Lawsuits and Courts
Q: What legal or administrative proceedings are available for enforcing Patent rights against an infringer? Are there specialized courts in which a Patent infringement lawsuit can or must be brought?
A: In Indonesia, Patent owners can enforce their rights against infringers through various legal and administrative proceedings. Some of these proceedings include the following:
- Civil Lawsuit:
Patent owners can file a civil lawsuit against infringers in a commercial court. The court can grant temporary injunctive relief, damages, and other remedies to the Patent owner. However, legal costs cannot be borne by the losing party.
- Criminal Complaint:
Patent owners can file a criminal complaint against infringers with the civil investigator, the Indonesian Police Force, or both. The police will investigate the complaint and, if they find evidence of infringement, can prosecute the infringer. If convicted, the infringer can face imprisonment, a fine, or both.
The commercial courts are responsible for handling Intellectual Property cases in Indonesia, and they have been established in Jakarta, Makassar, Medan, Semarang, and Surabaya to specifically deal with commercial matters, such as bankruptcy and Intellectual Property cases, according to President Decree No. 97 of 1999. However, the judges who preside over Patent infringement matters do not necessarily have the required technical backgrounds. Hence, the presence of expert witnesses in Patent litigation cases is essential.
In cases of infringement, the jurisdiction is determined by the defendant’s domicile. If the Patent holder or claimant is located outside Indonesia, the case must be filed with the Commercial Court of Central Jakarta, as specified in article 144 of the Patent Law.
Trial Format and Timing
Q: What is the format of a Patent infringement trial?
A: Civil proceedings in Indonesia are conducted in writing and oral arguments. The judges will listen to the oral arguments of each party one at a time, and they rely heavily on the documentary evidence. Witnesses of fact can also provide oral evidence before the court. However, a witness statement or affidavit alone will not be sufficient since it is considered merely supplementary documentary evidence. In general, the procedure of the trial is as follows:
- Attendance at the first hearing after the court summons both plaintiff and defendant;
- Attendance at the second hearing, when the defendant files its response to the plaintiff’s cancellation suit;
- Preparation of the plaintiff’s reply to the defendant’s response to the suit;
- Attendance at the third hearing to file the plaintiff’s reply;
- Attendance at the fourth hearing when the defendant files its response to the plaintiff’s reply;
- Preparation of the plaintiff’s evidence to be submitted to the court;
- Attendance at the fifth hearing to submit the plaintiff’s evidence and review the defendant’s evidence;
- Preparation and filing of the conclusion of the case based on documents and evidence filed with the court by both plaintiff and defendant;
- Attendance at the sixth hearing on the filing of the conclusion of the case;
- Attendance at the seventh hearing to hear the judges’ decision; and
- Issuance of the court’s decision.
For Patent civil disputes, pursuant to article 145(4) of the Patent Law, the trial can be conducted privately if both parties make requests to the Court of Commerce for the trial to be private. This is to protect the secrecy of processes that would be easily manipulated or improved by a person knowledgeable in the relevant field.
Note that by law the court of commerce must issue its decision within 180 days of the date of filing of the civil suit in Patent matters. However, for criminal actions the process may take longer depending on the complexity of the case and the number of witnesses and evidence presented. However, it typically lasts between six to 18 months.
Unlike in various jurisdictions where there are specialised courts or judges that specialise in Intellectual Property matters, Indonesia does not have such a system. Bear in mind that the court of commerce discussed above also caters to non-IP matters if the dispute is of a commercial nature. Also, the judges do not have science backgrounds – hence the importance of involving expert witnesses during the suit. Expert witnesses may be called upon to provide their opinions on technical or scientific matters that are relevant to the case.
Indonesia has not adopted the jury system, and judges play an important and active role in court hearings. Furthermore, precedents are considered to be merely advisory in nature and they do not have binding legal force as in common law systems.
Proof Requirements
Q: What are the burdens of proof for establishing infringement, invalidity and unenforceability of a Patent?
A: As per article 1865 of the Civil Code, the party making the claim is responsible for providing evidence to support it. Therefore, in a Patent infringement case, the claimant must prove that infringement has occurred by showing the evidence.
However, article 145 of the Patent Law allows the reversal of the burden of proof to the defendant in a Patent invalidation lawsuit involving a patented process if:
- The product resulting from the patented process is new; or
- The product is suspected of being produced using the patented process, but the Patent holder cannot determine the process used to make the product even after making enough efforts to find out.
A Patent owner holds exclusive rights to exploit their Patent and prevent others from using, making, importing, renting out, delivering, supplying for sale or rental, or conducting any other activity involving the patented product or process. However, in cases involving patented processes where the resulting product is new and the Patent holder cannot determine how the defendant produced it, the burden of proof can be reversed, as per article 145 of the Patent Law. In such cases, the court will require the defendant to prove that their product does not involve a patented process. The judge will also safeguard the defendant’s interests by potentially closing the proceedings to the public.
Standing to Sue
Q: Who may sue for Patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?
A: To claim an infringement, the claimant or Patent holder must be able to prove that the infringed product or process is identical to that claimed in the Patent registration owned. The Patent holder may pursue both a criminal and a civil suit – the latter to seek damages for the infringement proven during the criminal proceedings. A defendant that has been penalised for an infringement may still be liable to a civil damages claim by the plaintiff.
Under the Patent Law, there are nine types of conduct that constitute Patent infringement, namely manufacturing, using, selling, importing, leasing, transferring, providing for sale, providing for lease, and providing for transfer. It only takes one of these to be proven for the Patent holder to be able to pursue the infringement.
Inducement, Contributory and Multiple Party Infringement
Q: To what extent can someone be liable for inducing or contributing to Patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a Patent claim, but together they practise all the elements?
A: Provided that the parties are infringing the same Patents, then the joinder of multiple defendants within one lawsuit is possible.
Joinder of Multiple Defendants
Q: Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same Patents?
A: Provided that the parties are infringing the same Patents, then the joinder of multiple defendants within one lawsuit is possible.
Infringement by Foreign Activities
Q: To what extent can activities that take place outside the jurisdiction support a charge of Patent infringement?
A: The Indonesian Patent law does not regulate the infringement that takes place outside Indonesia. There must be direct and clear evidence that shows that the infringement is conducted in the country for a Patent holder to initiate both criminal or civil action.
Infringement by Equivalents
Q: What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?
A: There is no discovery process in Indonesian legal practice and parties do not have a right to demand the submission of documents. Litigations in Indonesia cannot rely on the Civil Procedure Rules to obtain evidence, as there is no provision for discovery. Each party has the discretion to disclose documents they intend to use in the legal action, and there is no procedure to compel the production of documents from other parties or third parties through a subpoena.
Litigation Timetable
Q: What is the typical timetable for a Patent infringement lawsuit in the trial and appellate courts?
A: As regulated under article 146, paragraph (1) of the Patent Law, the Court shall issue a decision within 180 days from the date of filing of the suit. There is no way to expedite to procedure, but what usually happens is the are delays due to various reasons (ie, the request to delay by either of the parties, or in some instances the delays are decided by the judges themselves).
Litigation Costs
Q: What is the typical range of costs of a Patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?
A: The costs may vary depending on the expertise of the attorney appointed, the expert witnesses, and the level of difficulty of the subject matter. The range of the costs may vary from USD 85,000 to USD 200,000 for the first instance. Note that attorney’s fees shall be borne by the party that receives legal service from the entrusted attorney. Hence, it will not be possible to seek compensation from the other party for the legal fees already incurred by the claimant or plaintiff.
Court Appeals
Q: What avenues of appeal are available following an adverse decision in a Patent infringement lawsuit? Is new evidence allowed at the appellate stage?
A: If any of the parties are not satisfied by the decision in the first instance, they can file for a cassation to the Supreme Court. Please note that the party who wishes to file the cassation has 14 days from the issuance of the first instance decision to inform the Court of Commerce of the intention to file the cassation by submitting the cassation notice. Unlike the proceeding in the Court of Commerce, there will be no oral or direct hearing in the Supreme Court. Hence, the decision is solely based on the arguments in the pleadings.
According to article 30 of the Supreme Court Law, there are several grounds for cassation, namely:
- lack of authority or exceeding the limits of authority;
- erroneous application or contravention of applicable laws; and
- failure to comply with certain procedural re’uirements.
New evidence is not allowed to be brought upon at the cassation or appeal stage. However, if there is new evidence (novum) that was not available previously, the losing party can only submit it when requesting a judicial review (see article 67b of the Supreme Court Law).
Competition Considerations
Q: To what extent can enforcement of a Patent expose the Patent owner to liability for a competition violation, unfair competition or a business-related tort?
A: The Indonesian Competition Law cannot be used to enforce Patent-related matters in Indonesia. Nevertheless, the use of a registered Patent still should not be used in a manner that is contradictory to the prevailing laws and regulations, as well as the national interest (see article 78 of the Patent Law).
Alternative Dispute Resolution
Q: To what extent are alternative dispute resolution techniques available to resolve Patent disputes?
A: In theory, the conflicting parties may settle the dispute via arbitration or other alternative dispute resolutions (see article 153 of the Patent Law). In the event of a Patent infringement, both parties are by law required to settle the matter first through mediation (see article 154 of the Patent Law).
The settlement of a dispute by arbitration may be conducted through the Institute for Arbitration and Mediation of Intellectual Property Rights. However, arbitration decision cannot be executed by the Patent Office since it only acts based on court decisions or based on its own prerogative.
Should you need more information regarding Patent enforcement proceedings in Indonesia, please do not hesitate to contact us via [email protected].
