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Thai Court Rules Against Department of Intellectual Property

In the recent Thai case of DCON Productions PCL v Department of Intellectual Property (Case No. 48/2008), the Central Intellectual Property and International Trade Court (CIPITC) dealt with a suit by the Plaintiff against the Department of Intellectual Property (who was the Defendant in the case) in respect of the decision made by the Defendant and the Board of Patents.

The Plaintiff was a producer and vendor of pre-cast concrete sheet piles and in 2001 had filed three applications for design patents with the Defendant. These three applications were then published and all three applications were initially granted by the Defendant. Thereafter, the Defendant cancelled two out of the three design patents on the grounds that both the said design patents were similar to the designs that were disclosed or described in a document or a printed publication in Thailand or a foreign country prior to the filing of the application for a patent. The Plaintiff then appealed against the Defendant’s decision to the Board of Patents who rejected their appeal, which resulted in the Plaintiff filing this case at the CIPITC.

Under the Thai Patents Act 1979, Section 57, regulates the process of examination. In this section, a design that is not novel is construed as (1) a design which was widely known or used by others in Thailand prior to the filing of the application for a patent, (2) a design which was disclosed or described in a document or a printed publication in Thailand or a foreign country prior to the filing of the application for a patent, (3) a design which was published under Section 65 and 28 prior to the filing of the application for a patent, and (4) any design resembling any of designs prescribed in (1) , (2) or (3) as to be an imitation.

During the examination of the three applications the Defendant examined the said applications based on Section 57(2) and failed to examine any design, which was widely known or used in Thailand prior to the filing of the application for a patent as required in Section 57(1). After granting all three applications, the Defendant discovered US Design Patent No. 422,718, which was filed on 10June 1999 and was similar to two of the three patents for design, design nos. 16295 and 16296. This resulted in the Defendant canceling the said design patents. At the Plaintiff’s appeal to the Board of Patents, the Board confirmed that several products similar to that of the Plaintiff’s were being used in Thailand.

The CIPITC held that the decision of the Defendant and the Board of Patents to cancel the granted design nos. 16295 and 16296 was not legitimate as the procedure used by the Defendant and the Board was wrong. The Court was of the view that examination process did not follow the requirements as provided in Section 57, wherein section 57(1) was disregarded and the examination was solely based on section 57(2). The Court held that Section 57(1) was enacted in view of the domestic market, as each design patent granted by the Defendant would affect the domestic market. Therefore, the Court asserted that it is imperative to consider designs that are widely used or known in the domestic market during examination for novelty of a design. Should an Examiner ascertain that a particular design lacks novelty based on this consideration; there is no longer the need to search for documents or printed publications in Thailand or a foreign country as specified by Section 57(2).

In view of the finding by the Court, the Defendant and the Board of Patents were required to re-examine the design patents in issue and provide the Court with sufficient facts for the Court’s consideration of the validity of said design patents, which was conducted by them.

At the trial the Plaintiff then testified that the standard pre-cast concrete sheet piles are shaped as a four-sided sheet pile with evenly balanced thickness. Consequently, this standard design was modified to reduce the concrete sheet pile weight while maintaining the load capacity of the same. The modification included drilling regular shaped cores into parts of the concrete sheet piles. The concrete sheet piles had three main geometries of the drilled cores that included semicircle, trapezoid and partly curved and these were filed and granted as design patent nos. 16295, 16808 and 16296 respectively.

The Court was of the view that to modify concrete sheet piles by drilling regular shaped cores would generally generate in concrete sheet piles with geometrical shapes such as rectangle, semicircle or triangles. Therefore, design nos. 16295 and 16296 that included the modification of drilled cores shaped as semicircles and partly curved was done with its main aim of use for technical or functional consideration. Thus, these patents of design were not design for aesthetic or ornamental consideration and therefore lacked any special appearance element.

The Court’s decision is important as it clarifies the examination procedure as regards to design patents and reiterates the importance of having an aesthetic or ornamental aspect to their design for the same to qualify as a design patent in Thailand.

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