Industrial design law in Thailand is currently stipulated under the Thai Patent Act B.E. 2522 (the "Patent Act”). However, the Department of Intellectual Property (the “DIP") is looking to remove industrial design from the Patent Act and amend the current Thai industrial design law as a new, separate piece of legislation. Although a complete draft law has yet to be provided, below we note some of the interesting changes proposed thus far:
Longer Protection Term
The amendment seeks to extend the duration of protection of industrial designs from the current 10-year term to a 5-year term that can be renewed twice, offering a total of 15 years of protection.
Under the current law, an industrial design must be novel and industrially applicable. The amendment, however, introduces “creativity” as an additional condition. This means there would be no protection for any design consisting of geometric, natural, or well-known shapes, or a combination of these shapes which does not cause a substantive change to the product. As no clear definition for “creativity” has yet been provided, it is worth revisiting this requirement once the draft law becomes available.
Preparation for the Hague System
Part of the rationale behind this amendment, as published by the DIP, is to comply with the ASEAN IPR Action Plan 2016-2025, which seeks to have all ASEAN member countries become a contracting party to the Geneva Act of 1999 under the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement” or the “Hague System”) by 2018. The Hague System would allow Thailand to facilitate international registration of designs by means of a single application in order to save time and costs by minimizing the need to comply with the various specific formalities of each country. It would also allow several designs of one product to be filed in one application (a “multiple application”). The amendment includes the provisions necessary to establish the mechanism of international design registration between the Thai Design Office and the International Bureau, such as recognizing the formality examination conducted by the WIPO, notifying the International Bereau of refusal of the international registration, and the duties of the Thai Design Office in communicating with the International Bureau (IB), amongst others.
Changes to the Examination System
Under the current law, an applicant has 90 days to submit a response to the formality examination. However, an applicant may also file a request for a 90-day extension of time for the first request, and another 30-day extension for the second. In order to expedite the overall registration process, the most recent draft amendment to the Thai industrial design law proposes that the initial time period be reduced to 60 days, with only one 30-day extension of time allowed after the first request.
In addition, under the newly proposed examination system, the substantive examination will automatically proceed immediately after the formality examination. After passing substantive examination, the design will proceed to publication and a 90-day opposition period will commence. If there is no opposition, the DIP will then grant protection of the design. Impediments or delays caused by payment of publication and allowance fees are also addressed, as such fees are now to be paid upfront at the time of filing.
A key change regarding this new substantive examination system is that the novelty examination would be conducted using only the Thai patent database of industrial design. Under this new system, an inventor or any person may request an examination on ‘worldwide novelty’ of a design with the DIP only after such a design is granted protection. If the examination determines that a design has worldwide novelty, a worldwide novelty certificate will be issued for the design holder. If the examination determines that the design is not novel, however, such design would be revoked by the Director-General of the DIP.
Based on the developments we have seen thus far, the proposed amendments could effectively streamline the current Thai industrial design registration system, but as the complete draft law is not available we must reserve our final opinions on the matter. In the meantime, you can trust that we will of course keep you informed of any important updates as they become available.
Any materials currently available regarding the amendment can be found on the DIP website. The DIP is currently holding an online public hearing regarding the proposed amendments. Interested persons may submit their opinions online through 10 November 2017.