The Gatherer 616

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In most countries, patents are
required to be maintained in force
through payment of renewals
fees, typically on an annual basis.
Additionally, in most countries, patents
can be abandoned intentionally, simply
by not paying renewal fees when
renewal falls due. However, it seems
that this is not the case in Indonesia.
For the reasons set out below, we
recommend to clients with patent
cases in Indonesia that they formally
request abandonment of pending
patent applications and granted
patents, in circumstances where
they no longer intend to maintain the
applications and patents in force.
This recommendation follows recent
developments, where the Indonesian
Patent Office is now enforcing a rather
unusual provision in Indonesia Patent
Law. The provision states that if a
patent owner does not pay renewal
fees over a period of three years, the
patent will then be deemed void from
the end of the third year. There is
also a provision that a written request
is required from a patent owner if a
patent is to be abandoned.
These provisions were little-known
and not previously strictly enforced
by the Indonesian authorities. Indeed,
the Indonesian Patent Office appeared
to previously allow patent owners
to abandon their patents merely
by not renewing the patents at the
appropriate time, as is the case in
most other countries.
However, Indonesian authorities are
now enforcing the provisions and have
commenced issuing letters to patent
owners who have sought to abandon
their patents by not paying renewal
fees when renewals fall due. The
letter seeks payment for accumulated
renewals fees over a three year
period following initial non-payment
of the renewal intended to initiate
abandonment of the patent.
Patent owners who have previously
received these letters have in some
cases chosen to not respond to the
requests, on the basis that there
seemed to be no sanction involved
through non-payment of accumulated
renewal fees. However, it seems that
the matter has now escalated, and the
Indonesian Ministry of Finance may
be taking steps to actively recover
the amounts involved. In particular,
it seems that the Ministry may be
targeting companies having assets in
Indonesia.
Additionally, patent owners who
wish to abandon currently pending
patent applications and granted
patents in Indonesia should take
steps to explicitly abandon the
cases at the same time as ceasing
payment of renewal fees. We will be
alerting clients to these issues each
time renewal of a granted patent in
Indonesia falls due.
PATENT
RENEWALS IN
INDONESIA:
A CAUSE FOR
CONCERN? In view of this development, patent
owners who have received these
requests may wish to consider
their exposure to this activity and
assess what steps might be taken
to mitigate the exposure.