Patent protection system application<\/p>\n
This is the second article on patent protection in Indonesia
\nby James B. Lumenta, a senior intellectual property lawyer of
\nAmroos Law Consultants in Jakarta. He is currently a researcher
\non Asia Pacific Intellectual Property Law, at Murdoch University
\nin Perth.<\/p>\n
PERTH (JP): To help the patent office acquire more information
\nrequired in dealing with a thorough examination of a proposed
\npatent, the deferred examination system adopted by the 1989 law
\nwill remain unchanged, except for the patent office's time period
\nof publication, which had aroused strong protest in the past.<\/p>\n
Under current provisions, the patent office is obliged to
\npublish a preexamined patent application within six months from
\nthe filing date of the patent application or 12 months from the
\npriority date, in the case of a convention application.
\nInterestingly, the statutory period has now been changed to 18
\nmonths. Such a publication will stand for six months for those
\ninterested in public inspection and opposition.<\/p>\n
A request for a substantive examination should be filed in
\nwriting within 36 months of the filing date of the patent
\napplication, but not before the expiration date of the six-month
\nstatutory period for opposition (Article 55 and 56).<\/p>\n
For the purpose of a substantive examination, it further
\nprovides that the Indonesian patent office may request for the
\nassistance from foreign experts or make use of the facilities of
\n\"other patent offices\" through international patent cooperation
\n(Article 58).<\/p>\n
No later than 36 months after the date on which a request for
\nexamination is received, the Indonesian patent office shall be
\nobliged to render its decision as to whether the patent applied
\nfor is to be granted or refused (Article 61).<\/p>\n
A patent shall be issued upon grant and recorded in the patent
\nrolls, thereafter published in the patent's official journal
\n(Article 64).<\/p>\n
In the event of refusal, the applicant may appeal to the
\nPatent Appeal Commission within three months from the date of
\nrefusal (Article 70). Any decision handed down by the Patent
\nAppeal Commission shall be final and conclusive. In other words,
\nunder no circumstance can it be subject to judicial review
\n(Article 71).<\/p>\n
Since it is a decision issued by an administrative body of the
\nexecutive branch, it is not surprising for it to be classified
\nunconstitutional and against both the civil rights and judiciary
\npower of the Supreme Court.<\/p>\n
Apart from the above academic objections, it is nothing worse
\nthan the fact that there has never been an existence of such a
\nPatent Appeal Board in the history of Indonesian patent practice.
\nConsequently, if there is any refusal, no one, including the
\nofficials, knows what recourse is available.<\/p>\n
To comply with Article 33 of the TRIPs Agreement, the duration
\nof a patent for a invention under the forthcoming statute shall
\nbe 20 years from the filling date of the patent application
\n(Article 9). This is a change from the 14-year term of protection
\nprovided in the 1989 law.<\/p>\n
In regard to simple patents (utility models or petty patents),
\nwhich largely involve indigenous technology filed by local
\npeople, the term of protection shall be available for 10 years
\n\"from the date of grant\". Under no circumstance can it be the
\nsubject of a compulsory license (Article 112).<\/p>\n
Among the most controversial and sensitive issues causing
\nnuisance to particular industrialized nations are the provisions
\non compulsory licensing.<\/p>\n
Before we examine everything provided by the Indonesian Patent
\nLaw, it is essential that we first look at the principles and
\nrules established by the Paris Convention, and the TRIPs
\nAgreement as well.<\/p>\n
The Paris Convention permits each country to grant compulsory
\nlicenses to prevent abuse (Article 5A2), which has to be applied
\nfor by an interested party after four years as from the patent
\napplication filing date or three years from the date of grant of
\nthe patent, whichever period expires last (Article 5A4). Where
\nsuch a compulsory license has not been sufficient to prevent
\nabuse, forfeiture of the patent may occur. However, proceedings
\nfor the revocation may be instituted only after two years from
\nthe grant of the first compulsory license (Article 5A3).<\/p>\n
Neither \"abuse\" or \"compulsory license\" is defined in the text
\nof the Paris Convention, although it does give an example of
\nabuse, defined as \"failure to work\".<\/p>\n
Although under the Paris Convention, neither the term
\n\"compulsory license\" nor any reference to the insufficiency or
\nfailure of a patent as a principal justification to compulsorily
\nlicense could be found in the TRIPs Agreement.<\/p>\n
Article 31 of the TRIPs Agreement provides quite a number of
\ndetailed conditions on the so-called \"other uses of subject
\nmatter of a patent without authorization of the patent holder\"
\n(which is generally known as compulsory licensing). The \"other
\nuse\" here is a use other than that allowed under Article 30,
\nwhich permits members to provide limited exceptions to the
\nexclusive right of a patent, as long as it \"does not unreasonably
\nconflict with the normal exploitation of the patent and does not
\nunreasonably prejudice the legitimate interest of the owner
\nand...third parties\".<\/p>\n
Article 31 provides no limit to the grounds upon which
\ncompulsory licenses may be granted, it merely sets out the
\n\"conditions\" to be met \"where the law of a member allows for
\nother uses\". Conditions that are provided:<\/p>\n
-- the grant of a compulsory license shall be considered on
\nits individual merit;<\/p>\n
-- only if prior efforts to obtain authorization from the
\npatent holder have not been successful within a reasonable period
\nof time. This requirement is subject to national emergency and
\npublic non-commercial use and to payment of \"adequate
\nremuneration\" which shall remain open to judicial review.<\/p>\n
A compulsory license shall be granted by a district court, by
\nrequest of an interested party, on the grounds of a nonworking
\npatent in Indonesia by the patent holder after three years from
\nthe date of a grant. Compulsory licenses shall also be available
\nin the event when exploitation of a patent was in such a manner
\nas to prejudice the interests of society (Article 82).<\/p>\n
In addition to the grounds of nonworking, some other
\nconditions to be met by an applicant of a compulsory license
\nshall include (Article 83.1):<\/p>\n
(a) persuasive evidence which establishes that the applicant:<\/p>\n
(1) is capable of fully exploiting the patent in question;<\/p>\n
(2) has their own facilities to immediately work the patent;<\/p>\n
(3) has made necessary efforts within a sufficient period of
\ntime to negotiate with the patent holder on reasonable terms and
\nconditions, but was unsuccessful in gaining authorization from
\nthe patent holder.<\/p>\n
(b) the court's belief that the patent can be exploited in
\nIndonesia in a feasible economic scale for the benefit of
\nsociety.<\/p>\n
Furthermore, the amount of royalty payable to the patent
\nholder as well as the methods of payment shall be determined by a
\ndistrict court (Article 85.2); the nature of the compulsory
\nlicense shall be \"nonexclusive\" (Article 86a) and such use shall
\nbe predominantly for the supply of the domestic market (Article
\n86g).<\/p>\n
A compulsory license shall also be available where a patent
\ncannot be exploited without infringing another patent, on
\ncondition that the invention claimed in the second patent shall
\ninvolve a technical advance of great significance compared to the
\ninvention claimed in the first patent, and in which the owner of
\nthe first patent is entitled to a cross-license to use the
\ninvention claimed in the second patent, and use of the first
\npatent by the compulsory licensee shall not be assignable, except
\nbe assigned all together with the second patent (Article 88).<\/p>\n
With respect to all the provisions on compulsory licensing, no
\none will see any reason to contest its conformity with the
\nprinciples and rules provided in the text of the TRIPs Agreement.
\nAnyway, if we look into the grounds on which to grant a
\ncompulsory license and the concept of \"working\" or \"nonworking\"
\nof a patent under the Indonesian system, it would certainly make
\na great difference.<\/p>\n
As for Indonesia, it is a matter of principle, that a patent
\nholder shall be obliged to work or exploit their patent within
\nthe jurisdiction of the Republic of Indonesia (Article 18.1),
\nsubject to limited exceptions to be provided for under government
\nregulations (article 18 paragraphs 2 to 4). This constitutes the
\nworking of a patent, despite the exclusive right vested in a
\npatent holder to prevent unauthorized importation by third
\nparties of a patented invention into the country (Article 17).
\nThe fact remains that no action whatsoever can be initiated to
\nprevent such unauthorized imports unless the patent has been
\nexploited in Indonesia by the patent holder (Article 21).<\/p>\n
Nevertheless, in respect of forfeiture of a patent, the law
\nestablishes a plain copy of the text derived from Article 5A3 of
\nthe Paris Convention, in case a compulsory license has not been
\nsufficient to prevent abuse which is prejudicial to public
\ninterest. Forfeiture of the patent may occur, however proceedings
\nfor the revocation may be instituted only after 2 years from the
\ngrant of the first compulsory license (Article 97.1c).<\/p>\n
It is beyond doubt that the inclusion of an enforcement
\nmechanism in the TRIPs Agreement has been a great revolution in
\nthe international intellectual property regime this century.
\nHowever, the effectiveness of this new mechanism for the
\nprotection of intellectual property remains to be seen.<\/p>\n
Since the system introduced under Part III of the TRIPs
\nAgreement is a typical common law system as opposed to the civil
\nlaw system adopted by Indonesia, it might take quite a long time
\nfor the country to make some compromising adjustments to the
\nprevailing legal procedures as a whole.<\/p>\n
Despite the tough enforcement mechanism provided under
\nArticles 41 to 60 of the agreement, that members shall
\nincorporate into their national laws, many are skeptical if this
\ncould be effectively enforced in Indonesia.<\/p>\n
Both civil remedies and criminal penalties are available for
\npatent infringements under current and proposed law.<\/p>\n
In civil proceedings, a patent holder or their licensee is
\nentitled to ask for an injunction, damages and delivery of the
\ninfringing products (Articles 122-123). Through criminal action,
\nthere are two categories of penalties that can be cumulatively
\nimposed on two different types of offenders (Articles 126-127):<\/p>\n
-- a maximum 7-year prison term plus a maximum Rp 100 million
\nfine for counterfeiting a patent for invention; and<\/p>\n
-- a maximum 5-year prison term plus a maximum Rp 50 million
\nfine for counterfeiting a simple patent.<\/p>\n
However, all legal proceedings shall basically be subject to
\ngeneral provisions set out by prevailing codes of civil procedure
\nand criminal procedure.<\/p>\n
It is worth noting that a number of new provisions have been
\nadded to the prospective law, to be in line with TRIPs
\nprovisions. For example, the reversal of the burden of proof to
\ndefendants in civil proceedings where an infringement of a
\nprocess patent (Article 123A) and seizure by the Government and
\ndestruction of infringing articles is involved (Article 128A).<\/p>\n
Window A: Among the most controversial and sensitive issues
\ncausing nuisance to particular industrialized nations are the
\nprovisions on compulsory licensing.<\/p>\n
Window B: Both civil remedies and criminal penalties are available
\nfor patent infringements under current and proposed law.<\/p>",
"url": "https:\/\/jawawa.id\/newsitem\/patent-protection-system-application-1447893297",
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"sponsor": "Okusi Associates",
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