Thailand promulgated its first patent law, the Patent Act, in 1979. The Act protects both inventions and product designs. Thailand has numerous bilateral agreements with other countries entitling citizens of those countries to file patent applications in Thailand. Thailand is not a member of the Paris Union or a signatory of any other international convention for reciprocal protection of patents.
For an invention to be patentable, it must : (1) have novelty; (2) involve an invention type; and (3) be capable of being made or used for some kind of production activity.
Therefore, the following would not qualify for patents:
a) an invention widely known or used by others in Thailand before the filing of the patent application.
b) an invention, the subject matter of which was described in a document or printed publication, displayed or otherwise disclosed to the public, whether inside or outside Thailand, before the filing of the patent application. Disclosure or display of the invention at an international or official exhibition not less than 180 days before the filing of the patent application is not deemed disclosure under the previous definition.
c) an invention which has been granted a patent inside or outside Thailand before the filing of the patent application.
d) an invention which is the subject of an abandoned application in Thailand. This provision does not affect the rights of a joint inventor who did not jointly apply for a patent.
e) an invention which is the subject of a pending patent application filed more than twelve months previously in a foreign country.
Specific inventions that do not qualify for patents in Thailand are listed below:
1. food, beverages, and pharmaceutical products or ingredients;
2. machines specifically for use in agriculture;
3. animals, plants or biological processes for the production of animals or plants;
4. scientific or mathematical rules and theories;
5. computer programs;
6. inventions which are contrary to public order, health or welfare, and
7. inventions prescribed by Royal Decree.
Patentable Product Designs
A product design must be novel in order to patented : i.e., it must not fall under any of the following conditions:
a. a design widely known or used in Thailand before the filing of the patent application;
b. 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 the application;
c. a design which so nearly resembles any of the product designs indicated in (a) or (b) above that it is apparently an imitation.
Product Designs Which are Not Patentable
1. product designs which are contrary to public order and good morals and
2. product designs prescribed by Royal Decree.
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, an employee or contractor creates an invention or product design, the right to apply for a patent belongs to the employer unless otherwise stipulated 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.
Rights Conferred To Patent Holders
The patent holder or applicant is entitled to the following rights:
1. A patent for an invention is valid for a period of 20 years from the date of filing the application; a patent for a product design is valid for a period of 10 years from the date of filing the application. The time during which court proceedings regarding the issuance of the patent are in process may be excluded.
2. During the period of the validity of the patent, the patent holder has the exclusive right to produce and sell products using the patented invention or design. Any act performed before the patent is secured, which would otherwise constitute an infringement of the patent, is not deemed an infringement.
3. A patent holder has an exclusive right to use the words " Thai Patent", or an abbreviation or translation thereof.
4. A patent holder may assign the patent to another holder.
5. A patent holder may grant a license to another person, subject to restrictions as follows:
a. a patent holder may not impose any condition, restriction or royalty requirement defined by Ministerial Regulation as damaging or obstructing the development of the industry, handicraft, agriculture, or commerce of Thailand;
b. a patent holder may not require a licensee to pay a royalty or royalties after the validity of the patent has expired;
c. conditions, restrictions, or royalties which are contrary to (a) or (b) above are null and void.
6. Any assignment or license must be in writing and officially registered.
To discourage monopolies and the acquisition of patents simply to prevent other persons from manufacturing or producing the patented inventions or product designs, Section 46 of the Patent Act provides that:
"At any time after expiration of three years from the granting of a patent or four years from the date of filing an application for a patent, at the time of the application, it appears that:
1. for no legitimate reason, there is no production of the patented product nor application of the patented process in the country;
2. for no legitimate reason, there is no sale of the product produced under the patented process or there are sales of the same at unreasonably high prices or such sales do not meet the public demand."
Cancellation of Patents
A patent may be cancelled under the following conditions:
1. Although a patent has been granted, any person who has an interest in the patent or the public prosecutor may challenge its validity by petitioning the Court for cancellation.
2. At the end of six years from the granting of a patent, the Board of Patents may cancel the patent if it appears that, for no legitimate reason, either:
a. there is no production of the patented product nor application of the patented process in the country; or
b. there is no sale of products produced under the patent or under the patented process or there are sales of the same at unreasonably high prices or such sales do not meet the public demand.
In these cases, the Director-General must order an investigation and give the patent holder and any licensee thereof an opportunity to submit their statements within thirty days.
A foreign patent which has 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 products 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 available under a separate legislation.
NOTE: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
If you would like further advice please contact: David Ellis, Johnson Stokes & Master, 16th Floor, Princes Building, 10 Chater Road, Hong Kong; Tel 2843 4226; Fax no. : 2845 9121. Alternatively do a text search "Johnson Stokes and Master" and "Business Monitor".