What are the criteria for patentability in your jurisdiction?

Under the Patent Act 1979 (as amended in 1999), three types of patent can be protected in Thailand:

  • invention patents;
  • petty patents; and
  • design patents.

Invention patents An invention patent must fulfil the patentability requirements under Section 5 of the Patent Act. To be patentable, an invention must:

  • be new;
  • involve an inventive step; and
  • be capable of industrial application.

The higher threshold for invention patents – compared to design and petty patents – is commensurate with a longer exclusivity period. Design and petty patents grant exclusivity to the inventor for 10 years, whereas invention patents offer an exclusivity period of 20 years from the date of filing the patent registration application.

Invention patent applications are filed with the Department of Intellectual Property. Once granted, proper fees must be paid to ensure the patent’s validity for the 20-year period.

Petty patents Where an invention does not involve an inventive step, the invention may be eligible for a petty patent if it is new and capable of industrial application.

A petty patent (also known as a utility model in other countries) can be granted for a new invention that is capable of industrial application but lacks a high level of inventive novelty. The advantage of a petty patent is that the registration and approval process is shorter because, unlike invention patents, the novelty or inventive component is not examined before registration. The total possible exclusivity term for a petty patent is 10 years. The initial patent is valid for six years, with two possible extensions of two years each, provided that the proper fees are paid to maintain the patent’s validity.

Petty patents are the preferred route of protecting inventions for manufacturing companies and inventors of obvious or less complicated inventions due to the relatively simple requirements, compared to invention patents. Not having to fulfil the inventive step criteria means that a petty patent applicant can file more patents for new, simple inventions, thereby allowing the company or patentee to build up a large patent portfolio easily.

Design patents A design may be eligible for design patent if it is new and industrially applicable. 

Design patents are granted based on the ornamental aspects or aesthetics of an article, including features that pertain to the shape, configuration or pattern. As such, design patents may be granted for new qualifying three-dimensional designs or designs with a two-dimensional element. In Thailand, design patents are popularly sought by both Thai and foreign patentees. The Department of Intellectual Property grants design patents 10 years of protection from the date of filing.

Particular types of company – especially in design-heavy industries – often apply for either design patents or invention patents. For example, car manufacturers, furniture designers, and beverage companies routinely seek design patent protection for new car models, furniture and bottles, respectively.

The main advantage of a design patent, compared to an invention patent, is the less demanding efficiency requirements of the patent application. Design patents have only two requirements: that the patent be new and capable of industrial application.

The following focuses mostly on invention patents.

What are the limits on patentability?

Sections 9 and 65decies of the Patent Act apply to invention patents and petty patents, and exclude the following inventions from patentability:

  • natural micro-organisms and any component of micro-organisms, plants or extracts from animals or plants;
  • scientific and mathematical methods and theories;
  • data systems for an operation of a computer (computer programs);
  • methods of diagnosis, treatment or cure of human and animal diseases; and
  • inventions contrary to public order, public health and morals and general welfare.

Patent applications can also be challenged if:

  • the patent owner is not the true inventor or has no right to file an application; or
  • a disclosure of an invention to the public was made more than 12 months before the filing of the patent application. This scenario precludes an applicant from obtaining an invention patent or a petty patent.

For design patents, designs that are purely functional, contrary to public order or prescribed by a royal decree are not patentable.  

Are there restrictions on any other kinds of invention?

Only the restrictions outlined above.

Click here to view the full article.