New Regulation on Recordation of Intellectual Property Licensing Agreements
Indonesian Intellectual Property (“IP”) laws require recordation of IP licensing agreement with the Directorate General of Intellectual Property. To implement this, other than the issuance of Minister of Law and Human Rights Regulation No. 8 of 2016 (“MLHR 8/2016”), the Indonesian government recently issued Government Regulation No. 36 of 2018 on the Recordation of Intellectual Property Licensing Agreements (“GR 36/2018”). MLHR 8/2016 will continue to prevail so long as it does not conflict with GR 36/2018. GR 36/2018 differs from MLHR 8/2016 in the sense that it provides detailed provisions on recordation of IP licensing agreements, which include:
A. Requirements for the Licensing Agreement
GR 36/2018 provides that the IP licensed in the agreement must remain valid. Furthermore, the licensing agreement must not contain any provision that:
- harms the national economy or the national interest of Indonesia;
- limits or hinders the national capability on conducting the transfer, control and development of technology;
- results in unfair competition; and/or
- conflicts with prevailing laws and regulations, religious values, morality and public order.
If the licensing agreement is in a foreign language, it must be translated into Indonesian language.
B. Recordation Procedure
The application for recordation of the licensing agreement can be submitted manually or online, by submitting the relevant license, payment for recordation, along with other required documents.
The period of the recordation shall be valid for as long as the period of the corresponding licensing agreement. This is longer than the period of recordation under MLHR 8/2016, which was only 5 years.
C. Amendments and Revocations of the Recordation
The recorded licensing agreement may be amended provided the following conditions are met:
- If the amendment comprises of Licensor’s name, Licensee’s name, or the object of licensing agreement, the Licensor or Licensee must submit a new application for recordation.
- If the amendment comprises of other matters than stated in point (a) above, the Licensee must submit the information regarding amendment of the recorded and published agreement, along with payment for the amendment.
The recordation of the licensing agreement may be revoked upon agreement between the Licensor and Licensee, court judgment, or other reason based on law. The detailed provisions on the revocation will be further regulated in a Ministerial Regulation.
This alert is for general information only and is not a substitute for legal advice.