The Indonesian framework for interlocutory injunctions to enforce intellectual property rights. Fortunately, this is counteracted by the short time frame of 180 days for patent infringement actions to reach first instance decisions. This note explains the requirements/procedure for interlocutory injunction as well as the challenges in implementing the interlocutory injunction framework.

Indonesia 2016 Patent Law

The source for the right to apply for an Interlocutory Injunction (Bahasa Indonesia: Penetapan Sementara) is found in Indonesia’s 2016 Patent Law (Article 155 to 158 of Law Number 13 of 2016).

Every patent holder has their own rights to prevent infringer actions. An Interlocutory Injunction is one of those instruments to halt any further damage. Moreover, according to Article 155 of the Patent Law, the purpose of an Interlocutory Injunction is to:

1. Prevent the entry of products allegedly infringing the Patent and/or the rights pertaining to the Patent.
2. Secure and prevent the elimination of evidence by the infringer; and/or
3. Stop the infringement to prevent bigger damage.

Evidence required

These are the supporting documents/evidence required when applying for an Interlocutory Injunction.

1. Proof of Patent ownership – Patent Certificate or certified extract issued by the Directorate General of Intellectual Property (“DGIP”);
2. ”Evidence of strong initial indications of Patent infringement”;
3. Clear statement concerning the goods and/or document to be secured as evidence; and
4. Security bond to be furnished by plaintiff to cover any losses the defendant may suffer in the event that the interlocutory injunction is overturned

This all needs to be filed when requesting the injunction in accordance with Article 156 Patent Law:

Article 156 Patent Law

“An application for an interlocutory injunction shall be submitted in writing to the Commercial Court in the jurisdiction where the Patent infringement occurred with the following requirements:

1. 1. Enclose proof of Patent ownership;
   2. Enclose evidence of strong initial indications of Patent infringement;
   3. Enclose clear information on goods and/or documents requested, sought, collected, and secured for evidentiary purposes; and
   4. Submit a guarantee in the form of cash and/or bank guarantee equivalent to the value of the goods to be subject to interlocutory injunction”

Once the necessary documentation has been set and filed, the process of an Interlocutory Injunction at the Commercial Court is:

1. The patent holder applies for Interlocutory Injunction through the Commercial Court, by attaching supporting documents (includes Patent Certificate, and infringement evidence)
2. Within 4 (four) days of the Interlocutory Injunction having been filed through the Commercial Court, the Commercial Court to decide whether to grant or reject the application

    

   Article 157 paragraph (1), (2) and (3) of Patent Law

   “(1) If the application for an interlocutory injunction already fulfills the requirements as referred to in Article 156, the registrar of the Commercial Court shall record the application for an interlocutory injunction and must submit the application within a maximum period of 1 x 24 (one times twenty-four) hours to the Chief of the Commercial Court.

   (2) Within a maximum period of 2 (two) days from the Filling Date of the application for an interlocutory injunction as referred to in paragraph (1), the Chief of the Commercial Court shall appoint a judge to examine the application for an interlocutory injunction.

   (3) Within a maximum period of 2 (two) days from the date of appointment as referred to in paragraph (2), the judge must decide to grant or reject the application for an interlocutory injunction.”

3. An ex parte hearing will take place
4. If an Interlocutory Injunction is granted, the judge will issue it and notify the infringer.
5. The infringer will be summoned to the court within 7 (seven) days of receiving the notification; and he or she is given the opportunity file counter arguments supported by evidence before the court

    

   Article 158 paragraph (1) and paragraph (2) Patent Law in connection with Article 9 Supreme Court Regulation Number 5 of 2012 concerning Interlocutory Injunction (“Supreme Court Regulation 5/2012”).

   Article 158 paragraph (1) and (2) Patent Law

   “(1) In the event that the Commercial Court issues an interlocutory injunction letter as referred to in Article 157 paragraph (4), the Commercial Court shall summon the party subject to the interlocutory injunction within a maximum period of 7 (seven) days from the date of issuance of the interlocutory injunction letter for questioning.

   (2) The party subject to the interlocutory injunction may submit information and evidence on the Patent within a maximum period of 7 (seven) days from the Filling Date of the summons as referred to in paragraph (1).”

   Article 9 Supreme Court Regulation 5/2012

   “In the event of interlocutory injunction has been implemented, then within 1 x 24 hours, the parties must be notified regarding that interlocutory injunction including the Respondent's right to be heard.”

6. The court shall, within 30 (thirty) days from issuance of the interlocutory injunction, render its final decision on whether to reaffirm or cancel the interlocutory injunction.

Article 158 paragraph (3) Patent Law

“Within a maximum period of 30 (thirty) days from the date of issuance of interlocutory injunction letter, the judge of Commercial Court must decide to affirm or cancel the interlocutory injunction”

Affirmation of ex parte Interlocutory Injunction

In the event that the court affirms the Interlocutory Injunction, the plaintiff may proceed with the following:

1. File a lawsuit for damages; and/or
2. File a criminal complaint against the defendant.

Article 158 paragraph (4) Patent Law

“If the interlocutory injunction of the court is affirmed, then:

1. 1. The security deposit that has been paid must be returned to the applicant for the injunction;
   2. The applicant for the injunction may file a lawsuit for compensation for Patent infringement; and/or
   3. The applicant for the injunction may report a Patent infringement to the investigating officials of the National Police of the Republic of Indonesia or civil servant investigating official”

At the end of the 30 days the Interlocutory Injunction is to be made permanent or dismissed. Compare this with common law countries which where the interlocutory injunction is typically just an interlocutory step within a lawsuit leading to trial and final judgment. This is not the case in Indonesia.  If the interlocutory injunction is dismissed, that would mean the end for the patent holder – he or she will not be able file a lawsuit for damages. This could be one of the reasons why patent holders are reluctant to apply for interlocutory injunction because the stakes may be too high to compress all the arguments into a 30-day period.  There is also the risk of forfeiture of the bond if the interlocutory injunction is overturned.

However, there is some uncertainty on the application of the earlier implementation of the 2012 Supreme Court rules on Interlocutory Injunctions.  It was provided in the 2016 Patent Law that the pre-existing rules continue to apply. Article 15 of the earlier Supreme Court Regulation 5/2012, which provides that the patent holder should file a lawsuit for damages within 30 days from the court's affirmation of the ex parte injunction, failing which, the affirmed injunction will expire.

Article 15 paragraph (2) Supreme Court Regulation 5/2012

“(2) If the Applicant does not file a lawsuit within 30 days from the date of Interlocutory Injunction it is stipulated, the Interlocutory Injunction ends automatically.”

This provision is rather peculiar considering that Article 158 paragraph (4) points b and c of the Patent Law requires the patent holder to either file a lawsuit for damages or a police complaint. If Article 15 of the Supreme Court Regulation 5/2012 is indeed to apply, it seems to undermine such rights given to the patent holder under Article 158 of the Patent Law. There is therefore an argument that Article 15 of the Supreme Court Regulation 5/2012 should not apply to the extent that it is inconsistent with Article 158 of the Patent Law.

The interlocutory injunction, if reaffirmed by the court, should be followed by a patent infringement lawsuit by the Patent Holder, otherwise after 30 (thirty) days the Interlocutory Injunction will automatically expire.

It should be noted that the ex parte injunction if affirmed becomes permanent, there will not be a trial to rule on the issue again.  If the ex parte injunction is not affirmed, it may not be possible to file a further lawsuit for damages on the principle of Res Judicata (something once judged cannot be judged again) (referred to as Ne Bis In Idem in Indonesia). The stakes are therefore high in pursuing an interlocutory injunction compared with filing regular damages claim.