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

April 8, 2016

Protection of 3D Printing in Thailand

Three-dimensional (3D) printing technology, also known as “additive manufacturing,” is the process by which a physical object is produced from a 3D digital model, often by being built up with many successive layers of material. In recent years, the technology has become much more accessible to businesses and individual consumers, and it will likely have a significant impact on several major industries, including healthcare, automotive, and aerospace, among others.

3D printing allows goods to be produced more economically, in less time, on smaller scales, and in more efficient and versatile ways. The technology has, however, raised a number of serious questions about whether patent, design, and copyright law can protect the technologies that are used to create the 3D objects as well as the objects themselves. This article discusses 3D printing under Thailand’s legal framework.

Patents

In contrast to producing an object out of a mold or cast, 3D printing produces a physical object from a digital file. A digital image is created through a computer program that creates two- or three-dimensional graphical representations of objects. The object is built up layer by layer using mixtures of inks, additives, plastics, titanium, silver, steel, wax, photopolymers, and polycarbonate metals, depending on the nature of the end product.

Under Thai law, one distinct type of patent is the invention patent, which includes standard patents and petty patents.

Standard patents.  The Patent Act B.E. 2522 (1979), as amended in 1992 and 1999, provides standard patent protection over an invention for up to 20 years from the date of filing the application.

While Thai law excludes certain subject matters from patentability, such as certain living organisms, scientific or mathematical rules and theories, computer programs, methods for medical treatment, and so on, 3D printing technology does not seem to fall into an excluded category. The additive manufacturing process and its end products are patentable so long as they meet the criteria for patentability, including novelty, an inventive step, and industrial applicability.

Petty patents.  A petty patent provides an alternative form of protection for the 3D printing process and its end products. In order to be patentable as a petty patent, an invention must be new and capable of industrial application, and there is no requirement to have an inventive step. The duration of protection for a petty patent is six years, and the term may be renewed twice for periods of two years per term.

Both standard and petty patents provide adequate protection for inventions involving 3D printing. Complex products with a number of constituent parts may be protected by a standard patent. The inventive step requirement, however, is a major obstacle to applicants who want to obtain a standard patent for their 3D printing technology. Simple products can be protected by petty patents so long as those products are new.

As standard patents and petty patents provide different means of protection, applicants may seek protection of complex 3D printed parts under standard patents, and at the same time, obtain protection for simple 3D printed parts that will be assembled into a larger patented product under petty patents.

Patent infringement can include the unauthorized production of patented products, including producing goods by 3D printing. In addition, selling, stocking for sale, offering for sale, and importing patented products can also amount to infringement. A patent holder may file a criminal or civil lawsuit, or both, against an infringer or an alleged infringer. An infringer who intentionally commits an infringement may be subjected to penalties including imprisonment of up to two years and a fine up to THB 400,000, or both.

Although Thai patent law has provisions that provide for limitation of rights, use for private and non-commercial purposes is not included in the statutory limitations. As a result, it is not possible to raise a defense against a patent infringement claim that a patented article was 3D printed at home for personal use.

As patent protection in Thailand is still in the early stages of development, legal literature, legal doctrines, and judicial interpretations of the law are limited. The existing law seems inadequate in dealing with issues of infringement raised by 3D printing. For example, the rule on contributory infringement under Thai patent law is not clear, particularly when it applies to 3D printing technology.

Since there are no explicit provisions on contributory infringement, it is still unclear whether manufacturing of spare parts for incorporation into patented products constitutes an infringing act. It is equally unclear as to whether the replacement of a part which forms part of a product protected by a patent will constitute a noninfringing repair or is considered an infringing making of the patented article.

Designs

Another type of patent is the design patent. Thai law defines a design as “any configuration of a product or composition of lines or colors which gives a special appearance to a product and can serve as a pattern for a product of industry or handicraft.” Legal protection is available for both two- and three-dimensional designs. The only requirement for design patents is that an industrial or a handicraft design must be new. Design rights must be patented, and once they are patented, the patent will protect the external features of a product but not the technical function of the product.

Design protection will be used more than other forms of protection for 3D printing technology, as a design is most readily found to subsist in articles produced by 3D printing. A design patent provides a ten-year term of protection from the date of filing an application. The rights under a design patent for a 3D printed object will be infringed if a party makes the object without permission of the rights owner. Offering, importing, disposing, or using a product produced by 3D printing in which the patented design is incorporated will be an infringing act, and the wrongdoer may be subjected to penalties including two years’ imprisonment and a fine of up to THB 400,000, or both.

The exclusive rights available under a design patent are very favorable to patent holders. The only defense which is available against a design infringement action is use for research or educational purposes. Noncommercial uses cannot be made of a patented design. If 3D printing is done privately and for non-commercial purposes by an individual in his or her home or for personal use, this constitutes infringement.

Unlike the laws of certain other jurisdictions, Thai patent law does not provide a spare-part exception as a defense against infringement of design patents. Therefore, it would be considered an infringing act if a party uses a 3D printer to produce spare parts embodying a patented design to be used for genuine repair purposes for articles—for example, a particular bumper bar to be fitted with a car.

Copyright

In Thailand, copyrighted works include creative works in the literary, dramatic, artistic, musical, audiovisual, cinematographic, sound-recording, broadcasting, or any other work in the literary, scientific, or artistic sector of the author—irrespective of the method or form of its expression.

An object made by 3D printing can be protected as an artistic copyrighted work. However, the functional aspects of a product are excluded from copyright protection. Copyright can be raised against a party who attempts to use 3D printing methods to print images or graphic designs onto the surface of an article. It would also constitute copyright infringement if a copyrighted 3D-article is produced, such as the shape of a vase, sculpture, mobile phone case, etc.

Thai law protects computer programs as literary works. The term “computer program” is defined as “an instruction, a set of instructions, or any other material employed to enable the functioning of the computer or to obtain a certain result, irrespective of the form of the language of the computer program.” The computer programs used to create a computer-aided design and to operate 3D printers would enjoy copyright protection.

A bundle of rights introduced under Thailand’s recently updated copyright law now includes the right to make material available online or to electronically transmit material. Where a party makes computer-aided design files available via the Internet for file sharing, this would constitute copyright infringement. The term of copyright under Thai law is 50 years after the death of the author, with the exception of the work of applied art of which the term of protection lasts for 25 years.

From the above, the development of Thailand’s IP laws is still in its infancy. The rapid development of 3D printing technology seems to be beyond the reach of the country’s intellectual property infrastructure. Several complex issues remain unclear and will be left to judicial interpretation. Social and economic impacts stemming from this technology have to be clearly understood. Thailand may soon need to introduce 3D printing legislation in order to cope with the challenges brought about by this emerging technology.

RELATED INSIGHTS​ 

March 3, 2023
Two of Tilleke & Gibbins’ life science specialists in Bangkok have contributed the Thailand chapter to the newly issued Licensing 2023, a comprehensive guide from Lexology Getting the Deal Through to licensing in various jurisdictions around the world. The Thailand chapter covers the following topics: Laws and licensing arrangements: Unfair Contract Terms Act, Trade Competition Act, pre-contractual disclosure, registration of international licensing, implied obligations, Civil and Commercial Code, Trademark Act, Patent Act, Trade Secrets Act Intellectual property issues: Paris Convention for the Protection of Industrial Property, contesting the validity of licensor’s IP rights, invalidity and expiry of IP rights, security interests, proceedings against third parties, sublicensing, jointly owned IP, first to file, scope of patent protection, trade secrets, copyright Software licensing: Perpetual licensing, legal requirements, user restrictions Royalties and payments, currency conversion, and taxes: Relevant legislation, restrictions, taxation of foreign licensors Competition law issues: Restrictions on trade, legal restrictions, and IP-related court rulings Indemnification, disclaimers, and damages: Prevalence and enforceability of indemnity provisions and contractual waivers of damages Termination: Right to terminate, impact of termination Bankruptcy: Impact of licensee or licensor bankruptcy Dispute resolution: Governing law, arbitration, enforceability, injunctive relief, contractual waivers The full Thailand chapter is available below as a PDF. Tilleke & Gibbins also contributed the Vietnam chapter to Licensing 2023. To browse all jurisdictions covered by the guide, please visit the Getting the Deal Through website.
February 28, 2023
Influencer marketing and the creation of sponsored content is an increasingly popular way for brands to reach their target audience. Although there is no universal definition of an “influencer,” the term is broadly used to describe people who are able to affect purchasing decisions of others through their relationship with their audience. In the context of social media and the creator economy, influencers are usually people with significant followings on platforms such as Instagram, TikTok, Twitch, or YouTube who are viewed as celebrities, opinion leaders, trendsetters, or experts in their respective field. Based on a study conducted by Nielsen in 2022, 80% of social media users in Asia who follow influencers are likely to purchase products recommended by the influencers. Brand owners should be aware of five key legal considerations when entering into influencer marketing agreements. 1. Making informed decisions through due diligence Every collaboration with an influencer is a business relationship. Brands must conduct thorough due diligence on potential influencers prior to engaging them. This may include deep dives into the individual’s old social media posts, as well as requests for disclosure of prior controversial incidents and existing brand associations. For example, a health and fitness brand may not want—for both legal and commercial reasons—to be publicly associated with an influencer who is a brand ambassador of electronic cigarettes, no matter how impressive the latter’s Instagram following or deadlift record is. Brands should also ensure that their influencer marketing agreements include relevant representations and warranties that the influencer has not and will not commit a crime or act in a way that may cause negative publicity for the brand. This may include racist, extremist, homophobic, violent, or misogynistic acts, or any other acts that are obscene or against public order. 2. Clearly defining the scope of engagement Brands
February 24, 2023
On February 20, 2023, the Supreme People’s Court of Vietnam submitted a Practical Report on the Implementation of the Law on Organization of People’s Courts, as well as a Draft Amendment of the Law on Organization of People’s Courts to seek online comment from interested parties. Notably, the Supreme People’s Court has expressed a desire to establish specialized courts such as an IP court and a bankruptcy court. Practical Report on the Implementation of the Law on Organization of People’s Courts The Supreme People’s Court reviewed the implementation over the past eight years of the Law on Organization of People’s Courts (“LOPC”), which took effect in 2015. Some highlights of the implementation process, as set out in the Supreme People’s Court’s practical report, are as follows: Re-systematization of all levels of courts: The LOPC systematized the court system in Vietnam, including four levels: Supreme People’s Court Three Superior People’s Courts 765 first-instance trial courts (including 702 district courts and 63 provincial courts) 66 appellate courts (including 63 provincial people’s courts and the three Superior People’s Courts) In addition, the Supreme People’s Court established four adjudicating agencies for cassation and reopening (including three Judicial Committees of the Superior People’s Court and the Council of Judges of the Supreme People’s Court). Support departments for the court have been strengthened, and policies have been developed to train judges. Trial results: From June 1, 2015, to April 30, 2022, the courts have settled 3,187,285 cases of all kinds out of a total of 3,334,915 cases handled (95.57%). Most of the remaining cases are newly accepted and still within the time limit for settlement as prescribed by law. On average, the courts have had to deal with about 476,416 cases each year. Draft Amendment of Law on Organization of People’s Courts Despite the notable
February 15, 2023
To improve its patent application processing capacity, the Intellectual Property Office of Vietnam (IP Office), with the support of the Japan International Cooperation Agency (JICA), is continuing to develop a draft amendment to the patent application examination guidelines for inventions related to computer programs. After issuing Annex I to the patent application examination guidelines in 2021, which covered subject-matters related to computer programs that are protected as inventions, the IP Office’s Patent Examination Center, with the support of experts from the JICA, has now developed a draft of Annex II. This draft provides guidance on examination related to a sufficient disclosure of the substance of claimed subject-matters and an assessment of the protection criteria (novelty and inventive step) of subject-matters related to computer programs, along with illustrative examples. In addition, the draft introduces the concepts of “sub-combination inventions” and “mixed-type inventions”, an assessment of the clarity of sub-combination inventions, and the assessment of novelty and inventive step of mixed-type inventions. To evaluate the amendments in the draft, in conformity with the legal regulations and the examination practice, the Patent Examination Center organized a discussion of the draft on February 4, 2023, with the contribution of opinions and comments from IP representatives, organizations, schools, institutes, and individuals. The Patent Examination Center announced that it wishes to receive further constructive opinions from interested parties to improve the amendments of the guidelines. In the context that inventions related to computer programs are closely related to new technologies such as artificial intelligence (AI), and noting the many difficulties arising in the examination process, we hope that the amendments to the guidelines, specifically as outlined in the draft of Annex II, will soon be finalized and officially released. This annex will certainly facilitate the examination of inventions related to computer programs, as well as