Background of Enactment
On 27 July 2018, the Government of Republic of Indonesia enacted the Government Regulation No. 36 of 2018 on Recordal of License Agreement on Intellectual Property (“GR No. 36 /2018”). This GR No. 36/2018 is the implementing regulation of laws on copyright, trade secret, industrial design, integrated circuit layout design, patent and trademark.
It is important to note that GR No. 36/2018 is the first government regulation that stipulates the procedures for the record of license agreements on intellectual property. So far there are many problems towards the record of license agreement due to the absence of government regulation which stipulates the procedures for the record of license agreement. Meanwhile, the laws of intellectual property oblige the record of license agreement so that it will have a legal consequence to third parties.
Scope of Record
The record of license agreement may be made against intellectual property objects such as :
- copyright and other related rights;
- industrial design;
- integrated circuit layout design;
- trade secret; and
- plant varieties.
The record of license agreement on plant varieties must be conducted in accordance with the law governing the plant varieties sector.
Formation of License Agreement
Licensor is not allowed to grant a license to licensee in case the intellectual property rights is :
- no longer protected; or
- being abolished;
License agreement must be made in a written form. License agreement in foreign language must be translated to Indonesian language.
License agreement is prohibited to include provisions that may:
- be harmful to Indonesia’s economy and national interest.
- limit the nation’s potential to transfer, master, and develop the technology sector;
- be harmful to fair business practice;
- not comply with laws, religious values, morality, and public order.
License agreement must govern at least:
- date, month, year, and the address where the license agreement was first signed;
- identity and address of the licensor and licensee;
- license agreement object;
- matters related to both exclusive and nonexclusive license, including sublicense;
- validity period of the license agreement;
- territory where the license agreement has its applicability;
- party who bears the patent annual payment.
Application for Record of License Agreement
License agreement must be registered with and announced by Minister of Law and Human Rights in order to legally bind the third parties. In a case where the licensor or licensee resides or domiciled outside the territory of the Republic of Indonesia or is a foreigner, the application for record of license agreement must be submitted by Intellectual Property Consultant (“IP Consultant”) as the acting power of attorney.
Application for record of license agreement must be submitted in a written form in Indonesian languageto the Minister of Law and Human Rights by utilizing both the electronic (in this case is the electronically integrated data system) and non-electronic media. The required documents along with the application must at least consist of :
- copy of the license agreement;
- official version of the patent certificate, trademark certificate, industrial design certificate, integrated circuit layout design, proof of copyright ownership or other related rights, or proof of trade secret ownership that is to be registered and still valid;
- power of attorney, if the application is submitted by an IP Consultant;
- payment receipt of the license record
Announcement and Excerpt of Record of License Agreement
Minister of Law and Human Rights will issue the letter of record of license agreement and notify the applicant within two working days after the day when the examination was declared completed and appropriate.
Minister of Law and Human Rights will record the license agreement in :
- industrial design general list;
- integrated circuit layout general list;
- copyright license agreement general list;
- other intellectual property rights license agreement general list.
Record of the license agreement will then be announced in :
- industrial design official news;
- integrated circuit layout official news;
- trade secret official news;
- trademark official news;
- patent official news; or
- copyright license agreement general list
Record of License Agreement Revocation
Record of License Agreement may be revoked based on:
- agreement between licensor and licensee;
- court decision;
- other causes that is legal.
Jourdan Phillip Daniel Siahaan