You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

October 3, 2014

Allow Case-by-Case Patent “Evergreening” of Pharmaceuticals

Bangkok Post, Corporate Counsellor Column

Patents are a key form of intellectual property (IP). The term “intellectual property” contains the word “intellectual” for the reason that one exerts mental effort in order to create an invention. Patent law then steps in to protect an inventor’s mental creation and places restrictions on similar inventions or ideas to allow the inventor to reap the fruits of his or her labors.

The patent system preserves and rewards creativity and thereby encourages inventors to innovate. In the context of the pharmaceutical industry, it serves as the driving force behind the development of new drugs.

Generally speaking, innovator pharmaceutical companies develop novel drugs, whereas generic pharmaceutical companies copy existing drugs and sell them at lower prices. Generic drug companies can, however, only copy drugs that are not protected by a patent—for example, in an instance where a patented drug product’s term has expired. By patenting a drug, a patent owner has the exclusive right to distribute it for a specified period of time—commonly 20 years in Thailand, which cannot be extended.

As is the case with other inventions, drugs that are only slightly different from existing ones have been successfully patented. This process is known as “evergreening,” which is done effectively to extend a patent term by a patent owner filing an application for a new product that has only minor differences compared with the previously patented drug.

For instance, a pharmaceutical company could file a patent for a drug with slightly altered chemical properties claimed to improve on certain aspects such as chemical stability or efficacy. It has been argued that such variants on existing products block the development and production of legitimate generic drugs, and many see this as a trick by pharmaceutical companies to stretch out the patent term, with the altered properties doing little actually to improve the drug.

However, the mere filing of a patent that is similar to one already issued is not necessarily a trick to extend the patent term. Often, the new patented drug provides an important and genuine, albeit minor, innovation such as reduced side effects, greater safety, or heightened efficacy.

Also, an originally patented version of a drug will still expire and be open to generic reproduction, and generic companies can make a product similar to one that has an expired patent. Thus, an improved version of a drug can be considered an incremental development that leads to a better quality of life for patients rather than as a trick to extend the lifetime of a patent term.

New drugs generally are not discovered overnight but rather through a series of small improvements on a previous drug. There are also numerous benefits to incremental innovation—slight modifications to a drug formula can provide benefits such as preventing allergic reactions or other side effects or an easier manufacturing process.

Nonetheless, several countries consider evergreening detrimental and have developed anti-evergreening laws in response to the practice. In countries with heightened novelty requirements for pharmaceuticals, it is very difficult to patent drugs with incremental improvements.

India, with its large generic drug industry and a huge population requiring access to low-cost medications, is one example of a country that has anti-evergreening laws. Section 3(d) of India’s Patent Act is the first and most extreme anti-evergreening provision. Under Section 3(d), variants on a patented pharmaceutical product are not patentable unless there is a “significant” improvement of efficacy. Innovation that merely results in better drug stability or easier drug administration is not considered a significant improvement and is therefore non-patentable in India.

Thailand’s Patent Act has no provision limiting the scope of patentability for incremental innovations. The IP Department has, however, devised chemical and pharmaceutical patent examination guidelines to discourage patent filings for drugs that do not possess the requirements of novelty or an inventive step taken by a pharmaceutical innovator.

These examination guidelines have existed since September 2013 and heightened the department’s standards when it comes to determining whether a product provides a patentable innovation over previous patents. The department anticipates the guidelines will hasten the patent examination process.

So far, however, the guidelines have led to numerous applicants encountering challenging examination results or “office actions” from the IP Department as to whether their inventions are considered to be evergreening. Thus, applicants are advised to review their patents carefully and consult with patent lawyers to overcome any rejections, questions or requests for additional documents.

While anti-evergreening provisions may discourage innovation, incremental innovations resulting in a similar drug may not be beneficial to a country and could block the development and production of legitimate generic drugs. A thorough and well-balanced examination of patent applications should be the middle road for granting exclusive rights to an inventor.

RELATED INSIGHTS​ 

July 6, 2026
Indonesia’s regulation on reporting online intellectual property (IP) infringement provides comprehensive procedural guidance for IP rights holders and their licensees in reporting online infringement complaints. Issued in December 2025 by the Ministry of Law as Regulation No. 47 of 2025 regarding Handling of Intellectual Property Infringement Reports in Electronic Systems, this regulation covers all types of IP rights. It also specifies documentation when reporting infringement, and lays out the procedures for examination, verification, and enforcement actions. Submission of Complaints Complainants may submit reports through the online system of the Directorate General of Intellectual Property (DGIP) or in person at the DGIP office. Complaints may also be filed through an authorized proxy. Under the regulation, complainants are required to provide the following information and documents: Personal details of the complainant; Brief description of the protected work or subject matter (i.e., type of IP and name or address of the infringing website, portal, account, or application, or a link to the location of the infringing content); Complete description of the alleged infringement; Certificate of registration or recordal of the relevant IP; Recordal of IP license agreement, if any; and Other supporting evidence. Verification and Examination Process Upon receiving a complaint, the responsible formality officer may request clarification or additional supporting documents. In the latter case, the complainant must then submit the necessary administrative documents within 14 days of the notification date. Once the documentation is deemed complete and sufficient, the case will be formally registered. Subsequently, the DGIP will establish a verification team to handle online IP violations, which will include the Civil Servant Investigator (PPNS), the Ministry of Communication and Digital Affairs, experts with relevant expertise in IP, and representatives from related associations such as AVISI (Indonesian Video Streaming Association). After examining the report, the team will prepare the Minutes
June 30, 2026
Customs recordation is an enforcement mechanism in Myanmar that enables intellectual property (IP) rights holders to seek prevention of the cross-border movement of infringing goods. The enactment of Myanmar’s IP laws in 2019 has enabled customs recordation for registered marks and copyrights under the Trademark Law 2019 and the Copyright Law 2019. By contrast, the Patent Law 2019 and the Industrial Design Law 2019 do not provide a practical framework for customs recordation, and accordingly such rights are not subject to the customs recordation regime. Under the Trademark Law 2019, rights holders may apply for customs recordation and may also ask the Customs Department to suspend the release of goods suspected of bearing counterfeit marks. Likewise, the Copyright Law 2019 allows for customs intervention in relation to pirated works. These provisions reflect Myanmar’s gradual alignment with international standards on border measures, although the implementation framework remains at a relatively early stage of development. Customs Recordation Pursuant to the Trademark Law 2019 and the Copyright Law 2019, the relevant authorities have issued customs rules concerning the protection of registered marks and copyrights. In practice, the process generally begins with the submission of an application to the Customs Department together with supporting documentation. This typically includes proof of registration in Myanmar; details of the rights holder, applicant, and any authorized representative; and a comprehensive description of the genuine goods. Product identification materials—such as photographs, packaging samples, and distinguishing features—are particularly important in helping customs officers identify suspected infringing goods. A recordation remains valid for two years from the date of approval. It may be renewed for additional two-year terms, provided that the renewal application is filed within the thirty days prior to expiry for marks and up to thirty days in advance of the expiry date for copyrights, in accordance with
June 24, 2026
Patent enablement requirements are provided under Article 102 of Vietnam’s Law on Intellectual Property (IP Law). In particular, a patent specification must “fully and clearly disclose the nature of the invention to such an extent that, based on the specification, a person having ordinary skill in the relevant art can implement the invention.” In pharmaceutical and biotechnology patents, this requirement is more complicated and subject to more rigorous assessment. The Patent Examination Guidelines (Guidelines) of the Intellectual Property Office of Vietnam (IP Office) were amended in March 2026 to introduce Annexes III and IV for the pharmaceutical and biotechnology sectors, in which Annex III provides detailed guidelines on the assessment of specification requirements. These amendments were made under a project for strengthening capacity in industrial property examination between the Japan International Cooperation Agency (JICA) and the IP Office. Annex III provides detailed instructions on how examiners assess enablement in a pharmaceutical or biotechnology application, and offers examples of acceptable and unacceptable descriptions with regard to the enablement aspect. Enablement Requirements in Pharma and Biotech Patents Article 12.7 of Circular 10/2026/TT-BKHCN (Circular 10) adds to the requirements of Article 102 of the IP Law that the description must demonstrate the novelty, inventive step, and industrial applicability of the technical solution. For pharmaceutical composition subject matters, Article 12.9 of Circular 10 sets out that the description must present the results of clinical trials and/or the pharmacological effects of the claimed pharmaceutical composition, and must include at least the following information: Substance/mixture used. Testing method (system) employed. Information on the test results. Correlation between the pharmacological effects obtained from the tests and the application of the pharmaceutical product in the prevention, diagnosis, and treatment of diseases. The Guidelines note that pharmacological study results should be presented in a quantified manner, and pharmacological
June 16, 2026
Since the implementation of the Trademark Law 2019 on April 1, 2023, Myanmar has operated under a modern first-to-file trademark system that brings its registration framework closer to international practice. As the new regime continues to develop in practice, applicants are increasingly required to navigate formal examination requirements, substantive objections, and procedural deadlines with greater precision. This article provides a high-level review of the trademark examination process in Myanmar, focusing on the principal stages from initial review to approval, the types of objections commonly raised by the Intellectual Property Department (IPD), and the key considerations for responding effectively. A clear understanding of these issues is essential for applicants seeking to secure registration efficiently and to mitigate avoidable delays or refusals. Examination Process: Key Stages Trademark applications filed with the IPD undergo two stages of review. Formality Examination The IPD first verifies compliance with procedural requirements, including: Correct Nice Classification Clear mark representation Accurate applicant details Clearly defined goods or services Representative details, if the application is filed by a representative Other formality requirements cover translation and transliteration of any non-English or non-Myanmar elements in the mark, color claim details, applicable disclaimers, and payment of official fees. Deficiencies result in an office action requiring correction within 30 days, which may be extended upon request. Registrability Examination The IPD also assesses registrability. A mark may be refused if it: Lacks distinctiveness Is descriptive or generic Misleads the public or violates public order/morality Contains prohibited state symbols Only compliant applications proceed to publication. Responding to Office Actions Applicants must respond within 30 days of notification from the IPD. Depending on the nature of the objection, strategies may include submitting legal arguments for distinctiveness, providing evidence of acquired distinctiveness, filing appropriate disclaimers, clarifying descriptions such as color claims, or amending the listed goods