The Ministry of Law and Human Rights (MoLHR) of Indonesia recently issued regulations outlining the procedure for recordal of IP license agreements in Indonesia. It should be noted that while the regulations were recently issued, the law requiring recordal of license agreements has been in place since 2000 (industrial designs), 2001 (trademarks and patents) and in 2002 as amended in 2014 (copyright).
The recordal of license agreements with the Directorate General of Intellectual Property Rights (DGIP) is mandatory pursuant to Article 43 (3) of the Indonesian Trademark Law (Law No. 15 Year 2001), Article 72 (1) of Patent Law (Law No. 14 Year 2001), Article 35 (1) of the Industrial Design Law (Law No. 31 Year 2000) and Article 83 (1) of the Copyright Law (Law No. 28 Year 2014). Without such recordal, a license agreement cannot be enforced against third parties. Prior to the issuance of these regulations, IP owners simply filed a copy of their license agreements with the DGIP for the purposes of obtaining an official stamp as evidence of such recordal and to demonstrate their good faith.
The new regulations issued on February 24, 2016, lay down the requirements and procedures for recordal of intellectual property license agreements covering copyrights, trademarks, patents, industrial designs, integrated circuit layout designs and trade secrets.
A request for recordal may be filed by the licensor, licensee or their duly authorized representative. Such request is filed in writing with the MoLHR of Indonesia or electronically through an online filing portal using the DGIP website.
As stated in Article 4 of the regulations, the following documentary requirements are required to proceed with the recordal of an IP license agreement:
1. A copy of the license agreement or evidence of the license agreement;
2. A copy or certified true copy of the COR of the valid patents, trademarks, industrial designs, layout design of integrated circuit, or proof of ownership of copyright, related rights, or trade secret covered by the agreement;
3. An original power of attorney, if such request for recordal is to be submitted through a representative;
4. A standard form of statement letter signed by the applicant stating that the IP rights subject of the agreement are still valid, do not harm national interest, do not obstruct innovation of technology, and do not contradict prevailing laws and regulations, norms and public order; and
5. Original payment receipt of the official fees.
Upon submission of the above documents, the DGIP shall conduct a formal examination of the documents. Examination of the application for recordal shall be completed within 10 days from receipt of the documents. If further documents are required, the DGIP shall notify the applicant, and an additional period of 10 days may be allowed to submit the required documents. Failure to submit the required documents may result in the withdrawal of the recordal application.
On the other hand, if all requirements are submitted and once approved, the license agreement will be recorded and published in the DGIP website. The recordal is valid for five years. Thereafter, a subsequent re-application for recordal may be filed, provided all the covered IP rights are still valid.
The issuance of this regulation is a welcome development considering that a license holder does not have a recognized right in Indonesia to enforce the licensed intellectual property rights against an infringer in the absence of such recordal. Moreover, the license holder’s use of the IP will not be recognized as “actual use” by the IP owner if the license agreement is not recorded with the DGIP.
It should be noted that the current trademark law allows a trademark owner to grant a license to another party. Upon recordal of the license, such use by the licensee will be considered as “actual use” to prevent a cancellation action filed by third party on the ground that the mark has not been used (non-use) during the three year vulnerability period.
A request for recordal of an IP license agreement filed prior to the issuance date of the Regulation No. 8 Year 2016 shall be processed in accordance with the above regulations.
This article was first published in Asia IP on July 31 2016. For more information, please visit http://www.asiaiplaw.com/.