1. Most common patent issues companies doing business in Thailand face:
Infringement of invention and design patents by way of:
- local manufacture
- sale of counterfeit patented products/goods
- import and export of counterfeit patented products/goods
Patent validity challenges
Appeal of Rejections based on Novelty or Inventive Step
2. Patent legal proceedings in Thailand compared to other countries
The patent prosecution process can take up to 4 years due to the back log of applications and under-resourced Patent Office. If the applicant wishes to claim priority for a Thai patent application based on a corresponding patent application, the corresponding application cannot have been published or granted within 12 months prior to the Thai filing. If the applicant does not wish to claim priority, then the corresponding patent application cannot have been published or granted within 18 months prior to the Thai filing date.
Although Thailand is an examining country, Thailand is currently not a member of the PCT. Thus, the manner in which priority documents are prosecuted is based on the Thai Patent Act B.E. 2522 (A.D. 1979) as amended by Patent Act B.E. 2535 (A.D. 1992) and Patent Act B.E. 2542 (A.D. 1999).
Thailand allows for an opposition to be filed against a pending patent application when the application is published according to Section 31 of the Patent Act. The opposition must be filed within 90 days after the application is published. If the applicant fails to file a counter-statement to the opposition within 90 days after the opposition, the applicant is deemed to have abandoned the application.
Civil and criminal actions based on patent infringement can be filed with the Intellectual Property & International Trade (IP&IT) Court.
Court ordered fines imposed as sanctions in criminal patent infringement cases escheat directly to the Thai Government.
3. The 3 main things a company needs to be aware of with respect to patents in Thailand
- Thailand is not a member of PCT yet, so one must locally register patents to protect invention or design in Thailand. Action against copycats is immeasurably more difficult in the absence of a registration. With a registration, enforcement is relatively straightforward and effective.
- Thai laws favor employees when it comes to rights for inventions or creative works, so it is important to have employees sign confidentiality agreements to assign IPR to the employer.
- Have remuneration/reward scheme in place for employees that create an invention that are assigned to the employer.
4. Type of legal system in place with respect to companies doing business in Thailand. How foreign companies are treated and are foreign companies treated differently?
- Thailand’s legal system is based on civil law but borrows liberally from common law jurisdictions
- Foreign companies are not treated differently by the legal system except that certain formalities are required for a Thai Court to accept documents as evidence in proceedings (i.e., notarization and legalization of documents, certification of copies, translations, etc.) Foreign registered patents generally receive no protection. Protection is only offered to inventions and designs registered locally under the Thai Patent Act.
5. Trials decided by judge or jury? Does it change depending on the case?
- Only Judges preside over trials regardless of the subject matter. In patent proceedings, two judges of the law are assisted by a lay judge with subject matter expertise in deciding the case.
6. Theories of recovery in Thailand
- Rights holders have protection under legislation rather than caselaw
- Statutory remedies including damages, injunction, forfeiture, criminal liability and cancellation are available under the Patent Act
- Civil and Commercial Code provides for tort recovery for “wrongful act” of infringement
- There is a debate whether one may assert a theory based on applied work of art under the Copyright Act to protect and enforce unregistered designs in Thailand.
7. Process of patent disputes in Thailand
- Send a demand letter to the infringer directing to cease its infringing activity.
- Followed by settlement negotiations and execution of Undertaking.
- If the infringer refuses to voluntarily settle, then decide whether to pursue a civil action, injunction, attachment of evidence by Anton Pillar Order or conduct criminal raid on infringer’s premises if there is sufficient evidence of infringement to seize infringing products.
- There is no meaningful system of discovery in Thailand legal system
- Raid or Anton Pillar seizure is followed by filing of criminal charges or civil lawsuit based on evidence seized during raid.
8. Filing civil patent lawsuit in Thailand
- Uncover the infringement by investigation.
- File civil complaint listing basic statement of facts and cause of action with IP&IT Court.
- Prepare and submit Affidavit, supporting documents and evidence, and list of witnesses that will testify to the Court.
- Helpful to have local distributor to testify in Thai about impact of infringing goods on market and consumer confusion.
- Contact Patent Examiner to testify as an expert about particular aspects of the infringing goods as compared to the patented claims of the invention or design.
- It will take approximately 1-2 years for the Court to reach a final judgment.
- Appeal of the IP&IT Court’s decision can be filed with the Supreme Court.
- It will take approximately 1 year for the Supreme Court to render its final decision.
9. Other basic reference/information a company should be aware
- Only 10-20 civil patent infringement cases are filed each year in the Thai Courts
- Business method patents have not been successfully granted by the Thai Patent office.
- Courts and practitioners lack technical expertise to try cases involving sophisticated patented technology
- No truly professional Patent Bar exists; patent lawyers and agents often do not have science or technical background.
- Thai patentees most commonly try to register and enforce design or petty patents, because the expense is less
- Most common defense to patent infringement lawsuit is to challenge the validity of the patent.
- Expect a patent infringement litigation to cost between US$10,000-$15,000 plus expenses and tax.
- In cases involving claims of infringement of process claims, the patentee merely must prove that there is a similarity or identity of end-products and the burden of proof is reversed so that the accused must prove he or she used a different process than the patented process.
- Foreign court judgements against Thai companies are generally unenforceable in Thailand, so it is not recommended that choice of law or forum be set in any jurisdiction other than Thailand when dealing with a Thai party in a transaction involving patented technology.
Discussion of Thai Patent Law Regime
1. General description of Thailand’s legal system
Thailand is governed by a Constitution, bilateral and multilateral conventions and treaties, and the basic codes, and operates a series of special legislative enactments called Acts, of which there are hundreds. Acts are implemented through Royal Decrees, Ministerial Regulations, Ministerial Notices and Notifications, and Departmental Regulations, Orders, and Notices.
Customs and common practices are used absent general legal provisions and where there are no local customs, customary international law or general principles of law (maxims) are recognized as a source.
The Thailand Constitution (1997)
The Constitution is the supreme law concerning the administration of government of the country. There have been amendments and promulgation of the Constitution to be compatible with the changing situations in any period. The most recent promulgation is the 1997 Constitution, which was the result of an idea for developing democracy inaugurated during Prime Minister Banharn Silpa-archa’s government.
In addition to the same principle in maintaining the democratic regime of government with the King as the Head of State, exercising legislative power through the National Assembly, executive power through the National Assembly, executive power through the Cabinet, and judicial power through the courts, the 1997 Constitution clearly aimed at fundamental reform. It recognized more rights and freedoms than any other previous Constitution and is clear in its commitment to hold elected politicians and public officials accountable. This was designed to create greater transparency while making the Thai political process open to more public participation. Civil liberties were for the first time associated with the idea of “human dignity.” Slavery and torture are prohibited. Arrested persons must be brought to court within 48 hours after arrest. The State’s duty to nurture the family was affirmed, as was an individual’s right to privacy.
There are practical guarantees to ensure that the public would have access to means of airing their views. Access to media is guaranteed through a number of measures, including efforts to end state and private monopolies of radio, television, and telecommunications.
The State is required to provide 12 years of free education. Other social rights include health care for the poor, pensions for the elderly without means of support, and guarantees for accessible facilities for the handicapped.
Direct citizen participation in the political process is provided for in a number of situations. Fifty thousand electors can now submit a piece of legislation to Parliament or can ask the Senate to remove high officials in three levels of government if they should appear “unusually wealthy” or in instances where such individuals exercise their powers unconstitutionally.
Compulsory voting was introduced, which militates against buying votes because it would require too much cash to be feasible. An Election Commission has been created to administer and oversee elections. It will have wide-ranging investigative and prosecutorial powers. It can also call for new elections. There is a provision for limiting campaign monies and providing candidates and parties with support to guarantee fairness.
As to an electoral system, 100 members are elected from party lists, and the other MPs are chosen from single-member constituencies. This is to deter vote buying, allocate seats more fairly, strengthen the party system, and give an opportunity for parties to choose candidates for their knowledge and quality rather than their electability.
In order to counter corruption, a National Counter Corruption Commission was created and given the power to investigate and charge any official suspected of being unusually wealthy.
A Constitutional Court was established to deal with all laws challenged as unconstitutional. The National Human Rights was formed to protect and promote human rights. An ombudsman will be appointed with jurisdiction over maladministration and the power to report to Parliament on any official’s failure to comply. A special Administrative Court was established to deal with disputes between ordinary citizens and government officials and other matters of maladministration.
The Prime Minister and 35 Ministers make up the Cabinet. They are collectively responsible to the House of Representatives and remain in office as long as they retain the confidence of the House. But they also have the power to recommend dissolution of the House, but no power to recommend dissolution of the Senate. A vote of the existing members of the House is required for a no-confidence debate to be initiated against a Prime Minister for unusual wealth or malfeasance while in office. A successful vote of no-confidence requires a majority of one-half of the total number of existing members of the House of Representatives. A similar process can initiate a no-confidence motion against an individual Minister, but with only one-fifth of the signatures of the House members.
The 1997 Constitution, although permitting MPs to become Ministers, prohibits them from retaining their seats in Parliament. Ministers can also be drawn from the MPs on the party list.
The 1997 Constitution has had substantial impact on the reorganization of the political system, as well as the judicial system, in Thailand.
2. Basics of patent laws affecting companies in Thailand
Registration: Application procedure
Under the Patent Act and the Ministerial Regulation No.21 (B.E. 2542), the process of obtaining the right to a patent in Thailand begins with submission of the application to the Department of Intellectual Property (DIP) together with drawing(s) of the invention or design and the applicant’s right to the invention or design (only one inventor or set of inventors may claim the exclusive right). After the application has been filed, the Examiner will carry out the preliminary examination to check whether the application documents (i.e. the notarized Power of Attorney and Deed of Assignment) are in correct form and whether the invention or design is in compliance to the Thai Patent Law. This procedure would take between 6 to 12 months. Once the preliminary examination has been completed, the notification for paying the publication fee will be issued.
After the publication fee has been paid, the application will then be examined for novelty issues. If no amendment is required on the application, the notification for paying the registration fee will be issued. There is no specific time period regulating when the registration of the patent will issue after application, but at best, the time period may range from 1 to 2 years after the application has been published. Accordingly, the total time between application and grant may be approximately 2 years or up to 4 years.
Once a patent has been granted, payment of an annuity fee must be made each year to renew the patent.
The examination can be expedited by submitting a letter to the Registrar, disclosing a good reason for expediting the application. Among valid reasons: if the client’s invention or design has been infringed in Thailand, it is necessary to have a patent certificate to take action in the Intellectual Property & International Trade (IP&IT) Court. The period of time to grant the patent certificate would be reduced to 1 year from up to 2 years. However, this method is based on the Registrar’s sole discretion.
When submitting an expedition request letter, evidence to show to the Registrar that the invention or design was infringed, such as photos/affidavits describing counterfeit products, samples of the product for which protection is sought, etc., must be presented.
Thailand is not a signatory to either the Paris Convention or PCT. However, Thailand does recognize the principle of national treatment, as long as the foreign country of first filing granted a reciprocal right to Thailand.
To file a new patent application in Thailand, the following documents are required:
- a notarized Power of Attorney for each application or a notarized general Power of Attorney;
- an assignment bearing signatures of inventor as assignor and applicant as assignee;
- Priority document; and
- Drawings or black & white photographs of A-4 size (8.5″ X 12″) showing front, back, side, top, bottom and perspective views of the product (five copies per view).
Duration of protection
By virtue of Section 62, a patent granted for a invention or design shall take effect and remain in force until the end of the period of 10 years beginning with the date of filing in Thailand of the application for the patent.
An applicant or an interested party who is dissatisfied with the order or decisions of the Director-General or The Board of Patent (The Board) can appeal within 60 days after receipt of such order or decision. If the parties fail to do so within the said period, the order or decision of the Director-General or the Board shall be final. Grounds for appeal are as follows:
- When the Director-General rejects the application or has decided that the invention or design belongs to the opposite party, the applicant may make an appeal to the Board. Then, the application will be considered by the Board, the Board may require the opposing party, the applicant, the patent owner, the party patent owner or any party as the case may be, to submit any evidence or additional statements. This procedure would take approximately 6 months or up to 1 year depending on the amount of evidence that the Board must consider.
- When the Board of Patent has rendered any order or decision in connection with the appeal of any party, if the applicant is dissatisfied with it, the applicant may appeal to the IP&IT Court. This procedure would take approximately 1 year.
Enforcement Against Patent infringements
The patent owner or its licensee has the sole right to use the patented invention or design with the product for which it is registered. Where it appears that a third party has illegally used the patented invention or design to sell, to offer for sale, possess for sale or import such products for commercial exploitation without the consent of the patent owner, it shall be deemed that that person has infringed upon the patent owner’s rights.
The standard for determining whether there is an infringement is the subjective judgment of the patent examiner or IP&IT Court Judge sitting in judgment of the claim. Clearly the alleged infringing invention or design must be so “similar” to the patented invention or design as to be covered by the patent. However, there is no objective standard in Thai practice as to what constitutes the necessary “similarity” as to cause a judgment of infringement.
The DIP is the organization that governs the administration of the Board of Patents, where there are patent examiners who have authority to determine whether there is an infringement.
It is generally more difficult to enforce patents than it is to enforce other areas of intellectual property law in Thailand, for the following reasons:
- In seeking to obtain criminal remedies for infringement, the primary obstacle is that the law enforcement officers lack training and understanding of patents or technology in general. Unless the suspect item/product can be readily shown to be an exact duplicate of the patented invention, it can be difficult to convince the police to act.
- In the civil context, the primary obstacle to accomplishing the desired result is the lack of discovery in Thai civil procedure. Generally, a plaintiff must gather evidence from raid actions prior to filing a claim. This is an inefficient, hit-or-miss process and there is a great problem with concealment or spoliation of evidence by defendants.
There has been little, if any, patent litigation in Thailand over the past several years, so there is a relative dearth of case law and guidance from the courts on the issues. In 2000, there were a grand total of only 4 patent infringement cases filed with the courts. In 2001, only 14 cases were filed under the Patent Act. Of these, 10 were for criminal patent infringement and 4 were civil patent infringement cases. The numbers are low because there is a lack of discovery mechanism and an imbalance of the costs of trial versus the uncertainty of recovering damages.
Remedies For Infringement
- Both civil and criminal action may be taken against infringers of a Thai registered patent.
- Criminal action is initiated with the filing of a criminal complaint with police, followed by a police raid (based on a lawful search warrant), arrest of the infringer and seizure of the infringing goods. Criminal sanctions for patent infringement may include fines up to THB 400,000 (around US $10,000) and/or imprisonment up to 2 years. Criminal actions are generally more cost-effective to pursue than lengthy expensive civil actions.
- The right of a patent owner to receive compensation in a civil action for losses suffered as a result of infringement is set out in the Patent Act, section 77ter.
- A preliminary injunction is theoretically available, but rarely granted. The patent owner may apply to the court for an injunction, if there is clear evidence that a person has committed or is about to commit an act in violation of a patent owner’s patent. The court’s issuance of such an injunction will not curtail the patent owner’s right to claim for damages. Patent Act, § 77bis.
Significantly, unlike the Copyright Act, which provides for allocation of fines imposed against copyright infringers, all fines imposed under a criminal patent action escheat to the government. Moreover, a patent owner may not “settle” with the offender after a complaint is filed and a raid is taken. The action must be pursued by the responsible Public Prosecutor to judgment.
Border Enforcement: Customs Action
According to Customs Act (No. 12) B.E. 2497, Customs officers have the power to search without a warrant within the Customs Control Zone. The exercise of this authority must be based on reasonable cause, and not only property/goods may be searched but persons as well. Customs Laws B.E. 2496 grants Customs Officials the power to open and examine packages while the packages are passing through Customs. The same law allows officials to board and search vessels within the Kingdom’ s boundaries. Customs officials also have the authority to arrest persons on reasonable suspicion of an offense against the Customs Laws.
To date, the Customs Act has traditionally been utilized mostly for cases of suspected trademark and copyright infringement. While there is a remedy available for importation and exportation of the illegal products to infringe on patents, it should be noted that Customs Authority is not viewed by practitioners as being an effective enforcement tool when it comes to intellectual property rights.
If a patent owner has cause to suspect that the goods are reproductions or modifications of a patented invention or design, the owner may pursue remedial action in a variety of different ways. The web of regulations that apply include:
- Notification of the Ministry of Commerce Governing the Exportation and Importation of Goods (No. 94) 1993 (“Notification No. 94”)
- Notification of the Ministry of Commerce Governing the Exportation and Importation of Goods (No. 95) 1993 (“Notification No. 95”)
In addition to the Customs regulations, a patent owner also has the option of filing an application in the IP&IT Court for an order of injunction preventing the importation or exportation of goods, provided of course that the patent owner has met the heavy burden of proof on the infringement claim.
Legal Protection Absent A Valid Design Patent
Although there is a lively debate about this issue in Thai jurisprudence at the moment, Copyright protection is theoretically available for unregistered designs under section 4(2) and (7) of the Thai Copyright Act which states that a protected “Artistic Work” means a (2) “Sculptural work as a solid representation of a tangible object” and (7) “Work of applied art as a composition of any or more of the works under subsection (1) to (6) used for other purposes apart from the appreciation of the inherent value thereof, such as that used for utility, decorating material or equipment, or for commercial purposes.” This description applies regardless of whether or not the work has artistic value, and the work shall also include photographs and plans of said work.
Under Thai copyright law, reproduction and adaptation of a copyrighted work is proscribed conduct as per Section 27 of the Act. “Reproduction” includes any mode of copying, imitation, duplication, etc. of the original, a duplicate or advertisement in its material form, whether wholly or in part. “Adaptation” in relation to an artistic work includes conversion of the work into a two-dimensional or three-dimensional form, or production of models of the original.
Section 271 of the Penal Code states, “whoever by any fraudulent and deceitful means whatever, sells a good so as to deceive a buyer as to the source of origin, nature, quality or quantity of such good, if such act does not constitute cheating or fraud, shall be punished with imprisonment not exceeding 3 years or fine not exceeding 6,000 Baht, or both.” This provision is used in the absence of any direct legislation on passing off or unfair competition, which doctrines are not formally codified under Thai law.
Where the owner of a design that is not regitered in Thailand is confronted with an infringement by others, the owner may theoretically commence a civil claim in connection with an offense for damages based on the infringers’ wrongful acts by virtue of the Civil & Commercial Code (“CCC”) Section 420. However, in doing so, the burden of proof rests with the rights owner. The owner of the design has to prove or convince the Court that the claim for compensation is a matter of right.
2. Biggest legal areas of patent law that companies often get into trouble with in Thailand. Do laws affecting companies vary in different parts of the country?
Problems of infringement and lack of discovery to secure evidence related to the infringement remains the most problematic area for companies in Thailand. There is essentially no discovery process in place for a patent owner to determine if their patented invention or design is being infringed. Instead, the patent owner must conduct a private investigation, coupled with a criminal raid with the help of police in order to obtain evidence of infringement. The difficulty in doing so is that police require clear and convincing prima facie evidence of infringement before they are willing to conduct the raid.
As for companies located in non-industrial areas of Thailand, they may face more difficulty in finding cooperation with local police authorities due to the local police’s lack of expertise and understanding of the technologies involved in patents.
The second most problematic area for companies is establishing binding agreements with employees to secure rights to all inventions and creative works. Thai law generally favors the employee and one must be very careful in the fashioning agreements that properly secure rights to the company.
The third most problematic area exists for companies who license patented technology to Thai licensees. Many have had the unfortunate experience of having the license agreement expires or is terminated, yet in many cases the ex-licensees will continue to manufacture without paying any royalty to the patentee. One must be careful in fashioning proper license agreements with clear termination events and consequences of termination.
3. Major things we do for our clients
First we conduct preliminary investigations of the suspected infringer to determine their physical location, size of the infringer’s premises, logistics of how the infringer distributes the infringing goods, and how widespread the infringing goods are on the market. Then we conduct searches through the Ministry of Commerce and the DIP to obtain details of the infringer’s business investment, such as registered capital, who the authorized Directors are, who the shareholders are, influential “protection” available to the company through police, military or political acquaintance, the infringer’s financial statements, etc., as well as whether the infringer has registered protection for the infringing good such as a trademark or patent.
Once we have more in-depth information about the infringer and based on what evidence we may have, we analyze what legal grounds can be relied upon if actions were taken against the infringer. Depending on the size and level of sophistication of the infringer’s business operations, we advise our clients as to what specific formal and informal actions would be most effective.
4. What types of strategies/methodologies do we use/developed in this area of law?
We have developed a so-called “High Tech Team” of lawyers and para-professionals with technical or science backgrounds that is unique in Thailand. We also have on staff a former Judge of the IP&IT Court to assist us in the analysis of infringement or validity claims. This presents us with an advantage in being able to understand and explain in simple terms the nature of a client’s technology so that the police or courts will be more likely to accept the claim of infringement or, in the case of defense of a patent infringement claim, the defense of patent invalidity.
We work with a network of specialized police and private investigators every day and we have expertise in obtaining evidence of infringement, often the most challenging component of any potential litigation.
We also have the most experience of any firm in this jurisdiction in securing Anton Pillar Orders, preliminary and emergency injunctions, permanent injunctions, criminal sanctions and compensatory damages.
Finally, we have developed model technology transfer agreements and licensing agreements to properly secure rights for our clients in transactions involving patented technology.
5. How we would defend a client in Thailand
Defense of a patent litigation almost always involves a challenge to the patent’s validity, based on grounds related to novelty of the technology, lack of inventive step, misconduct in prosecution of the patent, misuse of the patent, etc.
If the client has truly infringed a valid patent that cannot be contested, we would work to negotiate a license to use the technology under reasonable terms.
6. How we would prosecute another company on behalf of our client in a hypothetical case
A company confronted with infringement of a patented invention or design is entitled to full protection offered by the Thai Patent Act. However, other legal remedies may also be available under the Penal Code, Consumer Protection Act if the goods involve foods or pharmaceuticals, Cosmetics Act, Drugs Act, Tobacco Act, Customs laws, Hazardous Substance Act, the Civil and Commercial Code, Revenue Code, Immigration laws and other Acts. We try to present a legal strategy utilizing IP and regulatory laws designed to bring maximum pressure to bear on a company that is infringing our client’s IP.
After the preliminary investigation of the infringer is completed and if the infringer is a large well-capitalized legitimate business concern, as opposed to a street vendor or black market pirateer, we would recommend first to send a letter to the infringer as an amicable means to settling the dispute. If the infringer complies with our demands, we would require that an Undertaking be executed to contractually bind the infringer to refrain from future infringement. Following the Undertaking’s execution, we would assign our investigator to periodically check-up on the infringer’s outlets to ensure that no infringing goods re-surface. If the infringement reoccurs, then our client has the option to take action against the infringer for breach of the Undertaking in addition to other IP violations.
Should sending the letter to the infringer prove to be futile, filing a criminal or civil action against the infringer can be considered if there is sufficient evidence to substantiate the claims. What must also be taken into consideration is whether actual damages can be proven and if so, will the amount of damages exceed at least US$10,000. This is because the Court requires actual damages to be proven before considering granting a claim for compensation. The average cost of litigating a civil action to final judgment at the level of Court of First Instance, is approximately US$10,000, hence, if the actual damages exceed the cost of litigation, it is cost-effective to pursue litigation. If damages are difficult to prove, then criminal sanctions may be the only truly deterrent sanction available.
7. How prominent is alternative dispute resolution in Thailand
Arbitration is recognized in Thailand under the Arbitration Act B.E. 2545 (A.D. 2002), which repealed and replaced the 1987 Act. Thai Arbitration Law generally follow the UNCITRAL (United Nations Commission on International Trade Law) Model Act. Arbitration clauses are increasingly common in commercial contracts, particularly for international transactions and construction contracts.
Parties may agree to submit existing or future civil disputes to arbitration, but the agreement must be a written document or mentioned in written correspondence between the parties in order to be enforceable. The parties are free to agree as to whom the arbitrators must be and procedures to follow. If the agreement neglects to address what the arbitration procedure should be, an arbitral tribunal may conduct the proceedings in a manner that is deemed as being appropriate. In an action that involves a contract that contains an arbitration clause, the claims that relate to the contract may be stricken if one of the parties to the contract raises the issue of arbitration. If neither party raises the issue, the case will be litigated.
Local Arbitration Institutes
There are two Arbitration Institutes in Thailand-the Thai Arbitration Institute of the Ministry of Justice and the Thai Commercial Arbitration Institute of the Board of Trade. Both are well respected and administered, supervised by a diverse advisory board, have standard arbitration rules, and maintain a list of qualified available arbitrators. Parties are also free to nominate qualified outside professionals and may choose any language to conduct the arbitration in, but Thai and English are most frequently used. Foreign attorneys may participate as either arbitrators or legal advisors.
Foreign Arbitration Institutes
In contracts designating foreign arbitration institutes, the ones most commonly utilized are the International Chamber of Commerce (ICC), Singapore, Hong Kong, and London institutes.
Enforcement of Arbitral Awards
If a party refuses to comply with an arbitral award, the award may be enforced only after a court judgment is obtained ordering such enforcement. A petition for enforcement of an award must be filed with the Court within 3 years from the date of when the award can be enforced. The Court may refuse enforcement on limited grounds, such as lack of capacity by one of the parties, lack of notice given to one of the parties, the arbitral award is beyond the scope of the arbitration agreement, or the arbitral tribunal or arbitration procedure was inconsistent with the arbitration agreement.
There is no distinction between enforcement of arbitration awards rendered in Thailand and those rendered in foreign countries, so long as an award rendered in a foreign country is governed by a treaty, convention, or international agreement to which Thailand is a member of. Foreign arbitral awards rendered in member countries of the New York Convention On Recognition and Enforcement of Foreign Arbitral Awards 1958 and of the Geneva Protocol 1923 are recognized and enforced in Thailand, since Thailand is a member of both conventions. Arbitral awards are thus generally enforced whereas foreign judgments are not.
8. The best legal advice on patents we have ever received
Do not commence litigation unless you are fully prepared to make the investment of time and resources it will take to see the case through to judgement. Do not file a claim just in hopes of later settling a case. If your intention is to settle, make every effort to settle without harsh threats, and try to create a “win-win” proposition.
9. Advice on patents we find ourselves most often telling others
Thai culture abhors confrontation, therefore, litigation is disfavored unless it is a last resort. Litigants typically do not settle in Thailand, and litigation tends to destroy any chance at conciliation. Relationships, rather than contracts, govern most business transactions in Thailand. However, do not allow that cultural norm to lull you into a false sense of security. Our laws are not well-settled and there is not a great body of case law to guide analysis of outcomes in patent litigation. Therefore, it is important to have strong contractual protection for your technology in addition to whatever remedies the patent laws afford. When confronting infringers, do not waste time and money chasing the low level retailers- invest the time and money to find the root source importer or manufacturer and stop the problem at the root.
10. How patent laws that affected companies have changed in the last 5 or 10 years
The most significant change in our patent law was an amendment in 1992 that allowed pharmaceutical products to be patented- a reform that came as a result of years of lobbying from the pharmaceutical industry. The enactment of the Trade Secrets Act in 2002 also has proven to be an effective complement to our system of laws in protecting technology and innovation. There have not been any changes or amendments to our Patent Act since the 1992 Act was passed into law.
11. Major changes companies will face over the next 5 or 10 years in terms of changing patent laws in Thailand
So far, no compulsory license has ever been issued in Thailand, but the presence of a section of the Patent Act that allows compulsory licensing, if ever utilized, could have a dramatic impact on companies, especially pharmaceutical companies engaged in production of life saving drugs. We predict that Thailand will at some point threaten to or actually invoke a compulsory license for an AIDS drug within the next ten years.
Thailand will likely accede to Paris Convention and the Patent Cooperation Treaty within the next year. If Thailand becomes a member of the PCT, patent prosecution practice will be dramatically changed. Local businesses that export patented goods such as electronics, computer parts, pharmaceuticals, etc., will have easier and less expensive access to broader protection. The pending negotiations between the U.S. and Thailand for a Free Trade Agreement may bring about reform of the Patent law requiring Thailand to extend the term of protection for pharmaceutical patents, improve its patent application examining capabilities, and of course, to become a member of the PCT.
12. RESOURCES (PUBLICATIONS, WEBSITES, BOOKS) WE FIND USEFUL FOR PATENT LAWS
A. GENERAL INFORMATION ABOUT THAILAND
1. Court system and their respective jurisdiction of cases
Judges are independent in the trial and adjudication of cases and are not be subjected to hierarchical supervision. The Courts were separated from the Ministry of Justice in August 20, 2000. The Office of the Courts of Justice replaced the Ministry of Justice in being responsible for the administrative works of the Courts. Governing the policy of the Courts of Justice is the responsibility of the Court of Justice Executive Board, while promoting, transferring, as well as punishing a judge is under the control of the Court of Justice Judicial Commission.
The Courts of Justice have three levels, the Supreme Court, Court of Appeals classified by territorial jurisdiction (the Central Court of Appeal and the Court of Appeals for Regions 1 through 9), and the Courts of First Instance (in Bangkok and other provinces) including specialized courts, such as the Juvenile and Family Court, the Tax Court, the Labor Court, the Intellectual Property and International Trade Court, and the Bankruptcy Court.
The function of the Supreme Court of Justice is to counter corruption committed by officials. In addition to removal from office by the Senate, the official faces criminal prosecution before the Supreme Court’s Criminal Division for Persons Holding Political Positions if the official is accused of becoming unusually wealthy, committing malfeasance in office, committing dishonest acts in the performance of duties, or corruption.
All Thai courts function in the name of H.M. the King and owe their existence to the Constitution and implementing statutes. There are several different court systems in Thailand:
- Military Courts.
- Administrative Courts.
- Constitutional Tribunal.
- Courts of Justice.
Courts of Justice
Thailand has no juries. Judges preside over the courts. A different number of judges and levels of specialized judicial expertise are required, depending on the level and type of court. There are three levels in this system, the lower court and two appellate levels.
A) Courts of First Instance
Courts of First Instance is the first level in the court system where trials actually take place. There are three divisions of Courts of First Instance:
1. General Courts
There are two different groupings of these courts, one group is for the city of Bangkok, which is the country’s capital and has the largest concentrated population in any city in Thailand. The second group of courts is for provinces outside of Bangkok. In the General Courts, a quorum of two judges is necessary to hear a case, except in the Municipal Courts where only one judge is required.
Bangkok’s courts consist of Civil, Criminal, Provincial, and Municipal (Kwaeng) Courts. Provinces outside of Bangkok are divided by jurisdiction, so that each province has its own Provincial and Municipal Courts. Civil and criminal cases that occur in northern Bangkok are adjudicated by the Min Buri Provincial Court.
The Municipal Court handles civil cases where the claim amount does not exceed THB 300,000, and criminal cases where the maximum possible imprisonment sentence for the offense is three years and/or the maximum possible fine for the offense does not exceed THB 60,000.
The Provincial Courts throughout the rest of Thailand hear cases that in Bangkok would be heard by the Civil, Criminal, or Provincial Court.
2. Juvenile and Family Court
The Juvenile and Family Court has jurisdiction in any criminal case involving children (aged 7 to 14) and youths (15 to 18) and any civil action under the Civil and Commercial Code involving proceedings concerning any minor (under 20). This court also governs family matters such as divorce, maintenance, and custody, and any proceedings in which the court must pass judgment or issue orders affecting children or youths. Children below the age of 7 are not punishable under Thai law, and no imprisonment is imposed upon children under 14.
A trial in the Juvenile and Family Court is adjudicated by two professional judges and two lay judges, with the requirement that at least one of the four judges must be female.
3. Specialized Courts
All Specialized Courts are located in Bangkok. The Labor Court is the only one to have branches in other provinces. Appeals from these courts can go directly to the Supreme Court, bypassing the Appeals Court.
The court procedures in the specialized courts are somewhat different from those in regular trial courts. Before taking any evidence, the court may request a pre-trial conference, where all parties are to appear to cooperate in setting up procedures for fixing the time, date, and methods of proceedings, and for possible mediation or arbitration. The objective of these and other procedures is to expedite case resolution. The court may further allow evidence to be introduced immediately in the interest of preserving the evidence and/or access to it.
a) Central Bankruptcy Court-The Central Bankruptcy Court was established in 1999. Due to a recent amendment, current law now provides for two mechanisms concerning bankruptcy, liquidation, and reorganization. Both mechanisms can be initiated by the debtor or the creditor.
The Central Bankruptcy Court will, under certain circumstances, permit hearsay evidence and allow recorded and/or long-distance live testimony by submission of a deposition, or by hearing witnesses via video conference or computer record admission as evidence.
b) Intellectual Property and International Trade Court-In 1997, the Intellectual Property and International Trade (IP&IT) Court was established as an additional Court of First Instance, to consider international trade and intellectual property disputes.
The IP&IT Court has jurisdiction over the following civil and criminal actions:
- Trademarks, copyrights, or patents (civil and criminal).
- Agreements on technology transfers or licensing (civil).
- International sale, exchange of goods or financial instruments, services, carriage, insurance, and other related legal actions (civil).
- Letters of credit issued in connection with the above civil actions, inward and outward remittance of funds, trust receipts, and provision of guarantees in connection therewith (civil).
- Ship arrests, dumping and subsidization of goods or services from abroad (civil).
- Disputes over layout designs of integrated circuits, scientific discoveries, trade names, geographical indicators, trade secrets, and plant varieties (civil and criminal).
- Offenses under Sections 271 to 275 of the Penal Code (criminal).
Career judges in the IP&IT Court are judicial officials with special training in intellectual property or international trade. The Court also has lay judges with specific expertise in particular areas of intellectual property or international trade. An IP&IT trial is adjudicated by at least two career judges and one lay judge.
The litigation process in an IP&IT Court case is considerably shorter than it would be in the General Courts. Hearings are usually held without adjournment until judgment is rendered. This allows for a trial to be completed within 12 months, plus another 8 to 12 months if there is an appeal with the Supreme Court. The pre-trial conference described above facilitates this process, as does the Court’s inclusion of recorded testimony or live long-distance testimony in lieu of physical appearance where it deems appropriate.
Only in the IP&IT Court procedures are interlocutory injunctions or attachments possible before filing suit. In general civil cases, the plaintiff must prove almost beyond a reasonable doubt that the defendant intends to abscond before such an order is issued.
c) Labor Court-Labor Court trials are heard by a quorum of one career judge, one lay judge selected by employer federations, and one lay judge selected by labor federations. The Central Labor Court completes most of its cases within two to three months after the complaint is filed and tolerates very few delays by the litigants.
d) Tax and Duty Court-The Tax and Duty Court hears tax and customs duty disputes. They require a quorum of two judges, one lay and one career, to hear cases.
B) Court of Appeals
It is possible to appeal a point of fact or law. There are 10 different Court of Appeals, 1 in Bangkok that hears appeals from the Civil and Criminal Courts, and 9 Regional Court of Appeals that hear appeals from the Provincial Courts. At least three judges are needed to form a quorum to hear an appeal.
C) Supreme (Dika) Court
The Supreme Court is located in Bangkok. It receives appeals on questions of law and in some cases, questions of fact from the Court of Appeals, as well as direct appeals from Specialized Courts. The Dika Court has 63 justices, including the President (Chief Justice) and Vice Presidents. It operates with 17 divisions, each composed of three justices, the number necessary for a quorum. When hearing an exceptionally important case, the quorum must be not less than half of the number of judges sitting on the Court.
D) Constitutional Court
The Constitutional Court deals with issues as to whether an existing law is inconsistent with the Constitution.
E) Administrative Court
The Administrative Court deals with administrative disputes between the private sector and the State concerning issues of abuse of power by any such State entity.
F) Military Court
The Military Court deals with criminal cases committed by military officers.
The overlapping of jurisdiction among the courts is resolved by the Jurisdictional Conflicts Solving Committee, which is a specialized committee under the Constitution made up of the President of every court and other qualified persons.
The judiciary is currently made up of over 3,000 professional and trainee judges sitting on Courts of First Instance (excluding the Constitutional Court, the Administrative Court, and Military Courts), plus Court of Appeals and one Dika (Supreme) Court. Some judges owe administrative duties to the Office of the Court of Justice and to act as a visiting judge when needed in courts outside of their official post.
For the most part, judgeship is a career profession, and judge trainees are recruited by open competitive examination. Candidates must be at least 25 years of age with an LL.B. degree from a Thai law school and a Barrister-at-Law degree from the Bar Institute, plus with two years of experience as a court clerk, assistant court clerk, probation officer, official receiver, public prosecutor, practicing attorney, or other government legal officer. Judge trainees then undergo training courses and serve as judges’ assistants (6 months in Civil Courts and 6 months in Criminal Courts) for not less than 1 year.
In place of the competitive examination, a knowledgeability test is given for attorneys with a foreign law degree and a Thai Barrister-at-Law degree, or with a Thai Masters of Law or Doctorate of Law with a 1 year standing as a court registrar, or with a Thai Bachelors degree in law with honors together with 5 years of standing as a law instructor in a State university. In addition to these requirements, the attorney must pass a specially arranged written and oral exams. Special selection is available for attorneys who obtained a Barrister-at-Law degree from the Bar Institute and has expertise/experience in branches of law specified by the Court of Justice Judicial Committee, and acting as a professor in a State university or a Director in a government agency, or 10 years of practice as an attorney.
Appointments, promotions, transfers, and removal of judges are made by H.M. the King upon recommendation of the Court of Justice Judicial Commission. The judiciary and its functions are virtually independent of both the legislative and executive branches. Judges are governed by the Judicial Service Act and may be dismissed from service only for proven misconduct, incapacity, or infirmity.
3. Basic Pleadings
See Complaint Under Procedures Before Trial.
4. Description of Trial
Foreigners, whether resident or non-resident, individual or corporate, are not discriminated against in Thai courts, and can expect a fair hearing by the judiciary. As in most countries, a plaintiff must have better than a 60-40 advantage to win against any government agency.
Basic universal rights and freedoms are generally observed and protected in Thai courts, but one does not have inalienable constitutional rights of the type Americans and other nations are accustomed to.
All courts use the continuous hearing system, which is that all hearings are conducted continuously until the case is completed. Proceedings are conducted in the Thai language and Judges actively participate in the examination of witnesses with due regard to impartiality.
Procedures Before Trial
The following details the administrative process leading up to a trial in Thailand:
- Power of Attorney-The Power of Attorney authorizes an attorney to act on his/her client’s behalf.
- Complaint-The plaintiff files a complaint stating the facts and allegations relating to the defendant.
- Summons-If the Court accepts the claim, it will issue a summons. The plaintiff must arrange for the service of the summons and a copy of the complaint to the defendant within 7 days after the complaint is filed. If the plaintiff fails to do so within such time period, the Court may deem the plaintiff to have abandoned his/her cause of action.
- Answer-Within 15 days of receiving the summons and complaint, the defendant must reply with an Answer, clearly admitting or denying the plaintiff’s allegations in whole or in part, stating the basis of any denials and setting forth any counterclaims. If the Court deems that the counterclaims are unrelated to the complaint, the defendant will be ordered to file a separate action. The plaintiff must then file an Answer and any counterclaims within 15 days after being properly served with the defendant’s Answer. If there is reasonable cause, the time prescription can be extended, but with the Court’s prior approval. If it is necessary to post the summons on the defendant’s dwelling or place of business, the law allows the passage of 15 days for service before the 15-day period begins.
- Amending Pleadings-In criminal cases, parties may amend their original pleadings (i.e. plaint or answer) at any time until the entry of judgment. The frequency in amending the pleadings in civil trials varies, depending on whether the judge has stipulated a settlement deadline. For both criminal and civil actions, no new claims or counterclaims may be added unless they are closely related to the original claims.
- Issues In Dispute-After the pleadings are filed, the parties may, by agreement or with the Court’s assistance, establish a list of issues in dispute. The Court then fixes a date for the Settlement of The Issues hearing specifying which issues must be proven.
- Settlement of The Issues-The parties appear to submit all original documents and evidence. The parties inform the Court whether they are in agreement as to what the disputed issues to be tried are. The trial date is then set.
Effective pre-trial discovery concepts and procedures are unknown in Thailand, as is declaratory relief. Subpoenae duces tecum (summons) are available to force an opposing party to produce documents.
Attachment of finances or property before judgment is rare and difficult to obtain. For an attachment order to be issued, the plaintiff must prove almost beyond a reasonable doubt that there is a substantial likelihood that the defendant will abscond.
In civil cases where a plaintiff is a non-resident, the defendant is entitled to have a security posted (usually a bank guarantee, land title deed, or cash) to cover the defendant’s costs and legal fees in the event that the defendant prevails. In criminal cases, a defendant is also entitled to have security posted during the trial.
In general, a civil action can be filed in Thailand if either party is domiciled in or a national of Thailand, the cause of action arises from an incident that occurred in Thailand, or the defendant has property in Thailand. Thailand also has in rem jurisdiction for maritime actions, which means that ships in Thailand can be seized or the crew can be arrested.
Summons–Default of Answer and Appearance
Either party may be found in default for failure to file an Answer to the complaint or appear in Court, but only upon filing a motion or petition with the Court.
If the defendant fails to file an Answer, the plaintiff may immediately seek for a default judgment. After the default judgment is served on to the defendant, the defendant may appear to explain the default. If failure to answer was involuntary or otherwise justified, the Court will ordinarily grant the defendant a reasonable time to answer. If the default was unjustified, the Court will order the action to proceed without permitting the defendant to file an Answer. If the plaintiff fails to file for a default order within 15 days after the deadline for the defendant to file an Answer, the Court will strike the case from the court docket.
If both parties are in default, the action will be stricken from the court docket without prejudice. If the plaintiff fails to appear, the Court will strike the action, unless the defendant requests that the action proceed, in which case it will be adjudicated ex parte. The fact that a party is in default will not affect the Court’s decision, since the Court only considers the merits of the case.
Procedures During Trial
- List of Evidence-Each party is required to submit a list of evidence to the Court. The opposing party must receive a copy of the list of documents and issues at least 7 days before the date of Settlement of The Issues hearing. Either party can introduce new evidence after the deadline if reasonable grounds can be shown for doing so.
- Form of Evidence for Submission-With limited exceptions, only original documents are admissible. Microfilm, photostat, and facsimile copies are not considered to be reliable evidence, although they may be admissible under limited circumstances. The parties must submit all original documents to the Court at the Settlement of The Issues hearing.
Foreign documents are admissible, but they must be originals or certified as true copies via notarization and authentication by a Thai Consulate or Embassy and translated into Thai.
- Witnesses-Witnesses are required to authenticate documentary evidence. Their testimony must be in Thai or translated into Thai. Translators are permitted under the Civil Procedure Code for persons who do not speak Thai, but must be provided by the party offering the testimony.
Testimony from witnesses abroad can only be taken through the use of Letters Rogatory, a time-consuming effort, but the only effective procedure available.
- Emergency Orders/Temporary Injunctions-These are theoretically possible at any time before judgment is entered, but they are rarely granted. The Court must be satisfied that the complaint is justifiable and that sufficient extenuating circumstances exists. The defendant may at any time petition the Court for the withdrawal of such an order, and the Court may require the plaintiff to deposit security as indemnification for obtaining the order wrongfully or in bad-faith.
- Presentation of Final Arguments-After all of the evidence are heard, both parties are entitled to present final oral and/or written closing arguments by citing legal precedents. The opposing party is also entitled to rebut the other party’s final arguments.
- Burden of proof-The burden of proof is the preponderance of evidence in civil trials and rests with the complainant. In criminal trials, the burden of proof is beyond a reasonable doubt and rests with the prosecution.
- Judgments-Judgments are given in writing and are read aloud in court.
Procedures after Trial-Remedies
The Court of First Instance generally has the power to issue Writs of Execution to enforce its judgments and decide matters relating thereto. When a Court issues an execution order, it can also issue an order instructing the judgment debtor to:
- Pay the judgment.
- Deliver the property.
- Perform a certain act. Compensation can be claimed for all damages arising from non-performance and special circumstances which the defaulting party foresaw or ought to have foreseen.
An Execution of Default Judgment allows the debtor 7 days to comply. If a new trial is pending, the debtor may petition the Court to stay execution of the judgment. In cases where execution of a judgment is based on default for failure to appear, proceeds of the public auction of the attached property may not be distributed until 6 months from the date of the seizure, unless the Court is satisfied that the debtor had actual notice of the action.
Payment of the Judgment
Judgments ordering for payment can be in foreign currencies if that is the currency specified in the pleadings, and was intended by the parties. Monetary awards carry a statutory rate of interest and are generally calculated either from the date the action was filed or the date the judgment was rendered. Judgments may award costs and attorney fees not exceeding 5% of the amount in dispute at the Court of First Instance and not exceeding 3% of the judgment at the Court of Appeals or Supreme Court.
As in French law, there is no distinction between a clause for payment of liquidated damages and a penalty under Thai law. Even if the sum is fixed at a figure higher than any reasonable pre-estimate of the likely loss under Section 379 of the Civil and Commercial Code, the party in breach may be required to make payment in full, regardless of whether actual loss has occurred. However, if a forfeited penalty is disproportionately high, it may be reduced to a reasonable amount by the Court.
A debtor can be ordered to disclose their assets. If the debtor does not comply, the creditor may apply for a Writ of Execution. Upon receiving the writ, an executing officer typically accompanies the creditor or an agent of the creditor to the property location, and either seizes or seals the property. A Notice of Attachment is sent to the debtor and a public auction is advertised. Both parties and any other interested parties are notified. These procedures are more complex and time-consuming than the above simple explanation might imply, as identifying, tracing, and locating assets can be extremely difficult. Months can go by before a judgment is collected.
The existence of an obligation may entitle the creditor to demand performance from the debtor. Performance must be tendered in the manner in which it is owed, and may be tendered by a third person to the creditor or an authorized representative. The creditor cannot be compelled to receive any performance other than that which the creditor is entitled unless the creditor accepts the substitute performance.
5. Timing of Court Cases
See Procedures Before Trial.
6. Burden of Proof/Evidence
See Burden of Proof under Procedure During Trial.
7. Nature of Evidence (How Permitted)
See Procedures During Trial.
8. Document Disclosure Requirements
See Procedures Before and During Trial.
9. How Damages Are Awarded
See section under Procedure After Trial.
10. Who Pays Attorney Fees
The Court may grant the requesting party’s motion for the defeated party to pay attorney fees in full or in part.
11. Is There Legal Aid
There is no law dealing directly with legal aid, but it is provided for in both civil and criminal cases under the Civil and Criminal Procedure Codes. In a civil case, if the Court is satisfied that the applicant is indigent, the court costs and attorney fees are waived. In cases where the accused is 18 years old, before being informed of the offense, the inquiry officer may ask if the accused has an attorney. If the accused requests for one, the State will provide an attorney to the accused.
During the inquiry procedure, there must be a psychologist or social worker, as requested by the child and the public prosecutor, to participate in the inquiry in instances where the victim or witness is a child.
Before the criminal hearing commences, if the defendant has no attorney, the Court will appoint one before the start of trial in cases where the charge carries a maximum sentence of death, or by request from the accused who is aged 18 or younger.
Attorney fees paid by the Court are very low, the maximum being THB 1,500, and are determined by the judge according to the complexity of the case.
12. How Do Contingency Fees Work
Officially discouraged and prohibited by the Law Society of Thailand, although some practitioners engage in this practice in special circumstances.
13. Are There Rules For Representatives/Class Actions
Presently Thailand has no precedent for mass tort or class action lawsuits but proponents of such procedures are lobbying for reform and implementation of such a system. Product liability law will likely be implemented in 2010-2011, which may set the foundation for eventual mass tort class action lawsuits in the future.
By Edward J Kelly © March 2011