A patent is an exclusive right owned by an inventor (inventor) for his/her innovation in the field of technology for a certain period of time. However, did you know that in some situations, the patent right holder can choose to transfer the patent right? Where the transfer of patent rights is the act of transferring the rights associated with a patent from one party to another. As part of intellectual property rights, patents, which are exclusive rights for the inventor, consist of economic rights and moral rights. Well, the economic rights of this patent make the patent transferable or assignable, while the moral rights of the patent remain attached to the inventor. But of course, this cannot be done carelessly, especially since the patent has been officially registered with the Directorate General of Intellectual Property (DJKI) of the Ministry of Law and Human Rights. Therefore, in this article, we will discuss the requirements and procedures for transferring patent rights. Let’s see the explanation until the end!
What is a Patent?
As mentioned earlier, patents are exclusive rights for inventors for their inventions in the field of technology granted by the government for a certain period of time to carry out themselves or give approval to other parties to carry out their inventions. This right makes it easier for inventors to develop their innovations without worrying about infringement. With patents, inventors can protect their intellectual property, so that not just anyone can duplicate or sell patented products or services. However, it is important to note that in order to obtain the right to this patent, the inventor must file a patent application at the DJKI of the Ministry of Law and Human Rights. Where the invention must meet the criteria set forth by Law No. 13 of 2016 on Patents (Patent Law) as follows:
- Must have an element of novelty;
- Must involve inventive measures;
- Must be applicable in industry.
As with simple patents, if an invention is a refinement of a previous invention, then the criteria that must be met include:
- Must have an element of novelty;
- Must be a development of an existing product or process;
- Must have a practical use;
- Must be applicable in industry.
After fulfilling all the above criteria, the inventor can register his patent and if accepted, the DJKI will grant a patent with a period of twenty years from the date of acceptance. As for simple patents, the term is ten years.
Then, what about the provisions for the transfer of patent rights?
In accordance with the provisions of Article 74 of the Patent Law, the right to a patent may be transferred or assigned partially or wholly by way of:
- Inheritance;
- Grants;
- Testament;
- Endowment;
- Written agreement; or
- Other reasons justified by laws and regulations.
In accordance with Government Regulation (PP) No 46 of 2020, the transfer of patent rights can only be done for patents that have been granted by the state and must be recorded in the general register of patents, and announced through electronic media and/or non-electronic media by the MOLHR. It should also be noted that as the owner of patent rights, the patent holder is obliged to pay a fee that must be paid annually (annual fee/maintenance fee). Now, this annual fee will be transferred to the patentee upon the transfer of the patent in its entirety, except:
- The patent has been licensed to another party in accordance with a license agreement; or
- Patents are implemented by the government, in accordance with applicable laws and regulations.
Procedure for Transferring Patent Rights
To be able to transfer a patent, the applicant submits an application for recording the transfer of the patent to the DJKI of the Ministry of Law and Human Rights. This application is submitted in writing in Indonesian, by filling out the form and attaching the requirements according to the method of patent transfer (inheritance, grant, will, waqf, written agreement, or other reasons). This submission is done electronically and/or non-electronically. If the applicant is not located in the territory of Indonesia, the patent transfer application must be submitted through a proxy domiciled in Indonesia. Whereas, for an applicant who is located in Indonesia, he/she can file a patent transfer application on his/her own behalf, or can also be represented by his/her attorney. After submitting the application, the MOLHR through the DJKI will conduct an examination of the completeness of the application, within a maximum period of 14 working days. In the event that the patent transfer requirements submitted by the applicant are incomplete, the MOLHR through the DJKI will provide a maximum opportunity of 60 working days from the date of notification. If the applicant or his proxy fails to complete the requirements within the specified time limit, the application for recording the patent transfer shall be deemed withdrawn. For applications that are declared complete, the MOLHR through the DJKI records the patent transfer within a maximum of 14 working days, starting from the date the requirements are met.
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Furthermore, the MOLHR through the DJKI makes an announcement in electronic media and/or non-electronic media, and notifies the recording of the patent transfer to the applicant or his attorney, a maximum of 30 working days after the recording of the patent transfer is made.
KH Contact
From the above, it can be concluded that transferring patent rights can be convenient for both parties involved, but it also requires careful planning and attention to the legal, financial, and business aspects involved. In transferring or receiving patent rights, it is important to consult with experienced legal experts and business professionals to ensure all processes run smoothly and the interests of all parties are well protected. Well, to do so, KH Buddy can leave it to Kontrak Hukum. We provide patent/brand rights/copyright/industrial design transfer registration services with competent and officially registered IPR consultants, so it is guaranteed to be auto accepted by DJKI! For ordering information, please visit the KH Services – Patent Rights Transfer page. If you have questions about other intellectual property, you can also consult with us at Ask KH or via direct message (DM) to Instagram @kontrakhukum.
