Patent Registration in Thailand by Kowit Somwaiya, Managing Partner of LawPlus Ltd.

1. LAWPLUS
Patent Registration in Thailand
KOWIT SOMWAIYA
Managing Partner
24TH JANUARY 2014

2. LAWPLUS 1
TOPICS
• Patent Registration in Thailand
• Invention Patent
• Petty Patent
• Design Patent
• PCT Application
• PCT National Phase Application
• Registration Process
• Patent Search

3. LAWPLUS 2
Patent Registration in Thailand
• Governing Law: Patent Act B.E. 2522 (1979) as amended by the Patent Act
(No. 2) B.E. 2535 (1992) and the Patent Act (No. 3) B.E. 2542 (1999)
• An application for patent can be filed with the Thai Patent Office for:-
 invention patent
 petty patent (utility model)
 design patent
• An inventor / designer can file a patent application for his invention /
design. Unless agreed otherwise, the right to file a patent application for an
invention / design belongs to the employer if the inventor / designer
creates such invention / design under the employment contract.

4. LAWPLUS 3
Patent Registration in Thailand
• A patent application must be made in Thai language and be filed with the
Patent Office together with a notarized power of attorney from the
applicant and other relevant documents in the forms prescribed by the
Patent Office. Documents in foreign languages must be accompanied with
their Thai translations.
• The Thai Patent Act does not have a provision that allows the accelerated
acquisition of rights. However, there is a practice that a patent applicant
can send a letter to the Director of the Patent Office to request
acceleration for examination of a delayed pending application . But this is
just a practice that is currently adopted by some Patent Examiners and
agents in Thailand and there is no legal provision to support it. There is
also no guarantee that the Director of the Patent Office will proceed as
requested.

5. LAWPLUS 4
Invention Patent (1)
• To be patentable, an invention must have the following elements:-
 novelty
 involving an inventive step
 industrial applicability
• An invention lacks novelty if:-
 it existed or was widely used in Thailand before the patent application is filed;
 it was disclosed essentially in whatever manner to the public in or outside Thailand
before the patent application is filed;
 it has been patented in or outside Thailand before the patent application is filed;
 it has been filed for patent registration outside Thailand more than 18 months prior to
the filing of the patent application in Thailand but a patent has not been granted; or
 it has been filed inside or outside Thailand and has been published prior to the filing
of the application in Thailand.
• An invention has an inventive step if it is not obvious to persons of ordinary skills in the
field of that invention. An invention which has only novelty and industrial applicability may
be registered as a petty patent (utility model).

6. LAWPLUS 5
Invention Patent (2)
• The registration process starts with a formal examination and then
publication. A substantive examination will take place after the
application is published. The application will be registered once it has
been substantively examined. The overall process up to registration
can take more than 5 years, depending on the workloads of the Patent
Office.
• An invention patent has a term of 20 years from the patent application
date. Annuity payments must be made annually from the 5th year until
the 10th year. Alternatively, the whole annuities can be made in one
lump sum in the 5th year.
• A claim for priority of a foreign application can be made if the filing date
of the foreign application is no longer than 12 months prior to the Thai
application date.

7. LAWPLUS 6
Invention Patent (2)
• Filing requirements:-
 a specification of the invention, the claims, the abstract and the
drawings;
 a notarized power of attorney from the applicant showing the name,
nationality and address of the applicant;
 a statement of the applicant’s right to apply for a patent (if the
applicant is the inventor);
 a notarized deed of assignment between the inventor and the
applicant (if the inventor of the invention and the applicant are not
the same person); and
 a certified copy of the first application filed abroad (if the priority of
the foreign application will be claimed).

8. LAWPLUS 7
Petty Patent
• A petty patent (utility model) registration requires only novelty and industrial
applicability of the invention. The inventive step is not required.
• The term of a petty patent is 6 years from the filing date of the application,
extendable twice for 2 years each.
• No substantive examination is conducted before grant of a petty patent.
• The patent examiner will conduct the formal examination and then publish the
registration once he finds the invention (utility model) patentable.
• A straightforward application takes around 1-2 years to reach registration.
Within 1 year of its registration date, any interested party may ask for
substantive examination of the petty patent if he believes that the invention is
not new or has no industrial applicability.
• Filing requirements and the priority claim provisions of the invention patent
application apply mutatis mutandis to those of a petty patent application.

9. LAWPLUS 8
Design Patent (1)
• To be patentable, a product design must be a new design for industry
and manufacture. A design is not new if:-
 it existed or was widely used in Thailand prior to filing the
application for the patent;
 its essential parts have been disclosed;
 it has been published prior to filing the application; or
 it is similar to other designs under (1), (2), or (3).
• A disclosure at an exhibition which has been sponsored or authorized
and held in Thailand by the government within a period of 12 months
before filing the design patent application shall not be deemed lack of
novelty

10. LAWPLUS 9
Design Patent (1)
• To claim the priority of a foreign design application, the filing date of
the foreign application must not be older than 6 months before the
Thailand design application date.
• A design patent has a term of 10 years beginning from the application
filing date. Annuity payments must be made annually from the 5th year
until the 10th year. Alternatively, the whole annuities can be made in
one lump sum in the 5th year.

11. LAWPLUS 10
Design Patent (2)
• The registration process of a design application starts with a formal
examination and then publication. A substantive examination will take
place after the application is published. The application will be
registered once it has been substantively examined. The overall
process up to registration may take at least 3 years, depending on the
workloads of the Design Office.
• A design patent application must consist of:-
 drawings or photographs of the design;
 one clear and concise claim; and
 descriptions of the design (if available)

12. LAWPLUS 11
Design Patent (2)
• Filing requirements:-
 a notarized power of attorney from the applicant;
 a statement of the applicant’s right to apply for a patent (if the
applicant is the designer of the design);
 a notarized deed of assignment between the designer and the
applicant (if designer of the design and the applicant are not the
same person); and
 a copy of the first application filed abroad for the design certified
true copy by the foreign patent office (if the priority of the foreign
application will be claimed).

13. LAWPLUS 12
PCT Application
• Thailand is a member of the Patent Cooperation Treaty (“PCT”) and has
opened a Receiving Office (“RO”) for filing the international application
under the PCT since 24 December 2009.
• If the International Application is made in Thai, an English translation
must be filed within one month of the date on which the RO receives
the application.
• The English translation of the application can also be filed as a late
filing within (a) one month from the notification date of the international
application number and the international filing date or (b) within two
months from the receiving date of the international application by the
RO. The late filing is subject to the payment of late filing fee.

14. LAWPLUS 13
PCT Application
• The International Application and supporting documents must be filed
in Thai or English in three sets for: (1) the International Bureau (“IB”), (2)
an International Search Authority (“ISA”) and (3) the RO.
• The applicant may claim the priority filing date of the first application
for the same invention if the first application was filed within 12 months
before the filing of the international application.
• The priority claim must be made in the international application and a
certified copy of the first application must be filed with the RO within 16
months from the Priority Date.

15. LAWPLUS 14
PCT National Phase Application
• An applicant who has filed an international application can file a PCT
national phase application in Thailand within 30 months from the
priority filing date.
• If the PCT national phase application is not filed within the above-
mentioned 30-month period, the international application will not be
protected in Thailand.
• The RO will proceed with the international application filed with it only
after the end of the 30-month period. The RO, however, can proceed
with the international application if the applicant requests the RO to do
so prior to the end of the 30-month period.

16. LAWPLUS 15
PCT National Phase Application
• Filing requirements:-
 PCT Request form (RO/101);
 specification, claims, abstract and drawings; and
 notarized power of attorney from the applicant.
• The above-mentioned documents must be filed together with their Thai
translations and the PCT national phase application form. Foreign
documents must be accompanied by their Thai translations.
• Once the PCT application has entered the national phase in Thailand, it
will be processed as a national patent application pursuant to the
Patent Act B.E. 2522.

17. LAWPLUS 16
Registration Process
Filing Application
Examination of Application (Formal Examination)
Publication of Application
Substantive Examination (for invention and design
patent)
Paying Registration, Issuing Registration Certificate
Ordering Amendment
/ Rejecting
Application
Amendment of the
Application / Filing
Additional Documents /
Appeal
Filing an Opposition Filing an Appeal
Rejecting the
Application
Filing an Appeal
Request for substantive
examination by third party
within 1 year of registration
date (for petty patent)

18. LAWPLUS 17
Patent Search
• We conduct patent searches for inventions, utility models and industrial
designs which have been registered or filed with the Thai Patent Office
(“TPO”) and the Design Office (“DO”).
• The search can be conducted only on patent registrations and
published patent applications. The application which has not been
published will not include in the search because the TPO and the DO
keep them confidential.
• Our search services include:-
 General Search
 Novelty Search / Patentability Search
 Validity Search
 Infringement Search
 Identical Search

19. LAWPLUS
Unit 1401, 14th Floor
990 Abdulrahim Place
Rama IV Road, Bangkok 10500
Tel. +66 (0)2 636 0662
Fax+66 (0)2 636 0663
www.lawplusltd.com
kowit.somwaiya@lawplusltd.com