By Saowanee Leewijitsin
We are always told that new inventions or designs need to be kept confidential prior to applying for patent protection. This is because, to be granted a valid patent, “novelty” is the most necessary requirement for all kinds of patents (i.e., invention patent, product design patent and petty patent). Disclosure in any form to the public could fatally ruin your valuable patent application or even invalidate the granted patent. However, the latest Thai Supreme Court decision has stopped us from taking the leap into the idea that all literary works, published before the patent filing date, will certainly destroy the novelty of that invention patent.
In the Supreme Court decision no. 4883/2563 (2020), the plaintiff brought a civil litigation case against the defendant by claiming that the defendant had committed infringement of its invention and design patents.
The validity of all invention and design patents was then raised by the defendant and became the main argument in this case. The defendant retaliated by claiming that the plaintiff’s invention patent filed on 25 August 2009 was invalid because it lacks the novelty requirement. The significant evidence destroying the novelty of the plaintiff’s patent was the publishing and advertising of the plaintiff’s products in 4WHEELS magazine (August 2009 issue).
When this case was brought into the consideration of the Court of Appeal for Specialized Cases (“the Specialized Appeal Court”), the Specialized Appeal Court had considered that the 4WHEELS magazine was published and distributed before the plaintiff filed the granted invention patent no. 344462 at the Thai Patent Office. In that magazine, images of automobiles with gas cylinder clamps (plaintiff’s products), showing the position and installation of the gas tanks, appeared. This therefore evidences that the plaintiff’s design and inventions were widely known or used by others in the country before the patent application date. The Thai public could be aware of the existence of the subject inventions and designs because it was published in the magazine. Also, from the photos in the magazine, it obviously showed that there were automobiles having the plaintiff’s product attached therewith. Even though it would be published with the plaintiff’s consent, the 4WHEELS magazine should still be considered as “prior art”. As such, the plaintiff’s invention patent lacks the novelty requirement and should be invalidated.
The case was fought until the Supreme Court. Eventually, the Supreme Court made the final decision on the validity of the plaintiff’s invention patent with the key points as follows:
- Although the invention patent was filed on 25 August 2009 and the 4WHEELS magazine was published and distributed in August 2009, all content in the said magazine was just for advertising or marketing purposes, and no technical details were disclosed. Therefore, it could be obviously seen that, at that time of publication of the magazine, the plaintiff’s invention was not widely known to the Thai Public; otherwise, there would be no point for the plaintiff to invest in advertising and promoting their products in the magazine.
- Using the term “NEW INNOVATION” which means “something new or different” to describe the plaintiff’s products in the magazine could be understood as “When the magazine was published, these kinds of products had never been introduced to the Thai public before. This therefore is the reason why it was so necessary for the plaintiff to spend their money on advertising.”
- All disclosed photos and messages in the magazine are not the subject matter of the plaintiff’s invention and designs.
- As such, publication in the 4WHEELS magazine, even with the consent of plaintiff could NOT be regarded as “prior art”.
The Supreme Court then reversed the Specialized Appeal Court’s judgement and rendered the final judgment that the defendant had committed infringement of the plaintiff’s invention and design patents as well as ordered the defendant to abide by the plaintiff’s requests in the complaints such as:
- compensate the damages to plaintiff in the amount of THB 5,500,000 (USD 165,440) with an interest payable at 7.5% per annum from 10 April 2014 (i.e., complaint filing date) till the date that full payment is made to the plaintiff;
- stop manufacturing, using, selling, offering to sell, having for sale, importing, exporting and providing any kind of service related to the plaintiff’s product;
- compensate the Court fees and lawyers’ fees to the plaintiff.
In the deliberation of the case, the Supreme Court enlarged the concept of novelty and made it clear that not all disclosures are able to destroy the novelty of patent. The focus goes beyond merely the publication in the magazine. The Supreme Court paid considerable attention to all details, contents as well as the purpose of that disclosure. The upshot of this is that “Publish first, Patent later does not always ruin your chances of obtaining a valid patent”. An invention shall be still considered as novel if that disclosure is not subject matter disclosure, and thus makes it patentable.
If you have no idea on “WHAT”, “WHEN”, and “HOW” you should disclose your inventions or designs, please feel free to contact us at firstname.lastname@example.org. We would be happy to provide you with tactical advice for all your valuable IP assets.