Patents & Trademarks
A brief overview of the situation regarding patents & trademarks in Thailand. Prepared in association with Tilleke & Gibbins, a leading law firm in Thailand, this is an extract from The Pharma Legal Handbook: Thailand, available to purchase here for GBP 75.
1. What are the basic requirements to obtain patent and trademark protection?
The “subject matter” contained in a patent application may be patented if the following requirements are met:
- Novelty: Before the filing date, the subject matter must not have been publicly used anywhere in Thailand, and the details of the subject matter must not have been published anywhere in the world.
- Inventive Step. The subject matter must not be obvious for a person with ordinary skills in the relevant technical field.
- Industrial applicability. The subject matter must be useful for industry (which includes commerce, agriculture, and handicrafts).
In addition to the basic requirements, there are particular subject matters which are not patentable by nature. Please refer to question 3 (below) for more details.
A trademark is registrable if the following requirements are met:
- It is distinctive;
- It is not prohibited under the Trade Mark Act, B.E. 2534 (1991), as amended, (refer to question 3 for more details); and
- It is not identical or similar to a Thai trademark already registered by a third party.
Further, sound identifiers and shapes of three-dimensional objects that are not the natural shape of the respective goods may be registered as Thai trademarks.
2. What agencies or bodies regulate patents and trademarks?
The competent regulators and registrars are the Thai Patent Office and the Thai Trademark Office, both operating under supervision of the Department of Intellectual Property, Ministry of Commerce.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
Pharmaceutical inventions are treated similarly to inventions in other technical fields. To be eligible for a patent, a pharmaceutical invention must meet the basic requirements per question 1 (above).
In addition to those requirements, the following subject matters are not patentable:
- Micro-organisms that naturally exist and their components, animals, plants, or crude extracts from animals or plants;
- Scientific and mathematical rules and theories;
- Computer programs;
- Methods for diagnosing, treating, or curing human or animal diseases; and
- Inventions that are contrary to public order or morality, public health, or welfare.
In the context of drugs and medical devices, (1), (4), and (5) are of particular note.
Generally, the following can be patented if it is novel, has an inventive step, and if it is industrially applicable:
- Polymorphic forms
- New therapeutic use of a known chemical compound (e.g., a second medical use)
- Combination and dosage form
- Methods for preparing medicinal products or related substances
A brand of medical products may be registered as a Thai trademark without a special requirement for medical products. The main restriction is that the mark must not be similar or identical to an international non-proprietary name (INN), which in fact is part of the basic requirement of distinctiveness.
In addition to the basic requirements (see question 1, above, for more details), the following marks, among others, are prohibited from trademark registration:
- State arms or crests, royal seals, official seals, Chakri dynasty emblems, emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments, or provinces.
- National flags of Thailand, royal standard flags, or official flags.
- Any mark which is contrary to public order, morality, or public policy.
- A mark which is identical with, or confusingly similar to, a mark that is well-known in Thailand, regardless of whether such well-known mark has been registered.
4. How can patents and trademarks be revoked?
The validity of a patent may be challenged by filing an invalidation claim with the Intellectual Property and International Trade Court (IP & IT Court). The IP & IT Court may revoke a patent if one of the following applies:
- The invention is not new, lacks an inventive step, or is not capable of industrial application.
- The subject matter of the invention is not patentable (see question 6.3, above).
- The patent applicant did not have the right, or was not eligible, to apply for the patent (e.g., was not the actual inventor and not the inventor’s assignee).
A trademark may be revoked by the Trademarks Board or the IP & IT Court if, among others, such trademark does not comply with the aforementioned legal requirements (questions 1 and 3, above); there is a continuous three-year period of non-use; or such trademark has become a generic reference to the product or service and thereby has lost its distinctiveness.
5. Are foreign patents and trademarks recognized and, if so, under what circumstances?
A foreign patent is not directly enforceable in Thailand. However, foreign patents are always recognized as prior arts which may be cited against a Thai patent’s validity.
A foreign trademark is not directly enforceable in Thailand. However, if such foreign trademark has attained the status of a well-known mark in Thailand (e.g., by use or promotion), it can be cited against a Thai trademark’ validity (see the question 3, above).
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
Thailand only recognizes physical protection of the documentation submitted to the Thai FDA as trade secret protection. In relation to data or information submitted to the Thai FDA by a drug originator to obtain approval to market a new drug, the Trade Secrets Act, B.E. 2545 (2002), as amended, recognizes that such data or information, in whole or in part, may amount to a trade secret in the form of a testing result, or other information regarding its preparation, discovery, or creation. In this case, the owner has the right to request that the Thai FDA maintain the confidentiality of the data submitted.
Upon receiving such request, the Thai FDA must keep such data confidential for a period of five years. However, the Thai FDA takes the position that it only has a duty to keep the drug originator’s data on file confidential and protect it from physical disclosure, while it can still rely on such data to assess and approve a subsequent generic application.
The above the trade secret protection applies to drug products only. Medical devices are not covered by this framework.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
Other than the basic requirements covered in question 1 (above) and prohibitions covered in question 3 (above), there are no further restrictions specific to drugs or medical devices.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
A patent or trademark licensing agreement must be recorded with the Thai Patent Office or Thai Trademark Office to be effective. The agreement will be reviewed under prescribed criteria. Notably, (1) a patent licensing agreement must not contain a provision that effects an unfair trade restriction; (2) a trademark licensing agreement must enable the trademark owner to control the quality of respective product or service; and (3) implementation of such license must not mislead or confuse the public.
There are no additional requirements for a foreign licensor.