To comply with PCT Rule 49.6 concerning reinstatement of rights after the failure to enter national phase within the prescribed period, the Indonesian Patent Office has issued a Directive. The Directive titled- “Dispensasi Permohonan Paten melalui PCT yang terlambat masuk fase nasional” (i.e. the Reinstatement of Rights for any patent application based on PCT that has missed the time limits to enter its national phase in Indonesia) was issued as No. H.01.UM.09.01 of year 2006.
The PCT Rule 49.6 states that the request to reinstate the applicant’s rights after the failure to perform the acts referred in article 22 shall be submitted to the designated Office, and the acts referred to in Article 22 shall be performed, within whichever of the following periods expires first:
- Two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22; or
- 12 months from the date of the expiration of the applicable time limit under Article 22.
In this matter, Indonesia has chosen to allow the request for reinstatement within 12 months as from the date of the expiration of the applicable time limits.
According to the previous rules, PCT applications entering national phase in Indonesia via Chapter I must be filed in Indonesia within 30 months from the priority date and applications entering via Chapter II must be filed in Indonesia within 31 months from the priority date. Failure to meet these deadlines may lead to loss of the applicant’s right to obtain patent protection in Indonesia.
According to the new directive, the applicant may submit a request for reinstatement of the rights and enter the national phase within:
- Two months for Chapter I / one month for Chapter II or within 32 months from its priority date. In this case, the applicant will be required to pay additional fee of Rp. 5,000,000.00 (five million Rupiahs) or approximately equal to USD 575
- 33 to 43 months from priority date. In this case the applicant will be required to pay additional fee of Rp. 5,000,000.00 (five million Rupiahs) or approximately equal to USD 575 and furnish a statement and/or evidence, which explains the reason of delay.
This is certainly a good news for the Applicant’s who have missed the deadline to enter national phase in Indonesia either due to some inadvertent mistake or any serious reason. Now, such Applicants can choose to reinstate their rights, which without the Directive would have been considered lost.
The current Indonesian Patent Law requires that the request for substantive examination must be filed within 36 months form:
- Filing date in Indonesia for an ordinary patent application and for Paris convention applications;
- International filing date for the patent application based on PCT.
For the PCT applications, where the international filing date is same as the priority date, the deadline to request examination may have lapsed if the applicant enters Indonesia after 36 months from the filing date. In view of this pitfall, the applicants need to pay attention to the deadline to request examination. Invoking re-instatement of the right to enter Indonesia after 36 months from the international filing date may not benefit the applicant, because the failure to request substantive examination within the prescribed time might have caused loss of the rights anyway.