2. Background and Issue

Background

The plaintiff is a major company in the pile-driving business. In this line of business, the plaintiff also sells concrete products such as pile cushions and contracts to carry out pile driving. It has had pile-driving experience for many big projects since B.E 2533.

On July 1^st 2541, the defendant filed a patent application for the invention of a pile cushion. The aforementioned pile cushion was made of tamarind wood, which was strong and tough. The pile cushion had three piled up rings. The middle pile was thicker than the other two. Each ring had four equal curves placed in a row. On March 1^st, 2543 the patent was granted.

Later, the defendant had given plenty notice to the government agencies and many pile manufacturers, alleged that they infringed his patent. Such notice caused damages to those companies, including the plaintiff. In particular, it had affected the Mass Rapid Transit Authority of Thailand project of which the plaintiff was a contractor, causing such project to be pending and as a result delayed. The defendant’s notice caused the plaintiff to be fined and to sub - contract others for the pile-driving instead. It destroyed the plaintiff’s reputation and also made the plaintiff disqualified from state contract.

The plaintiff filed a suit to revoke the defendant’s patent, on the grounds that it lacked novelty, inventive steps and was not capable of industrial application. The plaintiff claimed 1,000,000 Baht in compensation.

The defendant argued that he was the inventor of the pile cushion. He realized that the former pile cushions were ineffective. They were made of sacks and many kinds of wood and were cylindrical. As a result, the defendant had carried out experiments and researched many kinds of wood, trying many things to improve the structure and material of the pile cushion. The defendant had also tested the pile cushion with many companies, including the plaintiff. Nobody challenged his patent during the application process. He protected his intellectual property right in good faith.

Issue

(1) Whether the patent was invalid because it lacked novelty.

(2) Damages – Rights conferred by the patent. Whether damages should be awarded to the plaintiff.

3. Ruling

The Central Intellectual Property and International Trade Court revoked the defendant’s patent but did not order compensation.

The Supreme Court affirmed.

4. Opinion

Invalidity of patent - The plaintiff successfully proved that a driving pile for the building first appeared in Thailand 40 years ago. In order to protect a pile from breaking while driving, a pile cushion was needed. The plaintiff imported the Hydraulic Hammer from Japan. The Hydraulic Hammer had a pile cushion made of expensive pinewood. The plaintiff planned to use plywood instead of pinewood. However, the plaintiff was involved in too many projects to make the pile cushions. The defendant was employed as a sub contractor providing about 10,000 pile cushions, which had been made of tamarind wood since 2539-2541. All the pile cushions that the defendant sold to the plaintiff had the same pattern as the defendant’s patent. The defendants also sold a certain amount of those pile cushions to other companies. Afterwards, the plaintiff and other companies found that the defendant’s pile cushions did not work well. So, they ceased their orders.

According to the fact that the plaintiff, not the defendant, had determined the pattern of the pile cushion. Then the defendant had produced an amount of 10,000 pile cushions for the plaintiff costing around one million Baht. Besides, the defendant also sold the pile cushions, made of tamarind wood, to many other companies for the purpose of doing business rather than testing as the defendant alleged. Thus, the invention of the defendant became widely known or used by others in the country before the date of application for the patent. It formed part of the state of the art as provided in section 6 paragraph 2(1)[1] of the Patent Act B.E. 2522 (1979). The defendant’s invention lacked novelty. The granting of the defendant’s patent was not in compliance with the provision of section 5[2]. Thus, it could be cancelled by section 54[3].

Damages - In fact, the pile cushions, which the plaintiff used, were very similar to that of the defendant’s patent. The differences, if any, are only marginal. So, it was reasonable to believe that the defendant who owned the patent exercised his right in good faith. His act was not unlawful. The plaintiff could not claim damages.

5. Keywords

applications for patents - invention - novelty - forms part of the state of the art - invalid patent - claim for damages

Summarized and Translated by
Kornkanya Suvanpanich

Edited by
Stephen Lorriman

[1] Section 6: An invention is new if it does not form part of the state of the art.
The state of the art also includes any of the following inventions:
(1) an invention which was widely known or used by others in the country before the date of application for the patent;

[2] Section 5: Subject to section 9, a patent may be granted only for an invention in respect of which the following conditions are satisfied:
            (2) the invention is new;
            (3) it involves an inventive step; and
            (4) it is capable of industrial application.

[3] Section 54: Any patent granted not in compliance with the provisions of section 5,9, 10, 11 or section 14 shall be invalid.
Any person may challenge the invalidity of a patent. A petition to cancel an invalid patent may be submitted to the Court by any interested person or the public prosecutor.

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