Executive Summary
Southeast Asia represents one of the fastest-growing markets globally, with a combined population exceeding 670 million. For SEP holders, the key SE Asia markets of Indonesia, Philippines, Vietnam, and Thailand are not only important jurisdictions for patent enforcement but also critical leverage points in global FRAND (Fair, Reasonable, and Non-Discriminatory) rate negotiations.
This comparative review highlights the critical features, strategies, and practical considerations for SEP enforcement in Indonesia, Philippines, Vietnam, and Thailand, focusing on timelines, evidentiary requirements, and court expertise.
- Indonesia: Fast-track litigation with a 180-day first instance deadline, but no discovery and limited preliminary injunctions.
- Vietnam: Important to educate the official technical expert at the Vietnam Intellectual Property Research Institute (VIPRI) on how infringement is established in SEP cases. VIPRI opinions are highly persuasive before the court.
- Thailand: Dedicated IP court (Central Intellectual Property and International Trade – CIPIT) with specialist judges ensures professional handling of complex SEP cases.
- Philippines: Filing at the Bureau of Legal Affairs (BLA) is advantageous because the hearing officials regularly handle patent matters, ensuring they have the relevant expertise to adjudicate complex technical and legal issues.
When enforcing SEP patents in Southeast Asia, it is more effective to consider the region as a whole rather than enforcing in only one country. This multi-jurisdictional approach maximizes leverage as part of global FRAND negotiations, as pursuing cases in multiple jurisdictions increases the likelihood of success in at least one, even if others do not yield favourable outcomes. Given the significant market size in each country,handset /target licensees face greater risks when engaging in multi-jurisdictional disputes across Southeast Asia.
Engaging a single law firm with a regional network to coordinate this strategy is likely to be cost-effective streamlining case management, and reinforcing negotiation pressure across borders. This unified approach leverages regional expertise and promotes efficient handling of complex SEP enforcement matters.
Indonesia: Fast-Track SEP Litigation
Key Features for SEP Enforcement
- Strict 180-Day Timeline: The Commercial Court must issue a decision within 180 days of filing, ensuring rapid resolution.
- No Discovery: Infringement can be proven by mapping technical specifications to patent claim(s) and showing implementation of the standards in Indonesia (e.g., LTE/5G network compatibility, local use).
- Pleading Requirements: SEP complaints must include a detailed claim chart mapping the relevant standard (e.g., 3GPP) to the asserted patent claims.
- Preliminary Injunctions: Rarely granted due to the quick trial process; relief must be requested in the initial claim.
- Working Requirement: Patents must be locally implemented (by production, import, or licensing); non-use can be grounds for invalidation or compulsory licensing.
- Appeals: Supreme Court aims to decide within 180 days; enforcement of injunctions/damages is stayed during appeal.
SEP-Specific Considerations
- Evidence: Technical mapping and proof of local network/device use are critical.
- Strategy: Prepare comprehensive technical evidence before filing; assert one patent per lawsuit for clarity and speed.
Vietnam: Leveraging VIPRI for SEP Enforcement
Key Features for SEP Enforcement
- VIPRI Expert Opinions: Vietnam Intellectual Property Research Institute (VIPRI) opinions are highly persuasive before the court. It’s important to educate the official technical expert at VIPRI as to how infringement is established in SEP cases.
- Litigation Timeline: First instance judgments typically take 18–24 months; appeals add 12–24 months.
- Concurrent Validity Opinions: IP Vietnam can issue validity opinions, which can be used to preempt invalidation tactics by defendants.
- Pre-Litigation Strategy: VIPRI opinions strengthen the plaintiff’s case and expedite enforcement, putting the defendant at a disadvantage if they rely only on private experts.
- Administrative avenue - Besides civil litigation, patent enforcement in Vietnam can also be pursued through administrative procedures at the Ministry of Science and Technology (MOST).
- Confidentiality: No explicit rules, but courts may grant protection for trade secrets upon request.
SEP-Specific Considerations
- Evidence: VIPRI’s mapping of SEPs to 3GPP standards is crucial for both infringement and credibility.
- Strategy: Secure VIPRI opinion before filing; consider concurrent validity opinions to counter invalidation attempts.
Thailand: Specialist IP Court for SEP Disputes
Key Features for SEP Enforcement
- CIPIT Court: Patent cases, including SEP disputes, are heard by the Central Intellectual Property and International Trade (CIPIT) Court, staffed by IP-specialist judges.
- Judicial Professionalism: Judges are experienced in complex patent issues, open to international precedents, and adept at handling technical SEP matters.
- Timeline: First instance decisions in 12–18 months (up to 24 months with foreign service); appeals typically resolved in 6–12 months.
- Stay of Execution: Rarely granted; first instance judgments are often enforced unless a strong case is made on appeal.
- Confidentiality: Parties can request confidentiality for sensitive SEP licensing or technical information; judgments must be read publicly.
SEP-Specific Considerations
- Evidence: Detailed claim charts mapping SEPs to standards, technical expert testimony, and licensing history are persuasive.
- Strategy: Leverage the court’s openness to international SEP jurisprudence and ensure robust technical submissions.
Philippines: Legal Certainty and IP trained tribunal
Key Features for SEP Enforcement
- US Jurisprudence Influence: Courts often reference US law, providing predictability for SEP owners familiar with FRAND and US case law.
- Detailed Pleadings: Complaints must include affidavits from technical experts, claim charts, and documentary evidence mapping SEPs to relevant standards.
- Bureau of Legal Affairs: Filing a patent infringement case at the Bureau of Legal Affairs (BLA) is advantageous because the hearing officials regularly handle patent matters, ensuring they have the relevant expertise to effectively understand and adjudicate complex technical and legal issues involved in such cases.
- US Jurisprudence: Legal certainty and detailed pleadings, with courts referencing US jurisprudence, but longer timelines.
- Damages: Courts may award actual damages, reasonable royalties, and treble damages (up to 3x actual damages) depending on circumstances.
- Enforcement: Injunctions and damages cannot be enforced while appeals are pending.
SEP-Specific Considerations
- Evidence: Extensive technical documentation and expert testimony at filing are essential.
- Strategy: Assert 2–3 related patents per suit, prepare comprehensive evidence, and anticipate lengthy proceedings.
Comparative Table: SEP Enforcement in Southeast Asia
|
Country
|
Key SEP Enforcement Feature
|
Timeline (First Instance)
|
Specialist Court
|
Evidence Focus
|
Population (million)
|
|
Indonesia
|
Fast 180-day judgment; no discovery
|
~6 months
|
No
|
3GPP mapping, local use
|
270+
|
|
Vietnam
|
VIPRI expert opinion pre-filing
|
18–24 months
|
No
|
VIPRI opinion, 3GPP mapping
|
~100
|
|
Thailand
|
Dedicated IP court (CIPIT)
|
12–18 months
|
Yes
|
Claim charts, expert testimony
|
~70
|
|
Philippines
|
US law reference, detailed pleadings
|
3–5 years
|
No
|
Expert affidavits, claim charts
|
~115
|
Conclusion
Enforcing SEPs in Southeast Asia requires adapting to each country’s legal environment:
- Indonesia offers rapid first-instance decisions, favouring patentees with clear technical evidence.
- Vietnam rewards pre-litigation diligence through VIPRI opinions, providing a strategic edge.
- Thailand’s specialist IP court ensures professional handling of technical SEP issues.
- Philippines provides legal certainty for SEPs, but demands thorough documentation and patience due to longer timelines.
For SEP holders and implementers alike, Southeast Asia is no longer a peripheral region but a central battleground where licensing terms are shaped, making effective enforcement here an indispensable part of global SEP strategy.
Rouse’s network of patent litigators in these four key Southeast Asian markets combine deep local expertise with a nuanced understanding of each jurisdiction’s court system, enabling them to maximize enforcement opportunities. By working in close coordination across all four countries, they deliver a seamlessly integrated SEP enforcement strategy tailored to the region’s complex legal landscape - to maximize impact and consistency throughout the region. Please contact the authors for more information.
