In a recent patent revocation case in Thailand, the Thai Supreme Court has upheld the decision of the Thai IP Court to revoke Thai Patent No. 8912 entitled “Herb Ingredient from Pueraria Candollei” for lack of novelty and an inventive step in view of a document which was published in 1931.
Pueraria Candollei is a herb found in various parts of South East Asia, particularly in Thailand. It is believed that this herb can improve health and directly extend the lives of users.
Patent No. 8912 was granted in 1999. The patentee subsequently advertised in the media that they had obtained a patent for such an invention and warned other manufacturers to stop producing or selling any product which may be infringing their patent.
Feeling aggrieved, these manufacturers filed a patent revocation suit at the IP Court to obtain a declaration that the patent lacked novelty and an inventive step and was therefore invalid. The IP Court concurred with this, declaring the patent invalid. The patentee then filed an appeal at the Supreme Court.
The 1931 document describes a product containing Pueraria Candollei and milk, while in Patent No. 8912, the patentee claims a product containing Pueraria Candollei, milkAND/OR three other ingredients i.e. sweetener, other herbs, and colouring and odour enhancing substances.
During the proceedings, the patentee had argued that the product as claimed in Patent No. 8912 was different from the product disclosed in the document published in 1931 because it contained three other ingredients which were not disclosed anywhere else, including the 1931 document.
The manufacturers argued that the use of the words “AND/OR” in the claims showed that the three other ingredients were just optional features and therefore, the patent was claiming what had been disclosed in the 1931 document i.e. a product containing Pueraria Candollei and milk.
The manufacturers also argued that the patent specification of Patent No. 8912 did not provide any experimental data which showed any significant effect to the product as claimed.
The Supreme Court found that the 1931 document rendered the invention disclosed and claimed Patent No. 8912 to be not novel and not inventive, upholding the IP Court’s decision.
In view of this decision, we strongly recommend that those who are planning to file patent applications in Thailand review the patent specification to ensure that the words chosen to describe the invention, particularly in the claims, are appropriate.
Our Regional Office in Singapore, KASS Regional IP Services Pte. Ltd., can assist you with any request or enquiry that you may have on any South East Asian IP matters, including Thai IP matters. Please do not hesitate to contact our Singapore Office atipr@kass.com.sg.