How to File a Design Patent in Thailand: Protecting the Appearance of Your Products

Sukhprem Sachdecha

8/6/20248 min read

In an increasingly competitive market, protecting the appearance and ornamental aspects of your product is crucial. While functionality is key, the aesthetic design of a product can significantly impact its market success, especially when it comes to consumer goods. Filing a design patent (often referred to as an industrial design patent) in Thailand allows you to safeguard the unique visual elements of your product, preventing others from copying or reproducing its distinctive look. This comprehensive guide will walk you through the process of filing a design patent in Thailand, offering practical advice on how to protect your product’s aesthetic elements.

What is a Design Patent?

A design patent is a type of intellectual property protection that focuses on the appearance or ornamental design of a product. Unlike an invention patent, which covers functional aspects, a design patent protects the visual characteristics — such as shape, configuration, patterns, and color combinations — that make a product stand out. This can include anything from the sleek design of a smartphone to the unique contour of a piece of furniture.

In Thailand, the Patent Act B.E. 2522 (1979) governs the protection of industrial designs. It defines a design as “any form or composition of lines or colors which gives a special characteristic that can serve as a design for an industrial product, including handicraft." By filing a design patent, you gain exclusive rights to the ornamental aspects of your product, allowing you to legally prevent others from producing, importing, or selling products that mimic your design.

Why File a Design Patent in Thailand?

Filing a design patent in Thailand provides several key benefits that can enhance your competitive edge:

Protection of Ornamental Appearance: A design patent safeguards the visual aspects of your product, such as its shape, color, and pattern. This is crucial for industries where aesthetics play a major role in consumer appeal, such as electronics, fashion, and home goods.
Protection Against Infringement: By obtaining a design patent in Thailand, you secure exclusive rights over the product's design for up to 10 years, allowing you to maintain a competitive advantage and legally prevent others from producing or selling products that resemble yours.
Complementary to Invention Patents: While an invention patent protects the functionality and internal mechanisms of your product, a design patent focuses on the external, visible features. Together, these two types of patents provide comprehensive protection by covering both how a product looks and how it works, preventing competitors from copying either aspect.
Enhances Brand and Market Positioning: Securing a design patent helps protect the aesthetic identity of your product, reinforcing your brand image and ensuring that your product's look is not diluted by imitations or counterfeit versions in the market.

What Can Be Protected Under a Design Patent?

A design patent in Thailand protects the ornamental design of a product, which includes elements such as:

Shape: The three-dimensional form of the product, such as a car’s body, a phone’s contours, or a chair’s structure.
Pattern: The two-dimensional patterns applied to a product's surface, such as patterns on fabric, wallpaper, or ceramics.
Colors: The new use of colors that gives a product its unique appearance.

To qualify for a design patent, the design must meet the following main criteria:

Novelty: The design must be original and not previously disclosed to the public, either in Thailand or abroad.
For Industry: As mentioned in Section 56 of the Thai Patent Act, the design must be for the industry, including, handicrafts.
Non-Functional: Even though not stipulated in the law, the Thai Supreme Court has decided in several cases that the design must not focus on the product’s function or utility.
Must Not be an Excluded Subject Matter: The design must not be contrary to public order or morality.

Step-by-Step Guide to Filing a Design Patent in Thailand

1. Conduct a Design Patent Search

Before filing your application, it’s critical to conduct a design patent search. This helps ensure that your design is novel and not already registered by someone else. You can search through the Thai Department of Intellectual Property (DIP)'s online database or consult a patent attorney to help navigate the search process.

2. Prepare the Necessary Documentation

To file a design patent in Thailand, you will need to prepare several key documents to ensure a successful application. These documents are essential for providing a clear and comprehensive presentation of your design and establishing your rights as the applicant. Below is a detailed list of the necessary documentation:

Application Form: Complete the required design patent application form, which can be obtained from the Department of Intellectual Property (DIP) in Thailand.
Drawings or Photographs: Submit clear and detailed illustrations or photographs of the product from all angles, including front, back, left side, right side, top, bottom, and a perspective view. These images should provide a complete visual understanding of the design you are seeking to protect.
Title of the Design: Identify the article in which the design is embodied by the name generally known and used by the public.
A Single Claim: Clearly state the specific design aspect you want to protect. This could include the product’s shape, pattern, and/or color. The claim defines the scope of protection for your design.
Brief Description of the Design (if any): A written description outlining the key ornamental features of the design. While optional, this can be useful for emphasizing certain elements of the design that are not immediately clear from the drawings.
Documents Establishing Rights to File:
- If the applicant is the designer, a statement of right is required to confirm the applicant’s ownership of the design.
- If the applicant is an assignee from the designer, an assignment agreement must be provided to confirm the transfer of rights from the designer to the applicant.
- If the applicant is the employer of the designer, either an employment agreement or an assignment agreement (preferred) should be submitted to demonstrate that the employer holds the right to file the design patent application.
Priority Documents: If the applicant is claiming priority based on the Paris Convention, a certified copy of the priority application from the original filing country must be submitted. This allows applicants to claim the original filing date as the effective date for the Thai application.
Power of Attorney: If the applicant is represented by a patent attorney, a signed and notarized Power of Attorney (PoA) must be submitted. If the applicant is from Taiwan, the PoA must also be legalized. Additionally, any applicant who is not a Thai company or not an individual residing in Thailand must appoint a local registered patent agent to represent them in the patent filing process.

These documents ensure that the application meets all the legal requirements for filing a design patent in Thailand and that the applicant’s rights to the design are properly established.

3. File the Application with the DIP

You can submit your application either online via the DIP’s e-filing portal or in person at the DIP office in Bangkok. If you are a foreign applicant, you will need to file through a registered patent agent in Thailand. The official filing fee for a design patent application is THB 250.

4. Formal and Protectable Subject Matter Examination

Once the application is submitted, the DIP conducts a formal examination. This process ensures that all required documents are in order, the fees have been paid, and that the application complies with procedural requirements. During this examination, the DIP will also assess whether the drawings or photographs fall within the legal definition of a design under Thai law.

If any discrepancies are found, the DIP will issue an office action, providing the applicant with a 90-day deadline to address the issues. The applicant may request a first extension of 90 days and a second extension of 30 days if more time is needed. In cases where the DIP issues a refusal, the applicant can appeal the decision to the Patent Board within 60 days of receiving the refusal notice.

5. Publication

Once the application passes the formal examination, the DIP issues a notice to pay the publication fee. The applicant has 60 days to make this payment. If the publication fee is not paid, the DIP will issue a second notice, and failure to pay within 60 days of receiving the second notice will result in the application being deemed abandoned.

After the publication fee is paid, the application is published in the Thai Patent Gazette, marking the start of the 90-day opposition period. During this time, third parties may file an opposition against the design patent application. If no opposition is filed within this window, the application will proceed to the next stage. In Thailand, there is no post-grant opposition—oppositions can only be filed during this pre-grant period.

6. Substantive Examination

If no opposition is filed, the application moves to the substantive examination stage. Unlike invention patents, design patent applicants are not required to file a formal request for substantive examination. The DIP will automatically evaluate the application to ensure that the design meets novelty requirements and complies with Thai patent law.

During the examination, the DIP checks the design against databases such as the DIP’s database, the USPTO, IP Australia, and WIPO to confirm its novelty. The Thailand Design Patent Office uses the Locarno Design Classification for classification and examination. If any issues arise, the DIP will issue a non-final office action or a final rejection. For a non-final office action, the applicant has 90 days to respond. Extensions of 90 days and 30 days are available upon request. If the DIP issues a final rejection, the applicant can appeal to the Patent Board within 60 days.

7. Patent Grant

Once the DIP concludes that the design meets all patentability criteria, the application is approved, and the DIP issues a notice to pay the grant fee. The grant fee must be paid within 60 days from the date of receipt of the notice, or the application will be considered abandoned. Upon payment of the grant fee, the design patent will be granted within 15 days.

How Long Does a Design Patent Last in Thailand?

A design patent in Thailand grants protection for a maximum of 10 years from the filing date, provided the necessary maintenance fees are paid. This period cannot be extended, meaning that once the 10-year period expires, the design enters the public domain and can be freely used by others.

Is Thailand a Party to the Hague Agreement?

As of now, Thailand is not a party to the Hague Agreement Concerning the International Registration of Industrial Designs. The Hague Agreement offers a streamlined process for securing design protection across multiple jurisdictions with a single application.

However, as a member of the Paris Convention, Thailand allows applicants to claim priority from a foreign patent application when filing a design patent in Thailand. This means that if you have already filed a patent application in another Paris Convention member country, you can file the corresponding application in Thailand and retain the original filing date as your priority date. To take advantage of this benefit, the application must be filed in Thailand within six months from the date of the first foreign filing. This priority claim helps secure an earlier date for assessing novelty and can prevent competing applications from gaining an advantage.

Best Practices for Filing a Design Patent in Thailand

Here are some best practices to ensure a successful design patent filing in Thailand:

Clear Drawings or Photographs: Ensure that your drawings or photographs provide a complete and accurate representation of your design. Ambiguities can weaken your application or lead to challenges during the examination process.
Professional Guidance: Engaging a patent attorney with expertise in industrial design can streamline the process and help you avoid common pitfalls. They can assist with filing, conducting searches, and responding to any DIP inquiries.
Monitor Your Design: Once registered, it’s essential to monitor the market for potential infringers. If infringement occurs, you can take legal action to protect your design rights.

Key Takeaways

Complementary to Invention Patents: A design patent covers the aesthetic aspects of a product, while an invention patent protects the functionality. Together, they provide full protection of both the external look and internal workings of your product.
Documentation Requirements: Successful design patent applications require clear drawings or photographs, a well-defined claim, and documents establishing the rights to file. Foreign applicants must also appoint a local patent agent.
Priority Filing Under Paris Convention: Thailand is a member of the Paris Convention, allowing applicants to claim priority from a foreign application if filed within six months.
Formal and Substantive Examination: The DIP will assess the application for both formal requirements and novelty, ensuring the design meets all legal standards. If there are issues, you will have opportunities to respond to office actions and potentially appeal.
Monitoring and Enforcement: After securing your design patent, it’s crucial to monitor the market for infringement and take necessary legal actions to protect your design.

Conclusion

Filing a design patent in Thailand is a critical step in protecting the ornamental appearance of your products, ensuring that you retain exclusive rights over your design for up to 10 years. Whether you’re protecting a new fashion line, electronic device, or innovative piece of furniture, a design patent is essential to maintaining your product's competitive edge.