South-East Asia IPR Basics Series: Patent Law in Thailand

Mech Eng 2Patents grant rights holders exclusive rights to exploit an invention or process and prevent others from benefiting from this novel idea for a limited period of time (usually around 20 years).

Thailand has a comprehensive framework of legal protection for patents, which are split into two categories; invention patents, and utility model patents. This article explores the laws in place in Thailand protecting these rights, as well as the procedures required for registration, and the options available to rights holders in the event of infringement on Thai soil.

If you’d like even more information on how to protect and enforce your patents in Thailand, read our guides, or get in touch with our Helpdesk experts for free, in-depth advice, tailored to your needs.

What are patents?

A patent is a right granted to the owner of an invention to prevent others from making, using, importing or selling the invention without his permission. A patent may be obtained for a product or process that gives a new, technical solution to a problem, or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.

The Thai system divides patents into two categories, namely; invention patents and utility model patents (also called ‘petty patents’ in the Thai system). Both are temporary, exclusive rights granted for an invention.

Securing adequate patent registrations is the only way to ensure the protection of a product or method against counterfeiters. This right grants owners an exclusive right to produce, use, offer for sale, or import the patented product or process, thus giving the rights holder a considerable competitive advantage, significantly increasing returns on the investments made for its creation.

Patents in Thailand

Both invention, and petty patents are required to be ‘new’ in order to be registered in Thailand. This means that details of the product or method must not have been published anywhere, or disclosed to the public prior to the date of filing.

As in most international patent systems, invention patents in Thailand must also be ‘inventive’, i.e. provide a new technical solution or improvement to a product or process, as well as ‘industrially applicable’.

Patents of invention last 20 years from the date of filing with no option for extension or renewal. The registration process currently suffers severe backlogs however, and applications typically take up to 5-6 years or more before registrations are granted. Applications for patents relating to physics or biotechnology can take 5-9 years, and some pharmaceutical and complex chemical patents can take well over 10 years.

Petty patents last just 6 years from the date of filing, and can be extended for two further terms of 2 years for a total of 10 years protection. The registration process for petty patents is simpler, however applications still take between 3-5 years on average.

Plant variety protection

In 1999 Thai legislators enacted the Plant Varieties Protection Act, which provides for registration and protection of plant varieties within the country. A plant variety is defined in the law as:

‘A plant group within a single botanical taxon of the lowest rank’

A person who breeds plants and discovers and develops a new and distinctive plant variety can seek protection for it. The protection granted by the Act gives the rights-holder the exclusive right to produce, sell, distribute, import, export, or possess the plant variety, and protection lasts between 12-27 years depending on the class of plant registered.

In order to qualify for protection in Thailand, the Plant Variety Protection Office requires the applicant to actually grow the subject plant variety in Thailand for the purpose of examination.

Obtaining patent protection in Thailand

Any individual or corporation may file for a patent in Thailand, however where the individual or company does not have a domicile/head office in Thailand, or any real business operations in the country the Department of Intellectual Property (DIP) requires applicants to engage a local qualified patent agent. Even where not strictly required, it is recommended for foreign companies to hire a local IP agent to represent them before the DIP and streamline the application process.

Thailand is a signatory to the Patent Cooperation Treaty (PCT) and as such, applicants who have already filed a PCT application may claim ‘right of priority’ by filing a national phase entry application in Thailand within 30 months from the first PCT filing date.

Thailand is also a member of the Paris Convention and as such applicants with applications in other member states may claim ‘right of priority’ based on the date of the original application, so long as the filing in Thailand is made within 12 months.

For domestic applications documents must all be submitted in Thai, or be accompanies by a Thai translation. The filing fee for a patent application is approximately EUR 12, with additional costs and service fees arising from use of local patent agents etc.

Applications must be made to the DIP at the Ministry of Commerce, the documents required for an application are as follows:

  • Full details of the applicant’s name, address, and nationality
  • Full details of the inventor/designers’ name, address, and nationality, where different from the above
  • Specification of the invention/design in English or any other language including:
    – Description
    – Claims
    – Abstract
    – Drawings (where appropriate)
  • If ‘right of priority’ is claimed, documents detailing:
    – Date of priority
    – Priority number
    – Country of filing
    – Current status of priority application
  • Certified priority documents themselves
  • Power of attorney, where application is made through an agent
  • Deed of assignment, where the applicant is not the inventor
  • Statement of applicant’s rights, where the applicant is the inventor
  • Thai translations of all documents written in a foreign language

Other features of the Thai patent system

Thailand is a member of the ASEAN Patent Examination Co-operation (ASPEC), a regional patent work sharing programme involving 9 of the 10 IP offices in the ASEAN member countries (only Myanmar is not yet involved). This cooperation agreement aims to reduce complexity, save time on applications and improve the quality of search and examination. Through this mechanism references made to an earlier examination, already performed in one IP office will help an examiner in the other IP office to better understand the invention claim, reduce search volumes and develop a more comprehensive examination strategy. In theory this would result in expedited applications for patents in Thailand, where a patent is already held in another ASEAN country.

Due to trends amongst foreign applicants towards use of the PCT application route for patents in Thailand there is a significant backlog of applications. Of around 23,000 pending applications which were made in 2012, only 1,000 or so have been granted thus far. As such, the Helpdesk recommends that SMEs make their applications directly, through the national application system, which has less of a backlog. However, due to the slow processing speed of independent applications in Thailand, even applications through the national route is only recommended where parallel patents have already been made in other jurisdictions, especially ASPEC members as the Thai patent office will use any other successful grants of patents in their own examinations.

Enforcement

There are three main avenues for IP enforcement available in China, as well as a system of customs control which we will discuss in more detail in a future Helpdesk article. In many cases however, private mediation via legal professionals can be an effective first line of defence and should be considered as a viable option. In the event of infringement SMEs are encouraged to seek advice and support from legal professionals as to the current domestic administrative/judicial policy and the chances of success of different actions. SMEs are of course also welcome to contact the Helpdesk for free advice on how best to react to infringements and find the right lawyer to deal with your case.

Administrative actions

Due to a lack of resources and proper training in administrative enforcement agencies, coupled with weak punishments imposed on confirmed infringers, administrative measures are generally seen to be ineffective in Thailand. The system also suffers from leaks and corruption which undermines raid actions and investigative procedures.

This being said, the Thai government has committed to improve its administrative enforcement agencies with a focus on large-scale infringers and dangerous goods, primarily in ‘priority areas’, such as MBK and Panthip Plaza in Bangkok, Patong, Kata, and Karon beaches in Phuket, Walking Street in Pattaya, etc. These actions are not likely to have a significant impact on patent infringement however, and it is unclear where exactly improvements will be made and how this will affect the system as a whole.

Civil litigation

Civil litigation is rarely used for IP cases in Thailand due to difficulties in proving ‘actual damages’, the lack of a formal discovery process, and the delays common in prosecuting cases. In addition, the Thai judiciary is still inexperienced in dealing with IP issues and case outcomes can be unpredictable.

Civil courts can in theory grant injunctions and awards of damages, however, difficulties in proving ‘emergency’ make injunctions rare and damages are still very low by international standards, often not covering the costs of bringing the action to court in the first place.

Criminal prosecution

Criminal prosecution is generally considered to be the most cost-effective enforcement mechanism available to IP rights holders in Thailand. However, search warrants are difficult to obtain and, as with administrative actions, leaks and corruption in the police force can render them fruitless.

The Thai judiciary has also been reluctant to impose harsh penalties on infringers, and as such there is little deterrent provided by even high profile criminal actions. Penalties for trade mark infringement for example can include a maximum fine of approximately EUR 10,000 and/or a prison sentence of up to 4 years. Fines rarely reach the maximum threshold however, and most sentences are reduced or suspended, especially for first-time offenders.

For more information on how to protect and enforce your patents in Thailand, read our guides, or get in touch with our Helpdesk experts for free, in-depth advice, tailored to your needs.

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