The Draft on Encouragement of Utilization of Research And Innovation (Thailand’s Bayh-Dole Act)
Tanakrit Tangburanakij and Radeemada Mungkarndee, Baker & McKenzie (Thailand)
On 24 February 2021, an ordinary meeting of Thailand’s parliament approved a draft Encouragement of Utilization of Research and Innovation Bill (the “Draft”). A key objective of the Draft is to allow researchers to be entitled to ownership of their research work unless they are funded by government agencies. Normally, a sponsored research agreement requires that the government agency would retain ownership over inventions created with government funding. However, if a sponsee (a contracting party e.g. university) owns the research work, it is believed they would transfer technology and/ or license intellectual property rights to the industrial and commercial sector more effectively, which would be of benefit to the country’s economy.
It is worth noting that the Draft will not apply to research and innovation for national security and the benefit of humankind because it is believed that ownership in these kinds of research and innovation should not be vested in any specific person.
Although it is obvious that the model law of the Draft is the Bayh-Dole Act in the US, our preliminary observation is that the scope of the Draft is broader. The Bayh-Dole Act defines the term “invention” as any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act. However, the term “research and innovation work” (the “Work”) in the Draft, which could be considered analogous to the term “invention” in the Bayh-Dole Act, means any discovery or result arising from research or innovation creation regardless whether it is protectable by intellectual property laws or not. Therefore, a Work could include any kinds of knowledge, know-how, confidential information, as well as trade secret. This would create legal implications when implementing and enforcing the Draft because each type of intellectual property requires a different approach to handle it, especially in the case of a change of ownership/assignment of IP rights.
The Draft also stipulates that if a sponsee wishes to take ownership of a Work, the sponsee is required to submit a letter along with a utilization plan to the sponsor within a specified time period. However, if a sponsee does not wish to take ownership or does not submit a letter within the time period, a researcher who was involved in the creation of the Work will subsequently have the right to request ownership. Once a sponsee/researcher submits the letter, the sponsor would promptly issue an affirmative statement of ownership to the sponsee/researcher. Since there is no stipulation that a sponsor will consider the utilization plan prior to issuing the statement, we interpret that a sponsor will issue an affirmative statement for any request submitted by a sponsee/researcher. However, the Draft further stipulates that a sponsee/researcher will have to utilize the Work within two years, otherwise all and any rights over the Work will revert back to the sponsor. The two-year time frame may be extended upon a sponsee/researcher’s request.
The Draft also includes a provision regarding compulsory licensing, which is similar to the compulsory license under the patent law, meaning that if any person (the “Applicant”) would like to license a Work, they may file a request with the Encouragement of Utilization of Research and Innovation Committee (the “Committee”). The Applicant must also submit evidence showing that they have made an effort to obtain a license from the owner of the Work, having proposed conditions and remuneration reasonably sufficient under the circumstances but was unable to reach an agreement within a reasonable period. If the Committee finds that the owner of the Work has not utilized the Work within two years from the date the Work was vested in the owner, the Committee shall grant a license to the Applicant and determine reasonable remuneration to the owner. A license granted by the Committee is considered a license under the relevant IP law. Similarly, use of a compulsory license by the government, for the benefit of public interest under certain circumstances, such as national defence and security, is also specified in this Draft. However, the authorizing body who will be able to exercise this public non-commercial use is the Prime Minister through the cabinet.
The Ministry of Higher Education, Science, Research and Innovation is now conducting meetings with stakeholders (e.g. universities) to gather comments, section by section, in order to prepare the draft secondary legislation prior to submitting all drafts for the Parliament’s further approval.
Updates will be provided once there is further progress.