By John King, Principal
In most countries, patents are required to be maintained in force through payment of renewals fees, typically annually. 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.
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.
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.
We are continuing to monitor the situation and will provide further information as it becomes available. Meanwhile, please let us know if you have any questions or concerns.