It is not yet possible to record licenses at the Directorate-General of Intellectual Property. Until it is, license agreements will not be enforceable against third parties.
The Plaintiff’s claim in Lie Reza H. v. PT. Djarum (30/PDT.SUS/2013/PN.Niaga Jkt. Pst.) failed because the relevant license agreement had not been recorded, and as licensee the Plaintiff had no standing to bring an action against a third party. Particularly, the Commercial Court decision noted that three procedural requirements must be met before a license agreement can be effective against third parties:
- submission of a request for recordation to the Directorate-General of Intellectual Property;
- proof of payment of official fees related to the request for recordation; and
- evidence of registration of the license by the Directorate-General of Intellectual Property.
The Commercial Court specifically addressed the lack of implementing regulations governing license recordals. The Court said that absence of implementing regulations (and therefore the inability of parties to record license agreements) was not sufficient reason for the Court to accept a request for recordation on its own (i.e. no proof of payment or evidence of registration).
We commented on enforcing licensed IP rights here.