IP Practice In Thailand

Patent in Thailanad

What Is A Patent 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.

Who Can Apply For A Patent In Thailand?

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

(i) The inventor(s) of the invention;
(ii) The assignee/transferee of a person claiming to be the inventor, by succession;
(iii) 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:
(i) Be a Thai national or a juristic person, having their headquarters located in Thailand;
(ii) Be a national of country, which is party to a convention or international agreement on patent protection, to which Thailand is also a party;
(iii) Be a national of a country which allows Thai nationals or juristic persons having their headquarters to apply patents in that country;
(iv) 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.

What Is Patentable In Thailand?

Under Section 3(c), “invention’ means any innovation or invention which creates a new product or process, or any improvement of a known product or process.

Further, the three patent types available in Thailand are:

Patent InventionNew product or process, improvement example in the following fields: machinery, tools, chemicals, biotechnology, etc.
Petty PatentNew invention which would qualify an invention patent except that it has no strong, technical innovative step.
Design PatentOrnamental aspects or aesthetics of an article including features pertaining to the shape, configuration or pattern.
Relevant OfficeDepartment of Intellectual Property, Nonthaburi, Thailand
Law in ForcePatent Act B.E. 2522 (1979)
PCT Contracting StateYES
Paris ConventionYES
Documents Required for filing patent applicationFor 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 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 Process1.      Filing:

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 receipt date of an office action ordering same.
6.      Acceptance: Post completion of all above complainces/payment of grant fees.
7.      Renewal: Every year after the 4th anniversary of grant, within 60 days following commencement of each year.

Registration TermPatent for Invention: 20 Years (non- renewable)
Petty Patent: 10 years (non- renewable)
Design Patent: 10 years (non- renewable)
Type Of Patent Application

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

(i) The inventor(s) of the invention;
(ii) The assignee/transferee of a person claiming to be the inventor, by succession;
(iii) 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:

(i) Be a Thai national or a juristic person, having their headquarters located in Thailand;
(ii) Be a national of country, which is party to a convention or international agreement on patent protection, to which Thailand is also a party;
(iii) Be a national of a country which allows Thai nationals or juristic persons having their headquarters to apply patents in that country;
(iv) 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.

Patent Application Filings

Who can file the patent application in Thailand?
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 a patent in that country; and
• persons having 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 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 its translation in Thai.

Patent Prosecution

What is the procedure of patent grant in Thailand?
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 followings;
• 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)
• 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 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 requisite documents required to fulfil 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. 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 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 abandonment of 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 voluntary filing of divisional application. It may only be filed in response to a unity of invention object. In that case, the applicant is granted with 120 days, from the date of the objection, to file the divisional application.

Step 4: 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

When can a pre- grant opposition be filed in Thailand? How to file a pre- grant opposition in Thailand?
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
Design Patent In Thailand?

Design rights are the exclusive rights granted temporarily, to the creator, for a form or creation, involving a mix of colours and lines, giving a distinct appearance to a product, good or handicraft. A registration of design rights may be obtained to ensure protection to the distinctive characteristic of the product, be it its design, shape, colour, 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 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:
i. an invention which was widely known or used by others in the country before the date of application for the patent;
ii. 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);
iii. an invention for which a patent was granted in Thailand or overseas;
iv. an invention for which a patent was applied in a foreign country more than eighteen months before the date of application for the patent;
v. 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 priority application is also valid within Thailand, allowing the applicants to file for a design patent within Thailand, retrospectively on the same date, as that of filing in any other country which is also a signatory to the Paris Convention or otherwise (subject to appropriate approvals).

Relevant OfficeDepartment of Intellectual Property, Nonthaburi, Thailand
Law in ForcePatent Act B.E. 2522 (1979)
PCT Contracting StateYES
Paris ConventionYES
Documents Required for filing patent applicationFor 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 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 Process1. 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 receipt date of an office action ordering same.
6. Acceptance: Post completion of all above compliance/payment of grant fees.
Registration TermDesign Patent: 10 years (non- renewable)
Duration of Design Patents

How long does the legal protection last?
In Thailand, the legal protection under a design license is accorder for a duration of 10 years, from the filing date.

Process of Registration

How do I register for a Design Patent?
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 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 colour shall be claimed;ix. Priority document if based on prior foreign application (to be submitted within 16 months from 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 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 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.


Trademarks In Thailand
Trademarks In Thailand

A trademark is a distinct mark, accorded to goods and/or services, as an indicator of a proprietorship, business or individual, in order to establish identification of the same and create a difference between other goods and/or services of the same kind, from other competing entities/businesses.
Trademarks in Thailand may be designated by the following symbols:
™ (for an unregistered trademark, but for which application has been filed)
℠ (for an unregistered service mark, but for which application has been filed)
® (for a registered trademark)

A trademark can be a sketch, picture, brand name, word, text, letter, numeral, signature, group of colours, shape, figurative element, a three- dimensional representation or a combination of any of the above, in a creative expression. Further, in a slightly more complicated sense, trademarks may also include distinction created on the basis of colour, smell or sound, specific to a brand.

On an unsolicited use of a registered trademark, the owner of the same may institute legal proceedings against the infringer, to prevent any further unauthorised use of the trademark. However, for the suit to be instituted or to be successful, the registration of the trademark is not mandatory, albeit preferred. In Thailand, a trademark infringement suit may be instituted against an infringer only on the basis of a mark being well known within the geographical territory of Thailand, and among the general consumer base.

Apart from the external expression grounds mentioned above, which are commonly the instituting basis for trademark applications, there are other identifying features or characteristics, which can be registered as distinct mark, which specifically related to service imparting.

Relevant OfficeDepartment of Intellectual Property, Nonthaburi, Thailand
Law in ForceThe Trademarks Act, B.E. 2534 (1991)
Nice ClassificationYes (10th Edition)
Paris ConventionYes
Madrid SystemYes
Multi- Class SystemYes
Documents required for filing a trademark application• Full name, address, country and activity/occupation of the applicant
• Electronic sample of the mark (5×5 cm recommended size)
• List of goods and services to be protected
• Notarized Power of Attorney (for foreign applicants)
• Thai Power of Attorney and copy of Thai corporate certificate or ID card (for Thai applicants only)
• Translation of priority documents (if priority is claimed)
Prosecution Process1. Filing of trademark application and required documents
2.Examination by Trademark Registrar (6 to 9 months)
3.Objection filing (response to be filed within 90 days)
4.Acceptance for publication
5.Publication of application in Trademark Gazette (opposition period of 90 days)
6.Transmission of Certificate of Registration.
Renewal TermMust be executed within 90 days before the expiration of 10- year period.
Trademark Searches

Although not mandatory, trademark searches are highly recommended in Thailand, since the approval of the application warrants a time period of about 12 to 18 months. These searches help in the ascertainment of likely objections that might arise during the examination of a validity of application and can be helpful in detecting trademark squatters. There are several types of availability searches, which can be conducted, including:
i. Identical searches;
ii. Similar searches (including phonetic transcription of marks in Thai language); and
iii. Device or logo searches

During the determination of availability of a particular trademark, it is imperative to assess the class of products and/or services which are associated with the class of products and/or services, for which the trademark is sought. This ensures avoiding the institution of any trademark which can be relatively similar to any such mark, already existing and flourishing within the market, and to avoid any legal repercussions stemming therefrom.

However, there is no official search activity under the Department of Intellectual Property website, the applicant can undertake a search in personal capacity, pertaining to word and graphic mark, over the DIP database. For any related search for trade name, the search can be performed at the Ministry of Commerce or via its website at www.dbd.go.th.

Trademark Applications

Trademark application in Thailand can be filed in two categories:
• Ordinary Applications
• Convention Application (claiming priority from a convention country)

Ordinary Trademark Applications
These applications are filed in Thailand, without claiming any priority, through Application Form Kor- 1. Additionally, Multi-class trademark applications cannot be instituted in Thailand. However, Trademark applications based on priority claim can be filed, in Thailand, based on an application of trademark filed in a foreign country, or a convention country.

Convention Trademark Applications
Since Thailand is a member of World Trade Organisation and is a signatory to the Paris Convention, it allows an applicant to claim trademark priority date, based on an application filed in another WTO or Paris Convention signatory country. For this, however, a CTC of the Priority Application must be filed within 90 days of filing the application. If in case the CTC is in any other language than English, a verified English translation copy must be provided for the same. For an applicant belonging to a country which is not a part of the WTO or not a signatory to the Paris Convention, an official notification from the Chief of Foreign Trademark Office validating the act, by the same power of Reciprocal Agreement, must be filed, along with other necessary documents.

Trademark Classes

On March 1, 2013, Thailand adopted into its system of  trademark registration the Tenth Edition of the Nice Agreement, under which there are 34 classifications of goods (Classes 1 to 34) and 11 classifications of services (Classes 35 to 45). The classifications—collectively known as the International Classification of Goods and Services—are generally followed by Thailand’s trademark registrars, but at times, they require clearer and more specific descriptions for certain goods and services.

Trademark Filing

An application for registration of the trademark is to be filed with the Department of Intellectual Property, Nonthaburi, Thailand in the prescribed form with payment of requisite fees. Additionally, it can also be filed by registered mail, with payment of fee by money order, in favour of DIP. Further, an application can also be filed online at www.ipthailand.go.th and thereafter a hard copy of the Application form must be submitted to the DIP within 15 days of the online filing

Requirements for Filing a Trademark Application in Thailand:
Who can file a Trademark Application in Thailand?
In Thailand, any legal or natural person, regardless of their nationality may apply for the registration of trademark, in furtherance of a need for availing trademark protection. Further, any foreign applicants that have filed a trademark application in another country and later file a registration application for the same trademark in Thailand within six months of the first foreign application may generally claim the first foreign filing date as the filing date in Thailand (ie, a priority right).

On filing the application with the DIP, with all the requisite documents, the trademark application will be given an application number and will be examined by the Registrar. Following the submission of the complete application, along with the prescribed fees, the Trademark Registrar will institute examination for verification of the fulfilment of the requirements of the Application under the Trademark Act. The examination process is sought to be completed, usually, within 9 months of filing.

Post the completion of examination period, the publication of the application is done in the Trademark Gazette, following which a 90 day period is granted to invite any opposition to the trademark application. If such an opposition is filed, the applicant is offered a 90- day period to file counterstatement. On receipt of both, the Registrar shall then deliberate over the validity of both claims. After the period of 90 days is completed, the official fees of registration must be submitted within 30 days, which warrants registration.

Duration of registration
Once a trademark has been registered in Thailand, it is protected by the provisions for 10 years from the date of filing or date of filing of priority application. It can further be renewed over successive periods of 10 years.

Trademark Prosecution

The procedure for filing a Trademark in Thailand is as follows:

1. Filing a trademark:
A trademark application can be filed for a single class only. Multi class applications are not permitted in Thailand. Also, Thailand allows ordinary applications or priority applications previously filed in foreign countries, within 90 days of the filing.

2. Examination/Issuance of Office Action:
After a trademark has been filed, it is examined by the Registrar on the basis of distinctiveness, identification features, similarity index, public morality, or any other compliance with law.
If in case, the Registrar notes any non- compliance with the above criteria, they may issue one or several office actions, thus, refusing the application on any given ground.
However, the applicant may file an appeal before the Trademark Board, and further, to the Intellectual Property Court, against any of the decisions.

3. Publication:
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark.

4. Opposition:
Post the completion of examination period, the publication of the application is done in the Trademark Gazette, following which a 90 day period is granted to invite any opposition to the trademark application. If such an opposition is filed, the applicant is offered a 90- day period to file counterstatement. On receipt of both, the Registrar shall then deliberate over the validity of both claims. If not accepted, an appeal can be filed with the Trademark Board within 90 days of the receipt of the Registrar’s decision.

5. Registration:
After the completion of the 90 day period and the opposition opportunity, the applicant, on submission of the official fee within 30 days, shall be awarded with the registered trade mark.

Trademark Rectification/Cancellation

The Trademark Act provides for two distinct cancellation procedures, post acceptance of registration, where, one is before the Trademark Board and the other, before the Intellectual Property Court. This must be done within 5 years of the registration of the Trademark by the Registrar and by showing that the trademark had become common to the trade in the market. For the cancellation to take place, any interested party may file an appeal to the Trademark Board on the following grounds, as it appears that the trademark:
• was not distinctive, or
• contained or consisted of a prohibitory characteristics, or
• was identical with a trademark registered by another person for goods of the same class or of different class with the same character, or
• was so similar to a trademark registered by another person that the public might be confused or misled as to the owner or origin of the goods in the same class, or goods of different class with the same character in its trademark, or
• the trademark was not used, or
• the trademark is contrary to the public order, good morality or public policy.

Trademarks Prohibited by Law

Further ahead, some marks are explicitly prohibited by law under the Trademark Act and Ministerial Regulations, including:
• any mark which is contrary to public order, morality or public policy
• marks registered or not, which are identical with well-known marks as prescribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods
• geographical indications protected under the law on geographical indications
• state arms or crests, royal seals, official seals, Chakri emblems, emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments or provinces
• national flags of Thailand, royal standard flags or official flags, national emblems and flags of foreign states or international organizations
• royal names, royal monograms, abbreviations of royal names or royal monograms, representations of the King, Queen or Heir to the Throne, names, words, terms or emblems signifying the King, Queen or Heir to the Throne or members of the royal family
• marks identical with or similar to a medal, diploma or certificate or any other mark awarded at a trade exhibition or competition held by the Thai government or a Thai government agency for public enterprise or any other government organ of Thailand, a foreign government or international organization unless such medal, diploma, certificate or mark has been actually awarded to the applicant for goods and is used in combination with the trademark
• other trademarks prescribed by the Ministerial Notifications.

Trademark Filing Fee

As per the compliances of the DIP, there are two types of official fee which are to be paid, during the process of application of a trademark:
1. The first official fee is due on filing of the application, depending on the number of products or services per class, for which an application is filed.
2. The second official fee which is due on acceptance of the mark for registration, per product/service.

Trademark Renewal

A registered mark is provided protection in Thailand for 10 years from its filing date (and from the priority application’s filing date) and can be further renewed for successive 10-year periods.
A registered trademark must be renewed 3 months BEFORE the expiration of the 10-year period or during a 6-month grace period AFTER the expiry fate. Any subsequent failure in renewal of registration will result in loss of trademark protection.