An important consideration for employers is the compensation and reward of innovation by an employee in encouraging a working environment where employees are willing to transfer their intellectual property rights for the employer's benefit.
In Thailand, inventor remuneration is governed by Section 12 of Patent Act B.E. 2522 (1979) as amended and Ministerial Regulations No. 24 B.E. 2542 (1999). An employee-inventor under the Thai Patent Act and Regulations shall have a right to remuneration in addition to their regular salary, if the employer benefits from the invention. This is regardless of the employee-inventor’s place of residence, nationality or the place where the invention was made.
The employee-inventor’s right to receive remuneration cannot be exempted by any contractual provision. Moreover, remuneration is only applicable to patents granted in Thailand, and does not extend to patents granted outside Thailand.
If the employee-inventor is not paid such remuneration, a request for remuneration may be submitted to the Director-General of the Department of Intellectual Property after the Thai patent has been granted. The deadline for submission is one year from the date the inventor becomes aware of the patent grant. Based on the Thai Patent Act and Ministerial Regulations, the factors that the Director-General must take into consideration are:
- salary of the employee;
- work responsibilities of the employee;
- effort and know-how used by the employee in the invention;
- effort and know-how used by others that are involved in the invention, including, the advice or assistance of others;
- assistance of employer, including, the provision of finance, advice, recommendations, facilities, as well as, preparation and procurement of factors or services for testing, developing, or using the invention;
- total number of employees involved in the invention;
- importance of the invention;
- current and future benefits of the invention, including, benefits for permitting others to use the invention or assigning the rights in the invention.
There is no precedent in Thailand on what monetary amount would be required or is considered sufficient for remuneration, and the parties involved are free to agree an amount that is deemed suitable. Moreover, the Thai Patent Act and Regulations do not indicate to any particular time frame or starting point to aid an employer in calculating remuneration for a past invention.
Accordingly, it is advisable for an employer to formulate a remuneration scheme for ensuring compliance with the Thai Patent law while also encouraging innovation by employees.