The Department of Intellectual Property (DIP) has been in the process of revising the 41-year old Thai Patent Act B.E. 2522 which was amended since 1992 and 1999. In summary, the current revision aims to expedite application procedures and to adopt certain principles pursuant to the international laws. These include the compulsory license in accordance with the Section 31 bis of TRIPS Agreement, which allows exportation of the drugs produced pursuant to the compulsory license to least developed countries, the Convention on Biological Diversity (CBD), the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing on Benefits Arising from Their Utilization, the Patent Cooperation Treaty, and the Hague Agreement Concerning the International Registration on Industrial Designs.
Important points of the revision include (as of the draft for public hearing from 30 September to 31 October 2020):-
A: Invention patent application and petty patent application:
- Duty of an applicant to disclose in a patent/petty patent application any genetic resources or traditional knowledge used in the invention, including the sources as well as the permission to access or benefit sharing agreement. Since the laws on traditional knowledge and the concept of community rights in Thailand are largely unsettled, it may be arguable whether the background knowledge of the invention constitutes traditional knowledge or not, and if so, from whom the permission should be obtained.
- Adoption of “absolute novelty” concept, i.e. an invention that is “widely known or used in Thailand or elsewhere” will be included in state of the art.
- Addition of non-patentable inventions, namely (i) a surgical method and (ii) an invention commercialization of which is against public order, good morality and public heath, and public welfare or causes severe damage to the environment. For the latter excepted invention, patentability must be determined not from the invention itself but the commercialization of the invention, which may still be known at the time of examination. Though the revision does not expressly exclude a business method, the Patent Office unofficially explains that the business method will still be non-patentable as under the current practice.
- New provisions relating to permitting prior disclosures of subject matter or details of the invention in consequence of an unlawful act, or disclosures made by inventors, applicants or authorized persons for a period of 12 months before the filing date.
- Voluntary division by the applicant and the fixed period of 90 days for division pursuant to the examiner’s order in case of lack unity.
- Response period of 90 days for amendment and submission of additional evidence, plus a 90-day extension.
- Separation of the formality examination and the substantive examination to reduce repeated examination steps. In the formality examination, the application will be examined whether the object applied for falls within the scope of invention or not. This process is expected to be quick and should screen out applications for non-invention objects. This however may not be the case in practice as, for some objects, it may be difficult to determine whether they are inventions or not, and in case of doubt, the examiner may be reluctant to reject the applications at this early stage. Therefore, this stage may in fact be time consuming and there may not be many applications filtered out at this stage.
- 2 publication phases, i.e. the first publication of patent applications promptly after 18 months from the filing date in Thailand and the second publication of the to-be-granted patent applications after the substantive examination. Despite the legal time line for the first publication, the actual process may not be expedited as the term “promptly after” is rather vague. For the second publication, the claims and other details will be identical to those in the patent to be granted.
- Third party observation on the grounds of lack of novelty filed between the first publication and before the second publication. It is unclear whether a third party observation can be filed on other grounds, e.g. non-patentability and better title.
- Time period for requesting a substantive examination within 3 years from the filing date in Thailand.
- New pre-grant opposition procedure within 90 days from the second publication of the to-be-granted patent applications.
- Time limitation for conversion of applications from patent to petty patent within 3 years from the filing date in Thailand, and the conversion from petty patent to patent within 3 years from the filing date in Thailand or before the issuance of the petty patent.
- Request for examination of a granted petty patent by any interested person after grant but no later than 6 years from filing the petty application in Thailand.
- Change of formality for a licensing agreement from registration to recordal.
- Grant of the power to the Director General to provoke patent/petty due to the failure to pay annuity fee with no need to propose the matters for the Patent Board’s consideration.
- New provision for exporting patented drugs to other least developed countries in accordance with Section 31 bis of TRIPs Agreement.
- New provision for correction of minor errors or mistakes in a granted patent.
- Increase of the fees in patent prosecution.
B: Design Application:
- New definition of “design” to extent scope of protection to “partial design” and add visibility requirement.
- More exemptions to rights of a design patent holder.
- Extension of the protection term to 15 years in total.
- New provision for deferring publication of a design application.
- New provisions relating to voluntary filing of divisional applications initiated by the applicants before publication of the application.
- New provision for filing a related design patent application based on previously filed main design application in Thailand.
- New pre-grant opposition procedure.
- Introduction of international registration of Design under Hague Agreement. For the design, this revision adopts certain concepts which should be beneficial to a design owner, especially a partial design and a related design. The revision also prepares for accession to the Hague Agreement. These all should increase effectiveness in design prosecution and protection in Thailand.
This draft is still not final. Upon reviewing the comments from the public, the government may revise the draft as appropriate for further legislative procedures. //
patent, amendment, public hearings