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Thailand Supreme Court Limits Patent Protection for New Use Claims

Article 27 of the World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides that “the patent shall be available for any invention, whether products or processes, in all fields of technology provided that they are new, involve an inventive step and are capable of industrial application.” Based on this provision, the extent of patentable subject matter among member parties is essentially the same. However, paragraphs 2 and 3 of said Article allows Member parties to exclude from patentability specific groups, such as, surgical methods, plants, or animals. Further, each member country determines the scope of patent protection in their territory. Thus, what is patentable in one country may be different from other members. In a landmark decision, the Supreme Court of Thailand decided that a “new use patent” is not eligible as patentable subject matter in Thailand. (2552 Thailand Supreme Court Opinion No.7119 2009, Supreme Court Decision No. 7119/2552)

The patent in suite relates to the use of a mat made from narrow leaved cat-tail, water sedge, or umbrella plant used to absorb humidity or water in a ship’s cargo. The objective of the patent is to protect agricultural products from seawater and moisture when the products are stored in the ship-hold, which is a new or innovative use. This mat will absorb the condensation on the wall of the ship-hold that results from the difference in the outside and inside temperatures. The condensation is caused by humidity and will damage the agricultural products. The mat in the ship-hold prevents damage from the humidity or condensation and covers the product.

There is only one claim in the Thai Patent No. 8871, titled “Mat, Protect and absorb humidity”. Claim 1 states:

“Use of mat in the ship-hold under or cover cargo in the vessel to absorb humidity; the said mat made of

(1) (1) either narrow leaved cat-tail, water sedge, umbrella plant or combination thereof without striping the internal structure of its

(2) (2) synthesis tendon or yarn”

The Plaintiff asserted that the patent is directed to a “new use” of a known device. The known device is the mat, which is not patentable subject matter in Thailand under Section 3 because it is prior art. The Court reviewed the claim and examined the evidence and held that the novelty of the claim is limited to the use of product.

Section 5 of the Patent Act B.E. 2522 (Thailand), states “a patent may be granted only for an invention.” Invention is defined in Section 3 as, “any innovation or invention which creates a new product or process, or any improvement of a known product or process” In addition, a “process” is defined in the Act as, “any method, art or process of producing, maintaining or improving the quality of a product, including the application of such process”. These provisions are the comprehensive of the allowable patentable subject matter in Thailand.

The Court in the instant case held that Thailand patent law does not cover the “new use” of a known device. The Court concluded that there is no express provision allowing the patentability on the new use of a known invention or known device. In support of this finding, the Court also held that there is no expressed exclusive right granting over the new use of a known device. Therefore, the Court held that the “new use” of a known device is not valid as patentable subject matter under the Thai Patent Act. Thus, the patent in suite directed to a “new use” of a prior art device was invalidated.

Comparing the legislation of Thailand and US patent systems, the US provision clearly states, “the process means a process, art, or method includes a new use of a known process, machine, manufacture, composition of matter, or material.” 35 USC § 100, emphasis added. In contrast, the Thai Patent Act does not grant patent protection for a new use of a known product to the broad protection afforded in the US.

Historically, Thai Courts have been reluctant to provide protection for “new use” patents, as evidenced by repeated negotiations between the United States Trade Representatives (USTR) and Thailand. USTRs have attempted to broker a Free Trade Agreement (FTA) involving Intellectual Property protection between the US and Thailand that would require Thailand to provide protection of second uses of known products. The current status of FTA negotiation is cancelled since coup in 2006. Negotiations have not resumed. Ultimately, as evidenced by the instant case, the Thai Court interpreted that their legislation does not cover new use patents for known products.

This decision is a landmark decision because it affects many areas of technology, particularly medicine. If a patent owner is attempting to extend the patent term via an ever-green patent by filing a new application with claims reciting a new use for a known or patented drug, Thailand will not allow the new use of a product claims. Therefore, an application having a new use patent claim for a known drug where the new use changes the formulation or method of administration will not be successful. Even if the new use claim is novel, nonobvious, surprising, or unexpected, the patent cannot be rewarded in Thailand.

Global pharmaceutical companies who wish to protect new or second use of their patented drugs will be disappointed with Thailand’s holding on new use patents. So-called, Swiss type claims that recite a new and specific use of a known substance for the manufacturing a drug or pharmaceutical may also find difficulty in receiving a new patent grant in Thailand. On the other hand, the Thai decision is favourable to generic drug companies who wish to shorten the patent term and coverage of competitor drug makers. In conclusion, the Thai Supreme Court in their recent decision clarified the extent of patentable subject matter in Thailand regarding new use patents for processes and products. Therefore, when filing a patent application in Thailand, new use claims are only patentable when directed to a process, not a new of a known product.