The national implementation of ‘Thailand 4.0’, an industrial policy aimed at transforming the country into an innovation-based economy, is now well underway – and has set the stage for the Thai IP authorities to make the rights protection process in the country more robust and streamlined. In the space of just two years, the Thai Department of Intellectual Property has upped the number of examiners it employs from 39 to 143; it has also reduced the time from filing to grant by 40%. As a result, the department’s examiners are now well on the way towards clearing the backlog of applications that had built up. Legislative cogs are also turning. An amended Thai Patent Act is expected to come into force in early 2019, with some interesting new provisions. One proposed change will seek to avoid double-patenting by stipulating that examiners must check ongoing patent applications as part of all searches; another will introduce a second, post-grant round of publication for all patent applications. There are signs that Thailand’s efforts to harmonise its IP standards with international norms are progressing well.
- Baker McKenzie
- Domnern Somgiat & Boonma Law Office Ltd
- Tilleke & Gibbins
- Chavalit & Associates Ltd
- Rouse & Co International Thailand Ltd
- S&I International Bangkok Office
- Satyapon & Partners Ltd
- ZICO Law
- Ananda Intellectual Property
- Dej-Udom & Associates
- LawPlus Ltd
- Spruson & Ferguson
Ananda Intellectual Property
Ananda Intellectual Property’s defence of Hutchinson Technology in a landmark dispute was the firm’s highlight of 2018. Working alongside a team from the US offices of Nixon Peabody, Franck Fougere and Nuttakorn Sorakun successfully invalidated three patents relating to hard disk drives asserted by Nitto Denko against its client. Fougere has now been practising IP law in Thailand for 16 years and founded Ananda IP in 2011. Under his stellar leadership, the firm has expanded at a truly impressive rate. A senior litigator with 10 years’ experience, Sorakun captains the contentious department; his legal and procedural knowledge is second to none. Ananda IP’s non-contentious arm has also celebrated some big wins lately. Benjapol Kongsombut recently assumed responsibility for Unicharm’s Thai patent portfolio, significantly bolstering the firm’s Japanese client base in the process. A drafting don with a chemical engineering background, he has been honing his craft for close to a decade.
Baker McKenzie’s Bangkok patent offering boasts a unique international dimension, which comes as a result of having deeper overseas resources to draw on than any other firm in Thailand. As a result, patrons receive advice “that takes into account the business and IP environments in Thailand and other countries” – a vital bonus for the globally minded. The partnership has been building on its multinational client base recently by capturing the attention of an ever-increasing number of small and medium-sized enterprises attracted by its all-encompassing approach to IP rights protection. Practice leader Say Sujintaya took up the presidency of the Thai Group of the Asian Patent Attorneys Association (APAA) this year. “A source of invariably great service, she utilises her intimate knowledge of Thai patent trends to expertly advise clients on how the Department of Intellectual Property’s latest policies will affect them.” The Asia-Pacific IP group leader “is undeniably a superstar in the industry”; by dint of her superb client management, legal skills and willingness to share her insights with the broader IP community, she has garnered recognition from all corners of the market. As the holder of both a biotechnology PhD and a law degree, Radeemada Mungkarndee views patent protection from all angles. She brings technical flair, legal acumen and two decades’ patent prosecution and litigation experience to the table.
Chavalit & Associates Ltd
The patent service at SCL Law Group constituent firm Chavalit & Associates maintains a special focus on biotech, chemistry and computer engineering matters, but its expertise also runs the full gamut of technical areas. Co-founding partner Kallayarat Chinsrivonkul heads the patent group and boasts a wealth of sector-specific knowledge, particularly in the electronics, chemical and pharmaceutical industries. Managing partner Chavalit Uttasart is another sagacious adviser. He has spent more than 30 years honing his commercial legal skills and is ideally placed to advise on IP, telecommunications and corporate law matters.
Dej-Udom & Associates
Full-service outfit Dej-Udom & Associates’ stable of 10 patent professionals draft adroitly across a range of technical areas, with computing, chemical, mechanical and pharmaceutical patents all falling firmly under their remit. The practice has seen an uptick in incoming filings lately; its professionals now handle more than 300 patent applications a year, more than half of which require original drafting. Senior partner Poondej Krairit is a computer science adept whose close working relationships with the police and government ministries have stopped many an infringer in their tracks.
Domnern Somgiat & Boonma Law Office Ltd
Domnern is a “dependable firm for patent prosecution” and a true stalwart of the Thai IP scene. The outfit is responsible for a significant chunk of the country’s incoming patent filings and is a crucial gateway to Thailand for many significant overseas companies. Domnern’s quality is underpinned by three exceptional practitioners. Pharmaceuticals maven Prabjote Busdee has now spent close to four decades honing her craft; her refined filing cannot be bettered. On the other side of the practice, Rutorn Nopakun and Chakrapat Mongkolsit are the litigation team’s twin engines. Both dual-qualified as patent agents and attorneys at law, their American legal educations add an international touch to the practice.
LawPlus is quickly becoming an extremely astute choice for foreign companies with Patent Cooperation Treaty (PCT) needs in Thailand and Myanmar. Word of the firm’s straightforward, detail-oriented service is spreading to clients in China, Europe, the United States and other Asian countries – as evidenced by the fact that LawPlus doubled its volume of patent work last year. Managing partner Kowit Somwaiya is an IP lawyer with a robust corporate law background who has become a prominent figure in the international IP community. In addition to his seat on INTA’s board of directors, he has recently been re-elected to the APAA’s Anti-counterfeiting Committee. Impressively, he still finds time to travel extensively in China – including to second and third-tier cities – to share his wisdom on IP protection in Thailand and Myanmar.
Rouse & Co International Thailand Ltd
Rouse’s Thai outpost is a savvy choice for national or regional filing and enforcement campaigns, largely due to the fact that it is fully plugged in to the IP giant’s regional network of talent. The Bangkok team is highly international and possesses plenty of technical knowledge, with three of its members holding PhDs. As country managers for Myanmar and Thailand respectively, Fabrice Mattei and Manoon Changchumni are the names to note. Mattei founded the Bangkok office and has a stellar track record in pharmaceutical disputes. His forensic knowledge of Southeast Asian patent law is highly sought after by external organisations including the EPO. Changchumni, meanwhile, is a contentious ace whose skillset encompasses portfolio management and licensing capabilities. The office is also home to the firm’s Japan patent desk for ASEAN and Southeast Asia, which is run by seasoned Japanese attorney Yushi Kubota.
S&I International Bangkok Office
“S&I International is a robust firm with a laser focus on patent prosecution. The volume of work there remains high, and the quality of translation is always very impressive.” The outfit is particularly known for its strong links with Japanese clients but is no one-trick pony – as the top Filipino, Malaysian and Vietnamese companies who rely on it for peerless advice would doubtless attest. Yingluck Krairiksh is a smooth operator on both sides of the contentious/non-contentious divide. Her dual qualification as a patent agent and attorney at law gives her invaluable insight into every facet of IP rights protection.
Satyapon & Partners Ltd
Fizzing with technical brilliance and sector-specific knowledge, the patent squad at Satyapon & Partners – which has welcomed two new associates in the past year – is often called upon to deal with some of the most important, urgent instructions in Thailand. In addition to its outstanding capacity for all types of patent work, the firm is also known for its meticulous Thai translation review service, which is often gratefully seized upon by English and Japanese-speaking clients. Satyapon & Partners excels on both sides of the contentious divide. Managing partner Satyapon Sachdecha is hailed by one source as “one of the most distinguished figures in the Thai IP circle, as evidenced by his leadership of the Intellectual Property Association of Thailand over the past decade”. Verasak Maiwatana, meanwhile, is the former director of Thailand’s patent office. His remarkable 35 years’ experience allows him to advise clients on their most perplexing IP matters.
Spruson & Ferguson
In just three years, Spruson & Ferguson’s Thai bureau has morphed into a prosecution powerhouse favoured by multinational concerns looking for the very finest drafting. Aided by state-of-the-art internal systems, the firm makes light work of information and communications technology, engineering and chemical patents filed through the PCT. The patent group has recently welcomed senior IP counsel Philip Lyren – a former in-house counsel with Hewlett Packard in the United States who arrived via a stint at Eagle IP in Hong Kong, lauded for his watertight and lucid engineering drafting – to its team of Bangkok and Singapore-based patent attorneys. Versatile IP maven Saowaluck Lamlert manages some key accounts; fluent in English and Thai, he communicates superbly with clients of all shapes and sizes.
Tilleke & Gibbins
Tilleke & Gibbins’s 47-strong patent team sits at pole position in the Thai IP market. The practice does it all, dealing with the entire spectrum of contentious and non-contentious IP matters on behalf of its growing client base. It has recently acquired the regional patent portfolio of one of the world’s largest chemical manufacturers, to sit alongside the other high-stakes matters with which it is entrusted. Having recently made waves by netting a recordbreaking Bt68.85 million ($2.11 million) in compensation for Honda in an automotive design patent infringement suit before the Central Intellectual Property and International Trade Court, Tilleke & Gibbins is flying high at the moment. Co-managing partner Darani Vachanavuttivong presides over the team. Her extensive enforcement experience in the Mekong Delta jurisdictions has made her an outstanding developer of crisp portfolio strategies. Deputy director Alan Adcock dazzles both Thai and foreign clients with his commercial savvy. He is exceptionally skilled at settling licensing disputes through silky negotiation. Nandana Indananda and Suebsiri Taweepon were both instrumental in the Honda matter and are hot commodities among litigants in search of first-class representation. Indananda is a former IP judge whose e-commerce, IT and biotech knowledge allows him to litigate with distinction. As co-chair of the APAA’s emerging IP Rights Committee, Taweepon is one of the best-connected practitioners in the country. He is often trusted to take part in government consultations on his areas of expertise. Last but not least, former Jakarta office director Somboon Earterasarun is a key contact for rights holders keen to formulate strategy that is equally effective in Thailand and Indonesia.
ZICO Law’s Bangkok office offers an A-to-Z patent service that makes life simple for its paddock of Thai and international clients. Colleagues single out the firm’s expertise in searching, prosecution and freedom-to-operate analyses, especially in the pharmaceutical patent arena. With a strong pan-ASEAN presence, the firm is also in a great position to carry out region-wide filing exercises, as it has recently demonstrated throughout Asia and the Middle East on behalf of e-commerce patron Nasket Retail. Managing partner Nuttaphol Arammuang flies ZICO’s flag with pride. The dual-qualified practitioner comes highly recommended for his “client-friendly approach” and mastery of the procedural aspects of IP rights protection. Executive partner Titirat Wattanachewanopakorn is likewise a top-level option for patrons with complex enforcement needs, particularly in the automotive, food and drink and electronics sectors.
- Alan Adcock - Tilleke & Gibbins
- Nuttaphol Arammuang - ZICO Law
- Prabjote Busdee - Domnern Somgiat & Boonma Law Office Ltd
- Manoon Changchumni - Rouse & Co International Thailand Ltd
- Kallayarat Chinsrivonkul - Chavalit & Associates Ltd
- Somboon Earterasarun - Tilleke & Gibbins
- Franck Fougere - Ananda Intellectual Property
- Nandana Indananda - Tilleke & Gibbins
- Benjapol Kongsombut - Ananda Intellectual Property
- Yingluck Krairiksh - S&I International Bangkok Office
- Poondej Krairit - Dej-Udom & Associates
- Saowaluck Lamlert - Spruson & Ferguson
- Philip Lyren - Spruson & Ferguson
- Verasak Maiwatana - Satyapon & Partners Ltd
- Fabrice Mattei - Rouse & Co International Thailand Ltd
- Chakrapat Mongkolsit - Domnern Somgiat & Boonma Law Office Ltd
- Radeemada Mungkarndee - Baker McKenzie
- Rutorn Nopakun - Domnern Somgiat & Boonma Law Office Ltd
- Satyapon Sachdecha - Satyapon & Partners Ltd
- Kowit Somwaiya - LawPlus Ltd
- Nuttakorn Sorakun - Ananda Intellectual Property
- Say Sujintaya - Baker McKenzie
- Suebsiri Taweepon - Tilleke & Gibbins
- Srila Thongklang - Tilleke & Gibbins
- Chavalit Uttasart - Chavalit & Associates Ltd
- Darani Vachanavuttivong - Tilleke & Gibbins
- Titirat Wattanachewanopakorn - ZICO Law