On 16 December 2015 Indonesian Patent Appeal Commission (“the Appeal Commission”) has granted YAMAHA KK’s patent appeal. The Appeal Commission consideration, that is:
- After having reviewed the substantive examination phase II result from the Appellee wherein in the said examination result stated that it should be inserted the reference number to the drawings of invention in accordance to the previous amendment. The Board opined that reference number was not the main point, and in the absence of reference number was not the main point of the refusal reason in accordance to the Article 24 Law No. 14 of 2001 on patent.
- Considering that Appellee stated in the final examination result wherein time limit of the examination phase stage has been lapsed and etc, thus the Board opined that the time limit of 36 months as of the request of substantive examination was filed in accordance to the applicable provision, however it didn’t mean that the patent examiner should decide uncertainty decision and would be detrimental to the Applicant.
- Considering that the Appellee judged not relying on things which were substantial matter related to the patentability of Patent application P00200800426, but instead stated that the said Patent application were not clear in accordance to the Article 56 of Patent Law. Whereas the Board opined that this was not in line with the Article 51 paragraph (2) Law No. 14 of 2001 on Patent. Unclear evaluation from the Appellee should be specified in order to ease the Appellant for responding the inquiries from the Appellee. According to the Board, unclear statement which not stated further explanation in terms of unclear matter was not in line with the applicable provision.
- The refusal argument raised by the Appellee stated that the patent specification was unclear without mentioning further detailed about the said unclarity matters, so that the legal grounds of the said rejection were unclear.
- Considering that the Appellee stated in his Substantive Examination wherein the claims amendment 1-9 by referring to the China granted claims CN-101353976 B considered some part its claims expand the scope of protection, the Board opined that the said evaluation was less appropriately because it didn’t inform specifically to the Appellant which claims to be considered to expand the scope of protection.
- Whereas in accordance to the substantive examination result to the claims amendment 1-9 which refer to the China patent CN-101353976 B has fulfilled the novelty and inventive step requirements in accordance to the Article 2 Law No. 14 of 2001 on Patent.
According to the above consideration, the Patent Appeal Commission decided:
“Awarding and agreeing on the APPELLANT patent appeal petition under Reference Number: Reg.03/KBP/IV/2015 that was filed by the Proxy of Appellant Maulana and Partners Law Firm as well as ordering the Directorate General of Intellectual Property Rights to conduct this decision by issuing Certificates of Patent Application P00200800426.”