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Major issues in the Thai patent system
Patent law has played a vital role in the preservation of the rights of inventors. Legal protection is considered necessary for the enhancing of inventive activities and technological development. As a developing economy, whose economic development. Relies heavily on industrialisation, through the utilisation of modern technologies. Thailand has adopted a patent law to provide a temporary monopoly for inventors. This has been done in order to foster the development of a required technological base, and to assist the acquisition of foreign technologies.
It is worth mentioning that Thailand does not have long legal development in the field of patent. Although an idea for the establishment of a patent system emerged at first in 1913,1 there was no legal protection for inventions in the country until 1979. It was held by the Supreme Court in 1964 that patent rights were not enforceable under Thai law.2 Unlike most developing countries. Thailand has never endured colonial rule, and its patent law did not evolve from colonial influences. A patent system was adopted as part of the economic policies of the Thai Government and was a result of Thailand's attempt to accelerate industrial production and trade expansion. In the past, the policy of Thailand over the establishment of a patent system had been changed several times in accordance with various national economic and industrial polocies and developments. Until 1979, the "Patent Act B.E.2522" was enacted as the country's first patent law, and came into effect on 12 September 1979.3
In February 1992, Thailand, under pressure from the United States, decided to revise the Patent Act in order to avoid trade sanctions under s.301 of the Omnibus Trade and Competitiveness Act 1988. The "Patent Act B.E. 2535" has amended the previous law in several areas including an expansion of the scope of patentable subjedt-matter, an extension of the term of patent rights, the establishment of a drug price review committee, and the modification of the process for the grant of compulsory licenses.
This article is intened to survey the statutory structures and the substantive provisions of the patent regime in Thailand. It also attempts to provide interpretative analyses of basic patent rules, under both the original Act and the new legislation which has just been passed by the National Assembly. In the following sections, the paper will consider these in turn; Section I describes general conceptual issues in the Thai Patent system; Section II discusses basic requirements for patentability in Thailand; Section III examines patentable subject-matters; Section IV deals with the problems of duration of patent protection; and Section V describes legal mechanisms adopted to combat the abuse of patent protection.
I. GENERAL PERSPECTIVE
It has to be noted that Thailand is not to-date party to any international conventions in the field of patent law, nor has it concluded any bilateral treaties on this subject. However, several of the basic principles established in the Paris Convention have had a significant influence on Thailand's Patent Act. The legal paradigm under the Model Law for Developing Countries, drafted by BIRPI and later WIPO, and the basic rules embodied in developed countries patent legislations were also accepted by the Thai Assembly. The existing features of Thailand's patent law are less complex than those of industrialised countries, and the level of litigation in this field is very low. Since the concept of inventive protection in the early stage, few legal doctrines and judicial interpretations of law have been established.
There are two distinct kinds patents under Thai law : invention and design patents. Only the former, however, will be examined in this study. The Patent Act B.E. 2522 commences by providing useful definitions of the meanings of some legal terms, such as "patent" and "invention"
According to s.3, a patent is defined as "a document issued under the provisions of this Act to grant protection for an invention or a design." This definition is enumerated in a limitative manner as it describes the patent in a tangible form only. It neither refers to any legal rights conferred by the Government, nor mentions any obligations of the patent holder to disclose and work the invention for the benefit of society.
The Act also contains the definition of "invention". It is defined in s.3 as "any innovation or invention which creates a new product or process, or any improvement of a known product or process." The definition of "invention" makes Thailand's patent law different from some western patent statutes, in particular the European Patent Convention (EPC), which do not provide a clear definition of the term "invention". The advantage of the precise definition is that it delimits the uncertainty involved in patent litigation by providing a general standard of interpretation. Nevertheless, there is also a shortcoming of the strict interpretation, since the legal definition may be too narrow in practice, in particular when dealing with technological development.4
The above definition describes "invention" as an act or a process of inventing, rather than the result of the inventing process. This is because the law is intended to protect an inventor's idea, not something obtained from inventive activity. But the law does not protect the idea per se. For an idea to be considered an invention for the purpose of the Patent Act, it must be able to be utilised in practice, In other words, the idea must provide a practical solution to a particular problem in some area of technology.5
The definition includes any improvement of a known product or process. This inclusion is particularly beneficial in enhancing technological development in the country. The patentability of an improved invention acts as an incentive for indigenous inventors and scientists to either improve upon or adapt foreign inventions to the local environment and conditions.6
B. Scope of protection
Patent protection in Thailand can be obtained either as a product or a process patent. The scope of product protection is wide in its application. It confers an absolute monopoly right on the patentee by allowing him to exclude others from using, importing, selling, and making the patented product.7
Although the degree of protection under a process patent is narrower than that afforded by a product patent, a process patent is still important for developing economies, like Thailand, in order to encourage research and development (R&D) activities and to arrive at alternative methods of production, especially of production, especially of pharmaceuticals, chemicals and biotechnology8
The Patent Act B.E. 2522 afforded an exclusive right by allowing the process patent holder to utilise the patented process. A process patent holder also had a right to sell the products obtained directly by means of the patented process.9 But a process patent holder had no "importation right".
The patent Act B.E. 2535 has increased the rights of the holder of a process patent by including a right to import products produce directly by means of the patented process.10 No one else, without the authorisation of the patentee, can import the products into Thailand, and it does not matter whether the product is being imported for private use, or for commercial purposes.
The introduction of the "importation right" into the Patent Act, however, does not make any different. Under the old s.36, although other persons were still able to import the products, the competitors could not put the imported producst on the market without the authorisation of the patentee. The legal structure under the old law still left the process patent holder free to conqure the market, despite the lack of the import monopoly right.
Apart from the introduction of the importation right, the rights of the process patent holder have been extended to the right to manufacture, use, sell, offering for sale, have in the possession for sale, and import a product of the patented process.11
Regarding infringement of a process patent, the onus was on the patentee to prove that the alleged infringer had utilised the patented process, or that the product had been produced by using the patented process. This caused considerable problems to the patentee in enforcing his legal right, as it was very difficult, in practice, to prove such infringement. S.77, a revised provision of the Patent Act B.E. 2535, reverses the burden of proof, placing it on the alleged infringer to prove the he did not utilise the patented process to manufacture the product. This provision is applied to civil litigation only, and, therefore. Does not contradict the generally accepted principle of criminal law.12
Thailand's process patent now has a very strong form of monopoly rights. The revision was intended to improve the protection offered by process patents, which was considered rather weak under the old law.
C. First-to file-system
Thailand has adopted the first-to-file systems, which is used in many other patent systems, by conferring exclusive rights to the application from the first filing date or priority date.
The patent Act has solved a problem of the conflict of rights between inventors when two or more applications are field for anidentical invention on the same date. S.16 stipulates that the applicants shall agree whether a patent should be granted to one of them or all of them jointly. If no agreement is reached within the period prescribed by the Director- General, the applicant may bring the case to do so within such period, means that the applications are deemed to be abandoned.
D.Persons entitled to file an application
A person who enjoys patent protection must be an inventor of the claimed invention.13 This means that only the true inventor can apply for a patent. An exception to this is that an employer, a government organization, or a government enterprise has the right to File an application for an invention made by an employee or a government official or a person who is in the execution of an employment contract for a contract for performing a contract for performing a certain work, unless it is stated otherwise in the contract.14
An advantage in providing exclusive rights to the true inventor is that it limits the possibility of abuse. Without this requirement, a person who happens to learn of another's invention may acquire the patent rights if he is the first to file an application.15 However, a shortcoming of this requirement seems to be a difficulty in determining who is the true inventor. For the benefit of developing countries, including Thailand, which require the modern technology to enhance industrial development, it may be reasonable to suggest that this provision should be revised to allow the patent to be granted to a person who first files an applicacation, regardless of whether he is the true inventor or not. This will encourage the disclosure of inventions.which might otherwise be kept secret by the inventors, through a third party.
The applicant for a patent may be a Thai national or a foreigner. The Patent Act provides legal protection to foreign inventors on the basis of reciprocity. Since Thailand is not a party to the Paris Convention, the national treatment principle is not constituted in its patent law. Where a foreigner files an application in Thailand, he has to prove that the State to which he belongs allows Thai citizens to apply for patents in that country.16 This requirement seems to apply to all foreign nationals, including foreign persons who have their domicile in Thailand and foreign companies that are established in the country.
E. Requirements of an application
In so far as the basic requirements for patentability are concerned, the law stipulates three conditions which a patentable invention has to satisfy. These are novelty, inventive step, and industrial applicability.17 Apart from these requirments, the Act also constitutes an exctusion list of particular subject-matters which cannot be patented in Thailand.18
An applicant for a patent has to provide a detailed description of the invention in such full, concise, clear and exact terms so as to enable a person ordinarily skilled in the art to which the invention relates to make and use the invention. Moreover, the patent application has to disclose the best mode known to the inventor of carrying out the invention.19
There are three merits associated with the complete and adequate disclosure requirement.20 First, it is capable of enhancing the effectiveness of the compulsory licensing system. This is because the full disclosure will enable the licensee to work the patented invention. Secondly, it is also important for the ordinary patent lisensee in exploiting the licensed patent efficiently and independently without the co-operation of the licensor. Thirdly, it fosters public use of the invention after it becomes part of the public domain. This will enhance the role of the patent system as a source of technical information.
But a problem here concerns the notion of "a person skilled in the art". Who should be regarded as such a person? If the skilled person is determined by using the local standard. It is possible that the disclosure of the patented invention may not meet the Thai requirement but would meet the disclosure requirement in another country with more skilled indigenous personnel.21
Another problem concerns the "best mode" requirement, which is intended to maximise public benefit from the full disclosure of the invention.22 It is questionable whether the patent officials are able to assess the standard of the best mode requirement. This is because the requirement is vague, as it is based on the subjective opinion of the inventor. Another question is when the "best mode" of working the invention, which has to be disclosed by the inventor, should be perceived by him. Should it be the date of invention, the filling date, or the date of grant?
In the examination process, when the competent officer considers that an application does not complied with the above requirement, he shall submitted a report to the Director-General to reject the application.23 However, the law does not state whether the insufficient disclosure of the invention is a ground for revocation of patent.24 This may create a practical problem if it is found, after a patent is isuued, that the specification does not disclose the invention clearly and completely enough as required by s.17(3).
The Patent Act provides for the examination of the patent applications as to substance.25 In practice, due to the limited resources and facilities, the Department of Intellectual Property Rights has requested the Australian Patent Office and the European Patent Office to conduct the examination of the patent applications.26 If it appears that the application for a patent does not comply with the rules and procedures (e.g. the claim is not properly drawn), or that the claimed invention is not patentable, The Department of Intellectual Property Rights any reject the application.27 The following section will survey details of the requirements for patentability in Thailand.
* An Associate Professor in law, Sukhothai Thammathirat Open University.
1 Phaungrach, Yanyong, Patent. Law and Practice, Bangkok, 1990,p.7 (in Thai).
2 Supreme Court Decision No.837/2507.
3 The Royal Gazette. Vol.96 No.35,16 March 1979
4 WIPO, WIPO Model Law for Developing Countries on Inventions, Vol.1, Geneva, 1979,p.57.
5 See Ibid, at p.57
6 Yankey, George S., International Patents and Technology Transfer to Less Developed Countries. Gower, Aldershot, 1987.p.212
7 Patent Act B.E. 2522, amended by Patent Act B.E. 2535. S.36(1).
8 See WIPO, The Importance of the Patent System to Developing Countries, World Symposium at Colombo, Sri Lanka, 1977
9 Patent Act B.E. 2522. S.36.
10 Patent Act B.E.2522, amended by Patent Act B.E. 2535, s.36(2)
12 See Vaitsos, C.V., The Revision of the International Patent System: Legal Considerations for a Third World Position, World Position, World Development, Vol.4 No.2 1976, p.98.
13 Patent Act B.E. 2522, amended by patent Act B.E. 2535. S.10
14 Patent Act B.E. 2522, ss.11 and 13
15 Yankey, op.cit, at p.215
16 Patent Act B.E. 2522, s.14.
17 Ibid, s.5.
18 Ibid, s.9.
19 Ibid, s.17(3)
20 Yankey, op.cit., at p.219
21 See Wegner, H.C., Patent Harmonization. Sweet & Maxwell, London, 1993, p.162.
22 Ibid, at pp.164-167
23 Patent Act B.E.2522, s.28(1)
24 See Ibid, ss.54-55
25 Ibid, ss.24-29
26 Phaungrach, op.cit.p.66.
27 Patent Act B.E.2522, s.28.