patent if it does not mention or indicate the use for which the patent has been granted previously. The explanation Law 65/2024 illustrates the second use of Dapaglifozin as an example of this. Dapaglifozin, whose patent for use in diabetes has expired and has become public domain so that it is freely used for diabetic indications. However, the second use of Dapaglifozin for kidney disease is still protected by the patent. With the recognition of this second medical use as in the case of Dapaglifozin, it is expected that it will encourage pharmaceutical industry to initiate research and efficacy beyond new products or compounds.

Article 4 Law 65/2024 stated that the invention does not include computer programs, except computer-implemented inventions. The explanation Law 65/2024 gives the following examples of computer-implemented inventions:

1. a computer program to perform navigation based on the global positioning system (GPS) on motorized vehicles.
2. a computer program used to maintain a safe distance from the vehicle in front by automatically adjusting the vehicle's speed.
3. a computer program used to control the electrical connectivity of household appliances remotely via the internet.

This change will strengthen the protection of any inventions related to artificial intelligence, automation and digital tools which are expected to grow in the future.

2. Regulations on Genetic Resources and Traditional Knowledge

This new requirement is the government’s compliance on the ratification of WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge in July 2024.

Law 65/2024 regulates that any inventions relating to and/or originating from Genetic Resources and/or Traditional Knowledge must clearly and correctly state the information on the origin of the Genetic Resources and/or Traditional Knowledge. This information will be recorded and announced in the patent gazette for public access. The information will be useful for the consideration of profit sharing and/or access to the utilization of Genetic Resources and/or Traditional Knowledge.

3. Simplify and expedite the processing of patent application

Law 65/2024 provides several amendments to simplify and expedite the patent application process as follows:

1. The extension of grace period for determining the novelty of a patent related to disclosure at official exhibitions, for research, and for scientific presentations by inventors from 6 to 12 months (Article 6).
2. There is no need for the statement of ownership document by inventor when filing the patent application (Article 25 (2)).
3. There is a restore priority rights option for any applications that have missed the 12 months priority deadline (Article 30 (5)).
4. There is a grace period of 30 working days to submit the English translation along with its Indonesian translation (Article 34 (3a)).
5. There is an opportunity for the applicant to request early examination before the publication begins (Article 55A (1)).
6. There is an opportunity for the applicant to file a reinstatement request within six months from the date of the withdrawal notice (Article 36 (3)).
7. There is a new re-examination system at the substantive stage, where the re-examination decision should be made a maximum of 12 months from the requested date (Article 63A).
8. There is a grace period for the annuity payment of 6 months with a 100% fine for the total amount (Article 126(4)).

The implementation of the above provisions shall be referred to the government regulations to follow up. Meanwhile, any patent applications that have been submitted and processed in the Patent Office shall continue to be examined based on the regulations of patents before Law 65/2024 takes effect.

4. Compulsory license

Unlike other Intellectual Property Rights, where licensing is an option and a right of the intellectual property owners/holders, patents provide a mandatory license to be granted to others for the public interest, for example, granting a mandatory license related to medicine patents so that the production of pharmaceutical products for the treatment of human diseases can be carried out.

This mandatory license is carried out based on a Ministerial Decree under an application for the following reasons:

• The patent owner cannot implement patent process, patent method, and patent product in Indonesia within 36 months after the patent is granted.
• Implementation of the patent has been carried out in a manner that is detrimental to the public interest.
• Patents that are the result of development of previously granted patents – which cannot be carried out without using patents from other parties that still have protection.

Law 65/2024 then regulates more clearly that the granting of this mandatory license is not only non-exclusive but must also be based on the benefit principle. Then, the granting of a mandatory license cannot be transferred except to parts or assets of the company that have obtained a mandatory license.

Furthermore, the granting of compulsory license is prioritized to meet domestic market needs unless there was a final and binding decision from the Business Competition Supervisory Commission stated that the implementation of such patent is proven and/or results in monopolistic practices and unfair business competition.

In conclusion, even though the practice of Law 65/2024 is still in its early stages and has not been tested, this Law has provided several provisions that address the long-standing interest of the inventor and patent holders. By expanding the scope of patent qualifications and simplifying and accelerating the patent registration process, Law 65/2024 seeks to encourage innovation while increasing efficiency in the patent application process with the hope that the more and innovation produced, the more innovations can be protected by patents in Indonesia.

 

 

 

Disclaimer: This legal news serves as general guidance only and should not be treated as legal advice. If you wish to have further information on this topic, please contact  Diyah Ratnajati (dratnajati@rosetini.co.id), Andre Suprapto (asuprapto@rosetini.co.id) or Rosetini Ibrahim (ribrahim@rosetini.co.id).