Indonesian Patent Office making good on threats to suspend new patent filings – but is also offering a lifeline

Date: 2019-11-21
Author: Karen Bentley

Consistent with FPA Patent Attorneys’ previous warnings, the Indonesian patent office, DGIP, is now suspending – not yet permanently refusing - new applications filed by applicants who failed to pay their ‘annuity debt’ on abandoned Indonesian patents. Unexpectedly, applicants appear to still have some opportunity to pay their debt and lift the suspension to enable them to continue to pursue patent protection in Indonesia. At least in the short term.

As detailed in our earlier articles, (Indonesian Patent Office clarifies patent annuity ambiguities and Extending patent deadlines in Indonesia) patent owners in Indonesia who had accrued an ‘annuity debt’ under the old law were required to pay the debt in full by 17 August 2019. Otherwise, the Directorate General of Intellectual Property (DGIP) had indicated that it would refuse to accept any new patent applications from that patent owner.

In part, DGIP is now making good on that proposal, issuing letters informing applicants that their newly filed applications have been suspended due to unpaid back annuities. The process of tracking new filings and monitoring applicant status has presumably been made easier by DGIP completing the transition to electronic filing of new applications.

But what has come as a surprise is that rather than an outright refusal, DGIP is permitting some leeway for now, and providing applicants with an unexpected but welcome opportunity to settle their debts despite the August 2019 deadline. For those who did not pay the annuity debt, the suspension notices issued to date offer the patentee an opportunity to pay the debt by January 31 2020. Alternatively, the patentee can submit a ‘Commitment Letter’ by January 31 2020, undertaking to pay the annuity debt by July 31 2020.

But just as this additional, unanticipated opportunity to pay the annuity debt has been offered, there has been no indication that DGIP will continue to offer this payment opportunity indefinitely and may – without notice – begin to lock applicants out of the patent system for unpaid debts as was initially expected they would do. We therefore recommend that patentees take prompt action to resolve their annuity debt to ensure their continuing rights to pursue patent protection in Indonesia.

I have paid my annuity debt and still received a suspension notice – why is that?

Due to the large backlog of payments, verification of payment is still being processed. Until such time, despite the timely payment of an annuity debt by a patentee, suspension notices may issue on new filings. If you paid your annuity debt by the initial deadline, but have received a suspension notice, then you should respond to the suspension notice with your proof of payment.

Indonesia, being the 4th most populous country in the world with a tremendous growth rate in many industries, is an increasingly important patent filing destination. Its patent system is developing accordingly and FPA Patent Attorneys uses our extensive experience in the Indonesian market to assist international clients navigate, and keep abreast of, a rapidly evolving patent process.