Thailand

ThailandCapital: Bangkok
Capital Timezone: GMT + 7
Population: 69,520,000 (est. 2013)
Languages: Thai & English
Currency: Baht (THB)
Legal System: Civil law system with common law influences

Key issues

• All litigation and prosecution in Thai language
• Ranked 102nd in the world for IP protection in the World Economic Forum’s Global Competitiveness Report 2013/2014

Litigation

• Framework for patent infringement litigation is present but due to the low number of cases actually tried in a Court, there is not much case law to cite when compared to some other countries. The Court may consult any foreign law and may apply it to the extent that it does not conflict with Thai law
• A specialised Court for deciding Intellectual Property cases exists (the Central Intellectual Property and International Trade Court) which consists of two professional judges and one associate judge. The associate judge has expertise in Intellectual Property or technical skills in order to assist the judges with technical aspects
• Time taken for litigation proceedings may range from 18 to 24 months in the Central Intellectual Property Court and 24 to 30 months in the Supreme Court
• Preliminary injunctions are possible, though rarely granted
• Patent infringement is a criminal offence and is punishable by imprisonment not exceeding two years or a fine not exceeding four hundred thousand baht or both
• Infringement remedies – damages depending on the extent of the injury such as loss of benefits and expenses involved in the enforcement of the patentee’s rights, injunctions and delivery up
• Punitive damages are not available in Thailand
• Doctrine of equivalents applies when construing a claim
• Invalidity can be used as a defence and a separate proceeding can be filed
• As an alternative to litigation, negotiation through the Mediation Center is possible. The two government agencies that facilitate mediation of intellectual property disputes in Thailand are the Department of Intellectual Property and the specialized Intellectual Property Court. The case will be mediated by a mediator who has a business or intellectual property background

Prosecution

• National phase entry deadline for PCT applications in Thailand: 30 months
• Unpatentable subject matter – (1) naturally occurring microorganisms and their components, (2) animals, plants, or extracts from animals or plants, (3) scientific or mathematical rules or theories, (4) computer programs, (5) methods of diagnosis, treatment or curation performed on a human or animal body, and (6) inventions contrary to public order, morality, health or welfare
• Foreign patent applications that are filed in the 18-months period before the application date in Thailand are not relevant for novelty purposes, provided that the foreign application has not been published or granted
• Post-publication opposition – possible
• Request for examination within 5 years from the publication date. Examination can be expedited by providing examination results and grant of a patent from a country with a well-developed patent examination system
• Voluntary amendments are possible before the publication of the application, or as directed by the Director-General, provided that such amendments do not enlarge the scope of the invention
• Divisional applications only possible upon notification from an Examiner that the application relates to more than one invention

Other issues

• Possible to pay all of the annual fees in advance in one payment instead of in annual payments. However, if the annual fees are subsequently revised or the patent is surrendered or cancelled, the patentee is not obligated to pay any increase in the annual fees or be entitled to a refund of the annual fees paid
• Working requirement – a patent should be sufficiently worked in Thailand within the later of three years from the grant date or four years from the application date
• Patent Term Extensions – not possible
• Compulsory licensing – possible, though rarely required as parties will settle and decide on a license
• An inventor has the right to claim remuneration based on a granted patent in Thailand
• Parallel importation – available except for pharmaceuticals
• Foreign filing license – not required
• Pharmaceutical Data Exclusivity Laws – Thailand does not offer data exclusivity protection but a limited form of data protection is provided under trade secrets law
• Marketing exclusivity – a two- to four-year safety monitoring period is provided to pharmaceutical companies with granted marketing approvals to only sell their products to the government and private hospitals. No new generic drugs can be launched during this safety monitoring period
• Patent-drug linkage – does not exist
• PPH with Japan
• Participant in the ASEAN Patent Examination Co-operation (ASPEC)

For more information contact us on mail@fak.com.au or +61 7 3011 2200.