The basics of patent drafting in Indonesia (part 1) — physics

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Patent is a one of Intellectual Property Rights (IPRs) branch. Indonesia has several IPRs regulatory regimes apart from patent, namely, copyright, trademark, industrial design, geographical indications, semiconductor intellectual property core, trade-secret, and plant variety protection.

Indonesia patent application is administered by DGIP (https://www.dgip.go.id/) which also employs a number of patent examiners divided into several groups, specifically, mechanics, physics/electric tech, chemistry, pharmacy, and biology. For computer program, as an example, DGIP treat this under copyright regime, but patent application for this type of technology can still be applied to patent where is usually examined by physics/electric tech examiners.

According to that examiners, for a computer to be granted as a patent invention, that apps shall be, in essence, inexplicably linked to technical features (in EU, for example, like a medical device MRI software that requires a specific software to solve technical problem therein). Unfortunately, no golden rule of full examination on app and its technical features, left to senior physics examiners considerations.

Apart from technical consideration, a claim drafting (‘heart’ of patent protection) has to be clear and depicting a whole invention itself, mentioning technical features, and definitely not its usage function. Many examiners keen on two-part form claim format (preamble, transition phase, and body of claims) formulated in one sentence as a independent claim, then extracted into dependent claims (in total, 10 claims are free of charge).

In claim drafting, don’t use bullet list, still allowed using dash symbol, but preferably one sentence with numbering between technical feature words descriptions. The first claim must explicitly mention invention paramount features.

If in chemistry patent claims, subject matter of any invention shall be taken into account, which is not the case in other non-chemistry patent claims.

In your patent application documents, from title to abstract, usage term shall be consistent throughout that documents. Examiners will not use your title of invention as the basis of withdrawal, but they may seek confirmation from you, which make your patent application process a bit longer because your correspondence with them. Additionally, your title of invention can definitely help examiners in imagining your invention.

If a patent application doc uses a feature or picture of your invention, then you must employ annotation numbering, and use that numbers when you explain in a complete description of invention section. Be mind the words or written expression you use, such as between a tool and set of a tool/instrument, between a connection and an assembly, cross-referencing method between your claims, appropriate word to depict more general functions than specific functions (glue vs adhesive surface, preferably the later, for example), and avoiding common function of that tool or automatic-provided technical characters.

If your invention is equipped with a unit of measurement, kindly ensure that unit is a best-mode of your invention, if not, then avoid to be putted into your independent claim.

For inventors, kindly looking for registered IP attorneys with a very good drafting skill, like those who are know legal languages, or experienced in legal and legislative drafting. I personally more than 5 years as an legislative drafter which makes me familiar with Indonesian language employed in laws and corporate documents, knowing the concept/background behind every word. During my mandatory training as IP attorneys, I seek for words that examiners are considered different usage context, an that quite helpful to faster your patent application, eventually.

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