This article sets out how Indonesia’s Patent Law Number 13 of 2016 (“Patent Law”) recognizes the Reverse Burden of Proof method in Process Patent Infringement actions in Indonesia.
In accordance with the prevailing Patent Law, the patent holder could initiate (i) civil action to seek compensation of damages resulted from the unauthorized use the registered patent and/or (ii) criminal action by filing a complaint to the enforcement officials [Police or Directorate of Investigation at the Directorate General of Intellectual Property (“PPNS”)].
For the purposes of this article, we will focus on the civil action proceedings of patent infringement.
A party can be considered as infringing a patent if the conditions set out in Article 19 and Article 160 of Patent Law are fulfilled, which are as follows:
- in the case of Product Patent: makes, uses, sells, imports, rents, delivers, or makes available for sale or lease or delivers the patented product without authorization from the patent holder; and/or
- in the case of Process Patent: using the patented production process to manufacture or make, use, sell, import, rent, deliver, or make available for sale or lease or deliver goods/product without authorization from the patent holder.
Furthermore, Article 143 point (1) of the prevailing Patent Law stipulates as follows:
A Patent Holder or Licensee has the right to file a claim for compensation to the Commercial Court against any Person who deliberately and without right commits an act as referred to in Article 19 point (1).
Based on the above provisions, a patent holder has the right to file a claim for compensation to the Commercial Court against third party who deliberately and without rights commits an infringing act by using the patented process to manufacture goods or other actions including makes, uses, sells, imports, rents, delivers, or makes available for sale or lease or delivers the Patented product.
Furthermore, the Patent Law also stipulates that civil claim to seek compensation of damages could only be granted if during the proceeding at the Commercial Court it can be proven that the product or process have been used in the patented invention.
Burden of Proof in Civil Actions in Indonesia
In Indonesia’s Civil Law, burden of proof in civil action is regulated in Civil Law Book Article 1865 jo. HIR Article 163, which states:
“Anyone who says he/she has a right to something or mentions an incident to confirm his/her right, or to dispute someone else’s right, then that person must prove the existence of that right or that incident.”
The above stipulation means that in civil claims, the Plaintiff shall bear the obligation to prove that there were existing circumstances where his/her rights have been violated by the Defendant.
However, in some cases, the Reverse Burden of Proof Method is recognized to take precedent, where the Defendant shall bear the obligation to prove his/her innocence in the court of law. One of the cases where Reverse Burden of Proof is applicable is Process Patent Infringement claims.
Reverse Burden of Proof Method in Process Patent Proceedings
In the proceeding based on Process Patent before the Commercial Court, the prevailing Patent Law recognizes the difficulty of determining the infringement elements of Process Patent process, hence, it introduces the Reverse Burden of Proof method where the Defendant shall bear the obligation to prove that the Defendant does not use the patented process.
There are two (2) alternative conditions that must be satisfied in the Reverse Burden of Proof method before the Commercial Court:
- the product obtained by the patented process must be new product; or
- the product is suspected to be the result of a patented process, even though sufficient efforts have been made to prove it, the patent holder still cannot determine the process used to produce such product.
Since the burden of proof would be borne by the Defendant, the Defendant will need to provide convincing arguments and evidence that they did not infringe the patented process. However, in the case of Process Patent, in order to maintain a reasonable balance of interests between the parties, the Panel of Judges are authorized to order the patent owner to first submit evidence in form of patent registration certificate for the Process Patent as well as preliminary evidence that supports the infringement allegation.
During the proceeding, the Panel of Judges is obliged by the Patent Law to consider the interests of the Defendant to obtain protection on the secrecy of the process that has been disclosed during the hearing. In this case, the Patent Law adhered to the fact that nature of a patent process which is generally very easy to manipulate or perfected by someone with general knowledge in the field of engineering or certain technology. As such, by request of the parties, the judge can order for the hearing sessions to be closed from the public.
