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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

An invention is patentable if it:

  • is novel;
  • involves an inventive step; and
  • is industrially applicable.

What are the limits on patentability?
 

The following subject matter is not patentable in Indonesia (Article 7 of the Patent Law):

  • any process or product whose announcement or use would contravene prevailing laws, religious morality, public order or ethics;
  • any method of examination, treatment, medication or surgery applied to humans or animals;
  • any mathematic or scientific theory or method;
  • all living creatures, except microorganisms; and
  • any biological process which is essential in producing plants or animals (except non-biological processes or microbiological processes).

The elucidation to the Patent Law explains that, within the meaning of the law, the definition of ‘invention’ excludes:

  1. Aesthetic creations;
  2. Schemes;
  3. Rules and methods for:
    1. mental processes;
    2. games
    3. business
  4. Rules and methods concerning computer programs;
  5. Presentation of information.

To what extent can inventions covering software be patented?

Software cannot be patented in Indonesia. The Patent Law specifically excludes rules and methods of doing business, as well as rules and methods concerning computer programs, from the definition of ‘invention’.

In practice, inventions consisting of computer software that are combined with hardware and result in a technical contribution outside the prior art can be patented. 

To what extent can inventions covering business methods be patented?

Business methods cannot be patented in Indonesia – they are specifically excluded from the definition of ‘invention’ in the elucidation of the Patent Law.

In 2007 the Supreme Court revoked a patent for an online ticketing and payment system, holding that the invention was a business method (and that it lacked of novelty and inventive step). There was no discussion about the exclusion of software from patentability.

To what extent can inventions relating to stem cells be patented?

Inventions relating to stem cells are not patentable in Indonesia. The Patent Law specifically excludes inventions relating to living creatures, except microorganisms. 

Are there restrictions on any other kinds of invention?

The elucidation to the Patent Law explains that, within the meaning of the law, the definition of ‘invention’ excludes:

  1. Aesthetic creations;
  2. Schemes;
  3. Rules and methods for:
    1. mental processes;
    2. games;
    3. business;
  4. Rules and methods concerning computer programs;
  5. Presentation of information.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A six-month grace period applies for inventions that have been:

  • exhibited in an exhibition, either in Indonesia or overseas; or
  • exploited in Indonesia by the inventor for research and development purposes.

A one-year grace period applies if the invention was published in breach of confidentiality obligations.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Indonesia has a pre-grant opposition procedure. Applied patents that have passed formal examination are published for opposition purposes. Standard patents will be published within six months. Simple patents will be published within three months. Substantive examination is performed after the publication period has expired.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Post-grant, a patent can be challenged only by filing proceedings with the commercial courts.

How can patent office decisions be appealed in your jurisdiction?

In response to a Patent Office decision, the applicant can appeal to the Patent Appeals Commission. An appeal must be filed within three months of the Patent Office’s decision; if an appeal is not filed, the application will be considered to have been withdrawn. If an appeal to the Patent Appeals Commission is unsuccessful, the applicant can appeal to the commercial courts.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The Patent Law requires that standard patents be granted within 36 months of application for substantive examination, and that simple patents be granted within 24 months of the filing date. However, in practice, prosecution of standard patent applications usually takes around five years from the filing date, and prosecution of a simple patent application usually takes around three years from the filing date.

Costs depend on the complexity of the patent specification. Applicants should generally budget for between $2,500 and $3,500 to be granted a patent, including official fees, agent fees and translation expenses.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Registered patents can be enforced through civil and criminal infringement proceedings. In civil infringement proceedings, a court may award damages and/or issue injunctions. In criminal proceedings, court-awarded penalties may be applied, but cases are usually settled before they reach the courts. A typical settlement in criminal proceedings would consist of signed undertakings, a public apology and destruction of seized goods.

A combination of criminal infringement proceedings and negotiations is considered the most effective way to enforce a registered patent. A police raid can be carried out within one month (assuming that all supporting evidence is at hand), and is relatively inexpensive compared to civil infringement proceedings.

When enforcing patent rights in Indonesia in the criminal context, the patent claims must read onto an article that can be seized during a raid. Otherwise, in practice, raids are unlikely to succeed.

Warning letters and other public relations measures can amplify the deterrent effect of enforcement measures.

The courts rarely hear civil infringement proceedings. A study of commercial court cases between 2009 and 2013 found that only two patent infringements cases – one filed by a foreign plaintiff and the other by a local plaintiff – had been heard. The following factors must be considered before filing proceedings:

  • a lack of experience on the bench;
  • the absence of a doctrine of precedent;
  • the absence of a costs regime; and
  • concerns about corruption in the courts.

What scope is there for forum selection?

Criminal proceedings

Complaints must be filed with police office with jurisdiction over at least one of the target’s premises. Four levels of the police can be used:

  • MABES (national police);
  • POLDA (regional police);
  • POLSEK (sector police); and
  • POLRES (resort police).

Civil proceedings
Claims must be filed with the commercial court with jurisdiction over the defendant’s domicile. There are five commercial courts in Indonesia:

  • the Jakarta Commercial Court;
  • the Surabaya Commercial Court;
  • the Semarang Commercial Court;
  • the Medan Commercial Court; and
  • the Makassar Commercial Court.

The commercial courts hear IP and bankruptcy cases.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Criminal proceedings

Before filing a complaint with the police, it is necessary to prepare:

  • evidence of registration of the patent right (ie, certificate of registration);
  • a sample of the infringing goods (usually together with a purchase receipt);
  • materials that establish infringement of the patent (eg, a video recording to show a patented process being infringed);
  • a sample of the genuine product.

The police will also usually require an expert opinion from the Patent Office and/or a court order.

Civil proceedings
To commence a civil suit, a plaintiff must prepare a notarised and legalised power of attorney and file this with the court together with official fees.

Indonesia has no discovery procedures.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Criminal proceedings

In practice, a raid will usually be the first thing that an alleged infringer knows about the criminal proceedings. Post-raid, proceedings can be stalled by, for example, filing civil proceedings challenging the registered IP rights on which the complaint is based. Little can be done in response until the civil proceedings have been resolved.

Civil proceedings
Delays often occur due failure to attend the proceedings or administrative issues with regard to serving the defendant. Effecting a summons on foreign defendants can be particularly cumbersome, as no clear regulations exist regarding how a foreign party should be summoned. Plaintiffs can avoid excessive delays by assisting the court in preparing documents (eg, by providing sworn translations).

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

The validity of a granted patent can be formally challenged only by filing invalidation proceedings with the commercial courts. This can be done before an anticipated civil or criminal infringement suit is initiated or in response to a civil or criminal infringement suit.

A patent can be invalidated on a number of grounds, including failure to meet patentability criteria. Translation issues often emerge when patent claims are carefully examined and this can sometimes result in invalidation. Accurately describing technical features of an invention in Bahasa Indonesia can be difficult, as it is a relatively simple language.

Where a challenge to the validity of a patent is filed in response to criminal infringement proceedings, a civil invalidation claim can be filed after receiving notice of a criminal complaint; criminal proceedings will be stayed pending the outcome of civil proceedings. 

Where a challenge to the validity of a patent is filed in response to civil infringement proceedings, an invalidation claim can be filed as a counterclaim.

At trial
What level of expertise can a patent owner expect from the courts?

Criminal proceedings

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.

Civil proceedings
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?

Criminal proceedings
A panel of three judges hears criminal proceedings in the district courts. There are no jury trials.

Civil proceedings
A panel of three judges hears civil proceedings in the commercial courts, with one judge acting as head judge. There are no jury trials.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

N/A.

What role can and do expert witnesses play in proceedings?

Criminal 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.

Civil proceedings
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. 

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

A cassation appeal (from a first-instance decision) can be filed on the grounds that there was an error in law or negligence.

A reconsideration appeal (from a cassation decision) can be filed on the grounds that there was an error in law, negligence or the discovery of new evidence.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Parties are free to engage in alternative dispute resolution processes, including mediation, arbitration and negotiations.

The IP Arbitration and Mediation Body (BAM HKI) was set up in 2012; thus far, BAM HKI has received no cases.