Important information : patents in Indonesia

This briefing note provides an update on a particular situation relating to Indonesian patents.

Paris, October 31, 2018 – This briefing note provides an update on a particular situation relating to Indonesian patents.

Source of the difficulty: a posteriori payment of annuities in the past.

Up until August 26, 2016, Indonesia applied a special regime to deadlines for the payment of patent maintenance fees: According to the law then in effect in Indonesia, the due date for maintenance fees was posterior to the period of protection covered by the payment of said fees; the payment of fees was therefore made a posteriori (contrary to the more common practice, particularly in Europe, of a due date that occurs prior to the period of protection, and is therefore made a priori).

For example, the Indonesian Office considered that rightsholders deciding to abandon a patent in Indonesia were liable for the fees owed for the past and demanded the payment of these fees.

This a posteriori system of fee payment in Indonesia ended on August 26, 2016, with Law No. 13 of 2016. For patents issued in Indonesia after August 2016, maintenance fees are paid a priori.

For all patents currently in force in Indonesia, no adjustment fee is due as the new taxes are settled a priori and the taxes that were due in August 2016, at the time of the change in the law, have normally been regularized.

However, a particular difficulty concerns patents issued before August 26, 2016, which were abandoned, and for which the maintenance fees (due a posteriori) have not been paid.

A threat to future patents.

In the event of non-payment of maintenance fees by a rightsholder due to the abandonment of a patent, until very recently the Indonesian Office threatened the rightsholder with debt collection.

This situation has changed recently, as the Indonesian Office is no longer satisfied by demanding payment of the fees due by rightsholders who have abandoned a patent.

Recent notifications issued by the Indonesian Office, all of which are apparently dated August 16, 2018 (see example below), enjoin payment before February 16, 2019, of the fees which the Indonesian Office considers due. This injunction is accompanied by the threat of a severe penalty: The Indonesian Office would refuse any future patent application filed by a rightsholder who has not paid the demanded fees (“If within the specific time period the patent holders have not fulfilled their obligation, then DGIP will not accept any new patent application from respective patent holders”).

Recommendation: Pay the fees demanded in Indonesia before February 16, 2019.

Various interested circles are trying to influence the position of the Indonesian Office. However, in the current state, there is nothing to say that this position will evolve.

In the present case, the Indonesian Office claims fees directly from the rightsholders. We therefore recommend that rightsholders of abandoned Indonesian patents verify whether they have received such a notification, and pay the fees demanded by the Indonesian Office to avoid the risk of this Office denying new filings in the future.

Of course, REGIMBEAU’s teams are at your disposal to discuss whether or not it is necessary to pay maintenance fees still due on abandoned Indonesian patents on a case-by-case basis.