Unpaid Annuities in Indonesia
New Patent Law came into effect on August 26, 2016 in Indonesia.@Under the old law, if annuities were not paid for three consecutive years, the patent would be deemed void but the patent holder still owes the Patent Office unpaid annuities for that 3 year period. However, this obligation is not applicable under the new law since a patent will be considered null and void right away if annuities are not paid by the due date.
In this regard, the Indonesia Directorate General of Intellectual Property (DGIP) has recently started issuing a notice to the patent holders who have outstanding annuities that if they do not pay the unpaid annuities within 6 months from the date of notice, DGIP will refuse new patent applications.
Working Requirement in Indonesia
In Indonesia, the patent law introducing the working requirement came in effect on August 26, 2018. According to the law, the patent owner is required to make a product or use process in Indonesia that is covered by the patent within 36 months from the registration date. If it is not worked by the end of the period, a third party can apply for a compulsory license, and the Ministry of Law makes a decision whether or not to grant the compulsory license. It is not required to file a statement to declare the use of the patent, yet the owner must prove its use when an application for a compulsory license is filed by a third party.
In order to clarify the working requirement, the Indonesian government implemented new Regulations on July 11, 2018. Under the Regulations, a patent owner is allowed to postpone the obligation for up to 5 years by filing a postponement request with its reasoning during the 36 months period.
Extension of grace period for inventions, utility models and designs
The Patent Act Article 30 was revised on June 9, 2018, and the time period of the exceptions to loss of novelty, so-called grace period, for inventions is now extended from six months to one year. This revision applies to Utility Model Act Article and Design Act Article as well.
Statistics regarding Recent Trend of Japanese Patent Practice
Japan Patent Office (JPO) issues an annual report which includes statics such as patent grant rate, duration of waiting time for substantial examination, etc. These statics are summarized in a brochure which can be seen by using the following link.
Japan: Product-By-Process Claims
A historical decision was made on Product-By-Process claims by the Supreme Court of Japan on June 5, 2015.
Please see the details at https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/product_process_C150706_e.htm
Request for Examination Delay System for Taiwanese Patent Application
Grace system that can delay the starting time of substantive examination of the Taiwanese patent application was introduced, and the request has been accepted since April 1, 2015. If it is an invention patent application (except for the specific invention patent application),during the 3 years from the filing date of Taiwan, regardless of the presence/absence of the priority claim, the request can be submitted to Taiwan Patent Office on or after the day the request for the substantive examination was submitted. In addition, desired date to start substantive examination must be within three years from the date of filing of the application, and the date must be identified. On the desired date, the application is added to the substantive examination application waiting list for the year.
KIPO: Revision of fees
Revision of application fee, Examination fee, and additional charges for late annual fee payment are effective as of March 1, 2014. Please refer to the website below for the detailed new fees.
Changes in Patent Law Treaty (PLT) and Patent Law Treaty Implementation Act (PLTIA)
Followings are the main changes, effective as of December 18th, 2013, based on enforcement of revised PLT and PLTIA;
1. It is not necessary to file claims and specifications/drawings for securing a filing date for a non-provisional application except a design application. Such a non-provisional application can be filed by reference to a previously filed application. An applicant has to complete a filing requirement for a claim(s) and/or a copy of the specification and drawings in a period of time set by USPTO.
2. Revival of abandoned applications and lapsed patent is permitted. Based on this change, USPTO accepts delayed issue fee or delayed maintenance fee payments upon petition and payment of petition fee (currently $1,700.00). However, this petition is accepted only on the basis of "unintentional" delay.
3. Late filing of priority claimed applications is permitted within two months from the expiration of the 12 month priority period (6 month period for design applications). The right of priority may be restored upon petition and payment of the fee (currently US$1,700.00), if the delay in filing was unintentional.
4. A reduction of Patent term adjustment would occur if an application is not in condition for examination within 8 months of its filing date or a date of national phase entry of an international application.
Global PPH (GPPH) pilot program
The PPH enables an@applicant to go through an accelerated examination process at the Office of Second Filing simply by filing a request based on the bilateral office agreement. By doing so, a favorable work product found at the Office of First Filing will be utilized to accelerate examination process.
However, applicants have been asked to go through different procedures to file an application receiving PPH benefit based on the bilateral office agreement.
Global PPH (GPPH) pilot program, commenced from Jan., 2014, makes various PPH programs among the following 13 countries and regions harmonized so that applicants do not have to consider which PPH program should be claimed at or after filing.
The participating countries are listed below;
Japan, the U.S., the ROK., the U.K., Denmark, Finland, Russia, Canada, Spain, the Nordic Patent Institute, Norway, Portugal, Australia.
Kindly reminded that EPO and SIPO would not participate the pilot program
Further information is available at Ministry of Economy Trade and Industry's website at http://www.meti.go.jp/english/press/2013/1101_07.html
After Final Consideration Pilot Program 2.0@Extended Period
On May 19, 2013, the United States Patent and Trademark Office (USPTO) launched gAfter Final Consideration Pilot Program 2.0h (AFCP 2.0) to compact the prosecution and to let examiners and applicants have better communication by providing an additional time for examiners to search and/or consider responses or conducting an interview with an applicant. The original duration of AFCP 2.0 runs from May 19, 2013 until September 30, 2013, but as of November 22, 2013, it is extended till September 30, 2014.
Special Technical Feature (STF) of Invention
Revision of Examination Guidelines, applicable to Examination for Patent and Utility Model applications on or after July 1, 2013, effects on "Requirements of Unity of Invention" and the "Amendment that changes Special Technical Feature of Invention".
More details are available at JPO's website
EPO:Revision on the time limit for filing divisional applications
In accordance with current version of Rules 36, 38, and 135, EPO strictly restricts the time limits for filing divisional applications. On Oct. 16, 2013, the Administrative Council of the EPO; however, decided to remove the restrictions regarding the requirements for the filing of divisional applications from these Rules.
With the new Rule which will be effective from April 1, 2014, it will be possible for an applicant to file a divisional application based on any pending European patent application including those pending European patent applications which passed deadlines for filing divisional applications defined by current version of the Rules.
The official announcement by EPO is available at
Jensen Denmark Aktieselskab and Purex Co., Ltd v. Totofolder Manufacturing Co., Ltd
Jensen Denmark Aktieselskab, a Danish company which manufactures and sells the automatic washing systems for linen washing factories, and Purex Co., ltd, an exclusive licensee of a Japanese patent of fabric expanding apparatus of Jensen, filed Patent infringement lawsuit against Totofolder Manufacturing Co., Ltd at Tokyo District Court.
Mr. Fujitani, the president of our firm, and Mr. Ohba, the council of City-Yuwa Partners, co-represented the plaintiffs and won this lawsuit.
Further details are available at http://www.courts.go.jp/hanrei/pdf/20131001134025.pdf