Indonesia has finally set the wheels in motion to enable the recordation of license agreements for copyright, patents, trademarks and industrial designs.
Whilst recordation has always been a requirement to render license agreements enforceable against third parties in Indonesia, the actual process of recordation itself has been impossible due to a lack of regulations implementing a formal process.
Until now, IP owners have filed license agreements which enabled them to obtain an official seal, but have remained uncertain as to whether the documents would in fact be enforceable against third parties. For this reason, the new regulations issued by the Ministry of Law and Human Rights in February have come as a welcome development for IP holders.
What the new regulations mean for IP holders
Official recordation of intellectual property license agreements means IP owners can now be confident of their ability to enforce their rights against infringement.
It also guarantees that a licensee’s use of a trademark under a license agreement will be recognised by third parties. This avoids the risk that their trademark will be cancelled on the basis of ‘non-use’ after three years, due to no ‘actual’ use being recognised by third parties.
The process implemented by the new regulations
The recordation process starts by submitting a request either online through the Directorate General of Intellectual Property (DGIP) website (currently not operational) or by submitting a hardcopy request to the DGIP.
Additional documentation must accompany the request including:
- original power of attorney;
- copy of IP registration certificate;
- short form license agreement in English & Indonesian;
- original payment receipt; and
- statement by IP owner that the licensed IP rights are validly held and that the license is not detrimental to the national economy or in contravention of Indonesian laws. Once a recordation request is submitted, the DGIP will examine it for completeness and record the IP license agreement. The recordation will then be valid for 5 years but may be extended subject to additional fees and in accordance with applicable laws.If you have submitted a license agreement prior to the enactment of the new regulations, ask us about re-filing your agreement under the new procedures to ensure full enforceability of your intellectual property rights and recognition of your license agreement by third parties.