24 January, 2018
In Today’s blog post we are taking a closer look at the IP protection in Thailand’s healthcare and medical technologies sector that similarly to Singapore, covered last week, has been offering promising business opportunities for the European SMEs. You will learn more about what types of IP are connected to the healthcare industry and how you can best protect these types of IP in Thailand.
Being one of the leading destinations for medical tourism in Asia Pacific region with the ambition of becoming the international key driver of medical devices growth, Thailand offers many promising opportunities business opportunities to European SMEs engaged in healthcare and medical technologies sector, whose topnotch technology is increasingly sought after. Furthermore, as Thai population is aging rapidly, with the expectation that by 2025 people over 60 will make up 22% of the whole population, the demand for medical devices and technologies will increase considerably[1].
European SMEs who are engaged in the field of diagnostic imaging, orthopaedics & prosthetics and dental products can expect to find plenty of business opportunities in Thailand, as these areas are currently developing fastest in the country. Furthermore, as 85.2% of the medical device market in Thailand is supplied by imports[2], there will also be business opportunities for European SMEs engaged in other areas of healthcare and medical technologies industry. Due to good geographical location, Thailand could also serve as a springboard to Myanmar, Vietnam, Laos and Cambodia.
Intellectual Property Rights are very relevant in the healthcare and medical sector as companies operating in the field heavily rely on technology, software, and brand reputation. Not only a way to help protect innovations and new products from competitors, IP assets can also be an important source of cash-flow through licensing deals or selling IP, as well as a significant pull-factor when attracting investors. European SMEs should also not forget to pay attention to protecting their IP, because IP infringements are still commonplace in Thailand. Well-managed IP is often a key factor for business success and neglecting these rights could be costly. Thus, a comprehensive IPR strategy is needed, when entering Thailand’s market, says Valentina Salmoiraghi, IP Business Advisor.
Patent your inventions in Thailand
Medical and healthcare technologies industry is rapidly developing, highly competitive and heavily dependent on innovation and R&D, thus SMEs in this sector, wishing to market their new high-tech inventions in Thailand, should consider applying for patents, because patent owners acquire, for a fixed period (20 years in Thailand), the exclusive right to prevent others from using, commercializing or importing the patented inventions. Furthermore, patent rights are territorial, meaning that patents granted in Europe are not protected in Thailand. As counterfeiting is still commonplace in Thailand, owning a patent right is the only way to protect your business against infringements in the country.
All 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 in Thailand. There is also a possibility to apply for a petty patent in Thailand that does not require an inventive step, but still needs to meet the novelty requirement. Petty patents last for 10 years (if renewed after 6 years) from the filing date and 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 can suit better for inventions with shorter life-cycle. For example, many medical devices have short life-cycles due to rapid technology development and product improvements and thus petty patents could be more suitable in these cases. However, patents for processes could sometimes have longer life-cycles and would thus benefit more from the longer protection period of a standard invention patent.
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.
Due to increasing backlog in processing applications submitted via PCT route that has become widely popular amongst foreign companies, it might be advisable to submit patent applications via direct national filing system, as the application wait time may be reduced this way. Direct national filing is especially recommended if parallel applications of the same invention, which have been filed in other countries, are expected to be granted quickly, as in Thailand, the substantive examination of Thai applications depends on the outcome of any patent applications that have already been filed abroad at other Patent Offices.
Design patents protect the appearance of your products
Design patents are increasingly used in the medical and healthcare technologies industry to protect the appearance of products. For example, in the case of medical devices, besides making a product distinctive, a product design can also make the use of a product easier and more comfortable and thus design plays a critical role when consumers are deciding between similar products. At the same time, it should be kept in mind that design patents protect only the aesthetic aspects of products, but not their functionalities.
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.
As design patents could be granted quicker, many medical and healthcare technologies companies rely on design patents to protect their products while the invention patent or the petty patent is still pending, as in this case at least the design will be enforceable and could not be copied.
European SMEs should keep in mind that Thailand operates under a ‘first-to-file’ system, meaning that the first one to apply for the design patent will usually be granted the patent, regardless of Hence, for SMEs applying for a design patent, innovation patent or a petty patent (or any other patent), it is important to do so as early as possible.
Design patent application fee is around 6 EUR in Thailand and 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.
Use copyright to protect technical manuals but also for software protection
Many medical and healthcare technologies like electronic diagnostic devices are often operated with software and have technical manuals. Both, computer programs and printed material such as technical manuals are protectable as works of copyright. Copyright is useful, especially as it is not uncommon for the unscrupulous companies with lower standard technology to use technical manuals of European companies.
Source code and object codes are fundamentally recognized with respect to the protection of software and computer programs as prescribed by the Copyright Act. Computer programs are recognized and protected under the Copyright Act if they are the result of a creative expression of the ideas of an author, provided that they are sufficiently original. The Copyright Act only protects expressions of ideas and not the ideas themselves. However, the required level of originality or creativity is minimal.
The copyright protection is automatic upon the creation of the work of the author and a registration is not required to enforce a copyright. Copyright protection in Thailand 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 possible and often recommended for EU SMEs, as it is useful as evidence of ownership in the event of a dispute. Recordation of copyright is free of charge in Thailand.
Your Brand is valuable, protect it with trade mark
In medical and healthcare technologies sector, brand name and company name have a high value, as healthcare facilities and other customers place trust in brand names and company names. It could thus be very damaging to one’s reputation if someone would use a similar or an identical brand to provide substandard technologies, as it could directly translate into loss of clients’ confidence in the original technology provider. A comprehensive IP strategy should, therefore, also take into account brand protection.
Moreover, for those SMEs intending to distribute their products into Thailand, a pre-existing registration of their trade mark in the country could also block them from importing and selling their products into the market, therefore it is important to make searches to determine the availability of the mark in question and proceed with registrations promptly.
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, preferably before entering Thai market. Registering trade mark as early as possible is recommended as ‘bad faith’ trade mark registrations, where an unscrupulous entity registers SME’s trade mark first with the intention to sell it back to the original owner at an inflated price, are fairly common in Thailand.
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.
From 7 November 2017 it will also be possible to register trade mark in Thailand via Madrid System which allows applicants to file single application in English in multiple countries at the same time, making trade mark registration more cost-effective or which will enable the extension of existing international trade mark registration to Thailand by designating the country.
[1] Thailand Market Opportunity, EU Business Avenues in South-East Asia 2017, available at: https://www.eu-gateway.eu/sites/default/files/collections/document/file/market-opportunity-healthcare-and-medical-south-east-asia.pdf
[2] Ibid
Helika Jurgenson, China IPR SME-Helpdesk
