Patent FAQs
What is the minimum requirement to obtain a filing date of a patent application?
- Applicant's name and address
- Inventor's name and nationality
- PCT application number or copy of front page of published PCT application
- English specification and drawings
- filing fee
What are Documents or other information which can be filed later (such as a Power of Attorney) and the deadline/s for filing?
- original signed Power of Attorney
- original signed Assignment document or notarized copy of Assignment document of the priority application and the English translation (if the document is not in English).
Deadline to submit is 3 months as from the application date and can be extended twice (1st: 2 month extension of time and 2nd: 1 month extension of time) with additional cost.
Is it possible to late file the translation of the specification? If yes, what is the deadline?
The Indonesian specification may follow within 1 month as from the application date. This deadline cannot be extended
What is the deadline for submitting Priority Document when the application is filed by claiming any priority application?
16 months as from filing date of the priority application.
If the priority document is not in English is it necessary to provide an English translation?
Yes, only for its front page.
Is it possible to obtain an extension of time for entering the national phase in Indonesia? If yes, under what circumstances is this possible?
Yes, it is possible. The deadline can be extended up to 43 months under the conditions:
- the late filing because of unintentional and due care reasons
- by paying late filing surcharge
- should be furnished with a sworn statement explaining the reason, which is either unintentional or in spite of due care, resignation of employee in charge, etc.
Is it possible to file claim amendments at the time of entering the national phase in order to reduce official filing fees?
Yes, amendment is possible provided it does not expand the scope of invention originally filed.
Could you please advise at which stage excess claims fees are due in Indonesia?
Excess claims (over 10) fee is chargeable only when requesting substantive examination.
Is possible to reduce the number of claims when entering national phase application?
Reducing number of claims (amendment of the patent specification) is allowed by our patent practice provided the amendment meets the following condition:
- the amendment does not expand the scope of invention of the application as it is originally filed in the International phase
- the amendment does not add subject matter
- the amendment is filed as long as final decision has not been issued. It is more preferable to file voluntary amendment before substantive examination report is issued so that the examination will already consider the amendment.
Is it necessary to submit IPRP when entering the national phase?
It is not mandatory for the applicant to submit IPRP, however the examiners expect and would appreciate if the applicant submit this information.
It is compulsory for all inventors to sign the assignment document?
The DGIPO requires the assignment to be signed by all inventors. Failure to meet this request will cause the application being withdrawn.
If it is difficult for the applicant to submit the assignment forms, the DGIPO also accepts a notarized (or certified) copy of the assignment document of the priority application or employment contract between the relevant assignor and the applicant.
What is the fastest way to get a patent for an application in Indonesia?
Based on our practice, the practical steps to expedite process for obtaining patent are:
- completing all the administrative requirements at the time of filing of the application;
- Filing the application by conforming claims of the granted priority claims into the present claims.
- requesting publication acceleration and requesting substantive examination at the time of filing the application
- Submitting documents of granted corresponding patent filed in US, EP, JP, KR, CN, AU, GB, DE, FR, SE, AT, NL, RU, CA.
Is Declaration of Entitlement is still required?
In the beginning of patent practice in Indonesia, Patent Office required patent applicant to submit Declaration of Entitlement. However, over the time, to simplify the administrative, the Patent Office does not require this document.
While it is not forbidden for the applicant to submit the Declaration of Entitlement, if clients provide us with the document we shall submit it with the Patent Office
How long does it take to obtain a patent?
It takes 2-4 years in average for straight-forward case. Some applications may take longer time due to several factors.
When may divisional application be filed? Can we add subject matter to the application?
Divisional application may be filed at any time before grant of the parent application. No subject matter can be added to the divisional application.
Is product-by-process claim acceptable by DGIPO?
Yes. The technical guideline of substantive examination of Indonesian patent office stipulates that a product-by-process claim is acceptable as long as it is provided with technical features of the product, because the product is not automatically considered as novel even if it is produced by a novel process.
Is conversion from innovation patent to utility model or vise versa allowable in Indonesia?
Yes
Is it mandatory for the applicant to submit Information Disclosure Statement (IDS) or the like?
No. However submission of such document will facilitate the examiner in conducting examination.
Is multiple-dependent claim acceptable in Indonesian patent practice?
Yes
What is the protection period for a patent in Indonesia
20 Years for Patent
10 Years for Simple Patent
counted from filing date and cannot be extended.
What are the required documents for filing recordal of a patent?
For name change recordation:
- Duly signed Power of Attorney
- Certified copy of name change document and the English translation.
For address change recordation:
- Duly signed Power of Attorney
For Assignment recordation:
- Duly signed Power of Attorney
- Original or a certified copy of Deed of Assignment and the English translation (if the document is not in English)
- Original Certificate
- Photocopy of official receipt of the last annuity payment
Please let us know the due date for the back dated fees
Please be informed that in Indonesia, the general deadline to pay annuity is the anniversary grant date. However, the first batch payment (back fees) covering protection period from the year of the filing date to the year of granting must be paid no later than one day before 1st anniversary grant date.
If annual fees are not paid for three consecutive years and the patent holder does not reply to a reminder from the Patent Office, a notification stating null and void of the patent will be issued.� However, the notification states that the status of null and void does not omit the patent holder's debt to pay the unpaid annual fees.� In that case, is it possible to omit the debt and stop issuing the notification by filing a request for cancellation of the patent? If not, would you please let us know the best way.
Once a patent is deemed void, filing voluntary cancellation request would neither stop the issuance of notice of invalidation nor omit the debt.
The best ways to abandon patent/application to avoid debt and minimize cost are:
- When application of patent is still pending but before requesting substantive examination. No action is necessary as failure to request substantive examination will make the application be deemed withdrawn.
- When substantive examination has been requested but substantive examination report has not been issued. File withdrawal.
- When substantive examination has been requested but substantive examination report has been issued containing objection. No action is necessary as failure to respond within stipulated deadline will make the application be deemed withdrawn.
- When notice of grant has been issued. File voluntary cancellation immediately and pay backdated annuities once the certificate is available.
- When certificate has been issued. File voluntary cancellation and pay the outstanding annuities.
If the patent term has expired, does the client's debt disappear? Or is the payment the only way to cancel the debt?
The way to cancel the debt is only by attending the payment.
Please let me know the special procedure to abandon a patent right in Indonesia. We received a notice that some abandon procedure is necessary to abandon patent rights in Indonesia. However, I could not understand it 100%.
When a patentee wishes to abandon their patent, in order to stop further annuities and their fines, the DGIPO recommends applicant/patentee to file a voluntary withdrawal/cancellation.
We wonder how a patent will be after a patent owner does not pay annuity fees of the patent for 3 years. A Japanese Patent Firm informed us the annuity fee which is not paid becomes "negative legacy" (or "charge"), which must be paid for abandonment.
If the patentee does not pay the annuity fees for 3 years, the patent will be considered null and void. The DGIPO will issue the revocation letter thereafter and send the letter to the patentee directly and copied to the agent on record.
The outstanding annuities which incurred during the 3 years including the fines are considered as debt which must be settled by the patentee. The information about the unsettled debts will be forwarded to the Ministry of Finance for debt collection purposes.
When the patentee wishes to abandon (withdraw) the patent right, do we have to submit the request for withdraw the right?
Yes
If we do not submit the request for withdraw, what would it happen? Do they charge an extra fine after several years?
The fee along with the surcharges will be rolled over for 3 years as of the deadline of the last paid annuity. After 3 years, the patent will be considered void and information about the outstanding fees (which are considered debts by DGIPO) will be forwarded to Ministry of Finance for debt collecting purpose.
If the patentee is a foreign company, where (to whom) does the notification of null and void will be sent by DGIPO?
To the patentee directly and copied to the agent on record
Does it issue for the annuities over the 3 years from the due date, not less the 3 years?
For the annuities over 3 years and less than 3 years.
What if the patentees have not submitted the revocation request to the PTO and case abandoned for more than 3 years with no notification of debts from DGIPO, what will it happen?
Failure to receive the notification letter by the patentee shall not affect the applicability of the provision. Thus, the DGIPO will send a notification letter regarding the revocation of a patent. However, due to the failure of the DGIPO in sending reminders to the patentees to pay the outstanding annuities and notifying patentees about revocation of the abandoned patents, DGIPO considers that the abandoned patents, including the ones which annuities have not been paid for more than 3 years, may become valid again if the patentees pay all outstanding annuities along with the surcharges.
Please advise us the practice for annuity payment of a Petty Patent in Indonesia
Both of Petty Patent and Patent have the same rule concerning annuity payment.
Does your Patent Office accept any document in other than English?
Yes, our Patent Office requires the English translation for any documents in other than English.
Whether is it acceptable for you to file the cancellation request with the Patent Office for patents which are not handled by your firm?
Yes, it is acceptable. However, since we are not the attorney who handle the granting procedure of this patent, the DGIPO requires Power of Attorney to support the cancellation request.
Please advise us the required documents for settling the outstanding annuities of abandon patent to the DGIPO?
The required documents for settling the debt of null and void patent are:
- Copies of certificate and front page publication B
- Copy of notice of null and void
When a formal cancellation for patent is effected, is it possible for the relevant patent to be reinstated for any reason?
It is cannot be reinstated. In accordance to article 95 of Patent Law No. 14/2001, the cancellation of a patent shall nullify all legal consequences connected with the Patent and other rights deriving from it.