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Indonesia: IP e-filing system now ready for further refinement

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Wongrat Ratanaprayul of Tilleke & Gibbins provides insight into Indonesia’s e-filing system for intellectual property including areas for improvement

Indonesia’s e-filing system for intellectual property (IP) was introduced in stages in recent years, and its support of remote filings of intellectual property applications quickly became a vital tool during the COVID-19 pandemic.

With this expanded use came accelerated development, and the increasingly feature-rich system now allows the Directorate General of Intellectual Property (DGIP) to accept all types of IP submissions online.

This has had a very positive impact on the country’s IP activities beyond simply enabling the continuation of the DGIP’s application acceptance during the pandemic, and it will likely be a foundation of the DGIP’s work for years to come. Now that the online system is fully in place and functioning well, it is worth considering which points could be improved in future iterations of the project.

Patents

The e-filing system is especially easy to use for filing new patent applications, and also facilitates the completion of post-filing tasks, such as opposition filings and responses to office actions. In fact, office actions themselves are issued via the system, but this is done without any active notification, leaving it up to the filers to check on whether any office action has been issued.

Additionally, no receipt is issued after filing a response to an office action. The only way to be certain that a response has been successfully submitted is by logging into the system to check that the office action is no longer listed as outstanding.

Amendments can be submitted at any time prior to the grant of the patent. However, the official fee for excess claims can only be paid when the application status indicates that substantive examination is underway.

Designs

Design applications as well as post-application filings, including rejection responses, can also all be made through the e-filing system. However, there are issues with design applications that have more than one drawing per view. In such a case, the multiple drawings for that particular view must be combined onto one sheet before uploading the application. Otherwise, the extra drawings will be reclassified as ‘reference view’ on the design certificate, likely resulting in a lengthy delay because the e-filing system does not allow correction requests, which can only be made in person at the DGIP office.

Rejection notices are emailed and cannot be found on the e-filing system, which only displays the application status as ‘Director’s approval of rejection decision’. Similar to the office action responses for patents described above, responses to a rejection receive no official filing receipt.

Trademarks

One convenient feature of the e-filing system for trademark applications is its translated list of goods and services in English and Bahasa Indonesia, minimising the risk of erroneous translation. However, the list of goods and services is subject to change from time to time, and it is not uncommon to find either some wordings altered or some goods and services deleted altogether.

If the desired goods or services are missing from the list but are mentioned on the Madrid List of Goods and Services, an application may include a supplemental request to add them. The request process can be time-consuming, and the application will not receive a filing date unless the list has been finalised. Sometimes the request is not automatically forwarded to the classification officer, and the request must then be made to the DGIP’s customer service department.

We have also encountered several other miscellaneous issues related to the e-filing system for trademark matters:

  • After an application is submitted, an error sometimes prevents the receipt from being downloaded, requiring further discussions with customer service;

  • All notifications for trademark-related applications are issued electronically, but sometimes the notification date displayed by the e-filing system is later than the actual date of the notification letter, because the letters of notification are sometimes uploaded to the e-filing system on a different day from when they were issued by the officer;

  • The registration certificate from the e-filing system does not always list the goods or services in the same order as the application. The only remedy for this is to submit a change request;

  • The status of applications in the e-filing system is not always up to date; and

  • Under heavy traffic, the system can become inaccessible for hours. It can be difficult to reach customer service due to limited availability, and the live chat feature is likewise often delayed or unresponsive.

Conclusion

Indonesia’s adoption of an e-filing system has greatly increased the flexibility and convenience of the country’s management of IP rights – particularly for IP consultants working from home during the COVID-19 pandemic.

The online system has modernised procedures for securing intellectual assets in Indonesia, and with the additional functionality added and refined since the onset of the pandemic, the system has become an integral part of the DGIP’s interactions with rights holders and applicants. Once all of the application data from the initial phases of the e-filing system is finished being added to the current system, the e-filing system will be even more useful.

In subsequent phases of the e-filing system’s development, the DGIP will be looking to build on its successful implementation of the system by addressing challenges and shortcomings, such as those identified above. Over time, the DGIP will work out these issues and others that may arise, increasing the practicality of the e-filing system as the foremost tool for IP prosecution in Indonesia.

 

Wongrat Ratanaprayul

Director, Tilleke & Gibbins

E: wongrat.r@tilleke.com

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