Indonesian laws on intellectual property rights (“IPR”) matters (i.e., copyrights, patents, trademarks, industrial designs, integrated circuits layout design, and trade secrets) generally provide the IPR owners or holders (licensee) to permit or authorize another party to use the IPR through a licensing agreement.
Until the issuance of Regulation 8 (as defined below) there is no procedure to register a licensing agreement and parties are usually only notify the Directorate General of Intellectual Property (“Directorate”) by attaching a copy of the licensing agreement. Regulation 8, which came into effect on 24 February 2016, now requires the licensing agreement to be registered at the Directorate.
Regulation 8 is applicable to register the licensing agreements for the following IPR:
- Copyrights and related rights;
- Industrial designs;
- Integrated Circuits Layout Design (Desain Tata Letak Sirkuit Terpadu); and
- Trade secrets.
All registration applications submitted before the issuance of Regulation 8 will be processed in accordance with the process under Regulation 8.
Requirements and Procedures
A registration application must be submitted to MOLHR by the applicants, i.e., licensors, licensees, or proxies1. Note that a registration application can only be submitted by an intellectual property consultant domiciled in Indonesia if:
- the application is made by a foreign citizen; or
- the object of the application belongs to a foreign citizen;
A registration application can be submitted either electronically or manually. Before submitting an application, the applicant must pay a registration application fee, the amount of which is varied as determined by the prevailing laws and regulations, depending on the type of the IPR to be licensed.
The electronic application must be submitted through the Directorate website (http://www.dgip.go.id/), whilst a manual application shall be submitted in writing to MOLHR. Both electronic and manual applications must be accompanied by the following documents:
- a copy or evidence of the licensing agreement;
- a copy or excerpt of the valid certificate or evidence of ownership of the IPR being licensed;
- the original special power-of-attorney, if the application is submitted by a proxy; and
- the original evidence of payment of registration application fee.
A registration application must also be supported by a letter signed by the applicant stating that the IPR, being the objects of the licensing agreement:
- are still valid;
- are not detrimental to the interest of the national economics;
- do not impede the development of technology; and
- do not contradict the prevailing laws and regulations, morality, or public order.
A submitted application will be assessed within a maximum period of 10 (ten) days as of the date the application is received. During such period, MOLHR may return the application to the applicant if it requires additional documents, which must be provided by the applicant no later than 10 (ten) days as of the date MOLHR returns the application.
MOLHR will record the licensing agreement and announce the registration in the Directorate website (http://www.dgip.go.id/) if the application and supporting documents are deemed complete.
A licensing agreement registration shall be valid for 5 (five) years, which can be extended by submitting a new registration application to MOLHR.
Since Regulation 8 is relatively new we still need to see how this regulation is implemented in practice by MOLHR e.g. whether the online submission infrastructure is reliable, processing time.