IP Practice In Thailand

The patent right is granted in Thailand as per the Patent Act, 1979 (also known as Patent Act B.E. 2522, 1979), which was further amended in 1999. The Thai Patent Act provides for three types of patents – Invention patents, petty patents, and design patents.

Relevant Office

Department of Intellectual Property, Nonthaburi, Thailand

Law in Force Patent Act B.E. 2522 (1979)
PCT Contracting State YES
Paris Convention YES
Documents Required for filing a patent application For patents and petty patents the following information and documentation must be submitted:

  1. specifications of the invention or process
  2. claims
  3. 3-dimensional drawing of patent or petty patent and view in three dimensions
  4. abstract

For design patents the following information and documentation must be submitted:

  1. Description of product design
  2. claims
  3. 3-dimensional drawing of the product design patent

In the case of the original inventor, the Statement of Applicant’s Rights must be submitted. In case the applicant is not the inventor but the assignee, the relevant assignment document must be submitted along.

Prosecution Process 1. Paris Convention filing: 12 months from earliest claimed priority PCT
National Phase Entry: 30 months from earliest claimed property
2. Formality Examination: before publication, 90+ 30 days
3. Opposition: within 90 days of the date of publication
4. Request for substantive examination: within 60 months from publication in Thailand
5. Divisional application: 120 days after the receipt date of an office action ordering same.
6. Acceptance: Post-completion of all above compliances/payment of grant fees.
7. Renewal: Every year after the 4th anniversary of the grant, within 60 days following commencement of each year.
Registration Term Patent for Invention: 20 Years (non- renewable)
Petty Patent: 10 years (non- renewable)
Design Patent: 10 years (non- renewable)

Who can apply for a Patent Application?

As per Sections 10, 11, and 15, the following can apply for a patent in Thailand:

  • The inventor(s) of the invention;
  • The assignee/transferee of a person claiming to be the inventor, by succession;
  • Any inventor, having executed the invention, through an employment contract, specifying a provision the same therein.

By way of Section 14, an applicant a patent must qualify as one of the following:

  • Be a Thai national or a juristic person, having their headquarters located in Thailand;
  • Be a national country, which is a party to a convention or international agreement on patent protection, to which Thailand is also a party;
  • Be a national of a country that allows Thai nationals or juristic persons having their headquarters to apply for patents in that country;
  • Be domiciled or have a real and effective industrial or commercial establishment in Thailand or a country party to a convention or an international agreement on patent protection to which Thailand is also a party.

Types of Patent Applications

Under the Patent Act 1979 (as amended in 1999), three types of a patent can be protected in Thailand:

Patent Invention New product or process, improvement example in the following fields: machinery, tools, chemicals, biotechnology, etc.
Petty Patent A new invention would qualify an invention patent except that it has no strong, technical innovative step.
Design Patent Ornamental aspects or aesthetics of an article including features pertaining to the shape, configuration, or pattern.

Invention patents

An invention patent must fulfill the patentability requirements under Section 5 of the Patent Act, and invention patents enjoy a protection period of 20 years. To be patentable, an invention must:

  • be new;
  • involve an inventive step; and
  • be capable of industrial application.

Petty Patents and Design Patents

Unlike Invention patents, Petty Patent & Design Patent don’t require “nonobviousness” as a criterion and they get a protection period of 10 years as opposed to Invention Patents. Petty patents can otherwise qualify for an invention but lack a strong, technical innovative step and hence, a reduced term of protection. Design patents, on the other hand, are granted to only ornamental aspects or aesthetics of an article including features pertaining to shape, configuration, or pattern.

Patent Application Filings

Applicant can be the inventor or his/her legal successor or assignee (individual, legal entity), or the joint inventors.

The following may apply and obtain a patent of invention in Thailand:
• nationals of Thailand and legal entities established in Thailand;
• nationals of a country being a member of an international Convention or Treaty patent protection to which Thailand is a party;
• nationals of a country allowing nationals of Thailand and legal entities established in Thailand to apply for a patent in that country; and
• persons having a domicile or a real and effective industrial or commercial establishment in Thailand or in a country being a member of an international Convention or Treaty patent protection to which Thailand is a party.

How to file a patent application in Thailand?

Patents and petty patents the following information and documentation must be submitted:
1. specifications of the invention or process
2. claims
3. 3-dimensional drawing of patent or petty patent and view in three dimensions
4. abstract

For design patents the following information and documentation must be submitted:
1. Description of product design
2. claims
3. 3-dimensional drawing of the product design patent

In the case of the original inventor, the Statement of Applicant’s Rights must be submitted. In case the applicant is not the inventor but the assignee, the relevant assignment document must be submitted along.
Language:
If in the case the document is submitted in a foreign language, the applicant must accompany it to its translation in Thai.

Patent Prosecution

Step 1- Patent application filing in Thailand

The proprietor of a patent, petty patent, or product design patent shall file the patent application for registration with the Patent Examiner at the Thai Department of Intellectual Property (DIP) in Thailand.
To apply for a patent, the applicant shall submit supporting documents as follows;
1. Application form 001-Kor
2. Invention details described completely, concisely, and clearly, The details shall cover the following:

  • The title of the Invention Technical Field
  • Background of the invention
  • Nature and purposes of the invention
  • Disclosure of the invention details containing a complete, concise and clear statement which will enable a person having ordinary skill in the art or other related technologies to make and carry out the invention
  • Brief description of drawing (if any)
  • The best mode for carrying out the invention

3. Claim
4. Drawing (if any)
5. Abstract
6. Supporocuments as defined in item 14 of Form 001-Kor such as:

  • Statement of applicant’s right to apply for a patent/petty patent or deed of assignment
  • Certification of disclosure/displaying of a substantial part of invention at an international exhibition or an official exhibition within twelve months before the filing of the patent application
  • The power of attorney
  • Disclosure of microorganism deposit
  • Request to convert the protection category from patent to petty patent or vice versa
  • Others

Step 2: Formality Examination in Thailand

Post the filing of documents and the requisite form, the applications must first be examined, by way of Formality Examination, to ensure compliance with a number of formality requirements, including the required documents required to fulfill the same. This is to be fulfilled within 90 days of filing the application. A further 90 day + 30-day extension may be requested, post which the application will be considered abandoned. The application can be rejected due to the non-compliance of formal requirements or non- patentability of the invention.
Once the formalities examination has been completed, the patent application shall be published upon payment of the requisite fee, as per Section 28.

Step 3: Opposition

Within 90 days from the date of publication, any interested party may file an opposition to the application so published. Further, the applicant must file a counterstatement to the notice of opposition within 90 days of receipt of the notice, as per Section 31 of the Act.

Step 4: Substantive Examination

As per Section 29, the applicant must request substantive examination, within 60 months of the date of publication of the patent. If the patent application was subject to opposition proceedings and if the opposition was rejected, then the applicant must request substantive examination within one year of the final decision by the Director-General of the Patent Office. Failure to observe the prescribed time limit and payment of appropriate costs will result in the abandonment of the application. This process is to ascertain the requirement of novelty, inventive step, and applicability in the industry, of the invention.
An applicant has 90 days to respond to official actions sent by the Patent Office. A further 90-day extension and a final 30-day extension may be requested if required.
Divisional Application: An application may relate only to one invention or to a group of inventions so linked as to form a single inventive concept. If during examination it is found that the requirement of unity of invention is not met, the applicant will be notified and required to file divisional applications. Thailand does not provide for the voluntary filing of divisional applications. It may only be filed in response to a unity of invention object. In that case, the applicant is granted 120 days, from the date of the objection, to file the divisional application.

Step 5: Acceptance and Grant

If the patent application is found in compliance with all the formality requirements, does not hold any valid oppositions, and passes the substantive examination, the Director-General of the Patent Officer shall order a patent to be registered and granted. The applicant will then be invited to pay the granting fee within sixty days, failing which the application will be considered abandoned. When the granting fee has been duly paid, the patent shall be registered and shall be granted to the applicant within fifteen days from payment of the granting fee, but not before the expiration of the sixty-day period for lodging an appeal.

Patent Opposition

Under Section 31 of the Act, for any patent application not complying with the requirements of a patent, laid down in Sections 5, 9, 10, 11, or 14 of the Act, the opposition application can be filed within 90 days of the publication, with the concerned authority, supported by proper evidence.

A copy of the same shall be provided to the applicant, who shall file a counter-statement within 90 days, failure to which the application shall be considered abandoned.
The grounds for opposition are as follows:
i. the opposing party has a better right;
ii. the invention does not meet the patentability requirements;
iii. the invention is a subject matter that is explicitly prohibited from patent protection;
iv. the applicant is not entitled to apply for a patent; and
v. the applicant is not eligible to file an application, such as an employee who develops an invention in the course of his/her employment.

Design Patent In Thailand

Bangkok, ThailandDesign rights are the exclusive rights granted temporarily, to the creator, for a form of creation, involving a mix of colors and lines, giving a distinct appearance to a product, good, or handicraft. Registration of design rights may be obtained to ensure protection to the distinctive characteristic of the product, be it its design, shape, color, pattern, creation, configuration, ornament, or embellishment so applied to it, by an industrial process or otherwise.

In Thailand, the design rights, are granted under the Design Patents, based on a ‘novel’ characteristic, which have not been in use, knowledge, or resemblance within Thailand or any other country, prior to the filing of the claim. Therefore, for it to qualify for a valid protection license under Thailand, the proposed design must comply with:

The presence of novelty, which does not conform to the State of the Art, as:

  1. an invention which was widely known or used by others in the country before the date of application for the patent;
  2. an invention the subject matter of which was described in a document or printed publication disclosed to the public in Thailand or in a foreign country before the date of application for the patent (for example in a scientific magazine or thesis);
  3. an invention for which a patent was granted in Thailand or overseas;
  4. an invention for which a patent was applied in a foreign country more than eighteen months before the date of application for the patent;
  5. an invention for which a patent was applied in this or a foreign country and the application was published before the date of the application.

The design in question must be capable of industrial application, not merely academic or theoretical.

As per the covenants of the Paris Convention, the right of the priority application is also valid within Thailand, allowing the applicants to file for a design patent within Thailand, retrospectively on the same date, like that of filing in any other country which is also a signatory to the Paris Convention or otherwise (subject to appropriate approvals).

Relevant Office Department of Intellectual Property, Nonthaburi, Thailand
Law in Force Patent Act B.E. 2522 (1979)
PCT Contracting State YES
Paris Convention YES
Documents Required for filing a patent application For design patents the following information and documentation must be submitted:

g. Description of product design
h. claims
i. 3-dimensional drawing of the product design patent

In the case of the original inventor, the Statement of Applicant’s Rights must be submitted. In case the applicant is not the inventor but the assignee, the relevant assignment document must be submitted along with.

Prosecution Process 1. Filing
2. Formality Examination: before publication, 90+ 30 days
3. Opposition: within 90 days of the date of publication
4. Request for substantive examination: within 60 months from publication in Thailand
5. Divisional application: 120 days after the receipt date of an office action ordering same.
6. Acceptance: Post completion of all above compliance/payment of grant fees.
Registration Term Design Patent: 10 years (non- renewable)

Process of Registration

Based on the 'first-to-file' system, the Thailand legal system provides priority to those applications for a disputing design, which have been filed before the others, and the corresponding protection, if provided, is from the date of filing in Thailand (or from the date of filing in any other country, in case of the priority application).

What are the documents required for filing an application for a Design Patent?

To file an application for a design patent, the following data has to be submitted:
i. Claims;
ii. Drawings;
iii. Power of Attorney;
iv. Deed of Assignment;
v. First filing date and serial number;
vi. Name and address of the applicant;
vii. Name and address of the designer;
viii. Information whether the color shall be claimed;
ix. Priority document if based on prior foreign application (to be submitted within 16 months from the first filing date).

Further, the following documents must be submitted on the date of filing or within 90 days from the date of filing:
i. Deed of Assignment (if the applicant is not the designer);
ii. Statement of Applicant’s Rights (if the applicant is the designer);
iii. Power of Attorney.
Language:

All application documents must be done in the Thai language. However, if all the documents submitted are in a foreign language, then the documents must be supported with a verified Thai translation, for each.

Who can apply for a Design Patent in Thailand?

Any individual or corporation, who is an actual designer or an assignee of a right holder, can file an application. Applicants need to retain an agent qualified before the Thai DIP if they do not have a domicile/head office in Thailand or have real business operations in Thailand. It is recommended to hire a local IP agent.

What are the steps for filing a design patent in Thailand?

Following are the steps for filing a patent application in Thailand:
1. Filing:
2. Formality Examination: before publication, 90+ 30 days
3. Opposition: within 90 days of the date of publication
4. Request for substantive examination: within 60 months from publication in Thailand
5. Divisional application: 120 days after the receipt date of an office action ordering same.
6. Acceptance: Post completion of all above compliance/payment of grant fees.
The process and requirements for a design patent are similar to those enumerated above.

Duration of Design Patents

In Thailand, the legal protection under a design license is accorded for a duration of 10 years, from the filing date.