1 Legal framework
1.1 What are the sources of patent law in your jurisdiction?
Patents in Indonesia are governed by the Patent Law (Law No. 13 of 2016). In addition, there are several implementing regulations to the Patent Law:
- Government Regulation No. 27 of 2004 on the Procedure for Patent Implementation by the Government;
- Government Regulation No. 36 of 2018 on the Recordation of Intellectual Property Licence Agreements;
- Presidential Regulation No. 37 of 2010 on the Procedure for Recordation of Patent Assignments;
- Regulation of the Minister of Law and Human Rights No. 15 of 2018 on Patent Implementation by the Patent Holder;
- Regulation of the Minister of Law and Human Rights No. 38 of 2018 on Patent Applications;
- Regulation of the Minister of Law and Human Rights No. 39 of 2018 on the Procedure for Grant of Mandatory Patent Licences; and
- Regulation of the Minister of Law and Human Rights No. 3 of 2019 on the Patent Appeal Commission.
1.2 Who can register a patent?
The inventor or any party that receives the rights to a patent from the inventor. The inventor is the party whose name is stated as such in the relevant patent application, unless proven otherwise.
2.1 What rights are obtained when a patent is registered?
A registered patent gives the patent holder the exclusive rights to implement its patented invention and prohibit unauthorised parties within the territory of Indonesia from:
- in relation to a patent on a product, creating, using, selling, importing, leasing or delivering, or supplying for the purpose of selling, leasing or delivering, the patented product; and
- in relation to a patent on a process, using the patented production process to create a product or conduct any other actions as mentioned in the first bullet above.
The prohibition on using a patented production process is applicable only to the import of products that result solely from the use of such patented process.
The patent holder's rights shall not apply to any parties that use the relevant patent for the purpose of education, research, experiment or analysis, to the extent that this does not harm the reasonable interests of the patent holder.
2.2 How can a patent owner enforce its rights?
A patent holder can enforce its rights by filing a compensation claim with the commercial court against any party that exploits the patent holder's rights without authorisation, as mentioned in question 2.1. The patent holder may also seek a temporary injunction from the commercial court in order to:
- prevent the entry of goods that are suspected of infringing the patent holder's patent and/or rights related to its patent;
- prevent the removal of evidence by the infringer; or
- cease the infringement in order to avoid irreparable harm.
In addition, the holder of a registered patent may file a police report in relation to any infringement of its rights. If the police investigation reveals an infringement, it will be followed by a criminal claim to the district court.
2.3 For how long are patents enforceable?
Once registered, a patent is valid and enforceable for 20 years as of the filing date. A utility patent is valid and enforceable for 10 years as of the filing date.
3 Obtaining a patent
3.1 Which governing body controls the registration procedure?
The Directorate General of Intellectual Property (DGIP) is the governing body that deals with all administrative matters with respect to the registration, assignment and licensing of a patent. Within the DGIP, the Directorate of Patent, Integrated Circuit Layout Design and Trade Secret deals specifically with patent registration. Its duties are as follows:
- preparing, drafting and implementing policies in relation to the application, publication, classification, search, examination, certification, maintenance, transfer, license and provision of customer services for patents, integrated circuit layout designs and trade secrets;
- constituting the Patent Appeal Commission with prior approval from the Minister of Law and Human Rights;
- providing technical assistance and supervision; and
- evaluating and making reports with respect to patents, integrated circuit layout designs and trade secrets.
3.2 What is the cost of registration?
The cost of registering a patent or utility patent will depend on whether the application is submitted manually or electronically. For patents, an electronic application costs IDR 1.25 million, while a manual application costs IDR 1.5 million. For utility patents, an electronic application costs IDR 800,000, while a manual application costs IDR 1.25 million.
Additional fees will apply as follows:
- IDR 15,000 per additional page where the description of the patent application exceeds 30 pages;
- IDR 75,000 per additional claim where there are more than 10 claims in the patent application;
- IDR 400,000 per application where the applicant requests an extension of time to complete the patent application;
- IDR 400,000 per application where the applicant requests an expedited publication period;
- IDR 200,000 per application where the applicant revises the patent application due to its mistake;
- IDR 3 million per application where the applicant requests a first use declaration;
- IDR 300,000 per application where the applicant requests a certificate of priority;
- IDR 3 million per patent application or IDR 500,000 per utility patent application where the applicant requests a substantive examination;
- IDR 5 million per application where the applicant requests an expedited substantive examination;
- IDR 400,000 per application where the applicant requests an extension of time to respond to the substantive examination result; and
- IDR 450,000 per application to convert a patent application into a utility patent and vice versa.
3.3 What are the grounds to reject a patent application?
A patent application can be rejected based on the following grounds:
- The relevant invention does not meet the following criteria of a patent:
- The invention has an element of novelty, which means that it is not the same as any other technology that has been disclosed previously;
- The invention involves an inventive step, which means that it is not obvious to a person with technical skills in the relevant field; and
- The invention is applicable in the industry, which means that it can be mass produced (for patent products) or is practically applicable (for process patent).
- The relevant patent application qualifies as a non-invention - that is, it is an aesthetic creation; a scheme; a rule or method for carrying out a mental process; a game; a business activity; a rule or method that consists only of software; the presentation of information; or a discovery regarding an existing product.
- The invention meets the criteria of a non-patentable invention - that is, it is:
- a process or product whose publication, use or implementation would be contrary to the prevailing laws and regulations, religion, public order or morality;
- an examination, treatment, medication or surgical method for humans or animals;
- a theory or method in the field of science or maths;
- a living organism, except microorganisms; or
- an essential biological process for producing plants or animals, except for non-biological or microbiological processes.
- The patent application does not clearly and fully describe the description and claim of the invention.
- The invention relates or derives from genetic resources or traditional knowledge, and the patent application does not state this origin in its description.
3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?
The applicant may accelerate its patent application by filing a request to the DGIP to publish its patent application in the Patent Official Gazette within six months of the date of receipt of the patent application. Normally, the patent application will be published in the Patent Official Gazette at the latest within 18 months of the date of receipt of the application.
In this regard, the applicant must explain why accelerated publication is necessary and pay the required fee for acceleration.
3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
Please see question 3.3.
3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
3.7 What subject matter is patent eligible?
Under the Patent Law, a patent will be granted for an invention, in the form of a product or process, that is novel, involves an inventive step and is capable of industrial application. Any product or process that satisfies these criteria and that does not fall within the excluded subject matter referred to in question 3.3 is eligible for a patent.
3.8 If the patent office does not grant a patent, is an appeal available and to whom?
If a patent application is rejected by the DGIP, the applicant or its proxy may file an appeal to the Patent Appeal Commission. The appeal must be filed within three months of the delivery date of the notification of final rejection. The fee for filing an appeal is IDR 3 million.
4 Validity/post-grant review and/or opposition procedures
4.1 Where can the validity of an issued patent be challenged?
The validity of an issued patent can be challenged in the Patent Appeal Commission, as well as before the commercial court.
4.2 How can the validity of an issued patent be challenged?
Any interested party may appeal an issued patent to the Patent Appeal Commission within nine months of the issuance date of the relevant patent.
In addition, any third party, other patent holder or its licensee, the public prosecutor or a national representative representing the interests of a patent holder or compulsory patent holder may file a claim with the commercial court to delete a registered patent at any time.
4.3 What are the grounds to invalidate an issued patent?
The grounds to invalidate an issued patent before the Patent Appeal Commission are as follows:
- The issued patent does not meet the criteria of a patent;
- The invention subject of the issued patent satisfies one of the non-invention criteria or the non-patentable criteria; and/or
- The issued patent is the same as the invention in a previously issued patent.
A claim to delete an issued patent may also be filed to the commercial court based on the above grounds, in addition to the following:
- The patent holder is not manufacturing or using the patented product/process in Indonesia; and/or
- In the case of a compulsory patent, the grant of a compulsory licence has not prevented the implementation of the patent in a way that is detrimental to the public interest within two years of the issuance of such compulsory licence.
4.4 What is the evidentiary standard to invalidate an issued patent?
The Patent Law includes no provisions on the evidentiary standard to invalidate a registered patent. When submitting a claim for cancellation, the plaintiff must also submit all evidence deemed necessary, including written evidence such as previous inventions or registered patents and testimony from expert witness, to support its cancellation claim.
4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
See question 4.3.
4.6 Who can oppose a granted patent?
At the Trademark Appeal Commission, any third party and other patent holders or their licensees can oppose a granted patent based on the first set of grounds listed in question 4.3. Meanwhile, a claim to delete a granted patent may be submitted to the commercial court based on the same grounds by other patent holders or their licensees.
Public prosecutors and national representatives representing the interests of a patent holder or compulsory patent holder can oppose a granted patent based on the second set of grounds listed in question 4.3.
4.7 What are the timing requirements for filing an opposition or post-grant review petition?
An opposition against an issued patent must be filed with the Patent Appeal Commission within nine months of the issuance date of the relevant patent.
If the Patent Appeal Commission rejects the opposition, the challenging party may file a claim to the commercial court within three months of the delivery date of the notice of rejection.
4.8 What are the grounds to file an opposition?
See the first set of grounds listed in question 4.3.
4.9 What are the possible outcomes when an opposition is filed?
When an opposition in the form of an appeal petition is filed, the Patent Appeal Commission may:
- reject the appeal petition;
- partially grant the appeal petition, which will be followed by revision of the relevant patent certificate by the Minister of Law and Human Rights; or
- fully grant the appeal petition, which will be followed by revocation of the relevant patent certificate by the Minister of Law and Human Rights.
With regard to the outcomes listed in the second and third points above, the DGIP will record and announce the Patent Appeal Commission's decision in electronic and/or non-electronic media.
4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
The Board of Appeal at the Patent Appeal Commission will apply the legal standards set out in the Patent Law and Patent Appeal Commission Regulation. As stipulated in this regulation, the Board of Appeal will receive, review and decide on the appeal petition. In carrying out these duties, the Board of Appeal is entitled to undertake several functions, including examination, review, assessment and analysis. In addition, the Board of Appeal is authorised to carry out the following actions:
- summon and hear the appeal applicant, patent holder and/or patent examiner;
- summon and hear any witnesses and experts;
- carry out further searches and examinations;
- request any evidence related to the appeal petition;
- request additional evidence (if needed) related to the appeal petition;
- carry out the examination; and
- decide on the appeal petition.
An appeal to challenge or oppose an issued patent must detail the reasoning for such appeal and be supported by substantive evidence. The burden of proof will be borne by the applicant.
4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?
Yes. If the Patent Appeal Commission rejects an appeal petition, the challenging party may file a claim to the commercial court within three months of the delivery date of the notice of rejection.
5 Patent enforceability
5.1 What makes a patent unenforceable?
A patent may become unenforceable if its term of protection expires or if it is deleted partially or entirely as a result of:
- failure by the patent holder to pay the annuities due;
- submission of a voluntary deletion application by the patent holder to the DGIP;
- a final and binding decision issued by the commercial court; or
- a decision of the Patent Appeal Commission.
5.2 What are the inequitable conduct standards?
The Patent Law includes no provisions on inequitable conduct standards.
5.3 What duty of candour is required of the patent office?
No duty of candour exists under the Patent Law.
6 Patent infringement
6.1 What Constitutes Patent Infringement?
Patent infringement occurs when a party violates the rights of a patent holder as set out in question 2.1.
6.2 Does your jurisdiction apply the doctrine of equivalents?
The Patent Law does not recognise the doctrine of equivalents. Article 59, paragraph (2) of the Patent Law specifically stipulates that the protection of the scope of rights over a granted patent is determined based on the invention described in the relevant claim.
6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?
One of the rights of a patent holder is the right to prohibit any unauthorised party from importing its patented products. If a product is imported into Indonesia and the process for producing the product has been patented in Indonesia, the patent holder may take legal action against the importer if such products have already been made in Indonesia using the patented process.
An exception to this provision concerns the import of pharmaceutical products that have been patented in Indonesia, provided that such pharmaceutical products are imported in accordance with the prevailing import laws and regulations.
6.4 What are the standards for wilful infringement?
The Patent Law includes no standards for wilful infringement. However, Article 143 of the Patent Law stipulates that a patent holder or its licensee has the right to file a compensation claim with the commercial court against any unauthorised party that wilfully infringes its patent as outlined in question 6.1.
A common practice in Indonesia is for the patent holder to send a warning/demand letter to notify the alleged infringer that it is infringing the patent holder's rights. If the infringer had no previous knowledge that the relevant patent has been registered, the warning/demand letter will be deemed to have properly informed it of such infringement. If the infringer continues the infringement notwithstanding, it will be considered to be wilfully infringing the patent.
6.5 Which parties can bring an infringement action?
The patent holder or its licensee can file an infringement report to the police, which will be followed by a criminal claim to the district court if the police investigation reveals an infringement, or file a compensation claim with the commercial court against any party that deliberately conducts any of the actions mentioned in question 6.1 without permission.
However, a licensee may act against an infringement only if the relevant licence agreement has been recorded with the DGIP. If the licence agreement has not been recorded with the DGIP, it will have no legal effect against third parties and as such, the licensee will be unable to act on behalf of the licensor against an infringement of the relevant patent.
6.6 How soon after learning of infringing activity must an infringement action be brought?
The Patent Law prescribes no time limit for filing a patent infringement or compensation claim. In practice, once a patent holder or its licensee discovers that the patent is being infringed, it may immediately take any legal action, including issuing a cease and desist letter to the infringing party. The patent holder or its licensee may then file a claim with the commercial court and/or make a police report if the infringer denies or ignores the cease and desist letter.
6.7 What are the pleading standards to initiate a suit?
There is no specific provision regarding the pleading standard to initiate a claim at the criminal and/or civil court, including the commercial court. However, based on common practice that has been accepted and applied by the courts in Indonesia, a claim must include at least the following:
- the name of the competent court with jurisdiction over the infringement claim;
- the date of the claim;
- the name of the plaintiff and its representative (if a legal entity), ID number (if an individual), place of residence/domicile, and name and address of its proxy/lawyer (if applicable);
- the name of the defendant and its representative (if a legal entity), ID number (if an individual), place of residence/domicile, and name and address of its proxy/lawyer (if applicable);
- the facts constituting the cause of the claim and the legal grounds on which the claim is based;
- the relief/demand sought by the plaintiff; and
- additional claims (eg, an injunction), if any.
6.8 In which venues may a patent infringement action be brought?
A patent infringement action may be filed at the following forums.
District court: In this regard, a patent holder or its licensee must first file a report with the police/civil servant investigator, who will then investigate the alleged infringement. The resulting investigation report will be handed over to the public prosecutor. Once the public prosecutor has confirmed that the investigation report is complete, he or she will then draft the relevant indictment and submit it to the relevant district court with jurisdiction over the alleged infringement.
Commercial court: In this regard, the patent holder or its licensee may directly file a compensation claim based on infringement of its patent with the commercial court.
6.9 What are the jurisdictional requirements for each venue?
An infringement report may be filed at the police station with jurisdiction over the area in which the infringement occurs. If the infringement occurs in multiple areas within the territory of Indonesia, the patent holder may file a report with the Criminal Investigation Department at the National Police Headquarters.
Under the Patent Law, a compensation claim must be submitted to the commercial court with jurisdiction over the domicile of the defendant. If one of the parties is domiciled outside Indonesia, then the compensation claim must be submitted to the commercial court at the Central Jakarta District Court.
6.10 Who is the fact finder in an infringement action?
There is no jury system in Indonesia. Therefore, the fact finder in an infringement action will be the panel of judges at the commercial or district court.
6.11 Does the fact finder change based on venue?
Each court in Indonesia has its own dedicated judges assigned by the relevant authority and therefore the court will have a different board of judges which will act as fact finder for each specific case.
6.12 What are the steps leading up to a trial?
The first step is for the patent holder to investigate and analyse the alleged infringement. Upon confirming that its patent is being infringed, the patent holder will usually send a cease and desist letter to the alleged infringer, ordering it to stop the use and commercialisation of the patent holder's registered and active patent.
Although a cease and desist letter is not mandatory, it is necessary to inform the infringer that it is infringing the patent holder's rights. The letter may also be used as evidence, because it constitutes evidence that the infringer has been informed of its wrongdoing. If the alleged infringer continues the infringement against the patent holder's rights, a cease and desist letter will help to establish the element of "deliberate action", as stipulated in the Patent Law, for the patent holder to file a police report or a compensation claim with the commercial court.
6.13 What remedies are available for patent infringement?
A patent holder may file a claim for compensation and/or an injunction with the commercial court in case of infringement of its patent.
6.14 Is an appeal available and what are the grounds to appeal?
Yes, a decision of the commercial court may be appealed before the Supreme Court.
Article 30(1) of Law No. 5 of 2004 on the Supreme Court sets out the grounds for appeal to the Supreme Court as follows:
- The commercial court did not have authority to hear the case or exceeded its authority in trying the case;
- The panel of judges at the commercial court wrongfully implemented the prevailing laws and regulations in issuing its decision; or
- The commercial court failed to fulfil the conditions stipulated under the prevailing laws and regulations in a way that may invalidate its decision.
7.1 Is discovery available during litigation?
The Indonesian judicial system provides limited scope for discovery in litigation. One of the disputing parties may request the panel of judges to order the other party to provide evidentiary documents to the panel of judges to be shown to the requesting party for its inspection and/or review.
7.2 What kinds of discovery are available?
See question 7.1.
7.3 Are there any limitations to the amount of discovery allowed?
See question 7.1.
8 Claim construction
8.1 When during a patent infringement action are claim terms defined by the tribunal?
The panel of judges does not define the claim terms in patent infringement cases. Claim terms are usually defined in accordance with the terms defined in the specification of the relevant patent registration.
8.2 What is the legal standard used to define claim terms?
See question 8.1.
8.3 What evidence does the tribunal consider in defining claim terms?
In addition to the terms defined in the specification of the relevant patent registration, the panel of judges may consider statements from expert witness.
9.1 Are injunctions available?
Yes. Any party that suffers losses due to patent infringement may file an injunction petition with the commercial court to:
- prevent the entry of suspected infringing goods into commercial trade routes;
- withdraw from distribution, confiscate and retain as evidence suspected infringing goods;
- secure evidence and prevent the disappearance of evidence by the alleged infringer; and
- order cessation of the infringement to stop further loss and damage.
9.2 What is the standard to obtain an injunction?
The injunction petition must be made in writing to the commercial court, accompanied by:
- evidence of patent ownership;
- information on the details of the patent infringement;
- clear information on the products and/or documents to be requested, searched, gathered or secured for the purpose of authentication; and
- a money guarantee in an amount at least equal to the value of the goods against which the temporary injunction will be issued.
9.3 Are damages available?
Yes, damages are available under the Patent Law.
9.4 What types of damages are available?
A patent holder or its licensee may submit a compensation claim to the commercial court against any unauthorised party that wilfully infringes its registered patent.
9.5 What is the standard to obtain certain types of injunctions?
See question 9.2.
9.6 Is it possible to increase or multiply damages due to a party's actions?
A plaintiff can claim compensation for material damages based on a clear calculation of the pleaded damages, which must be supported by sufficient evidence. Damages are usually calculated based on the profits made by the infringer.
A plaintiff may also plead or claim for immaterial damages, which are usually calculated based on the projected losses suffered by the plaintiff due to the patent infringement. There are few cases in which a panel of judges has awarded immaterial damages; in such cases the plaintiffs have been able to provide specific calculations supported by sufficient evidence.
9.7 Are sanctions available?
Yes, sanctions are available under the Patent Law.
9.8 What kinds of sanctions are available?
When a patent holder files an infringement report with the police or public civil servant at the DGIP, the case will be tried at the relevant district court under criminal law. If found guilty, the infringer will be subject to criminal sanctions in the form of:
- up to 10 years' imprisonment; and/or
- a fine of up to IDR 3.5 billion.
9.9 Can a party obtain attorneys' fees?
No, based on the Indonesian Civil Procedural Law, attorneys' fees and costs will be imposed on the party that receives the legal services from the relevant attorney.
9.10 What is the standard to obtain attorneys' fees?
See question 9.9.
10.1 What patent rights can a party obtain through a licence?
A patent holder may grant a licence to a third party to exercise all or some of its rights in a registered patent as mentioned in question 2.1.
A licence agreement over a registered patent in Indonesia must be recorded with the DGIP. Otherwise, the licence agreement will have no legal effect against third parties. As such, if the registered patent is infringed in Indonesia, the licensee will not be entitled to take any legal action.
10.2 What limits can a patent owner impose on a licence?
A patent holder may impose any limitations it wishes in granting a licence to its registered patent to a third party (eg, non-exclusivity, territorial limitation, term of licence).
11.1 Are there any limits on patent protection due to antitrust laws?
Essentially, a patent registration gives the holder exclusive rights to implement and exploit the patented invention. Therefore, it generally will not be limited by anti-monopoly and/or antitrust law.
However, the Patent Law does include provisions on mandatory licences, which are granted pursuant to a decree of the Minister of Law and Human Rights further to an application from a third party based on the following grounds:
- The patent holder has not performed its obligation to produce the patented product or use the patented process in Indonesia within 36 months as of the issuance date of the patent;
- The patent is being implemented by the patent holder or its licensee in a way that is detrimental to the general public; or
- A new patent resulting from a previous granted patent cannot be implemented without using that patent, which is still valid and has not expired.
A mandatory licence will be granted by the minister only if:
- the applicant can provide sufficient evidence that it has the capability and facilities to immediately implement the relevant patent;
- the applicant has taken steps within the last 12 months to obtain a direct licence from the patent holder based on reasonable terms and conditions, but has not succeeded; and
- the Minister of Law and Human Rights is of the opinion that the relevant patent can be implemented in Indonesia on a reasonable economic scale and provide benefits to the public.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.