Alert 371 – Indonesia -PRESIDENTIAL DECREE No.37 of 2010-Procedure and Requirements for Recordal of Patent Assignments


On 7 June 2010, the Indonesian government issued a Presidential Decree to implement certain Patent Law provisions relating to recordal of patent assignments. 

Prior to 7 June 2010, it was not possible to record assignments of granted patents.  Although informal deposit was allowed, its legal effect was doubtful because the patentee’s name on the register could not be changed to reflect the assignee’s new ownership notwithstanding the informal deposit.  This created uncertainty, for example in knowing who to sue, and even whether an assignee could sue on its newly owned patent. In order to give more certain rights to the assignee, assignments had to include an undertaking by the assignor to enforce the patent for the benefit of the assignee should the need arise. 

The issuance of this decree puts to rest the uncertainty and the numerous assignments presently in limbo can now be recorded properly. 

The Presidential Decree encompasses the following situations involving transfers of patents:

a. inheritance;
b. gift;
c. will;
d. written agreement; or
e. Other reason justified by the laws and regulations.

Assignments fall under the limb “written agreement”.  Merger agreements should also be covered by “written agreement”.

Formality requirements - The requirements to record a patent assignment are as follows:

1. Power of Attorney (no notarization required);
2. The assignment or agreement that operates to effect the transfer (either original or a certified true copy); (commonly short form agreements are in fact used)
3. Evidence of payment of the annuity up to the current year;
4. Official fee for the recordal; and
5. The certificate of patent registration.

The Patent Office gives a grace period of 60 days to comply with outstanding formality matters. 

Where the Patent Office is satisfied with the formality requirements and the recordal process is completed, the Patent Office will issue as follows:

a.  A letter of notification of the change in proprietor.
b.  A notification in the patent gazette of the change in proprietor.

In the case of assignments which have been informally deposited with the Patent Office, we can ask the Patent Office to proceed with the recordal if we provide them with the outstanding documents: Evidence of payment of the annuity up to the current year, balance of the Official fee for the recordal and Copy of certificate of patent registration.

For further information please contact Rouse’s Jakarta office on Jakarta@iprights.com