From September 30, 2020 to October 31, 2020, the Thai Department of Intellectual Property (“DIP”) had 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 aforementioned points, the DIP is welcoming comments on the proposed amendment from any relevant persons.
The process of drafting amendments has been pending for several years, but it began to take a higher profile in February 2018 with the convening of public hearings on the proposed new legislation. After a series of committee meetings through November of that year, the cabinet approved a set of proposed amendments in January 2019.
After further internal discussions, attention turned to the drafting of a companion law specifically for industrial designs, in preparation for Thailand’s accession to The Hague Agreement Concerning the International Registration of Industrial Designs. A similar process of public hearings and committee meetings was followed, but in March 2020, the cabinet requested that industrial design legislation be combined with the patent Act amendments into a single new Patent Act. Therefore, the draft Patent Act as it currently stands covers both patents and designs.
PURPOSE FOR AMENDMENT
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 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.
PROPOSED MATTERS FOR AMENDMENTS
- Genetic resources (GRs), genetic material, derivative works and traditional knowledge (TK) – Inventions that use GRs or TKmust disclose the source, access, and benefit-sharing plan in the patent application.
- Disclosure grace period – Disclosure of subject matter of an invention within the 12 months before the filing of a patent application is not deemed defeating if the disclosure stems from the subject matter being obtained unlawfully or is made by the inventor, the patent applicant, or others they have authorised to do so.
- Dual publication – Patent applications will be published twice-first within 18 months from the application’s filing date in Thailand, and again when the substantive examination is completed. The second publication opens the 90-day opposition period, after which the patent will be granted if there is no opposition.
- Divisional applications – Division of a patent application can be requested by the applicant before the second publication of the patent. In the current Patent Act, divisional applications are not allowed, and dividing a patent application is only at the discretion of the patent examiner.
- Reduced time for requesting substantive examination of a patent – The time allowed for requesting substantive examination of a patent application is reduced to three years from the filing date in Thailand, down from the current five years from the publication date.
- Increased time for requesting substantive examination of a petty patent – The time allowed for requesting substantive examination of a petty patent application is increased to six years, up from the current one year.
- Non-patentability of surgical methods – Surgical methods considered methods of treatment are added to the list of non-patentable subject matter.
- Worldwide novelty – While inventions were already required to be “state of the art,” now the phrase “outside the country” has been added to this. This makes explicit that inventions widely known or used either within or outside the country will not be patentable.
- Avoidance of double patenting – The draft law explicitly states that an application for a patent filed in Thailand, even if it is published on or after the date of a later-filed application in Thailand, will be considered state of the art. In contrast, the current Patent Act is not so clear on this point.
- License agreements – Whereas the current law requires registration of a patent license agreement, the draft amendments change this requirement to recordation of a license agreement with the Patent Office. In addition, only a formality examination will be conducted.
- Error correction in granted patents – The draft law permits correction of trivial errors found in a patent after it has been granted, provided that the corrections do not expand the scope of the patent.
- Surcharge for extended annuity payments – The director-general of the DIP may designate a patent abandoned if its annuity fee is not paid by the due date, but the Board of Patents may revoke the director-general’s order. Upon receiving a revocation petition, the board may grant an extension to pay the annuity fee, subject to a 50% surcharge.
- Compulsory licenses – The draft law authorizes ministries, sub-ministries, and government departments to issue a compulsory license to import patented medicines for public use, in line with Article 31 bis of the TRIPS Agreement. It also provides for the issuance of a compulsory license to export medicines to countries with insufficient or no pharmaceutical manufacturing capacity in pharmaceuticals.
- PCT Rules – The draft law adds a new chapter for international applications under the Patent Cooperation Treaty, covering issues such as applicant qualifications, filing procedures, priority claims, restoration of priority rights, and so on.
As explained earlier, the draft law also includes significant changes to industrial design registration procedures and introduces provisions enabling compliance with The Hague Agreement. This includes induction of partial designs and the Japanese-style related design protection system, greater clarification of the “novelty” criteria, a 12-month grace period for design applications, voluntary filing of divisional applications, streamlined registration procedures for design applications, extension of the term of protection to 15 years, an improved infringement test, and extension of the scope of defences to infringement.
The proposed patent and design-related amendments mentioned above represent significant potential developments in Thailand’s regulatory regime for patents and industrial designs. These draft amendments are likely to undergo additional changes in response to comments received during the public hearings and further revisions by the cabinet and the Council of State, and further updates on this subject are expected to become available around the end of 2021.
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Public Hearing Opened: New Proposed Amendment to Thailand’s Patent Act – Lexology
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Thailand Law Forum: Patent Act B.E. 2522 (thailawforum.com)
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