In its ongoing efforts to enhance Indonesia’s intellectual property e-filing system, the country’s Directorate General of Intellectual Property (DGIP) has consistently introduced improvements to the online system. In recent months, the DGIP has implemented several noteworthy changes that differ from previous versions of the system. These changes bear significant importance for applicants who intend to file IP applications, and include the changes highlighted below for designs, patents, and trademarks.
Designs
File format and view limitation. Under current rules, all design drawings must be submitted in JPG format, and only one view is permitted per page.
No refund requests. Once the application payment has been made, refund requests are no longer an option.
Figure limitation. Only one figure is allowed for each design view, with an exception made for reference and perspective views.
Patents
Title consistency. If an invention is already registered outside Indonesia through the Patent Cooperation Treaty (PCT), the title in the Indonesian registration application must match the title registered with the World Intellectual Property Organization (WIPO).
Bibliographic data matching. In national phase applications, it is essential for all bibliographic data to mirror the information from the PCT international phase as listed on WIPO’s website. This conformity is crucial for a seamless application process.
Excess claim fees. A new requirement stipulates that excess claim fees must be paid at the time of filing the patent application.
Trademarks
Goods and services selection. The DGIP requires applicants to choose their desired goods and services from a predefined list, and the provided list is not editable. The DGIP periodically updates this list, but there is no fixed schedule for these updates. Moreover, these updates can sometimes entail removal of items from the list, and requesting the addition of goods or services is often challenging, especially if a similar alternative already exists in the list. Therefore, it is imperative for applicants to promptly decide on their chosen goods and services before the list undergoes updates.
Non-amendable choices. Once government fees have been paid, the selection of goods or services cannot be amended, even if the application has not yet been submitted.
Renewal grace period restrictions. If a trademark registration is past its expiration date but is still in the renewal grace period, it is not possible to submit any recordal of name change, address change, or assignment. Holders of trademark registrations in Indonesia thus need to keep their registrations current in order to file these recordals freely.
Using the E-Filing System
For seamless submission of their IP applications, applicants need to keep these important points in mind—and be aware that additional updates and adjustments are likely to be ongoing. The DGIP has demonstrated its commitment to enhancing its e-filing system through fixes and changes such as those described in this article. Prospective applicants should work with local experts familiar with the latest practices and requirements of the system. Such local agents and advisors can help businesses and other IP applicants avoid potentially costly delays so that they can secure and capitalize on their intellectual assets without delay.
This article first appeared in Managing Intellectual Property.
