Pre-Grant Mechanisms to Challenge Patentability of a Patent Application in Thailand

Increasing patent registration activity suggests that patents are an effective tool for providing market advantage to patent owners.

However, in terms of business competition, the growing number of granted patents by competitors can hamper market share and/or the freedom to operate for existing businesses and those looking to enter a new market. The Thai patent system provides a few pre-grant procedures, which interested parties may undertake, to challenge patentability of patent applications and block a grant of patent. The available procedures include pre-grant opposition and third party observations.
 
Pre-Grant Opposition
 
Under the current Thai Patent Act, any person may file a Pre-Grant Opposition against a patent for invention application or an industrial design application within 90 days following publication of the application in the Patent Gazette. The grounds for opposition include lack of novelty, lack of inventive step, lack of industrial applicability, non-patentable subject matter, the applicant is ineligible, and/or does not have the right to apply for a patent as an applicant. 
 
After an opposition is filed, citing one or more applicable grounds as described above with supporting evidence, the Patent Office shall serve a copy of the opposition on the applicant.  The applicant then has 90 days from the date of receipt of the opposition to file a counter statement. If no counter statement is filed within the prescribed time period, the application will be deemed abandoned. After the parties have filed their notice of opposition, and their counter statement along with supporting evidence, the Director-General of the Thai Patent Office will issue a decision. If the applicant or opposition does not agree with the decision, they can file an appeal to the Patent Board within 60 days of receipt of the decision.
 
Third Party Observation
 
Third Party Observation serves as an alternative pre-grant option to challenge patentability of an application, in particular in a situation where the interested party has missed the opportunity to file the formal opposition within the prescribed period. Submission of Third Party Observations are an informal procedure, there is no clear provision on the subject under the current Patent Act. It may be used by local patent practitioners to submit related prior art, which impacts patentability of the application of interest, and helps Examiners raise objections that may ultimately lead to refusal of an application.  
 
 
However, this simple out of court proceeding will no longer be available in the near future when the draft amendments to the Patent Act take effect. The draft amendments to the Patent Act will introduce a number of changes to the patent system in Thailand including the Third Party Observation as an official procedure governed by a specific provision under the Patent Act and with related rules.  
 
Accordingly, while the draft amendments to the Patent Act are still being amended, interested parties may still take advantage of this simple and effective procedure to challenge patentability of patent applications of rivals or potential rival entities in order to secure greater freedom to operate or prevent potential rivals from entry into the market.

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