Improving Patent Quality through Pre-grant Opposition in Thailand
| Author | Wanwipar Puasiri |
| Position | Registered Patent Agent and Instructor at School of Law, Bangkok University Bangkok, Thailand |
| Pages | 219-253 |
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Wanwipar Puasiri
Registered Patent Agent and Instructor at
School of Law, Bangkok University
Bangkok, Thailand
wanwipar@hotmail.com
Abstract: . Quality control in granting patents is a strong concern nowadays because
granting patents without effective quality control will lead to negative spillover effects on
competition, innovation, and the economy and adversely affect the public interest. More
often than not, patent quality suffers from a poorly conducted examination process arising
from lack of resources and information. Further, overburdened p atent offices are another
factor in low-qualit y patents. Pre-grant and post-grant opposition help in overcoming these
problems by allowing third parties or interested persons to monitor patentability subject
matters. Only innovations with valuable technology are worthy of r eceiving exclusive
protection under patent law. Because each type of opposition has its relative merits and
demerits, a country that wants to adopt the opposition process must take all factors into
account including its domestic patent law. Thailand is one of the d eveloping countries
located in South East Asia that has adopted a pre-grant opposition system. In place for
several years, it has seen plenty of oppositions and patent application appeals. This article
considers the efficiency of the pre-grant opposition process in decisions of the Thai Bo ard
of Patents. An in-depth examination and analysis undertaken in the article points to the fact
that although patent quality is in the eye of the beholder, pre-grant opp osition proceedings
in Thailand, when incorporated in legislation, increase patent quality, in r eturn bettering
innovation for the public benefit.
1. Introduction
Patent quality is of concern when granting a patent since patents can affect trade and competition in the
market in several ways. If a patent office grants a patent to an uncomplicate d invention, and the patent
holder abuses his patent right by forbidding others from reproductions of such inventions/products,
consumers who need to use such products will have to buy the product from only one vendor. Finally,
that vendor will dominate the market. It can set up price for goods and exclude competitors from trading
in the same market. The result is even worse in the case of pharmaceuticals because the sole owner of a
patented medicine can fix prices as high a s it wishes. When the price of medicine is high, poor o r even
many middle class people in developing countries cannot afford to pay for the drug. As a consequence,
people who cannot access the required medicine will fall sick and disease mortality rates will increase.
Therefore, patent quality has a tremendous influe nce on matters of public health and safety, with
particular ramifications on underdeveloped and developing countries. The patent opposition procedure
exists not only to protect the right of intere sted persons to claim novelty in their inventions but also to
allow patent office s to examine whether a n invention p ossesses novelty, an inventive step, and industrial
applicability. Moreover, the patent opposition process also considers patent quality, which can prevent
many problems that would otherwise ensue.
The patent opposition procedure was introduced in Thailand in 1979 following inter national treaties.
Thailand chose to adopt a pre-grant opposition proced ure, which has proved greatly useful to the patent
registration system in Thailand, as evidenced in several d ecisions of the Bo ard of Patents as explored in
the following. First, the author introduces the importance of patent quality and the patent oppositions
system in Thailand as background for an analysis of the trends and effectiveness of patent opposition in
numerous decisions of the Board of P atents and the Central Intellectual Property a nd International T rade
Court, including the Supreme Court. A thorough explanation of the pre-grant and post-grant opposition
system then follows prior to an overvie w of the patent system in Thailand. An understanding of the patent
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opposition system is essential in order to analyze how it benefits Thailand, especially regarding improved
patent quality. Consequently, readers will understand the system of patent opposition i n Thailand and its
advantage as a whole.
1.1 Introduction to Patents
A p atent is a monopoly right gra nted to the i nventor/applicant to protect various types of
inventions/discovery. The requirements for granting patents are laid do wn in TRIPS. Any member
country having enacted patent legislation must comply with the treaty. Generally, a patentable subject
must be a subject matter that (1) is novel/new, (2) has an inventive step/is non-obvious, a nd (3) is capable
of an industrial applica tion/useful.1 Once a patent is granted, it gives monopoly right against all o thers in
making, using o r selling the invention for the duration of the patent, which lasts a maximum of 20 years
from the date of the application.2 As for the general procedure in national or regional patent offices, once
a patent application is submitted, the offices shall (1) determine that the novelt y possessed by the
innovation as referred to in the application did not exist befo re the date it was filed a nd (2) confirm via
review of pr ior art3 that details appearing in the application are not similar to any information contained
in prior patents. Subsequently, ha ving passed the first stage, the approved application will pass to the
examination process.4 Examiners then consider the patentability of the application. If t he application
passes the examination proce ss, it will be published in patent journal as a granted patent. Third parties
may bring opposition either before or after the examination process depending on pa tent registration
system.
It must be noted that examiners play an i mportant role in examining the patentability requirements,
particularly as to whether the innovations are up to standard and valuable enough to monopolize a
particular field of science and thereby restrict the benefit to the public from the innovations for 20 years,
as the p atent for the Microsoft Windows
©
operation system’s automatic shutt ing down has done.
5
The
criteria o f “ having a n inventive step/non-obvious” and “capable of an industrial application/useful” are
very subjective and depend on the examiner’s opinion. A ce rtain innovation may be granted a patent in
one country but may be rejected in another. The opposition process eases the task of examiners by
allowing third parties to bring useful infor mation related to the app lication, such as prior ar t inaccessible
to under-resourced or o verburdened examiners. In order to improve the quality of a patent, the opposition
process is necessary.
1.2. Patent Quality: Causes for Concern
The patent applicants, their competitors, lawyers and patent offices are greatly concerned about p atent
quality since the gra nt of a patent has spillover effects on the e conomy, public interest, business
entrepreneurs, competition and development of innovations.
6
As a patent gives an absolute right to
patentees for 20 years, it can lead to monopoliz ation of inventions, which can ob struct the opportunity of
other innovators to receive patents for similar innovations. Low q uality patents should be revoked for
public interest.
*The author feels greatly indebted to the Legal Office of the Department of Intellectual Property, Ministry of
Commerce of Thailand who has kindly provided all recorded decisions of the Board of Patents from its beginning
until now to the author.
1
Regarding th e differences in language between requirements of patentability in US P atent law and UK Patent Act
See P. Torremans, Holyoak & Torremans Intellectual Property Law, 5e, Oxford: Oxford University P ress, 2008, p.53,
and The Patents Act 1977 (as amended) accessed 14 December 20 11,
and United States Patent and Trademark O ffice (USPTO), Patentability,
2
W. Cornish and D. Llewelyn, “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 5e,
London: Sweet & Maxwell, 2003, p.7
3
“Prior art means anything published b efore a filing date of patent which describes the same or a similar i nvention.”
(Arnound Engelfreit, an IT lawyer)
4
C. Dent, Decision-making and quality in patents: an exploration [2006] 28 EIPR 381 at 381
5
Gruener, Wolfgang, ConceivablyTech, “Microsoft Patent Operating System Shutting Down”, September 1, 2010,
accessed 20 March 2012
6
T.H. Stanton et al., US Patent and Trademark Office: Transforming to meet the Challenges of the 21st Century,
Washington, DC: National Academy of Public Administration, 2005 p. xxii
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Jacques Combeau concl uded the definition of quality patents as “valid patents which may be reliably
enforced in court, consistently expected to surmount validity challenges and dependably employed as
technology transfer tool”.
7
As such, patent s of low q uality generally do not involve inventive
technological advancements, have the propensity to face legal challenges,
8
and cannot be reliably
enforced in court. Moreover, low quality patents exploit the patent system by enabling the filing of low-
probability but high-cost applications, leading to private enforcement schemes and revocation.
9
The
consequences of low patent quality adversely impact the public interest due to costs involved in the
granting of low quality innovations, raising monopolization of innovations, the degradation of
technological impact and the cost of litigation involved in invalidating such patents. Consumers generally
pay the cost. The economy al so suffers since low-qua lity patents limit competition. Nonetheless, private
interest tends to override public interest, negating the very purpose o f the patent system.
As mentioned by Malackowski and Barney, “Patent quality is often believed to be in t he eye of the
beholder”.
10
It is difficult to prove whether patent quality is high or low given that people have different
standards in judging novelty. Nonetheless, merely trivial improvements and dubious inve ntions
demonstrate low-quality patents. Examples of infamous low-quality patents are those for “one-click
online payment system”
11
and “peanut butter and jelly sandwich.”
12
If not obvious, these inventions show
steps whose inventiveness is dubious.
Another method to evaluate patent quality is to compare the ratio of patents granted to patent
applications in national or regional offices. Data analysis seems to indicate that patent offices around the
world are approving a higher number of applicatio ns than in the past.
13
For example, the USPTO official
statistics from 2001 to 2004 show that it has approved 70 percent of applications
14
a nd the number of
patent applications has risen every year, with a notable increase in 2010.
15
The number of patents granted
in Japan also increased by 23 percent from 2007 to 2010.
16
With the use of accelerated patent examination
systems in many patent offices, such as the US Patent and Trademark Office (USPT O) and the Japan
Patent Office (JPO), the issue of patent quality has become crucial. Moreover, the USPTO spends
approximately 6 1 months in total on average patent application for the whole patent procedure.
17
More
than 1.2 million applications were pending at the end of 2009.
18
The USPT O devotes a great amount of
time to the examination process to make sure that the patents it grants are worthy. The opposition process
can help the workload of examiners and shorten the examination period by serving as the first scan for
prior arts to test for novelty and inventive step patentability.
Below is a graph demonstrating the percentage of patents granted from 2001 to 2010 in three major
patent offices: the USPTO, the JPO, and the European Patent Office (EPO). Apart from the EPO, the
grant of patents is on the rise. From 2005 to 2010, the JPO continuously increa sed its grants of patents, a s
7
Jacques Combeau, Patent Quality: What do you mean? Amsterdam: FICP I/AIPLA Colloquiu m, 2007,
8
T.H. Stanton, op. cit., p.62
9
Wagner, R. Polk, Understanding Patent Quality Mechanisms, Draft of January 6, 2009, <
http://www.ftc.gov/bc/workshops/ipmarketplace/apr17/docs/rwagner2.pdf> accessed 15 December 2011
10
J. E. M alackowski and J.A. Barn ey, What is Patent Quality? A Merchant Banc’s Perspective, Les Nouvelles, Jun e
2008, p. 123
11
T.H. Stanton, op. cit., p.62
12
J. E. Malackowski and J.A. Barney, op. cit., p. 124
13
J.R. Thomas, Does Patent Quality Matter? Washington, DC: IPO Conference, 2004, p .1
cfm&ContentID=8712> (14/12/2011)
14
J.R. Thomas, op. cit.
15
In 2010, the number of patent granted by the USPTO was approximately 46.96% of all patent applications. U.S.
Patent Statistics Chart Calendar Years 1963 – 2010, < http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm>
accessed 14 December 2011
16
A calculation of patent registrations compared to patent applications per year according to statistics provided by the
Japan Patent Office. Patents were granted approximately 27% in 2001, 29% in 2004, 34% in 2006, 42% in 2007, 45%
in 2008, 55% in 2009, and 65% in 2010
Outline of the Annual Report 2011, Part 5: Statistical Data, Tokyo: Japan Patent Office, 2011
2011
17
S.M. Hankins and D.C. Ohly, Patent Reform 2011: The M ost Significant Change in Patent Law in 50 Years,
Intellectual Property Group Update, Schiff Hardin LLP, 29 September 2011
18
S.M. Hankins and D.C. Ohly, op. cit.
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shown in the steep rise in the graph below. Its grants of patents i n 2010 were approximately 30 percent
higher than those in 2005. From 2007, the USPTO has increased its grants of patents as well.
USPTO, JPO, and EPO total grant of patents in
percentage
(Sources: U.S. Patent and Trademark Office, Japan Patent Office, and European Patent Office)
19
Below is a chart demonstrating the number of patent applications and patent grants by one hundred
and ten national and regional patent offices around the world from 2001 to 2010, as gathered by the
World Intellectual Property Organization (WIPO). As we see from the chart, the numbers of patent
applications and patent grants are increasing. On one hand, the trend may re flect more research and
development by innovators applying for patents. On the other, the increase in t he rate of patents granted
may be a sign that patent quality is suffering.
WIPO patent registration in 10 years
(Source: WIPO Statistics Database)
20
Therefore, the regis tration and examination system for granting patents needs good resources and
regular i mprovement to maintain the efficient granting of high quality patents and to increase value in
excess of what patents cost society.
21
Patents must only be granted through effective quality control
procedures. Most countries have introduced the opposition procedure to control patent quality, allowing
third parties to object to an ap plication regarding its patentability. Pre-grant opposition can be filed once
19
European Patent Office, European patents and patent applications - 2010 statistics, < http://www.epo.org/about-
us/statistics.html> accessed 4 January 2012
20
WIPO, Statistics on Patent, < http://wipo.int/ipstats/en/statistics/patents/> accessed 4 January 2012
21
R.P. Merges, As Many As Si x Impossible Patents Before Breakfast: Property Rights for Business Concepts and
Patent System Reform [1999] 14(2) Berkeley Technology Law Journal 577 at 584
Improving Patent Quality through Pre
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applications are published, while post-grant o pposition can be filed during a certain period after grant of
patent. Both systems have their advantages and disadvantages.
2. Patent opposition system: Pros and Cons
Pre-grant and post-grant oppositions can overcome the p roblem of insufficient resources and information
experienced by patent offices b y allowing third parties to share prior art and other relevant information,
including physical evidence as well as the testimony o f experts, to determine novelty at the time of filing
a patent applicatio n.
22
Opposition pr ocedures also help to balance the interests of competito rs, applicants
and the public;
23
ensure that patents are granted only for well-qualified patentable inventions; reduce un
patentable applications; and discourages fraudulent and repetitive claims. Que stionable patents are
revoked in case of post-grant opposition. Individuals and s mall inventors generally benefit from
restricting the grant of bad quality patents to large enterprises.
24
Additionally, the opposition procedure creates incentive a mong third parties and the applicant’s
competitors to make the opposition application accurate and convincing.
25
Successful patent oppo sition
lessens the burden upon patent o ffices to examine the validity of patents, has the prospect of greatly
reducing patent litigatio n, and can increase social welfare.
26
The system can prevent litigation in the first
place as well as avoid giving rise to innovation-inhibiting licenses i n technolo gy in the low quality
patents. Hence, there seem to be more gains than losses from the use o f the opposition system.
27
2.1. Pre-grant Opposition
Pre-grant opposition is a legal procedure by which third parties oppose a patent application after its
publication but before the grant of a patent. The inventive step in the application is disclosed to the public
at the time o f publication in a patent gazette as well. A patent office offering a pre -grant opposition must
manage publication well to reduce the chance that others will make the sa me or similar in ventions before
the applicant receives a patent. In addition, opposition allows third parties to challenge applications
regarding patentability. The system ensures that t he examiners are aware of essential infor mation required
for examining patents. Third parties can oppose the application on the basis of any p oint that examiners
have overlooked. Countries that use the pre-grant opposition system include India, Brazil, Germany, New
Zealand and Australia.
28
The United States is the latest country to join the pre-grant opposition system
following the America Invents Act 2011. Below are some costs and benefits of the pre-grant opposition
system.
2.1.1. Costs
Lengthy period
The typical criticism of the pre-grant opposition is that it prolongs grant of patent. The long wait for the
grant of Patent can make patentees and their licensee s encounter tremendous loss through uncertainty. For
example, in the pharmaceutical industry, applicants invest remarkable amounts of money to research
22
R.P. Merges op. cit. p.613
23
T. Adam and M. Spence, Opposition in the European Patent Office: An Underestimated Weapon? London &
Oxford: Olswang/OIPRC, 2001, p.6, accessed 14
December 2011
24
15 N.B. Zaveri, Effective Mechanisms to Challenge the Valid ity of P atent (Pre-Grant & Post-Grant Opposition
Revision of the Presumption of Validity of Patent), Geneva: WIPO, 2006
accessed 14 December 2011
25
M.A. Lemley, Rational Ignorance at the Patent Office [2001] 95(4) Northwestern University Law Review 1525
26
B.H. Hall, S.J.H. Graham, D. Harhoff, and D.C. Mowery, Prospects for Improving U.S. Patent Quality via Post-
grant Opposition, Working Paper No. W9731, Cambridge, MA: NBER, 2003, p.13
27
B.H. Hall, S.J.H. Graham, D. Harhoff, and D.C. Mowery, op. cit.
28
P.C. Gandhi, TRIPS and Development of IP Laws in India: Specific Reference to the Pharmaceutical Sector,
Conference on Development and Intellectual Property (IP)Sep 01-03, 2008, Geneva: WIPO, Goa
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chemical combinations for potential drugs but cannot pr oduce the drugs for sale unless they have received
patents.
29
Moreover, patent applicants may become dissati sfied with t he system if competitors use it as a
business strategy to unnecessarily delay grant of patent.
Disclosure of innovations
Another di sadvantage of the pre-grant opposition is that applicants must disclose the pate ntable
technology in innovations in order for the patent office to publish the application for potential third party
opposition. The disclosure makes applicants’ secrets available to the public and makes infringement
easier especially given there is no patent granted yet.
More financial support for patent offices
Patent office unavoidably requires more financ ial support because examiners must thoroughly check
information in the opposition as well as p rior art in other patent offices and elsewhere in the world. The
fee and wages of examiners are also counted.
30
Effects of unsuccessful opposition
A pre-grant opposition system has the p otential to reduce the cost of litigation. However, if the opposition
is unsuccessful, the dispute may go to court anyway. At the end, the system might be regarded as useless
and make third parties expend more time and money than had they just brought t he case straight to the
courts.
31
2.1.2 Benefits
Prevention of grant of bad patents
Pre-grant opposition can prevent low-quality or questionable patents. Consequently, the economy will not
be harmed and competition among producers will continue fairly, with the social cost balanced since
quality patents are being granted. Patentees for quality in ventions also deserve to have good protection for
their hard work as well as to receive proper returns.
Prevention of abusive applicants
The pre-grant opposition protects the abuse o f the patent system by considering a pplications until they are
spotless and ready to be released for public use. The pre-grant opposition can discourage companies from
filing applications for patents with slig htly different features, such as a different color of the pill bottle for
patented medicine near expiry, as has happened in the United States.
32
Low cost
Pre-grant opposition is a cheaper and faster procedure than having litigation in court.
33
The cost savings
are considered to be the strongest point of the pre-grant opposition, allowing third parties the chance to
invalidate the applications without having to spend a great deal of money a nd time in court.
Support for innovators
Opposition can help individual inventors, smaller sized companies and the public, especially in regard to
the pharmaceutical industry.
34
Since a patent office gives lengthy consideration to patent applications of
large companies before patents is granted, expensive drugs from these companies will not be marketed
29
N.B. Zaveri, op.cit.
30
R.P. Merges, op.cit., p.610
31
M.A. Lemley, op.cit., p.152
32
N.B. Zaveri, op.cit.
33
P.C. Gandhi, op.cit.
34
N.B. Zaveri, op.cit.
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until the patent is granted, w hich presents an opportunity to save millions of lives, particularly those of
the poor who can find alter native drugs at a cheaper price while the patents are in process. A ver y good
example is the case of Novartis’ app lication for a patent for Glivec, which after being under consideratio n
for many years was finally rejected by Indian Patent Office, enabling six generic manufacturers to
continue producing medicine treating blood cancer and thereby relieving patients from the burden of
high-priced medicines.
35
2.2. Post-grant Opposition
As mentioned, post-grant opposition is a legal procedure in which third parties oppose the grant of a
patent within a certain period after it is granted. There are many countries whose patent registration
systems use the post-grant opposition, including China, South Korea, Brazil, and India.
36
T he EPO has
also used the system for a long time. Art. 99 of the Europ ean Pate nt Convention renders that any
opposition to a patent must be made within nine months from the publication of the grant of pate nt. The
US has just adopted the nine-month post-grant opp osition proceeding in its reform law.
37
The law a llows
any challengers to oppose a patent that should not have been issued in the first place within nine months
after publication. The US Congress has just iss ued legislation in the America Invents Act that improves
the fu nctioning of US patent system, updating it to a first-inventor-to-file system.
38
T he system allows
third parties to submit information related to a pending application. A di sclosure of prior art will b etter
positions the examiners to grant only high quality patents.
39
However, anyone filing an opposition must be aware of the opposition timeframe. If the opposition
period is over, filing suit is the only way to cancel a patent, exploiting time and expense of related parties
unnecessarily, not to mention the adverse e ffect on the applicant a nd on societ y when tech nology cannot
be used and protected in due time. The p ost-grant opposition can maintain the intere st of related persons,
including competitors, eve n after the grant of a patent. The process, nevertheless, has both costs and
benefits. Any country that wishes to adopt a post-grant opposition system should conduct due diligence,
researching estab lished systems and comparing them thoroughly. Below are some costs and benefits of
the post-grant opposition system.
2.2.1. Costs
Undermines the credibility of patent system
The system of post-grant opposition can be understood as an attempt to correct patents even after the
grant. This can create uncertainty and confusion in patentees about the system of intellectual property
35
V. Gill, Novartis loses landmark Indian patent law case, London: Royal Society of Chemistry, 2007
accessed 14 December 2011. However, the case is beginning to force India to have pre- and post-grant opposition in
harmonization with the TRIPS. And S. Chaudhuri, the larger implication of the Novartis-Glivec judgment, Economic
and Political Weekly, 27 April 2013 .epw.in/commentary/larger-implications-novartis-glivec-
judgment.html> accessed 27 April 2013
36
Park, Ch an, “Patent challenges in India and beyond”, Intellectual Property Rights and Vaccines: Promoting R&D
and Production in Developing Countries, Conference in Tokyo, Japan, 17/11/ 2009 <
http://www.who.int/vaccine_research/documents/IVR_IPR_Tokyo_Session6_Park_presentation.pdf>accessed 2
January 2012
37
The America Invents Act, Promoting American Innovation, Creating American jobs, growing America Economy,
< http://leahy.senate.gov/imo/media/doc/PRESS-Summary-OnePager-FINAL.pdf> accessed 14 December 2011
38
The America Invents Act, op. cit.
39
The America Invents Act or Patent Reform Act 2011 is introduced by Senator Leahy. It adopts the first-to-file
system for patent application and enhances damages and compensation for patentees. The law is the first major
overhaul of US patent law in decades. Some view that the law favors big corporation and lessen opportunity for
individuals and small companies.
For more information, see the bill at ;
Patent Reform Act of 2011: An Overview < http:/ /www.patentlyo.com/patent/2011/02/patent-reform-act-of-
2011-an-overview.html>; and
Lee, Timothy B., Mostly po intless patent reform bill goes to Obama for signature, < http://arstechnica.com/tech-
policy/news/2011/09/mostly-pointless-patent-reform-bill-goes-to-obama-for-signature.ars>
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rights.
40
Also, it can undermine the faith of the public and investors in how patents are issued and in the
enforceability of property rights granted by patent offices.
41
It is a lso awkward for pat ent offices to
correct their decisions about patents that have just been granted.
Abuse of the system by competitors
The competitors of patentees can use the post-grant opposition as a means to ruin credibility of the patents
or to obstruct the patentees. The competitors may oppose without disclosing their id entity by the use of
“straw man” method,
42
which abuses the opposition procedure.
Innovators’ incentive
No one wants to create innovations with no intellectual property right protection. The patent registration
system protects innovations from bein g used, re-produced or sold by the others as well a s giving
innovators incentive to produce more works. However, the post-grant opposition process can discourage
innovators, since their patents have the possibility of being revoked by the opposition even after they are
granted.
More support for patent offices
From a patent office’s point of view, although opposition is cheaper for third parties than court litigation
because the whole proceeding is conducted within the patent office with set fees and rules, patent offices
need more financial support to conduct the whole procedure. Staff and examiners also face a greater
workload.
Time limit
Post-grant oppositio ns must be filed within set time limits. For example, third parties have nine months
from the publication date of patent in the EPO a nd USPTO opposition systems.
43
Afterwards, third parties
have to bring a di spute to court. Post-grant opposition cannot provide assurance that there will be no
litigation, which may make third parties question whether to pursue litigation instead. Finally, a system
offering post-grant opposition may lead to more litigation than one without such an option, as if there
were no post-grant opposition proceeding at all, third parties could u se the pre-grant opposition
proceeding or go to court directly. They would not have to l itigate against the grant of patent or appeal the
decision of the opposition board.
2.2.2. Benefits
Improvement of patent quality
Post-grant oppositio n can improve patent quality by reducing litigation costs a nd by ensuring only high
quality patents are granted, thereby protecting the public interest and strengthening c ompetition and the
economy, with only quality patented products entering the market.
Friendly atmosphere
If an opposition fails, many systems allow third parties to proceed to the revocation p rocess. Third parties
may save some expense from defending themselves in patent infringement lawsuits since the opposition
process is cheaper than litigation in court. The opp osition atmosphere is also less strained than revocation.
40
AMPICTA, Post-Grant Patent Enforcement Strategies, Canberra: AMPICTA, 2006,
41
J.P. Kesan, Carrots and Sticks to Create a Better Patent System [2002] 17(2) Berkeley Technology Law Journal
763
42
M. Spence, op.cit., p.19
Straw man method is referred to someone providing anonymity to any company for opposing a patent.
43
Art. 99(1 ) of the European P atent Convention < http://www.epo.org/law-practice/legal-
texts/html/epc/2010/e/ar99.html > accessed 15 December 2011
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Patentees will not lose face at the opposition stage because the patents have only just been granted and
have not yet been marketed widely.
44
Benefit to individual inventers and small companies
Post-grant opp osition can delay the granting of a patent. Normally large companies that have sufficient
research and technology resources and funds have a better chance to receive a patent for their innovations
than individual inventers and small c ompanies who lack of these resources and funds. The dela y of patent
gives them a chance to develop their innovations and receive a patent of their own during the prolonged
opposition period.
As describ ed, there are both costs and benefits for each patent opposition system. One system may
suit a particular country while another may not. Thailand as a developing country in South East Asia has
chosen to use the system of pre-grant opposition for its patent registration for some time. The forty-year
plus histor y of the pre-grant opposition system in Thailand surely offers something about it s efficiency
and reliability for Thailand. Also, it may provide insight for other developing countries whose innovation
and development of technology are still behind developed countries even as their patent law faces
pressure to align with the sta ndards of developed countries. In the following section, the a uthor presents a
thorough overview of the patent system in Thailand before analyzing key decisions of the Board of
Patents.
3. Patents in Thailand
Thailand enacted its current patent law almost four decades ago. Over time, the Thai patent system has
improved gradually. Anyone wishing to have a protection for his inventio n or its process or a d esign must
register for patent at a patent office in the Department of Intellectual Property, Ministry o f Co mmerce.
While the patent registration procedure in Thailand has its unique features, it al so complies with
minimum standards set by rel evant international treaties. There are three categories of patent registration
in Thailand: invention/process paten t, design patent, and petty patent. Each type of patent has dif ferent
requirements, procedures and protections. Thailand, like many countries, also has a pre-grant opposition
system, as discussed above. The pre-grant opposition system allows any interested person to be able to
oppose a registration of a patent within 90 days after a publication date of a patent application. If an
opposition is rejected by the Director-General of the Department of Intellectual P roperty, an appeal to the
Board of Patents can be made. However, if the Board of Patents rejects the ap peal, interested persons are
still eligible to appeal the decision of the Board of Patents to the Central Intellectual Property and
International Trade Court within 60 days after an announcement of the Board’s decision. Even better, if
the Court rejects the appeal, the Intellectual Property and International T rade division of the Thai
Supreme Co urt serves as further recourse. Finally, if these measures fail and the patent office grants a
patent to an applicant, the revocation process may invalidate the pate nt.
From this point of view, it is not wrong to say that T hailand has a good systematic patent law and
strong patent opposition system. Thai patent system is worthy of study as an example of a patent
opposition system that can improve patent quality domestically.
3.1. History of Patents in Thailand
The Kingdom o f Thailand is a de veloping country i n South East Asia. I n the past, the co untry had ne ver
had a patent law or any public order similar to said law. The Siamese or Thai people were concerned
more about living by agriculture and livestock. A century ago, there was an atte mpt to issue a law after
the “Law on Patents” of England in the era of King Rama XI.
45
Nevertheless, the first attempt failed.
Several attempts to enact a patent law followed, but all atte mpts were rejected or forgotten due to the
World War II and insufficient expertise in patent law. Moreover, a belief that a patent la w would benefit
foreigners more than the T hais or that the law would restrict Thais from accessing innovations and
44
M. Spence, op.cit., p.24
45
Y. Puangraj, Patent: Law and Practices, Bangkok: Bo-Pit Publishing, 1990, p. 7
W
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228
technology also discouraged furtherance of legislation.
46
However, the atte mpt to enact a patent law
succeeded in 1979 when the Parliament passed the Patent Act, drafted by the Ministry of Co mmerce as
the Patent Act B.E. 2522 (1979). The draft was written following the Paris Convention, allowing
foreigners to have nationa l treatment.
47
For example, a fore ign application could be filed in Thailand
twelve months after the first applicatio ns in other countries and still be regarded as novel. Albeit Thailand
was not yet a party of the Convention at that time, the Patent Act set same standard for people of other
nations of the Convention with the people of Thailand. Debate follo wed as to whether the Patent Act was
beneficial for the country. .
In 1992, Thai Patent Act B.E. 2522 was amended for the first time as a sequence of pressures by
developed countries especially from the U.S. The U.S. wanted Thailand to raise the standard of patent
protection for American pharmaceutical companies. If Thailand did not amend t he Patent Act, the U.S.
indicated it would obstruct all commercial activities with Thailand.
48
Therefore, some provisions were
removed while some provisions were changed to suit developed countries. For example, pharmaceutical
companies could register their drugs for patents after the amendment, and a period of patent protection
was increased to twenty years from fifteen years.
49
The opposition procedure was introduced for the first
time in this amendment as well.
Thai Patent Act was amended again in 1999 to be in accordance with the Agreement on Trade Related
Aspects of Intellectual Property Rights (TRIP S). Since TRIPS set minimum standards in 1994 for many
of the intellectual property regulations of World Trade Organization members, Thailand as one of the
members was obliged to apply these provisions. Generall y, the third version of the P atent Act induces
incentive of patentee incredibly. For example, provisions for petty patent were added in Chapter II I bis –
Petty Patent while provisions for phar maceutical patent in Part VII – Measure for Pharmaceutical P atent
were r emoved.
50
The Department of Intellectual Property introduced a draft for the third amendment in
2006 but ratification has languished given controversy over a number of ite ms, including a provision
about removing the pre-grant opposition system and introducing a six-month revocation system. The
argument continues as of the drafting of this article.
3.2. Overview of Patent Registration in Thailand
The patent registration system in Thailand came into being after its trademark registration system. During
the reign of King Rama VI, the Trademark Registration Unit was established in 1910 under the Ministry
of Agriculture to protect Thailand’s trademarks and trade names in global co mmercial activity.
51
Thirteen
years later, the King co mpelled the House of Lords to issue a royal command to establish the Department
of Commercial Registration. The Department formed the Patent Investigation Division to hold
responsibilities on patents in 1963 during the reign of King Rama IX, the current king.
52
The patent
registration system was fully established in 1979 when the Patent Act of Thailand was enacted . Rules and
regulations including fees for patent registrations were announced as a co nsequence.
As mentioned above, the Patent Act was amended twice following international treaties and forces of
developed countries. The amendments made the Act and registration system accord with the pa tent
section in TRIPs.
53
Therefore, the patent registration system in Thailand is similar to those of the other
TRIPs member countries. However, differences can ar ise from undefined provisions in TRIPs. For
example, the patent opposition system in member co untries may vary since there is no opposition
46
M. Pittayabhorn, Explanations of the Literary and Arts Protection Act, Patent Law and Trademark Act, Bangkok:
Ramkamhaeng University Press, 1997, p. 4
47
C. Hemarachata, Specification of Intellectual Property Law, 3
rd
edition, Bangkok: Nititham Publishing, p. 129
48
C. Hemarachata, Specification of Intellectual Property Law, 3
rd
edition, Bangkok: Nititham Publishing, p. 129
49
C. Anupappun, History of Patent Law in Thailand, Pamphlet of the Department of Intellectual P roperty, Issue 1,
No. 1, March 1993, pp 2-3
50
The Department of Intellectual Property, Draft of the Patent Act B.E. … (in Thai), <
http://www.ipthailand.go.th/info/index2.php?option=com_docman&task=doc_view&gid=208&Itemid=43>(11/6/201
2)
51
the Department of Intellectual Property, History of the Department of Intellectual Property, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=category§ionid=17&id=104&Itemi
d=183&lang=en>(11/6/2012)
52
Ibid.
53
Section 5: Patents of Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)
Improving Patent Quality through Pre
-
grant Opposition
in Thailand
229
provision mandated in TRIP s. While Brazil and Australia use a pre-grant opposition system, South Korea
and the US have chosen post-grant opposition.
In the Thai patent registration system, there are three types of patent registration: invention, design
and petty pa tent. Each type represents varied protections and requires different qualifica tions. Inventions
that can apply for an invention patent must be novel, have an inventive step and be industrial applicable.
54
An invention patent has a twenty-year protection from the date of filing an applicatio n in the cou ntry.
55
A
design patent protects an industrial design for ten years from the date of filing applicatio n in Thailand.
56
A
registered d esign patent must be new and applied for industry and handicrafts.
57
A petty patent requires
that an inven tion must be new and industrially applicable,
58
and is pro tected for 6 years from the date of
filing the application in the country.
59
Anyone who wishes to apply for patent registration must choose a type of patent that suits his
invention or design. The basic facto rs used to consider are (1) if the subject matter is created mainly for
usage without or with mi nor aesthetic value, the a pplicant should apply for an invention patent or petty
patent for the s ubject matter; but (2) if the subject matter is created to appeal as decoration with aesthetic
value taking priority over usage, applicants should seek a design patent.
60
Therefore, to choose whether an
invention is suitable for invention patent or petty patent one must look at the complexity of the invention.
If the invention has a complicated technique and can be industrially reproduced, the invention is s uitable
to be registered as an invention patent.
61
Nonetheless, a pett y patent app licant may switch to an invention
patent if the patent has not yet been granted, as might be desirous for an application anticipated to be
rejected for lacking an inventive step. In the same way, an applicant for a petty patent may instead file for
an invention patent if it is determined that the invention meets the criteria. This can happen any time
before the registration of the invention or before the p ublication of the application under Section 28, as
the case maybe.
62
However, there is no provision for a design patent application to change to an invention
or petty patent application e ven when the design functio ns as an i nvention.
63
The design p atent
application must be withdrawn in order to file a new invention or p etty patent application.
64
3.2.1. Registration of invention patent
As for invention patent registration in Thailand, in short, an application must include a patent application
form, filing fee, description of the invention, clai ms, abstract, drawing and any other documents as
available.
65
After filing the application, if the officer finds minor errors in the application, he will notify
the applicant or an agent of the applicant to correct those errors. The correction shall be done within 90
days from the date of noti fication. If the applicant needs more time, he shall appeal for the extension. If
there is no error in the application or the error is alr eady corrected , the officer will notify the applicant
twice to pay a fee for publication within 60 days from the notification date. Failing to pa y a fee will be
deemed as abandonment of the application. If the publication fee is paid in a due time, the publication o f
54
Section 5 of Thai Patent Act B.E. 2522
55
Section 35 of Thai Patent Act B.E. 2522
56
Section 62 of Thai Patent Act B.E. 2522
57
Section 56 of Thai Patent Act B.E. 2522
58
Section 65 bis of Thai Patent Act B.E. 2522
59
Section 65 septies of Thai Patent Act B.E. 2522
60
The Department o f Intellectual Property, Patent Registration Process, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=168&Itemid=205&lang=en>
accessed 12 June 2012
61
Ibid.
62
Section 65 quarter of Thai Patent Act B.E. 2522
63
N. Indananda and S. Taweepon, “Functionality in Thai Patent Law”, 8 November 2010, Tilleke & Gibbins,
Available at
64
See Dcon Products Co., Ltd. v. the Department of Intellectual Property (DIP) (The Supreme Court of Thailand,
Judgment No. 9733 /2552). The plaintiff wanted to register a design of an invention as a design patent. DIP rejected
the application due to lack of novelty. The first court dismissed the case but the plaintiff app ealed to the Supreme
Court. The Supreme Court found that the invention itself had an adapted design improvement which reflected on
better capability o f the invention. Therefore, the invention had novelty because of its functional design. As a result,
the Supreme Court opined that the plaintiff to register a utility patent for an invention, rather than a design patent.
65
The Department of Intellectual Property, Patent Registration Process, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=168&Itemid=205&lang=en>
accessed 12 June 2012
W
.
Puasiri
230
the application will be published for 90 days for opposition by any interested person under conditions: (1 )
the application does not comply with the patent law; or (2) the inventio n belongs to opposing party.
66
If the publicized application is not opposed during the 90 days after publication, the applicant must
proceed to the examination process. The request for an examination must be submitted within 5 years of
the date of publication together with the examination fee. But if the application is opposed, a competent
officer will consider the opposition and counterstatement by the applicant to determine whether the
invention belongs to the applicant or not. Subsequently, the officer will report on his decision to the
Director-General and send the decision to both the applicant and opposing party. The decision must either
reject the opposition or nulli fy the application. If the officer decides to reject the opposition, the applicant
proceeds to the examination p rocess, in which the subject matter is compared to prior art and assessed for
its qualifications as specified by the law. A qualified application will be granted a patent after paying the
registration fee; an application that does not meet the qualifications will be nullified.
Flow Chart of Examination Process for an Invention Patent Applicat ion
(Source: Department of Intellectual Property)
67
3.2.2. Design patent registration
The design patent procedure is a bit different from that o f an invention patent. The design patent
opposition system adopts opposition provisions from t he invention patent to ensure that the granted
design patent has all qualities required by t he law. Once submitted, a design patent a pplication will have a
preliminary examination for minor errors. If there are any errors, the applicant will be n otified to correct
them. Correction shall be done within 90 days after the date of notification. If the application does not
have any error or the errors have already been corrected, the applicant must pay the fee for p ublication of
the application. The officer will notify the applicant twice of the need to pay for publication fee within 60
days from the notification date. Failing to pay a fee will be deemed as abandonment of the app lication.
66
The Department of Intellectual Property, Patent Registration Process, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=168&Itemid=205&lang=en>
accessed 12 June 2012
67
The Department of Intellectual Property, Flowchart featuring for a patent for invention application, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=1076&Itemid=205> accessed
16 June 2012
Improving Patent Quality through Pre
-
grant Opposition
in Thailand
231
Interested perso ns have 90-day period to oppose the application under the following conditions: (1) the
application does not comply with the patent law; or (2) the invention belongs to an opp osing party.
68
Qualified application will be granted a design patent; while, disqualified application will be nullified.
Flow Chart of Examination Process for a Product Design Patent App lication
(Source: Department of Intellectual Property)
69
3.2.3. Petty patent registration
Finally, petty patent registration mirrors the aforesaid p atent procedure until the error notification process.
If a petty patent applicatio n does not have any errors or an applicant has already corrected those errors,
the applicant will be noti fied to pay a re gistration fee. There is no opposition or examination process
before the grant of petty patent. But after the grant of a petty patent, any interested person c an submit a
form requesting the patent be examined as to whether it complies with the law. I f examiners find that the
petty patent is noncompliant, the petty patent will be nullified.
70
68
The Department of Intellectual Property, Patent Registration Process, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=168&Itemid=205&lang=en>
accessed 12 June 2012
69
The Department of Intellectual Property, Flowchart featuring for a patent for product design, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=1077&Itemid=205> accessed
16 June 2012
70
The Department of Intellectual Property, Patent Registration Process, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=168&Itemid=205&lang=en>
accessed 12 June 2012
W
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232
Flow Chart of Examination Process for a Petty Patent Application
(Source: Department of Intellectual Property)
71
3.3. The System of Pre-grant Opposition in Thailand
As mentioned above, of Thailand’s patent opposition process s ystem only serves invention and design
patents. Petty patents do not have an op position process but an interested person may request the
competent office to examine the invention as to whether it h as all requirements according to Section 65bis
after the grant of a petty patent.
72
Thailand’s Patent Act B.E. 2522 provides for invention p atent
opposition procedures from Section 31 to Section 34. Design patent opposition c an use the same
provisions mutatis mutandis as mandated in Section 65 of the sa me Act.
Opposition procedures begin with Section 28 of the Patent Act, which states that opposition of a
patent application can be undertaken within 90 days after a publication date of an application. The
Department of Intellectual Property publishes a gazette listing new patent applications every month.
71
The Department of Intellectual Property, Flowchart application for a petty patent, <
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=1078&Itemid=205> accessed
16 June 2012
72
Section 65 sexies of Thai Patent Act B.E. 2522
Improving Patent Quality through Pre
-
grant Opposition
in Thailand
233
Patent applications are also published online on the Department of Intellectual Property’s website.
73
After
consulting either source, anyone wishing to oppose a patent application may notify the competent officer
for op position upon the ground that he is entitled to the patent or that the application do es not comply
with the provisions of Section 5, 9, 10, 11 or 14.
74
Section 5 refers to subject matter in a patent
application lacking in novelty, inventive step, or industrial applicability. Section 9 refers to a subject
matter of patent application not patentable as listed in the Section. Section 10 refers to an inventor that
has no legitimate rights to apply for a patent. Section 11 refers to an invention that an employee creates
under an employment contract. Finally, Section 14 refers to an applicant who does not qualify as having a
connection with Thailand. If an opposing part y wishes to submit other evidence in support of his
opposition, it has to submit such evidence within 30 days of the date of submission of the opposition.
Otherwise, no further opposition can be submitted at the first stage until appeal. The opposing party has to
pay a fee of 250 baht (THB) (approximately 9 USD) and submit the opposition within 90 days from a
publication date of the application as well. Further supportive evidence of the opposition (if any) must b e
submitted together with a fee of 50 THB (around 2 USD) within 30 days from the date of filing the
opposition.
Once the submittal period has ended , the officer will send a copy o f the notice to the applicant, who
then has 90 days from the date of receipt of the copy to file a counterstatement in respo nse to the copy of
the notice. The applicant may file any supportive evidence further from the counterstatement within 30
days from the date o f submission of the co unterstatement together with a fee of 50 T HB (around 2 USD).
If the applicant fail s to file s uch c ounterstatement within the period of 90 days or 30 days (for further
evidence, if any), he will be deemed as having abandoned his application.
75
The competent officer must
notify both the applicant and the opposing party to the abandon o f the application.
The aforesaid evidence in s upporting of the opposition and counterstatement are buttressing evidence.
The opposing party and the applicant can also introduce an y evidence or file any additional statement in
order to support their opposition and counterstatement in ac cordance with the procedures prescribed by
the Director-Genera l. As directed by Section 32, when the Director-General has made a decision under
Section 33 or Section 34, receipt of the decision with given reasons will be sent to the opposing party and
the applicant.
76
If an applicant makes a request for examination withi n 1 year from the publication date and there is an
opposition
77
in a case where the officer’s e xamination has determined that the application and invention
abide by the law and regulations of the Patent Act
78
, the officer has to submit his examinatio n report to
the Director-General of the Department of I ntellectual Pro perty. Once the opposition and
counterstatement are filed, the Director-General will c onsider whether the invention belongs to the
applicant or the opposing party. If the Director-General decides that the invention is to be registered and
granted to the applicant, he will order so and reject the opposition, provided that there is no appeal from
an opposing party, the patent officer then has to notify the applicant to pay the fee within 60 days fro m
the receipt of such notice. When the fee is p aid, the invention will be registered and a p atent will be
granted to the applicant within fifteen days after the payment of the fee, but not before the expiration of
period of appeal prescribed in Section 72. If the fee is not paid within the aforesaid period, the application
will be deemed as abandoned. The patent must be in the form prescr ibed by the Ministerial Regulations.
79
Opposing parties must appeal within 60 days after the date of notification of decision by the Director-
General. If there is an appeal of the decision to the Board of Patents or the Court, the party must wait for a
decision of the appeal from the Board or the Court. Ho wever, if the Director-General decides that the
invention belongs to the opposing party, the Director-General will reject the application. If there is no
appeal of the decision by the applicant or the Board, or the Court has made a final dec ision regarding the
appeal, where the opposing party has filed an application for a patent within 180 days after the rejection
of the application by the Director-General or from the date on which the final decision is made, as the
73
The Department of Intellectual Property, Patent Publication, Available at
only)
74
Section 31 of the Patent Act B.E. 2522 (1979)
75
Section 31 of the Patent Act B.E. 2522 (1979)
76
Section 32 of the Patent Act B.E. 2522 (1979)
77
Section 29 of the Patent Act B.E. 2522 (1979)
78
Section 24 of the Patent Act B.E. 2522 (1979)
79
Section 33 of the Patent Act B.E. 2522 (1979)
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234
case may be, the opposing party will b e deemed as filing its application on the filing date of the applicant,
and the publication of the app lication of the applicant made under Section 28 will be deemed as the
publication of the application of the opposing party. In the latter case, no person may oppose the
application of the opposing party on the ground that such person has a better right in the invention than
the opposing party.
80
Flowchart of the Thai Patent Act Opposition Process
3.4. Patent System Enforcement Mechanism in Thailand
Section 36 of the Patent Act mandates that a patentee, when the subject matter of a patent is an invention,
has exclusive rights to p roduce, use, sell, have in the possession for sale, offer for sale or import the
patented p roduct. However, i f the subj ect of a patent is a process, the patentee has the right to use the
patented process, to produce, use, sell, have in the possession for sale, offer for sale or import the product
produced by the patented process. Accordingly, a patentee of a desig n patent also has an exclusive right to
manufacture a product or to sell, have in possession for sale, offer for sale or import a product,
embodying the patented design, except the use of the design is for the purpose of st udy or research
according to Section 63 of the Patent Act.
80
Section 34 of the Patent Act B.E. 2522 (1979)
Improving Patent Quality through Pre
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235
If anyone who does not hav e permission from a patentee performs actions t hat a patentee has an
exclusive ri ght in, t hat person commits an infringement of a patent. Thailand has provisions for patent
infringements in Chapter VI of the Patent Act B.E. 2 522. Penalties for offenses include fines and
imprisonment. Section 85 reads
“Any person who commits an y act under Section 36 or 63 without the permission of the
patentee shall be punished with imprisonment not exceeding two years or a fine not
exceeding four hundred thousand baht or both.”
81
To enforce the law, a patentee or any i nterested person can file a lawsuit with the Central Intellectual
Property and International Trade Court (the Court) within a prescribed time limit.
82
There are 5 types of
lawsuits regarding pate nts.
83
The first covers violation of patent in a civil case to claim for compensation.
The second regards revocation of a patent. The third involves cancellation o f a decision or order of the
Board of Patents. T he fourth involves executive orders of t he Prime Minister in relation to patents during
a state of war or e mergency.
84
The fifth covers cases where many persons have invented the same
invention individually according to Section 16.
In case of patent opposition, if any party does not agree with a decision of the Board of Patents, that
party has a right to appeal the decision of the Board of Patents to the Court within 6 0 days from the date
of receipt the decision of the Board. If there is no appeal to the Court within 60 days, the Board of
Patents’ decision is final. However, if there is an appeal to the Court within 6 0 days but the Court also
decides in agreement with the Board of Patents, the party can appeal the judgment straight away to the
Intellectual Property and International T rade Division of the Supreme Court within 1 month from the date
of publication of the judgment. The party does not have to bring the case to the Court of Appeal before
passing the case to the Supre me Court because Thailand regards intellectual property and international
trade cases as special cases requiring a speedy and convenient process.
85
When the Supreme Court makes
a judgment, the judgment is final. Further details about the appeal procedure to the Supreme Court are as
follows: in criminal ca ses i n which pe nalties involve no more than 3 years imprisonment or a fine not
exceeding 60,000 THB, the party is forbidden to appeal in factual questions, except where the judgment
has already ordered imprisonment or a 5,000 THB fine. In civil cases, if the price of property or disputed
asset is below 200,000 THB, the party is forbidden to appeal in factual questions, except where is a
dissent opinion or certified letter from a trial judge o r the chief judge of the Court allows the appeal in
writing.
Nevertheless, the opposition via the Patent Office is not the last means to obstruct patent registration.
Even after patent registration, there is also a procedure to cancel the patent by the Court. For invention
patents, Section 54 of the Thai Patent Act provides that
Any patent granted not in compliance with the provisions of S ection 5, 9, 10, 11 or
Section 14 shall be invalid.
The invalidity of a paten t may be challenged by any person. A petition to cancel an
invalid patent may be submitted to the Court by any interested person or the public
prosecutor.”
86
81
Section 85 of the Patent Act B.E. 2522 (1979)
82
For further information read P. Aimaot, “Limitation to prosecute an Intellectual Property case” (in Thai), Suan
Dusit Rajaphat University, Available at accessed 3 April
2013
83
P. Aimaot, “Limitation to prosecute an Intellectual Property case” (in Thai), Suan Dusit Rajaphat University,
Available at accessed 3 April 2013
84
Section 52 of the Patent Act B.E. 2522 (1979) reads “During a state of war or emergency, the Prime Minister, with
the approval of the Cabinet, shall have the power to issue an order to exercise any right under any patent necessary
for the defense and security of the country by paying a fair remuneration to the patentee and shall notify the patentee
in writing without delay.
The patentee may appeal the order or the amount of remuneration to the court within sixty days from
the receipt of the order.”
85
The Central Intellectual Property and International Trade Court, About Us (in Thai), Available at
86
Section 54 of the Patent Act B.E. 2522 (1979)
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236
Therefore, any patent if not granted in compliance with the provisions of Section 5, 9, 10, 11 or
Section 14 will be invalid. Any person can challenge the Director-General about an invalid patent. Then
the Director-General ca n request the Board of Patents to cancel the patent. Otherwise, any interested
person or the public prosecutor can submit a petition to the Court to cancel an invalid patent. In case the
Court d isagrees with such person or the public prosecutor, the party still can appeal a judgment to the
Supreme Court. Moreover, the Director -General can request the Board to cancel a patent in particular
circumstances as prescribed in Section 55 of the Patent Act. The invalid patent refers to a patent that is (1)
a non-patentable invention,
87
(2) an invention which cannot have a protection under the law,
88
(3) a patent
whose patentee is not the inventor who has a right to ap ply for the patent,
89
(4) a patent whose patentee
does not have a right to appl y for the patent due to an employment contract,
90
or (5) a patent submitted b y
an applicant whose qualifications do not agree with the prescribed co nditions of a patent applicant, such
as not having a Thai nationality.
91
However, an interested person includes anyone who would be affected
or damaged by the grant of such patent.
92
For a design patent, Section 64 of the Patent Act allows adoption of cancellation provisions in Section
54 such that any i nterested persons or the public prosecutor can file a petition to cancel a design patent to
the Court if the design is not new and not eligible to register as a design patent as prescribed in Section
58. Section 58 sets rules that a design conflicting with p ublic moral or a design mandated in Royal Decree
cannot be a design patent. Moreover, Section 64 also adopts provision of Section 10, 11, and 14 involving
subject matter unregistrable as an invention patent. In short, a design patent is unable to be registered if
(1) a patentee is not a creator of a design who ha s a right to apply for the patent per Section 10, (2) a
patentee does not have a right to apply for t he patent due to an employment contract per Section 11, or (3)
an applicant’s qualification does not abide by Section 14; for instance, a n applicant does not have Thai
nationality.
93
The Central Intellectual Property and International Trade Court
The Central Intellectual Property and International T rade Court specializes in intellectual property and
international trade disputes. Established in 1996, the Court de als with Intellectual Property and
International Trade related cases only. Its judges and officers are more familiar with Intellectual P roperty
than other courts, leading to more accurate decisions. Its specializ ed judges use their ultimate discretion to
consider patent and other intellectual property disputes. Therefore, the Court has become a last hope for
applicants and op posing parties in registering or canceling a patent. T he Court is located in Bangkok but
has jurisdiction over the entire country for cases related to intellectual Property. Nevertheless, if an
interested person cannot travel to the Court in Bangkok to file a case, any court in Thailand can accept
patent oppositions under Section 54 of the Act. Of course, only cases truly deemed to involve intellectual
property are forward to the IP&IT Court.
94
4. Analysis of Key Patent Oppositions in Thailand
The opposition system plays an important role in restrict ing bad or poor quality patents in Thailand
although, somehow, it has not been of much help in the case of pharmaceutical patents. Ne vertheless, pre-
grant opposition is better than post-grant opposition and revocation because pre-grant opposition allows
the patent office to shield itself from cancellation of a patent and even to control patent quality before any
patent is issued. Thailand is one of the countries employing a pre-grant opposition system with a period of
90 days after a publication of an application. The pre-grant opposition system has obstructed bad patents
in Thailand, which is beneficial to consumers and inventors. The opposition system is very essential for
consumers; if poo r quality drugs can be patented and sold for high prices, many patients will not be able
87
Section 5 of the Patent Act B.E. 2522 (1979)
88
Section 9 of the Patent Act B.E. 2522 (1979)
89
Section 10 of the Patent Act B.E. 2522 (1979)
90
Section 11 of the Patent Act B.E. 2522 (1979)
91
Section 14 of the Patent Act B.E. 2522 (1979)
92
C. Hemarachata, Specification of Intellectual Property Law, 3
rd
edition, Bangkok: Nititham Publishing, p. 177
93
Section 14 of the Patent Act B.E. 2522 (1979)
94
The Central Intellectual Property and International Trade Court, About Us (in Thai), Available at
Improving Patent Quality through Pre
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grant Opposition
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237
to access the drugs, which is unfair to both consumers and drug inventors. In a relevant case, the Boar d of
Patents rejected an appeal from a patent applicant from the appeal of opposition in Decision No. 1/2554,
resulting in broader access to a generic medicine by the public. The Board ruled Novartis AG’s invention
patent involving integration of an organic compound in a n enhancing flow of insulin drug was similar to a
U.S. patent and the integration of organic compound did not show any distinctive improvement in terms
of efficient treatment of disease. Therefore, the appeal to the Directo r-General was dismissed a nd the
application was nullified.
95
Below we explore examples of both failed and successful opposition cases to assess the efficiency of
the pre-grant patent opposition in Thailand. The Legal Office of the Department of Intellectual Property
has kindly distributed the example s, which include oppositions of a wide range of patents from 1994 to
2011.
4.1. Failed Oppositions
4.1.1. Initial decisions involving failed patent opposition
The first failed pre-grant patent opposition was recorded in 1996. It was a case of a design patent
application for a chair. In the Board of Patents’ decision 10 /2540,
96
the Director-General of Department
of Intellectual Property concluded that an application for a design patent was different from the one
described in the opposition because the latter had already published in magazine “LAYOUT” in Italy
since 1975. The opposing party appealed , but the Board of Patents upheld the decision of the Director. As
a result, the opposition was rejected.
The next failed opposition case was Decision No. 2/2541,
97
involving an invention patent application
by an employee of the National Science a nd Technology D evelopment Agency ( NSTDA). In the
decision, the applicant applied for an invention patent for a silicon-oxide generator fro m rice-husk but the
NSTDA opposed the application with the ground that the applicant had no right to apply for the invention
due to his employment contract with NSTDA. The applicant filed a counterstate ment that the invention
was not invented under an employment contract and the invention was d ifferent from what the applicant
had to do under the employment contract. The Bo ard of Patents agreed that the silicon-oxide generator
inventions belonging to the inventor and to NSDA were different in s ubstantive parts. As suc h, the Board
rejected the opposition. The NSTDA appealed the decision but the Board of Patents upheld its decision,
reasoning that the applicant applied for an invention that was dissimilar to the invention in which NSTDA
had a right. Therefore, the appeal of the opposition was also reje cted.
In Decision No. 1/2548
98
regarding a fire-extinguishing ball invention, an opposing party claimed that
the application did not have an inventive step and that it had a better r ight than the ap plicant. In 2003, an
applicant had applied for a patent for a fire-extinguishing ball, a ball containi ng chemical substances that
can extinguish fire. The ball was designed to use conveniently, self-activating with three seconds once in
contact with fire. The Board of Patents did not agree with the opposing party’s arguments and rejected the
opposition. Although the opposing party appealed t he decision, the Board of P atents did not agree with
the appeal and upheld the Director’s decision.
From the examples of the decisions above, many cons of pre-grant opposition can be found. Pre-grant
opposition may serve as a method to prolong the grant of patent a nd exploit time unnecessarily. For
example, the opposing part y in the extinguish-a-fire ball decision merely prolonged the grant of patent b y
filing an unreasonable opposition and appeal. As well, the in the NSTDA decision, if NSTDA would have
controlled its employee and any research and development res ulting from the work created under
employment, the Patent O ffice, the Board of Patents and the applicant would not ha ve to waste their time
considering the opposition.
Also, considering similarit y is very subjective. Once an opposition i s made, the Director-General and
the Board of Patents may view similarities of an inventio n in an application and an invention raised by a n
opposing party as different o r alike subject to attitude, experience and specialization o f the individual
examiner. Therefore, improving patent quality requires not only the opposition procedure but also that
95
Decision of Thai Board of Patents No.1/2554
96
Decision of Thai Board of Patents No.10/2540
97
Decision of Thai Board of Patents No.2/2541
98
Decision of Thai Board of Patents No.1/2548
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officers and examiners of the patent office including the Director-General of Department of Intellectual
Property and the Board of Patents should also be efficient and able to consider a decision with reasonable
discretion.
4.1.2. Unusual Decisions
The next decision under consideration is No. 2/2548.
99
An applicant sought a patent for an instant cement
mixture, but Kittipong Mining Co. Ltd. opposed the application based on similarity of mixture ingredients
to prior art. The Director-General considered the application, opposition, c ounterstatement and all
evidence. He concluded that the applied invention had a different mixed cement perce ntage from the
opposing one. As a consequence, the applied invention was new and had an inventive step, resulting in
the rejection o f the opposition .
100
This case was a bit awkward because the Director-General rejected the
opposition but the opposing party did not appea l. However, when the application proceeded to a
substantive e xamination process, the D irector-General rejected the application, reasoning that the
application was si milar to US patents. The applicant appealed to the Board and the Board reversed the
decision of the Director-General. Thus, pre-grant op position is not always the last chance to correct patent
quality. It is essential that staff and officers at t he patent office must do their best to examine, consider
documents and have good discretion in order to control the quality of paten ts.
4.1.3. Rejection of Oppositions and Appeals by the Director-General and the Board of
Patents
There are many decisions where the Director-General has rejected the opposition and the Board of Patents
has upheld a decision of the D irector-General. The author thinks that main reason for failed oppositions is
because they are not efficient enough. For instance, in Decision No.1/2549
101
, the Director-General
rejected the opposition and the Board of Patents also upheld the decision of the Director-General simply
because a method used to pre serve rice by the applicant was new and had an inventive step. This decision
also showed that t he failure of the opposition came from insufficient reasons used to oppo se the
application. Yet, Decision No. 21/2549
102
demonstrated an absurd ground for rejection. The Directo r-
General rejected the opposition because the opposing party d id not oppose within 90 days from the date
of publication of the application. But later on, t he Board found in the appeal of the opposing party that the
opposition was in fact filed within 90 days from the publication date. It is shameful that the Director and
the Patent Office could not assess the dates correctly. In Decision No. 20/2549
103
, the opposition failed
because the opp osing party d id not raise the expiration of patent application to the Director-General.
Moreover, the opposing par ty could not convince the Director and the Board that the differences between
the stamp design of the applicant and that of the opposing party were only minor changes that did not
make the design in the application novel. This rejection of an opposition and its appeal demonstrates
errors of the opposition and opposing party as well, in particular r egarding correcting dating.
99
Decision of Thai Board of Patents No. 2/2548
100
However, when the application proceeded to the process of substantive examination, the Director-General rejected
the application because the invention was almost identical to US Patent No. 4021257 and US Patent No.
3243307.The applicant appealed the order of the Director-General to the Board of Patents, who considered all
materials and evidence and decided that the applied invention had an inventive step distinguishable from the US
Patents because the proportion of cement mixture in the applied invention was less than the US patents. The
application therefore proceeded to the registration process.
This decision was complicated by the opposition’s failure to perform a thorough quality check of the patent,
which the Director-General subsequently did. While the opposition did not successfully perform its job of rechecking
the quality of the patent and the application thus passed on to the opposition process to a substantive examination
process, the Director-General then rejected the application. It is a common reflex of an applicant to file an appeal but
in this and potentially other cases the appeal may save the application. In such cases, one may conclude that efficient
officers and the opposition process both play a key role in assuring patent quality.
101
Decision of Thai Board of Patents No. 2/2549
102
Decision of Thai Board of Patents No. 21/2549
The applicant applied a patent for a pile rig. The application was opposed on the basis that the opposing
party’s patent was infringed. However, the Director-General rejected the opposition because the opposing party did
not oppose within 90 days from the date of publication of the application. The opposing party appealed and the Board
found that the opposition was filed within 90 days of the publication date but the application did not infringe the
patent of the opposing party because the rig in the application was not similar to the patented rig.
103
Decision of Thai Board of Patents No. 20/2549
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4.1.4. Series of Oppositions
Another form o f failed o ppositions is a series o f oppositions by one natural or legal person. Questions
exist as to why an opposing party will claim that many patent ap plications are similar or identical to his
patent or are otherwise invalid. In Decision No. 22/2549, M r. Gonsab opposed a patent application for a
flying boat claiming that the flying boat was similar to an invention in his patent application. However,
the opposition was rejected because o f the dissimilarity between two inventions.
104
Mr. Gonsab opposed
several other patent applications with varied results. As Decision No. 12/2550 from 200 7 reveals,
105
Mr.
Bhuripongchai opposed a television and radio aerial patent application, claiming that the aerial in the
application was similar to prior art. His opposition and appeal were rejected because the Director-General
and the Board of Patents agreed otherwise. Nevertheless, Mr. Bhuripongchai opposed an application for
television and radio aerial again aga inst the same applicant in Decision No. 13/2550
106
, yet, the result was
still rejection because his oppositions were groundless and nonsensical.
Similarly, in 2008, as detailed in Decision No. 10/2551,
107
D.T.C. Industry Public Co. Ltd. (D.T.C.)
opposed Mr. Suthipong’s design paten t application for a pen by claiming that the applicant copied its
patents and patent application in Indonesia. The Director-General and the Board of Patents rejected both
the opposition and its appeal because the design of the pen i n the application and the claimed patents were
dissimilar. The same results occurred in a Decision No .16/2551 and 17/2551. In Decision No. 16/2551
108
and 17/2551
109
, D.T.C. again opposed an invention patent application, in this case for “fluorescent ink for
the stationar y based on the dispersion of pigment agent in non-aqueous solvent” of Bic Corporation of
America. Similar to the prior decision, the Director-General and the B oard rejected both oppositions and
appeals, rea soning that the invention in the applic ation and the claimed fluorescent ink of the opposing
party were sufficiently different and that the solvent of the invention in the application had an inventive
step distinct from prior arts. D.T.C. opposed Bic Corp.’s patent application again in a decision No.
18/2551
110
. The decision rendered same results as decisions No. 10/2551, 16/2551, and 17/2551 that was
both the Director-General and the Board of Patents rejected both the opposition and its appeal. In this
decision, Bic Corp. applied an invention patent for “non-fluorescent i nk for the stationary based on the
dispersion o f pigment agent in no- aqueous solvent” but D.T.C. claimed that the applied invention had
already existed before the application, which made the invention not novel at the application date. Bic in
its counterstate ment argued that its invention had an inventive step that was an advanc e over a general
non-fluorescent and non-aqueous composition. The Director -General agreed with the counterstatement, as
did the Board of Patents in the appeal stage. As a result, the application co ntinued to the examination
process.
This was not enough for D.T.C. In Decision No. 11/2551,
111
D.T.C. opposed a design patent
application by B.K. L. Group Co. Ltd. (B.K.L.) for a pen, alleging t hat the desig ns of the pen in the
application and its patents were very similar. However, although the Director-General rejected the
opposition, D.T.C. succeeded in stopping the application in its appe al. The Board stated as its main reason
for rejecting the appeal that the designs of the pens in the application a nd in D.T. C.’s January 199 9
catalogue were closely similar , which meant that the application was similar to prior arts to the degree
that one could see the applicant had imitated D.T.C.’s designs. Likewise, Decision No. 1 2/2551
112
rendered the same results. In t he decision, D.T.C. opposed the design patent application fo r pen of B.K.L.
The Director-General again rej ected both oppositions based on dissimilarity between two designs, but the
Board of Patents reversed the decision of the Director-General according to grounds similar to Decision
No. 11/2551.
In our analysis, D.T.C. as a sizable manufacturer of a variety o f pens, is displaying the traits of other
large and powerful companies in the Thai market who see k to prevent others from registering both patents
and trademarks which resemble their o wn products to protect their market share and lessen the
opportunity for consumers to change brands. Mor eover, it should be noted that a few companies dominate
104
Decision of Thai Board of Patents No. 22/2549
105
Decision of Thai Board of Patents No. 12/2550
106
Decision of Thai Board of Patents No. 13/2550
107
Decision of Thai Board of Patents No. 10/2551
108
Decision of Thai Board of Patents No. 16/2551
109
Decision of Thai Board of Patents No. 17/2551
110
Decision of Thai Board of Patents No. 18/2551
111
Decision of Thai Board of Patents No. 11/2551
112
Decision of Thai Board of Patents No. 12/2551
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the pen market in Thailand. In any case, D.T.C. has had its own patent application opposed by others as
well. In Decision No. 15/2554,
113
D.T.C. applied for a patent for a pen design. Nonetheless, a Mr.
Suputipong opposed the application, reasoning that the design of the applicant was similar to a disclosed
design of a pen evidenced in t he catalogue year 2000 of Hang Zhou Oversea Pen Co. Ltd. (Hang Zhou).
The Director-General a greed with the opposition and rejected the application. D.T.C. appealed to the
Board of Patents. The Board considered every detail of both designs thoroughly and found that the design
of D.T.C. was sufficiently different from the design of Hang Zhou. D.T.C. was then able to proceed to the
examination process. Although D.T.C. won against the op position in the Board of Patents round, it is hard
to refrain from the thought that the market dominance position of D.T.C. might have influenced the
decision of the Board of Patents.
114
4.1.5. Pharmaceutical oppositions
Another type of opposition is a patent opposition in the interest of societal wellbeing by a govern ment
sector o r a non -governmental organization (NGO). Mostly, this type of opposition involves patents for
medicine that affect public health and benefits broadly. So, if an opposition fails, social benefit will be
undermined. For example, in Decision No. 17/2550, Besham Pharmaceutical (PTE) Ltd., a Singapore
pharmaceutical company, applied for an inven tion patent for a medicine that used a new method to treat
infection. The Gover nment Pharmaceutical Organization (GPO) opposed the application based on the
grounds that the applied formula for Amoxicillin and Potassium Clavulanate was already disclosed i n
European patents and that the mixture as layer tablet was common and showed no inventive step. Besham
filed a counterstatement that the application differed from the European patents because its drug would
slowly release Potassium Clavu lanate in the first phase and release Amoxicillin combined with excipients
in the second phase. The Director-General found that the drug in fact released active compounds in a
different rate with those in the European patents and the drug also used a control agent in order to release
both Amoxicillin and excipients, a procedure not mentioned in the European patents. Therefore, the
Director-General decided that the invention of the drug was new and unlike those in the patents. GPO
appealed on the grou nds of public interest, stati ng that if the applicant were granted the p atent, peo ple
would find it difficult to access to similar medicine, which would definitely affect the health of the public.
Moreover, the European patents had already claimed t he released rate of the compound. As such, the
application should not be allowed. However, the Board of Patents upheld the decision of the Director
because the Board agreed that the invention of the drug was new and unlike those in the European
patents, as it had an inventive step developing from the Europe an patents.
Similarly, in 1997 , the GPO opposed a patent application for a therapeutic combination o f Pfizer
Product Inc., an American pharmaceutical company. The GPO reasoned that the combination was not
new and common for medical practices. Pfizer made a counterstatement denying the opposition that its
invention was new and had an inventive step as the USPTO had already granted it a Paten t No. 6455574.
The Director-General agreed with Pfizer and ord ered to reject the opposition. GPO appealed to the Board
of Patents claiming that GPO and domestic pharmaceutical companies would find it hard to manufacture
the same drug for Thai patients that would make the p atients buy the drug in an expensive price if the
Patent Office granted a patent to Pfizer. Moreover, Pfizer’s patent was removed some clauses by the
USPTO which might refer to some flaws in t he application. Nevertheless, the Board of Patents agreed
that the invention of Pfizer was new and had an inventive step . Therefore, the Board upheld the decision
of the Director.
Also, in Decision No. 12/2553
115
, GPO made an opposition against a patent application of Bristol-
Myers Squibb Company (BMS), a global biopharmaceutical company headquartered in New York. In
2003, BMS had applied for an invention patent for a method for treating HIV infection patients in
Thailand, but the GPO opposed the application in 2006 on the grounds that the application was si milar to
an expired US patent and that the application was in conflict with Section 9(4) of the Patent Act.
116
The
113
Decision of Thai Board of Patents No. 15/2554
114
The Board strangely described the dissimilarity between the two designs in its decision, especially regarding a
circle cylinder and a bit oval cylinder, which were only minor contrary details. Unfortunately, given that D.T.C. is
such a large company, this decision may have been biased in favor of D.T.C.
115
Decision of Thai Board of Patents No. 12/2553
116
Section 9 The following inventions are not protected under this Act:
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Director-General rejected the opposition based on the reason that the invention in the application was not
new but had an inventive step. GPO appealed but the Board of Patents upheld the decision of the
Director-General reasoning that the application had an inventive step from the US expired patent and the
claims of the application were not in conflict with the Patent Act.
Let us observe again that a result of these dec isions, people in Thailand and other develop ing
countries have to buy expen sive drugs from foreign pharmaceutical companies although the majority of
people ca nnot afford to buy those drugs. When pre-grant o ppositions of pharmaceutical inventions fail,
the unfair price is enacted in the citizens of developing countries falling sick and dying. Although the
GPO can still a ppeal a decision of the Board of Patents to the Court, in the time between the petition and
final ruling, the pressing needs of people who must maintain a drug regimen or otherwise have immediate
access to medicine are not put on pause. In the past, the Thai Patent Act included provisions for
pharmaceutical patents in Part VII but it was canceled entire ly in 1999 due to Thailand’s accession to the
TRIPs Agreement. The Patent Act should resu me its exc eption section for medicines for the sake of
public interest. If Thai government could bring b ack those provisions relating to medicines, it would be
greatly beneficial to the Thai people.
To sum up, an opposing party has a right to oppose a patent application in Thailand during a pre-grant
opposition period but the opposition may not always succeed. The opposing party may have to appeal yet
nothing guara ntees that the appeal will be successful. The opposing party may use its last end eavor b y
bringing the dispute to the IP&IT Court but, also, nothing guarantees tha t the opp osing party will also
succeed in an opposition against the registration of a patent application. Finall y, a situation may result in
which an opposing party simply wastes time, effort and expense. Moreover, the 90-day period after the
publication of an application may u nfairly restrict the opportunity for anyone wishing to oppose an
application.
4.2. Successful Oppositions
A successful opposition not only brings joy to an opposing par ty but can also strengthen business value
and, in case o f pharmaceutical patents, social justice. As claimed by T odd D. Clark in Pharma
Handbook
117
, “a pre-grant opposition is shaping up to be the biggest impediment to patent
issuance”.
118
Thus, when oppositions succeed during t he pre-grant opposition period, they bolster the
argument that Thailand has an efficient pre-grant opposition system, whose benefits are for the public at
the end of the day.
As mentioned, the process of opposition begins after publication of a patent application. Once
opposed, an applicant can always make a counterstatement. If the Director-General orders to r eject an
application, an ap plicant can always appeal the order to the B oard of Patents within the provided period.
If an appeal of an opposing pa rty i s upheld, an application will be rejected. This can be counted as a
successful opposition. On the other hand, if the Director-General orders to reject an opposition, an
opposing party can appeal the order to the Board of Patents as well. The Board of Patents may decide to
reverse the Director-General’s order. Consequently, an application will be rejected, which serves as a
successful oppo sition as well. Either way, an oppo sition is successful. There have been many decisions
like this.
4.2.1. Applications rejected by the Director-General and the Board of Patents
In 1997, in the Board of Patents’ decision No . 13/2540
119
, Mr. Kitti applied for a design patent for a tape
cassette shelf but Mr. Chamras opp osed the application, reasoning that the applied shelf was similar to his
(1) naturally occurring microorganisms and their components, animals, plants or extracts from animals or
plants;
(2) scientific or mathematical rules or theories;
(3) computer programs;
(4) methods of diagnosis, treatment or cure of human and animal diseases;
(5) inventions contrary to public order, morality, health or welfare.
117
T. D. Clark, Pharma Handbook: a Guide to International Pharmaceutical Industry, 5
th
edition, (Voice of Insights,
New Orleans: 2007), p. 70
118
N. Shikha, “Comparative study of pre-grant and post-grant Patent opposition in India”, Social Science Research
Network, Available at accessed 17 January 2013
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patent. Accordingly, Mr. Chamras had already sold the patented shelves in a widespread manner long
before the date of Mr. Kitti’s application. The d esign application featured a circle base while the design of
the opposing party had a triangle base. B oth designs were slightly different in height. The Director-
General decided that both designs were not sufficiently different and rejected the application. T he
applicant appealed the order of the Director-General to the Board of Patents, but the Board of Patents
upheld the decision of the Director-General because the d esign in the application was similar to the
design in the opposition to the degree that it was clear the applicant i mitated the design in the opposition.
Like the case of tape cassette shelf in 1997, in Deci sion No. 1/2542,
120
an application for a refrigerator
and compressor of refrigerant invention patent by Hitachi LTD was rejected b y the Director-General and
the Board of Patents respectively. Ho wever, this 1999 decision had two opposing parties: Sanyo
Universal electric and Mrs. Samakkachan. The opposition by Sanyo Universal electric was rejected while
the opposition by Mrs. Samakkachan was accepted. The reason for rejecting the application by the
Director-General was that the applied invention was not new; as a matter of fact, it was a combination of
existing inventio ns without adding new technology. As a result, the applied invention had no inventive
step. Hitachi LTD app ealed the decision of the Director to the Board of Patents but the Board also
rejected the application on the same ground as the Director.
These two decisions show the triumph of opp osition in both the publication of application process and
the appeal process. Ideally, it would be instantly apparent when an application had copied prior art and
would thereby be immediately rejected by the Dir ector. In reality, many applications waste both the time
and money of the patent office and the opposing party, who are compelled to file an opp osition although
the infringing app lication will surely be re jected at the end once it has been thoroughly examined two or
more times.
4.2.2. Successful Appeals
In Decision No.3/2541,
121
dating from 1998, the opposition failed in the first stage but succeeded in the
appeal stage. The decision involved a method of ma king a machinery joint for steel deformed bar i n
reinforced concrete. The applicant applied for a method of making a machinery joint that could stand the
pulling and pressing of a steel de formed bar in a reinforced concrete while the opposing party opposed
that the method was not new and had no inventive step. The Director-General considered evidence and
ordered to reject the opposition because the applied machinery joint had a longer length for its ply than a
normal joint, making it not ob vious and possessing an inventive step. The opposing part y appealed. The
Board of Patents concluded that despite the inventive le ngth of the joint’s ply, the method was still
common for people with such skill. As a result, the method had no inventive step a nd the application was
rejected. This decision shows how understandi ng technical function can be a problem for examiners, t he
Director-General, and the Board of Patents. If onl y ther e were a set standard for determining technical
function, the Director and the B oard would decide in the same way which can help to sho rten the time for
all parties.
Decision No.1/2544
122
from 2001 reveals an opposition rejected by the Director-General because the
opposing p arty did no t submit enough supporting documentation. However, when the case reached the
Board of Patents, the opposing par ty convinced the Board with additional evidence to make the
opposition success in the appeal stage. The decision reflects that sufficient supporting documents are ver y
essential in terms of whether an opposition fails or succeeds. In the decision, Kabushiki Kaisa Toshiba
applied a patent for a refrigerator in 1990 but Universal Electric Public Co. Ltd. opposed that the
invention was not new, as evidenced in its photo taken in 1989. Besides, the applied part was merely
placement of an existing technology which did not add any difference to the preexisting function.
Toshiba’s counterstatement argued that the invention was new because the photos and details were only
disclosed to a small gro up of experts, not to the public. The Director-General decided in favor of Toshiba
reasoned that both inventions were slightly different since Toshiba had improved so me functions that
were useful than p revious one in the photo of Universal. Moreover, Universal did not show any evidence
supporting its claim that the invention in the photo had already been manufactured or disclosed to the
public in its substantial parts domestically or inter nationally. Nevertheless, Universal appealed to the
Board of Patents. The Board of Patents re jected Toshiba’s application because Universal showed
120
Decision of Thai Board of Patents No. 1/2542
121
Decision of Thai Board of Patents No. 3/2541
122
Decision of Thai Board of Patents No. 1/2544
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evidence of manufacture and distribution of its similar refrigerator before Toshiba’s app lication date.
Universal even offered the B oard to bring a refrigerator and its parts to the patent office to show the
likeness. Therefore, the Board concluded that the invention o f Toshiba was not new. Similarly, in
Decision N o.10/2554
123
, the a pplicant had applied for a design patent for boots but the opposing party
opposed it on the ground that it was not novel but was similar to its exported boots according to its
catalogue. The Director-General rej ected the opposition. Subsequently, the opposing party appealed the
decision to the Board of Patents but the Board, after co nsidering all evidence, decided that the boots in the
application and the opposition and appeal were closely similar. The di fferences were not substantial
enough to make the boots in the application new. Therefore, the Boar d rejected the application.
These oppositions fa iled at first and succeeded at the end
124
. Besides looking at the results of an
opposition, the reasons for failed or successful oppositions are also worth consideration. These reasons
are varied and subjective depending on the Director’s and the Board’s discretion and documentation
provided at each stage. Patent quality deriving from an opposition proc ess also depends on discretion and
supporting evidence as well.
4.2.3. Group oppositions
Sometimes an application is opposed by a number of opposing parties, similar to a class action in a court.
The result of “ group oppositions” tends to be rejection of the app lication because they demonstrate many
people knew about the invention before patent registration. As such, the invention must not be novel.
Registration of such invention would harm other inventors and inter fere in their channel of trade.
For example, in Decision No. 6/2544
125
covering a patent for a plastic bag, the application was
opposed by five plastic bag factories since the technique for manufacturing a three-layer plastic bag were
common and could b e easily known by veterans in suc h area. The Direc tor-General rejected five
oppositions, and the application met its final rejection by the Board of Patents at the appeal. Echoing the
former, Decision No. 29/2549
126
rejected a patent application after being opposed by three oppositions.
The application’s subject matter was an improvement of the mechanical q uality of a polyethylene pipe but
three oppositions all claimed that such p ipes were already widely produced according to EU and Japanese
patents, which were r eferred to in the decision. Both Director-General and the Board of Patents agreed to
reject the application because the pipe was not new and had no inventive step.
4.2.4. Serial Oppositions
The next group of oppositions is a series of oppositions by a person or company. Just like previous
section, this type of opposition is normally between the same applicant and opposing party or vice versa
such as an applicant becomes an opposing party or an opposing party turns to be a n applicant in a latter
decision. Genera lly, these pe ople do the same business and produce same invention/design. Obviously,
they are competitors. As a consequence, the grant of patent to other parties will lessen the business
opportunities of another party since a patent is an exclusive right. Any method and documents that can
oppose the registration of a patent application will be used. For example, in Decision No. 18/2549
127
,
Mrs. Lerkvi-chiean opposed the registration of design paten t application for a shoe by Bowling Shoe Co.
Ltd., claiming that the company’s design app lication imitated a design of a shoe in an Italian shoe
magazine published in 2001, although the application was made in 2002. Despite an argument that a
design application was different from a shoe in the magazine, the Director-General and the Board o f
Patents decided to reject the application because the application and the shoe in the magazine was
obviously a copy. Similarly, in Decision No. , 19/2549
128
, Bowling Shoe Co. Ltd. also applied for a design
patent for a shoe but Mrs. Lerkvi-chiean opposed the application again, claiming that the application was
similar to a shoe i n an Italian shoe magazine published one year prior to the application date. The
differences between the application and the shoe in the magazine were minor. Although the applicant
presented numerous reasons why the designs differed, the Director-General and the Board of Patents did
123
Decision of Thai Board of Patents No. 10/2554
124
As far as the author can ascertain, no lawsuits challenging the decisions have been filed
125
Decision of Thai Board of Patents No. 6/2554
126
Decision of Thai Board of Patents No. 29/2549
127
Decision of Thai Board of Patents No. 18/2549
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Decision of Thai Board of Patents No. 19/2549
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not agree with the applicant. The application was obviously seen as an imitation of a shoe in the
magazine. As a result, the application was rejected.
In our analysis, there must be a connection between Bowling Shoe Co. Ltd. and Mrs. Lerkvi-chiean in
making consecutive oppositions. T hrough research on the Internet, the author has found that Mrs. Lerkvi-
chiean is in the shoe business, most recently in the capacity of director of Regent Street Co. Ltd., which
manufactures rubber shoes.
129
Therefore, we can conclude that both Bowling Shoe and Mrs. Lerkvi-
chiean are competitors and the registration of the shoe designed by the former can obstruct the business of
the latter. Their serial oppositions are normal and understandable.
As covered in our discussion o f failed oppositions, D.T.C. Industries PLC made a series of
unsuccessful op positions. Anyway, D.T .C. had some luck that it could succeed in these oppositions. In
Decision No. 15/2553
130
, D.T. C. oppo sed an industrial design invention of Mr. Suputipong involving a
design for a ballpoint pen. D.T.C reasoned in the opposition that the design in the application was not new
because it resembled disclosed designs to the degree it was apparent the application imitated the disclosed
designs. The ap plicant countered that his application differed from the claimed design in both the ha ndle
and design of a p en. The Director-General rejected the op position. However, D.T.C. appealed to the
Board of Patents, insisting on the same claim but also pointing out to similar parts between the
application and the disclosed designs. The Board considered all evidence and documents and finally
agreed with D.T .C. that each part of the design in the application was similar to the disclosed designs.
The application merely brought the design for a handle of a pen from one disclosed design and a design
for a printed pattern of a pen from another to compose as a new design. Therefore, neither novelty nor an
inventive step was found in the application. T he Board of Patents reversed the decision of the Director-
General and decided to reject the application. Similarly, in decision No. 16 /2553, Mr. Suputipong applied
for an industrial design patent for a ballpoint pen. Again, D.T.C. opposed the application with the ground
that the design was not new because such design was similar to Spanish patent No. 143629. The applicant
countered that he had developed all designs by himself up to the point he decided to app ly for a patent.
With such a weighty counterstatement including his or iginal design drawing, the Directo r-General
decided to reject the opposition. As informer decisions, D .T.C. appealed by stressing the s ame reasons in
the opposition but adding that the applicant developed nothing more than a copy of the existing designs of
the handle, body and stopper of the pen in another design patent. The Board considered the appeal and
agreed with D.T.C. that each par t of a design in the application came from existing designs. As a result,
the Board of Patents rejected the application. Once more, Mr. Suputipong applied for an industrial design
patent for a ballpoint pen, but D.T.C. o pposed the application on the ground that the application was
similar to its design patents. The applicant’s counterstateme nt claimed he was the one who had researched
and develop ed the desig n in the application. The Director-General was co nvinced by t he applicant a nd
rejected the opposition. D.T.C. appealed the decision to the Board of Patents, claiming that the design in
the application was not new. The Board agreed with D.T.C. and rej ected the application.
From these three decisions in volving the design of a ballpoint pen, it is not hard to guess that both the
applicant and the oppo sing party are competitors, as our research proves. Mr. Suputipong is Managing
Director of Nanmee Co. Ltd., a large stationary company in Thailand offering the brands Horse, Arrow,
Nanmee and Max, while D.T.C. Industry PLC is also a dominant stationary company in T hailand offering
several bra nds including Lancer. Securing a patent is another strategy to exclude competitors from the
market since a patentee has an exclusive right. Consequently, competitors must raise every reason to
oppose a patent application. The success or failure of an opposition depends on whether the reasons and
supporting evidence are solid enough. The only suspicio n left is why the Director-General and the Board
of Patents decided the same d ispute dissimilarly? Was it because of the individuals’ di scretion or due to
the Director or the Board’s connection to one of the companies? These questio ns are intriguing to know.
Nonetheless, in 2009, four consecutive Board of Patents decisions featured the same applicant and an
opposing-party were same persons for four Board of Pate nts’ decisions consecutively. All decisions were
about the process of making p ulp from tapioca waste or mixed tapioca waste. In a decision No. 1/2552
131
,
Mr. Techaviboon applied for an invention patent for a process of making pulp from tapioca waste bu t the
Cementhai Legal Co unsel Limited (Ce menthai) opposed the application reasoning that the process of
making pulp from tapioca waste was simple and easy. The invention had no novelty and inventive step.
129
Regent Street Co. Ltd., Available at accessed 6 March 2013
130
Decision of Thai Board of Patents No. 15/2553
131
Decision of Thai Board of Patents No. 1/2552
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The Dir ector-General rejected the application. Mr . Techaviboon appealed but the Board of Patents still
agreed with rea sons o f the opposition. Although the use of pure tapioca waste increased the quality of
pulp in paper by 1 0-20 percent, the p rocess of making such pulp was too simple for people in paper
industry. The Board of Patents upheld the decision of the Director-General, which was to reject the
application. Similarly, in a decision No. 2/2552
132
, Cementhai opposed a patent application of Mr.
Techaviboon again. The patent application involved a method of making pulp by adding pulp of tapioca
waste to paper tiss ue during the p rocess of manufacturing paper. The p rocess of this invention was pretty
similar to the application in a previous decision, but the latter invention was a slightly more complicated
in adding pulp from tapioca waste to paper tissue during the pulping process. The Director rejected the
application. In the appeal, Mr. Techaviboon tried to convince the Board of the complexity of the pulping
process; nonetheless, the Board of Patents still rejected the application due to obviousn ess and la ck of
inventive step.
Again, in a decision No. 3/25 52,
133
Mr. Techaviboon applied for a patent for mixed ingredients with
tapioca waste to use in pulping process. Cementhai Legal Counsel Limited opp osed the application of
Mr. Techaviboon for the t hird time. Once more, the Director rejected the application because of
obviousness and no inventive step. Although Mr. Techaviboon appeale d by claiming that other
ingredients like pieces of pa per and wood bits could improve quality of paper by ten to twenty percent,
the Board still rejected the application by up holding the reasons of the Director. Even worse, there was no
evidence of improvement as claimed by Mr. Techaviboon and no exact percentage of the ingredients was
disclosed in the application either. Anyway, as Mr. Techaviboon had also applied fo r a p atent for
ingredients of tapioca waste to use in pulping process. Cementhai opposed that the application was
common and was already disclosed in a book published before the application date. Repeatedl y, a
decision No. 4 /2552
134
showed that the Director-General rejected the application because of obviousness
and no i nventive step. The applicant appealed. The Board upheld the Director’s d ecision despite the
ingredients being cheaper than nor mal materials for pulping process and less harmful to people’s health
than other materials such as hay. The Board of Patents rea soned that the pulping process and the
ingredients were too obvious for peo ple in that field. Therefore, the application was not new and had no
inventive step.
All four decisions have the same applicant and opposing party for a closely simila r invention
involving with making pulp from tapioca waste. Cementhai is a legal company of Siam Cement Group
Plc., which is a giant company that also, manufactures paper. I f the applicant was granted a pate nt, SCG
would be in trouble for manufacturing pa per using simple methods because the methods in these
applications were too obvious. As a consequence, the examples of Cementhai as an opposing party can
confirm that an opposition process can help improving patent qualit y.
4.2.5. Pharmaceutical opposition
The most important category of opposition involves medicine. Such oppositions have wide effects on
pharmaceutical companies, inventors, NGOs, patients and patients’ families because patented medicines
are normally sold at prices too high for the majo rity of patients in Thailand, who are still poor.
Developing countries typically do not have the resources to p ermit them to develop or invent medicines in
a manner competitive with develop ed nations. According to human rights doctrine, it is unfair for citizens
of these countries to pay expensive prices for patented drugs manufactured by companies based in
developed countries. There are many examples of international pharmaceutical companies applying for
patents for drugs that they intend to sell in Thailand at a high price; however, in many case, the
companies’ applications have been opposed by individual patients, gover nmental organizations or NGO.
For patients in Thailand, successful oppositions have secured justice, social benefits, and the essential
right to have good treatment and prolong life.
Our first example of an important pharmaceutical opposition involves a Thai mixed herbal medicine
for AIDS patients. In 20 04, decision No. 10/2547
135
revealed that herbs used commonly could not be
registered for a patent if the mixed for mula for the medicine was not distinguished and inventive enough
132
Decision of Thai Board of Patents No. 2/2552
133
Decision of Thai Board of Patents No. 3/2552
134
Decision of Thai Board of Patents No. 4/2552
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Decision of Thai Board of Patents No. 10/2547
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for an e xperienced person in that field. The applicant was Chulalongkorn U niversity and the opposing
party was Mr. Manoonwong. The University applied a patent for mixed herb formula for treatment of
HIV/AIDS patients, but the application was opposed because the formula was published in several
journals and patent applications and it was common knowledge to experienced Thai traditional doctors.
The Director-General rejected the application because the formula had no i nventive step or new healing
result from mixing those herbs. The University appealed, yet the Board of Patents upheld the Dir ector-
General’s decision for the same reasons. This decision has proved beneficial to HIV/AIDS patients since
said patients can still find inexpensive medicinal herbs in a market unrestricted by any pharmaceutical
company. Both the Director and the Board have done a good job protecting the social interest.
Interestingly, the decisions below may in fact be a series of opposition relating to pharmaceutical
patents for herb extracts. Decision No. 23/2549
136
and Decision No . 16/2550
137
showed that Mr . Vichai’s
patent applications for Thai herbs were opposed by Muntana Panich Chiangmai Co. Ltd. and Smith
Natural Co. Ltd. as the first and second op posing parties respectivel y. Decision No. 23/2549 covered a
patent application for an abstr act of Pucraria minifica and Butea superba in capsules, while Decision No.
16/2550 was covered an abstract of Butea superba solely.
In the first decision, after the ap plication was opposed by the first and second opposing party, the
Director-General rejected the second opposition because its arguments lac ked clarity. However, the
Director-General also rejected the application according to grounds in the first opposition since the
applicant could not demonstrate that the invention had an inventive step. Both the applicant and the first
opposing party appealed against the order of the Director. The applicant claimed his in vention had an
inventive step and the first opposing party argued that the invention not only had no inventive step but
also had no novelt y since the method of abstracting the herb was alrea dy published in medical textbooks.
The Board finally decided to uphold the decision of the Director to reject the application of Mr. Vichai.
In the latter de cision, the applicant applied for an invention patent for products abstracted from Butea
superba. The first opposing party claimed that to add calcium to the products did not show any inventive
step and the application was to o similar to an existing patent. The seco nd opposing party also supported
the opposition of the first opposing party. The Director-G eneral considered all evidence and decided to
reject the opposition based on the reasons that the application was new and had an inventive step. The
first opposing party app ealed, arguing that the applicant did not state clearly in the application how much
calcium was added to the products, nor why. The Board of Patents ruled that the application did not
comply with Section 17(3) and (4) of the Patent Act
138
because the applicant did not describe the precise
percentage of calcium in the products.
By rejecting both applications of Mr. Vichai regarding Pueraria minifica or Butea superba extracts,
the Board of Patents preserved these herbs for the use of millions of patie nts who need them and cannot
afford the pr emium price for a patented product. As a result, the public can utilize value from the herbs’
extracts freely. Blocking common herbal treatments from being unfairl y patented is a true public benefit
oppositions can achieve. Therefore, for the sake of the public wellness, pre-grant oppositions should be
maintained.
The next group is a series of oppositions by the Government Phar maceutical Organization (GPO)
against foreign pharmaceutical companies. The first decision was in 2010 against InterMune Inc., a
leading global biopharmaceutical company headquartered in Brisbane, California. In decision N o.
136
Decision of Thai Board of Patents No. 23/2549
137
Decision of Thai Board of Patents No. 16/2550
138
Section 17
The application for the patent shall comply with the rules and procedures as prescribe in the Ministerial Regulations.
The application for a patent shall contain:
(1) the title of the invention;
(2) brief statement of its nature and purposes;
(3) a detailed description of the invention in such full, concise and clear and
exact terms as to enable any person ordinarily skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the invention and setting forth the best mode contemplated by the
inventor to carry out his invention;
(4) one or more clear and concise claims;
(5) other items prescribed in the Ministerial Regulations
In cases where Thailand acceded to an international agreement or cooperation on patents, the patent application
which is in compliance with the requirements of such international agreement or cooperation shall be deemed to be a
patent application under this Act.
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1/2553
139
, InterMune Inc. applied for an invention patent in Thailand for chronic hepatitis C treatment
methods for patients who had previously failed antiviral therapy. The GPO opposed the application
because the method of treatment was in conflict with Section 9(4) of the Patent Act. The Dir ector-General
rejected the opposition but the Board of P atents rejected the application. The Board of Patents reasoned
that the applicatio n conflicted with Section 9(4), which prohibits patents for methods of treating disease.
The law was truly written for the public benefit.
Additionally, in Decision No. 1/255 4
140
, Novartis International AG, a Swiss p harmaceutical company,
had applied for an invention patent in Thailand for an integration of an organic compound, but the GPO
opposed the application, claiming that the invention was not new since it had already been disclosed in
the US Patent No. 5952356 four years before the application was made. Although Novartis in its
counterstatement argued that the inventio n had an inventive step and was not similar to the US patent, the
Director-General still rejected the a pplication. Novartis appealed by claiming that the invention was not
like any invention produced before because its integration caused an unexpected result with HMG-Co A
reductase inhibitors, which was very beneficial in combating hi gh blood pressure. Fortunately, the Board
of Patents did not agree with Novartis, but i nstead reasoned that the invention was not new as disclosed in
the US patent and patent application. Moreover, it ruled the unexpected result as claimed by Novarti s did
not exist. No improved result was found. Therefore, the Board rejected the appeal of Novartis.
Although these were serial oppo sitions by the GPO, they were still successful and benefitted for the
Thai public by protecting its access to inexpensive medicines, thereby serving as model oppositions for
other developing countries. Above all, related governmental organizations must work forcefully and
efficiently to protect the social intere st; whether oppositions succeed or fail depends on the opposing
party be able to search for prior art and draft an effective and co mplete opposition.
To sum up, the proc ess of opposition is necessary in any patent registration system. Not only can it
reveal poor patent qualit y, but it also can protect social benefits. Developing countries must have a patent
opposition system; in particular, Thailand’s p re-grant opposition successes show that the pre-grant
opposition system seems to be best suited for developing and underdeveloped.
4.3. Court cases resulting from opposition
There have been several appeals brought to the Central Intellectual Property and International Trade
Court (CIP ITC) and to the Intellectual Property and International Trad e division of the Supreme Court
(IP&IT Court) challenging the Board of Patent’s decision to reject or grant a patent. The most recognized
patent opposition case bro ught to the Court in Thailand involved a suit in 1999 against the Department of
Intellectual Property (DIP) regarding its grant o f a patent to Bristol-Myers Squibb (BMS) for the
antiretroviral drug Didanosine (DDI). It may have been t hat the opposing parties did not manage to file a
pre-grant o pposition within 90 days from the publication of the application date and thus had to file a
lawsuit after the grant of patent or that the opposing parties did not know about the application u ntil the
grant of patent.
The AIDS Access Foundation, a Thai AIDS foundation, and two AIDS patients were plaintiffs while
Bristol-Myers Squibb (BMS) and the Departme nt of Intellectual Property were the defendant and co-
defendant respectively. The story be gan when BMS had applied for a patent for DDI in the U.S. and in
Thailand. However, since DDI was not new at the applied date, BM S adde d an antacid to include
inventive step in order to be able to apply for a patent. While DDI was in the process of consideration for
a patent in the U.S., BMS was granted a patent for DDI in Thailand without limitation under the
formulation range of 5mg to 100mg per dosage unit despite BMS having indicated in its application that
BMS applied for just 5mg to 100mg per dosage unit. As a result, it was forbid den for any dosage of DDI
to be manufactured in Thailand except with the consent of the patent holder BMS. Moreover, the GPO,
the main health support organization in T hailand, was prohibited from producing DDI to sell at an
inexpensive price to the Thai people. Consequently, the poor could not access DDI, leading to a number
of AIDS fatalities in Thailand.
141
139
Decision of Thai Board of Patents No. 1/2553
140
Decision of Thai Board of Patents No. 1/2554
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Revoking An Invalid Patent: The Case of Didanosine in Thailand, Patent Opposition Database, Available at <
http://patentoppositions.org/case_studies/500e9b8c7718ea0002000018> accessed 4 April 2013
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The Court fo und later ord ered DIP to annul the limitation of specified dosage range in BMS’s patent
application. Although the cancellation of the limitation could be done upon discretion of the Director-
General, granting such a patent was unethical since it endangered the lives of Thai AI DS patients and
forced them to pay a high price for DDI, a generic drug. The Court, therefore, ordered BMS and DIP to
amend the patent by putting back the limitation of dosage 5mg to 100mg. T he GPO was then able to
produce cheaper DDI at dosages above 100 mg for HIV/AIDS patients. The Court has proven to be a true
supporter of the people of Thailand who suffer from u nfairness especially in the case of essential
requisites like medicine.
The next case also involves medicine, specifically Thai trad itional medicine. Again, this case was not
an appea l of the Board of Patents’ decision since the Patent Office had already granted a patent to the
defendant. In the Supreme Court’s decision No. 4783/254 9
142
, Khaolaor Pharmacy Partnership Ltd.
(Khaolaor) and o thers were plaintiffs and Muntana Panich Chiangmai Co. Ltd. (Muntana) and others
were defendants. In the case, both plaintiffs and defendants manufactured and sold modern medicine,
traditional medicine, Chinese medicine, cosmetics, and supplementary food that had Pueraria mirifica as
an ingredient. On August, 1999, Muntana announced on a daily ne wspaper (in Thai) that
Muntana Panich Chiangmai Co. Ltd is the patentee of a Thai patent No. 8912 for products that have
Pueraria mirifica as an ingredient. If anyone is manufacturing, selling, having for sale, or offering for
sale products that have Pueraria mirifica as an ingredient, that person shall cease and desist such act and
recall all products that violate the patent from the market immediately.”
The plaintiffs examined the publication of the defendants’ patent application a nd found that the
invention of the defendants was not new because it was already disclosed si nce 1931. With those claims,
the plaintiffs sued DIP for granting of the invalid patent and sued the defendants for infringing the
plaintiffs’ right s and causing damages to the plaintiffs. The plaintiffs requested the Court to revoke the
patent No. 8912. The defendants’ essential testimony was that (1) the plaintiffs had no right to file a
lawsuit, (2) the lawsuit was illegal, and (3 ) the invention was new and had never been disclosed anywhere
before the application date. No netheless, the Court revoked the patent because the patent was invalid.
Afterwards, the defendants appeale d the Court’s decision to the Supreme Court. The Supre me Court
opined that t he invention was not new and had no i nventive step since the use of P ueraria mirifica in
products had been common in Thailand for a long time. Beside s, the plaintiffs had lawful right to file a
lawsuit against the defendants b ecause they were in the s ame business. Therefore, the Supreme Court
decided to uphold the decision of the Court.
143
In the decisions of the Court and the Supreme Court a bove, the judges focused more on th e factors of
the patentable subject. Once the judges compare the disclosed document with the patent application, the
similarities between these documents made the Supreme Court jud ges decide t hat the patent was not
novel, leading to a revoc ation of the patent. Moreover, the use of Pu eraria mirifica in products is quite
common in Thailand since it is a traditional herb whose pharmaceutical qualities are widely known, a fact
which the judges were likely aware. In any case, the suppo rting evidence made the uncomplicated for the
judges. Decisions like these p revent unfair competition from would-be patentees as it bl ocks them from
dominating Pueraria m irifica market. As such, pate nt opposition, even in the Court, still can control
patent quality and serve to balance competition as well.
Lastly, the Supreme Court Decision No. 8 993/2547
144
covering an invention patent for a condenser
and refrigerant compressor is worthy of consideration. In this appeal case resulting from a decision of the
Board of Patents to r eject the patent, the Supreme Co urt decided to uphold the decisio n of the Court to
cancel the decisions of the Board of Patents and the Direc tor-General, who were defendants. The story
began when Hitachi Ltd. had applied for an invention patent for condenser and refrigerant compressor but
found itself facing two oppositions. The Director-General decided to reject the application because the
invention was not new and had no inventive step. The Board of Patents also upheld the decision of the
Director-General. However, Hitachi subsequently appealed the decision of the Board of Patents to the
Court. The Court ruled on 16 October 2000 that Hitachi’s Patent Application No. 014866 was a new
invention that also had an inventive step. Therefore, the Court canceled the decision of the Board of
Patents and ordered the Director-General to permit the patent application to the n ext stage. The
defendants in the Court appe aled the judgment to the Supreme Court, claiming that the invention in the
142
The Supreme Court of Thailand decision No. 4783/2549
143
Decision No. 4783/2549 of the Supreme Court of Thailand
144
The Supreme Court of Thailand Decision No. 8993/2547, which must follow from Thai Board of Patents Decision
No. 1/2542, as already discussed in 4.2.
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application was not new and had no inventi ve step. As mentioned, the Supreme Court a greed otherwise
and ordered to cancel the decision of the Board of Patents and proceed the patent application to the next
stage.
From the judgment we see that oppositions do not only serve to prohibit patent registration, but also
act as a procedure which promotes fairness for both the applicant and the opposing party, as Hitachi. One
of the parties may lose d uring opposition procedure, but because of the appeal procedure to the Court a nd
the Supreme Court, such party can restore his lawful right.
In the author’s o pinion, the pre-grant opposition system and the appea l procedure to the Central
Intellectual Property and International Trade Court and to the Supreme Court, division of Intellectual
Property and International Trade suit the patent registration system in Thaila nd perfectly. Nonetheless,
while the system is good, it would benefit from the hire of more officers and judges expert in a variety of
subject matter. The discretion of patent examiners, patent committees, the Director-General, and the
Board of Patents are tremendously essential to the fairness of the patent registration system. Further more,
quality patent agents and lawyers are also in need as half of pa tent lawsuits are dismissed in the Central
Intellectual Property and International Trade Court due to a lack of intellectual property knowledge and
inexperience on the part of the agents and lawyers.
145
5. Effectiveness of the opposition procedure in Thailand
In most developing countries, tr ade channels are narrow regardless of the type of prod uct. This is because
business operators in such countries are comparatively few in proportion to the population. For any
business in Thailand, the market is small and competition scarce. At most, there are me rely five or six
businesses offering the same pro ducts in the sa me market. Since competition is not as grea t as in larger
and more developed c ountries, the chance for a monopoly or business cartel are great. Dominant
companies in the market can also abuse their po wer in order to grant a patent grant. Thus, it is essential
for a patent office to have strong quality control before granting any patent. Yet, the number of exa miners
in a patent office may be insu fficient to examine the validity of the components of an invention. Pre-grant
opposition can help with this issue in obstructing i nvalid patents through the help of other persons apart
from examiners in a patent office.
From the examples above, an oppo sition in Thailand may or may not succeed depending on discretion
of the Director-General, the Board of Patents, the Central Intellectual Property and International Trade
Court, and also on the capability of the opposition to present a convincing argument. Analyses of how
pre-grant oppositio n in Thailand controls patent quality efficientl y is subjective yet must depend on the
factual basis of each case. As analyzed in Part 4, pre-grant oppositions by interested persons have stopped
the grant of a bad quality patents in ma ny instances. These pre-grant oppositions can win relatively
effortlessly i f an application is clearly invalid and an opposing party can prove that. Part 4 proves that
Thai patent officers are ef ficient enough to consider each opposition and its appeal justly. For example,
the GPO has succeeded many times via pre-grant opposition to defend the public interest i n generic drugs
from co mpanies that have sought for patent for them. Moreover, Thailand has an excellent specialized
court system in intellectual pro perty law. The system does not have a procedure in the Court of Appeal
which enables a plaintiff to appeal directly to the Supreme Court from the Central Intellectual Property
and International Trade Court.
However, oppositions in Thailand are not always successful. T he main reasons for failed pre-grant
opposition in Thailand as analyzed in Part 4 are (1) poorly prepared documents and insufficient e vidence
and claims, (2) inexperienced patent agents or lawyers, (3) unpredictable discretion of officers, (4)
evidence of foreign registered p atents, and (5) influence of large companies. There are also random
reasons for failed patent oppositions s uch as an obscured employment contract
146
, inability of t he
Director-General and the Board of Patents to count the 90-day period from a publication d ate correctly
147
and negligence of examiners to remove a dosage claim from essential medicines.
145
K. Suppawatanakul, “10 years passed of the DDI pharmaceutical patent case and Thai patent registration system
still has problem (in Thai)”, Thailand Information Center for Civil Rights and Investigative Journalism (TCIJ),
Available at accessed 29 March 2013
146
Decision of Thai Board of Patents No. 2/2541
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Decision of Thai Board of Patents No. 21/2549
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Regarding the current efficienc y of pre-grant opposition in Thailand, the 90 da ys period is an
adequate minimum of time to make an opposition. This is because if the period were longer, it would
prolong the grant of patent, a dversely affecting applicants’ rights. If a patent is truly invalid, any person
can challenge the invalidity and revoke such patent with the patent office or the Court. The author is
satisfied with pre-grant opposition in Thailand as of now. Yet there is room for improvement in
performance. Firstly, the author suggests related authorities to set up a standard for similarity between
prior arts and an invention i n an application. Clearly establishing a set of rules and regulations for
determining technical, chemical, and biolo gical functions are also necessary for examiners to decide the
validity of an inve ntion according to the same standards. Patent applications should be published in
famous daily newspapers to access a wide eno ugh audience to get the attention of any po tential opponents
of an application because t he oppo sition must be done s trictly within 90 days after the publication.
Finally, the author suggests the Department of Intellectual Property recruit more experienced e xaminers
in order to check prior arts and scrutinize the validity of patent applications more ef ficiently. Enacting
these suggestions will improve the quality of pre-grant opposition in Thailand, which will lead to an
improvement of patent quality as well.
It must be stressed here that the patent registration procedure must have an opposition process to
control patent quality. The lack of an op position procedure can lead to a tremendo us number of
revocations and lawsuits to a patent office and the Court. Moreover, it will lead to a quick process of
granting a patent; yet many patents will be granted carelessly and will prove to have bad quality in the
end. It is wrong for anyone to be granted a patent when the patent is in fact invalid. In addition, a pre-
grant oppo sition can help terminate an application before a grant of a patent if an obvious invention is
applied for a patent. Likewise, it is extre mely essential to improve the quality of exa miners and officers in
the patent office from time to time as well as recruit more specialists to examine each application. Pre-
grant opposition by interested persons or prosecutors is necessary, especially in developing countries
where a balance between the rights of inventors and public benefit must be well maintained. T herefore, in
Thailand, the pre-grant opposition procedure can be counted a s a strong mechanism to scrutinize a patent
application by any interested person before an examination proc edure by examiners.
6. Tendency of patent opposition system in Thailand
When an applicant a pplies for a patent, any interested pe rson can oppose the patent application within 90
days after a publication of the patent application. Thereafter, an app licant may make a counterstatement
against the opposition. After that, the Directo r-General will make a decision either to reject the opposition
or rej ect the application. Any party that does not agree with the decision of the Director-General has a
right to appeal the decision to the Board of Patents. These opposition processes are handled within the
Patent Office. Therefore, in each d ecision of Thai Board of Patents, there are two parts: (1) decisions of
the Director-General, and (2) decisions of the Board of Patents.
From information kindl y given by the legal office of the Department of Intellectual Property, the
author has composed a table of decisions for petty patents, decisions with oppositions from i nterested
persons, and decisions in which the Director-General ordered to reject patent applications without
oppositions from interested persons. The Board of Patents d ecisions that the author includes cover the
period from 1995 to 2011. In total, there are 255 decisions but with just 80 decisions that have
oppositions from interested persons. Each year, decisions of the Board of Patents with oppositions from
interested persons can be divided as the table below.
The applicant applied a patent for a pile rig. The application was opposed based on a reason that the
opposing party’s patent was infringed. However, the opposition was rejected by the Director-General because the
opposing party did not oppose within 90 days from the date of publication of the application. The opposing party
appealed and the Board found that the opposition was filed within 90 days of the publication date but the application
did not infringe the patent of the opposing party because the rig in the application was not similar to the patented rig.
Improving Patent Quality through Pre
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grant Opposition
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251
Table of Decisions of the Board of Patents with Oppositions fro m Interested Parties,
1995 to 2011
From the table above, the number of decisions with oppositions is much lower tha n the total number
of decisions that the Board of Patent has decided per year. For example, in 1996 and 1997, decisions with
oppositions represented only two decisions out of fourteen and nineteen decis ions respectively.
Furthermore, there was no d ecision with oppositions by interested persons at all fro m 2002 through 2003.
One could argue that it was a period that Thailand had just recovery from the economic cr isis. The
situation resulted as no p atent oppositions filed, nor any design patents granted because business
entrepreneurs focused only on mainta ining t heir business after the collapsing econo my. The number o f
decisions with o ppositions by interested persons has risen again from 2004 onwards. Especially in 2010,
the total number of decisions with oppositions reached twenty-four, with design patent applications
representing those most opposed.
On the other hand, in separating the table according to decisions of the Director-General and the
Board of Patents, the research finds that most patent oppositions failed in the Director-General round as
compared to appeals in the Board of Patents round. This information indicates that a typical opposing
party may not yet be ready with supporting documentation and convincing evidence when the Director-
General makes a decision, but they prepare better for the decision of the Board of Patents. As a result, the
number of successful oppositions in the Board of Patents round is higher than the number of successful
oppositions in the Director-General round. In the same wa y, the numbers of failed oppositions in the
Director-General round are more than numbers of failed oppositions in the Board of P atents round. From
the record, the author generates a graph for decisions in the Director-General round and a graph for
decisions in the Board of Patent round from year 1995 to year 2011 per the below.
W
.
Puasiri
252
The graph above shows that successful design patent op positions are trending upwards, although the
numbers of successful oppositions le ssened a bit in 2011. T he dip may be due a decrease in the total
number of patent oppositions presented before the Board. Failed design patent opp ositions are also on the
rise as well, but their average is lower than for successful design patent oppositions. Nevertheless, both
failed and successful invention patent oppositions have fallen continuously since 2006. Therefore, the
tendency is that the number of invention pate nt oppositions will continue to be lower than the number of
design patent oppositions in the Director-General round. Also, it seems that failed invention and desi gn
patent oppositions will continue to increase in the Director-General round. The Director-General tend s to
reject oppositions rather than patent applications.
Additionally, the graph above shows that from 2005 onwards, successful desig n p atent oppositions
have increased tremendously compared to failed design patent oppositions. This trend should continue for
a couple of years due to the promotion of a desi gn patent by the Thai Research Fund and DI P. In the same
way, the number of successful invention patent oppositions has fallen since 2006, but the numbers of
successful invention patent oppositions are still higher than the number o f failed invention patent
oppositions in the Board of Patents round. It seems that the Board of Patents will continue to decide in
favor of patent opp ositions and reject patent applications, regardless whether they are inve ntion or design
patents.
Improving Patent Quality through Pre
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grant Opposition
in Thailand
253
7. Concluding remarks
As R. Polk Wagner has stated, “There is perhaps no patent is sue with a higher profile than the question of
patent quality.”
148
Poor patent quality can have many negative consequences, as we explore above.
Improving patent quality via the opp osition system is a method with proven successes. However, the
results depend on many factors, such as t he patent registration system and its enforce ment in each country
and economic circumstance. Also, the q uestion as to whether pre-grant or post-grant opposition is better
is difficult to answer. Different countries may have different results even if they adopt the same type of
opposition. As such, pre-grant patent opposition in Thailand is studied as an example. Thorough research
found that pre-grant opposition system in Thailand has proven worthy of its enactment because the
system prevents many low quality patents as well as defends public interest via different means,
especially in the case of pharmaceutical patents. T he research indicates that p re-grant patent opposition,
with or without post-grant opposition, is well-suited for Southeast Asian countries like Thailand mainly
because of its lo w cost and the likelihood of abuse of the post-grant opp osition system in which the grant
of patent can be canceled. Moreover, the pre-grant opposition system can maintain social benefits for
majority of T hai people who are still poor and need aid from developed co untries, not advantage-taking.
Undoubtedly, pre-grant op position is essential for the T hai patent registration system because it serves to
balance the country’s private and public int interests.
.∗ ∗ ∗ ∗ ∗
© 2013
This work is licensed under a Creative Commons Attribution-Noncommercial-
No Derivative Wo rks. Cite as: Wanwipar Puasiri . Improving Patent Quality t hrough Pre-grant
Opposition in Thailand.Journal of International Commercial Law and Technology, Vo l.8 No.4
(October,, 2013)
148
Wagner, R. Polk, Op. Cit, p. 36
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