Thailand invalidates all cannabis patents

The cannabis patent dispute has now escalated. The Thai government has issued a decree ordering the Thai DIP to invalidate all cannabis related patents. The military government is allowed to do this under the its special powers. Thailand legalised medical marijuana and kratom applications last year. 

The background is here but in essence an access to medicines lobby type panic has arisen because several pharma companies applied to patent cannabis related inventions. Unfortunately wild misinterpretation of patent rules has led to speculation that usual ogre, MNC big pharma is trying to block local research and prevent Thai medicinal products based on cannabis reaching patients. No one appears to have checked whether the patents are valid or not, instead simply asserting that they must be for natural processes. Nor did the government wait for the DIP’s usual patent examination. 

A frenzy of misreporting and misunderstanding seems to be part of the problem. The 10 or so patents in question ought to be rejected anyway if they don’t comply with Thai law, that is they are not novel uses. But it takes time to examine a patent and the government seems to have accelerated their decision in the face of a media frenzy.  The media does not report if the patents are for valid inventions or not? 

Now the worry is a worse situation will be created by the possible automatic invalidation of possibly good patents, in breach of WTO rules. Whether appeals will be filed is the next step to watch.  

Thai medical marijuana legalisation starts access to medicines battle

Thailand legalizing medical cannabis use might seem to have little IP relevance, but IP seems to be the biggest concern. The worry is a flood of patents for medical cannabis. Thailand is already highly sensitive about the effect of patents on access to medicines. News reports that a high volume of patent filings will be contrary to the public interest. Commentators say that this will deny Thai patients access to cannabinoid medical products resulting from them due to high costs of innovator owned medicines and also that Thai researchers will have more limited access to marijuana compounds to research.  

Whilst much of the media hype has referred to the common panic about dominance by multinational big pharma, the cannabinoid medicines industry is typically a different group. GW Pharmaceuticals is a small UK company which focuses on cannabinoid products for multiple sclerosis and is now expanding into other therapeutic areas. It is the biggest ogre since it has applied for various cannabis drug patents in Thailand. Some are co owned by Japan's Otsuka Pharmaceutical. So far the numbers of cannabinoid patents in Thailand are believed to be relatively small, just over a dozen or so. 

The issue pits the Thai Government Pharmaceutical Organization (GPO) against the patent office. The GPO argues cannabinoid products are naturally occurring so cannot be patented. Of course patent law is more subtle than that and ways to manufacture, process and refine natural products are of course patentable f they are completely new, and not obvious. News reports suggest the patent office may refuse the patents. In November the Thai Prime Minister waded in stating that he could use the military drafted constitution to cancel the patents. Another point is that these patents were filed long ago before legalisation, so may fall foul of another provision on legality of the patent.

However another consideration is control over plant varieties for cannabis strains and the potential restrictions on farming that might follow. Expect a long drawn out debate. Because only medical uses are legal, neither side will be consuming anything to relax over the issue!
         




      

Amendments to the Thai Patent Act

Thailand’s Department of Intellectual Property (DIP) has been in the process of revising the Thai Patent Act B.E. 2522 which was last amended in 1999. This time, the revisions aim to improve especially application procedures. A key issue is allowing parties other than patent holders to export patented pharmaceutical products to other developing countries to address public health problems under the Protocol Amending the TRIPS Agreement. The DIP also seeks for Thailand to become a checkpoint for access and benefit sharing of Genetic Resources (GRs) and Traditional Knowledge (TK) in patent applications. 

Important points of the revision include:

• Expansion of prior art definition to include prior art “widely known or used…outside Thailand before the application date”;
• revision of provisions for permitted prior disclosures of subject matter or details of the invention made by inventors, applicants or authorized persons for a period up to 12 months before the application date;
• new provisions relating to voluntary filing of divisional applications initiated by the applicants without having to wait until receiving examiner’s order as set forth by the current Patent Act, to speed up examination;
• new provisions providing 2 periods of publication of patent applications;
• a provision mandating publication by 18 months from the filing date in Thailand (at present publication time can be up to 5 years);
• revision of the existing provision limiting timeline for requesting a substantive examination to 3 years from the filing date in Thailand;
• new pre-grant opposition procedure within 90 days from the 2^nd publication of the patent application;
• revision of the provision for conversion of applications from patent to petty patent to 3 years from the filing date in Thailand, and the conversion from petty patent to patent to 3 years from the filing date in Thailand or before the issuance of the petty patent;

Thailand sometimes receives criticism for slow grant so speeding up the application process wherever possible will be welcome.  

Thai proposals to reduce patent pendency

Thailand is making noises about tackling its chronic patent backlog. Tens of thousands of patents are still under examination, many times more than the 6000 or so filed each year and at least 12,000 are over 5 years old. Some applications from the 1990s are still not granted. 

The Ministry of Commerce and the National Council for Peace and Order are working on a plan to tackle the backlog. Ideas include worksharing, automatic grant for patents conforming with grants elsewhere, more limited novelty and inventiveness examinations only, expedited examination for older applications and a new reexamination system to cover for errors.

A public consultation will follow. One concern raised by the Ministry of Public Health relates to whether expediting pharmaceutical patents would lower quality including allowing more patenting of incremental inventions which could then increase drugs prices.

Patenting costs in SEA

An analysis of the patenting costs in SE Asia conducted by IP Watchdog leads to the conclusion that to prosecute a national phase application and maintain the pattern to end of life in the major jurisdictions in the region would cost around USD 60,000. 

 

With a 40% increase in patent activity in the region in the last 3 years, ASEAN seeks under the AEC to become a hub of research and innovation activity. Most advanced states comprise Singapore, Malaysia and Thailand with Vietnam, Indonesia and the Philippines in a second tier. Chemical, agricultural and medical sciences lead the way. Singapore's AStar is the biggest R&D institutional applicant and Halliburton the largest commercial applicant. 

While filing costs are relatively uniform, translation fees are a major cost with Thailand the most expensive in the region. Not only does the original specification need to be translated in many countries but prosecution reports also need translation. The fact that some countries like Vietnam and Indonesia retain variable annuity fees also makes their costs higher.

The conclusion is that the AEC needs to focus on reducing the cost of patenting in ASEAN  to encourage greater innovation and more patenting.

Thai company takes on Alibaba

Thailand's Elide Fire Ball Pro Company makes a fire-extinguishing ball sold in over 60 countries. It is patented by its Thai inventor and has won awards all over the world. Elide is now suing Hangzhou Alibaba Advertising Co and Jack Ma, the CEO of Alibaba personally for allegedly promoting the sale of fake goods. News reports are not clear but suggest the claim is the that fake goods infringe Elide’s patent.

Thailand’s government is driving innovation and the company sees this as a Thai IP holder fighting foreign IP violation. Thailand’s Central IP & IT Court will hear the case.  The specific allegation is that Alibaba is promoting the sale of the fake AFO fire-extinguishing balls, via its website. In addition its payment system AliExpress sells and delivers the fakes – on a global basis. They claim damages relating to safety of the fakes as well as lost sales. 

The case is interesting for several reasons. First according to news reports it is a patent case, and if so patent contributory liability should lay out some different issues from secondary liability for trademark and copyright infringing sales on the Internet. Secondly a Thai company suing a Chinese intermediary makes for some interesting dynamics.  The last reason that they are suing Jack Ma for personal liability makes for good headlines, but surely he had nothing to do with the acts personally.

Thai patent amendments

Thailand has been debating amendments to its Patent Act for many years. The Department of Intellectual Property has now said that the amendments are going ahead.

Their chief goals are to reduce patent pendency (a serious problem in Thailand especially for chemical and pharma patents), to improve the availability of petty patents and to make sure that Thai public health is protected through the WTO TRIPS protocol relating to compulsory licensing. There is also a proposal to accede to the Hague Agreement for designs, which is an ASEAN Economic Community (AEC) goal for a number of ASEAN countries.  Thailand appears to be keen to find ways to lead in IP matters in the AEC.

Gilead under attack from Thai health activists

Health activists in Thailand are pressuring the government to issue further compulsory licenses for medicines.  This time their focus is on hepatitis C a common corollary illness with HIV. A consortium of NGOs have banded together to lobby for the hepatitis C medicine sofosbuvir to be compulsorily licensed.  Gilead Sciences Inc has applied for a patent for this drug in Thailand but it is not yet granted (there is a long backlog of pharma patents in Thailand).  The NGOs argue the cost of the US drug firm’s hepatitis C medicine is US$1,000 per pill and a full treatment needs nearly 100 of these. Meanwhile Indian companies manufacture them for a fraction of this cost.

In late 2014 a similar group lobbied the government to prevent the grant of a patent to Gilead. Their strategy then was to argue that sofosbuvir's chemical ingredients were not novel.

Explaining the importance of sofosbuvir, spokesmen have said the drug is a radical improvement on previous treatments and can cure the disease within three months.  The Commerce Ministry and the Food and Drug Administration are now considering the issue.

This is a classic access to health vs innovator situation.It is also part of a wider campaign against Gilead in multiple countries.  NGOs are seeking to use multiple strategies to break the innovator's patent monopoly.  Whilst one drug might not matter, one can imagine that if they target all medicines, the likes of Gilead will be reluctant to keep producing new products.

 

Thailand's 2015 Special 301 report

In its Special 301 report this year Thailand was maintained on the Priority Watch list. There are concerns over a lack of government priority for IP enforcement and weak coordination among government entities despite the National IPR Center of Enforcement operating since in 2013.

Outside practical enforcement, issues are raised about the backlog of pending patent applications, widespread unlicensed software in the public and private sectors, growing Internet-based copyright piracy, rampant trademark counterfeiting, lengthy civil IPR proceedings and low civil damages, the protecting of unfair commercial use, as well as unauthorized disclosure, of test data generated to obtain marketing approvals for pharma and agrochem products, and finally extensive cable and satellite signal theft.
 
On one hand the report praises the new Customs Act that provides Thai Customs officers with ex officio authority to suspend and seize illegal goods in transit, as well as copyright law amendments to address unauthorized camcording. On the other it complains of poor laws relating to the lack of a much-needed landlord liability provision, inadequate protections against the circumvention of technological protection measures and unauthorized modification of rights management information, and unclear operation of ISP notice-and-takedown procedures.

The Special 301 Priority Watch List doesn't compare countries at the same level. The interesting comparison with Indonesia reads in Thailand's favour since many of the above are complex IPR issues most of which are not even discussed in relation to Indonesia, given that Indonesia faces much more fundamental problems. Thailand is a more developed market so the US expects a higher level of IPR protection.