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Beware the Patent trolls | BANGKOK POST

In our last few articles we delved into Thailand’s intellectual property system by examining how copyrights and trademarks are protected and enforced. This week we will look at the final pillar of intellectual property rights, patents.

A patent is a licence that confers a bundle of rights for a set time period, which include a right to exclude others from making, using or selling the invention protected by the patent, in exchange for disclosure. We had previously noted that patent is derived from the Latin patere, meaning “to lay open to the public”. Thus the law seeks to provide a set of exclusive rights, for a limited time, in exchange for the public disclosure of the invention. The principle is that by conferring this exclusive right to benefit financially from an invention, it will provide incentives to more inventors. While this is intuitively appealing and has great merit, there are arguments against the granting of patents.

The electric car maker Tesla opened up its patents for public use in June, announcing on their website that: “Tesla Motors was created to accelerate the advent of sustainable transport. If we clear a path to the creation of compelling electric vehicles, but then lay intellectual property landmines behind us to inhibit others, we are acting in a manner contrary to that goal. Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

Yet perhaps Tesla’s is a unique case, and one motivated by self-interest rather than altruism. For electric cars to occupy a prominent place in the world’s car markets there must be adequate infrastructure to support them (eg charging stations), consumer acceptance of the product and the unit costs of production must decrease. By providing their intellectual property to competitors Tesla may have decreased its potential market share, but it has increased the chances of there being a viable market at all.

The last troll you saw was probably in The Hobbit. But patent assertion entities, better known as “patent trolls”, are more threatening to your way of life than their mythical brethren. Patent trolls are in the business of buying up broad patents for the express purpose of suing infringers to obtain settlement payments or licensing fees. They neither produce nor invent anything, and they add to the costs of doing business for those who do. For example, an alleged patent troll has claimed that it has a patent that covers serialised downloadable podcasts and it is suing several of the top podcasting entities. The problem generally relates to software patents, and whether what is arguably just an abstract idea should be patentable. The big battle is currently occurring in the US, in the small, patent-troll friendly jurisdiction of Marshall, Texas, in particular. But the problem is global, which is another reason that the granting of patents requires careful consideration in each jurisdiction.

What is the law in Thailand? Patents in Thailand are covered by the Patent Acts (No 1), 1979, and the Patent Act (No 2), 1992, as amended by the Patent Act (No 3), 1999. In addition, Thailand is working to bring its patent system into line with international best practices by entering into (i) the Paris Convention for the Protection of Industrial Property; (ii) the Patent Cooperation Treaty (“PCT”); and (iii) the Agreement on Trade Related Aspects of Intellectual Property Rights.

What is patentable? Patents may be granted only for an invention: (i) that is new, (ii) that involves an inventive step (ie it is not obvious to a person ordinarily skilled in the art); and (iii) that is capable of industrial application (ie it can be made or used in any kind of industry, including handicrafts, agriculture and commerce). However, so called “petty patents” need not be innovative; they need only comply with the criteria at (i) and (iii).

What isn’t patentable? Under Section 9 of the Patent Act, inventions are not patentable if they are (i) naturally occurring in microorganisms and their components; (ii) scientific or mathematical rules or theories; (iii) computer programs; (iv) methods of diagnosis, treatment or cure for human and animal diseases; and (v) contrary to public order, morality, health or welfare.

Though scientific or mathematical rules and theories can be applied in our daily lives, they are considered un-patentable as they involve a purely mental process. Similarly, naturally occurring microorganisms are considered to be un-patentable as they are considered to be “products of nature”. For example, a microorganism involved in the brewing of beer is not patentable in Thailand.

How does one register a patent in Thailand? Similar to Thailand’s trademark system, Thailand operates under a “first-to-file” system, which means that should two similar patents be lodged around the same time, the first to apply will receive registration of the patent. Once granted, the duration of protection offered under Thai law is measured from the date of filing of the patent.

Patents can be lodged in Thailand through two possible avenues. Firstly a patent can be registered by a national application through the Department of Intellectual Property. Secondly, a patent can be registered by an application under the Patent Cooperation Treaty System (“PCT”). An application under the PCT system allows the owner of a patent to seek patent protection for an invention in Thailand and simultaneously in each of a large number of PCT contracting states by filling an “international patent application” at the Department of Intellectual Property or before the International Bureau of the World Intellectual Property Organisation.

Regardless of which of the above systems is chosen to register an invention, the application is required to include a detailed description of the invention to enable persons skilled in the art to understand and create such an invention; this is the “disclosure” obligation referred to above. The application must also be supported by an abstract, a title and drawings. The registration process can take up to eight years (though five years is typical) as it goes through two stages of examination by industry experts followed by a publication of designs and drawings.

Each different category of patent is given its own length of protection in Thailand. Patents of inventions are applicable to “new” inventions, such as the incandescent light bulb (patented in 1845), and such patents are protected for 20 years in Thailand with no possibility of renewal/extension. Petty patents are afforded protection for six years, and that can be extended/renewed twice for two more years. Design patents, such as designer sunglasses frames or the original Coca-Cola bottle, last 10 years from the filing date and cannot be extended.

Having examined the primary forms of intellectual property, our next article in this series will look at how effectively intellectual property rights are enforced and how Thailand’s intellectual property system is seen in the eyes of other countries.