In most jurisdictions, it is possible simply to abandon a patent or application by not paying the required maintenance fees, which are generally due annually. If the fee is not paid by the due date, the case is deemed to be abandoned and the matter is closed.
However, the Indonesian Directorate General of Intellectual Property (DGIP) over the last few years has taken a rather unique view of maintenance fees, regarding them as a debt to be settled up until such time as the case has been actively abandoned by the patent owner. This is particularly significant because under Indonesian patent law, all the accumulated back-annuities become due at the time of grant.
To illustrate the situation, if an Indonesian patent grants after 10 years, the Indonesian patent office considers that the applicant has incurred a debt of 10 years renewal fees that must be paid. By the time a case has progressed to grant stage, there is simply no way to avoid that debt. Active abandonment of that case (to prevent further debt) can only take place if the back fees are paid.
The unusually long grace period of three years for payment of annuities in Indonesia also means that even if the applicant decides to passively abandon the case at grant by non-payment of the back fees, an annuity debt will continue to accumulate for an additional three years.
The DGIP attempted to recover this asserted debt from patent owners in 2015, prior to a change in the law, although, unsurprisingly, it appears that this approach did not meet with a great deal of success.
The DGIP has now taken the rather extreme position that they will not accept any new patent applications from patent owners who have incurred such an asserted debt. Any such debts need to be settled by 17 August 2019 according to the Indonesian patent office.
The situation applies for any unpaid annuities up until 26 August 2016, when the law on annuities was changed to aligned with accepted global practice.
This situation could be of importance to parties who may have an earlier abandoned Indonesian case but are looking to file there in the future. If you have any questions, please get in touch with your regular contact at Shelston IP, or contact email@example.com.
Authored by Charles Tansey, PhD