Investors in Newly Industrialized Countries such as Thailand often bring with them new proprietary technologies they wish to protect in order to:

Because a patent provides the patentee with a monopoly to use, manufacture, and sell the invention, the requirements to obtain patent protection are higher than those of other IP rights, especially for patents for inventions. The Thai Patent Act provides protection for three types of patents.

The first step is to identify eligibility for protection among the three types for any given invention. The three patent types available in Thailand are patent for invention, petty patent, and design patent (aka industrial design). The invention patent has the strictest requirements to qualify for protection, followed by the petty patent, then the design patent.

Invention Patents require that the invention be new, non-obvious, and capable of industrial application. Petty patents and design patents require only that the invention be new and capable of industrial application; the invention does not need to meet the non-obvious requirement.

The difference between the invention patent and the petty patent is that of the non-obvious requirement: invention patents must have non-obvious, but petty patents do not have to be non-obvious. And as with petty patents, design patents do not need to meet the non-obvious requirement. The design patent, also known as industrial design, is of ornamental or aesthetic features that pertain to a shape, configuration, or pattern of an object. As such, they are notably distinct from petty and invention patents.

The table below summarizes differences among the different types of patents.

The second step after determining eligibility for patent protection is the determination of whether or not the requirements are met.

The novelty requirement is the most essential requirement for all three types of patents protected in Thailand. Thai law specifies that an invention is not new if it forms part of the state of the art, which includes the following inventions:

• an invention which was widely known or used by others in the country before the date of application for the patent;
• an invention the subject matter of which was described in a document or printed publication disclosed to the public in Thailand or in a foreign country before the date of application for the patent (for example in a scientific magazine or thesis);
• an invention for which a patent was granted in Thailand or overseas;
• an invention for which a patent was applied in a foreign country more than 18 months before the patent application date in Thailand;
• an invention for which a patent was applied in Thailand or a foreign country and the application was published before the date of the application in Thailand.

It should be noted that in evaluating whether an invention is new, the Patent Examiner will not only consider inventions already granted protection in Thailand, but will also perform a novelty check in international patent databases and check patents granted overseas. More and more frequently, the Examiner also conducts searches in non-patent literature (publications, studies and information available online) for the purpose of verifying novelty.
It is imperative that patent owners wishing to apply for protection under Thai law ensure that the patent is not disclosed, except with appropriate non-disclosure agreements, prior to the application date. Any prior disclosure or exposure that falls under the “state of the art” definition risks jeopardizing the patent applicant’s rights to the patent.

The industrial application requirement must be met for all three types of patents. Unlike the novelty requirement, the industrial application requirement is usually easy to meet. Thai Patent Examiners have a broad interpretation of industrial application, and use in some commercial context is usually sufficient.  Any invention is deemed capable of industrial application if it can be made or used in any kind of industry, including handicrafts, agriculture and commerce. NB – However, inventions capable of only academic or theoretical application without industrial impact would not qualify under this requirement.

The non-obvious, inventive step is required for only one, but likely the most lucrative, type of patent: the invention patent. Assessment of whether or not the inventive step requirement is met is often difficult and subjective. Thai law simply states that an invention shall be taken to involve an inventive step if “it is not obvious to a person ordinary skilled in the art”.
The Manual of Patent and Petty Patent Applications Examination further specifies that an invention must provide an advantage or improvement resulting from at least one of the following:

1. effect of design/form;
2. task;
3. selection;
4. requirement of a problem and solution;
5. effort;
6. non-simplification;
7. concentration of developmental steps;
8. economic success;
9. scientific technical research;
10. progressive;
11. achievements by the invention;
12. non-exchangeable compounds; or
13. surprising results.

This Manual further indicates that Thai Patent Examiners shall consult search report(s) issued for corresponding applications in other jurisdictions. In the majority of, cases invention patent applications filed in Thailand usually have also been filed in other countries, often the USA, Europe, Japan, or China. Thai Patent Examiners frequently rely on foreign search reports and grants of corresponding patent applications in other countries in determining whether the inventive step requirement for a Thai patent application has been met. Not that the existence of the same patent being granted in another jurisdiction does count as disclosure that would void the novelty requirement.

It shall be noted that the following inventions are not eligible for patent protection in Thailand:

• Microorganisms which would be found in nature or any substances extracted from animals or plants;
• Scientific or mathematical rules and theories;
• Computer programs (which are protected under copyright);
• Processes of diagnosis, treatment, or remedy used in curing human or animal diseases; and
• Inventions which are contrary to public order or morality, public health, or welfare.

Patents for invention can be filed in Thailand through two systems:

• a national application (first filing in Thailand or within 12 months of a priority application filed in another country); or
• an application under the Patent Cooperation Treaty (“PCT”) system which makes it possible to seek patent protection:

1. 1. for an invention in Thailand and other PCT Contracting States, as selected, in an “international patent application” filed with the Thai Department of Intellectual Property (DIP) or the International Bureau of the World intellectual Property Organization (WIPO); or
   2. to seek patent protection in Thailand for an invention already filed under an international patent application filed in another PCT Contracting State or with the International Bureau of the WIPO (the so called “National Phase”).

Whether the patent application is filed under the national or international system, the application is first required to include a detailed description of the invention to enable persons skilled in the art to understand and create such an invention. The description must also include a description of the best mode to perform the invention; such a description is not always required in other countries.

The application shall then contain an abstract, a title, drawings to support the description (if applicable) and claims.

The claims must be clear and concise so as to clearly identify the exclusive rights of the patentee over the invention.

Note that all of this information must be submitted in the Thai language application filed with the DIP. Therefore, quality translation in to Thai of any foreign-language corresponding applications is crucial. Below is a simplified overview of the national patent registration procedure for invention patents in Thailand.

Design patents are very popular in Thailand, among both foreign and Thai applicants alike. The purpose of a design patent is to protect the ornamental aspects or aesthetics of an article including features pertaining to the shape, configuration or pattern.

Under Thai patent law, each design patent application may contain one design. Therefore, IP holders who wish to protect more than one embodiment of a design, such as an alternate or complementary pattern scheme, must file a separate application for each embodiment.

It is important that the application includes depictions of the design from several perspectives, both two-dimensional and three-dimensional, such as: front view, back view, right view, left view, bottom view, top view and perspective view.

These views can be either drawings or pictures of the product.

The design of Crocs ® shoes applied to mobile phone case and The actual product

Below is a simplified overview of the national patent registration procedure for design patents in Thailand.

Design patents registration procedure (simplified)