Indonesia's patent office brings with its new patent examination guidelines

Indonesia's Patent Office publishes its new patent examination guidelines. The examination guidelines bring some of the changes in the procedural requirement for new use claims.

Article 4(f) of the Indonesian Patent Law says that any such new use of a known or existing product is not patentable. Contrary to this, the guidelines allow patentability of second medical use as long as the claim is written using the purpose limited product claim or EPC2000 format.

A claim by using the compound mechanism will be considered too broad and for this the guidelines states for identifying the particular disease. For claims supporting the new use and/or increased efficiency claims, the new use must include clinical experimental data, animal experimental data either in vivo or in vitro, data indicating decreased side effects, and other relevant information which supports the efficiency.

As per the guidelines, if in case the feature of use, activity, or function serves the distinguishing feature, in this case, the second medical use claim will also be patentable. These guidelines try to provide a wider scope of the patentable subject matter. These guidelines seem to be more favorable to pharmaceuticals companies.

Commenting on the same, Kin Wah Chow, a registered foreign lawyer said, "Based on briefings to practitioners, the Directorate General of Intellectual Property (DGIP) is trying to take a pragmatic approach - still allowing medical use of a known substance to be patented where there is no earlier medical use for that substance. The DGIP is considering the importance of protecting investment in discovering and proving new medical use demonstrated in the current pandemic climate. We hope that the bar against patenting second medical use will be removed,"