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Patent and Industrial Design: Distinction under Indonesian IP Law

A&CO Law Office Indonesia


Introduction

Trademarks, copyrights, and patents are the most well-known forms of intellectual property, but other forms, such as industrial designs, also deserve protection. Inventions and commercially viable creative works are what industrial property is all about, and its subfields patents, industrial designs, and brands all serve that purpose. The protection of intellectual property has evolved into a vital strategic resource for companies. In contrast to the European region, where the industrial property category has been branched out into the intellectual property part, Indonesia does not have a specific categorization for industrial property within the scope of intellectual property rights. In France, industrial property rights guarantee their holder a monopoly on exploitation. Industrial property rights are exclusive rights that are often registered allowing the operator to protect its investments in product development, a brand or design. An exclusive right gives the holder the right to prevent others from using a protected sign, invention or design.

 

Industrial designs are protected by patent rights in several jurisdictions. Indonesia, on the other hand, has two distinct legal regimes for patents and industrial designs. Given this, one would reasonably curious to know, "What is the difference between a patent and an industrial design?" A more in-depth description of patents, industrial designs, and their distinctions follows.

 

Patent

Patents are defined as "exclusive rights granted by the state to inventors for their inventions in the field of technology for a certain period of time carrying out the invention themselves or giving approval to other party to carry out the invention" in Article 1 point 1 of the Law No. 13 of 2016 regarding Patent (“Indonesian Patent Law”). Increased protection for inventors and patent holders was a driving factor in the creation of Indonesian Patent Law, which were enacted in response to the urgent need to maintain pace with the rapid technological progress across many industries. The term "Novelty," which derives from the word "Novel" or "new," is recognised by the patent regime. Thus, in order to be granted a patent, an inventor's innovation must meet three criteria: it must be novel (new), useful, and non-obvious. This initiative is reflected in Article 1 paragraph 1 of the Indonesian Patent Law, which states that the invention was not known to the public before the date of filing the patent application or the priority date claimed[1]. According to Article 10 paragraph 1 of the Indonesian Patent Law, the person or entity that obtains a patent is either the inventor or the person to whom the rights of the relevant inventor have been transferred. Patent holder of the invention produced by the Inventor in a work relation is the Party who has commissioned the work, unless agreed otherwise[2].

 

 

There are 2 types of patents that are recognized and protected by Indonesian law: patents and simple patents.[3] Patents is granted for a new invention, involving inventive steps, and susceptible to industrial application.[4] Whereas simple patents is granted for a new invention, an improvement from existing product or process, and susceptible to industrial application. [5]

 

The Indonesian Patent Law does not specify what is protected under the patent regime. As long as these objects can be categorised based on the features of patents and simple patents (as mentioned above), they are eligible for patent protection. However, the Indonesian Patent Law excludes inventions that cannot be patented, i.e:[6]

  1. any process or product of which its publication, usage or implementation contravenes the prevailing legislation, morality, public order, or decency;
  2. any method of examination, treatment, medication, and/or surgery applied to humans and/or animals;
  3. any theory and method in the field of science and mathematics;
  4. all living organisms, except microorganism; or
  5. any biological process which is essential to produce plant or animal, except non-biological process or microbiological process.

 

it can be said that inventions in the form of mathematical formulas cannot be patented (will not be granted any patent protection).

 

From the filing date, patents in Indonesia are secured for a full two decades.[7] The effective filing date is the day on which the complete Application is filed. In other words, once the specified time has elapsed, the patent will become a public domain.

 

Industrial Design

The Law of Republic of Indonesia Number 31 year 2000 regarding Industrial Design (“Indonesia Industrial Design Law”) defined industrial design as creation on the shape, configuration, or the composition of lines or colors, or lines and colors, or the combination thereof in a three or two dimensional form which gives an aesthetic impression and can be realized in a three or two dimensional pattern and is used to produce a product, goods or an industrial commodity and a handy craft.[8] As with other forms of intellectual property, the designer who produce an industrial design are the ones who benefit from legal protection.

 

Both three-dimensional characteristics, such the form of an object, and two-dimensional ones, like patterns, lines, or colors, can be part of an industrial design. The term "novelty" is recognized in the industrial design regime in the same way that it is in the patent system; this means that only completely original and previously unprotected designs are eligible for protection under the industrial design regime.

 

The owner of a registered industrial design or of an industrial design has the right to prevent others from producing, marketing, or importing items exhibiting or incorporating a design that is a copycat, or substantially a replicate, of the protected design for commercial reasons. Due to the first-to-file nature of the industrial design regime, designers ought to register their designs before they can be legally protected. Industrial design protection lasts for only 10 years and cannot be renewed.  This means the industrial design can enter the public domain after the specified time period has elapsed.[9]

 

Difference of Patent and Industrial Design

An industrial design does not create a completely new solution or process or represents an innovative improvement of an existing solution or process, unlike a patent. An industrial design right protects only the appearance or aesthetic features of a product, whereas a patent protects an invention that offers a new technical solution to a problem. In principle, an industrial design right does not protect the technical or functional features of a product. Such features could, however, potentially be protected by a patent.[10]

 

For the ease of reference, the following is the difference between protection of an invention on patent regime and industrial design

 

 

Patent

Industrial Design

What can be protected?

A technical enhancement which is novel (new) invention, unique and useful for industrial application

Novel (new) Ornament or aesthetical appearance (combination of configuration or composition between line and/or colour) in the form of 3D or 2D.

Right’s owner

Inventor

Designer

Limitation

Invention do not include:

  1. esthetical creation;
  2. scheme;
  3. ules and methods in conducting activity of:
  1. involving mental activity;
  2. games; and
  3. business.
  1. rules and methods containing only computer program;
  2.  presentation of information; and
  3. discovery in the form of:
  1. new use of existing and/or known product; and/or
  2.  new forms from existing compound which does not generate significantly enhanced efficacy and contains different relevant known chemical structures to compound.

The Right to Industrial Design shall not be granted if an Industrial Design is contrary to the prevailing laws and regulation, public order, religion, or morality.

Duration of Protection

20 years since the filing date, and cannot be renewed.

10 years since the filing date, and cannot be renewed.

Example

Invention of Touch ID (an under-display fingerprint sensing apparatus with angle-focused narrow field-of vie (FOV) filtering) of iPhone, Mac, TV Screen , and more by Apple Inc.[11]

Apple home screen display; the iPhone 14’s back camera[12]

 

Conclusion

A wide range of IP protections, from patents to industrial designs, might apply to a single physical item. Indeed, there is possibility of ambiguity and even overlap between these two regime. The most noticeable difference is that a patent will only cover an invention if it is novel, requires an inventive step, is susceptible of industrial application; whilst  Industrial design helps to protect a product's external appearance, which can contribute to the item's overall value and reputation, as in the case of the Apple iPhone. Patents provide exclusive, unrenewable protection for 20 years from the date of filing. Meanwhile, the design period is 10 years and also cannot be renewed. Both have in common that these two regimes have industrial property values, are territorial in nature, and will become public domain property after the protection period ends.

 

 

Author: Fitri Astari Asril (astari@aco-law.com)

 

 

[1] See Article 5 (1) Indonesia Patent Law: “An Invention is deemed to be novel as referred to in Article 3 section (1) given that on the Filing Date, pertinent Invention is not similar to any previously disclosed technology.

[2] See Article 12 paragraph 1 Indonesia Patent Law

[3] See Article 2 of Indonesia Patent Law: Patent protection includes: a. Patent; and b. simple Patent.

[4] See Article 3 paragraph 1 Indonesia Patent Law

[5] See Article 3 paragraph 2 Indonesia Patent Law

[6] See Article 9 Indonesia Patent Law

[7] See Article 22 paragraph 1 Indonesia Patent Law

[8] See Article 1 number 1 Indonesia Industrial Design Law

[9] While other country, such as Malaysia, protected the industrial design for 5 years and can be extended for 4 additional 5-year periods. In other words, it is protected for 25 years before it will become a public domain. See Industrial Designs (Amendment) Act 2013 (Act A1449) as the amendments to the Industrial Designs Act 1996 (Act 552) of Malaysia Industrial Design Act, Amendment of section 25 subsection (2): “the period of registration of an industrial design may be extended for two further consecutive terms of five years each, if an application for extension is made in the prescribed form, and the prescribed extension fee is paid before the expiration of the current term” to “in subsection (2), by substituting for the word "two" the word "four".

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