FAQs

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• What happens if I do not register my design?


A well-designed product can be synonymous with the image of your undertaking, and thus become a valuable asset for you. If you do not protect your design, others may benefit from your intellectual property by counterfeiting your products.




• What is a patent?





A patent is an exclusive right granted by countries for the protection of (1) new inventions, whether products or processes, that (2) offer a new technical solution or provide a new way of doing something and (3) can be applied in industry. Protection lasts a limited period of time, usually 20 years. In return for this limited monopoly, the owner of a patent must disclose the invention to the public in the patent application. A patent is a territorial right and has its effects within the national boundaries of the country for which it was granted.

In order to get patent protection, inventors must file a patent application, since registration is a requirement in order to obtain protection.



• Why should I perform patent searches>



Conducting patent searches is very useful for several purposes, not only for organisations such as SMEs, but also for researchers. Indeed, patent databases are a goldmine of technical and commercial information that can be used to:

• guide the definition of an organisation’s IP strategy (identifying, for example, any barriers to developing an IP strategy, the avoidance of obstacles, etc.);
• define the state of the art (to find out what already exists, to check novelty, to improve the quality of a patent application, to understand the IP landscape surrounding your projects and IP);
• check for freedom to operate (to check if you do not infringe someone else's rights, or to search for the validity of third parties’ IP);
• check if someone is not in a position of infringing your rights (infringement still needs to be proved);
• keep track on who’s doing what (commercial intelligence).

Many of the patent applications that you can find in the databases are not even “in force” and therefore are free to be used in your own projects. This can happen for different reasons, such as the application's failure, withdrawal or expiry.



• Can any invention be patented?



No. An invention in all fields of technology can be protected, but it must meet the following requirements:

1. Novelty: it must show a new characteristic which is not known in the existing knowledge in its technical field - that is, not being part of the state of the art;
2. Inventive step: the invention cannot be deduced by a person with average knowledge of the technical field;
3. Practical use: it must be capable of industrial application.

Countries may also deny, under their laws, patent protection to determined subject matters or types of inventions such as mathematical methods, scientific theories, software, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment.

For inventions that do not fulfill aforementioned standards for a patent protection, the national laws of certain ASEAN countries (e.g. law of Indonesia) foresee protection in the form of trade secrets, provided that the inventions are confidential, have economic value and necessary measures are taken to guard their secrecy.



• What can be protected by copyright and related rights?



Copyright protects works such as:

• literary works- novels, song lyrics, newspaper articles;
• computer programs, certain types of database;
• dramatic works- dance or mime;
• musical works;
• artistic works- paintings, photographs, sculptures, architectural designs, technical drawings, diagrams, maps, logos;
• layouts or typographical arrangements;
• recordings of a work - recorded music performances;
• broadcasts of a work.

According to a well-established principle, copyright protection extends only to physical expressions, not to ideas, procedures, methods of operation or mathematical concepts as such.



• What rights does copyright provide?:



Copyright is an intellectual property right, which entitles the owners of literary and artistic works to a set of exclusive rights over their works. These rights, generally, include:

• copying;
• translating;
• adapting and altering;
• communicating and performing to the public;
• distributing;
• renting and lending copies.




Copyright grants two kinds of prerogatives:

• economic rights;
• moral rights;

So-called "economic rights" enable right holders to control (license) the use of their works, and be remunerated for their use. These rights normally take the form of exclusive rights and include the right to reproduce and communicate the work to the public.

The author of a copyrighted work also has the right to claim authorship, as well as the right to object to a distortion and mutilation of the work that may be detrimental to his honour or reputation. These rights are generally known as “moral rights”. Moral rights may include the right to decide on when or whether to make the work public, the right to claim authorship of the work and the right to object to any derogatory action in relation to the work.



• What does “copyright registered” mean?



Registered copyright does not refer to a different type of intellectual property right, but to copyright that has been registered under the voluntary system of registration. Although copyright is an automatic right that does not depend on registration, in some countries (e.g. Cambodia or Indonesia), national laws allow registration of artistic/literary works. This voluntary system of registration is generally aimed at identifying the work and serving as evidence in court in litigation disputes (e.g. in order to prove more easily the date of creation of the work and the ownership); it does not prove authorship.



• Where can I find information about intellectual property in ASEAN countries?



WIPO Lex is a data base maintained by the World Intellectual Property Organization where you can find an overview of the national laws and treaties on intellectual property (IP) together with the English translations of WIPO, WTO and UN Members, and thus, in all Member States of ASEAN (www.wipo.int/wipolex/en/).

National IP offices can be also a valuable source of information. In the website of the World Intellectual Property Organization (WIPO), there is a Directory of Intellectual Property Offices where you can find the contact details of all IP offices in the ASEAN (http://www.wipo.int/directory/en/urls.jsp).

Furthermore, ASEAN SME IPR Helpdesk Country Factsheets provide you with an overview of key IP considerations for each ASEAN nation (www.asean-iprhelpdesk.eu/?q=en/country-factsheets#sthash.9LnBscpM...).



• Why are intellectual property rights important for SMEs?



Intellectual property is created by most companies, whatever business they are involved in. For many, intellectual property can be their most important asset (e.g. startup or spin out companies).

Safeguarding this possession is, thus, vital and can offer SMEs many opportunities, in particular:

• to have an exclusive set of rights in the market over their creations (for example, a patented invention allows a monopoly of twenty years, and means that a patent provides its owner with a right to prevent or exclude all others from commercially using it);
• to obtain higher returns on their investments, since owning intellectual property rights may not only enhance the bargaining power, but may also be exploited through licenses in return for royalty payments;
• to enhance the market value and increase future profit expectations of an organisation in the eyes of investors and financing institutions.

It is therefore essential that SMEs consider protecting their creations through intellectual property rights and contractual mechanisms thereby efficiently managing these assets and reaping the most from their investment.



• What is a class identification of the goods and/or services?



A trade mark registration is performed in a specific area - always in connection with certain products and/or services offered by its owner. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is an international classification of goods and services - it groups goods and services into thematic classes for the purposes of the registration of trade marks. The heading of each class indicates the products or services included.



• How do I know if a trade mark proposed for registration is already being used by another undertaking? Why should I perform a trade mark search?



Trade mark searches are extremely important and typically designed to determine whether a particular trade mark is available for use on a relevant territory. A trade mark search is an investigation to discover potential conflicts between a proposed mark and existing ones. Searches help to determine if you can register your trade mark on a relevant territory. The search may identify trade marks that are visually, phonetically, or conceptually the same or similar to the trade mark to be adopted and that cover the same or similar goods or services. The report will determine all identical or similar marks and the products or services in relation to which they are used. Conducting searches helps to avoid objections and reduces the possibility of infringement of the rights of a prior user or registrant.



• Is the copyright I obtained in Europe for my scientific book also protected in Indonesia?



Indonesia is party to the Berne Convention on the Protection of Literary and Artistic Works. This means that the works you already own are automatically protected in Indonesia, provided that you are a national of one of the other Bern Convention member countries, or if the work was first published in a country party to the Berne Convention.

Even though copyright is in theory not required to be registered in Indonesia in order to be protected, it is strongly recommended that you register it as a proof of ownership. In practice, in case of litigation, the enforcement authorities still need to be satisfied that the IP right holder making the prosecution is in fact the rightful owner, and they usually require the registration as a proof of ownership. Foreign copyright registration may suffice. However, the Indonesian registration gives full evidential certainty in case of litigation.



• How do I register a copyright in Indonesia?



Only the copyright owner, i.e. the author of the work or a person who has received copyright from the author, can register. The application must be filed in the Indonesian language to the Directorate General of Intellectual Property Rights and the fee is approximately EUR 20 to EUR 30 (depending on the nature of the work and the rate of the local currency).

The following documents are required for registration of copyrights in Indonesia:

• A simple declaration of ownership;
• A sample of the work;
• A deed of assignment of copyright (in case the right has been transferred to the applicant);
• A power of attorney appointing a local firm (in case the application is filed by an agent).

It usually takes about 12 months for the registration certificate to be issued.



• An employee from the Indonesian branch of our company wrote a user manual for a product we are about to commercialize in Europe. Who owns the copyright to the manual, the author or the employer?



In accordance with Indonesian law and contrary to most European legislations, the copyright for works created by an employee, even in the course of employment, do not automatically belong to the employer. The ownership regime of the works created in the course of employment shall be, thus, expressly regulated within the employment contract you conclude with your employees.



• Do Indonesian Customs possess reliable tools for enforcing my intellectual property rights?



Customs Law in Indonesia gives officials the power to suspend a consignment if they have reason to believe that it contains counterfeit goods. However, in practice they do not make such seizures. A common reason given for this is the lack of procedure or avenue to contact the rights owners even if they do come across a large amount of suspected counterfeits.

Furthermore, the rights owners can apply to a court to suspend the customs clearance of a specific shipment of goods. Nevertheless, in practice, these provisions are usually unworkable since it necessitates that you are informed of a suspected shipment, as well as able to provide supporting documentary evidence, before obtaining an order from the court to issue an official instruction to suspend the shipment. Thus, generally speaking, the courts are still not equipped to respond to time critical cases such as dealing with goods in transit.



• What is the definition of a design in accordance with Indonesian law?



Industrial design is a creation whose shape, configuration, composition of line(s) or colour(s), or the combination thereof in two or three dimensional forms, and gives an aesthetic impression whereby it can be realized in a two or three dimensional pattern and used to produce a product, goods or an industrial commodity or handy craft.

In order to be protectable a design should be novel. The design will be deemed to be novel if on the filing date or priority date, there is no such design with any previous disclosure published anywhere.



• What cannot be protected as an industrial design in Indonesia?



A design will be regarded as lacking novelty and will therefore not be protectable if there is an identical design published or available in the market anywhere prior the filing or priority date. Furthermore, the right to industrial design shall not be granted if an industrial design is contrary to the prevailing laws and regulations, public order, religion, or morality of the country.

Indonesian law provides protection for the visual appearance of a product, or goods, or industrial commodities only. There will be, thus, no protection for a design without real applications to industrial products or goods.

Moreover, there is no design protection for articles that are “primarily literary or artistic in character” even if they would otherwise come within the definition of design. Finally, it is not possible for an applicant to apply for a design registration if the visual features of the design serve exclusively as a functional purpose.



• How long can a registered design in Indonesia be protected for?



Industrial design registrations last for 10 years.



• How long can a registered design in Indonesia be protected for?



In Indonesia there are two main IP enforcement routes: civil and criminal enforcement.

In the case of criminal enforcement, trade mark, patent and design infringements are complaint-based crimes. A formal complaint with the police must be filed before action can be taken. Copyright infringement is currently a non-complaint-based crime, although according to the new proposed amendments to the Copyright Law it will soon fall under the category of a complaint-based crime. Currently, the police may take copyright actions without a formal complaint from the rights holder. Criminal raids may cost between EUR 8,000 to EUR 19,000. Because of the high costs, raids should not be considered as routine for any IP owner, but should be reserved for targets which would generate maximum publicity if raided. Indonesia’s IP laws have provisions for substantial maximum fines and prison sentences.

Civil litigation is likely to be more expensive than carrying out a criminal raid. IP rights owners usually rely on criminal raids to stop infringement, and then negotiate for civil statements in return for not proceeding further with the case. Good evidence preparation is essential if you decide to go down the route of civil litigation. This may involve surveys, investigator reports or testimonies, video or tape recording. Foreign evidence will need to be legalised.

Given the relatively weak nature of the enforcement system, in many cases private mediation via legal professionals could be the most effective solution. Another reasonable option would be to send warning letters to the infringers. These methods should be considered as viable alternatives particularly for SMEs with limited budgets.



• Is a patent the only way to protect my invention in Indonesia?



No. Inventions can also be protected by simple patents and by trade secrets if you do not disclose any information on them, i.e. keep them a secret.

Simple patents apply only for products and tools, and not for technologies. These products or tools should be novel and applicable in the industry in question. Also, there are no requirements for an inventive step with a simple patent. The process for obtaining a simple patent is generally shorter than in case of standard patents. There is however a reduced term of protection (10 years from the filing date).

In order to secure trade secret protection the invention must comply with three general standards: the information is not generally known to the public (confidential), it has an economic value (because it is kept secret), and is the subject of reasonable efforts by the rightful holder of the information to maintain its secrecy (through confidentiality agreements where applicable). There is no need to apply a registration in order to get a trade secret protection because the regulation itself already confers the protection if the information fulfills the aforementioned conditions.

Thinking about market strategy, publishing an invention may also be an option for protection and in cases where you do not need to have exclusivity. It is the cheapest option and it has the advantage of blocking others from getting a patent on the same invention. However, take into account that you will be disclosing your innovation to possible competitors.



• How do I register a patent in Indonesia?



Patent applications in Indonesia should be submitted to the Directorate General of Intellectual Property Rights. The following documents are required for obtaining a filing date:

• Patent specification in English including description and also including drawings;
• Application form;
• Declaration of ownership;
• Assignment of ownership (in case the right has been transferred to the applicant);
• Power of attorney (in case the application is filed by an agent).

Once a publication has been filed and all formalities met, it will be published in the Official Gazette. Publication takes place 18 months or more after the filing date, or the priority date if the same filing has been made within the last 12 months in any other country also belonging to the Paris Convention. Any party may file an opposition within six months of the date of publication. Patents are carefully examined upon request following the aforementioned six month publication period. These requests have to be made by the applicant within 36 months of the date of filing. Obtaining of protection takes about three to five years from filing.



• What is a simple patent?



Legal protection in the form of simple patent can be obtained for a tool or product that is novel, has value and practical utility in industry due to its shape, configuration, construction or components.



• I obtained a Community Trade Mark registration on my imaginatively designed and distinctive bottle which my company will use to distribute a beer of my production. Can I apply for the same type of protection in Indonesia?



No. In Indonesia three-dimensional signs are still not recognized as trade marks. You may, however, try to register your bottle under the Industrial Design Law if the protection is required.



• What is meant by bad-faith trade mark registrations?



Bad-faith registrations exist where a third party which is not the legitimate owner of the trade mark registers the mark first in Indonesia, thereby preventing the legitimate owner from registering it. Trade mark piracy due to bad-faith registration is a serious problem in Indonesia. Many bad-faith registrations are filed even by the authorized distributors contracted by the trade mark owner. Thus, you should consider registering your most strategic trade marks in Indonesia even before commencing business there.



• How long does legal protection for trade marks last in Indonesia?



Once registered, a trade mark is protected in Indonesia for 10 years from the date of filing. The registration can be renewed for subsequent periods of 10 years without limit. Applications for renewal can be filed up to 12 months before expiry of the then current registration period, but not after this period.



• What is a trade secret?



A trade secret is information in the field of technology or business that is not generally known to the public (confidential), that has an economic value (because it is kept secret), and that is the subject of reasonable efforts by the rightful holder of the information to maintain its secrecy.



• What is the scope of protection on trade secrets?



The scope of protection on trade secrets includes methods of production, technologies, inventions, processing methods, sales methods, supplier lists, know-how, data, formulae, or other such information.

What constitutes “reasonable efforts” undertaken by the rightful holder of the information to maintain secrecy?

Such necessary measures usually refer to standard procedures that a company adapts in order to maintain the confidentiality of its valuable information. This might include the insertion of non-disclosure clauses in employment contracts, the conclusion of confidentiality agreements with subcontractors or business partners, password protection for electronic data, restricted access to certain offices or buildings or visitors registration systems, etc.



• How long does the trade secret protection last in Indonesia?



There is no time limit to trade secret protection – as long as the information is kept secret, remains valuable and necessary measures are taken to guard its secrecy, it will be subject to legal protection.



• My trade secret has been “stolen” by a dishonest subcontractor in Indonesia. Is it possible to enforce my rights?



In a trade secrets case it is necessary to prove that the trade secret has been taken by the suspected party. Proving this might be quite difficult as litigation proceedings in Indonesia are not equipped with a discovery procedure to uncover relevant evidence on the suspected party. It may help your case if you can prove that the local subcontractor used to have a relationship with the victim company or was previously given access to the trade secret (under the confidentiality agreement).

Companies should also proceed with caution when engaging investigators since the law in Indonesia accords certain privacy rights, and the infringers themselves could actually complain in a criminal case that their own privacy rights were infringed upon.

• How long can a registered design in Indonesia be protected for?



Industrial design registrations last for 10 years.



• My employee infringed another company’s copyright with my knowledge and permission. Thanks to the infringement, my company obtained a commercial advantage. Who is legally liable in such a case?



If a company is found to have infringed a copyright to obtain commercial advantage, both the company and the employee responsible will be legally liable in Singapore. Penalties for such an offense include a fine and/or a term of imprisonment.



• How long does copyright protection for photographs last in Singapore?



Copyright protection for photographs lasts 70 years from the end of the year in which the photograph was first published.



• How do I register my copyright in Singapore?



Unlike other ASEAN countries, Singapore has no system of registration of copyright. Works that qualify for protection under the Copyright law do not need to be registered, because copyright protection is conferred automatically to the author as soon as it is expressed or fixed in a material form (e.g. paper, tape, CD, etc.) from which it is capable of being reproduced.



• Can I request Customs to monitor and notify me of suspected infringing goods which are being imported into Singapore?



Unfortunately, since there is no official records system through which you can request Customs to monitor and notify you of suspected infringing goods which are being imported into Singapore, you should not rely on Customs to discover or monitor such shipments on your behalf. Instead you will need to be proactive about monitoring this yourself. However, if you already have details about a suspected illegal shipment in advance, you can activate border enforcement by giving written notice to Customs of a suspected import of IPR-infringing goods. This will apply only to registered trade marks and copyrights and you can only activate border enforcement for IP that is registered in Singapore.



• How long can a registered design in Indonesia be protected for?



Industrial design registrations last for 10 years.



• What is a written notice to Customs?


A written notice in the official form must be filed with Customs to inform them of the suspected import of IPR-infringing goods. The IPR owner, its licensee, or their agents can give a written notice to Customs of a suspected import of IPR-infringing goods. The notice may be sent via:
Email: [email protected]
Delivered in person/via post to: Singapore Customs, 55 Newton Road #10-01, Revenue House, Singapore 307987
The notice must be accompanied by:
• a statutory declaration that the particulars in the notice are true;
• a fee of around EUR 123 (200 Singaporean dollars);
• where the notice is given by your agent, evidence of the authority of the person giving the notice;
• in the case of suspected trade-mark infringing goods, a copy of the certificate of registration in relation to your Singapore registered trade mark.


• What are the means of IP enforcement in existence within the Singaporean legal system?



In the case of your IP assets being infringed in Singapore, there are three main avenues of enforcement which you can consider: civil litigation, criminal prosecution and customs seizures. However, in many cases private mediation via legal professionals can be more effective and should be considered as a viable option, particularly for SMEs that are often faced with budgetary constraints. Unlike other ASEAN countries, there are no administrative actions available in Singapore.



• Can I apply for a utility model protection in Singapore?



A utility model, also called a “simple patent” (Indonesia) or “utility solution patent” (Vietnam), is a specific form of IP protection which is not available in all ASEAN countries. It protects technical solutions like inventions which have sufficiently low levels of inventiveness. The protection period is usually shorter than for patents but the process for obtaining it is also generally quicker and easier.

Unlike other ASEAN countries, Singapore only has one official type of patent. In order to obtain it, an invention must satisfy certain criteria. It must show novelty, have an inventive step (not required for utility models) and be industry applicable.



• How long does patent protection last in Singapore?



Singaporean patents are valid for 20 years from the date of filing, subject to payment of annual renewal fees starting from the end of the 4th year.



• My company, with an office in Singapore, invented a revolutionary solution for nitrogen scavenging. First, we would like to get patent protection for our invention in several European countries, and then in Vietnam and Singapore. What should I know?



People or companies residing in Singapore may not file an application for a patent outside Singapore without first filing for the patent in Singapore, unless authorization has been obtained from the Intellectual Property Office of Singapore prior to the filing of the patent.



• How do I register a patent in Singapore?



A request for a grant of patent must be made via an official form and submitted to the Intellectual Property Office of Singapore either online via ePatents or directly by post to the Registry of Patents of the Intellectual Property Office of Singapore. The application must be accompanied by:

The application fee; An English translation if any documents provided are in a language other than English; A copy of your application filed earlier in a Paris Convention country or a WTO member country (if you wish to claim this earlier date as your ‘priority date’).

Please refer to the Website of the Intellectual Property Office of Singapore for details and further information on the application and registration process: www.epatents.gov.sg/default_redirect.asp

Registrations in person can be made at this address: Intellectual Property Office of Singapore 51 Bras Basah Road # 04-01, Manulife Centre, Singapore 189554 (65) 6339 8616



• I am interested in registering my German trade mark in Singapore. Shall I consider applying for a national registration directly through the national intellectual property office of Singapore?



Not necessarily. Obviously, you can apply for a national registration directly through the national intellectual property office in Singapore. However, you also have the possibility to file for registration by way of an international application designating Singapore, since the latter is one of three ASEAN countries (besides Vietnam and Philippines) that have implemented the Madrid Protocol. Under this treaty, it is possible to file a single application in one member country in order to seek trade mark protection in multiple member countries. International applications are administered by WIPO’s International Bureau. This system can be cost saving as it eliminates the need to hire local agents to file local applications in countries of interest. You can read extensive information about international applications by following the link below: www.wipo.int/madrid/en/



• Can I register a mark “just in case” without intention of using it?



If the trade mark registration is granted in Singapore, you or your licensee shall put that mark to genuine use in the course of trade within the period of five years from the date of completion of the registration procedure. Failure to do so may result in your registration being revoked for non-use.



• I do not want to disclose my invention in a patent application since I am not sure about its patentability. The method I invented already gives me an advantage over my competitors, and thus, I want to protect it somehow.



You can try to protect your invention as a trade secret. Trade secrets are protected under Singaporean law. However, the trade secret must be confidential, meaning that the information is not freely available in the public domain. You must also be able to prove that an obligation of confidence was clearly stated during your dealings with third parties, such as the signing of non-disclosure agreements or having a confidentiality clause within your agreements with other parties and employees.