You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

October 3, 2014

Allow Case-by-Case Patent “Evergreening” of Pharmaceuticals

Bangkok Post, Corporate Counsellor Column

Patents are a key form of intellectual property (IP). The term “intellectual property” contains the word “intellectual” for the reason that one exerts mental effort in order to create an invention. Patent law then steps in to protect an inventor’s mental creation and places restrictions on similar inventions or ideas to allow the inventor to reap the fruits of his or her labors.

The patent system preserves and rewards creativity and thereby encourages inventors to innovate. In the context of the pharmaceutical industry, it serves as the driving force behind the development of new drugs.

Generally speaking, innovator pharmaceutical companies develop novel drugs, whereas generic pharmaceutical companies copy existing drugs and sell them at lower prices. Generic drug companies can, however, only copy drugs that are not protected by a patent—for example, in an instance where a patented drug product’s term has expired. By patenting a drug, a patent owner has the exclusive right to distribute it for a specified period of time—commonly 20 years in Thailand, which cannot be extended.

As is the case with other inventions, drugs that are only slightly different from existing ones have been successfully patented. This process is known as “evergreening,” which is done effectively to extend a patent term by a patent owner filing an application for a new product that has only minor differences compared with the previously patented drug.

For instance, a pharmaceutical company could file a patent for a drug with slightly altered chemical properties claimed to improve on certain aspects such as chemical stability or efficacy. It has been argued that such variants on existing products block the development and production of legitimate generic drugs, and many see this as a trick by pharmaceutical companies to stretch out the patent term, with the altered properties doing little actually to improve the drug.

However, the mere filing of a patent that is similar to one already issued is not necessarily a trick to extend the patent term. Often, the new patented drug provides an important and genuine, albeit minor, innovation such as reduced side effects, greater safety, or heightened efficacy.

Also, an originally patented version of a drug will still expire and be open to generic reproduction, and generic companies can make a product similar to one that has an expired patent. Thus, an improved version of a drug can be considered an incremental development that leads to a better quality of life for patients rather than as a trick to extend the lifetime of a patent term.

New drugs generally are not discovered overnight but rather through a series of small improvements on a previous drug. There are also numerous benefits to incremental innovation—slight modifications to a drug formula can provide benefits such as preventing allergic reactions or other side effects or an easier manufacturing process.

Nonetheless, several countries consider evergreening detrimental and have developed anti-evergreening laws in response to the practice. In countries with heightened novelty requirements for pharmaceuticals, it is very difficult to patent drugs with incremental improvements.

India, with its large generic drug industry and a huge population requiring access to low-cost medications, is one example of a country that has anti-evergreening laws. Section 3(d) of India’s Patent Act is the first and most extreme anti-evergreening provision. Under Section 3(d), variants on a patented pharmaceutical product are not patentable unless there is a “significant” improvement of efficacy. Innovation that merely results in better drug stability or easier drug administration is not considered a significant improvement and is therefore non-patentable in India.

Thailand’s Patent Act has no provision limiting the scope of patentability for incremental innovations. The IP Department has, however, devised chemical and pharmaceutical patent examination guidelines to discourage patent filings for drugs that do not possess the requirements of novelty or an inventive step taken by a pharmaceutical innovator.

These examination guidelines have existed since September 2013 and heightened the department’s standards when it comes to determining whether a product provides a patentable innovation over previous patents. The department anticipates the guidelines will hasten the patent examination process.

So far, however, the guidelines have led to numerous applicants encountering challenging examination results or “office actions” from the IP Department as to whether their inventions are considered to be evergreening. Thus, applicants are advised to review their patents carefully and consult with patent lawyers to overcome any rejections, questions or requests for additional documents.

While anti-evergreening provisions may discourage innovation, incremental innovations resulting in a similar drug may not be beneficial to a country and could block the development and production of legitimate generic drugs. A thorough and well-balanced examination of patent applications should be the middle road for granting exclusive rights to an inventor.

RELATED INSIGHTS​ 

September 24, 2026
Vietnam is implementing and developing a broad package of regulatory reforms that could reshape how IP, data, digital platforms, and product authenticity are regulated and enforced. Several of the key measures have been led by the Ministry of Public Security in its legislative and administrative capacity, as part of a broader government effort. The core reform package consists of four key legal instruments: proposed amendments to the Criminal Code, a proposed new Data Security Law, a draft Decree on Product Identification, Authentication and Traceability, and the newly enacted Decree No. 330/2026/ND-CP. These instruments include rules on criminal enforcement, data security, electronic identification, product identification and traceability, administrative violations, and cybersecurity sanctions. Combined, these measures will affect copyright enforcement, industrial property rights, trade secrets, AI training data, product provenance, online takedowns, valuation of counterfeit goods and electronic evidence. It is worth noting that, in addition to strengthening criminal penalties for IP crimes, Vietnam’s emerging regulatory framework increasingly treats infringement, data misuse, product authentication, and platform-enabled violations as interconnected regulatory and enforcement challenges. For rights holders and foreign investors, this could mean stronger tools against counterfeiting and online infringement, but also more compliance obligations around data, traceability, AI, platform controls and government-facing reporting. Expansion of Criminal IP Enforcement Proposed amendments to Article 225 of the Criminal Code would expand criminal copyright exposure beyond reproduction and distribution to cover large-scale commercial public performance and online communication of works, phonograms and video recordings. This is important because piracy is increasingly about streaming, unauthorized communication, and platform access models rather than physical copying. Aggravated copyright infringement could be subject to up to 10 years in prison for individuals and fines of up to VND 6 billion (about USD 228,300) for commercial legal entities. The amended Article 226 would expand criminal industrial property liability beyond
September 21, 2026
Thailand’s first-to-file trademark system has a serious vulnerability: it lacks both an explicit mechanism for refusing bad-faith registrations and any means of invalidating them in court after the five-year limitation period has expired. While brand owners worldwide confront trademark squatting, Thailand’s statutory silence stands out, particularly in light of AIPPI’s 2017 Resolution Q249, which recommended that every jurisdiction provide clear tools to address bad faith at all stages of the trademark lifecycle. Nearly a decade later, Thailand has yet to act. This article proposes a concrete reform blueprint, drawing on the legislative models of China, the United Kingdom, and the European Union. The Statutory Gap Under the Thai Trademark Act B.E. 2534, no provision expressly authorizes examiners to reject an application on grounds of bad faith. Section 8(10) addresses well-known marks but offers no relief where the targeted mark lacks well-known status. Practitioners have resorted to Section 8(9)—which bars marks “contrary to public order, morality, or public policy”—as a workaround. However, this provision was designed to address the characteristics of the mark itself, not the applicant’s intent. Thai Supreme Court decisions have split on whether it can reach bad-faith conduct, creating persistent legal uncertainty. The gap extends beyond examination. Civil actions to cancel a bad-faith registration must be brought within five years—a deadline that frequently expires before foreign brand owners discover the squatted mark. Cancellation through the Board of Trademarks remains available but is slow, costly, and subject to court appeal, leaving bad-faith registrations in force during protracted proceedings. The system effectively rewards squatters and penalizes legitimate owners. Lessons from International Best Practices Several major jurisdictions have already closed this gap. China’s 2019 amendment to Article 4 of the Trademark Law introduced an absolute ground for refusal: “bad faith trademark applications without intent to use shall be rejected.” Bad
September 14, 2026
Myanmar’s first-to-file trademark registration regime under the Trademark Law 2019—which became fully operational in April 2023—provides mark owners with enhanced legal protection compared with the country’s former system. Correspondingly, the current system imposes more rigorous statutory requirements for obtaining, maintaining, and enforcing rights in marks. In this first-to-file trademark registration system, however, evidence of use remains particularly significant, as it may establish acquired distinctiveness, support a claim that a mark is well-known, and strengthen the owner’s position in both registration and enforcement proceedings. Accordingly, it can be said that this framework is underpinned by three key concepts: distinctiveness, well-known status, and, importantly, use of the trademark. Trademark Distinctiveness Under the Trademark Law, signs that lack distinctiveness are generally ineligible for mark protection. These signs include generic terms, basic shapes, unstylized single letters or numerals, and signs that merely describe the kind, quality, quantity, intended purpose, value, geographical origin, production time, or other characteristics of the relevant goods or services. However, a mark that would otherwise be refused on distinctiveness or descriptiveness grounds may be registrable if it has acquired distinctiveness through its use prior to the filing date. To show this, the applicant must demonstrate that the mark became distinctive to relevant consumers through continuous, exclusive, and good-faith use in trade within Myanmar. The burden of proving acquired distinctiveness rests with the mark owner. Accordingly, sufficient evidence demonstrating both use of the mark and the level of consumer recognition attained should be prepared in advance. Well-Known Mark Criteria Myanmar’s Trademark Rules, which govern the substantive examination of mark registration applications, establish criteria for determining well-known marks, aligned with international standards. Where an applicant claims well-known status—whether to overcome a refusal on relative grounds or to oppose a third party’s registration—the registrar will assess the claim based on the following
September 14, 2026
On August 23, 2026, Vietnam’s National Assembly passed Law No. 11/2026/QH16, amending the country’s Customs Law with effect from March 1, 2027. The amendments represent a substantial reform of Vietnam’s customs-based intellectual property enforcement regime. The reforms come amid considerable external pressure. In its 2026 Special 301 review, the US Trade Representative (USTR) designated Vietnam a “priority foreign country,” citing widespread counterfeiting, weak border enforcement, limited ex officio customs powers, and the absence of controls over goods in transit. Vietnam’s legislative response signals a commitment to bringing its border enforcement practices into line with international expectations. For IP rights holders operating in or through Vietnam, the amended law introduces several tools that substantially strengthen enforcement options at the border. Closing the Transit Gap One of the most consequential amendments is the extension of IP-related customs enforcement to goods in transit. Previously, Vietnam’s customs regime applied IP controls only to goods being imported or exported, a gap the USTR had specifically identified as enabling infringing goods to pass through Vietnamese ports with impunity. Vietnam’s geographic position as a logistics hub for Southeast Asia means that substantial volumes of goods transit its ports and free-trade zones. Extending enforcement to cover these shipments brings Vietnam closer to the standard set by the EU’s customs enforcement regulation and addresses a longstanding concern of multinational brand owners whose goods are frequently counterfeited in the region. Strengthened Suspension and Ex Officio Powers The amended law introduces a dual-track suspension mechanism (Article 73(2)). Customs authorities will suspend clearance upon request by an IP rights holder (or authorized representative) who provides evidence of IP ownership, evidence of infringement, and a financial guarantee. Customs can now proactively suspend clearance on an ex officio basis if, during inspection and monitoring, they discover “clear grounds” to suspect that imported, exported,