Public Hearing Opened: New Proposed Amendment to Thailand’s Patent Act

By Daniel Greif, Fon Suwannachote & Attamongkol Tantratian

Schmitt & Orlov

From September 30, 2020 to October 31, 2020, the Thai Department of Intellectual Property (“DIP”) is having a public hearing on the draft amendment of the Patent Act B.E. 2522 (1979) (“the Patent Act”).  

The proposed amendment was drafted to improve Thailand’s examination system for patents and petty patents, by making the Patent Office processes more efficient.  Also, the amendment is designed to facilitate protection for patents and petty patents.

Although amendments were made to the Patent Act in 1992 and 1999, the Patent Act still contains provisions creating slow and ineffective processes.  Thus, the current Patent Act needs modifications to be consistent with international standards. 

Considering the above points, the DIP is welcoming comments on the proposed amendment from any relevant persons. 

The DIP stated five main purposes of the proposed amendment:

1)    To enhance the efficiency of the patent and petty patent application procedures by increasing the speed of the applicable Patent Office processes, and by having the processes conform to international standards.

2)    To advance Thailand’s competencies, particularly in its Scientific Infrastructure, and to assist Thailand’s economic structural transformation to a Value-Based Economy, to accelerate the development of Thailand patent system in line with international standards, and to support industrial development goals consistent with the Thailand’s 20-Year National Strategy, Master Plan Under the 20-Year National Strategy, National Economic Reform Plans, 12th National Economic and Social Development Plans, and the Thai Government’s policy, Thailand 4.0.

3)    To support Article 31 bis of the TRIPS Agreement so that Thailand is able to export medicines to countries that lack manufacturing capacity and avoid double remuneration in the importation of medicines which have already settled remuneration in the export country. 

4)    To better address the formality of applications for patents and petty patents related to Generic Resources and Traditional Knowledge; and

5)    To support Thailand’s accession to become a member of The Hague Agreement Concerning the International Registration of Industrial Designs under the 1999 Geneva Act to facilitate the convenience of international industrial design registrations.

Below are important details proposed in the draft:

Patents/Petty Patents:

Adjustment on the procedure of patent examination:

·      Instead of a onetime publication prior to the patent grant, patent applications will be published twice. 

o   The 1st publication is within eighteen months from the filing date in the Kingdom. (s.28/1)

o   After completion of Substantive Examination and if it is patentable, the application will be published for 90 days.

·      Adjustment of priority claim indicating that the Applicant may claim priority date for the existing patent under the following conditions [add s. 6/1, cancel 19 bis],

o   The Applicant files application in Thailand within twelve months from the first filing date of application outside Thailand for such invention, 

o   The Applicant specifies first filing date in the international application seeking for protection in Thailand OR they are allowed to revive their first filing date pursuant to section 55/7.

·      Extends protection for patents related to Generic Resource (GR) and Traditional Knowledge (TK). Patent applications related to GR and TK will have to clearly address their source and be submitted with documents concerning the prior informed consent and benefit-sharing agreements. [s.17/1]

·      Office action compliance period can be extended by requesting a ninety-day extension from the last date of first period prescribed. [s.27]

·      The applicant must request the competent officer to proceed with the substantive examination within three years from the filing date in Thailand. [s.29]

This change is deemed as an acceleration for an applicant to request an Examination sooner than the current Act, which specifies the request within five years from the publication date. 

The current formality requirement for patent licensing which needs to be in writing and registered will be modified to require recordal only [s.41/1]. 

·      Adds provisions regarding Compulsory Licensing, specifically for the export of medicines pursuant to the Protocol Amending the TRIPS Agreement [s.51/1].

·      Provisions pursuant to the Patent Cooperation Treaty (PCT) will be principally obtained from the Ministerial Regulations on the Application for Patent Protection to implement the Patent Cooperation Treaty B.E. 2552 (2009) to the Patent Act. [s.55/1-55/9]

·      Instead of one year after the patent publication and petty patent grant, an interested person may request examination, whether an invention of petty patent is new or capable of industrial application within six years from the filing date of petty patent. [s.65]

·      Official fees will be tripled. 

Design patents:

·      Adjustment to the clear definition of “Designs”.  Extends protection to related designs and adds the definition of Principal Designs. [s.3]

·      Adjustment of priority claim for design indicating that the Applicant may claim a priority date for the existing design patent under the following conditions [add s. 57/1, cancel 60 bis],

o   The Applicant files design patent application in Thailand within six months from the first filing date of application outside Thailand or the first filing date of an international application pursuant to Chapter 3/1 of this Act

o   The Applicant specifies a first filing date in an international application seeking for design patent protection in Thailand.

·      The term of design protection is five years and renewable for two five-year periods. Hence, the total protection term will be extended from ten years to fifteen years [s.62]. 

·      Preparation for deposits of instruments once Thailand accedes to the Hague System for the International Registration of Industrial Designs, which will be adopted by the Patent Act [s.65/1-65/11]

When Thailand’s accession is completed, this international procedure will simplify and create a cost-effective manner for Design applicants.

The final draft of the amendment is expected to be brought to the Thai Cabinet for consideration next year (2021) at the earliest.  However, delays are expected as the amendment includes several new principals identified over past decades to modernize the Thai Patent Act.

Note: For more information, please visit the DIP website for official notifications and proposed amendments here. (English translation not yet available).