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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
District court judges that handle criminal proceedings are not experts in intellectual property. Further, few criminal patent infringement cases come before the district courts. Therefore, the district courts will likely rely heavily on the legal department of the Patent Office to instruct them on technical matters.
Although the commercial courts are semi-specialised courts (hearing only IP and bankruptcy cases), judges are on a rotation programme (in and out of the commercial courts) and do not spend extended periods on commercial court benches. Further, commercial court judges receive no in-depth training on intellectual property. Judges rely heavily on the legal department of the Patent Office to instruct them on technical matters.
Are cases decided by one judge, a panel of judges or a jury?
A panel of three judges hears criminal proceedings in the district courts. There are no jury trials.
A panel of three judges hears civil proceedings in the commercial courts, with one judge acting as head judge. There are no jury trials.
What role can and do expert witnesses play in proceedings?
It is common for representatives of the legal department of the Patent Office to be called as expert witnesses in district court proceedings. It is also common for the police to take statements from the legal department of the Patent Office before proceeding with a raid.
It is common for representatives of the legal department of the Patent Office to be called as expert witnesses in commercial court proceedings. Additional expert witnesses – usually academics or senior members of the legal profession – can also be presented to the courts in order to support submissions. The courts will determine how much weight to attribute to expert testimony.
Technically qualified expert witnesses are useful in helping the courts to decide on infringement allegations.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
The Patent Law does not specifically mention a doctrine of equivalents. However, Indonesia is a member of the Paris Convention and the doctrine of equivalents regulated in the Basic Proposal for a Treaty Supplementing the Paris Convention – particularly Article 21, which relates to the extent of protection and interpretation of claims – can be used in court. The doctrine of equivalents can be applied if the court considers this necessary pursuant to Indonesia’s obligations under the treaty.
Article 21(2) states that:
“2. (a) a claim shall be considered to cover not only all the elements as expressed in the claim but also equivalents.
(b) An element (‘the equivalent element’) shall generally be considered as being equivalent to an element as expressed in a claim if, at the time of any alleged infringement, either of the following conditions is fulfilled in regard to the invention as claimed:
(i) the equivalent element performs substantially the same function in substantially the same way and produces substantially the same result as the element as expressed in the claim, or
(ii) it is obvious to a person skilled in the art that the same result as that achieved by means of the element as expressed in the claim can be achieved by means of the equivalent element.”
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
It is possible to obtain preliminary injunctions in civil proceedings in order to prevent the continuation of infringement or preserve evidence relating to infringement.
The requirements for filing an application to obtain a preliminary injunction are set out in Article 2 of the Supreme Court Regulation on Preliminary Injunctions (5/2012) and include:
- evidence of ownership of the IP rights (certificate of registration);
- evidence of infringement;
- a clear description of the goods or documents which will be requested, sought, collected and protected under the preliminary injunction; and
- a cash or bank guarantee equivalent to the value of the goods that will be subject to the preliminary injunction (the amount of which will be determined by the court).
If a preliminary injunction is granted, all concerned parties must be informed of the implementation of the preliminary injunction within 24 hours. The injunction can be executed directly.
The defendant will be granted a right to be heard and, after hearing defences and considering the evidence, the same judges that issued the preliminary injunction will decide whether to change, revoke or uphold the preliminary injunction within 30 days.
Preliminary injunctions are final and binding and cannot be appealed.
To date, no known preliminary injunctions relating to patent rights have been issued. There was one successful application for a preliminary injunction (Hj Rachmawati Soekarnoputri v PT Tripar Multivision Plus (93/Pdt.Sus-Hak Cipta/2013/PN.Niaga.Jkt.Pst)), which related to the copyright of a popular film, Soekarno.
How are issues around infringement and validity treated in your jurisdiction?
Infringement and validity issues concerning a registered patent right are dealt with by the commercial courts. Indonesia has no post-grant opposition procedure.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Decisions of foreign authorities may be considered by the Indonesian courts; however, foreign decisions are not binding.
Damages and remedies
Can the successful party obtain costs from the losing party?
Legal costs are not recoverable.
It is common for the courts to order the losing party to pay administrative costs – usually around $500. However, in practice, these orders are rarely enforced.
What are the typical remedies granted to a successful plaintiff?
Plaintiffs can claim material damages, immaterial damages, interim injunctions and permanent injunctions. Where there is a finding of infringement, the courts will usually grant permanent injunctions. Damages are granted only where a clear basis for calculating the damages has been pleaded and substantiated with evidence in an appropriate form.
How are damages awards calculated? Are punitive damages available?
No legislation or regulations deal with the calculation of damages. Indonesia does not apply a doctrine of precedent. No clear method is applied by the courts.
Damages are usually calculated on an undue profits basis (ie, the total profits received from the sale of the infringing goods). This is pleaded in a material damages claim.
In PT Tata Logam Lestari v PT Sugi Langgeng Gentalindo (Case 37/Paten/2003/PN. JKT. PST), the commercial court awarded damages on an undue profits basis as follows: the total production of the infringing products (from the first product until the claim was filed (ie, 50,000 sheets of steel roof multiplied by four months, which equalled 200,000)), multiplied by the total profits received by the defendant for each product (Rp5,000). This amounted to Rp1 billion.
The court rejected a claim for damages after the claim was filed.
Indonesia awards punitive damages in patent infringement proceedings.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
Very few patent infringement cases have been heard by the courts. However, if infringement is established, the courts will likely award a permanent injunction (eg, PT Tata Logam Lestari v PT Sugi Langgeng Gentalindo (Case 384/Pdt.G/2000/PN. JKT. PST)).
In infringement proceedings concerning other IP rights, permanent injunctions are commonly awarded.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
By law, claims filed with the commercial courts must be decided within 180 working days (although this timeframe can be extended with the Supreme Court’s approval). In practice, a decision can be expected in nine to 12 months.
It is not possible to expedite proceedings. Delays may occur where parties fail to attend the proceedings or where there are administrative issues with regard to serving the defendant. Judges will usually summon a defendant three times. For foreign defendants, this involves using diplomatic channels.
The stages of commercial court proceedings are as follows:
- hearing the claim and reviewing powers of attorney;
- receiving defences and counterclaims;
- receiving replies from the plaintiff and defendant;
- receiving and reviewing evidence;
- receiving the plaintiff’s and defendant’s conclusion briefs; and
- reading out the court’s decision.
There is no definitive time limit for each stage.
There are two subsequent levels of appeal after first-instance proceedings. Cassation appeals before the Supreme Court take approximately 12 to 18 months. Reconsideration appeals (of a cassation decision) take approximately 24 to 36 months.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Official fees will be up to $500.
Legal fees – including strategic advice, preparation of pleas, attendance at hearings and preparation of evidence – all evidence must be translated into Indonesian by a sworn translator)) are likely to be around $40,000.
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