Answer ... Infringement under the Patent Act may occur where a patented product or process is used, produced, sold, possessed for sale, offered for sale or otherwise imported into the country.

The Patent Act recognises both literal infringement and infringement by equivalents.

The scope of a patent is determined by its claims, which can vary and are interpreted as per the characteristics of the invention as detailed in the specifications and drawings.

The Central Intellectual Property and International Trade (IPIT) Court recognised the doctrine of equivalents in Aventis Pharma v Bioscience (Red Case Tor Por 79/2548). The court will require that both the ‘non-essential part’ test and the ‘ease of interchangeability’ test be fulfilled in order to find infringement under the doctrine of equivalents.

Answer ... Yes, Thailand does apply the doctrine of equivalents and permits a patent owner to argue patent infringement even if the claims are not literally infringed. Therefore, protection may extend beyond the scope of the claims to characteristics of an invention that a person with ordinary skill in the relevant field is likely to find similar in property, utility and effect to those stated in the claims.

Section 36bis of the Patent Act opens up the possibility for a patent owner to argue that infringement exists even if the claims are not literally infringed. The relevant section provides that: “The scope of the invention obtaining protection shall include the characteristics of the invention which, although not specifically indicated in the claims, have the same qualifications, functions and effects as those indicated in the claims according to the view of a person having ordinary skill in the art or other technologies related to the invention.”

Answer ... No. If the infringement takes place outside Thailand, the Thai courts normally will not have jurisdiction. Some (limited) extra-territoriality may be possible for infringement relating to a process (eg, a method for manufacture) which was used to manufacture a product being imported into Thailand. In such case action could likely be taken against the importer and potentially an action could be tried against the manufacturer abroad.

Answer ... The Patent Act is silent on the issue of wilful infringement, and there is no confirmed doctrine of contributory infringement or inducement infringement.

In case of criminal proceedings for patent infringement, the plaintiff must nevertheless prove that the alleged infringer possessed the requisite intent to commit the criminal offence of patent infringement.

Section 84 of the Penal Code provides that:

Answer ... Patent owner: Only a patent owner, or the transferee of a patent from the patent owner, can bring an infringement action before the Central Intellectual Property and International Trade (IPIT) Court.

Exclusive licensee: There is no legal basis or precedent case in Thailand that expressly permits an exclusive licensee to sue for patent infringement. We view such action to be admissible only if the exclusive patent licence:

• expressly grants the licensee the right to litigate;
• has been registered with the Department of Intellectual Property; and
• is enforceable.

Non-exclusive licensee: There is no legal basis or precedent case in Thailand that expressly permits a non-exclusive licensee to sue for patent infringement. As above, we view such action to be permissible only if the registered patent licence expressly grants the licensee the right to litigate.

Distributor: There is no legal basis or precedent case in Thailand that expressly permits a distributor to sue for patent infringement.

Other: There is no legal basis or precedent case in Thailand that expressly permits a third party which was injured or sustained damage as a result of patent infringement to sue for patent infringement.

It is possible to sue a direct infringer for patent infringement. If the punishable offender is a legal person (eg, a company), all persons in charge or representatives of that legal person (ie, the company directors) may be liable to the penalties prescribed by law for the offence, except those who can prove that the offence was committed without their knowledge or consent.

Answer ... Claims for patent infringement are not time barred, as long as the infringement is ongoing. Otherwise, a damages claim must be brought within:

• one year of the patent owner learning of both the infringement and the identity of the infringer; or
• 10 years of the date on which the infringement occurred.

Answer ... When filing a complaint for patent infringement, the patent owner must be extremely careful, as compliance with the pleading standards to initiate a suit is important to prevent the case from being dismissed. The complaint must sufficiently disclose the infringement and be plausible. Moreover, additional claims cannot be added after the complaint has been filed, so it is recommended that the claims be sufficiently broad to encompass all infringing acts committed by the infringer, while not being too broad as to be unfair or implausible.

Answer ... In case of criminal proceedings, the plaintiff may submit a complaint and request the Department of Special Investigation (DSI) or the Thai police to conduct a raid and seize allegedly infringing products. In such case the DSI or police must obtain a search and seizure order from the IPIT Court. If infringing products are found, the investigation police officer will transmit the case to the public prosecutor, who may then submit it to the IPIT Court.

In civil proceedings, which is the preferred route for patent infringement litigation in Thailand, the plaintiff submits a written complaint to the IPIT Court, which is then served on the alleged infringer along with a summons. The alleged infringer may submit a response within one month of receiving a copy of the complaint and summons, or request an extension to submit a counterstatement. The defendant may also make a counterclaim for patent invalidity.

The court will then set a date for a preliminary hearing, known as the ‘settlement of issues’ hearing.

Answer ... See question 6.8

Answer ... If a patent owner wishes to enforce its patent rights through criminal proceedings, it is recommended to use the services of a specialised investigation firm, so that specialised officers (eg, the DSI) can obtain a search and seize warrant from the IPIT Court.

In case of civil proceedings, the plaintiff or the defendant may petition the court to issue a summons to discover facts or secure evidence. Such requests for documents or evidences must be very precise and justified to be allowed by the court.

Answer ... Yes – see question 6.10.

Answer ... In general, the following stages occur before a full trial:

• The patent owner conducts a private investigation to collect evidence of the infringement.
• The patent owner sends a cease and desist letter to the alleged infringer informing it of the patent’s validity and ownership, and requesting that the infringer stop infringing the patent. If no reply is received, a follow-up letter may be sent to the infringer after the expiry of the prescribed period.
• The parties enter into direct negotiations or mediation to settle the infringement case.
• If no settlement is reached within the specified timeframes, the patent owner initiates a civil action against the infringer by filing a written complaint with the IPIT Court and serves it on the infringer, and the court summons the infringer. In return, the infringer must file an answer to the complaint with the court and serve a copy of the answer on the patent owner.
• The court sets a hearing date in order to determine whether both parties are committed to litigation. During the hearing, the court will set out the issues to be tried. The court will also determine the number of witnesses allowed by each party, the witness testimony hearing dates and key deadlines for pre-trial procedures, including:
• • the conduct of experiments to prove infringement;
  • submission of each party’s evidence list; and
  • submission of evidence particulars.
• Both parties prepare and submit written testimonies, supporting documents and evidence, and a list of witnesses who will testify before the court.
• The court sets a schedule for discovery and trial on the patent infringement issues.
• A decision is usually issued within one month of the final witness hearing date.

The defendant may attempt to delay proceedings by requesting extensions of individual deadlines or unreasonable postponements of hearing, or by raising procedural issues concerning the handling of the case that require decisions of the court. The plaintiff can oppose any such request, in which case the court will consider whether the request is reasonable.

Answer ... The following remedies may be granted:

• Permanent injunction (Section 77bis): The IPIT Court will grant a permanent injunction to the patent owner following a finding of patent infringement. However, the scope of the court order for a permanent injunction is limited to the types and extent of injunctive relief requested by the patent owner in the case.
• Monetary remedies (Section 77ter): If the court finds that there is patent infringement, it will order the infringer to pay compensation for damages to the patent owner in an amount it deems appropriate, taking into consideration the gravity of the damages, the loss of benefits and the expenses necessary to enforce the rights of the patent owner.
• Destruction of infringing goods (Section 77quater): The court can order the destruction of infringing goods.

The patent owner can also seek publication of the court’s decision and a recall order, which is within the discretion of the court to grant.

Under Section 85 of the Patent Act, if the patent owner also brings a criminal action against the infringer, the infringer may face a criminal penalty of up to TBH 400,000 (approximately $10,000) and imprisonment for up to two years.

Answer ... An appeal against a first-instance decision of the IPIT Court may be lodged with the IPIT Court of Appeal. The second-instance decision of the Court of Appeal may be appealed to the Supreme Court if the latter considers that an issue in the appeal sets out a significant matter worthy of clarification (ie, a significant question of law or a decision that is contrary to a precedent case of the Supreme Court).

Filing an appeal does not suspend enforcement of the first-instance judgment. However, the appellant can apply to the IPIT Court of Appeal for a temporary suspension of such judgment.