Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
The IP & IT Court has professional judges with expertise in intellectual property, but no judges have specialised technical backgrounds. In cases involving high technology, an external technical expert appointed by the court will serve as an associate judge to assist the professional judges with the technical aspects of the case.
Are cases decided by one judge, a panel of judges or a jury?
Patent litigation cases will be decided by a panel of judges consisting of at least two professional judges and one associate judge.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Thailand does not have jury trials.
What role can and do expert witnesses play in proceedings?
In the IP & IT Court, expert witnesses play a vital role in patent litigation cases, particularly in cases where the invention involves complex technology. The primary role of expert witnesses is to offer testimony on various issues, for example:
- aiding the judges in understanding the invention in tutorial or expert witnesses hearings;
- explaining the meaning of technical terms as they would be understood by a person skilled in the art;
- explaining the prior art;
- establishing infringement or non-infringement;
- proving or rebutting invalidity arguments;
- explaining the patent prosecution practices of the Thai Patent Office;
- calculating the amount of damages.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
At present, there is no clear statutory provision concerning the application of the doctrine of equivalents. However, the doctrine of equivalents may be raised under the interpretation of Section 36bis(2) – that is, in some circumstances a product or process can be held to infringe a claim even where one or more of the recitations in the claim is not met. The doctrine of equivalents is intended to apply to those that make unimportant and insubstantial changes and substitutions in the patent which add nothing to the invention, but serve only to evade the literal scope of the claim language.
The IP & IT Court has recognised the doctrine of equivalents in Aventis Pharma v Bioscience (Red Case Tor Por 79/2548). The court requires the ‘non-essential part’ test and the ‘ease of interchangeability’ test to be fulfilled in order to find infringement under the doctrine of equivalents.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
Preliminary injunctions are available under Section 77bis of the Patent Act, but are rarely granted. A patent owner may apply to the court for an injunction if there is clear evidence that a person has committed or is about to commit an infringing act.
How are issues around infringement and validity treated in your jurisdiction?
There is no bifurcation; the judge has the discretion to deal with infringement and validity in the same suit or separately.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Foreign court decisions in similar cases are generally unenforceable in Thailand, but may be recognised as proof of a claim adjudicated abroad.
Damages and remedies
Can the successful party obtain costs from the losing party?
Yes; however, the value of the costs is at the judge’s discretion.
What are the typical remedies granted to a successful plaintiff?
The following remedies may be granted:
- Permanent injunction (Section 77bis) – the IP & IT Court will grant a permanent injunction to the patent owner following a finding of patent infringement. However, the scope of the court order for a permanent injunction is limited to the types and extent of injunctive relief requested by the patent owner in the case.
- Monetary remedies (Section 77ter) – if the court finds that there is patent infringement, it will order the infringer to pay compensation for damages to a patent owner in an amount as deemed appropriate by the court, taking into consideration the seriousness of the damages, the loss of benefits and the expenses necessary to enforce the rights of the patent owner.
- Destruction of infringing goods (Section 77quater) – the court can order the destruction of goods found to infringe a patent.
A patent owner can also seek publication of the court’s decision and a recall order, which is within the discretion of the court to grant.
Under Section 85 of the Patent Act, if the patent owner also brings a criminal action against the infringer, the infringer may face a criminal penalty of up to Bt400,000 (approximately $10,000) and imprisonment for up to two years.
How are damages awards calculated? Are punitive damages available?
The court generally awards only the actual damages suffered as a result of the infringing activities. Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
In most cases where the court finds patent infringement, it grants a permanent injunction to a patent owner provided that it is within the scope of remedies claimed by the patent owner in the pleadings. In special circumstances, the court may deny or limit the grant of a permanent injunction.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
The entire process from submission of the pleadings to judgment by the IP & IT Court in a patent litigation case is between 18 and 36 months. This process may not be expedited due to the volume of cases pending before the court.
How much should a litigant plan to pay to take a case through to a first-instance decision?
The cost of taking a case through civil proceedings at the IP & IT Court, the court of first instance, in a patent litigation case starts from $30,000 for a simple case, and may reach more than $100,000 for a highly technical case involving lots of evidence and many witnesses. For criminal proceedings, these costs are much lower – around $18,000 for a simple case.
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?
A losing party in a patent litigation case before the IP & IT Court can file an appeal against the decision to the Court of Appeal for Specialised Cases. In criminal cases, the appeal decision can be appealed further to the Supreme Court. In civil cases, the appeal decision is deemed final but the parties may ask the Supreme Court to grant permission to appeal the decision further. The appeal process takes between eight and 12 months from the submission of the appeal to the time of judgment.
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