Patent

With the enactment of the new Patent Law, No. 13 of 2016, the first annuity of a patent application shall be paid within six months after the grant date, which is the date of issuance of the notice of grant and not the issuance of the grant certificate. A patent will be considered null and void if annuities are not paid by this due date.

 

Yes. A total of up to 12 months from the 30th month deadline is allowed. However, the Applicant is required to provide a notarized declaration stating the unintentional reason for the late entry. Further, all formality documents and the request for examination will be required to be submitted at the time of filing.

Yes. However, it is advisable that the applicant also files the original claims of the application along with the intended amendment.

It is recommended to file the original claims initially, and the voluntary amendment follows thereafter. Unless the amendment was submitted in the international phase, we could file the said amendment when filing the national phase entry.

The Directorate General of Intellectual Property Rights (DGIP) does not accept General Power of Attorney. A simply signed specific Power of Attorney has to be submitted for each patent application within 3 months of lodging the application with the DGIP.

Trademark

If the trademark application is pending, but was filed on or after 25 November 2016 (under current Trademark Law), it is possible to file the recordal application.

However, if the trademark application was filed before 25 November 2016 (under previous Trademark Law), the trademark needs to be registered first before a recordal application can be filed.

No, Indonesia is a strictly first-to-file jurisdiction.

The Indonesia Trademarks Registry has recently revised the process of filing trademark applications in Indonesia. Under this new filing system, the Applicant is compelled to choose the specification of goods and services for its proposed trademark(s) from the Registry’s Pre-Approved List of acceptable specifications. For filing of applications without priority claim(s), the applicant will find the most similar or closest item from the approved list if the proposed item is not yet listed. On the other hand, filing of application with priority claim(s) shall require the applicant to send new proposed items through e-filing system so as to allow the Registry to input new items in their database. After which, the official fees will have to be paid upfront so the application process can proceed seamlessly.

No. Deadlines in Indonesia are non-extendable. However, for some cases that relate to recordal in the registry, the extension of time (usually one-month extension) can be requested and registry would provide leniency. This only applies to deadline in responding to office action.