Prior User Rights Under Indonesian Patent Act

Question: Please advice on the criteria to benefit a prior user right based on Article 13 and Article 15 of Indonesian Patent Act

Article 13

  1. With regards to the other provisions under this law, a party using an invention at the time an identical invention is applied for patent shall remain entitled to use such invention as the prior user, even though such identical invention is subsequently granted a patent.
  2. The provisions in paragraph 1 shall also prevail for patent applications filed with priority rights.

Article 15

  1. The party using an invention as referred to in Article 13 may be acknowledged as the prior user, if he submits a patent application therefore to the Directorate General after a patent has been granted on the identical invention aforesaid.
  2. Request for acknowledgment as a prior user must be accompanied with evidence that such invention has not been made by using descriptions, drawings, samples or other information of the invention for which a patent has been requested.
  3. Acknowledgment as the prior user shall be given by the Directorate General in the form of a prior user certificate upon payment of a fee therefore.
  4. A prior user certificate shall expire at the time patent of identical invention expires.
  5. The procedure for obtaining the acknowledgment as a prior user shall be regulated by a Government Regulation.

The issues under Indonesian Patent Law, assuming there is a legitimate Prior User ‘A’ rights are:

  1. to be able to continue such prior use of such invention even if the patentee ‘B’ is granted a patent in Indonesia even if the priority date is earlier (even if ‘B’ has filed anywhere else in the world before this prior use date. Referred to in Article 13).
  2. ‘A’ has no rights to claim prior use if ‘A’ has used knowledge derived solely from ‘B’s patent published or disclosed anywhere in the world (Referred to in Article 14)
  3. ‘A’ must submit a patent application to the Director of Patents in Indonesia after ‘B’ patent has been issued.
Only then the Prior User rights will accrue to ‘A’ with evidence of Indonesian novelty by ‘A’ that he is a genuine inventor (Referred to in Article 15).

Prior user rights in Indonesia allow non-patentees to continue using their inventions in the same right as they had been before a patent on that same idea issued to ‘B’ and it shall expire at the same time as the expiry of ‘B’ Patent.

Article 13 (1) further implies that ‘A’s prior use is meant to give protection to ‘A’ with good faith but ‘A’ did not make an Application for patent.

  1. under the current Patent Law, the procedure for ‘A’ to obtain the recognition as a prior user is yet to be regulated by Law. The Patent Office is unable to give such recognition and will probably leave it pending until the issuance of said Regulation. Meanwhile, it is questionable if 'A' can continue with 'A's prior use while 'A's application is still pending.
  2. based on the information from the Registry, the request for obtaining the certificate as prior user is rarely filed due to the above reason, in addition to the administrative reason that such request shall be furnished with the evidence that the exploitation of said invention was not performed using any information on the invention for which a patent has been requested.
  3. the prior use claimed by ‘A’ must be only in Indonesia and if ‘A’ has prior use in India (for example) than this is not considered prior use.
  4. "A" cannot license the prior user rights unlike 'B' who’s granted patent can be licensed to multiple parties non-exclusively.
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