In Indonesia, as in many other countries, IP agreements must be registered in order to be fully effective. Until now, registration has not been possible in the absence of registration guidelines or regulations. This situation has at last been rectified: the long-awaited regulations were issued late last month.
On 24 February 2016, the Ministry of Law and Human Rights issued Ministerial Decree No. 8 of 2016 concerning the Requirement and Procedure of Intellectual Property Licence Recordal, which serves as an implementing regulation for the recordal of IP licences.
The Decree provides that recordal applications must be accompanied by:
- a copy of the licence agreement (It may be possible to record a simple confirmatory agreement setting out key terms, without disclosing confidential terms);
- a copy of the registration certificate;
- an original power of attorney;
- the recordal fees (which are as stipulated in Government Regulation No. 45 of 2014 concerning Types and Tariffs of non-tax state revenue applicable to the Ministry of Law and Human Rights); and
- a special statement form confirming that the recorded licence agreement relates to intellectual property that is:
- still within the protection period;
- does not harm the national economy, development of technology; and
- is not against the provision of law regulation, ethics and public order.
However it should be noted that although the Decree states that applications can be filed either electronically or non-electronically, electronic filing is not currently available to the public.
Once filed, every application for IP licence recordal will be examined. If there are formality issues, the applicant will be notified and given 10 days within which to comply, failing which the application will be deemed withdrawn. If all requirements have been completed, the licence agreement will be recorded and published.
The recordal will be valid for five years; thereafter, subsequent re-applications can be made.
For trade mark owners, one of the main benefits of recordal will be the ability to rely on a licensee’s use in the event of a revocation action based on alleged non-use.
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