In many countries, IP law affords separate protection to functional and non-functional aspects of a newly developed product. While novelty in function (a new invention) is covered by patent law, newness in aesthetics and other superficial features are protected by design law. However, in Thailand, IP protection for functional and design aspects is not mutually exclusive. Both inventions and designs are protected under the same patent law (Patent Act BE 2522(1979)). Consequently, many companies have ended up applying for design protection even when product changes are purely functional in nature and hence more applicable to invention patents than design patents. Sometimes these cases are driven primarily by concerns relating to cost, time (to bypass the substantive examination of an invention patent) or just plain strategy to monopolise a particular design.

One such case that brought this issue to the fore was that of Dcon Products v Department of Intellectual Property (Supreme Court Judgment 9733/2552), the Apex Court upholding the previous decision of the Central Intellectual Property and International Trade (IP&IT) Court. The plaintiff had applied for design protection for two newly developed pre-stressed concrete planks (one with a round bottom and the other with a rounded rectangular bottom), to be used in building construction.

The Courts rejected the application on the ground that no new feature in shape, configuration or ornamental pattern was identifiable or superficially visible. Furthermore, it was observed that the concavity in design at the plank bottom provided more strength and ability to bear weight. In short, the novelty improved the functionality and design protection cannot be afforded to such an “invention”.

The Supreme Court suo moto considered the issue from the public order angle as well where it observed that granting a design patent in this case would tantamount to granting monopoly rights to the plaintiff (over a design which, would otherwise fail the prior art test) to initiate civil or criminal actions against any third party who may wish to make genuine use of a design common to the industry. The Court finally dismissed the case, stating that the plaintiff should have sought protection of its planks as invention patents and not as design patents. The Dcon case stresses the importance of choosing the correct IP protection for new products. Choosing an inappropriate protection may not only lead to wastage of time, money and effort but more importantly could debar the applicant from filing an invention patent later as the basic element of prior non-disclosure would not be fulfilled. Companies need to seek professional advice from IP attorneys on the relevant IP protection for their products.