A Guide to Invention Patent Opposition in Thailand: How to Oppose a Patent Application

The patent opposition process provides a legal avenue for third parties to challenge the validity of a pending or granted patent. Whether you're seeking to oppose a competitor's patent or defend your own, understanding the opposition process is critical to protecting your interests. This comprehensive guide outlines the procedures for filing a patent opposition in Thailand if you are an opponent and how to respond effectively if you're a patent applicant.

What is Patent Opposition?

Patent opposition is a legal mechanism that allows third parties to contest the validity of a patent application or a granted patent. In Thailand, the patent system follows a pre-grant opposition model, meaning that opposition can only be filed after the patent application is published but before the patent is granted. This system helps ensure that only valid, novel, and inventive patents are granted, thus promoting fairness and protecting the public domain.

In contrast, some countries offer post-grant opposition, i.e. third parties can challenge a patent even after it has been granted, typically within a specified time frame. This system provides a safeguard, allowing a check of the validity of granted patents to ensure they comply with legal requirements. In addition, some countries also offer both pre-grant and post-grant opposition mechanisms. Combining both pre- and post-grant opposition provides more flexibility for challenging patents at different stages.

Deadline to File an Opposition

Under the Thailand Patent Act B.E. 2522 (1979) (as amended), an invention patent application is published in the Thai Patent Gazette after it has passed the formal examination and patentable subject matter examination stage and the applicant has paid the publication fee. Once published, third parties have a 90-day window from the date of publication to file a formal opposition. The opposition deadline cannot be extended. This publication stage is crucial because it provides the public and interested parties an opportunity to scrutinize the patent application and raise objections if necessary.

Grounds for Filing a Patent Opposition

A third party may oppose a patent application on several grounds. The most common reasons for filing an opposition include:

1. Subject Matter Exclusions: Certain subject matter, such as the method of treatment of humans or animals, scientific theories, naturally occurring microorganisms, or immoral inventions are not patentable under Thai law. If the invention falls into these excluded categories, an opposition can be filed.

2. Lack of Novelty: The claimed invention must be new and not previously disclosed. If prior art (e.g., public use in Thailand, disclosure in printed publications anywhere in the world, earlier patents, or patent publications) exists that discloses the same invention, the patent application can be challenged on this basis.

3. Lack of Inventive Step: The invention must represent a significant technical advancement over prior art. If the invention is deemed obvious to someone having ordinary skills in the relevant field, an opposition may be filed on the grounds of lack of inventive steps.

4. Non-Industrial Applicability: The invention must be capable of being applied in an industry. If the invention cannot be used in any practical or industrial context, it may be opposed.

5. Ineligible Applicant: The right to file a patent application generally belongs to the inventor(s) or their assignee(s). However, for inventions made by employees, the right to apply for a patent typically rests with the employer, unless otherwise specified in the employment contract. If the party applying is not eligible, this could lead to an opposition being filed.

6. Better Title to the Invention: If the opponent believes they have a better title or superior rights to file the patent application than the current applicant, they may submit an opposition. This allows the opponent to challenge the applicant’s claim to the invention.

In addition to the statutory grounds for patent opposition outlined in the Thai Patent Act, other common grounds for opposing a patent application—though not explicitly mentioned—include lack of enablement and lack of support. Lack of enablement refers to a situation where the patent specification does not provide enough information for a person skilled in the relevant field to reproduce the invention without undue experimentation. Similarly, lack of support arises when the claims of the patent application are broader than what is disclosed in the specification, meaning the claims are not fully supported by the technical information provided. Other potential grounds might include challenges based on insufficient disclosure, where key aspects of the invention are intentionally omitted or unclear, and over-claiming, where the patent applicant seeks protection for more than what has been invented. While these grounds are not directly covered by Thai law, they can influence the substantive examination and opposition processes indirectly.

How to File a Patent Opposition

Filing a patent opposition in Thailand involves several key steps. Here’s a step-by-step guide to help you navigate the process.

Step 1: Monitor Patent Publications

To file an opposition, the patent application must first be published in the Thai Patent Gazette. Unlike in some countries where patent applications must be published within a specific time frame (usually 18 months after filing), there is no fixed publication deadline in Thailand. As a result, patent applications in Thailand can be published at any time, making it essential to regularly monitor the Patent Gazette and other relevant filings. This continuous vigilance helps identify potential conflicts with your own patents or business interests early on.

Step 2: Gather Evidence

Once you identify a patent application that you wish to oppose, gather all relevant evidence to support your case. This evidence may include prior art references, such as earlier patents, published papers, or public disclosures that demonstrate the invention is not novel. Additionally, conducting a technical analysis can help prove that the claimed invention lacks an inventive step or is obvious to someone skilled in the field.

A valuable type of evidence to strengthen your case is records of successful opposition in other countries. If similar patents have been successfully opposed or invalidated in jurisdictions like the European Patent Office (EPO), China, Japan, or the United States, citing these outcomes can support your argument and provide international precedence that the patent application in Thailand is also flawed.

Step 3: File the Opposition

Oppositions must be filed in writing within 90 days of the patent application’s publication date. The written opposition must detail the grounds for opposition and include supporting evidence. If you are unable to submit all the necessary supporting evidence within this time frame, you can request a 30-day extension to provide the remaining documentation.

The opposition should be submitted to the Department of Intellectual Property (DIP) in Thailand. It is highly recommended to work with a local patent attorney to ensure that the opposition is correctly drafted, filed on time, and includes all relevant evidence to strengthen your case.

How to Respond to a Patent Opposition

If you are a patent applicant and your application has been opposed, it is crucial to act within the time limit and strategically. Here are the steps to follow:

Step 1: Review the Opposition

Once an opposition is filed, the Department of Intellectual Property (DIP) will formally notify the applicant or their authorized patent agent, providing all relevant documents and evidence submitted by the opponent. It is essential to carefully review the opposition with your patent attorney or agent to fully understand the arguments and evidence presented. This thorough analysis will help you assess the strength of the opponent’s claims and prepare an effective response to defend your patent application.

Step 2: Gather Counterarguments

Work with your legal team to gather counterarguments and additional evidence to defend your patent application. You may need to:

• Provide evidence that the invention is novel and involves an inventive step.

• Clarify aspects of the patent specification and claims to address any issue raised.

• Argue against the interpretation of prior art presented by the opponent.

Step 3: Submit a Response

The applicant must submit your formal response, referred to as a counter-statement, to the Department of Intellectual Property (DIP) within 90 days of receiving the opposition notice. This response should thoroughly address each claim raised in the opposition and include any additional supporting evidence necessary to defend the patent application. If the applicant cannot provide all the necessary documentation within this period, a 30-day extension can be requested.

If no counter-statement is filed within the stipulated time frame, the application will be considered abandoned, and the patent process will not proceed. The opponent will be notified of the abandonment of the application.

DIP Proceedings and Decision

In the DIP proceedings for patent opposition in Thailand, once the opposition and counter-statement have been submitted, the appointed examiner carefully reviews the case. The examiner evaluates the grounds of opposition. Additionally, the characteristics of the invention itself, as presented in the original patent application, are closely examined. The examiner will then summarize the key points from both the opposition and the response, identifying the core issues in dispute. This stage primarily involves the submission of documentary evidence and written statements. Although hearings are not common, they are not prohibited under Thai law, meaning that, in certain complex cases, a hearing may be requested by either party or deemed necessary by the examiner.

If the examiner requires further clarification, they may request that both parties submit additional evidence or written statements. This ensures that all aspects of the case are fully addressed before a decision is made. Once the review of all documents and evidence is complete, the examiner prepares a draft decision. This decision summarizes the findings, evaluating the merits of both the opposition and the defense. The draft is then submitted to the Director-General of the Department of Intellectual Property for final approval. Once the Director-General has reviewed and signed off on the decision, the signed document is sent to both parties. The decision may uphold, reject, or amend the original patent application, depending on the outcome of the opposition.

Throughout the process, the focus remains on documentary and written evidence rather than oral arguments. This procedural emphasis on written submissions makes it crucial for both parties to provide clear, well-supported arguments and evidence to effectively present their case.

Appealing the DIP’s Decision

Once the Director-General (DG) of the Department of Intellectual Property (DIP) has issued a decision on a patent opposition, either party may choose to appeal this decision to the Patent Board. The appeal must be filed within 60 days of receiving the DG’s decision. Failure to file an appeal within this deadline will render the DG’s decision final and binding. The appeal process is an essential mechanism for those who believe the DG's decision did not adequately address their arguments or the merits of the case.

The appeal to the Patent Board is generally an ex-parte process, meaning that only the party filing the appeal is typically involved in presenting their case. However, there is nothing in the law explicitly prohibiting the other party (e.g., the original opponent or applicant) from submitting a response to the appeal. While not a standard practice, this can occur, especially in more complex or contentious cases where both sides want to ensure their positions are fully represented before the Board. The Patent Board will review all submitted materials and issue a final decision.

If the party who loses the appeal before the Patent Board is unsatisfied with the outcome, they have the right to appeal the Board’s decision to the Court. This appeal must also be filed within 60 days from the date the party receives the Board’s decision. Unlike the earlier stages, the Court process may involve trial hearings, where both parties could present oral arguments and additional evidence. The Court’s ruling will ultimately determine whether the patent opposition is upheld, rejected, or modified.

Transfer of Filing Rights to the Opponent

If the final decision favors the opponent, the opponent may file a patent application for the same invention within 180 days of the issuance of the final decision. Once filed, the application will be treated as though it had the same filing date as the original applicant, effectively giving the opposing party priority based on the original filing date. Moreover, the prior publication of the original applicant’s patent will serve as the publication date for the opposing party's application.

Before the patent can be granted to the opposing party, the examiner will conduct a thorough examination of the application, ensuring both formality and substantive compliance with patent laws. This process ensures that all requirements are met before the patent is officially granted to the opposing party.

Third-Party Observation

In Thailand, there is no formal system for third-party observations during the patent examination process. However, nothing in the Thai patent laws explicitly prohibits third parties from submitting informal comments or evidence to the Department of Intellectual Property (DIP), even after the opposition deadline has passed. These observations may include relevant prior art or arguments challenging the validity of a pending patent.

Unlike the opposition process, there is no specific deadline for third-party observations, allowing flexibility for those who may have missed the opposition filing window. However, it’s important to understand that submitting third-party observations does not impose any obligation on the examiner to act upon them, nor does it trigger a formal response from the Department of Intellectual Property (DIP) or initiate any appeal process. This informal approach means the examiner may take the observations into account, but there is no guaranteed course of action or further recourse for the submitter.

While third-party observations can serve as an option for those who missed the opposition deadline, it is generally preferable to file a formal opposition if possible. The opposition process not only provides a structured procedure but also allows for an appeal in the event of an unfavorable decision. This legal framework provides greater certainty and recourse for those wishing to challenge a patent. Thus, while third-party observations can be useful, particularly when no other options are available, formal opposition offers a more comprehensive and robust mechanism for contesting patent applications.

Best Practices for Managing Patent Opposition in Thailand

Whether you are filing an opposition or defending a patent, several best practices can help improve your chances of success:

1. Work with an Experienced Patent Attorney: Navigating patent opposition proceedings requires in-depth knowledge of patent law and strong legal representation. Working with an experienced local patent attorney can significantly improve your chances of a favorable outcome.

2. Provide Clear and Strong Evidence: Both opponents and applicants must rely on evidence to support their case. Make sure your evidence is relevant and well-organized.

3. Monitor Patent Publications: If you are concerned about competitors’ patent filings, regularly monitoring patent publications will help you stay informed and ready to file an opposition if necessary.

4. Act Within Deadlines: Strict deadlines apply to both opposition filings and responses. Make sure to adhere to these deadlines to avoid forfeiting your rights.

Conclusion

Patent opposition in Thailand serves as an essential tool in the patent application process. By understanding the procedural steps, legal requirements, and strategic nuances involved in both filing and responding to opposition, you can navigate this process with greater clarity and confidence.

Whether you are planning to oppose a patent, defend your own, or even submit a third-party observation, working with an experienced patent attorney in Thailand is crucial. A qualified attorney ensures that your interests are fully protected throughout the opposition process and helps you avoid common pitfalls.