Recognized Group Thailand Report Asian Patent Attorneys Association 58 th Council Meeting Jeju, Korea
Updates Paris Convention Patent Cooperation Treaty (PCT) Madrid Protocol
Number of Applications Classified by Thai-Foreigner 68.54% 81.87% 82.50% 96.52%
PCT Effect in 2010-66% over 2009-77% over 2008
Number of Registrations Classified by Thai-Foreigner
6
Trademark Cases filed with the Central IP&IT Court 7
Number of Patent Suits (both administrative suits and infringement suits) from 2005 to 2009 Number of oppositions to Patent Applications/patents from 2005 to 2009 Number of appeal cases on patent prosecution from 2005 to 2009 9
Future Revisions of IP Laws: Significant proposed amendments Patent Act 1. Partial Design 2. Business method invention 3. Reduction of time to request substantive examination 4. Post-grant Opposition and Trial Committee 5. No substantive examination and no pre-grant opposition for design patents 6. Request for inspection for petty patent 7. Substantive examination must be conducted before exercising the patent rights 8. Recordation of license agreement 9. Compulsory License of Drug Patent Four new categories are proposed to be added: License to a third party to import pharmaceutical products under drug patent into Thailand; License to a third party to manufacture and export pharmaceutical products under drug patent to foreign countries; License to ministries, bureaus, and departments of the government to import pharmaceutical products under drug patent into Thailand; License to ministries, bureaus, and departments of the government to manufacture and export pharmaceutical products to foreign countries. 10
Trademark Act Smells and sounds. Multiple-class applications. Allowed time to responses to official actions. License agreements. Renewal - Expiry grace period. Adjustment of Government fees. Copyright Act Exemptions of copyright infringement for disabled people. Copyright fees and copyright fee collection agencies Landlord s liability Internet Service Providers (ISP) liability 11
Supreme Court Decision No. 9733/2522 Dcon Products Co., Ltd. (Pltf) vs. Department of Intellectual Property (DIP) (Deft) Plank with rounded bottom design Plank with rounded-rectangle bottom design Plaintiff filed two Design Patent applications in Thailand in March 2001, one for a prestressed concrete plank with a rounded bottom and the other for a pre-stressed concrete plank with a rounded-rectangle bottom. Both are designed for use in concrete flooring systems in building construction. The DIP dismissed the Plaintiff s two patent applications in 2004, deeming the two designs as lacking novelty and being considerably similar to prior art. The Plaintiff appealed the DIP s decision to the IP&IT Court, which dismissed the Plaintiff s case, ruling that the products in question are in fact primarily influenced by their technical function, which is not the true intention of a design patent as provided by the Thai Patent Act. The plaintiff then appealed the IP&IT Court s decision to the Supreme Court.
Thai Patent Act o Section 3 design means any configuration of a product or a composition of lines or colors which gives a special appearance to a product and can serve as a pattern for a product of industry or handicraft. o Section 56 A patent may be granted under this Act for a new design for industry, including handicrafts.
How did the Supreme Court decide in this case?
The Supreme Court affirmed the judgment of the IP&IT Court. Reasons: Issue of public order The designs were created for the functional purpose of the concrete plank and are not the designs of any form or composition of lines or colors which give a special appearance to the ornamental aspect of the product as visible to the general public under Section 3 of the Patent Act. The adaptation and improvement of the concrete plank is therefore a functional improvement for which a design patent could not be granted