Indonesian law has always required that a licence in respect of Intellectual Property (IP) rights be recorded. However, until recently, it had not been possible to record such licences due to the absence of implementing regulation. With effect from 24 February 2016, it is now both possible and mandatory to record a licence in respect of IP rights[1].
The new developments will affect licences in respect of:
These developments have been long awaited, as they finally set out the procedures and requirements for recording such licences with the Indonesian IP Office.
It is now both possible and mandatory to record the grant of an IP licence. For instance, Indonesian trade mark law now requires such recordals in order for:
Under the new Regulation, the licensor, licensee, or its proxy (i.e. an IP consultant or individual authorised by the IP owner) may submit the application to record the grant of an IP licence.
The following documents are required in order to record a licence:
The application will be examined for formalities. If there are any issues, the applicant will be notified and given 10 days to comply, failing which the application will be considered withdrawn. If all requirements are complied with, the licence agreement will be recorded and published on the website of the Directorate General of IP.
There is no indication at present as to whether the licence agreement itself will be examined substantively or the requirements as to the form or contents of the licence agreement.
A recordal of an IP licence agreement will be valid for five years, and subsequent re-applications will have to be made thereafter. When re-filing, the IP rights must still be valid.
Whilst there is no deadline by which a licence must be recorded, we recommend filing an application for recordal as soon as possible to ensure that the licensee can enjoy the full benefit of the rights in the trade mark.
Do note that the above is based on our current understanding but given that the recordal regime has only recently been implemented, there could be further developments which may vary or alter the position.