The document summarizes key aspects of technology transfer and cross-border mergers and acquisitions in Thailand. It defines technology transfer as the process of transferring technology, expertise, know-how or facilities from one party to another through various means. It highlights the important role of intellectual property in technology transfers and different types of technology transfer agreements. It also discusses intellectual property due diligence as essential for cross-border mergers and acquisitions involving Thai companies to identify ownership, value, and potential liability issues regarding intellectual property.

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TECHNOLOGY TRANSFER AND
CROSS-BORDER MERGERS IN THAILAND
Kowit Somwaiya
LawPlus Ltd.
WEN Intellectual Property and Technology Transfer
International Forum
16 October 2018
Hefei, China

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The information provided in this document is general in nature and may not
apply to any specific situation. Specific advice should be sought before taking
any action based on the information provided. Under no circumstances shall
LawPlus Ltd. or any of its directors, partners and lawyers be liable for any
direct or indirect, incidental or consequential loss or damage that results from
the use of or the reliance upon the information contained in this document.
Copyright © 2018 LawPlus Ltd.

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Kowit Somwaiya
Founder and Managing Partner, LawPlus Ltd.
Founder and Managing Partner, LawPlus Myanmar Ltd.
Vice President, IPAT
Board Member, INTA
• B.A. (Education – English), Ubon Ratchathani Rajbhat University, Thailand
• LL.B., Thammasat University, Thailand
• LL.M., University of Illinois, USA
• Certificate of Instruction for Lawyers, Harvard Law School, USA

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www.lawplusltd.com
 Established in 2003
 Professional, Practical, Prompt, Pro-active
 Major practices
● Banking and finance
● Corporate and M&A
● FDI and investment promotion
● IP and ICT
● Dispute resolution and litigation
 Rankings:

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 What Is a Technology Transfer?
 Roles of IP in Technology Transfer
 Technology Transfer Agreements
 Assignment of IPRs in Thailand
 License of IPRs in Thailand
 IP and Cross-Border Mergers and Acquisitions in Thailand
Presentation Topics

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What Is a Technology Transfer? (1)
 A process whereby a technology, expertise, know-how or facilities of a party is
transferred to another party by assignment, sale or license.
 A highly collaborative and mutually beneficial process allowing private firms to acquire or
utilize academic expertise and results of publicly funded R&D.
 Takes place through various channels, e.g. trade, licensing, joint ventures, franchising
and foreign direct investment (FDI).
 Helps owner of technology generate revenues and disseminate its new knowledge.
 Gives consumers access to new products and new services.

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What Is a Technology Transfer? (2)
 Forms of intellectual property or technology for a technology transfer
● Know-how and technical expertise, e.g. plans, diagrams, models, instructions,
guides, formulae, etc.
● Technological knowledge necessary to acquire, install and use machinery,
equipment, intermediate goods and/or raw materials acquired by purchase, lease or
other means.
● Technological contents of industrial and technical cooperation arrangements.

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Roles of IP in Technology Transfer
 Valid and enforceable IPRs are the key elements of technology transfer.
 Value of IPRs determines the costs/fees of each technology transfer transaction.
 IPR helps identify the nature of the technology to be transferred and its owner.
 IPR in a technology can be used to secure funding for development of other
technologies.
 Patents are better elements for a technology transfer and are subject to less risk of loss
when compared with trade secrets.

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Technology Transfer Agreements (1)
 Technologies
● Patents (patented technology).
● Trade secrets.
● Know-how.
● Technical expertise.
 Transferor
● Owner of the exclusive rights of transferred technologies.
● Supplier or holder of transferred technologies.
 Transferee
● Recipient of transferred technologies.
● Other right holder oftransferred technologies.
 Nature of contractual relationship
● Transfer of ownership in technology.
● Transfer of right (to use) of technology.

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Technology Transfer Agreements (2)
 Forms of agreements
● Licensing Agreement
− Strong collaborative relationship between the parties.
− Commercialization of technology through royalty streams.
− Parties can anticipate further collaboration.
● Assignment Agreement
− An outright assignment (sale) of technology.
− Can be with or without consideration.
− No control of assignee by assignor.
● Partnership Agreement
− Mainly for co-development and commercialization of technologies.
− Based on background technologies of the parties.
− Owner of each background technology is clearly specified.

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Technology Transfer Agreements (3)
 Forms of agreements
● Patent Pools
− Agreement between two or more patent holders.
− To license one or more of their patents to one another or third parties.
− To set a fair market for technology, eliminate the problems associated with
blocking patents and patent stacking.
− To facilitate technology transfer, including sharing know-how not covered by
patents.
− Patents in the agreement must be valid.
− Must not be against trade competition law.

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Technology Transfer Agreements (4)
 Key Considerations for IP Protection
● Define the rights to be transferred.
● Determine the method of the transfer, assignment or license?
● Specify consideration: equity, up-front payments, royalties, or a mixture of all three.
● Scope of rights or licenses granted and purposes of IP use
● Parties to be responsible for registration, approval, prosecution and enforcement of
the transferred rights
● Parties to own modifications or derivatives of IP (if any).

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Assignment of IPRs in Thailand
 Assignment of a registered patent must be registered with the Patent Office.
 Assignment of a registered trademark must be registered with the Trademark Office.
 Assignment can be made with or without consideration.
 Assignment agreement to be registered must be notarized and translated into the Thai
language.
 Assignment of a copyright and a trade secret is not required to be registered.

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License of IPRs in Thailand (1)
 License of a registered patent must be registered with the Patent Office.
 License of a registered trademark must be registered with the Trademark Office.
 Terms of license agreement must not be unfair (as prescribed in the Unfair Contract
Terms Act) or anticompetitive (as prescribed in the Trade Competition Act).
 No minimum or maximum royalty fee rates.

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License of IPRs in Thailand (2)
 Sublicensing is not allowed unless agreed in the agreement.
 License is non-exclusive unless agreed otherwise in the agreement.
 Licensed trademark under a license agreement not registered with the TMO is
vulnerable to cancellation for non-use.
 If the registration of licensed IPR expires or is cancelled, its licensing ceases to have
effect.
 A license of copyright license or a trade secret can be made without registration with any
government office.

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IP and Cross-Border Mergers and Acquisitions in Thailand (1)
 Value of M&A transactions in Thailand in 2017 was US$6.4 billion.
 Thai companies have acquired more businesses abroad in past 10 years.
 Patents, trade secrets, trademarks and copyrights form an important part of sale prices in M&A
transactions of Thai companies in automobile, food and beverages and hospitality service industries.
 IP due diligence is essential when acquiring a Thai company.
 If M&A transaction results in an owner name change or a transfer (assignment) of patents or trademarks,
such name change or transfer must be recorded with the Patent Office or Trademark Office.

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IP and Cross-Border Mergers and Acquisitions in Thailand (2)
 Patents and trademarks are registered with the Patent Office and the Trademark Office.
 Thailand is a member state of the PCT and the Madrid Protocol.
 Thailand has the IP&IT Court and the Specialized Court of Appeals.
 IP due diligence is crucial for M&A in Thailand.
 Recommended three primary areas of IP due diligence:-
Ownership,
status and
control
Strength and
economic
value
Potential
liability for
infringement

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IP and Cross-Border Mergers and Acquisitions in Thailand (3)
 Major issues normally investigated in IP due diligence
● Chain of IP ownership from the beginning of the IP to the target company.
● Unidentified co-inventors who have not explicitly assigned their rights to the target company.
● If the IP was co-developed and/or funded, whether or not the development partner and/or
research sponsor have an ownership interest in the IP.
● Any litigation or threat of litigation by or against the target company in relation to IPR.
 Proview International Holdings Co., Ltd. vs. Apple Inc.
● Apple Inc. had to pay US$60 million to Proview International Holdings Co., Ltd.
● To end legal dispute over the iPad trademark in China.
● Apple Inc. did not do a complete IP due diligence when it acquired “iPad” trademark globally from
Proview Electronics (Taiwan) Co., Ltd. through IP Application Development Co., Ltd.

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