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​ 

September 14, 2026
Myanmar’s first-to-file trademark registration regime under the Trademark Law 2019—which became fully operational in April 2023—provides mark owners with enhanced legal protection compared with the country’s former system. Correspondingly, the current system imposes more rigorous statutory requirements for obtaining, maintaining, and enforcing rights in marks. In this first-to-file trademark registration system, however, evidence of use remains particularly significant, as it may establish acquired distinctiveness, support a claim that a mark is well-known, and strengthen the owner’s position in both registration and enforcement proceedings. Accordingly, it can be said that this framework is underpinned by three key concepts: distinctiveness, well-known status, and, importantly, use of the trademark. Trademark Distinctiveness Under the Trademark Law, signs that lack distinctiveness are generally ineligible for mark protection. These signs include generic terms, basic shapes, unstylized single letters or numerals, and signs that merely describe the kind, quality, quantity, intended purpose, value, geographical origin, production time, or other characteristics of the relevant goods or services. However, a mark that would otherwise be refused on distinctiveness or descriptiveness grounds may be registrable if it has acquired distinctiveness through its use prior to the filing date. To show this, the applicant must demonstrate that the mark became distinctive to relevant consumers through continuous, exclusive, and good-faith use in trade within Myanmar. The burden of proving acquired distinctiveness rests with the mark owner. Accordingly, sufficient evidence demonstrating both use of the mark and the level of consumer recognition attained should be prepared in advance. Well-Known Mark Criteria Myanmar’s Trademark Rules, which govern the substantive examination of mark registration applications, establish criteria for determining well-known marks, aligned with international standards. Where an applicant claims well-known status—whether to overcome a refusal on relative grounds or to oppose a third party’s registration—the registrar will assess the claim based on the following
September 14, 2026
On August 23, 2026, Vietnam’s National Assembly passed Law No. 11/2026/QH16, amending the country’s Customs Law with effect from March 1, 2027. The amendments represent a substantial reform of Vietnam’s customs-based intellectual property enforcement regime. The reforms come amid considerable external pressure. In its 2026 Special 301 review, the US Trade Representative (USTR) designated Vietnam a “priority foreign country,” citing widespread counterfeiting, weak border enforcement, limited ex officio customs powers, and the absence of controls over goods in transit. Vietnam’s legislative response signals a commitment to bringing its border enforcement practices into line with international expectations. For IP rights holders operating in or through Vietnam, the amended law introduces several tools that substantially strengthen enforcement options at the border. Closing the Transit Gap One of the most consequential amendments is the extension of IP-related customs enforcement to goods in transit. Previously, Vietnam’s customs regime applied IP controls only to goods being imported or exported, a gap the USTR had specifically identified as enabling infringing goods to pass through Vietnamese ports with impunity. Vietnam’s geographic position as a logistics hub for Southeast Asia means that substantial volumes of goods transit its ports and free-trade zones. Extending enforcement to cover these shipments brings Vietnam closer to the standard set by the EU’s customs enforcement regulation and addresses a longstanding concern of multinational brand owners whose goods are frequently counterfeited in the region. Strengthened Suspension and Ex Officio Powers The amended law introduces a dual-track suspension mechanism (Article 73(2)). Customs authorities will suspend clearance upon request by an IP rights holder (or authorized representative) who provides evidence of IP ownership, evidence of infringement, and a financial guarantee. Customs can now proactively suspend clearance on an ex officio basis if, during inspection and monitoring, they discover “clear grounds” to suspect that imported, exported,
September 7, 2026
Indonesia’s Constitutional Court (Mahkamah Konstitusi) has reinstated a key provision limiting pharmaceutical patent protection, signaling a renewed commitment to balancing patent rights with public access to medicines. In its ruling to Case No. 255/PUU-XXIII/2025, the court partially granted a petition for judicial review of Law No. 65 of 2024, which had amended the country’s Patent Law, and ordered the restoration of a provision that had excluded certain pharmaceutical inventions from patentability. The decision took effect immediately upon its pronouncement at the court’s plenary session on August 28, 2026. Background The petition challenged the removal of article 4(f) from Law No. 13 of 2016 concerning Patents (Patent Law), as amended by Law No. 65 of 2024. Article 4(f) had excluded from patentability certain inventions relating to new uses of known substances. The petitioners argued that removing this provision would open the door to patent protection for second medical use inventions and facilitate patent evergreening—practices that can extend exclusivity periods, delay generic market entry, and reduce public access to affordable medicines. The petitioners included several patient advocacy and public-interest organizations: the Indonesian Dialysis Patients Community Association, the Indonesian Association of Drug Abuse Victims (PKNI), the Indonesian Pulmonary Hypertension Foundation (YHPI), the Rekat Peduli Indonesia Foundation, and the Indonesian Positive Women’s Association (IPPI), along with the Indonesia for Global Justice Association and four individual petitioners. The petitioners also challenged the constitutionality of the phrase “interested party” in article 70(1) of the Patent Law, arguing that it should be construed expressly to clarify who has standing to appeal a decision to grant a patent before the Board of Patent Appeal, and to allow a broader range of parties—such as patent holders, licensees, consumer organizations, prosecutors, aggrieved third parties, and others who may suffer direct or indirect harm from the grant of a patent—to
September 2, 2026
Thailand and China have a longstanding and significant trade relationship, which increasingly extends to e-commerce and digitally enabled supply chains. While these channels create new opportunities for businesses to reach consumers across borders, their growth also brings greater exposure to intellectual property (IP) infringement across jurisdictions and online platforms. Effective cooperation between the two countries’ enforcement authorities has therefore become increasingly important. To strengthen cooperation in this area, Thailand and China signed a memorandum of understanding (MOU) on IP enforcement in Beijing on July 20, 2026, during the Thai prime minister’s official visit to China. Officially titled “Memorandum of Understanding Between the State Administration for Market Regulation of the People’s Republic of China and the Ministry of Commerce of the Kingdom of Thailand on Cooperation in the Field of Intellectual Property Enforcement,” the MOU forms part of a broader bilateral agenda covering industrial and supply chains, participation by micro, small, and medium-sized enterprises (MSMEs), cooperation associated with the ASEAN–China Free Trade Area 3.0, and progress on the registration of Thai geographical indications in China. The MOU establishes a bilateral framework for cooperation and coordination in five broad areas: Strengthening dialogue in IP enforcement; Enhancing information sharing; Facilitating the enforcement of IP rights in cases arising in the parties’ domestic markets and on online platforms, in accordance with their respective domestic laws; Promoting cooperation in IP enforcement training and human resource development; and Undertaking other cooperation activities agreed upon by both sides. The Department of Intellectual Property (DIP) will serve as the principal coordinating agency for Thailand, while the Bureau of Law Enforcement and Inspection in China’s State Administration for Market Regulation (SAMR) will serve in that role for China. The framework is particularly relevant to the growth of e-commerce, as it covers infringement in the domestic markets and on