Thailand promulgated its first patent law, the Patent Act, in 1979, with significant amendments added in 1992. The Act protects both inventions and product designs and pharmaceuticals. Thailand has numerous bilateral agreements enabling citizens of other countries to file patent applications in Thailand. However, Thailand is not a signatory to the Paris Convention for the Protection of Industrial Property nor a signatory of any other international convention for reciprocal protection of patents.
In December 1997 a new intellectual property and international trade court began operations, which has significantly improved enforcement. Appeals procedures at the trademark and patent offices have also been streamlined.
A. Invention Patents
For an invention to be patentable, it must
• Have novelty
• Involve an inventive step
• Be capable of being made or used for some kind of production activity.
Therefore, the following would not qualify for patents:
– 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 any manner, whether inside or outside Thailand, and whenever the disclosure is by document, printed matter, exhibition or public disclosure by any means whatsoever *
– An invention that has been granted a patent inside or outside Thailand prior to the date of the patent application
– An invention that is the subject of an abandoned application in Thailand. This provision does not affect the rights of co-inventors and others who did not apply for such patent shall not be affected
– An invention for which an application for a patent was filed in a foreign country more than 12 months prior to the date of the patent application, the foreign patent not having been issued. The revised Patents Act provides that the following are not patentable:
• Microbes and any components thereof which exist naturally; animal, plant and extracted substances from animals or plants
• Scientific or mathematical rules or theories
• Computer programs
• Methods of diagnoses, treatment and care of human and animal diseases
• Inventions that are contrary to public order or morality, public health or welfare.
B. Patentable Product Designs
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
• A design that so nearly resembles any of the product designs indicated in the points described above that it is apparently an imitation.
C. Product Designs Which Are Not Patentable
• Product designs which are contrary to public order and good morals
• Product designs prescribed by Royal Decree.
D. 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, an employee or contractor 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.
The patent holder or applicant is entitled to the following rights:
• 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
• 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 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:
– The patentee shall not impose upon the licensee any condition or restriction or any royalty covenant which is an unfair restraint of competition. Conditions, restrictions or covenants that unfairly restrain competition shall be prescribed by a Ministerial Regulation
– A patent holder may not require a licensee to pay a royalty or royalties after the validity of the patent has expired
– Conditions, restrictions, or royalties which are contrary to the above two points are null and void
• Any assignment or license must be in writing and officially registered.
E. Compulsory Licenses
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 the expiration of three years from the grant of a patent or four years from the date of filing an application for a patent, any person may apply to the Director-General for a compulsory license if, at the time of the application, it appears that:
– For no legitimate reason, there is no production of the patented product nor application of the patented process in the country
– 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 in quantity insufficient to domestic public demand.
F. Cancellation of Patents
A patent may be canceled under the following conditions:
• 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
• The Director-General may ask the Board of Patents to cancel a patent in the following cases:
– If it appears that two years after the issue of a license under Section 50, the licensing has been unable to prevent or alleviate the condition for which a license was issued under Section 46 or 46 bis; or
– The patentee has licensed another person to exercise the patent rights in violation of Section 41.
Before requesting the Board to cancel a patent, the Director-General shall order an inquiry and notify the patentee and licensees to submit their briefs within 60 days from the date of receipt of notification. The Director-General may summon any person to make statement or deliver any additional documents or items.
G. 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 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 in other countries. Nevertheless, legal solutions to such conflicts may be available under separate legislation.
* Disclosure of the essentials or specifications due to or in consequence of an unlawful act, or disclosure of essentials or specifications by the inventor, including display of the inventor's work at an international exhibition or an official public exhibition provided such disclosure occurred within the period of 12 months prior to the date of filing the patent application shall not be deemed to be disclosure under subsection 2.
The Copyright Act of 1994 protects literary, artistic works, and performance rights by making it unlawful to reproduce or publish such works without the owner's permission.
A. Works Subject to Copyright
The Copyright Act protects works in the categories of literary work, including computer programs; dramatic, artistic and musical work; audiovisual material, cinematic film, recorded material; disseminated pictures or disseminated sound; or any other works in the fields of literature, science or fine arts.
The Copyright Act protects computer software against reproduction or adaptation, publicity and rental of such software. Algorithms are not, however, protected.
The “copyright” as defined by the Act means “the exclusive right to take any action concerning the work created or made by the creator”. The Act also defines the word “creator” as meaning the person who does the work or creates the work, as defined by the Copyright Act.
A copyright belongs to the creator of a work, subject to the following conditions:
• In the case of unpublished work, the creator must be of Thai nationality or reside in Thailand or be a national of or reside in a country which is a member of the Convention on the Protection of Copyright, of which Thailand is a member, provided that the residence at all times or most of the time is spent on the creation of the work
• In the case of published work, the first publication must be made in Thailand or in a country that is a member of the Convention on the Protection of Copyright. In the case where the first publication was made outside Thailand or in a country which is not a member of the Convention, the work created must have been published in Thailand or in a country which is a member of the Convention within 30 days from the first publication, or the creator must have the qualification as prescribed above at the time of the first publication.
In cases where the creator is required to be a person of Thai nationality, and the creator is a juristic person, such juristic person must be established under the Civil and Commercial Code of Thailand.
B. Copyright Infringement ©
The Copyright Act includes a comprehensive list of the types of infringement covered by law:
• Infringement by reproduction. The Act defines the word “reproduction” as follows: “Reproduction includes copying by whatever means, imitating, duplicating, making printing blocks for, recording the sound of, taking pictures of, or recording the sound and taking pictures in substantial parts of the originals, from copies or from the publication, regardless of whether made in whole or in part.”
• Infringement by adaptation. Adaptation, as defined by the Act, means a reproduction by conversion. Modification or emulation of the original work for the substantial part without a character of creating a new work whether wholly or partly.
– With regard to literary work, it shall include a translation, a transformation or a collection by means of selection and arrangement
– With regard to a computer program, it shall include a reproduction by means of transformation, modification of the program for the substantial part without the appearance of creating a new work
– With regard to dramatic work it shall include the transformation of a non-dramatic work into a dramatic work or dramatic work to a non-dramatic work, whether in the original language or in another language
– With regard to artistic work, it shall include the transformation of a two-dimensional work or a three-dimensional work into a three-dimensional work or a two-dimensional work respectively, or the making of a model from the original work
– With regard to musical work, it shall include an arrangement of tunes or an alteration of lyrics and rhythm
• Infringement by publicizing without permission - It is an infringement of copyright to publicize a work without the consent of the copyright owner. “Publicize” means “present to the public by showing, lecturing, praying, playing, presenting with by sound and/or picture, constructing, distributing, selling, or by other means, the works done or created.” The word “public” refers to the person or persons who are present, and not to the place where the performance occurs. A performance will not be regarded as being carried on in public if it is restricted to family and friends of the performer or whoever is responsible for the performance.
• Infringement by producing audiovisual material, cinematic film, recorded material or dissemination of sound or picture or by rebroadcasting of sounds and visual images, wholly or in part, or arranging for dissemination of sound or picture in public with commercial purposes
C. Exceptions
Under the Act, any act that might ordinarily be deemed copyright infringement may not be so deemed if done for the following purposes:
• Research or education, without any commercial purposes
• For one's own benefit or for the benefit of a member of one's own family, or close relatives
• Comment, criticism or recommendation of the work, with recognition of the copyright ownership of such work
• Presenting news or otherwise reporting through the mass media, with recognition of the copyright ownership of the work
• Reproduction, adaptation, performance or presentation for a court hearing or consideration by competent and authorized officers or for the purpose of reporting on the outcome of such hearing or consideration
• Copying, duplicating, or adapting parts of the work, or making extracts or summaries, by teachers or by educational institutions for the purpose of distributing or selling to students in school classes or in educational institutions, provided that such activities are not for commercial purposes; and
• Using the work as parts of questions and answers in examinations.
In addition, citing, copying or imitating certain parts of the copyrighted works under the Act, with recognition of the copyright ownership of the work, shall not be deemed to be copyright infringement.
The Act also entitles librarians to reproduce works copyrighted under the Act, provided that complete reproduction is not done for commercial purposes.
D. Works Not Subject to Copyright under the Copyright Act
The Act specifically provides that the following are not deemed eligible for copyright protection:
• Daily news and facts that are, by nature, merely news items
• The Constitution and laws
• Announcements, orders and regulations of ministries, bureaus, departments or any other agency of the state or local jurisdiction
• Court judgments, orders, rulings and official reports
• Translations and collections of those items specified as above which are prepared by government agencies or local administrations.
E. International Copyrights ©
The Copyright Act of 1994 protects copyright works of a creator and the rights of a performer of a country party to conventions on copyright protection or conventions on performance rights protection to which Thailand is a party, or for works copyrighted under international organizations of which Thailand is a member.
F. Licensing and Assignment of Copyrights
The 1994 Act provides that a copyright owner is entitled to grant licenses to another person to use or exercise rights with respect to his copyrighted work. The Act requires that an assignment of copyright by means other than inheritance must be made in writing and signed by the copyright owner and the assignee. In the event the assignment is made without specifying the assignment period, the assignment shall be valid for 10 years. In the event of an assignment of a copyright, the creator of the copyrighted work retains the right to forbid the assignee to distort, delete from, adapt, or act otherwise in any manner against the work if such act would cause damage or injury to the reputation or prestige of the creator.
G. Copyright Protection Period
A copyright in literature, drama, artistry or music is valid throughout the lifetime of the creator, and for an additional 50 years thereafter. In the event the creator is a juristic person, the copyright will be valid for a period of 50 years following the creation of the work. The copyright for applied artistic work is valid for a period of 25 years following the creation of the work.
H. Penal Provisions
Persons who commit copyright infringement by means of reproduction without permission from the copyright owner may be fined 20,000 to 200,000 baht. If the copyright infringement was committed for business purposes, the offender may face punishment of imprisonment for a term from six months to four years, or a fine from 100,000 to 400,000 baht, or both.
The Trademark Act of Thailand of 1991 governs registration of and provides protection for trademarks. The Act defines a trademark as a symbol used in connection with goods for the purpose of indicating that they are the goods of the owner of the trademark. The trademark must be “distinctive” and not identical or similar to those registered by others, and must not be prohibited by section 8 of the Trademark Act of 1991.
A. Registration Procedure
A trademark application must be completed by the proprietor or his agent, in Thai, and filed with the Trademark Office on official forms. The proprietor or his agent must have a place of business or address in Thailand at which he can be contacted by the Trademark Office.
If the Trademark Office deems the trademark registrable, and provided that no opposition to the trademark arises within 90 days of its publication in the official journal, the Trademark Registrar will grant a trademark registration.
B. Trademark Registration Period
Trademark registration is effective for a period of 10 years. Owners of trademarks must file an application for renewal at least 90 days prior to the expiration of their current trademark registration. A renewed trademark will be effective for an additional 10 years.
A trademark may be registered even if it is not being actively used. However, failure to utilize the trademark entitles third parties to challenge the rights of the trademark owner.
C. Penal Provisions for Trademark Infringement
The owner of a registered trademark has the exclusive right to use the trademark, and may initiate legal action against violators. It is a criminal offense to represent a trademark as registered when it has not been legally registered, or to sell, possess for sale, or bring into the Kingdom objects under such a pretense. This offense is punishable by imprisonment of up to one year or a fine of up to 20,000 baht, or both. Presenting false evidence while registering a trademark is liable to a term of imprisonment not exceeding six months or a fine not exceeding 10,000 baht, or both.
Anyone who forges another person's trademark, registered in the Kingdom, or who sells, possesses for sale, or brings into the Kingdom objects with a forged trademark, shall be punishable by imprisonment not exceeding four years or a fine not exceeding 400,000 baht, or both.
Anyone who imitates another person's registered trademark in order to mislead the public into believing the imitation mark is that of the registered owner, or who sells, possesses for sale, or brings into the Kingdom objects with an imitated trademark, will be punishable by imprisonment not exceeding two years or a fine not exceeding 200,000 baht, or both. Whoever repeats these offenses within a five-year period is liable to double punishment.
D. The Board of Trademark Committee
In 1991, the Board of Trademarks was established to have the power and duties specified hereunder:
• To decide an appeal, order, or decisions of the Registrar under Trademark Act
• To order a withdrawal of the registration of a Trademark, service mark or certification mark
• To give advice to the Minister in the issuance of the Ministerial Regulations on Notifications
• To consider other matters assigned by the Minister.
E. Service Marks, Certification Marks and Collective Marks
As of February 1992, these variations on trademarks are covered under all the provisions the Act and, hence, receive the same protection as trademarks under the law. In the case of service marks, all the words “goods” mentioned in the Act's provisions shall mean “services”.
Certification Marks.
Applicants for certification marks must forward a copy of the regulations concerning the use of the certification mark together with the application for registration and demonstrate that they are well qualified to certify the merits of the goods or services.
The owner of a registered certification mark shall not use it for his own goods or services and shall not license any third person to grant certifications to use the mark, although they may license a third person to use the certification mark themselves. If they violate this rule, they are subject to a fine not exceeding 20,000 baht.
The regulations concerning the use of the certification marks must:
• Specify the origin, composition, manufacturing process, quality and other characteristics of the goods and services to be certified
• Include the rules, procedures and conditions in the granting of a license to use the certification mark. |
