Worlds apart: 3D printing and IP law in Thailand

3D printing technology, also known as “additive manufacturing”, is the process by which a physical object is produced from a 3D digital model, often by being built up with many successive layers of material. In recent years, the technology has become much more accessible to businesses and individual consumers, and it will likely have a significant impact on several major industries, including healthcare, automotive and aerospace.

The technology allows goods to be produced more economically, in less time, on smaller scales, and in more efficient and versatile ways. However, 3D printing has raised a number of serious questions about whether patent, design, and copyright law can protect the technologies that are used to create the 3D objects as well as the objects themselves.

In contrast to producing an object out of a mould or cast, 3D printing produces a physical object from a digital file. A digital image is created through a computer program that creates 2D or 3D graphical representations of objects. The object is built up layer by layer using mixtures of inks, additives, plastics, titanium, silver, steel, wax, photopolymers, and polycarbonate metals, depending on the nature of the end product.

Under Thai law, one distinct type of patent is the invention patent, which includes the standard patent and the petty patent.

Standard patents

The Patent Act B.E. 2522 (1979), amended in 1992 and 1999, provides standard patent protection over an invention for up to 20 years from the date of filing the application.

While Thai law excludes certain subject matter from patentability such as certain living organisms, scientific or mathematical rules and theories, computer programs, and methods for medical treatment, 3D printing technology does not seem to fall into an excluded category. The additive manufacturing process and its end products are patentable so long as they meet the criteria for patentability, including novelty, inventive step, and industrial applicability.

Petty patents

A petty patent provides an alternative form of protection for the 3D printing process and its end products. In order to be patentable as a petty patent, an invention must be new and capable of industrial application, and there is no requirement to have an inventive step. The duration of protection for a petty patent is six years, and the term may be renewed twice for periods of two years per term.

Both standard and petty patents provide adequate protection for inventions involving 3D printing. Complex products with a number of constituent parts may be protected by a standard patent. The inventive step requirement, however, is a major obstacle to applicants that want to obtain a standard patent for their 3D printing technology. Simple products can be protected by petty patents so long as those products are new.

As standard patents and petty patents provide different means of protection, applicants may seek protection of complex 3D-printed parts through standard patents, and at the same time obtain protection for simple 3D-printed parts that will be assembled into a larger patented product under petty patents.

Patent infringement can include the unauthorised production of patented products, including producing goods by 3D printing. In addition, selling, stocking for sale, offering for sale, and importing patented products can also amount to infringement. A patent owner may file a criminal or civil lawsuit, or both, against an infringer or an alleged infringer. An infringer that intentionally commits an infringement may face penalties including imprisonment of up to two years and a fine of up to ฿400,000 ($11,300), or both.

“Thailand may soon need to introduce 3D printing legislation in order to cope with the challenges brought about by this emerging technology.”

Although Thai patent law has provisions for limitation of rights, use for private and non-commercial purposes is not included in the statutory limitations. As a result, it is not possible to raise a defence against a patent infringement claim that a patented article was 3D-printed at home for personal use.

As patent protection in Thailand is still in the early stages of development, legal literature, legal doctrines, and judicial interpretations of the law are limited. The existing law seems inadequate in dealing with issues of infringement raised by 3D printing. For example, the rule on contributory infringement under Thai patent law is not clear, particularly when it applies to 3D printing technology.

Since there are no explicit provisions on contributory infringement, it is still unclear whether manufacturing of spare parts for incorporation into patented products constitutes an infringing act. It is equally unclear whether the replacement of a part which forms part of a product protected by a patent will constitute a non-infringing repair or is considered an infringement of the patented article.

Designs

Another type of patent is the design patent. Thai law defines a design as “any configuration of a product or composition of lines or colours which gives a special appearance to a product and can serve as a pattern for a product of industry or handicraft”. Legal protection is available for both 2D and 3D designs. The only requirement for design patents is that an industrial or a handicraft design must be new. Design rights must be patented, and once they are patented, the patent will protect the external features of a product but not the technical function of the product.

Design protection will be used more than other forms of protection for 3D printing technology, as a design is most readily found to subsist in articles produced by 3D printing. A design patent provides a ten-year term of protection from the date of filing the application. The rights under a design patent for a 3D-printed object will be infringed if a party makes the object without permission of the rights owner. Offering, importing, disposing, or using a product produced by 3D printing in which the patented design is incorporated will be an infringing act, and the infringer may be subjected to penalties including two years’ imprisonment and a fine of up to ฿400,000, or both.

The exclusive rights available under a design patent are very favourable to patent owners. The only defence which is available against a design infringement action is use for research or educational purposes. Non-commercial uses of a patented design cannot be made. If 3D printing is done privately and for non-commercial purposes by an individual in his or her home or for personal use, this constitutes infringement.

Unlike the laws of certain other jurisdictions, Thai patent law does not provide a spare-part exception as a defence against infringement of design patents. Therefore, it would be considered an infringing act if a party uses a 3D printer to produce spare parts embodying a patented design to be used for genuine repair purposes for articles—for example, a particular bumper bar to be fitted to a car.

Copyright

In Thailand, copyrighted works include creative works in the literary, dramatic, artistic, musical, audiovisual, cinematographic, sound-recording, broadcasting, or any other work in the literary, scientific, or artistic sector of the author—irrespective of the method or form of its expression.

An object made by 3D printing can be protected as an artistic copyrighted work. However, the functional aspects of a product are excluded from copyright protection. Copyright can be raised against a party that attempts to use 3D printing methods to print images or graphic designs on to the surface of an article. It would also constitute copyright infringement if a copyrighted 3D article is produced, such as the shape of a vase, sculpture, mobile phone case, etc.

Thai law protects computer programs as literary works. The term “computer program” is defined as “an instruction, a set of instructions, or any other material employed to enable the functioning of the computer or to obtain a certain result, irrespective of the form of the language of the computer program”. The computer programs used to create a computer-aided design (CAD) and operate 3D printers would enjoy copyright protection.

A bundle of rights introduced under Thailand’s recently updated copyright law includes the right to make material available online or to electronically transmit material. Where a party makes CAD files available via the internet for file-sharing, this would constitute copyright infringement. The term of copyright under Thai law is 50 years after the death of the author, with the exception of a work of applied art, for which the term of protection is 25 years.

The development of Thailand’s IP laws is still in its infancy. The rapid development of 3D printing technology seems to be beyond the reach of the country’s IP infrastructure. Several complex issues remain unclear and will be left to judicial interpretation. Social and economic impacts stemming from this technology have yet to be clearly understood. Thailand may soon need to introduce 3D printing legislation in order to cope with the challenges brought about by this emerging technology.

Jakkrit Kuanpoth is of counsel at  Tilleke & Gibbins. He can be contacted at: jakkrit.k@tilleke.com