Introduction

The World Intellectual Property Organisation (WIPO) defines a patent as “an exclusive right granted for an invention which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem”. For Patent related matters Thailand is bounded by treaties such as Paris Convention for the Protection of Industrial Property (1883), Patent Cooperation Treaty (PCT) (1970) and Trade Related Aspects of Intellectual Property Rights Agreement (1995) under World Intellectual Property Organization (WIPO) and World Trade Organisation (WTO).

The Patent Act BE 2522 (1979) is the primary legal source regarding patents. The Patent Act BE 2535 (1992) and the Patent Act BE 2542 (1999) have amended it twice. The Patent Act lays out the framework for patent protection, including registration and prosecution procedures, licences and renewals, cancellation, compulsory licences, enforcement, and remedies. The Patent Act encompasses not only invention patents, but also petty patents (known as utility models in other jurisdictions) and design patents.

Consideration Criteria

To be registered as a patent in Thailand, an invention must satisfy the following three general substantive requirements (Sections 5 to 8 of the Patent Act B.E. 2522).

1. The Invention must be new (novelty) i.e., not a part of the State of Art.

2. The Invention must be industrially applicable i.e., made or used in any industry.

3. The Invention must be industrially applicable.

4. The following inventions shall not be protected by the Patent Act.

a. Natural microorganisms and any components of microorganisms, plants, animals or extracts from plants or animals;

b. Scientific and mathematical principles and theories;

c. Data system for an operation of a computer (computer programs);

d. Method of diagnosis, treatment or cure of human diseases or animal diseases;

e. Inventions contrary to public order, morality, health or welfare;

Registration Process for Patent

1. Drafting, translating and filing the application (1 week): In order to initiate the registration process for a patent or petty patent in Thailand, the applicant or their representative is required to submit an application to the Department of Intellectual Property (DIP). This application must be accompanied by an office or address located inside Thailand. Alternatively, applicants may utilise the DIP's online filing platform for submission. The payment of an official application fee is required at the filing date. The submission of the Thai translation of the abstract and claims should be made on the date of filing. The remaining portion of the translation, along with the requisite legal papers such as the power of attorney, deed of assignment, and simple signed declaration of the applicant's right (if applicable), can be presented within a period of 90 days starting from the date of application filing.

2. Formal Examination (18 months): After the submission of the application, the Thai Patent Office will proceed with the preliminary examination or formality check of the application. This practise will guarantee the accurate filing of all paperwork and ascertain that the innovation, for which a patent is being pursued, is within the purview of the Patent Act. In the event of any formal matter, the registrar will initiate an office action, therefore requesting the applicant to make necessary amendments to the application within a period of 90 days.

3. Publication (90 days): In the event that the application adheres to the Thai Patent Regulations, the applicant will be required to remit the publishing fee within a period of 60 days subsequent to the receipt of the appropriate notification. In the event that the applicant does not remit the publishing charge within the initial 60-day period, a subsequent and final notification will be given, affording the applicant an additional 60-day window to complete the payment transaction. After the payment of the publication fee, the application is thereafter published in the Thai Patent Gazette. Opposition to the application may be initiated by third parties during a period of 90 days after the date of publication.

4. Substantive Examination (2 to 4 years): Upon the publishing of the application, it is incumbent upon the applicant to submit the request for substantive examination within a period of 5 years from the date of publication. In order to expedite the substantive examination procedure, it is recommended to furnish a duplicate of the foreign search report that has been issued in the jurisdiction where the examination is being conducted. If the examiner is required to independently perform the search, the duration of the examination will be extended.

5. Grant (1 month): Once all required revisions have been completed and the substantive examination is deemed sufficient, the applicant will be issued a notification to remit the fee for the granting of the patent within a period of 60 days from the date of receipt of said notification. Upon payment of the price, the patent will be issued within a period of 15 days.

Cost of Registration

The overall registration cost is subject to variation due to the imposition of service costs by local patent agents and the translation expenses.

The current official fees applicable under the Patent Act, from filing to grant, are:

• Official fees for invention patents: THB 1500 per application from filing to registration.

• Official fees for design patents: THB 1000 per application per design from filing to registration.

• Official fees for petty patents: THB 750 per application from filing to registration

Enforcement

Preventive Measures:

1. Preliminary Injunction: In the case that the proprietor of a patent or petty patent is able to provide compelling proof that an individual is engaging in or is on the verge of engaging in a conduct that violates their rights, they have the option to request the Court to grant a preliminary injunction with the purpose of halting or preventing the infringement. Nevertheless, Thai courts seldom approve such injunctions.

2. Anton Piller Order: In an alternative approach, the patent or petty patent owner may seek an Anton Piller order from the Court in order to obtain evidence of infringement. This request can only be made if it can be shown that it is crucial to prevent the destruction of evidence once the alleged infringer becomes aware of the legal proceedings.

Civil Proceedings:

The filing of an infringement action is permissible during a period of one year from the date on which the claimant becomes aware of the infringement. However, it is important to note that the action cannot be initiated beyond a period of ten years from the actual date of infringement. The petitioner is required to furnish substantiating evidence of infringement and establish their ownership of a legally valid patent or petty patent.

The court has the authority to provide monetary compensation to the holder of a patent or petty patent. The specific amount of damages granted will be determined by the extent of financial harm caused by the infringement, as well as the costs incurred by the patent or petty patent owner in enforcing their rights via legal proceedings.

Criminal Proceedings:

The owner of a legitimate patent or petty patent may initiate criminal actions concurrently with civil procedures. The court will evaluate the presented evidence of infringement, along with the demonstration of the alleged infringer's intent to conduct the infringement.

According to the provisions of the Patent Act, the violation of patent rights may result in penalties including a maximum jail term of 2 years and/or a fine not exceeding 400,000THB. In cases of minor violation of patent rights, the aforementioned penalties are reduced by half, resulting in a potential sentence of one year of imprisonment and/or a fine of 200,000THB.

Alternative Dispute Resolution:

The DIP has established a mediation method to facilitate the amicable resolution of intellectual property disputes while minimising expenses for the involved parties.

Furthermore, parties have the option to elect arbitration as a means of dispute resolution. Thailand is home to two prominent entities that offer arbitration and mediation services. The Thai Arbitration Institute (TAI), established in 1990, and the Thailand Arbitration Centre (THAC), established in 2015 under the 2007 Act of Arbitration Centre, serve as the primary providers of such services in the country.

Author : Harjas Singh, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References:

Department of Intellectual Property, Thailand, Overview of the Patent System and Procedure in Thailand, WIPO, 2018 https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cnx_17/wipo_ip_cnx_17_1.pdf

Frank Fougere, Thailand: Patents Comparative Guide, Mondaq (Aug 04, 2023, 3:28 PM), https://www.mondaq.com/intellectual-property/972904/patents-comparative-guide

Department of Intellectual Property, Thailand https://www.ipthailand.go.th/en/patent-002/item/%E0%B8%81%E0%B8%B2%E0%B8%A3%E0%B8%88%E0%B8%94%E0%B8%97%E0%B8%B0%E0%B9%80%E0%B8%9A%E0%B8%B5%E0%B8%A2%E0%B8%99%E0%B8%AA%E0%B8%B4%E0%B8%97%E0%B8%98%E0%B8%B4%E0%B8%9A%E0%B8%B1%E0%B8%95%E0%B8%A3%E0%B8%81%E0%B8%B2%E0%B8%A3%E0%B8%9B%E0%B8%A3%E0%B8%B0%E0%B8%94%E0%B8%B4%E0%B8%A9%E0%B8%90%E0%B9%8C.html (Aug 04, 2023, 3:28 PM)