Guidelines for the National Phase Entry for Patents in Indonesia

6th June, 2024 - 5:02 am Categories: Patent Filing 0 Comments

National phase entry is the process by which a patent application is filed with foreign countries to get into the national phase through the Patent Cooperation Treaty (PCT) to get international patent protection in that individual country or region. This process begins directly at the national or regional patent office of the country in which the applicant wants patent protection. An applicant can seek patent protection in another country by entering the national phase, but the procedure can be initiated only if the PCT procedure has already concluded in their country, 30 months from the earlier date of filing the initial application. Through this blog, we will understand the national phase entry for patents in Indonesia. How patent holders can protect their inventions across borders from commercial exploitation.

The Patent Cooperation Treaty (PCT) protects the patent rights of inventors, allows them to commercially exploit their inventions, and also excludes others from making commercial gains from them. Indonesia, as a core member of PCT, protects the commercial rights of inventors over machines that are new or improved versions of them, any chemical composition, and articles of manufacture. Being a member of PCT, Indonesia has a well-structured procedure for national phase entry through which international patent filings can be made to safeguard the inventor’s intellectual property rights and claim a monopoly. This blog aims to discuss the procedure of the Indonesian national phase entry process in detail and provide a comprehensive understanding to the readers regarding patent protection in Indonesia by covering all the essential steps, deadlines to be followed, and all mandatory statutory compliance.

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The most important and initial key step an applicant needs to go through to get patent protection in Indonesia is the national phase entry process. A patent applicant needs to request first and an application needs to be filed within a deadline of 31 months from the PCT filing date or priority date. This application is filed with the Indonesian Patent Office. It is required to adhere to the deadline of application filing.  In case the deadline is missed due to any acceptable reason, an applicant can ask for a deadline extension, following any of these two provisions. One of them is a three-month extension since the expiration of 31 months as of the International Filing Date. The three-month extension require to be requested with an appropriate reason and an additional fee for the extension as prescribed by the Indonesian Patent Office. Another alternative provision that can be requested is a twelve-month extension since the expiration of 31 months as of the International Filing Date of the patent application. This provision can be used to request an extension of twelve months to file a patent application. It also needs to cite a valid reason in accordance and an additional fee for delaying in filing. Applicants should adhere to these deadlines for a smooth filing of their applications.

The next essential step in the national entry phase is documentation. In documentation process, applicant have to submit all the requisite documents aligning with the deadline of documents. These documents include the following:

• Complete details of the inventor and applicant
• A scanned copy of the signed power of attorney
• Details of the international publication of the PCT application
• English specifications include descriptions, abstracts, titles, claims, and drawings.

In Indonesia, for national phase entry, a signed power of attorney is a must, and if the applicant is not the inventor(s), then a copy of the assignment deed, signed by the inventor to assign his rights to the applicant for commercial purpose, is needed for the filing of the national phase entry. The submission of all required documents should be on time. An applicant needs to adhere to the deadlines, which are as follows: Firstly, three months is given for the submission of documents and the timely furnishing of documents as necessary. If such a situation of delay arises, then an extra two-month extension can be requested. Even if, after an extension for two additional months, the applicant fails to submit the essential documents, an additional one-month extension can be asked for one more time with an additional fee as per the Indonesian patent office. To continue the progress of the patent application, timely submission of the necessary documentation is essential.

Further, the translation of the patent specification is necessary to continue the application process; the translation of the patent specification should be translated into the official language of Indonesia (Bahasa). This patent specification should be furnished within 30 days. While it’s submission, an applicant should adhere to the time limitations and with accuracy; these are crucial to be followed while translating to avoid potential rejection or complications.

The next important step in the national phase entry of patent is the substantive examination phase. In this step, the uniqueness of the invention is evaluated by the patent office. In this process of evaluation, the patent office checks the novelty of the invention, how unique it is, the inventive steps involved in the invention, and its industrial applicability. In a wider sense, it is also measured by how it can upgrade and contribute to industrial as well as human resources. In the context of Indonesian national phase entry, the examination of filed application is requested within 36 months from the application filing date. The applicant will have to make the request for the examination within the stipulated time, if their failure arises, the status of the patent application will be abandoned.

The publication of patent application by the Indonesian patent office is the next essential step of national phase entry in Indonesia. In this process, the patent office publish the application of patent in the Official Gazette of Intellectual Property Indonesia. After publication of application, these are accessible through public domain, which is accessible through the gazette and also through the online database of the Patent Office of Indonesia. This publication of the patent application is commenced at the latest of six months from the national phase date. By making the details of the patent application publicly available, the patent office gives a general offer to the public and allows oppositions, comments, or any other opposing opinion from third parties. If any concerned party has raised an objection or such an event arises during this phase, then an office action may be requested by the Indonesian patent office. An office action is a kind of formal conversation in which the applicant has to respond within three months. In cases of raised opposition, the applicant has the option to file a counter-statement, which is considered by the patent office during the substantive examination phase to determine whether to grant a patent or not. A three-month time period is stipulated by the Indonesian patent office to respond to office action; in the case of failure in response due to any acceptable reasons or requirement of more time, a two-month extension can be asked.

Addressing the objections and concerns raised by the Indonesian patent office is very essential. So, the applicant should respond comprehensively within the deadline to safeguard his patent. The crucial step in national phase entry is the decision to grant or reject the patent application. This decision is given by the Indonesian Patent Office within a 30-month time period from the date of requesting the substantive examination or from the end of the publication of the patent application. The applicant needs to pay the official grant fee within 1 month from the date of issuance of the allowance notice. In Indonesia, a patent is valid for 20 years from the date of filing in Indonesia. Once the patent is granted, the applicant needs to pay an annuity to maintain the validity of the patent. The annual maintenance fee for patents is due every year and applicant should pay it annually.

The first annuity of the patent in Indonesia is counted from the date of international filing. The due annuity of patent before the grant of patent should be paid by the applicant within 6 months from the Notice of Allowance, including the annual fee for the next year. Applicant should pay the subsequent annual fee at least one month prior to the due date (the anniversary of the international filing date). Moreover applicant has the choice to request a twelve-month extension period for the payment of the annuity fee. This request should be made at least 7 days prior to the due date. There is a concept of a grace period in Indonesia. A novelty grace period in Indonesia is six months, which is constituted six months prior to the earliest filing date. In the case of late payment during the grace period, you would be subject to a 100% surcharge. If it is not paid during this period, the status of the patent will be declared abandoned. For the revival of the patent, the client will need to go to the Commercial Court to file a corresponding request. So, a patent holder should pay annuities on time in order to avoid the expiration of patents.

At last, in conclusion of this blog, navigating the national phase entry process in Indonesia, these are the guidelines that should be kept in mind. For a smooth and successful national phase entry process in Indonesia, clients need to request to file an application, required documentation, a very conscious grasp on deadlines, adherence to prescribed time from the patent office, patent-specific translation in Indonesian, a request for substantive examination, publication timelines, an attentive response to office action, a decision of grant or rejection of a patent within a time frame, and then timely payment of annuity. By making a strong grasp on these key guidelines, you can protect your client’s invention in Indonesia through international patent filing through national phase entry.

Author: Prity Suman, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.