Understanding Patent Maintenance Fees in Thailand: Keeping Patent In Force

Maintaining a patent in Thailand is essential to preserving the exclusive rights that protect your invention or design. Once granted, patents do not automatically remain in force for their full term without additional actions from the patent holder. The ongoing obligation to pay patent maintenance fees — also referred to as renewal fees or annual fees —ensures that the rights remain valid for the full protection period. Failure to pay these fees results in the patent lapsing, which could allow competitors to use your innovation without your consent.

This blog post serves as a comprehensive guide to understanding the system of patent maintenance fees in Thailand, addressing key questions about how they work, the schedule of payments, and the consequences of non-payment. Whether you are an inventor, a business owner, or a legal professional, this resource provides valuable insights into the procedures and best practices for keeping your patent in force.

What Are Patent Maintenance Fees?

Patent maintenance fees are payments required to maintain a patent's validity over time. These fees must be paid annually in Thailand after the first payment is due as explained below, ensuring that the patent remains active for its full term. Without these payments, the patent will lapse, meaning that the invention or design will no longer be protected, and others may freely use it.

The term “patent annuities” is also used in Thailand and many countries to describe recurring payments that are usually paid annually. Patent holders must continue making these payments to enjoy the full benefits of their patent rights. These fees apply to all types of patents in Thailand, including invention patents, design patents, and petty patents. Importantly, each type of patent has a different fee structure and timeline for payment, as we will explore in more detail.

Purpose of Patent Maintenance Fees

The primary purpose of patent maintenance fees is to encourage patent holders to reassess the value of their patents over time. Patents are valuable assets, but they are only worth maintaining if they continue to provide commercial or strategic advantages. As these fees increase over the life of the patent, holders must evaluate whether the costs are justified by the benefits of keeping the patent in force. This system helps ensure that only commercially viable patents remain active.

Patent maintenance fees also serve another important function: they contribute to funding national patent offices, such as Thailand’s Department of Intellectual Property (DIP). These fees support the administrative processes of patent examination, granting, and enforcement. Without these payments, patent offices would struggle to function effectively, delaying innovation and reducing the integrity of the intellectual property system.

Maximum Patent Term in Thailand

The maximum term of a patent refers to the longest duration that a patent can remain valid, provided that all maintenance fees are paid on time. In Thailand, the maximum term for an invention patent is 20 years, starting from the filing date of the patent application. For design patents, the maximum term is 10 years. Similarly, petty patents are granted for an initial period of 6 years and can be extended twice, for a total protection period of 10 years.

It is important to note that patent terms cannot be extended beyond these statutory limits. Once the maximum term is reached, the patent expires, and the invention enters the public domain, where it becomes freely available for public use. This limitation means that patent holders must make the most of their protection period, ensuring that the invention is commercially exploited during its active lifespan.

Are Patent Maintenance Fees Due Before Patent Grant?

No, patent maintenance fees in Thailand are not required before a patent is granted. During the application process, patent applicants are focused on securing the patent rather than maintaining it. Once a patent is granted, however, maintenance fees become due starting from the fifth year of the patent term. So if a patent is granted after the fifth year, fees for the fifth year to the year of grant would be due at once. This structure allows applicants to focus on successfully obtaining patent rights without the additional burden of paying fees before they have legal protection.

When Are Patent Maintenance Fees Due?

In Thailand, patent renewal is required annually, starting from the fifth year of the patent term, which is often referred to as the fourth anniversary of the application date, or after the patent is granted — whichever occurs later. For example, if a patent was filed in January 2020 and granted before January 2024, the first maintenance fee would be due in January 2024. The initial payment must be made within 60 days from when the first maintenance fee is due. If the patent is granted on 1 February 2025, the initial payment which includes the fee for that year (i.e. 6th year) and all previous year(s) in arrears (i.e. 5th year) must be made within 60 days from the grant date.

To maintain the patent’s validity, subsequent annual renewal fees must also be paid within 60 days of the anniversary date of the filing, each year thereafter.

The same renewal requirements apply to design patents and petty patents in Thailand. Design patents must be renewed annually for their full protection term of 10 years. For petty patents, annual fees are due for the 5th and 6th years of protection. After this period, the petty patent can be extended twice: the first extension covers the 7th and 8th years, and the second extension covers the 9th and 10th years.

The annual renewal process serves as a way to regularly assess the value of the patent. If a patent no longer offers commercial or strategic benefits, the holder may choose not to renew it, allowing the patent to lapse.

How Much Are Annuity Fees in Thailand?

The cost of patent maintenance fees in Thailand varies depending on the type of patent and the age of the patent.

For invention patents, fees start at THB 1,000 in the fifth year and increase incrementally, reaching THB 25,000 by the twentieth year. The fee structure is designed to reflect the increasing value of an established patent, encouraging businesses to keep only those patents that remain commercially valuable. The official annual fees are as follows:

5th year: THB 1,000
6th year: THB 1,200
7th year: THB 1,600
8th year: THB 2,200
9th year: THB 3,000
10th year: THB 4,000
11th year: THB 5,200
12th year: THB 6,600
13th year: THB 8,200
14th year: THB 10,000
15th year: THB 12,000
16th year: THB 14,200
17th year: THB 16,600
18th year: THB 19,200
19th year: THB 22,000
20th year: THB 25,000

For petty patents, the fees are as follows:
5th year: THB 750
6th year: THB 1,500
7th - 8th year: THB 6,000
9th - 10th year: THB 9,000

For design patents, the fees are as follows:
5th year: THB 500
6th year: THB 650
7th year: THB 950
8th year: THB 1,400
9th year: THB 2,000
10th year: THB 2,750

Can a One-Time Payment Be Made?

Yes, in Thailand, patent holders have the option to make a lump sum one-time payment for all future maintenance fees instead of paying annually. This option simplifies the fee management process by allowing the patentee to settle the entire amount upfront, thereby reducing the risk of missing future payments, which could result in the loss of patent rights. However, once the lump sum payment is made, no refund is available, even if the patent is surrendered or invalidated at a later date. This means that the payment is final and non-recoverable.

For invention patents, the total lump-sum payment for the entire 20-year term is THB 140,000, offering a slight discount compared to the total yearly payments, which amount to THB 152,000. For petty patents, a lump-sum payment of THB 2,000 can be made to cover the 5th and 6th years. Similarly, for design patents, the total lump-sum payment for the full 10-year term is THB 7,500, slightly lower than the total yearly payments of THB 8,250, providing a modest discount while simplifying the payment process.

When Can Late Payments Be Made?

If a patent holder misses the deadline for paying maintenance fees, Thai patent law allows for a 120-day grace period during which the fees can still be paid. However, a 30% surcharge is applied to the unpaid amount. This grace period gives patent holders extra time to fulfill their obligations, but it is always better to make payments on time to avoid the surcharge and the risk of losing patent protection.

What Are the Consequences of Non-Payment?

Failure to pay patent maintenance fees can have serious consequences. If the fees are not paid by the deadline and within the 120-day grace period, the patent will be considered abandoned, and the patent rights will be lost. This means the invention or design will enter the public domain, allowing others to use, sell, or reproduce the invention or design without permission from the patent holder.

Once a patent has lapsed, it cannot be retroactively revived unless a successful appeal is made to the Patent Board.

How to Reinstate a Patent Abandoned Due to Non-Payment?

In Thailand, if a patentee fails to pay the required maintenance fees by the deadline (including the six-month grace period), the patent will be canceled, and the patentee or their agent will receive an official cancellation order. However, the patentee has a chance to reinstate the patent by filing a request with the Patent Board. This request must be made within 60 days from the date of receipt of the cancellation order, and the patentee must demonstrate that the failure to pay the fees was due to a "cause of necessity". If the Board accepts the reasoning provided, it has the authority to extend the payment period, allowing the patentee to rectify the situation and reinstate the patent.

If the Patent Board denies the request for reinstatement, the patentee can appeal the decision. The appeal must be filed within 60 days of receiving the Board’s decision, and the case will then be reviewed by the Court. This process offers patentees a potential recourse if they can show justifiable reasons for missing the payment deadline, but it is important to act swiftly and ensure all necessary documentation is properly submitted to both the Board and the Court.

Best Practices for Managing Patent Maintenance Fees

To ensure your patent remains in force and avoid the risk of lapsing, it's essential to adopt best practices for managing maintenance fees. Here are some key recommendations:

Set Payment Reminders: Automated systems or notifications can help ensure that patent renewal deadlines are not missed. This is especially useful for businesses managing large patent portfolios.

Work with a Patent Attorney or Agent: Engaging a professional can help you navigate the complex process of patent management and ensure all fees are paid on time, particularly if you are unfamiliar with local procedures.

Evaluate the Commercial Value Regularly: As patent maintenance fees increase over time, regularly assess whether each patent is still valuable to your business. Abandoning patents that no longer offer significant returns can help manage costs effectively.

Consider Lump-Sum Payments: If financially feasible, paying all maintenance fees upfront in a lump sum can eliminate the need to track annual payments and provide long-term protection without additional management.

Key Takeaways

Patent maintenance fees, also known as renewal or annuity fees, are required annually to keep patents in force in Thailand.

Fees start in the fifth year for invention, design, and petty patents, or after grant, and must be paid annually thereafter.

If not paid within the initial 60-day deadline from the anniversary date, there is a grace period of 120 days with a 30% surcharge.

Failure to pay maintenance fees within the deadline and grace period results in the patent lapsing, which means losing exclusive rights. It is time-consuming and not easy to reinstate an abandoned patent.

Patent holders have the option to make a lump sum payment to cover all future maintenance fees.

Working with a patent attorney or using automated systems can help ensure timely payments and protect your intellectual property.

Conclusion

Patent maintenance fees are an essential part of protecting your intellectual property in Thailand. By understanding when fees are due, how much they cost, and the consequences of non-payment, patent holders can better manage their IP portfolios and maintain the exclusive rights that patents provide. Whether you’re a domestic applicant or a foreign entity, ensuring that fees are paid on time is crucial to securing the long-term protection of your innovations.