ANALYSIS
OF NOVELTY ELEMENTS AS A REQUIREMENT FOR PATENT REGISTRATION IN LAW NUMBER 13
OF 2016 CONCERNING PATENTS
Putu Ayu Ira Kusuma Wardani1,
Desak Putu Dewi Kasih2, I Made Arya Utama3
Universitas Udayana, Bali, Indonesia
[email protected]1, [email protected]2, [email protected]3
ABSTRACT
This study delves into the elements of patent
rights and dispute resolution strategies in cases of patent infringement. The
background of the research stems from the necessity to understand the legal
framework surrounding patent protection and the mechanisms available for
resolving disputes in the event of infringement. The primary objective is to
identify the crucial components of patent rights and the various methods
employed to address disputes arising from alleged patent violations. Employing
a normative legal research approach, with both conceptual and statutory
analyses, this study aims to provide a comprehensive overview of the subject
matter. The findings underscore the significance of novelty as a fundamental
criterion for patent acceptance, as defined by Law Number 13 of 2016 concerning
Patents. Novelty, characterized by the absence of prior public disclosure,
usage, or inclusion in existing knowledge standards, is essential for patent
registration. The study reveals that patent disputes concerning novelty can be
addressed through diverse legal avenues, including patent removal suits, trial
proceedings, mediation, patent reexamination, out-of-court settlements, and
appellate processes. Furthermore, alternative mechanisms such as arbitration
offer additional pathways for resolving disputes. The implications of this
research highlight the importance of adhering to novelty requirements during
patent registration and understanding the array of dispute resolution
mechanisms available to safeguard intellectual property rights.
Keywords: Patent,
Novelty, Patent Abolition.
Corresponding Author: Putu
Ayu Ira Kusuma Wardani
E-mail: [email protected]
INTRODUCTION
God creates humans to have a
mind, imagination and reason. Therefore, humans are creatures that are called
the most perfect among others. Humans also have skills or expertise that they
use in everyday life for their own or other people's needs. The gift of
thinking, imagination, and creativity, which is owned, allows humans to quickly
produce various kinds of products that are useful for themselves and others and
that can be created based on the science and technology they learn (Rapp,
2022). Technological knowledge in this
day and age is so broad, and every time, new inventions are being made (Aji, 2021).
Humans, with their ability to
think, can find creative ideas, and humans pour them into the form of works
that can be expressions that can be seen, read, heard, or used . The results of
these works are precious because the results of these ideas are beneficial for
human life itself and have economic value, which can be called Intellectual
Property Rights, from now on referred to as IPR, but now more often referred to
as Intellectual Property, from now on referred to as IP (Castaldi
et al., 2024).
IP is basically in the form of
property rights resulting from human intellectual abilities. Humans, with their
creative creations, are able to produce intellectual works that are useful for
daily life and have value. These innovative works have economic value that can
increase wealth (Dharmawan,
2018). IP makes works made by humans
that arise or are born from human intellectual abilities that must be
protected. Wealth is born because of ideas, creations, imagination and thoughts
(Darusman, 2016). The ability that is produced by
humans, or called human intellectual ability, is made through the power of
taste in the form of intellectual works. Intellectual property rights (IPR) can
be understood as the rights owned by an individual for his intellectual work (Wauran-Wicaksono,
2015).
The Agreement of Trade-Related
Aspects of Intellectual Property Rights, or TRIP, classifies the types of IPR
that are protected, including Patents (Chazawi, 2019). Patent or Oktroi (Indonesian term is the same term), Patent
(English), and octoroon (Dutch) are some of the protected IPRs (Sutedi,
2009). A patent is basically the
exclusive right of the inventor; the inventor's right is to have the right to
do anything on the invention in the field of technology for the exclusive time
to carry out itself or to give approval to other parties to carry out the invention
(PANDIANGAN,
n.d.)
Patents existed during the Dark Ages in Europe, and in
that century, technology was developing, which was used to create patents. The
first patent regulation was around 1470 in Venice, Italy. It was granted to
Caxton, Galileo Galilei, and Johannesburg Guttenberg for their inventions,
creating their monopoly rights. This idea then circulated throughout Europe in the
16th century and was used during the Tudor period of the English Empire. This
situation is what created the industrial field to flourish in England until the
peak of the Industrial Revolution that occurred in England.
Patent rights in England were born in 1623 under the
name Statute of Monopolies; over time, this patent right spread to the United
States. It was only in 1719 that America had a patent law. Every invention that
can be in the form of objects, quality tools or those that are not qualified
but have a valid value both in terms of form and composition can obtain legal
protection in the form of a patent, but only a simple patent.
The meaning of "patent" in Greek is 'open'.
The conclusion is "latent", which means 'hidden' (WAHYUNI, n.d.). Then, in the UK, it is known to use the word letters
patent, which is a decree issued by the kingdom with the intention of granting
certain rights to specific individuals or businesses; certain rights mean
special rights or exclusive rights. Inventors receive rights for a set period
(20 years for ordinary patents and 10 years for simple patents). The basis for
granting a patent is actually very honourable because the grant of a patent to
the inventor is based on fairness and the worthiness of their efforts, so they
deserve the patent.
In Indonesia, patents are regulated through Law No. 13
of 2016, which was previously regulated in Law No. 14 of 2001, and
internationally, the basis for patent knowledge rules are the Paris Convention,
Patent Cooperation Treaty (PCT), European Patent Convention (EPC), and TRIPs Agreement
(Dharmawan, 2018).
In the history of Indonesia, the Dutch government in
1844 introduced the Law on IPR, the Dutch government promulgated the Patent Law
in 1910 (Sumarna, 2018). The development of patent law in Indonesia can be divided into 4 periods,
including:
Period years (1989-1996)
In this period, Indonesia was confused about the
difference between public interest and international pressure. This period was
a tough time for Indonesia as the government was under pressure from the United
States, which expected Indonesia to adopt US patent protection standards.
Indonesia needed clarification of the public interest. Patent law during this
period was only considered very important in the late 1980s because one of the
articles stipulated that patent examination would be conducted in the Netherlands;
this was changed after Indonesia achieved its independence because it was
incompatible with Indonesian sovereignty. Finally, Indonesia only had a patent law for decades
because the Dutch law was no longer in use. Many considerations were made by
the government, including the government considering that the existence of a
patent law could attract foreign investors to invest in Indonesia. Finally, the
government passed a patent law in 1989 due to international pressure from many
developed countries. When developed countries signalled Indonesia to legislate
IPR, including patents, Indonesia was forced to follow the request (Alhidayah et al.,
2023). �
The enactment of the 1989 Patent Law was also intended
to attract foreign investment and facilitate the entry of technology into the
country. However, it is also emphasized that efforts to develop the IP system,
including patents, in Indonesia are not solely due to international pressure
but also due to the national need to create an effective IPR protection system (Rizkia &
Fardiansyah, 2022).
Period (1997-2000)
This period was the period when Indonesia was subject
to the international standards of the TRIPs Agreement, and this period was also
a significant time for the Indonesian government, which decided to revise the
1989 Patent Law. In 1995, the patent law was revised as one of the consequences
of Indonesia's participation in the WTO. In 1997, the revision efforts could be
realized; some of the laws included in the 1997 Patent Law were the extension
of patent protection from 14 years to 20 years, changes in the scope of
patentable inventions and the issue of importation of patentable products, the
issue of importation of patented products as well as the mechanism for
implementing compulsory licenses.
Period (2001-2005)
In this period, Indonesia improved the quality
of its law enforcement. In contrast to the last revision year, which emphasized
substance issues more, this period was focused more on law enforcement issues.
In this period, the government realized that law enforcement of violations of
the TRIP agreement was an obligation that had to be carried out by WTO members.
Although in this period, Indonesia was included as a watch country by the
United States, the main reason for revising this law was that it wanted to
improve the quality of law enforcement in Indonesia. The formation of the
Patent Law of 2001 was the ratification of international treaties as well as
the rapid development of technology, industry, and trade (Aulia, 2015).
Period (2016- present)
Law No.13 of 2016 is still in effect today.
After passing through time, the 2001 Law was finally changed to Law No. 13 of
2016 because many things were not in accordance with the times and in this
latest law, there were additions, deletions, and improvements.
There are four categories of
revisions made by the framers of the new patent law, and from time to time,
there are always improvements, additions, and deletions. These four revisions
to the law are also factors that distinguish the new patent law from the old
one.
Patent rights are rights that
protect inventors or creators of innovations or inventions produced. In patent
law, one of the critical elements determining the acceptance of a patent is
novelty. Novelty is essential to assess whether an invention deserves a patent,
ensuring that only genuinely novel innovations can enjoy exclusive protection (Mike, 2019). Law No. 13 Year 2016 on
Patents provides conditions related to the registration and protection of
patent rights. Article 5 Paragraphs 1 and 2 emphasize that patents are only
granted for inventions that are considered new, where this novelty is defined as
technology that has never been announced, either in Indonesia or abroad before
being announced by the Directorate General of Haki in Indonesia. However, this
discussion on novelty is only sometimes as straightforward as one would like.
The definition of "new" in the law can be vague and subjective,
posing challenges for consistent interpretation and assessment (Mahyar & Hernawati, 2017).
To examine the problem of the
element of banality more deeply, it is necessary to study some of the research
that has been published. Several writings have themes similar to this paper but
differ in terms of discussion and focus on the problem. These papers include a
paper prepared by Jerry Vicky Mawu with the title "Dispute Resolution of
Patent Rights According to Law Number 13 of 2016 concerning Patents". The
paper discusses the legal regulation of patent rights in Indonesia and the
process of resolving patent disputes for the parties as a form of legal
protection. Furthermore, there is a paper written by Aprizal Parada,
"Juridical Analysis of the Novelty Element Criteria on Patents as the
Basis for a Lawsuit for the Abolition of Rights on Simple Patents (Study of the
Supreme Court Decision No. 167. K/PDT. SUS-HKI/2017)". This paper
discusses the element of novelty in simple patents but uses the Supreme Court
Decision Study No. 167. K/PDT. SUS-HKI/2017. This research is important to do,
considering that there is a lack of norms related to the element of novelty of
a product that wants to be patented (Borris & Samatha, 2023).
This background underscores the urgency to
conduct an in-depth analysis of norm vagueness in the context of patent
novelty. A better understanding of this challenge can provide a solid
foundation for the government, patent holders, and legal practitioners to
improve the accuracy of statutory interpretation, create a clean legal
environment, and stimulate the development of sustainable innovation in
Indonesia. This paper is entitled "Analysis of the Novelty Element as a
Condition for Registering Patent Rights in Law Number 13 of 2016 concerning
Patents."
METHOD
To answer the
problem of the element of patent novelty in the article "Analysis of the
Novelty Element as a Condition for Registration of Patent Rights in Law Number
13 of 2016 concerning Patents" with normative legal research. Because of
normative legal research, this research uses a variety of books related to and
processed by reviewing various literature books and laws. As in the book Peter
Mahmud Marzuki, there are two kinds of research sources: primary and secondary
sources (Budiono et al., 2015).
This research uses
normative legal research methods because the focus of the study departs from
the vagueness of norms, using approaches such as the statute approach,
conceptual approach, and analytical approach. The legal material search
technique uses document study techniques, and the study analysis uses
qualitative analysis.
RESULTS AND DISCUSSION
Definition and Interpretation of "Novelty" in the Context of Law Number
13 Year 2016 on Patents
In Law No. 13/2016 on Patents, "novelty" is
defined as the characteristic of an invention that has not been previously
announced in Indonesia or abroad before it is announced by the Directorate
General of Rights in Indonesia. This definition emphasizes that an invention is
considered new if there has been no publication or announcement regarding the
innovation before the DGH announced it. In the context of Law No. 13/2016 on
Patents in Indonesia, "novelty" is one of the essential criteria in patent
registration (Prasetyo & Waluyo,
2023)..� Patents
themselves are defined as exclusive rights granted by the state to inventors
for their inventions in the field of technology for a certain period. In this
case, "novelty" means that at the time the industrial design is
registered, it has not been disclosed, announced or used. A Simple Patent, for
example, is one type of patent that is granted for new inventions or the
development of an existing product or process and can be applied in industry. A
Simple Patent uses an absolute novelty standard with a limited grace period. It
is determined through the addition of practical features to the invention.
Suppose an invention that has been granted protection does not fulfil the
element of novelty. In that case, a third party can file a lawsuit for the abolition
of a Simple Patent by proving its position.
The following is Article 5 Paragraphs (1,2) of Law Number
13 Year 2016 Concerning Patents, which regulates explicitly the requirement of
novelty: Article 5 Paragraphs 1 and 2:
1. An invention is considered new if, at the date of
registration, it has never been announced by anyone, either at home or abroad.
2. An invention shall be deemed to have been announced at
the date of registration if, prior to that date, the invention was announced by
the registrant or by another person who obtained information about the
invention from the registrant.
This article establishes the principle that in order to
meet the novelty requirement, an invention must not have yet been previously
announced by anyone either at home or abroad at the time of the registration
date. Suppose the invention has already been announced by the registrant or by
another party who obtained information from the registrant before the
registration date. In that case, the invention is deemed not to meet the
novelty requirement.
To be considered a patent-eligible new invention, an
invention must fulfil several criteria, including novelty. The following are
the conditions that must be met for an invention to be considered novel:
1. Never Publicly Announced
An
invention is considered new if it has never been announced or published before,
either domestically or abroad. This means that the invention must be completely
new and not previously known to the public.
2. Never Used or Sold
The
invention must not have been used or sold before the patent filing date. If an
invention has been known or sold before, then it may reduce or even eliminate
the claim to novelty.
3. Not Existing in the Generally Accepted Knowledge
Standards: An invention should only be considered familiar if it already exists
within the generally accepted standard of knowledge in the relevant field of
technology. If a concept or technology is already widely known, then it will
not be considered a new invention.
4. Not Contained in Existing Patent Documents:
An
invention is considered novel if it is not contained in previously filed patent
documents. This emphasizes the importance of conducting a patentability search
to ensure that another party has yet to patent the invention.
5. Not Available in Scientific Publications or Conferences:
An
invention should be considered familiar if it has already been described in a
scientific publication or presented at a conference before the patent filing
date.
A case of patent nullification exists when an invention
partially or wholly does not meet the criteria for patentability as stipulated
in the Patent Law, so the invention should not be granted. One example of the
removal of a patent due to not meeting the element of novelty is if the
invention does not meet the criteria stipulated in the Patent Law. However,
when registered, it passes and is fully protected by the state as in this case
(District Court Decision Number 47/Pdt.Sus-Paten/2017/PN.Niaga.Jkt.Pst), then
this patent should be removed to revoke its patent rights.
District Court Decision Number
47/Pdt.Sus-Paten/2017/PN.Niaga.Jkt.Pst is a case involving Budijani Sanjata et
al. and PT. KARUNA SUMBER JAYA. This decision was made on March 19, 2018. This
case relates to patents. In a research conducted by Fajar Ariyantono Pangestu
and Budi Santoso from Diponegoro University Semarang, Indonesia, they discussed
the lawsuit of patent expungement because it was not a new invention. They
found that patent No ID P0031670 was granted despite not being a new invention.
Claims number 6 to 10 of the patent had no invention value and no novelty
value. Cases like these show the importance of the legal system in ensuring
that patents are only granted to inventions that meet the conditions of
patentability, including novelty. The abolition of patent rights in such
contexts is a necessary step to maintain the integrity of the patent system and
prevent the granting of legal protection to something that should not meet the
criteria of a new invention (Yurnida et al., 2020).
In the context of patents, "novelty" refers to
an invention or discovery that has never existed before. According to the
Director of Patents, Integrated Circuit Layout Designs and Trade Secrets,
Directorate General of Intellectual Property (DJKI) of the Ministry of Law and
Human Rights, Dede Mia Yusanti, the conditions for being granted a patent are
that it has novelty value, has inventive steps and can be applied in industry.
Novelty in a patent means that the invention must be new and has never existed
anywhere in the world. So, suppose the product already exists in America but
has yet to exist in Indonesia (Ribowo & Raisah,
2019). In that case, the patent application for the product in
Indonesia will be rejected. In addition, the invention must also have an
inventive step, which means it has advantages over pre-existing inventions or
something unexpected (Nugraha, 2022).
Basically, to be considered a patentable invention, an
invention must not only be new (novelty) but must also exhibit an inventive
step. The inventive step of ten, referred to by the term
"non-obviousness", is one of the essential requirements to fulfil the
patentability criteria. The inventive step refers to the ability of an
invention to show a sufficient degree of novelty and innovation that it cannot
be considered an obvious or familiar step within the relevant field of
technology. This means an expert in the field with reasonable knowledge of the
relevant matter of expertise should not be able to achieve similar findings in
a straightforward or commonplace manner (Ardana et al., 2021).� In other words,
if an invention is only an apparent or predictable step based on existing
knowledge in the relevant field of technology, then it will not meet the
inventive step requirement. This requirement aims to encourage real innovation
and new contributions to progress in science and technology.
Settlement of Patent Disputes if the Novelty Element is Not Found in the
Patent
The settlement of patent disputes is regulated in Article
142 through Article 152 of Law Number 13 Year 2016 on Patents. The rightful
party or the subject of a patent, as stipulated in Article 10, Article 11,
Article 12, and Article 13, may sue the Commercial Court if a patent is granted
to a party other than the rightful party.
In addition, patent disputes can also be resolved through
arbitration or alternative dispute resolution, as stipulated in Article 153
paragraph (1) of Law Number 13 Year 2016 on Patents. Every patent lawsuit must
be filed with the commercial court in the jurisdiction of the residence or
domicile of the defendant. Suppose the defendant's residence or domicile is
outside Indonesia's territory. In that case, it can be filed with the Central
Jakarta Commercial Court, as stipulated in Article 144 paragraphs (1) and (2)
of the Patent Law.
The settlement of patent disputes that do not have the
element of novelty can be done in the following ways (Ramli & Putri, 2018):
1. Patent Holder:
Patent
holders can apply in writing to the relevant Minister if they wish to have all
claims deleted.
2. Third-Party:
A third
party can file an expungement suit through the Commercial Court. The reasons
can vary, such as needing more novelty, not being within the scope of the
invention and not being a patentable invention.
3. Directorate of Patents:
If the
simple patent does not contain the element of novelty or does not contain the
element of progress, the simple patent shall be rejected by the Directorate of
Patents in accordance with the provisions of the applicable laws and
regulations in the field of Patents.
Resolving these patent disputes entails complex legal
proceedings. It may require assistance from a patent law expert or intellectual
property law attorney. Suppose a patent is deemed not to fulfil the element of
novelty. In that case, this can be the basis for challenging or filing a
lawsuit for patent expungement (Muhibuddin, 2022). The resolution of patent disputes related to novelty
may involve several stages and mechanisms, depending on the legal jurisdiction
and applicable regulations. Some of the steps that may be taken involve:
1. Filing a Patent Removal Lawsuit:
A party
who feels that a patent does not meet the element of novelty can file a lawsuit
for patent abolition to the court or authorized institution. This lawsuit is an
attempt to cancel the patent.
2. Trial or Mediation Process:
Parties
involved in a patent dispute can either follow a trial process in court or
engage in mediation to seek dispute resolution. These processes provide an
opportunity for the concerned parties to present their evidence, arguments, and
opinions to the competent authorities.
3. Patent Reexamination:
Some
jurisdictions may provide for a patent reexamination procedure, where the
patent can be re-examined to ensure it meets the necessary conditions,
including novelty. If it is found that the patent does not fulfil the
conditions, the patent may be modified or revoked.
4. Out-of-Court Settlement:
The
parties involved can also seek an out-of-court settlement through negotiation
or arbitration. This settlement may include negotiations between the patent
holder and the party filing the suit.
5. Apple or Appeal:
Suppose
either party is dissatisfied with the decision of the court or authorized
agency. In that case, they can appeal or initiate an Apple process to
re-examine the decision.
Each step in this patent dispute resolution will largely
depend on the legal provisions applicable in a particular country or
jurisdiction. In many cases, the process is complex and involves in-depth legal
and technical considerations. Suppose the patent expungement judgment has
become final. In that case, the court will deliver a copy of its decision to
the Directorate General of Intellectual Property within 14 days of the judgment
being pronounced.
CONCLUSION
In the context of Law No. 13/2016 on
Patents in Indonesia, "novelty" is one of the essential criteria in
patent registration. Novelty is defined as characterizing an invention that has
yet to be previously announced in Indonesia or abroad before the Directorate
General of Haki in Indonesia announces it. The conditions that must be met for
an invention to be considered new are that it has never been publicly
announced, has never been used or sold, is not contained in generally accepted
standards of knowledge, is not included in existing patent documents, is not
contained in scientific publications or conferences. Suppose an invention that
has been granted protection does not fulfil the element of novelty. In that
case, a third party can file a lawsuit for the abolition of a Simple Patent by
proving its position.
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