1.          Patents

Thailand promulgated its first patent law, the Patent Act, in 1979, with significant amendments added in 1992. The Act protects inventions, product designs and pharmaceuticals. In 1997, a new intellectual property and international trade court began an operation, which has significantly improved enforcement. Appeals procedures at the trademark and patent offices have also been streamlined.

In January 2008, the National Legislative Assembly approved Thailand's plan to join the Paris Convention and the Patent Cooperation Treaty.

Thailand successfully became a party to the Paris Convention on August 2, 2008 and on September 24, 2009; Thailand submitted the instrument of accession to the Patent Cooperation Treaty (PCT), making Thailand the 142^nd state to become a contracting party. The PCT became binding on Thailand three months from the date of submission, i.e., on 24 December 2009.

Since Thailand is a member of the Paris Convention, the World Trade Organization (WTO) and thus the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), nationals of the Paris Convention and WTO member countries will receive the same protection accorded to Thai nationals.

Accession to the PCT will help to facilitate the registration of patents abroad for Thai inventors. The PCT registration system meets international standards and is accepted by numerous countries; thus, inventors can receive protection in PCT member countries, many of which are Thai export markets, such as the United States, Japan, Australia, China, and India. Thailand's participation in the PCT will also help applicants from other member countries seek patent protection for their inventions in Thailand.

1.1        Invention Patents

For an invention to be patentable, it must

·           Have novelty;

·           Involve an inventive step; and

·           Be capable of being made or used for some kind of production activity.

Therefore, the following would not qualify for patents due to lack of novelty:

·           An invention widely known or used by others in Thailand before the filing of the patent application;

·           An invention, the subject matter of which was described in a document or printed publication, displayed or otherwise disclosed to the public in Thailand or a foreign country prior to the date of the application for the patent;

·           An invention that has been granted a patent inside or outside Thailand prior to the date of the patent application;

·           An invention for which an application for a patent was filed in a foreign country more than 18 months prior to the date of the patent application, the foreign patent not having been issued;

·           An invention for which application for a patent was filed in Thailand or in a foreign country and that application was published before the date of application in Thailand.

The revised Patents Act provides that the following are not patentable:

·           Microbes and any components thereof which exist naturally; animal, plant or extracted substances from animals or plants;

·           Scientific or mathematical rules or theories;

·           Computer programs;

·           Methods of diagnoses, treatment or cure of human and animal diseases;

·           Inventions those are contrary to public order or morality, public health or welfare.

In case an invention lacks an inventive step, the invention may be granted a petty patent if it is new and capable of industrial application. However, a petty patent and a patent shall not be granted for the same invention. The legal protection of a petty patent is less than of a patent, i.e. term of protection.

1.2        Patentable Product Designs

Product design means any form or composition of lines or colors which gives a special appearance to a product and can be used in industrial or handicraft applications.

A product design must be novel in order to be patented, i.e., it must not fall under any of the following conditions:

·           A design widely known or used in Thailand before the filing of the patent application;

·           A design picture, the subject matter or details of which have been displayed or disclosed in a document or printed publication inside or outside of Thailand before the filing of the application;

·           A design that has been published in the patent journal under Section 65 and 28 before the filing of the patent application; and

·           A design that so nearly resembles any of the product designs indicated in the points described above that it is apparently an imitation.

The following product designs are not patentable.

·           Product designs which are contrary to public order and good morals;

·           Product designs prescribed by Royal Decree.

1.3        Eligibility

An inventor or product designer has the right to apply for a patent, as does a successor or assignee of the right. An assignment must be made in writing, signed by both the assignor and the assignee.

If, during the course of employment or an employment contract specifically for creating an invention or design, an employee creates an invention or product design, the right to apply for a patent belongs to the employer unless otherwise provided by agreement.

The Patent Act requires that an applicant for a patent must be a Thai national or a national of a country which allows persons of Thai nationality to apply for patents in that country.

1.4        Term of Patents and Patent Holder Rights

Term

·           The term of an invention patent is 20 years from the date of filing an application in Thailand, and is not renewable. The term of protection for a petty patent is 6 years from the date of filing an application in Thailand, which can be extended twice, for 2 years each.

·           The term of a design patent is 10 years from the date of filing an application in Thailand.

Rights

·           During the period of the validity of the patent, the patent holder has the exclusive right to produce, use, sell, have for sale, offer for sale, and import the patented invention or design. Any act of violation performed before the patent is granted, that would otherwise constitute an infringement of the patent, is not deemed an infringement.

·           A patent holder has an exclusive right to use the words “Thai Patent”, or an abbreviation or translation thereof.

·           A patent holder may assign the patent to another holder.

·           A patent holder may grant a license to another person, subject to restrictions:          

o    The patentee shall not impose upon the licensee any condition or restriction or any royalty covenant that is an unfair restraint of competition. Conditions, restrictions or covenants that unfairly restrain competition shall be prescribed by a Ministerial Regulation.

o    A patent holder may not require a licensee to pay a royalty or royalties after the validity of the patent has expired.

o    Conditions, restrictions, or royalties which are contrary to the above two points are null and void.

o    Any assignment of patent or license contract must be in writing and officially registered with the authority.

1.5        Compulsory Licensing

An application for a compulsory license may be made under the following circumstances:

1.     If, after three years from granting of patent or petty patent or four years from date of application, whichever is later, the patentee or petty patentee has not enforced his/her lawful rights (Section 46 of the Thai Patent Act B.E. 2542).

2.     If the exercise of the patent rights of one party (the junior patentee) may infringe another patentee (the senior patentee) provided that:

·         The junior patentee’s invention must be a substantial technological advancement which is beneficial to the economy, compared to the invention under the patent for which the license is being sought;

·         The senior patentee receives a cross-license to exploit the junior patentee’s patent rights; and

·         The junior patentee shall not assign a legal license to anyone unless it is an assignment together with his own patent (Section 47 and Section 47 bis of the Thai Patent Act B.E. 2542).

3.     A Ministry or a Department may exploit an exclusive right by itself or by designating another person in a patent for the benefit of public utilities or national defense; the preservation or acquisition of natural resources or the environment; the prevention of severe shortage of food or medicine or other necessities for living; or other public interests (Sections 51 and 52 of the Thai Patent Act B.E. 2542).

1.6        Cancellation of Patents

The Director General may ask the Board of Patents to revoke a patent if:

(1)        Two years after issuance of license, the patentee or licensee has not manufactured the product or applied process under the patent in the Kingdom without any legitimate reason, or for the time being the product is not being sold or imported for sale, or is being sold at an unreasonable high price; or

(2)        The patentee has licensed other persons to exercise the rights under the patent without conforming to prescribed procedures.

1.7        Foreign Patents

A foreign patent that has not been granted a separate patent in Thailand receives no protection under the Patent Act. However, foreign patent holders or owners of rights to inventions or designs in foreign countries may enter into business transactions with parties in Thailand and seek equivalent protection through contractual obligations in the form of a licensing agreement.

Since foreign patents, inventions and designs receive no protection under the Patent Act, no civil or criminal action can be taken against a third party who produces or sells a patented product in Thailand without paying fees to the holder of the foreign patent or who applies in Thailand for a patent on an invention or design already patented in other countries. Nevertheless, legal solutions to such conflicts may be available under separate legislation.