Thailand: Patents Comparative Guide

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The Patent Act BE 2522 (1979) is the principal source of law relating to patents. It has been amended twice, by the Patent Act BE 2535 (1992) and the Patent Act BE 2542 (1999). The Patent Act provides the framework for patent protection, including registration and prosecution procedures, licences and renewals, cancellation, compulsory licences, enforcement and remedies. The Patent Act covers not only invention patents, but also petty patents (also known in other jurisdictions as utility models) and design patents.

It is supplemented by the following:

• subsidiary legislation in the form of various ministerial regulations and notifications of the Department of Intellectual Property;
• the Act for the Establishment of and Procedures for the Intellectual Property and International Trade Court BE 2539 (1996); and
• the Rules for Intellectual Property and International Trade Cases BE 2540 (1997).

If the principal sources of law and IP regulations are silent on a specific issue, the following general laws apply:

• the Civil and Commercial Code and the Civil Procedure Code;
• the Penal Code and the Criminal Procedure Code; and
• the Act for the Establishment of Kwaeng Court (District Court) and its Criminal Procedures.

Thailand is also bound by several international IP treaties. Thailand joined the World Trade Organization (WTO) in 1995 and automatically became a party to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights of 1994. The kingdom also joined in 2009 both the World Intellectual Property Organization Paris Convention for the Protection of Industrial Property (1883) and the Patent Cooperation Treaty (PCT), known as the Washington Treaty (1970).

In the event of a conflict, the Patent Act and other applicable local laws will take precedence over international treaties.

1.2 Who can register a patent?

In this Q&A, ‘patent' shall mean an invention patent, unless otherwise specified (the Patent Act also protects design patents and petty patents).

The person filing a patent application in Thailand must be the inventor of the claimed invention (Section 10 of the Patent Act).

This means that only the true inventor can apply for patent protection, and that failure to designate the true inventor may be cause for the cancellation or invalidation of the patent application.

Inventors may assign the right to apply for a patent to another party (eg, an employer). An employer, a government organisation 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 executing an employment contract or a contract to perform certain work, unless the contract states otherwise (Sections 11 and 13 of the Patent Act).

A valid deed of assignment signed by the inventor must be produced when applying for patent protection in Thailand (convention application). However, a deed of assignment is not required by the local patent office for national phase entries of PCT (international patent) applications in Thailand to ease the application process.

2 Rights

2.1 What rights are obtained when a patent is registered?

The specific rights of the patent owner are set out in Section 36 of the Patent Act. They include the exclusive right to produce, use, sell, possess for sale, offer for sale or import into Thailand the patented products. The same protection is provided for processes (eg, a method to manufacture a product).

Anyone that violates the patent owner's exclusive rights is subject to infringement liability, except where a statutory exemption applies.

2.2 How can a patent owner enforce its rights?

The patent owner can enforce its patent rights through criminal and/or civil actions brought before the Central Intellectual Property and International Trade (IPIT) Court, which was established in 1997. The IPIT Court can issue injunctive remedies, search and seizure orders, damages and criminal penalties (fine and/or imprisonment).

Under Section 35bis of the Patent Act, any act contrary to Section 36 committed before the date of grant of a patent shall not be deemed an infringement of the patent owner's rights, unless such act is committed after the patent application has been published and the infringer had knowledge of the filing of the patent application or was notified in writing that a patent application had been filed for the invention. In this case the applicant shall be entitled to obtain damages from the infringer. The claim for damages must be filed with the court once the patent has been granted.

Although patent litigation in Thailand is relatively rare, recent cases show that it is possible to successfully enforce patent rights and challenge the validity of patent rights to defend a patent infringement case (eg, the 2018 IPIT Court decisions in the Hutchinson v Nitto Denko Corporation patent invalidity cases).

Patent litigation in Thailand is relatively inexpensive and fast compared to other jurisdictions in Southeast Asia. It usually takes between six and 18 months from the date of the preliminary hearing for the court to render its decision.

2.3 For how long are patents enforceable?

Registered invention patents in Thailand enjoy protection for 20 years from the date of filing or, where foreign priority is claimed, for 20 years from the date of the priority claim.

A granted patent remains enforceable provided that the maintenance fees (annuities) are duly paid on time.

In case of court proceedings under Section 16 (joint ownership dispute), Section 74 (appeal) or Section 77sexies (joint ownership) of the Patent Act, the term of the patent shall not include that period during which the court proceedings take place.

Registered design patents enjoy protection for up to 10 years in Thailand. The proposed revisions to the Patent Act increase this term to 15 years.

Registered petty patents can enjoy protection for up to 10 years.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The Patent Office (Department of Intellectual Property, Ministry of Commerce

563 Sanambin Nam, Bang Krasaw, Mueang Nonthaburi District, Nonthaburi 11000, Thailand).

3.2 What is the cost of registration?

The total cost of registration varies depending on the service fees charged by local patent agents (usually around $700 to $1,000 from filing to registration) and the translation fees, which can be rather expensive, especially for technical inventions.

Official fees are fixed fees and are rather inexpensive (if we do not consider annuities). The current official fees applicable under the Patent Act, from filing to grant, are as follows:

• Official fees for invention patents: THB 1,500 per application from filing to registration (about $50).
• Official fees for design patents: THB 1,000 per application per design from filing to registration (about $30).
• Official fees for petty patents: THB 750 per application from filing to registration (about $23).

3.3 What are the grounds to reject a patent application?

In accordance with Sections 5 to 14 of the Patent Act, a patent can be invalidated on any of the following grounds:

• The patented invention is not new.
• The patented invention does not meet the criterion of inventive step (ie, the invention is obvious to a person with ordinary skill in the relevant field).
• The patented invention is incapable of industrial application.
• The patented invention consists of non-patentable subject matter (see question 3.5).
• The patent owner is not the true inventor or has no right to file an application.
• The patent applicant does not comply with Section 14 of the Patent Act, which requires the patent applicant to meet at least one of the following conditions:
• • be a Thai national or legal person with its principal office in Thailand;
  • be a national of a country that is a party to an international convention or treaty for patent protection to which Thailand is also a party;
  • be a national of a country that allows Thai national or legal persons with their principal offices in Thailand to apply for patents; or
  • have a domicile or an actual and genuine ongoing functioning industrial or commercial enterprise in Thailand or a country that is party to an international convention or treaty for patent protection to which Thailand is also a party.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

The best way to accelerate the patent application process in Thailand is to ensure that the formality examination is conducted quickly and submit a request for substantive examination along with a copy of matching foreign granted claims. Where advisable, a voluntary amendment made to Thai claims so as to match foreign granted claims can also result in expedited examination.

Aside from this general recommendation, applicants can also avail of two fast-track examination procedures, as follows.

Thailand-Japan Patent Prosecution Highway (PPH) Pilot Programme: The PPH Pilot Programme was initiated following an agreement between the Department of Intellectual Property and the Japanese Patent Office (JPO) concluded on 1 January 2014. It provides a fast-track channel that allows applicants that have filed a patent application in Japan first, followed by a counterpart application in Thailand, to accelerate the substantive examination of their Thai application by utilising the examination results of their Japanese application.

Association of South East Asian Nations (ASEAN) Patent Examination Cooperation (ASPEC): ASPEC is the first regional patent work-sharing programme among all participating ASEAN member states (excluding Myanmar). Applicants can file an ASPEC form at any time before grant, to avoid duplication of search and examination, thereby saving time. ASPEC is often overlooked, although it works very well – in particular, for patent holders that have already obtained grant in Singapore.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

The following types of claims are not patentable under the Section 9(4) of the Patent Act:

• naturally occurring micro-organisms and their components, animals, plants or extracts thereof;
• scientific and mathematical rules;
• computer programs;
• methods of diagnosis, treatment or cure of human or animal diseases; and
• inventions that contravene public order, morality or the health or welfare of the people.

Some difficulties arise in Thailand with regard to pharmaceutical patents for methods of treatment or diagnosis, which must be amended into a Swiss claim format.

In general terms, the following inventions may be patented provided that they meet the criteria of novelty, inventive step and industrial applicability:

• polymorphic forms (eg, solvates or different crystalline forms of a known chemical compound);
• pharmaceutical substances or compositions;
• new therapeutic uses of known chemical compounds (Swiss type claims);
• combination and dosage forms; and
• methods for preparing medicinal products or related substances.

In the case of a considerable number of pharmaceutical patent applications in Thailand, objections are raised as early as during the formality examination (ie, before publication of the patent application) because of Section 9(4).

Any patent claim referring to a "method of diagnosis, treatment or cure of human or animal disease" is strictly not permitted in Thailand. Examples of claims that are absolutely not admissible in Thailand include the following:

• "(Compound substance X) for use in the treatment of (disease Y/ disorder Y)";
• "(Compound substance X) for use as a (Y treating agent)"; and
• "(Compound/substance X) for use in therapy (or for use as a medicament)".

As is well known in the pharmaceutical industry, patent applications containing claims relating to a method of treatment – especially those relating to a secondary use of a known compound to treat a new disease – are usually modified into the Swiss-type claim format. A Swiss-type claim format that would be acceptable for publication of what would otherwise be a ‘method of treatment' patent application in Thailand would be: "(Use of) (compound/substance X) in the manufacturing of a medicament for the treatment of (disease Y/ disorder Y)."

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

No procedural or legal mechanisms are available to extend the patent term in Thailand, beyond the exception discussed in question 2.3.

3.7 What subject matter is patent eligible?

Invention patents: The basic requirements for patentability of invention patents are stipulated in Section 5 of the Patent Act as novelty, inventive step and industrial applicability.

As in other countries, the Patent Act provides that an invention seeking legal protection in Thailand must be ‘new'. An invention is considered new if it does not form part of the state of the art.

According to Section 6, the state of the art includes any of the following inventions:

• an invention which was widely known or used by others in the country before the date of filing of the patent application;
• an invention whose subject matter was described in a document or printed publication, displayed or otherwise disclosed to the public in Thailand or a foreign country before the date of filing of the patent application;
• an invention for which a patent was sought in a foreign country more than 12 months before the date of filing of the patent application, where a patent has not yet been granted for such invention; and
• an invention for which a patent sought in Thailand, where the applicant has not abandoned such application. This provision shall not affect the rights of joint inventors and other persons that did not jointly apply for a patent.

The proposed amendments to the Patent Act aim to clarify some ambiguity regarding this section. A new paragraph of Section 6 in the proposed amendments aims to include in the prior art not only inventions which existed or were widely used in Thailand before the date of filing of a patent application, but also those which existed or were widely used outside the kingdom (ie, worldwide absolute novelty).

As regards the requirement of inventive step, Section 7 of the Patent Act stipulates that: "An invention shall be taken to involve an inventive step if it is not obvious to a person ordinarily skilled in the art." This approach is the same as that taken in other countries, and particularly in Europe.

An invention patent application can include an unlimited number of claims.

Petty patents: To be eligible for petty patent protection, an invention must meet the criteria of novelty and industrial applicability. There is no inventive step requirement for petty patent applications in Thailand. It is not possible to obtain both a patent and a petty patent for the same invention. However, in either case the applicant can change the type of protection sought from a petty patent to a patent and vice versa. This must be done before registration of the invention and the issue of a petty patent, or before publication of the patent application.

A petty patent application can include up to 10 claims.

Design patents: Design patents must meet the criterion of novelty in Thailand.

As per Section 57 of the Patent Act , the following designs shall not meet the criterion of novelty:

• a design which has existed or has been widely used in Thailand before the date of filing a patent application;
• a design whose image, substantial part or detailed description has previously been disclosed in a document or printed publication, whether inside or outside Thailand, before the date of filing of a patent application;
• a design which has previously been published under Section 65 in conjunction with Section 28 before the date of filing of a patent application; or
• a design similar to any design mentioned in the first, second or third points above which can be seen as an imitation.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

Appeals are available under the Patent Act. If the Patent Office rejects an invention patent or petty patent application, the applicant may appeal the decision to the Board of Patents within 60 days. If the board affirms the rejection decision, the applicant may appeal to the Central Intellectual Property and International Trade Court with 60 days of receiving notice of the board's decision.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

Thai law does not authorise the Patent Office or any administrative body to revoke invalid patents. Patents may be cancelled by court order only.

4.2 How can the validity of an issued patent be challenged?

As per Section 54 of the Patent Act, any person or the public prosecutor may file a petition to the Central Intellectual Property and International Trade (IPIT) Court to challenge the validity of a granted patent.

4.3 What are the grounds to invalidate an issued patent?

In accordance with the Patent Act, an invalidation action may be brought if:

• the patent is not new;
• the patent does not involve an inventive step;
• the patent is incapable of industrial application;
• the patent is directed to non-patentable subject matter (ie, naturally occurring micro-organisms and their components; plants or animals, or extracts of plants or animals; scientific or mathematical principles or theories; computer programs; methods of diagnosis or treatment for animal or human diseases; and anything that is contrary to public order, morals, health or safety);
• there are named inventor issues; or
• there are unqualified application issues.

Thailand has yet to see a judgment acknowledging lack of unity, lack of enablement or improper prosecution as sufficient grounds for patent invalidation.

Also, and unlike in other countries, the current Thai law does not foresee the possibility to invalidate a patent due to insufficient disclosure, unlawful amendment, fraud or anti-competitive practice.

4.4 What is the evidentiary standard to invalidate an issued patent?

There is no evidentiary standard set out in Thai law in relation to invalidation or cancellation proceedings. Each party may submit technical evidence if detailed in its respective evidence list, which may include documentary evidence, physical evidence and expert witness reports.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Once a patent has been issued, its validity may be challenged as in questions 4.2 and 4.3. There are no other post-grant review or other post-grant procedures.

The validity of an issued patent may be challenged at any time during its term or after through either invalidation proceedings or a counterclaim in an infringement lawsuit.

There is no time limit for an application for revocation of the patent and there are two grounds for revocation:

• The patent was issued for an invention which does not truly satisfy the criteria of patentability; or
• The patent holder was not entitled to apply for the patent.

4.6 Who can oppose a granted patent?

It is not possible in Thailand to oppose a granted patent; only invalidity proceedings are available post-grant.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

The Patent Act provides only for pre-grant opposition of a patent application. Within 90 days of publication of the patent application (following the formality examination), anyone that believes it has a stronger right to the patent than the applicant or that the application does not comply with Section 5 (patentability criteria), Section 9 (unpatentable subject matter), Section 10 (designation of true inventor), Section 11 (right to apply for patent) or Section 14 (patent holder's qualifications to apply for a patent) of the Patent Act may file an opposition with the patent examiner.

4.8 What are the grounds to file an opposition?

There are five grounds to file an opposition under Thai law, as per the five sections outlined in question 4.7:

• The invention to which the patent relates does not satisfy the criteria of patentability (novelty, inventive step and industrial applicability);
• The subject matter of the patent is unpatentable;
• The applicant is not entitled to apply for the patent;
• The opposing party has a stronger right to apply for the patent; or
• The applicant does not meet the criteria to qualify to apply for a patent – that is:
• • being a Thai national or a legal person with its head office
  • in Thailand;
  • being a national of a country which is a party to a convention or an
  • international agreement concerning patent protection to which Thailand is also a party;
  • being a national of a country which allows a Thai national or a legal
  • person with its head office located in Thailand to apply for a patent in that country; or
  • having a domicile or a real and effective industrial or commercial establishment in Thailand or in a country which is a party to a convention or an international agreement concerning patent protection to which Thailand is a party.

4.9 What are the possible outcomes when an opposition is filed?

Once an opposition has been filed, it is notified to the applicant, which must file a counterstatement within 90 days. If the applicant fails to file such counterstatement, the application is deemed abandoned. Evidence may be submitted by the opposing party and the applicant, and a decision is then communicated to both parties by the director general of the Department of Intellectual Property. This decision may be appealed to the IPIT Court within 180 days.

If the opposition is successful and the opposing party is granted the right to apply for the patent, its application will be deemed as filed on same day as the applicant's opposed patent.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

The legal standards regarding opposition proceedings are the Patent Act and the Patent Act Regulations. The burden of proof rests with the opposing party.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

A post-grant invalidation decision of the IPIT Court may be appealed before the IPIT Court of Appeal and may be further appealed before the Thai Supreme Court (final level of jurisdiction).

5 Patent enforceability

5.1 What makes a patent unenforceable?

A patent is enforceable upon grant. As per Section 35bis of the Patent Act, any act committed before grant of a patent shall not be deemed an infringement of the patent owner's rights, unless it was committed by a party that knew that a patent application had been filed for the invention or that was notified in writing that a patent application had been filed for the invention.

5.2 What are the inequitable conduct standards?

There are no inequitable conduct standards under the Patent Act and as yet no litigation in Thailand has addressed this issue.

As yet, the antitrust law has not been applied to prevent the grant of relief for patent infringement in Thailand. However, the Patent Act provides that patent licensing terms cannot unfairly restrict competition or impose royalties that are unjustifiably anti-competitive.

Other inequitable conduct – such as forging documents or making false declarations or statements in order to obtain a patent or avoid invalidation – may be raised in court based on evidence.

5.3 What duty of candour is required of the patent office?

There is no duty of candour provision in the Patent Act or known case law, such as that in the United States. There is currently no strict obligation to disclose material information to the Patent Office.

6 Patent infringement

6.1 What Constitutes Patent Infringement?

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.

6.2 Does your jurisdiction apply the doctrine of equivalents?

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."

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

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.

6.4 What are the standards for wilful infringement?

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:

6.5 Which parties can bring an infringement action?

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.

6.6 How soon after learning of infringing activity must an infringement action be brought?

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.

6.7 What are the pleading standards to initiate a suit?

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.

6.8 In which venues may a patent infringement action be brought?

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.

6.9 What are the jurisdictional requirements for each venue?

See question 6.8

6.10 Who is the fact finder in an infringement action?

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.

6.11 Does the fact finder change based on venue?

Yes – see question 6.10.

6.12 What are the steps leading up to a trial?

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.

6.13 What remedies are available for patent infringement?

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.

6.14 Is an appeal available and what are the grounds to appeal?

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.

7 Discovery

7.1 Is discovery available during litigation?

Yes. The court will assist both parties with discovery and has the power to issue subpoenas if certain information needs to be made available for the plaintiff or the defendant.

7.2 What kinds of discovery are available?

The Central Intellectual Property and International Trade (IPIT) Court usually admits large volumes of evidence, including written documents (eg, articles, publications, patent specifications, search reports), physical samples, police reports, investigation reports, test reports, pictures, charts and presentations. The court will also and principally hear from witnesses, as well as technology or industry experts, both orally and in writing.

Testimony is an essential part of patent litigation in Thailand.

7.3 Are there any limitations to the amount of discovery allowed?

No, except the information must be retrievable and its existence must be plausible. A motion must be filed to the IPIT Court – preferably in the early stages of the proceedings – to increase the chances that the court will issue a subpoena.

The court has discretionary powers in allowing discovery.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

Yes, after hearing both parties if necessary.

8.2 What is the legal standard used to define claim terms?

There is no specific legal standard used to determine the claim terms.

8.3 What evidence does the tribunal consider in defining claim terms?

The specification and drawings of the patent application.

9 Remedies

9.1 Are injunctions available?

Yes, both preliminary and permanent injunctions are available.

9.2 What is the standard to obtain an injunction?

Preliminary injunctions are available under Section 77bis of the Patent Act, but are rarely granted. A patent owner may under apply to the court for a preliminary injunction if there is clear evidence that someone has committed or is about to commit an infringing act.

Permanent injunctions are available under Section 77bis. The court has discretion to define and grant a permanent injunction to the patent owner as it may deem appropriate, provided that this is within the scope of the remedies claimed by the patent owner in the pleadings.

In practice, the Thai courts almost always grants a permanent injunction following a finding of patent infringement.

9.3 Are damages available?

Yes. In determining the amount of damages, the Central Intellectual Property and International Trade (IPIT) Court will consider all evidence presented by the plaintiff and all counterarguments presented by the defendant.

9.4 What types of damages are available?

The patent owner can seek damages for losses suffered as a result of the infringement.

If the patent owner's rights have been violated, the IPIT Court has the power to order the violator to pay compensation for damages to the patent owner in such amount as it considers appropriate, taking into consideration:

• the gravity of the damages;
• lost benefits; and
• necessary expenses incurred in enforcing the rights of the patent owner.

However, in practice, the amount of compensation awarded by the court tends to be small and insufficient to enable the patent owner to recoup both the economic losses caused by the infringement and the cost of litigation. This is because the court generally awards only actual proven damages – that is, the actual amount of damages suffered as a direct result of the infringing activities.

9.5 What is the standard to obtain certain types of injunctions?

As detailed above, there must be clear evidence that a person has committed or is about to commit an infringing act in order to obtain a preliminary injunction.

9.6 Is it possible to increase or multiply damages due to a party's actions?

No.

9.7 Are sanctions available?

No. Punitive damages or exemplary damages are not available in patent litigation in Thailand.

9.8 What kinds of sanctions are available?

Not applicable.

9.9 Can a party obtain attorneys' fees?

In a civil action, the IPIT Court has discretion to award costs and attorneys' fees against the losing party. In practice, however, the court will award only a very limited percentage of the attorneys' fees to the winning party.

9.10 What is the standard to obtain attorneys' fees?

There is no standard. Compensation for attorneys' fees will depend on the complexity, legal issues and duration of the case. The IPIT Court usually grants extremely limited compensation for attorneys' fees.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

The rights licensed may include the right to use (product or process), distribute, sell, possess for sale, offer for sale, import, export and manufacture the patented product or process.

10.2 What limits can a patent owner impose on a licence?

As per Section 41 of the Patent Act, to be valid and be enforceable against third parties, a patent licence must be registered with the Department of Intellectual Property.

The licensor may impose restrictions on the licensee. However, these restrictions should not be contrary to Section 39 of the Patent Act and corresponding ministerial regulations – in particular, Ministerial Regulation 25/1999 BE 2542. In general, a patent licence must not contain any provisions that unfairly restrict competition.

Ministerial Regulation 25/1999 provides a list of prohibited restrictions, including the following:

• restrictive provisions under Clause 3 that may be prohibited depending on their actual impact (grey list), such as tie-in restrictions requiring sourcing of material; obligations to hire specific personnel; sell-back provisions; restrictions on sale; export prohibitions; limitation of quantities; restrictions on conducting research; and unfair royalty rates; and
• prohibited actions under Clause 4 (black list), such as no-challenge clauses; patent grant-back provisions if no suitable remuneration is foreseen; payment of royalties after expiration of the patent; and any other anti-competitive behaviour.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

Yes, under the Patent Act and the Trade Competition Act 1999 BE 2542, a patent owner is prohibited from imposing on a licensee any condition, restriction or royalty that is unjustifiably anti-competitive.

For example, the licensor may not impose on the licensee any condition or restriction or royalty term that would unfairly limit competition, or require the licensee to pay royalties for use of the invention after the patent has expired.

Under the proposed amendments to the Patent Act, compulsory licences may be imposed on a patent owner if The trade Commission considers that it is guilty of anti-competitive behaviour.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.