Accession to the Hague Agreement and Amendment to the Patent Act

Following the commitment with the ASEAN Intellectual Property Right Action Plan 2016-2025, the Cabinet has recently approved Thailand’s accession to the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”), which allows applicants to register an industrial design by filing a single application to receive protection in multiple countries that are contracting parties.

In addition, in order to facilitate the accession, the Cabinet has approved the proposed draft amendment of the Patent Act (no. ..) B.E. …. (the “Amended Act”), which will improve the efficiency of patent registration and examination processes, as well as design patent application system, to be consistent with international standards (i.e. Hague Agreement, TRIPs Agreement, Convention on Biological Diversity, and Nagoya Protocol on Access and Benefit Sharing).

The most notable changes are as follows:

1. To comply with the Hague Agreement, Chapter 3/1 will be added to the Amended Act to specify the application filing system for international design patent protection (i.e. direct filing with the World Intellectual Property Organization (“WIPO”) and indirect filing through the Department of Intellectual Property (“DIP”, and the qualifications of the applicants. Furthermore, the protection term for design patent is extended from 10 to maximum 15 years ( a 5-year initial term with renewable for a period of 5 years twice). 
2. To be consistent with Article 31 bis of the TRIPs Agreement, the Amended Act includes grounds for issuing compulsory licensing particularly for an export of patented pharmaceutical to least-developed countries or to World Trade Organization (“WTO”) member states with restricted production capacity. Moreover, to comply with Article 27 of the TRIPs agreement, the list of non-patentable subject matters is expanded to include “surgical methods” and any inventions for commercial exploitation contrary to public order, morality, health, and public welfare, or causing serious environmental damage.
3. In accordance with Nagoya Protocol, provisions regarding genetic resources (“GRs”) and traditional knowledge (“TK”) will be added, requiring applicants to declare the source of origins and submit documents demonstrating access and benefit-sharing of such inventions together with a patent application.
4. The definition of “design” is amended to include “partial designs” that is visible to the naked eye, offering the extended protection coverage.
5. Some changes on the patent examination processes are introduced to improve efficiency and speed of the registration system. For example, the opposition of patent applications requested by any interested person is changed from after the first publication to be after the second publication and the period for requesting a substantive examination of patent applications is reduced from 5 years from the publication date to 3 years from the filling date in Thailand.
6. Under the Amended Act, a patent license agreement is no longer required to be registered with the DIP to be valid, as it will be based on a recordation system.
7. In compliance with the Patent Cooperation Treaty (“PCT”), Chapter 2/1 regarding international patent applications will be added to specify rules relating to patent registration, for example, qualifications of applicants, priority claim and filling process.
8. There are some changes relating to official fees, for instance, the fees for filing a patent application and a design patent application are increased from THB 1,000 to THB 3,500 and THB 3,000, respectively.

Overall, the Amended Act offers a promising improvement to Thailand’s patent and industrial design regulations and ensures consistency with international standards, including the Hague Agreement. On the next stages which will take at least a year, the draft will be submitted to the Council of State and then the National Assembly of Thailand to obtain approval from the House of Representatives accordingly.