|
1. Parties
Plaintiff:
Rice Engineering Supply Co.Ltd.
Defendant:
Boonrearng Srisawat
2.Background and Issue
Background
The
plaintiff brought a criminal prosecution
against the defendant. The facts of the
case claimed that the defendant entered
into King Mongkut’s University of
Technology Thonburi for studying a
Master’s Degree in Technology of Energy
Management. While studying, the
defendant was one of researchers in a
research team which carried out research
in order to improve the capacity of the
furnace for paddy husks. He then went on
to file an application for a patent for
the invention of a type of furnace with
2 layers and methods of burning. The
plaintiff claimed that the defendant had
no right to apply for the patent because
the research project for technology of
desiccation, including the furnace for
paddy husk, had many researchers,
including the defendant. The person who
was in charge as a head of the project
was Professor Dr. Somchart
Sophonronarit. Furthermore, the
plaintiff claimed that the defendant was
a student and co-contractor for
research. The said project received a
scholarship to the amount of 9,000,000
Baht provided by the Office of Funds for
Research Support. The scholarship
agreement was between a payee(King
Mongkut’s University of Technology
Thonburi) and donor(the Office of Funds
for Research Support) and it stated that
both payee and donor would be co-owners
in any Intellectual Property which might
occur from the research project, and
thus the benefits of the Intellectual
Property would be shared at a later
date. Afterwards, King Mongkut’s
University of Technology Thonburi
represented by Professor Dr. Somchart
Sophonronarit made an agreement to
transfer the rights of the invention
derived from the research project to the
plaintiff because the equipment for
research, the machines and workplace
were investments belonging to the
plaintiff, and allowed students to be
trained in the plaintiff’s factory.
Later, the plaintiff improved the
furnace for paddy husks making it ‘The
furnace for paddy husks and all
agricultural materials, and changing the
name to “ The furnace and the method
for burning agricultural materials to
produce heat energy which is free from
pollution by the process of whirling
wind in 2 rooms.” The plaintiff had
filed an application for patent which
was the same as that of the defendant.
As a matter of fact, the plaintiff
claimed that the rights to the invention
of the furnace for paddy husks applied
by the defendant belonged to the King
Mongkut’s University of Technology
Thonburi. However, having already been
transferred to the plaintiff, the
defendant had no right to do so. The
defendant’s filing for the patent made
the plaintiff damageable. The plaintiff
had asked the court to punish the
defendant according to the Patent Act
B.E. 2522(1979) section 87.
Issue
Whether the defendant is eligible to
file the application for patent for the
invention of the furnace for paddy
husks? And whether the defendant is
guilty according to the Patent Act B.E.
2522(1979) section 87?
3. Ruling
The Central Intellectual Property and
International Trade Court dismissed the
case.
4. Opinion
The
claims made by the plaintiff were that
the defendant committed a criminal act
by applying for a patent with false
statement. Accordingly, as the plaintiff
claimed that the right to apply for the
patent to belong to the King Mongkut’s
University of Technology Thonburi. The
plaintiff’s claim was that the
plaintiff’s right was better than the
defendant’s. These facts were problems
and issues concerning the process of the
Patent Office, not the problem of
presenting the false statement to the
officials of the Patent Office as said
in the case. The one and only most
important issue in the case to be
considered was that whether the
defendant submitted the false statement?
Therefore, when all the plaintiff’s
witnesses and evidence were clearly
presented to the court, including all
the researchers and the defendant, the
contribution made to the said research
work was not the issue, but rather that
the plaintiff could not prove that the
defendant submitted the false statement
in the process of the application for
the patent. Meanwhile, the plaintiff’s
witnesses testified to the court that
the defendant had also taken part in
improving the controversial invention by
himself. Though, superficially, the
appearance of the invention of Professor
Dr. Somchart Sophonronarit’s team, which
had been claimed by the plaintiff, was
similar in some ways to the invention
submitted for the patent by the
defendant, there were many parts
different, such as shape and capacity
specified in the summary of the
invention and claims (claims in this
sense, means anything which the patent
owner wants to be protected by the
Patent Act) of both parties. It was
clear that the invention claimed by the
plaintiff as a work derived from the
research work and the invention applied
for the patent by the defendant did not
exactly resemble one another. Besides,
the facts were conclusive that the
defendant was one of the researchers in
Professor Dr. Somchart Sophonronarit’s
team. Accordingly, the defendant was
eligible as a co-inventor to apply for
the patent. No circumstances in the case
had been proven to show that the
defendant was the plaintiff’s employee,
neither the employee of the said
university, nor the Office of Funds for
Research Support, and no facts were
shown that the defendant had transferred
his rights to the plaintiff, the
university or the Office of Funds for
Research Support. Therefore, the
application for the patent made by the
defendant was conduct according to his
understanding that he was able to do so.
Even though such actions might not be
appropriate, or made the plaintiff, the
university and the Office of Funds for
Research Support damageable. But in such
stuation, that was a way of proof of
evidence in the hearing process, who had
more entitled than others?. If the
plaintiff, the university and the Office
of Funds for Reseach Support claimed
that they had been the damaged party and
were more entitled to the patent than
the defendant, they could be eligible to
oppose the defendant’s application in
the process of the patent being granted.
It was not a false statement submitted
to a patent examiner. Also, it is not
the intention of the Patent Act to
punish the person who has improved or
developed a product or invention, then,
such person asked for the patent by his
own personally. That is because the real
purpose of the Patent Act was to
encourage people to develop and improve
products. Whoever claimed his right was
better than others, could be able to
oppose the patent examiner by said laws.
It was not anyone who just only filed an
application of the invention, for
patent, of which the detail of the
invention were similar to the one of
others should be deemed to present the
false statement at all times. Filing an
application for an invention or design
or a petty patent with a false statement
shall only be punished in section 87
when a person who has presented or
submitted facts to officials that he or
she was an inventor which were
completely false and that individual was
not involved the invention even in some
way. However, the defendant was one of
the researchers, carried out the
research work, and studied that job as
his dissertation for the Master’s
Degree. These circumstances could be
shown to prove that the defendant was
the person who was directly involved in
the invention filed for the patent.
5. Keywords
presents or
gives a false statement for a patent -
entitled to apply for a patent - better
right to an invention - take part in an
invention - develop an invention -
improve an invention - section 87 of the
Patent Act of Thailand - commit crime in
patent
Summarized and Translated by
V.S.
Edited by
Stephen
Lorriman
|