Thailand Intellectual Property – Patents – Novelty – ‘State of the Art’: A High Threshold

Thailand Intellectual Property – Patents

THE NOVELTY REQUIREMENT

‘State of the Art’ – A High Threshold

Prior to Thailand’s accession to the Patent Co-operation Treaty (‘PCT’), it was deductible that an ‘Absolute Novelty’ requirement – complemented with a high threshold for ‘Novelty’ or Thai ‘State of the Art’ had been stringently enforced, albeit with less than ample provision by the Thai Patent Act. As it is still yet to be seen how the Thailand PCT facet would affect the Thai determination of ‘Novelty’, it is prudent to keep the Courts’ stringency in this respect in caution.

Inasmuch as commentators are divided in their opinion, close examination of the Patent Act reveals a grey area. Section 6(1) which describes that an invention short of novelty as “an invention which was widely known or used by others in the country before the date of application for a patent” does not seem to reconcile with Section 6(2)an invention the subject matter of which was described in a document or printed publication, displayed or otherwise disclosed to the public, in this or a foreign country before the date of application..“.

While Section 6(1) appears to be an outward rejection of European “Absolute Novelty” and resemble New Zealand “Local Novelty” – Section 6(2) appears to embrace the American “Qualified Novelty” requirement, or even “Worldwide Novelty”.

Section 6(3) disqualifies ‘Novelty’ if a foreign Patent for the same invention has been acquired and Section 6(4) gives leeway of 12 months where a foreign Patent application for the same invention has been filed (to accommodate the Paris Convention). Thence, a ‘limited’ grace period of ’12 months’ is given to inventor disclosure.

There are no equivalent provisions to enshrine concepts such as post-infringement enabling disclosure, whole contents, etc. which are subject to interpretation of the examiners and Courts. Thai ‘Novelty’ provisions are lacking and genuine Patent applicants are left in the dark as to what they are or are not entitled to do prior to the Thai Patent Application.

Despite the Courts barely threading on these stipulations, commentators have maintained that the prevalent interpretation of these provisions and precedent is ‘Absolute Novelty’, and a high threshold for ‘Novelty’.

It remains true that there has not been sufficient clarity shed on this point.

A noteworthy illustration of construing ‘State of the Art’, is the case of Mauser-Werke GmbH & Co. KG v Eurodrum (Thailand) Co., Ltd. and Ors (Supreme Court Case No. 10455/2551) where the Thai Supreme Court had decided in favour of the Respondents’ invalidation defence. The consequences of the Appellant’s ‘prior disclosure’ – were to the extent that the Appellant’s infringement claims against the 4 Respondents had to fail, and the Appellant’s Patent invalidated.

The Appellant in this case was patentee of both Thai Patent No. 4185 for a ‘Bunged Vessel’ invention and United States Patent No. 4,674,648 for a ‘Bung Keg’ invention (and also No. 5,033,639: but this was not admissible per procedural law). Upon dismissal of the initial action by the Central Intellectual Property and International Trade Court (‘CIPITC’), the Appellant had on Appeal, to emphasize on the differences between its above two Patents.

The shortfall of Thai Patent No. 4185 from being ‘State of the Art’:

The primary differences cited were: (a) the different positioning of grooves between the connecting web [TH-4] / conical shell part [TH-5] / head surface [TH-6] of the vessel; and (b) the height of the carriage and transport L-ring [TH-1] designed by the Appellant in order to ensure that the inner wall of the connection web was as thick as the conical shell part of the vessel or the head surface of the vessel.

  Thailand Intellectual Property Patents Invalidation Absolute Novelty State of the Art

                        Thai Patent No. 4185 [“TH”]     

Thailand Intellectual Property Patents Absolute Novelty State of the Art

 U.S Patent No. 4,674,648 [“US”]

(a) The positioning of the vessel’s head surface [TH-6] – at a distance above the horizontal bearing surface [TH-2] whereas the U.S ‘Bung Keg’ Patent had the bottom edge [US-3] aligned in the same horizontal plane as the groove [US-6].

Despite being confirmed in testimony that the horizontal bearing surface [TH-2] bore the weight while the vertical bearing surface [TH-3] prevented slippage of the vessel – the Supreme Court concluded that the groove at the head surface [TH-6] of the vessel was not purposeful for direct grasp by the surface; the grasp at the L-ring along the inner vessel could only be done along the vertical bearing surface [TH-3].

Thence, the remaining functional purpose, i.e. provision of sufficient room for the grasping by the arms of the vessel lifter could be done by elongation of the height of the connecting web [TH-4]. The connecting web under the ‘Bunged Vessel’ was longer than its US comparison – hence the coined name ‘Long L-ring’ for the former and ‘Short L-ring’ for the latter. In this respect, as the Supreme Court confined the ‘essential matter’ for consideration of the Appellant’s invention to the L-ring – the different positioning of the vessels’ head surfaces were not ‘essential’.

(b) The depth of the groove between the connecting web [TH-4] and the conical shell part [TH-5] of the vessel / head surface of the vessel [TH-6] was or about the length of the connecting web [TH-4]

Although this had been calculated to enable the invention to achieve higher utility by being grasped by the arms of the vessel filter – the Supreme Court held that this could not constitute any essential difference.

(c) The height of the conical shell [TH-5] being at least equal to the height of the L-ring [TH-1]

This was encompassed in the Patent’s Claim No. 2 but was held to provide insufficient detail. Further, the U.S ‘Bung Keg’ Patent suggests that its same surface (conical shell part) [US-8] could also be considered as relatively proportional to the height of the indentation [US-10], added by the fact that apparently, in the real product itself: the L-ring [TH-1] was actually more similar to its U.S comparison (below the head surface), as opposed to the Thai drawings. In any event, this difference alone (groove between connecting web [TH-4] and head surface [TH-6] was insufficient to constitute ‘essential difference’.

(d) The height of the L-ring [TH-1]

The Appellant claimed that the function of such height was to provide for the same thickness as the vessel’s sidewall [TH-7], so as to ensure flexibility as well as shock absorption and balancing upon impact. Deformation stresses formed in all affected wall cross-sections when a filled vessel fell on its side, so as to prevent the creation of harmful peak stresses which could otherwise cause cracks in the shell.

The Supreme Court considered that in the US comparison, the thickness of the connecting web [US-5] and that of the envelop [US-1] were equal to each other. Although not specified – it was considered as forming part of the ‘whole contents’, and thus this difference was in fact a prior disclosed matter.

It appears that a variety of different doctrines have been applied by the Supreme Court despite lack of provision of the same.

It is perhaps further worth mentioning that all this had transpired after the Respondents’ breach of a ‘compromise agreement’ where they agreed to remodel certain parts of their containers that brushed shoulders with the Appellant’s Patent.

Conspicuously, despite Thai law’s appreciation of the ‘freedom to contract’: where the Appellant would be calculated to have been estopped from bringing an infringement action against the Respondents’ in view of his consent given – the Respondents’ themselves were not estopped from bringing an invalidation defence even where they implicitly, by entering into the contract affirmed the Appellant’s Patent rights.

It turns out that U.S Patent No. 5,033,639 which could not be admitted was for the same invention ‘Bunged Vessel’ as under Thai Patent No. 4185. If it were admitted, it would be perverse not to invalidate the Thai Patent for prior disclosure as such.

Detailing the decision at hand is illustrative of the Supreme Court’s stringent inclination in respect of its ‘Novelty’ threshold, where finally, the Patentee’s infringement action had failed and his Patent invalidated – because the Court had construed its U.S Patent for ‘Bung Keg’ as ‘State of the Art’ and the Appellant’s Thai invention had fallen short, albeit despite initially gauge-able though minor, improvements.

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For more information on the foregoing, please contact the author JOEL LOO SEAN EE, the Bangkok-based Senior Regional Counsel at Kelvin Chia Thailand and a member of Kelvin Chia Partnership’s Regional Practice Group at Joel.Loo@KCPartnership.com.

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This article is published to provide general information only and is not offered as specific advice on any particular matter – This information is to be taken subject to proper consultation with a lawyer.

All written material on BANGKOK LEGAL BLOG including this post are the Copyright of Joel Loo Sean Ee. Any attempt to plagiarize or reproduce these materials in whole or in part, in verbatim or in paraphrase, or in any other form that it can be conceivable that such attempt is being made is an offense in law and will be an invitation by offenders to face charges and prosecution in a Court of Law.
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