Legal Sources
What are the main sources of laws and regulations related to patents and patent litigation?
The main law related to patents and patent litigation is the Patent Law No. 13 of 2016 (“Patent Law”), which replaced Law No. 14 of 2000.
Applicable regulations include:
- Government Regulation No. 32 of 1991 on Import of Raw Materials or Certain Patented Products for Domestic/Local Pharmaceutical Production
- Government Regulation No. 46 of 2020 on the Requirements and Procedures for Recording Transfers of Patents
- Regulation of the Ministry of Law and Human Rights No. 38 of 2018 on Patent Application
- Ministry of Law and Human Rights Regulation No. 3 of 2019 on the Patent Appeal Board
- Regulation of the Ministry of Law and Human Rights No. 30 of 2019 on the Procedure for Granting Compulsory Patent Licenses
- Ministry of Law and Human Rights Regulation No. 77 of 2020 on Government Implementation of Patent Procedures
Indonesia is a party to the following patent-related conventions/international agreements:
- Patent Cooperation Treaty (PCT) 1970
- Paris Convention for the Protection of Industrial Property, 1883
- 1994 World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Court system
Through which courts/ government agencies are patents enforced?
Intellectual property cases are heard by the Commercial Courts. Pursuant to Presidential Decree No. 97 of 1999, Commercial Courts have been established in Jakarta, Makassar, Medan, Semarang and Surabaya to handle bankruptcy and intellectual property cases.
Jurisdiction in infringement cases is determined by the defendant’s domicile. If the patent holder/plaintiff’s domicile is not in Indonesia, the lawsuit must be filed in the Central Commercial Court of Jakarta (Article 144 of the Patent Law).
Do courts/ governmental agencies deal with infringement, invalidity, and unenforceability disputes at the same time, or must invalidity and/ or unenforceability claims be raised in separate proceedings?
If more than nine months have passed since the grant of the patent, the invalidation procedure must be initiated before the Commercial Court. Within nine months after the grant, any challenge to the validity of the patent must be made by appealing the decision to grant the patent to the Patent Appeal Board of the Directorate General of Intellectual Property (DGIP).
Who can represent clients before courts and/ or government agencies?
Only registered IP lawyers may represent parties in proceedings before the Directorate General of Intellectual Property (DGIP).
Only lawyers registered with the Indonesian Bar Association (Perhimpunan Advokat Indonesia, Peradi) or the Indonesian Bar Congress (Kongres Advokat Indonesia) can represent clients in Indonesian courts.
In what language will the proceedings be conducted? Can the language be chosen?
Indonesian is the only language used in all legal proceedings in Indonesia.
To what extent is the court willing to consider or be influenced or constrained by decisions of other national or foreign courts, or other national or international bodies, in similar cases?
The courts may consider decisions from other jurisdictions, but are not obliged to follow them. Parties may wish to appoint a local legal expert to testify as an expert witness to explain the impact of a foreign decision to the Indonesian court, as the independence of an expert often helps in the case. Parties often hire well-known legal experts to testify on certain legal positions they wish to advance.
Foreign judgments are helpful to Indonesian judges because patent litigation is uncommon in the country and judges often lack relevant experience.
International bodies such as INTA have filed amicus briefs in Indonesian courts in relation to trademark cancellation proceedings, but similar filings have not occurred in relation to patent litigation in Indonesia, as patent litigation remains uncommon in the country.
Substantive Law
What does the plaintiff need to prove in a patent infringement lawsuit?
The burden of proof is on the party asserting the right (Article 1865 of the Civil Code). The plaintiff must therefore prove that an infringement has occurred. Article 145 of the Patent Law also supports this principle, but in certain cases the burden of proof is reversed (see below).
The patent owner has the exclusive right to implement his patent and has the right to prohibit others without his permission from:
- Products are offered for sale, rental or delivery.
- For process patents: using the patented method to make the product, or to perform any of the activities listed above.
In cases involving patented processes, if the product obtained by the process is new and the patentee cannot determine the method used by the defendant to manufacture the product, the burden of proof may be reversed (Article 145 of the Patent Law). In such cases, the court will order the defendant to prove that the product was not produced using the patented process. The judge must protect the defendant’s interest in obtaining protection for its production process and may declare the proceedings to be closed to the public.
The doctrine of equivalents does not apply in Indonesia.
There is no concept of joint infringement or indirect infringement in the Patent Law.
What defences can an alleged infringer raise?
Articles 14 and 15 of the Patent Law provide for a prior user defense. However, after the patent is granted, the prior user must apply to the Directorate General of Intellectual Property (DGIP) (and pay the required fees) for a prior user certificate (which expires at the same time as the patent) to prove that he is the prior inventor. However, the application procedure has not yet been formally established. In practice, if the defendant can prove that the relevant use is already known to the public, the prior user defense can be used to support the defense of lack of novelty.
On what grounds can a patent be invalidated?
The burden of proof to prove the invalidity of a patent shall be borne by the party requesting the invalidation of the patent.
If the invention lacks novelty, inventive step or industrial applicability, the patent may be declared invalid.
A patent may also be declared invalid if it involves the following situations which are not considered inventions:
- Aesthetic creation.
- plan.
- Enforce the rules and methods of any intellectual activity, game, or business endeavor.
- Computer programs (other than computer-implemented inventions).
- Information display.
- Theory and methods in science and mathematics
(Article 4 of the Patent Law).
- Certain exclusion categories, including:
- Use or implement methods or products that violate laws, regulations, religious ethics, public order or public morals;
- Any method of examination, treatment, medication and/or surgery on humans and/or animals;
- any organism (other than a micro-organism); or
- Any biological process (other than abiotic or microbiological processes) necessary for plant or animal production.
(Article 9 of the Patent Law).
Other grounds for invalidity include the following:
- Where the invention is derived from genetic resources and/or traditional knowledge but the source is not stated.
- The patent is identical to a patent already granted to another party for the same invention.
- Failure to fulfill the obligation to implement the patent in Indonesia, including manufacturing, importing, or granting a license for the patented product or product obtained by the patented process.
The court may revoke the patent if, within two years from the date of grant of the relevant compulsory license or from the date of the first grant of a compulsory license, the grant of a compulsory license does not prevent the patent from being exploited in a manner prejudicial to the public interest.
According to Article 20 of the Patent Law, the person who requests the invalidation of a patent due to failure to fulfill the obligation to manufacture the patented product or use the patented process in Indonesia must “represent the national interest”, but it is not clear who this person is. In practice, the risk of invalidation based on Article 20 may not be significant because there have been no cases challenging violations of this provision.
According to Article 20 of the Patent Law, the person who requests the invalidation of a patent due to failure to fulfill the obligation to manufacture the patented product or use the patented process in Indonesia must “represent the national interest”, but it is not clear who this person is. In practice, the risk of invalidation based on Article 20 may not be significant because there have been no cases challenging violations of this provision.
Can the court invalidate only part of a patent or convert it into a utility model?
Pursuant to Section 138 of the Patent Law, a commercial court may partially invalidate a patent (ie one or more claims of a patent may be declared invalid).
The court may not convert a patent into a utility model.
Can patent claims be amended during enforcement proceedings?
The scope of amending patent claims is limited. Amendments to patent claims after grant can only be made by filing a request with the Patent Appeal Board within three months after grant, and are limited to the following circumstances:
- Limiting the scope of the claims.
- Corrected errors in the translation of the instructions.
- Clarify unclear or ambiguous descriptions.
(Article 69, Paragraph 4, Patent Law)
Are there any grounds for an otherwise valid patent to be held unenforceable?
There are no grounds, including misconduct, for rendering an otherwise valid patent unenforceable.
Who can sue for patent infringement?
- Patentee
Patent owners can file lawsuits for infringement.
- Co-owner
Co-owners may bring an action for infringement.
- Exclusive Licensee
An exclusive licensee may sue for infringement if he has registered the licence with the Directorate General of Intellectual Property (DGIP).
- Non-exclusive licensee
A non-exclusive licensee may sue for infringement if he has registered the licence with the Directorate General of Intellectual Property (DGIP).
- Distributor
Distributors cannot sue for infringement.
Under what circumstances, if any, can an alleged infringer sue to obtain a declaratory judgment of non-infringement or invalidity/unenforceability?
An alleged infringer cannot initiate proceedings for a declaratory judgment of non-infringement. If the patent has been granted for more than nine months, an invalidation action may be filed with the Commercial Court (see Question 3).
Who can be sued for patent infringement?
In a patent civil infringement case, only the person who committed the patent infringement can be sued, and its directors cannot be defendants. However, if the patent owner files a criminal charge for patent infringement, the company directors may be held criminally liable, as patent infringement may also face criminal penalties of up to four years in prison and/or a fine of up to IDR 1 billion (Articles 161 and 162 of the Patent Law).
Jurisdiction in infringement cases is based on the defendant’s place of residence. When any party’s place of residence is outside Indonesia, the lawsuit must be filed in the Central Commercial Court of Jakarta (Article 144, Paragraph 2 of the Patent Law).
Can parties be added or changed during litigation?
During litigation, parties (such as plaintiffs or defendants) cannot be added. If the litigation is defective due to insufficient parties, the court is likely to dismiss the lawsuit rather than allow the addition or change of parties to correct the litigation.
Execution Options
What avenues are available to patent owners seeking to enforce their rights in your jurisdiction?
- Civil Litigation
Civil lawsuits for patent infringement are filed in the Commercial Court. Remedies include an injunction and, if the infringement was committed intentionally, damages.
Patent litigation is relatively rare in Indonesia, with only one known case in which the court awarded significant damages. In the few other infringement cases, the courts refused to award damages and only granted injunctions to stop the infringement. This suggests that it is difficult to prove damages in Indonesian courts. Currently, there are more patent invalidation lawsuits than infringement lawsuits, and some of these invalidation lawsuits are filed in response to criminal charges filed by local patent owners.
- Criminal Prosecution
Willful patent infringement may result in criminal penalties, including:
- Willful infringement of invention patents may result in a maximum penalty of four years in prison and/or a fine (currently up to IDR 1 billion).
- Willful infringement of a simple patent may result in a prison sentence of up to two years and/or a fine (currently up to IDR 500 million).
If patent infringement is found in criminal proceedings, an order may be made to confiscate and destroy items resulting from the infringement. These items are usually seized during police raids during the criminal investigation stage.
According to the Supreme Court Circular No. 1 of 1956 (PERMA No. 1/1956), the police must suspend criminal investigation when revocation proceedings against a patent have been filed in court.
- Border measures
No border measures are currently available.
Is it necessary to provide notice to the alleged infringer before filing a patent lawsuit?
There is no obligation to issue a warning letter before filing a lawsuit. However, it is recommended to issue a warning letter because if it can be proved that the infringement was committed intentionally, the infringing party will be liable for damages. The Patent Law does not make specific provisions for improper warnings.
To what extent do courts have jurisdiction or power to grant cross-border or extraterritorial injunctions (temporary or permanent)?
Indonesian courts will not exercise jurisdiction to grant cross-border or extraterritorial injunctions (whether temporary or permanent).
To what extent do courts recognize the barring effect of foreign “ torpedo” litigation (litigation between the same parties regarding the same subject matter pending in another jurisdiction)?
Indonesian courts are unlikely to consider pending foreign litigation.
To what extent are arbitration and alternative dispute resolution (ADR) methods such as mediation applicable in resolving patent disputes?
- arbitration
Article 153 of the Patent Law recognizes the resolution of disputes through alternative dispute resolution (ADR) methods, including arbitration. However, since the power to invalidate patents is exclusively vested in the courts, the Indonesian Intellectual Property Office (DGIP) will not enforce any arbitration award to revoke patents. Article 154 of the Patent Law requires parties to attempt to resolve disputes through mediation before filing criminal charges for patent infringement.
An arbitration body has been set up to deal specifically with intellectual property disputes, but I am not aware of any cases being referred to it.
- Alternative Dispute Resolution (ADR)
Alternative dispute resolution is rarely used in patent disputes.
Competition and Antitrust
Can a patent owner file a lawsuit for both patent infringement and unfair competition based on the same facts?
Unfair competition is regulated by Law No. 5 of 1999 on Prohibition of Monopolistic Practices and Unfair Commercial Competition. Patent owners cannot rely on this law to protect their patent rights.
To what extent may enforcement of patents expose patent owners to liability for antitrust violations?
If the patent owner’s behavior in exercising its rights violates competition/antitrust laws, the patent may be subject to compulsory licensing.
Question Set:
What are the main stages of patent infringement litigation?
Patent infringement lawsuits are heard by a panel of judges (usually three judges). The litigation process is the same as other lawsuits and includes the following stages:
- Initiate a lawsuit and file a complaint and power of attorney.
- Bailiffs attempt to serve legal documents.
- The court sets a first hearing date.
- The defendant filed a statement of defence.
- The plaintiff filed a reply statement of defence.
- The defendant filed a rejoinder.
- The plaintiff presents evidence.
- The defendant presents evidence.
- Appearance of plaintiff’s witnesses/experts (if any).
- Appearance of defence witnesses/experts (if any).
- The court debate ends (closing statement).
What are the rules and practices regarding evidence in patent infringement litigation?
- document
All written evidence must be original. Copies will not be accepted unless notarized and authenticated. However, website printouts may be considered.
Affidavits are generally inadmissible, which means that witnesses must testify in court without relying on their affidavits.
- Witness Testimony
Witnesses must testify orally in court. Written witness statements filed may be less probative.
- Expert evidence
Expert evidence is often used in patent infringement litigation, and parties may cross-examine court-appointed experts.
It is common practice to hire legal experts (e.g. from developed jurisdictions) to explain infringement-related practices to judges, as infringement litigation is relatively rare in Indonesia.
Foreign litigants usually prefer to appoint experts from outside Indonesia. Although foreign litigants may prefer to use their own experts, it is best to hire a suitable local expert as well. The reason is that local experts do not require translation and can communicate with the judge more effectively.
Is evidence obtained in a criminal proceeding admissible in a civil proceeding, and vice versa?
Evidence presented in both criminal and civil proceedings is usually limited to the purposes of the respective proceedings. It is unlikely that a judge would allow such evidence to be used in a separate civil proceeding.
However, the court may refer to decisions rendered in other proceedings.
Can evidence obtained in a civil lawsuit be admissible in other civil lawsuits?
See above.
To what extent is pre-trial disclosure permitted, and what other mechanisms are available to obtain evidence from the opposing party or third parties?
- Pre-litigation evidence collection
The Civil Procedure Rules do not support litigants in obtaining evidence. The concept of “discovery” does not exist in Indonesian civil proceedings. Each party can decide for itself whether to disclose the documents it wishes to rely on in the litigation.
Furthermore, there is no procedure for subpoenaing documents from opposing parties or third parties. Therefore, plaintiffs must rely on their own efforts to obtain admissible evidence.
- Other mechanisms
not applicable.
What is the standard of proof required to establish infringement or invalidity/ unenforceability?
The Civil Procedure Rules do not clearly define the standard of proof applicable in civil cases.
The following types of evidence may be used:
- Letters/Documents
- witness
- Estimation
- Self-recognition
- Oath
(Civil Procedure Rules, Article 164)
In practice, original documentary evidence is given the greatest probative weight. Since patent infringement cases are relatively rare in Indonesia, there is little case law from which to infer any model for the required standard of proof. Foreign court decisions are of reference value to Indonesian judges.
How long do patent infringement proceedings typically last?
According to Article 146, paragraph 1, of the Patent Law, a first-instance judgment must be rendered within 180 days of the commencement of litigation. If the judge fails to conclude the case within the prescribed time limit (90 days for trademark cases and 180 days for patent cases), he or she is liable to the Supreme Court. Patent litigation is relatively rare in Indonesia, with the Commercial Court accepting an average of only about one infringement case per year. Due to the tight 180-day deadline and the judges’ active management of each case, almost all proceedings will proceed to the trial stage.
- Fast track procedure
There is currently no standalone fast-track procedure.
- schedule
At each stage of the litigation process, the judge will hold hearings to monitor procedural compliance and determine the next steps. This is part of case management and is designed to ensure that the case is concluded within 180 days.
- postpone
The judge must decide the case within the statutory deadline (see above). Therefore, the judge is usually reluctant to grant an extension, and any extension may be limited to two or three weeks.
If a defendant attempts to use delaying tactics (for example, requesting more time to take certain steps, such as filing a defense or discovery), the court may give it one final chance before moving forward and denying the defaulting party an opportunity to complete that step. There is currently no procedure for granting a default judgment or summary judgment for a defendant’s failure to comply with a step. The plaintiff must still prove the facts of the case as alleged.
A default judgment is entered only when the defendant fails to appear in court to participate in the proceedings.
Preliminary relief
Is preliminary relief available? If so, what are the measures available and under what conditions?
- Search and Preservation/Search and Seizure Warrants
The plaintiff may request the court to issue a preliminary injunction ordering the defendant to cease infringing acts and deliver up the infringing goods (Article 155 of the Patent Law).
To obtain such an injunction, the plaintiff must show “strong prima facie evidence.” But what this requirement means is unclear, as only one known decision has granted relief under this procedure, in a copyright case (No. 93/Pdt.Sus-Hak Cipta/2013/PN.Jak.Pst).
An interim injunction is different from an interlocutory injunction under common law. The interim injunction proceeding is independent and separate from the claim for damages. After hearing arguments from both parties, the court may dismiss or uphold the interim injunction. If the injunction is upheld, it becomes a final injunction and no further hearing on the issue of damages is conducted in the proceeding. The patent holder may then choose to file a separate civil action for damages or to file criminal charges (Section 158, paragraph 4, Patent Law).
- ban
See “Search and Preservation/Search and Seizure Warrants” above.
The threshold for a preliminary injunction is not urgency, but “strong prima facie evidence”. All preliminary injunction applications begin with an ex parte hearing. The Court will not grant a preliminary injunction in support of proceedings in another jurisdiction.
Can a defendant apply for a protective writ?
There is no procedure for applying for a protective writ.
What is the format/process of preliminary injunction proceedings?
- General Provisions
see below.
- Standard of Proof
The plaintiff must prove his or her claim with a “strong prima facie case” (see Question 31).
- evidence
Since only one decided case is known to have involved this topic, and that case concerned copyright rather than patent infringement, there is very little guidance regarding the evidence.
- Patent validity
The relevant rules do not make clear provisions on this, but in principle, the defendant should be entitled to raise the validity of the patent as an issue when defending against an application for an injunction/interim ruling.
- Duration of the program
There is no expedited procedure. An application for an interlocutory injunction/temporary injunction must be decided at the ex parte stage within five working days from the date of filing. The court must decide whether to uphold the interlocutory injunction within 30 days of the injunction being granted. The defendant has the right to submit information and evidence before the court makes a decision to uphold or revoke the injunction.
If the court grants a preliminary injunction but the plaintiff ultimately loses the main infringement action, can the defendant recover damages for the improperly issued preliminary injunction?
When applying for an interim injunction, the applicant must provide a cash security and/or a bank guarantee in an amount equal to the value of the goods that are the subject of the interim injunction. If the interim injunction is not upheld, the court will order compensation to be paid to the defendant from the security.
Final Relief
What remedies are available against patent infringers?
- Permanent ban
When infringement is proven, the court will usually grant an injunction to cease the infringement. Even if an award of damages is dismissed for failure to prove loss suffered, the court may still grant a permanent injunction if infringement is established.
- Monetary relief
In civil proceedings, the plaintiff may claim damages for both material and immaterial damages (often referred to as “intangible damages” according to the translation of “ganti kerugian Immateril”). Material damages are based on actual losses incurred, such as losses due to lost sales or lost royalties. Immaterial damages claims include compensation for concerns caused by the infringement (such as mental anguish). To date, attempts to claim immaterial damages in IP cases have not been successful. Part of the losses may be subject to interest under the Civil Code (although the relevant provisions apply to actions for breach of contract).
Damages are compensatory in nature and punitive damages are not applicable.
- Delivery or destruction of infringing items
The courts may order the seizure of infringing goods.
- Judgment Announced
Appeal judgments are published (https://kepaniteraan.mahkamahagung.go.id/perkara). However, not all first instance judgments are published.
- Recall Order
There is no remedy of a recall order.
- Infringement and Validity Statement
In infringement proceedings, both infringement and validity declarations may be made.
Appeals Process
What are the appeal avenues for the losing party and on what grounds?
The Supreme Court hears appeals from first-instance judgments in patent cases.
The grounds of appeal are set out in section 30 of the Supreme Court Act and include:
- Lack of jurisdiction or exceeding the scope of jurisdiction.
- Misapplication or violation of applicable law.
- Failure to comply with certain procedural requirements.
The appellant must prove one of the above grounds in order to successfully appeal.
The Supreme Court shall make a decision on the appeal within 180 days from the date of receipt of the case file transferred by the first instance court against which the appeal is directed.
An appeal can be initiated by filing a notice of appeal with the Commercial Court within 14 days of the first instance judgment. The petition of appeal must be filed within 14 days of filing the notice of appeal. The respondent must file a reply within 14 days of receiving the petition of appeal. The Commercial Court then transfers the case file to the Supreme Court.
An appeal is decided on the basis of arguments in the complaint without an oral hearing.
The losing party may request judicial review of the appeal decision by the Supreme Court. Possible grounds for judicial review include the following:
- The award was based on the other party’s misrepresentation or deceptive conduct.
- Discover critical evidence that was previously inaccessible.
- The ruling went beyond the scope of the claim.
- The court omitted to rule on any of the claims or issues raised.
- There are conflicting rulings between the same parties on the same matter.
- The decision was due to negligence or obvious error on the part of the judge.
(Article 67 of the Supreme Court Act)
Litigation costs
What level of litigation costs can a party expect to incur if it wants to take the case through first instance, preliminary injunction proceedings, and appeal proceedings?
Indonesian lawyers charge between $200 and $600 per hour. Patent infringement lawsuits cost between $80,000 and $150,000, depending on the technology area and the complexity of the case.
The court will not order the losing party to pay the winning party’s legal costs.
Standard Essential Patents (SEPs ), FRAND Licensing and Anti-Suit Injunctions
In addition to the answers to Questions 8 and 23 , are there any features of your jurisdiction’s patent law or litigation procedures that make it attractive or unattractive for SEP holders or implementers/ intended licensees to resolve FRAND licensing and SEP disputes ?
The courts have yet to hear issues related to fair, reasonable and non-discriminatory (FRAND) licensing or standard essential patents (SEPs), but a SEP holder has filed multiple lawsuits against a local Indonesian mobile phone manufacturer.
The authors anticipate that Indonesian courts will approach SEP infringement cases similarly to foreign courts that have heard related cases.
The Patent Law does not require the holder of a standard essential patent (SEP) to prove that it complies with fair, reasonable and non-discriminatory (FRAND) obligations before applying for an injunction. Therefore, if the defendant wants to oppose the injunction, it needs to prove that the holder of the standard essential patent has not made a licensing offer that complies with the FRAND principle.
In your jurisdiction, how should a standard essential patent (SEP) holder negotiate to comply with any fair, reasonable and non-discriminatory (FRAND ) commitments it has made in relation to its SEPs?
There is currently no case law on how parties should comply with FRAND commitments through negotiations. If a relevant 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 (Case C-170/13), ECLI:EU:C:2015:477) when deciding whether to grant an injunction for infringement.
How do courts calculate FRAND royalties in your jurisdiction ?
There is currently no case law on standard essential patents (SEPs) or fair, reasonable and non-discriminatory (FRAND) licensing. Commercial courts are unlikely to calculate FRAND licensing rates, either based on a top-down approach or an approach based on comparable licenses.
In your jurisdiction, to what extent are courts willing to grant anti-suit injunctions in disputes involving FRAND licensing and standard essential patents (SEPs )?
There is currently no case law on standard essential patents (SEPs) or fair, reasonable and non-discriminatory (FRAND) licensing. The Commercial Court is unlikely to grant an anti-suit injunction as this is beyond its jurisdiction. Under the Patents Act, the Commercial Court has the power to hear patent infringement cases to award damages and order the cessation of infringement.
