7 July, 2017
In today’s blog post, we will dive into IPR protection in the ICT Sector in Thailand: Thailand is currently the second largest buyer of ICT products and services in the ASEAN region and its ICT market is expected to grow at a fast pace in the near future, propelled by increased consumption and urbanisation, as well as the growing middle class.[1] Underpinned by the Thai Government’s new Digital Economy Policy, aiming to develop hard and soft digital infrastructure across the country and modernizing the economy through digitalization, Thailand is expected to offer many promising business opportunities for European SMEs.
European SMEs engaged in developing solutions for telecommunications, e-commerce, internet banking and mobile banking as well as offering solutions geared towards facilitating the transition to a digital economy could enjoy major business opportunities in Thailand, as these are the sectors receiving the lion’s share of Thai Government’s expenditures on ICT. At the same time, companies offering third platform technologies such as cloud services and big data analytics can also prosper in Thailand as recent years have registered an increasing market demand for these services.[2]
European ICT companies should, however, pay attention to protecting their IP rights when planning their business strategy for the Thai market, because IP infringements are still relatively common in the country. Well-managed IP is often a key factor for business success and neglecting to register IP rights in Thailand could easily end SMEs’ business endeavor in the country. Thus, a robust IPR strategy is needed, when entering Thailand’s market.
Apply for patents to protect your inventions
ICT companies, wishing to market new inventions in Thailand, should consider applying for patents, because patent owners acquire, for a fixed period, the exclusive right to prevent others from using, commercializing or importing the patented inventions. It should also be kept in mid that patent rights are territorial, meaning that patents granted in Europe are not protected or recognized in Thailand.
Inventions need to be new, involve an inventive step and be industrially applicable (this means capable of industrial production) to be granted an invention patent. Invention patents are valid for 20 years after the filing date in Thailand.
It is also possible to apply for petty patents, which do not require an inventive step. Petty patents last for 6 years from the filing date in Thailand, and are extendible twice for 2 more years (i.e. maximum term of 10 years). Petty patents are generally easier to grant and they can be obtained faster than standard invention patents (within 3-5 years as opposed to 5-6 years), which would suit better for SMEs engaged in the fast developing ICT sector.
Thailand is a member of the Paris Convention and the Patent Cooperation Treaty (PCT), which means that applicants for invention patents and petty patents are entitled to a ‘right of priority’ (i.e. the same filing date the original application made in the home country can be used in Thailand), if the same filing is made in Thailand within 12 months from the first filing in any other country that also belongs to the Paris Convention. In using the PCT Route, the same filing must be made in Thailand within 30 months from the first filed application.
Design patents protect the appearance of your product
Design patents are used to protect the aesthetic aspects of products, but not their functionalities. Design patents are increasingly used in the ICT industry to protect the appearance of products, like smart phones, tablets, and media players.
Good news for the ICT companies is that, in Thailand, it is also possible to apply for a design patent that covers the Graphical User Interface (GUI). Given the central role of GUIs in ICT sector and the fierce competition on Thai ICT market, it is important that GUI owners apply for the design patent in order to protect their inventions. A design patent application for a GUI has the same requirements as standard design patent application.
Design patents must also meet the absolute novelty requirement like invention and petty patents. Design patent protection in Thailand lasts for 10 years and the application procedure generally takes about 3 years.
Similarly to invention patents and petty patents, the application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation. Additionally, a notarized Power of Attorney is requested from foreign applicants.
European SMEs should keep in mind that Thailand operates under a ‘first-to-file’ system. Hence, for SMEs applying for a design patent, innovation patent or a petty patent, it is important to do so as early as possible.
Semiconductor topographies are also protected in Thailand
As semiconductors play the central role in the ICT industry, SMEs focused on R&D might also want to protect their semiconductor topographies. In Thailand, semiconductor topographies are protected under the Protection of Layout-Designs of Integrated Circuits Act, which is separate from design patents or invention patents.
The layout-design certificate is valid for the term of 10 years from the date of filing or from the date of the first commercial exploitation whether within or outside Thailand, whichever occurs first, but not exceeding 15 years from the creation of the lay-out design.
The application for registration of the layout-design has to be done within 2 years from the date of the first commercial exploitation of the lay-out design. SMEs should, however, keep in mind that semiconductor topography registration also functions under the ‘first-to-file’ system in Thailand, so it would be wise to register the design as early as possible.
Copyright protects the expression of SMEs’ ideas
Since the ICT sector features cumulative innovations with short product cycles, SMEs may wish to also take advantage of other IP rights, such as copyrights. One of the main values of copyright protection is simplicity, as copyright protection arises automatically as soon as the work is created. It must, however, be brought in mind that copyright protection extends only to expressions of ideas, and not to ideas per se.
In Thailand, copyright protected items can include works of literature, music, drama, visual and graphic arts, including (but not limited to) books, movies, songs, computer software, websites and photographic works. Copyright protection in Thailand is automatic and it is valid for the life of the author plus an additional period of 50 years after author’s death. If the author is a legal person, the copyright exists for a period of 50 years after the work is first published or, if unpublished, after its creation.
Although, copyright protection arises automatically, formal recordation of copyright at the Thai Copyright Office is recommended for EU SMEs, as it is useful as evidence of ownership in the event of a dispute. In some cases, Thai authorities may not even start legal proceedings without the copyright recordation certificate. Recordation of copyright is free of charge in Thailand.
Keep your Trade Secrets
The importance of trade secret protection cannot be overemphasized in high-tech companies. By protecting trade secrets, most businesses can take advantage of the lead time, meaning the ability to commercialize the innovation well ahead of competitors, so that substantial revenue can be captured before copycats are introduced in the market. This is especially helpful for companies with products that are expected to have a short run in the market like ICT products.
Trade secrets do not require registration and are protected under Thai IP laws as long as appropriate measures are taken to protect the confidentiality of the information. These measures may include limiting the number of employees exposed to the critical know-how, restricting employees’ access to confidential information and using non-disclosure clauses in employment contracts to avoid making trade secrets public.
Companies should include confidentiality clauses within employee contracts covering not only the duration of employment, but if possible, even after the employee has left. It should also be of paramount importance to ensure that confidentiality agreements are signed with business partners whenever disclosing confidential information.
Don’t Forget to Protect your Brand
Considering that ICT products tend to have shorter product cycles, and at the same time, improvements are added at a consistent pace, SMEs will benefit from consistent branding. Since there is a strong interaction and interoperability among ICT products in the market, having a consistent source identifier would be useful to drive business value. Along with the branding strategy, it is essential to undertake the protection of such brands through trade mark registration.
In Thailand, a trade mark may be composed of a photograph, drawing, device, brand, name, word, text, letter, numeral, signature, combination of colors, figure or shape of an object, sound, or any combination thereof. Additionally, three-dimensional signs can also be registered as trade marks. SMEs should keep in mind that Thailand adopts the ‘first-to-file’ system, meaning that the first person to register a trade mark owns that mark and therefore, it is recommended to register the trade mark as early as possible.
Trade marks are registered at the Department of Intellectual Property of the Ministry of Commerce and registration costs between EUR 50 and EUR 420 for one class, depending on how many items of goods and services are registered and if agents are needed. SMEs should bear in mind that they need to be represented by an agent when registering trade mark in Thailand. SMEs should also be aware that trade mark application form and other required documents must be submitted in the Thai language or accompanied by a Thai translation.
European SMEs engaged in developing solutions for telecommunications, e-commerce, internet banking and mobile banking as well as offering solutions geared towards facilitating the transition to a digital economy could enjoy major business opportunities in Thailand, as these are the sectors receiving the lion’s share of Thai Government’s expenditures on ICT. At the same time, companies offering third platform technologies such as cloud services and big data analytics can also prosper in Thailand as recent years have registered an increasing market demand for these services.[2] European ICT companies should, however, pay attention to protecting their IP rights when planning their business strategy for the Thai market, because IP infringements are still relatively common in the country. Well-managed IP is often a key factor for business success and neglecting to register IP rights in Thailand could easily end SMEs’ business endeavor in the country. Thus, a robust IPR strategy is needed, when entering Thailand’s market. Apply for patents to protect your inventions ICT companies, wishing to market new inventions in Thailand, should consider applying for patents, because patent owners acquire, for a fixed period, the exclusive right to prevent others from using, commercializing or importing the patented inventions. It should also be kept in mid that patent rights are territorial, meaning that patents granted in Europe are not protected or recognized in Thailand.
Inventions need to be new, involve an inventive step and be industrially applicable (this means capable of industrial production) to be granted an invention patent. Invention patents are valid for 20 years after the filing date in Thailand. It is also possible to apply for petty patents, which do not require an inventive step. Petty patents last for 6 years from the filing date in Thailand, and are extendible twice for 2 more years (i.e. maximum term of 10 years). Petty patents are generally easier to grant and they can be obtained faster than standard invention patents (within 3-5 years as opposed to 5-6 years), which would suit better for SMEs engaged in the fast developing ICT sector. Thailand is a member of the Paris Convention and the Patent Cooperation Treaty (PCT), which means that applicants for invention patents and petty patents are entitled to a ‘right of priority’ (i.e. the same filing date the original application made in the home country can be used in Thailand), if the same filing is made in Thailand within 12 months from the first filing in any other country that also belongs to the Paris Convention. In using the PCT Route, the same filing must be made in Thailand within 30 months from the first filed application. Design patents protect the appearance of your product Design patents are used to protect the aesthetic aspects of products, but not their functionalities. Design patents are increasingly used in the ICT industry to protect the appearance of products, like smart phones, tablets, and media players. Good news for the ICT companies is that, in Thailand, it is also possible to apply for a design patent that covers the Graphical User Interface (GUI). Given the central role of GUIs in ICT sector and the fierce competition on Thai ICT market, it is important that GUI owners apply for the design patent in order to protect their inventions.
A design patent application for a GUI has the same requirements as standard design patent application. Design patents must also meet the absolute novelty requirement like invention and petty patents. Design patent protection in Thailand lasts for 10 years and the application procedure generally takes about 3 years. Similarly to invention patents and petty patents, the application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation. Additionally, a notarized Power of Attorney is requested from foreign applicants. European SMEs should keep in mind that Thailand operates under a ‘first-to-file’ system. Hence, for SMEs applying for a design patent, innovation patent or a petty patent, it is important to do so as early as possible. Semiconductor topographies are also protected in Thailand As semiconductors play the central role in the ICT industry, SMEs focused on R&D might also want to protect their semiconductor topographies. In Thailand, semiconductor topographies are protected under the Protection of Layout-Designs of Integrated Circuits Act, which is separate from design patents or invention patents.
The layout-design certificate is valid for the term of 10 years from the date of filing or from the date of the first commercial exploitation whether within or outside Thailand, whichever occurs first, but not exceeding 15 years from the creation of the lay-out design. The application for registration of the layout-design has to be done within 2 years from the date of the first commercial exploitation of the lay-out design. SMEs should, however, keep in mind that semiconductor topography registration also functions under the ‘first-to-file’ system in Thailand, so it would be wise to register the design as early as possible. Copyright protects the expression of SMEs’ ideas Since the ICT sector features cumulative innovations with short product cycles, SMEs may wish to also take advantage of other IP rights, such as copyrights. One of the main values of copyright protection is simplicity, as copyright protection arises automatically as soon as the work is created.
It must, however, be brought in mind that copyright protection extends only to expressions of ideas, and not to ideas per se. In Thailand, copyright protected items can include works of literature, music, drama, visual and graphic arts, including (but not limited to) books, movies, songs, computer software, websites and photographic works. Copyright protection in Thailand is automatic and it is valid for the life of the author plus an additional period of 50 years after author’s death. If the author is a legal person, the copyright exists for a period of 50 years after the work is first published or, if unpublished, after its creation.
Although, copyright protection arises automatically, formal recordation of copyright at the Thai Copyright Office is recommended for EU SMEs, as it is useful as evidence of ownership in the event of a dispute. In some cases, Thai authorities may not even start legal proceedings without the copyright recordation certificate. Recordation of copyright is free of charge in Thailand. Keep your Trade Secrets The importance of trade secret protection cannot be overemphasized in high-tech companies. By protecting trade secrets, most businesses can take advantage of the lead time, meaning the ability to commercialize the innovation well ahead of competitors, so that substantial revenue can be captured before copycats are introduced in the market. This is especially helpful for companies with products that are expected to have a short run in the market like ICT products. Trade secrets do not require registration and are protected under Thai IP laws as long as appropriate measures are taken to protect the confidentiality of the information. These measures may include limiting the number of employees exposed to the critical know-how, restricting employees’ access to confidential information and using non-disclosure clauses in employment contracts to avoid making trade secrets public. Companies should include confidentiality clauses within employee contracts covering not only the duration of employment, but if possible, even after the employee has left. It should also be of paramount importance to ensure that confidentiality agreements are signed with business partners whenever disclosing confidential information.
Don’t Forget to Protect your Brand Considering that ICT products tend to have shorter product cycles, and at the same time, improvements are added at a consistent pace, SMEs will benefit from consistent branding. Since there is a strong interaction and interoperability among ICT products in the market, having a consistent source identifier would be useful to drive business value. Along with the branding strategy, it is essential to undertake the protection of such brands through trade mark registration.
In Thailand, a trade mark may be composed of a photograph, drawing, device, brand, name, word, text, letter, numeral, signature, combination of colors, figure or shape of an object, sound, or any combination thereof. Additionally, three-dimensional signs can also be registered as trade marks. SMEs should keep in mind that Thailand adopts the ‘first-to-file’ system, meaning that the first person to register a trade mark owns that mark and therefore, it is recommended to register the trade mark as early as possible.
Trade marks are registered at the Department of Intellectual Property of the Ministry of Commerce and registration costs between EUR 50 and EUR 420 for one class, depending on how many items of goods and services are registered and if agents are needed. SMEs should bear in mind that they need to be represented by an agent when registering trade mark in Thailand. SMEs should also be aware that trade mark application form and other required documents must be submitted in the Thai language or accompanied by a Thai translation.
[1] EU Gateway Business Avenues in South-East Asia: https://www.eu-gateway.eu/sites/default/files/collections/document/file/information-and-communication-technologies-asean.pdf
[2] Ibid
Helika Jurgenson, China IPR SME-Helpdesk
