Question Body 1: What are the principal sources of law and regulation relating to patents and patent litigation?
Answer Body:
The main law relating to patents and patent litigation is Law No. 13 of 2016 concerning Patents (Patent Law). The Patent Law replaced Law No. 14 of 2000.
Applicable regulations include:
Indonesia is party to the following conventions/international agreements relating to patents:
Question Body 2: In which courts/government bodies are patents enforced?
Answer Body:
Intellectual property cases are tried before the commercial courts. Commercial courts have been set up in Jakarta, Makassar, Medan, Semarang, and Surabaya to deal with bankruptcy and intellectual property cases (President Decree No. 97 of 1999).
Jurisdiction in infringement cases is based on the domicile of the defendant. When the patent holder/claimant is domiciled outside Indonesia, the lawsuit must be filed with the Commercial Court of Central Jakarta (Article 144, Patent Law).
Question Body 3: Do the courts/government bodies deal with infringement, invalidity and unenforceability simultaneously or must invalidity and/or unenforceability actions be brought in separate proceedings?
Answer Body:
When a patent has been granted for more than nine months, invalidation proceedings must be brought in the commercial court. During the nine-month period post grant, any challenge must be made by appealing against the decision to grant the patent before the Patent Appeal Commission of the Directorate General of Intellectual Property (DGIP).
Question Body 4: Who can represent parties before the court and/or government body?
Answer Body:
Only registered intellectual property attorneys can represent the parties in proceedings before the DGIP.
Only advocates registered with Perhimpunan Advokat Indonesia (Peradi) (the Indonesian Advocate Association) or Kongres Advokat Indonesia (the Congress of Indonesian Advocates) can represent parties before the law courts in Indonesia.
Question Body 5: What is the language of the proceedings? Is there a choice of language?
Answer Body:
Bahasa Indonesia is the only language used in all Indonesian proceedings.
Question Body 6: To what extent are courts willing to consider, or bound by, the opinions of other national or foreign courts, or other national or international bodies, that have handed down decisions in similar cases?
Answer Body:
Courts can consider decisions from other jurisdictions but are not obliged to follow them. A party may wish to appoint a local legal expert to testify as an expert witness to explain the implications of the foreign decision to the Indonesian court, since the expert's perceived independence is usually helpful. It is common to call on reputable legal experts to testify on certain legal positions that a party wishes to advance.
Foreign decisions are useful for Indonesian judges, who are not generally experienced in patent litigation because patent litigation is uncommon.
International bodies, such as the International Trademark Association (INTA), have submitted amicus curiae briefs to the Indonesian courts on trade mark cancellation actions. There have not been any similar submissions in patent proceedings in Indonesia because patent litigation is still uncommon in Indonesia.
Question Body 7: What does the claimant have to establish in a patent infringement claim
Answer Body:
The burden of proof is on the party who asserts the claim (Article 1865, Civil Code). Therefore, the claimant must prove infringement. This position is also supported by Article 145 of the Patent Law, which reverses the burden of proof in certain cases (see below).
A patent holder has exclusive rights to exploit their patent and prohibit other persons without their approval from:
The burden of proof can be reversed in cases involving patented processes, where the product that results from the process is new and the patent holder cannot determine the process used by the defendant to make the product (Article 145, Patent Law). In these cases, the court will direct the defendant to prove that the production of its product does not involve a patented process. The judge must protect the defendant's interest in obtaining protection for the process and can declare the proceedings closed to the public.
The doctrine of equivalence does not apply in Indonesia.
There is no concept of contributory or indirect infringement under the Patent Law.
Question Body 8: What defences are available to an alleged infringer?
Answer Body:
Articles 14 and 15 of the Patent Law provide for the defence of prior use. However, the prior user must, after the grant of the patent, apply to the DGIP (on payment of the required fee) for the issue of a prior user certificate (which will expire at the same time as the patent) that recognises them as the first inventor. However, the procedure for making this application is not in place yet. In practice, the defendant can use the prior use defence to support a lack of novelty defence, if it can be shown that the use is commonly known.
Question Body 9: On what grounds can a patent be invalidated?
Answer Body:
The burden of proving invalidity is on the party seeking to invalidate the patent.
A patent can be invalidated if the invention is not novel, does not incorporate inventive steps, or is not capable of industrial applicability.
A patent can also be invalidated if the patent concerns any of the following, which are not considered inventions:
(Article 4, Patent Law.)
(Article 9, Patent Law.)
Other reasons for invalidation include the following:
A patent can be abolished by a court if the grant of a compulsory licence cannot prevent the exploitation of a patent in a way that is harmful to the public interest, within two years from the date on which the relevant compulsory licence is granted or from the date on which the first compulsory licence is granted.
To have standing to request invalidation of a patent for non-compliance with the obligation to manufacture patented products or use patented processes in Indonesia, a party must "represent the national interest" (Article 20, Patent Law), although it is unclear who this may be. In practice, risk of invalidation under Article 20 may not be significant, as there has not been any challenge for non-compliance with Article 20.
When the ground for revocation for non-compliance with Article 20 came into effect, it raised many concerns from both patent holders and foreign governments. After various lobbying efforts, the government issued a ministerial regulation (Article 20 Delay Implementation Regulation) to give patent holders a promised temporary reprieve from compliance with Article 20. The Article 20 Delay Implementation Regulation allows patent holders to request a postponement for up to five years, with possible further extensions. The deadline for making the request is three years from the grant of the patent.
Question Body 10: Can a court only partially invalidate a patent or transform it into a utility model?
Answer Body:
A patent can be partially invalidated by the commercial court (that is, one or more of the claims of the patent can be invalidated) (Article 138, Patent Law).
The court cannot transform a patent into a utility model.
Question Body 11: Is it possible to amend patent claims during enforcement proceedings?
Answer Body:
The scope for amending patent claims is limited. Post-grant amendment to a patent claim is only possible if the request is made to the Patent Appeal Commission within three months from grant and only to:
(Article 69(4), Patent Law.)
Question Body 12: Are there any grounds on which an otherwise valid patent can be deemed unenforceable?
Answer Body:
There are no grounds on which an otherwise valid patent can be deemed unenforceable, including misconduct.
Question Set:
Parties to Litigation
Question Body 13: Who can sue for patent infringement?
Answer Body:
A patent holder can sue for infringement.
A co-owner can sue for infringement.
An exclusive licensee can sue for infringement if the licence is registered with the DGIP.
A non-exclusive licensee can sue for infringement if the licence is registered with the DGIP.
A distributor cannot sue for infringement.
Question Body 14: Under what conditions, if any, can an alleged infringer bring proceedings to obtain a declaratory judgment on non-infringement or invalidity/unenforceability?
Answer Body:
An alleged infringer cannot bring proceedings for a declaratory judgment on non-infringement. An invalidation action can be brought before the commercial court if the patent has been granted for more than nine months (see Question 3).
Question Body 15: Who can be sued for patent infringement?
Answer Body:
In civil infringement cases, only the entity that infringes the patent can be sued, not its directors. However, company directors may be criminally liable where the patent holder files a criminal complaint for patent infringement, as patent infringement also incurs criminal sanctions of imprisonment of up to four years and/or a fine up to IDR1 billion (Articles 161 and 162, Patent Law).
Jurisdiction for infringement is based on the domicile of the defendant. When either party is domiciled outside Indonesia, the lawsuit must be filed with the Commercial Court of Central Jakarta (Article 144 (2), Patent Law).
Question Body 16: Is it possible to add or remove parties during litigation?
Answer Body:
It is not possible to add parties, such as a claimant or defendant, during litigation. If a lawsuit is defective because of insufficient parties, the court is likely to dismiss the action instead of rectifying the lawsuit by allowing parties to be added or removed.
Question Body 17: What options are open to a patent holder when seeking to enforce its rights in your jurisdiction?
Answer Body:
Civil infringement actions are brought before the commercial court. Remedies include injunction and, if the infringement was committed deliberately, compensation for damages.
Patent litigation is rare and there is only one known case in which the court ordered substantial damages. In the other handful of infringement cases, the court refused to grant damages and only granted an injunction to stop the infringement. This suggests that it is difficult to prove losses before the Indonesian courts. Invalidation actions outnumber infringement actions and some of these invalidation actions are filed in response to criminal actions taken by local patent holders.
Deliberate patent infringement may incur criminal sanctions, including:
If patent infringement is established in criminal proceedings, the confiscation and destruction of the goods resulting from the infringement may be ordered. These goods are usually seized during police raids at the criminal investigation stage.
Under Supreme Court Circular Letter No. 1 of 1956 (PERMA No. 1/1956), the police must suspend a criminal investigation when a cancellation action against the patent has been filed in court.
Border measures are not available.
Question Body 18: Is it compulsory to provide notice to an alleged infringer before commencing patent proceedings?
Answer Body:
There is no obligation to issue a pre-action letter. However, a pre-action letter is recommended, as liability for damages arises when the infringement can be shown to be deliberate. There are no specific provisions on unjustified threats in the Patent Law.
Question Body 19: To what extent do courts have jurisdiction or power to grant cross-border or extra-territorial injunctions (preliminary or permanent)?
Answer Body:
Indonesian courts will not assume jurisdiction to grant cross-border or extra-territorial injunctions.
Question Body 20: To what extent do courts recognise the blocking effect of "torpedo" actions abroad (proceedings between the same parties concerning the same subject matter that are pending in another jurisdiction)?
Answer Body:
Indonesian courts are not likely to have regard to pending foreign proceedings.
Question Body 21: To what extent are arbitration and alternative dispute resolution (ADR) methods (such as mediation) available to resolve patent disputes?
Answer Body:
Article 153 of the Patent Law recognises the resolution of disputes through alternative dispute resolution (ADR), including arbitration. However, the DGIP will not revoke a patent by implementing any arbitration award because the power of invalidation lies with the court. Article 154 of the Patent Law requires the parties to attempt to resolve their dispute through mediation before filing a criminal complaint for patent infringement.
An arbitration body was set up to deal specifically with intellectual property disputes, but the authors are not aware of any matter that has been submitted to this body.
ADR is rarely used in patent disputes
Question Body 22: Can a patent holder bring proceedings claiming both patent infringement and unfair competition for the same set of facts?
Answer Body:
Unfair competition is governed by Law No. 5 of 1999 Concerning the Prohibition of Monopolistic Practices and Unfair Business Competition. A patent holder cannot rely on this Law to enforce a patent.
Question Body 23: To what extent can enforcement of a patent expose the patent holder to liability for an anti-trust violation?
Answer Body:
The patent may be subject to a compulsory licence if the patent holder's behaviour in enforcing its rights is contrary to competition/anti-trust law.
Question Body 24: What are the main stages of patent infringement proceedings?
Answer Body:
A patent infringement action is decided by a panel of (typically three) judges. The order of proceedings is the same as for other proceedings, and includes the following stages:
Question Body 25: What are the rules and practice concerning evidence in patent infringement proceedings?
Answer Body:
All documentary evidence must be original. Photocopies will be disregarded unless they have been notarised and legalised. However, printouts from websites may be considered.
Affidavits are typically disregarded, which means that witnesses must testify in court instead of relying on their affidavits.
Witnesses must testify orally in court. Written witness statements filed are likely to be given less weight.
Experts are frequently used and it is possible to cross-examine a court-appointed expert.
It is common to engage a legal expert to inform judges on infringement practices, such as experts from developed jurisdictions, as infringement actions are rare in Indonesia.
Foreign litigants usually prefer to appoint their experts from outside Indonesia. Although foreign litigants may prefer to use their own expert, it is best to also identify a suitable local expert. The rationale is that a local expert will not need an interpreter and will be more effective at communicating with the judges.
Question Body 26: Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?
Answer Body:
Evidence given in criminal and civil proceedings is usually restricted to the purpose of those proceedings. The judges are not likely to allow the use of such evidence in separate civil proceedings.
However, the court can refer to decisions given in other proceedings.
Question Body 27: Is evidence obtained in civil proceedings admissible in other civil proceedings?
Answer Body:
See Question 26.
Question Body 28: To what extent is pre-trial disclosure permitted and what other mechanisms are available for obtaining evidence from an adverse party or third parties?
Answer Body:
’The Civil Procedure Rules do not support litigants in obtaining evidence. There is no concept of discovery under Indonesian civil procedure. Each party can decide whether to disclose documents that they wish to rely on in the action.
There is also no procedure to subpoena documents from the other parties or from third parties. As such, the claimant must rely on their own efforts to obtain admissible evidence.
Not applicable.
Question Body 29: What level of proof is required for establishing infringement or invalidity/unenforceability?
Answer Body:
The Civil Procedure Rules do not expressly address the applicable standard of proof in civil cases.
The following types of evidence can be used:
(Article 164, Civil Procedure Rules.)
In practice, original documentary evidence is given the greatest weight. Because patent infringement cases are rare in Indonesia, there is very little case law to discern any pattern about the required level of proof. Foreign decisions are a useful reference for Indonesian judges.
Question Body 30: How long do patent infringement proceedings typically last?
Answer Body:
A first instance decision must be adopted within 180 days from the start of the action (Article 146(1), Patent Law). Judges are accountable to the Supreme Court if they cannot complete intellectual property cases within the stipulated time frame (90 days for trade mark cases, 180 days for patent cases). Patent litigation is rare and on average about one infringement case in brought each year in the commercial court. Given the tight time frame of 180 days, almost all proceedings go to trial because the judges actively manage each case.
There is no separate fast-track procedure.
At every step of the proceedings, judges will convene hearings to monitor compliance and set the next step in the process. This serves as case management and ensures that the case is disposed of within 180 days.
Judges must decide on the case within the statutory time frame (see above). Judges are therefore reluctant to grant adjournments and any adjournment would probably be limited to two or three weeks.
If a defendant tries to use delaying tactics (for example, by requesting more time to take certain steps such as filing a defence or evidence), the court may grant one final opportunity before moving on to the next step and denying the defaulting party the opportunity to complete that step. There is no procedure for entering default judgment or summary judgment on the ground that the defendant misses a step. The claimant must still prove its case as pleaded.
Default judgment is only granted if the defendant does not appear in the proceedings.
Question Body 31: Is preliminary relief available, and if so what measures are available and under what conditions?
Answer Body:
The claimant can request a temporary order for the defendant to stop infringement and deliver up the infringing items (Article 155, Patent Law).
To obtain this order, the defendant must submit "strong preliminary evidence." What this means is unclear because there is only one known decision granting relief under this procedure, and this was a copyright case (No. 93/Pdt.Sus-Hak Cipta/2013/PN.Jak.Pst).
A temporary order is different from a common law interlocutory order. The proceedings for a temporary order are standalone and separate from a claim for damages. The temporary order may either be dismissed or maintained following arguments from both sides. Where the order is maintained, it becomes permanent. There will be no further hearing on damages in that set of proceedings. The patent holder then has the option to file a separate civil action claiming damages or to file a criminal complaint (Article 158(4), Patent Law).
See above, Search and Preservation/Search and Seize Orders.
Urgency is not a condition for seeking a temporary order, the threshold is "strong preliminary evidence." All requests for temporary orders start with an ex parte hearing. The court will not grant a preliminary injunction to support proceedings in another jurisdiction.
Question Body 32: Can a defendant file a protective writ?
Answer Body:
There is no procedure for the filing of protective writs.
Question Body 33: What is the format/procedure of preliminary injunction proceedings?
Answer Body:
See below.
The claimant must establish its claim with "strong preliminary evidence" (see Question 31).
There is very little guidance on evidence because there is only one known decided case on this topic and this related to copyright, not patent infringement.
Patent Validity
The rules do not expressly address this, but in principle there is no reason why a defendant should not be allowed to raise validity as an issue when defending an application for an injunction/temporary order.
There is no procedure to expedite the proceedings. A request for an interlocutory injunction/temporary order must be decided at the ex parte stage within five working days from filing. The court must decide whether to affirm the interlocutory injunction/order within 30 days from it being issued. The defendant has an opportunity to present information and evidence before the court makes its decision to affirm or revoke the injunction/order.
Question Body 34: If a preliminary injunction is granted and the main infringement action is finally lost, can the defendant claim damages for the unjustified preliminary injunction?
Answer Body:
When applying for a temporary injunction, the applicant must provide a bond in cash and/or bank guarantee in the amount equal to the value of the goods that are the subject of the temporary injunction. If the temporary injunction is not affirmed, the court will order that the defendant be indemnified out of the bond.
Question Body 35: What remedies are available against a patent infringer?
Answer Body:
An order to stop infringement is usually granted when infringement is proved. When infringement is proved but the damages award is denied because of failure to prove the losses suffered, the court will still grant a permanent injunction.
In civil litigation, the claimant can claim damages for material loss and non-material loss (often referred to as "immaterial loss" based on the translation from "ganti kerugian Immateril"). Material loss is based on actual losses incurred, for example, due to lost sales or lost royalties. A claim for non-material loss includes compensation arising from apprehension caused by the breach, such as distress. Attempts to claim non-material damages in intellectual property cases have so far not been successful. It may be possible to claim interest as part of the losses or under the Civil Code (although the relevant provisions relate to breach of contract actions).
Damages are compensatory. Punitive damages are not awarded.
The court can order seizure of the infringing goods.
Appeal level decisions are published (https://kepaniteraan.mahkamahagung.go.id/perkara). However, first instance decisions are not always published.
Recall orders are not available.
A declaration of infringement and validity can be granted in an infringement action.
Question Body 36: What avenues of appeal are available for a defeated party and on what basis?
Answer Body:
The Supreme Court hears appeals from first instance decisions in patent cases.
Grounds for appeal are listed in Article 30 of the Supreme Court Law and include:
The appellant must establish one of the above grounds to succeed on appeal.
The time limit for the Supreme Court to reach a decision on an appeal is 180 days from the date of receipt of the case file from the first instance court in which the appeal is filed.
An appeal is initiated by filing a notice of appeal with the commercial court within 14 days from the first instance decision. The memorandum of appeal must be filed within 14 days from filing of the notice of appeal. The respondent must file a counter-memorandum within 14 days of receiving the appeal memorandum. The commercial court then sends the file to the Supreme Court.
The appeal is decided based on arguments in the pleadings, without an oral hearing.
The losing party can request judicial review by the Supreme Court of an appeal decision. Possible grounds for judicial review include the following:
(Article 67, Supreme Court Law.)
Question Body 37: What level of cost should a party expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and appeal proceedings?
Answer Body:
Lawyers in Indonesia can charge between USD200 to USD600 per hour. Costs for a patent infringement action can range from USD80,000 to USD150,000, depending on the area of technology and complexity of the case.
The courts do not order the losing party to pay the winning party's legal costs.
Question Body 38: In addition to the answers to questions 8 and 23, are there any features of your jurisdiction's patent law or litigation procedure that make it attractive or unattractive to either SEP holders or implementers/willing licensees for the resolution of disputes over fair reasonable and non-discriminatory (FRAND) licensing and standard essential patents (SEPs)?
Answer Body:
The courts have not yet considered FRAND licences or SEPs. However, several lawsuits have been brought by a SEP holder against a phone manufacturer based in Indonesia.
The authors expect that the Indonesian courts will adopt a similar approach to that of foreign courts that have considered infringements of SEPs.
The Patent Law does not require SEP holders to show compliance with FRAND obligations before granting a prohibitory injunction. Therefore, a defendant that wishes to oppose the injunction will need to prove that the SEP holder did not make a FRAND offer.
Question Body 39: How should SEP holders negotiate in your jurisdiction to comply with any FRAND undertaking (or RAND undertaking) that they have given in relation to SEPs?
Answer Body:
There is no case law on how the parties should negotiate to comply with FRAND undertakings. If a case arises in the future, the commercial court may refer to the decision of the Court of Justice of the European Union (CJEU) in Huawei v ZTE in deciding whether to grant an injunction for infringement (see Huawei v ZTE (Case C-170/13) ECLI:EU:C:2015:477).
Question Body 40: How do courts in your jurisdiction calculate FRAND royalty rates?
Answer Body:
There is currently no case law on SEPs or FRAND licensing. A commercial court is unlikely to calculate FRAND royalties, whether based on a top-down or comparable license approach.
Question Body 41: To what extent are courts in your jurisdiction willing to grant anti-suit injunctions in the context of disputes over FRAND licensing and SEPs?
Answer Body:
There is currently no case law on SEPs or FRAND licensing. A commercial court is unlikely to grant an anti-suit injunction as this would be beyond its jurisdiction. Under the Patent Law, the commercial court has jurisdiction to decide on patent infringement with a view to grant an award of damages and order the cessation infringement.
