On July 27, 2018, the Government of the Republic of Indonesia promulgated Government Regulation No. 36 Year 2018 on the Recording of Intellectual Property License Agreements (“GR No. 36 Year 2018”). This regulation is an implementing IP Law including regulation of copyright, trade secret, industrial design, integrated circuit layout design, patent and trademark laws.
It should be noted that GR No. 36 Year 2018 is the first government regulation that regulates the procedures for recording intellectual property license agreements. So far, there have been many problems related to the recording of license agreements due to the absence of government regulations governing the procedures for recording license agreements. Meanwhile, on the other hand, the law in the field of intellectual property requires the recording of license agreements in order to have legal consequences for third parties.
Scope of Recording
Recording of license agreements can be made against intellectual property objects in the field of:
copyright and related rights;
integrated circuit layout design;
trade secrets; and
Specifically for the recording of license agreements in the field of plant varieties, the recording is carried out in accordance with the provisions of laws and regulations in the field of plant varieties.
Making a License Agreement
The licensor may not grant a license to the licensee if the intellectual property rights licensed:
expires its protection period; or
has been abolished.
The license agreement is made in written form. License agreements in foreign languages must be translated into Indonesian. technology development;
result in unfair business competition; and/or
contrary to the provisions of laws and regulations, religious values, decency, and public order.
The license agreement shall contain at least:
date, month, year, and place where the license agreement is signed;
names and addresses of the licensor and licensee;
the object of the license agreement;
provisions regarding exclusive or non-exclusive licenses, including sublicenses;
the term of the license agreement;
the area where the license agreement is valid; and
the party making the annual fee payment for the patent.
Application for Recording of License Agreement
The license agreement must be recorded and announced by the Minister of Law and Human Rights (“MOLHR”), so that it can have legal consequences to third parties. In the event that the licensor and/or licensee resides or has a permanent domicile outside the territory of the Unitary State of the Republic of Indonesia or is a foreign national, the application for registration of the license agreement must be submitted through an intellectual property consultant as a proxy (“IP Consultant”).
The application for recording the license agreement shall be submitted in writing in Indonesian language to the MOLHR by using either electronic (electronic integrated data usage system) or non-electronic media. The documents that must be attached to the application for registration are at least as follows:
a copy of the license agreement;
official excerpts of patent certificates, trademark certificates, industrial design certificates, integrated circuit layout design certificates, proof of ownership of inventions or related rights, or proof of ownership of trade secrets that are licensed and still valid;
power of attorney, if the application is submitted through an IP Consultant as a proxy; and
proof of payment of license recording fee.
Announcement and Extract of License Agreement Recording
The MOLHR issues a license agreement registration letter and notifies the applicant within a period of no later than two working days from the date the examination is declared complete and appropriate.
The MOLHR records the license agreement in:
general register of industrial designs;
the general register of integrated circuit layout designs;
the general register of copyright license agreements; or
general register of license agreements of other intellectual property rights.
Meanwhile, the announcement of the recording of the agreement is announced in:
official news of industrial design;
official news of integrated circuit layout design;
official news of trade secrets;
official news of trademark;
official news of patents; or
public register of copyright license agreements.