Information for Review of Art. 27.3(b) (Patentable Subject Matter) - View

Thailand

List of Questions

Illustrative List of Questions Prepared by the Secretariat.

According to the Patent Act, B.E.2522 as amended by the Patent Act (No. 2), B.E.2535 and the Patent Act (No. 3), B.E.2542 (hereinafter "the Patent Act"), a patent may be granted for any invention, whether product or process, which is new, involves an inventive step and is capable of industrial application (Section 5). Under Section 9 of the Patent Act, plants and animals per se, however, are not patentable, regardless of the fact that such inventions meet the above-mentioned conditions for patentability. Nevertheless, there is no provision in the Patent Act precluding methods or processes for the production of plants and animals from patentability. In other words, although plants and animals are not patentable, methods or processes for the production of plants and animals may be patented under the Patent Act.

Not available because plants and animals are not patentable subject-matter under the Patent Act according to Section 9 (see the reply to question A.1).

[Answer A.1: According to the Patent Act, B.E.2522 as amended by the Patent Act (No. 2), B.E.2535 and the Patent Act (No. 3), B.E.2542 (hereinafter "the Patent Act"), a patent may be granted for any invention, whether product or process, which is new, involves an inventive step and is capable of industrial application (Section 5). Under Section 9 of the Patent Act, plants and animals per se, however, are not patentable, regardless of the fact that such inventions meet the above-mentioned conditions for patentability. Nevertheless, there is no provision in the Patent Act precluding methods or processes for the production of plants and animals from patentability. In other words, although plants and animals are not patentable, methods or processes for the production of plants and animals may be patented under the Patent Act.]

Plant varieties per se are not patentable subject-matter under the Patent Act, but any process for obtaining new plant varieties may be patentable, provided that it is new, involves an inventive step and is capable of industrial application. (Plant varieties are, however, protected under the Plant Varieties Protection Act, B.E.2542 (1999), see the reply to question B.4)

[Answer B.4(a): The protection of new plant varieties in Thailand is under the Plant Varieties Protection Act, B.E.2542 (1999) (IP/N/1/THA/P/1).]

[Answer B.4(b):  According to Section 3 of the Act, plant variety means a plant grouping of similar or identical genetic and botanical characteristics, with particular features which are uniform, stable and distinct from other grouping in the same species of plant and shall include trees, the propagation of which is conducive to the plant grouping of the aforesaid features.]

[Answer B.4(c):  According to Sections 11 and 12 of the Act, the conditions required for the protection of new plant varieties are novelty, distinctness, uniformity, stability, not exploited in or outside the Kingdom for more than one year and distinct from other plant varieties existing on the date of filing the application.]

[Answer B.4(d): According to Sections 52 and 53 of the Act, subject-matters are: a person who collects, procures or gathers general domestic plant varieties, wild plant varieties or any part of such plant varieties for the purposes of variety development, education, experiment or research for commercial or non-commercial purposes shall make a profit-sharing agreement and comply with the Regulation prescribed by the Commission.]

[Answer B.4(e): The Plant Varieties Protection Act, B.E.2542 has granted protection only for the new plant varieties derived from any germplasm.]

[Answer B.4(f):  The right holder of a new plant variety.]

[Answer B.4(g):  The application for registration of a new plant variety should be made in accordance with the subject-matters in Section 19 of the Act. A breeder who applies for registration should declare the details and procedures prescribed in the Ministerial Regulation. The application would be examined by the competent official and considered by the Director-General of the Department of Agriculture, Ministry of Agriculture and Cooperatives which is the authority in charge of administering the rights.]

[Answer B.4(h): The Plant Varieties Protection Act, B.E.2542 provides the right holder of a new plant variety to have the exclusive right to produce, sell or distribute in any manner, import, export or possess for any purpose, the propagating material of the new plant variety.]

[Answer B.4(i): - acts performed for research or experimental purposes; Yes, there are exceptions under the Act to the rights for research or experimental purposes in Section 33, paragraph 2. - acts performed to develop new varieties of plants; Yes, there are exceptions under the Act to the rights for developing new varieties of plants in Section 33, paragraph 2. - acts performed to commercialize such newly developed varieties; Yes, there are exceptions under the Act to the right to commercialize such newly developed varieties in Section 33, paragraphs 1 and 2. - any “farmer’s privilege” (e.g. acts performed by a farmer on his own land in respect of seed saved from the previous harvest); Yes, there are exceptions under the Act to the rights for "farmer's privilege" in Section 33, paragraph 4. - acts done privately and for non-commercial purposes; Yes, there are exceptions under the Act to the rights for doing privately and non-commercial purposes in Section 33, paragraph 5. - compulsory licensing. Yes, there is compulsory licensing under the Act in Sections 36 and 37. The Minister of the Ministry of Agriculture and Cooperatives with the approval of the Commission, has the power to issue a Notification prohibiting the production, sale, distribution in any manner, importation or exportation of new plant varieties for the period of time. The Director-General of the Department of Agriculture, with the approval of the Commission, has the power to authorize the use of the right holder of a new plant variety in case of no sale or insufficient of the propagating material of that new plant variety.]

[Answer B.4(j): According to Section 31 of the Act, the variety protection right shall expire at: - The end of the 12th calendar year following the date of the registration of its establishment for biennials. - The end of the 17th calendar year following the date of the registration of its establishment for trees. - The end of the 27th calendar year following the date of the registration of its establishment for tree-based utilizations.]

[Answer B.4(k): According to Section 32 of the Act, the right holder of a new plant variety may authorize any person to use his rights in his new plant variety or may assign such rights to other persons.]

[Answer B.4(l): According to Sections 61 and 62 of the Act, the infringement of the right of the right holder of a new plant variety and a local domestic plant variety would be ordered by the Court to pay the right holder such an amount of compensation as the Court deems appropriate. All infringing plant varieties are confiscated by the Court and proceeded by the Department of Agriculture with the approval of the Commission. According to Sections 63-68 of the Act, any person who commits an offence shall be punished by imprisonment for a term of not more than two years or by a fine not exceeding four hundred thousand Baht (B 400,000) or both.]

While Section 9 of the Patent Act explicitly states that plants, animals or extracts from animals or plants as well as naturally occurring micro-organisms and their components are excluded from patentability, there exists no definition of those terms in the Act itself. Only the term "plant" is defined by Section 3 of the Plant Varieties Protection Act, B.E.2542 (1999) as follows: "plant means a living organism in the kingdoms of plants and shall include mushroom and seaweed but exclude other micro-organisms".

The definition of the term "invention" stipulated in Section 3 of the Patent Act, which reads: "invention means any innovation or invention which creates a new product or process, or any improvement of a known product or process", may, to some extent, reflect the underlying principle of the patent system that patents shall not be granted for things occurring in nature. Along that line is the provision of Section 9(1), which excludes micro-organisms and their components already existing in nature as well as extracts of pants and animals from patentability. With regard to the subject-matter identical to what occurs in nature, according to the Patent Act, neither modified nor naturally existing plants and animals can be patented. However, modified micro-organisms and modification of their components are patentable (Section 9).

There is no special requirement for ensuring adequate disclosure in the case of inventions referred to under question A.6. However, the general provisions for ensuring adequate disclosure as set forth in Section 17 of the Patent Act shall also apply to this type of invention as follows: - the patent application shall contain a detailed description of the invention; - such a description shall be, as such, full, concise and clear and exact terms as to enable any person ordinarily skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention; and - the description shall set forth the best mode contemplated by the inventor (the applicant) to carry out his invention.

[Answer A.6: The definition of the term "invention" stipulated in Section 3 of the Patent Act, which reads: "invention means any innovation or invention which creates a new product or process, or any improvement of a known product or process", may, to some extent, reflect the underlying principle of the patent system that patents shall not be granted for things occurring in nature. Along that line is the provision of Section 9(1), which excludes micro-organisms and their components already existing in nature as well as extracts of pants and animals from patentability. With regard to the subject-matter identical to what occurs in nature, according to the Patent Act, neither modified nor naturally existing plants and animals can be patented. However, modified micro-organisms and modification of their components are patentable (Section 9).]

The above-referenced product and process patents are subject to the same rules as other patents, and the owners of which benefit from the same protection as stipulated in Article 28 of the TRIPS Agreement as follows: - where the subject-matter of the patent is a "product", the patentee shall enjoy the right to produce, use, sell, have in the possession for sale, offer for sale or import the patented products; and - where the subject-matter of the patent is a "process", the patentee shall have the right to use the patented process, produce, use, sell, have in the possession for sale, offer for sale or import the product produced by the patented process. In addition, the owners of the patents may authorize any other person, by granting a licence, to exercise the above-mentioned rights conferred to him, and may also assign his patent to any persons (Section 38).

There is no specific exception to those rights of the patentee referred to above. However, general exceptions as set forth in Section 36, paragraph 2 of the Patent Act shall still apply, e.g., an act for the purpose of study, research, experimentation or analysis shall be deemed an exception to the rights of the patentee if it does not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner.

No. All cases of compulsory licensing are subjected to the same rules.

N.B. Please ensure that your responses to the questions above cover each category of subject matter specified in Article 27.3(b), namely micro-organisms, essentially biological processes for the production of plants or animals, microbiological processes, non-biological processes, plant varieties and other inventions concerning plants or animals.

Yes.

Thailand is not a party to the UPOV Convention. However, the Plant Varieties Protection Act has some subject-matters which conform to the 1978 Act of the UPOV Convention. The Act protects the new protected varieties based on novelty, distinctness, uniformity and stability.

Thailand is not a party to the UPOV Convention. However, the Plant Varieties Protection Act has some subject-matters which conform to the 1978 Act of the UPOV Convention. The Act protects the new protected varieties based on novelty, distinctness, uniformity and stability.

The Plant Varieties Protection Act is offered to both asexually and sexually produced plant varieties, the Patent Act provides patent protection to the only procedure of produced plant varieties.

The protection of new plant varieties in Thailand is under the Plant Varieties Protection Act, B.E.2542 (1999) (IP/N/1/THA/P/1).

According to Section 3 of the Act, plant variety means a plant grouping of similar or identical genetic and botanical characteristics, with particular features which are uniform, stable and distinct from other grouping in the same species of plant and shall include trees, the propagation of which is conducive to the plant grouping of the aforesaid features.

According to Sections 11 and 12 of the Act, the conditions required for the protection of new plant varieties are novelty, distinctness, uniformity, stability, not exploited in or outside the Kingdom for more than one year and distinct from other plant varieties existing on the date of filing the application.

According to Sections 52 and 53 of the Act, subject-matters are: a person who collects, procures or gathers general domestic plant varieties, wild plant varieties or any part of such plant varieties for the purposes of variety development, education, experiment or research for commercial or non-commercial purposes shall make a profit-sharing agreement and comply with the Regulation prescribed by the Commission.

The Plant Varieties Protection Act, B.E.2542 has granted protection only for the new plant varieties derived from any germplasm.

The right holder of a new plant variety.

The application for registration of a new plant variety should be made in accordance with the subject-matters in Section 19 of the Act. A breeder who applies for registration should declare the details and procedures prescribed in the Ministerial Regulation. The application would be examined by the competent official and considered by the Director-General of the Department of Agriculture, Ministry of Agriculture and Cooperatives which is the authority in charge of administering the rights.

The Plant Varieties Protection Act, B.E.2542 provides the right holder of a new plant variety to have the exclusive right to produce, sell or distribute in any manner, import, export or possess for any purpose, the propagating material of the new plant variety.

- acts performed for research or experimental purposes; Yes, there are exceptions under the Act to the rights for research or experimental purposes in Section 33, paragraph 2. - acts performed to develop new varieties of plants; Yes, there are exceptions under the Act to the rights for developing new varieties of plants in Section 33, paragraph 2. - acts performed to commercialize such newly developed varieties; Yes, there are exceptions under the Act to the right to commercialize such newly developed varieties in Section 33, paragraphs 1 and 2. - any “farmer’s privilege” (e.g. acts performed by a farmer on his own land in respect of seed saved from the previous harvest); Yes, there are exceptions under the Act to the rights for "farmer's privilege" in Section 33, paragraph 4. - acts done privately and for non-commercial purposes; Yes, there are exceptions under the Act to the rights for doing privately and non-commercial purposes in Section 33, paragraph 5. - compulsory licensing. Yes, there is compulsory licensing under the Act in Sections 36 and 37. The Minister of the Ministry of Agriculture and Cooperatives with the approval of the Commission, has the power to issue a Notification prohibiting the production, sale, distribution in any manner, importation or exportation of new plant varieties for the period of time. The Director-General of the Department of Agriculture, with the approval of the Commission, has the power to authorize the use of the right holder of a new plant variety in case of no sale or insufficient of the propagating material of that new plant variety.

According to Section 31 of the Act, the variety protection right shall expire at: - The end of the 12th calendar year following the date of the registration of its establishment for biennials. - The end of the 17th calendar year following the date of the registration of its establishment for trees. - The end of the 27th calendar year following the date of the registration of its establishment for tree-based utilizations.

According to Section 32 of the Act, the right holder of a new plant variety may authorize any person to use his rights in his new plant variety or may assign such rights to other persons.

According to Sections 61 and 62 of the Act, the infringement of the right of the right holder of a new plant variety and a local domestic plant variety would be ordered by the Court to pay the right holder such an amount of compensation as the Court deems appropriate. All infringing plant varieties are confiscated by the Court and proceeded by the Department of Agriculture with the approval of the Commission. According to Sections 63-68 of the Act, any person who commits an offence shall be punished by imprisonment for a term of not more than two years or by a fine not exceeding four hundred thousand Baht (B 400,000) or both.

Representative Questions for TRIPS 27.3(b) Review Submitted by the Delegations of Canada, the European Union (formerly European Communities), Japan and the United States