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10 August 2020
The renewal of the memorandum of understanding between the Indonesian Directorate General of Intellectual Property (DGIP) and the Japan Patent Office (JPO), comprising part of a joint statement of intent, has brought about an alteration to the possible timing of the filing of a request in connection with the patent prosecution highway (PPH) programme between the two IP offices (concurrently renewed), which could make the examination and grant of Indonesian patents more efficient for applicants.
Prior to the renewal of the programme, PPH requests in Indonesia were permitted to be made at any point in the patent application process – from publication until grant. Following the announcement of the renewal on 8 June 2020, the permitted time period for PPH requests to be filed has narrowed, to be done solely between the application having passed the publication period and the issuance of the first examination result. According to the announcement, the examination will then be completed within six months of the request's filing (provided that it was filed validly).
The increased precision of time periods brought about by this alteration provides a more clear-cut scope of examination length for applicants and should increase the speed of examination and thus overall grant, encouraging more applicants to utilise the PPH route.
Non-Japanese applicants wishing to use the route must do so through:
To validly submit a PPH request, applicants must pay the DGIP the official fee and supply a completed PPH request form, which should have attached proof of payment of the official fee for substantive examination, notification that the application has passed the publication period and a notification of completed formality examination.
The positive examination result issued by the JPO should also be enclosed, with translations of the result in English and Bahasa Indonesia. The scope of the submitted claims must be similar to or narrower than those in respect of the positive JPO examination result.
To reiterate, it is imperative for a valid PPH request that the Indonesian patent examiner has not yet conducted Stage 1 of the substantive examination side of the application.
Active since 1 June 2013, the JPO is presently the only IPO globally with which the DGIP shares a PPH agreement. In order to expedite patent grant in Indonesia, applicants should take note of the new amendments regarding PPH request filing times. Taking advantage of this shortened window of time could be key to increasing the efficacy of the entire process.
For further information on this topic please contact Ian Mirandah at Mirandah Asia by telephone (+60 322 788 686) or email (email@example.com). The Mirandah Asia website can be accessed at www.mirandah.com.
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