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Manage your Intellectual Property in South-East Asia

Case Study 22 - Potential patent invalidation under the new Patent Law in Indonesia

Background:

A chemical manufacturer was unsure about the provisions on potential patent invalidation of the new Patent Law of Indonesia, which sets a new potential ground for patent invalidation and came into effect in August 2016. Based on the new Patent Law, any patent might be vulnerable to invalidation if the patent holder does not produce the products or use the process within Indonesia. Given that the law is quite recent, it remains uncertain how the provision will be interpreted in court. 

Action taken:

The manufacturer sought advice from a local patent attorney regarding their concern. They were then advised that this particular provision of the new Patent Law in Indonesia could be considered as conflicting with Article 4quater of the Paris Convention, in which Indonesia is also a contracting a European member state. This is a potential counter-attack that the manufacturer can seek on the legality of such a provision, which has not yet been elaborated or challenged by Indonesia’s Directorate General of Intellectual Property (DGIP) or in the courts so far.

Outcome:

The advice provided by the local patent attorney has provided the manufacturer with a legal option on potential scenarios, enabling the company to enhance its legal strategy for business operations in Indonesia in light of the legislative developments in the country.

IP lessons:

  • South-East Asia, being comprised of developing economies and changing laws, as well as being a prolific global manufacturing hub, is currently a challenging arena for IPR protection and enforcement. Quick access to updates on the region’s changing laws will be key in protecting IP effectively in South-East Asia.
  • Compare local regulations and international regulations as it can be a potential argument to protect your IP in the context of rapidly changing regulations in South-East Asian countries.
  • Consult with legal service providers having local expertise who would be able to navigate the legal and operational considerations to best serve your needs for IP protection.
  • Understanding local practices is also very important to achieve successful results in IPR protection.
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