4 Nov
2020

Patents in Asia 2020: Thailand

Rouse

How do you get a patent in your jurisdiction?

The types of protection available in Thailand are summarised in Table 1.

Eligibility criteria

The criteria for obtaining an invention patent are:

  • novelty;
  • inventive step; and
  • industrial applicability.

Table 1. Available patent protection in Thailand

 

The principal source of patent law is the Patent Act 1979, as amended by subsequent legislation. Ministerial regulations and various notifications published by the Department of Intellectual Property also form part of the patent regulatory scheme. The non-obviousness criterion does not apply to petty patents; therefore, a petty patent offers stronger protection than a patent, since it can only be invalidated on the ground of lack of novelty for which prior arts cannot be combined – unlike for lack of inventive step. Given this, it is unsurprising that the number of petty patents filed in Thailand increased by over 84.5% between 2013 and 2018, while the number of patent applications grew by 10.0% only.

The following subject matter is not patentable:

  • micro-organisms that exist naturally and their components, animals, plants or extracts from animals or plants;
  • scientific and mathematical rules and theories;
  • computer programs;
  • methods for diagnosing, treating or curing human or animal diseases; and
  • inventions that are contrary to public order or morality, public health or welfare.

This exclusion from patent protection is absolute. The most problematic issues for the pharmaceutical sector relate to biologics, diagnostic methods and methods of treatment. Generally, the following can be patented if they are novel, non-obvious and useful:

Figure 1. Number of applications for petty patents filed in Thailand – 2013-2018

 
  • formulations;
  • new therapeutic uses;
  • methods for preparing medicinal products; and
  • polymorphic forms.

In the past, a Swiss-type claim would be acceptable. However, under the new examination guidelines, this is no longer the case. The exclusion of computer programs and mathematical methods is broad since it is not qualified or limited to computer programs or mathematical methods “as such”. There is no explicit exclusion from patentability for business methods. However, most applications are rejected on the basis that a business method is an abstract idea.

The application – process and costs

Patent applications are filed with the Patent Office, which is part of the Department of Intellectual Property at the Ministry of Commerce. Guidance on the application procedure and fees can be found on the website. Thailand is a signatory to the Patent Cooperation Treaty (PCT) and since 24 December 2009 it has been possible to submit international patent applications through the PCT system. Government fees depend on the type of right (ie, invention patent, petty patent or design patent) but in general are minimal. Once the patent is granted, various maintenance fees apply from the fifth year onwards.

Process and timing

To apply for an invention patent, the applicant must first prepare a patent specification, including a detailed description of the invention, abstract, drawings and claims. The application must then be filed with the Patent Office, which conducts a preliminary (formality) examination and publishes the application in the official Patent Journal in Thai. After the patent is published, a substantive examination of the invention takes place within a maximum period of five years. The entire process for issuing an invention patent can take from three to five years, or even longer in the case of advanced technology or complicated inventions. Following its grant, a patent cannot be amended, except where the patentee surrenders any claim(s). However, an application to surrender the claim(s) will not be accepted if the patent is subject to court proceedings. Our firm’s proprietary tool Patempo allows applicants to instantly estimate the pending time of patent applications in South-East Asia and access recommendations on how to expedite their examination and grant.

Various proposed amendments to the Patent Act have been the subject of discussions since 2009 and are still being debated today. The amendments aim to solve and prevent backlogs and delays in granting patents and to ensure that a patent’s duration to grant complies with the timeframe of 55 months set out in the Licensing Facilitation Act. According to the latest draft of the Patent bill, amendments being considered include the introduction of a two-step publication process. The first publication would be effected promptly after the expiration of 18 months of the filing date in Thailand or the priority date (no opposition can be filed at this stage). A second publication would be made after the substantive examination, allowing any third party to file an opposition. It is expected that this new procedure would reduce the time frame for filing a request for substantive examination from five years to three years and allow third-party observations to ongoing proceedings before the Patent Office.

Technology-based considerations (software, pharmaceuticals)

According to the Patent bill, surgical methods are non-patentable subject matter. Surgical methods seem to encompass both therapeutic and non-therapeutic treatments, such as cosmetic treatments. As mentioned previously, the exclusion of computer programs and mathematical methods is broad since it is not qualified or limited to computer programs or mathematical methods “as such”.

What are the major administrative procedures in your jurisdiction?

Appealing patent office decisions

A decision issued by the Patent Office can be appealed to the Patent Board and further appealed to the Central Intellectual Property and International Trade Court (CIPITC), which then can be appealed to the Court of Appeal. Appeals at the administrative level are conducted by written submission only, while court hearings rely on written and live testimonies. It can take over two years for the Court of Appeal to reach a judgment.

Third-party challenges – oppositions and invalidations

The Patent Act sets out a 90-day period for a third party to file an opposition, which commences upon the publication of a patent application. After the patent is granted, a third party may only challenge its grant through a revocation (ie, invalidation) proceeding.

Administrative enforcement options

Currently, there is no border control mechanism for seizing or preventing the import of infringing patented products. On 7 July 2017 the Trade Competition Act (BE 2560 (2017)) was published in the Government Gazette of the Kingdom of Thailand. The act became effective on 5 October 2017. However, Thailand has yet to see the application of this law to prevent relief for patent infringement being granted.

How are patents enforced through the courts?

Key forums and their composition (judge versus jury trials)

The CIPITC is a specialised court with exclusive jurisdiction over all IP disputes, including patents. It was established by the Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court (BE 2539 (1996)), and its procedures are set out in the Rules for Intellectual Property and International Trade Cases (BE 2540 (1997)), as well as the Civil Procedure Code and the Criminal Procedure Code. Each panel on the CIPITC consists of two career judges and one lay or associate judge with expertise in the field of the dispute in question (eg, mechanical engineering or pharmaceuticals). As a result, parties to highly complex disputes tend to spend less time and resources educating the panel. The Patent Office does not have jurisdiction over patent litigation – it is the CIPITC that adjudicates patent infringement and invalidation matters.

Trial flow – discovery, trial, witnesses, timings and costs

Valid patents are enforceable through civil and criminal actions. In most cases, patents are enforced through civil actions.

Civil proceedings

If a patentee enforces its patent rights by way of civil remedies, it may first issue a warning notice to the infringer. A civil action is commenced against an alleged infringer by filing a written complaint with the CIPITC and serving a copy of the complaint, along with a summons issued by the CIPITC, on the defendant. The complaint usually indicates which patent and which claims of the patent are allegedly being infringed and the amount of damages claimed. In response, the defendant may reply with a defence of non-infringement by filing an answer to the complaint with the CIPITC and serving this on the plaintiff. A counterclaim for patent invalidity may also be filed along with the answer to the complaint or separately. If a counterclaim is filed, the plaintiff is entitled to reply by filing an answer to the counterclaim with the CIPITC and serving this on the defendant. Thereafter, the court will set a date for the parties to meet for the purpose of determining the possibility of dispute resolution and to set out the issues to be tried in the case. In the settlement of issues hearing, the court will also set the number of witnesses allowed by each party, the witness testimony dates and the deadlines for pre-trial procedures, including any experiments to prove infringement, submission of each party’s evidence list and the submission of evidence particulars.

Criminal proceedings

If a patentee enforces its patent rights through a criminal action, it may launch a case by involving a specialised enforcement authority (eg, the Department of Special Investigation or the Police) to conduct searches and seizures of evidence of infringement. In the absence of clear-cut and strong evidence of infringement, such specialised enforcement authorities are unlikely to assist. If a specialised enforcement authority does agree to participate, it will submit a request to the CIPITC for a search and seizure order. Pursuant to this, if evidence of infringement is discovered during the raid, the alleged infringer will be charged with patent infringement, to which it may plead guilty or not guilty. If it pleads not guilty, the designated investigation officer will take evidence from both parties and submit an opinion to the public prosecutor as to whether to prosecute. The criminal case will proceed to the CIPITC if the public prosecutor agrees with the investigation officer’s findings and a prima facie case against the alleged infringer can be established. On average, it takes between eight and 14 months for proceedings to reach trial date from commencement, depending on the judges’ and parties’ schedules. The court fee for filing the complaint depends on the amount of damages claimed by the plaintiff. If the claimed amount of damages is below Bt50 million (approximately $1,501,704), the court fee is charged at 2% of the claimed amount and capped at Bt200,000 (approximately $6,000) or any claimed amount exceeding Bt50 million; an additional court fee is charged at 0.1% of such amount.

How are patents commercialised in your jurisdiction?

Inventor remuneration issues

The relevant laws in this regard are the Thai Patent Act and Ministerial Regulation (24 BE 2542 (AD 1999)). Employers or those commissioning work from their employees have the right to apply for patents for inventions made during an employment or work-for-hire contract, unless the contract states otherwise. The same applies to employment contracts, which do not require employees to exercise inventive activities but under which the employee has a right to apply for a patent for an invention using any means, data or report at the employee’s disposal during employment. The Patent Act further states that an employer has the right to file for a patent and an employee-inventor has the right to receive remuneration in addition to their regular salary if the employer gains certain benefits from current or future use of the invention. This right cannot be exempted by any provisions in the employment contract. If the employer and employee disagree on the entitlement and/or remuneration amount, the employee or employer can submit a request to the director general of the Department of Intellectual Property. The director general has the authority to order the amount of remuneration as they deem fit, taking into account the employee’s salary, the invention’s importance, the current and future benefits of the invention, and other circumstances listed in Ministerial Regulation 24. The regulation provides guidelines for determining remuneration.

The procedure for requesting the director general to fix the amount of remuneration is summarised in Figure 2.

Table 2. Criteria for deciding whether to patent an invention made under an employment contract

 

Fabrice Mattei

Partner

[email protected]

Fabrice Mattei qualified as an attorney in 1993 and trained in London and Paris before moving to Asia in 2000 where he opened Rouse's offices in Bangkok and Yangon. His practice area covers primarily patent prosecution and litigation emphasizing on Asia Pacific region. Mr Mattei is the co-director of the firm’s global patent practice and regularly act as the lead patent attorney in patent disputes in the region. He is a consultant to the EPO on the harmonisation of patent examination rules in South East Asia and to WIPO on genetic resources and lectures on patent law at various universities in China, Japan, Scotland and the United States.