JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/

October 30, 2020
Mr. Vuttikrai Leewiraphan
Director General
Department of Intellectual Property
Ministry of Commerce
563 Nonthaburi Road, Bangkrasor Muang
Nonthaburi 11000
ThailandDear Mr. Leewiraphan,
Re: JIPA Comments on the amendment bill of Thailand Patent Act
We, the Japan Intellectual Property Association “JIPA”, are a private userorganization with about 970 major Japanese companies as members. Whenappropriate opportunities arise, we offer our opinions on the intellectual propertysystem of other countries and make recommendations for more effective
implementation of the systems.(http://www.jipa.or.jp/english/index.html)
Having learned the amendment bill of Thailand Patent Act on your website, wewould like to offer our opinions as follows.
Your consideration on our opinions would be greatly appreciated.
Sincerely yours,

Tatsuya MORIManaging Director

Makoto FUKUOKAManaging Director
Japan Intellectual Property Association

Comments on Draft Revision of the Thai Patent Act (1)Section 5: Exception to lack of novelty of invention
We express our appreciation to the introduction of "disclose by an applicant,or an inventor or a person who gets a permission from the applicant," in addition
to "inventor" as an exception to lack of novelty of an invention.
Meanwhile, it is unclear whether "disclosure to the public through an arbitrary
method" includes "a case where a product is announced by itself through theInternet, product sales or the like."
In various scenes of product developments of companies, there are many
demands for early publication of technologies.
In particular, technicalinformation disclosed through the Internet is equivalent to technical information
published in the form of journals, books and others, and in addition, it is available
in a prompt and convenient manner; and there is an increasing number of cases
where researchers or inventors, with the purpose of early publicizing theirresearch achievements or inventions, utilize the Internet as an opportunity forpresentation.
In consideration of the above, it is requested to stipulate in the text ofprovisions or examination standards that the disclosure of important matters or
details on the technical information includes "announcement of a product bythemselves through the Internet, product sales and the like."
Section 10: Patent applications related to genetic resources and traditional
knowledge
We consider that the utilization of genetic resources and sharing of benefits
discussed in the Convention on Biological Diversity and the Nagoya Protocol
should not be connected to the patent system. Therefore, it is requested todelete Section 17/1, which obliges a patent applicant to submit a source indicationof a genetic resource and related references.
If the above request is not acceptable, it is requested to limit "genetic
resources or traditional knowledge" to "Thailand-derived genetic resources or
traditional knowledge" in consideration of the balance between the national
interests of your country and the procedural burden on patent applicants.
In connection with this Section, the definition of "genetic resources" in the- 1 -Section 3 of the draft revision of the Patent Act includes "derivatives" and isbroader than the definition of "genetic resources" in the Convention on Biological
Diversity and the Nagoya Protocol. To keep consistency with the definition of
the Convention on Biological Diversity and the Nagoya Protocol, it is requested
to delete "derivatives" from the definition of "genetic resources." Next, it isrequested to delete the provision "to submit an application form for permission
before use thereof and a statement of agreement on benefit-sharing together witha patent application form."
There exist many countries that do notinstitutionalize obtainment of "an application form for permission before use
thereof and a statement agreement on benefit-sharing." In addition, although
the definition of "genetic resources" in Section 3 of the draft revision includes"derivatives" as described above, it is not easy to obtain such an application form
for permission and a statement of agreement on "derivatives." If this provision
is incorporated into the Patent Act, this increases the procedural burden on apatent applicant and hamper the implementation of the first-to-file doctrine.
Therefore, we request you to eliminate a submission requirement or ease thetiming or method of submission.
Further, the provision stipulates "the patent applicant should specify its
source." However, it is sometimes difficult for the patent applicant him/herself to
specify its source, and thus, in such a case, we request you to exempt theapplicant from the obligation to specify the source.
Finally, if Section 17/1 of the revision should be adopted, even if an applicant
violates the requirement, we request you not to use such a violation as a rejection
reason or an invalidation reason. It is sometimes very difficult for a patentapplicant to specify a source of a genetic resource as described above, and it isalso assumed that the source of a genetic resource is found after the filing of apatent application or registration of a patent, and thus it is requested that therevision should not give an unexpected disadvantage to a patent applicant.
Section 15: Divisional application to examiner
The draft revision of the Patent Act stipulates that "If the applicant does notagree with Examiner's order, the applicant shall file an appeal against the order
to Director-General within 60 days from receipt of the order." Meanwhile,
Section 26 before the revision stipulates that "If the applicant does not agree withthe requirement to separate the application, he shall appeal to the Director-- 2 -General within 120 days."
Foreign residents sometimes have difficulty in filing an appeal within 60 days.
Accordingly, it is requested to set the term for foreign residents to file anappeal to within 120 days as in the past.
Section 16: Information used for examination on corresponding foreign
patent application
The draft revision stipulates that an extension for submission is permitted
when a request for the extension is filed with a fee within 90 days. However, it
is considered too stringent to an applicant that if a request is not filed within adesignated period for the additional procedure, an application is deemed to bewithdrawn. At the same time, this provision is unclear as to the examination
results of which country must be submitted, and there is a concern that an
applicant would be forced to assume an unnecessary burden. In addition, there
is a doubt whether it is necessary to submit information used for examinationeven before an examination request; and if submission of such information isrequired regardless of whether or not an examination request is filed, there is aconcern that it would be a heavy burden on an applicant.
Accordingly, we request a system in which submission of a patent publicationof a corresponding foreign patent application (in that case, a patent of any country
is acceptable) and a Thai translation thereof is sufficient.
In addition, it is requested that the timing of submission should be clarified bystating "submitting at the time of or after an examination request and within apredetermined period from receipt of a foreign country examination result."
Section 19: Introduction of relief measure on period for examination
request on invention
The draft revision of the Patent Act stipulates "Section 29. The applicant
may request the competent office to proceed with the examination of whether aninvention is a patentable invention based on Section 5 within 3 years from thefiling date of the patent application in the Kingdom of Thailand. If the applicant
fails to make such a request within the predetermined period, the applicant shallbe deemed to have abandoned the application."
However, if a patent application is deemed to be abandoned due to the- 3 -occurrence of an unavoidable event such as a natural disaster or a disease that
does not allow a patent applicant to file an examination request within thepredetermined period, it is too stringent to a patent applicant. In this regard,
when an applicant has "a justifiable reason" such as an unavoidable event,several countries do not deem that an application is abandoned but they provide
a relief measure such as an extension of the period for an examination request.
Therefore, for a case where an applicant having "a justifiable reason" suchas an unavoidable event cannot complete the procedure within a predetermined
period for an examination request, it is requested that a relief measure should be
provided to the applicant.
Section 23: Introduction of relief measure on opposition
The draft revision of the Patent Act stipulates that "when the officer receives
an opposition described in the first paragraph, the officer shall send a copy of the
opposition to the applicant and the applicant shall file a counterstatement within
90 days following the receipt of the copy of the opposition. If the applicant fails
to file a counterstatement, the applicant shall be deemed to have abandoned theapplication." However, the abandonment disposition of Section 32/2 is not taken
as a subject for appeal (Revision of the first paragraph of Section 74 of the 1979
Patent Act in Section 61 in the revised Patent Act).
However, there is a possibility that a patent applicant cannot file acounterstatement due to an unavoidable event such as a natural disaster or adisease; and if no opportunity for a counterstatement is given to the applicant
through the abandonment disposition, it is too stringent to the applicant. In
Japan, if a patentee fails to file a counterstatement against an opposition, an
opportunity is given by filing a suit of dissatisfaction against a decision on
opposition later.
Therefore, it is requested to provide a further opportunity forcounterstatement on the abandonment disposition of a patent application.
Section 27: Correction of mistranslation after registration
The draft revision of the Patent Act stipulates that "Section 37/1. With
respect to a patent certificate issued with a minor error or mistake, a patentee
can file a request for correction or addition to Director-General with the payment- 4 -of a fee for correction of the patent certificate." We are grateful that theavailability of an error correction after registration is put in statutory form.
Meanwhile, the draft revision of the Patent Act states that "However, thecorrection should not modify the essence or scope of an invention protectedbased on the patent certificate, and should be carried out with the consent of a
joint owner of a patent right." It is unclear whether mistranslations can becorrected for the scope of claims after registration.
It is considered disadvantageous for foreign companies to have noopportunity for correction of a mistranslation in Thai compared to applicantsdealing with Thai as the native language. In addition, there are many cases
where a mistranslation is found after exercise of a right; and if the mistranslation
cannot be corrected at that time, this hampers legitimate exercise of the rightagainst a malicious person working the patent.
Therefore, it is requested to stipulate in written form in the provision or theexamination standards that it is possible to make not only correction of an error
after registration but also correction of an error or mistranslation before
registration. At the same time, in order to avoid a confusion derived from a
broader interpretation of the applicant, it is requested to provide examples toshow what degree of error correction is acceptable in the examination standards.
In addition, at a scene for exercise of a right, restriction of a claim issometimes required within the scope disclosed in the specification. Accordingly,
it is requested to modify a provision to allow restriction of a claim within the scope
disclosed in the specification after registration.
Section 29: Licensing of patent rightA record to an examiner is required, but it is requested to modify a provision
not to require such a record. It is considered that such a record is not necessary
as long as there exists a (licensing) contract between parties.
Others:(1) Adoption of system for withdrawal of patent application before
publication
In relation with manufacturing development, sometimes it is found after thefiling that a trade secret is included in a patent application; or an applicant wants- 5 -to avoid publication of the patent application due to a policy change of business.
However, even when the draft revision of the Patent Act is reviewed, it does
not include a provision that allows withdrawal of a patent application.
Therefore, it is requested to include a provision allowing withdrawal of apatent application in the Patent Act.
(2) Adoption of system of term extension of patent right
The draft revision of the Patent Act fails to adopt a system of term extensionof a patent right.
However, particularly in the field of pharmaceuticals, agrochemicals or the
like, a long period for collection of experimental data and examination thereon isneeded for a permission based on the governmental laws and regulations forguarantee of the safety, etc.; and thus it is impossible to enjoy a benefit resulting
from an exclusive right even when a patent right continues for that period. Then,the problem is that a period of the patent corresponding to that period is useless.
These laws and regulations are necessary, but as a result thereof, a benefit
originally obtainable during the period of a patent is reduced by the periodrequired to satisfy the laws and regulations.
Therefore, with respect to working of a patent invention, which requires aconsiderable period to satisfy the laws for guarantee of the safety, etc., it isrequested to provide a system that allows registration of an extension of the termof a patent right while limiting the extension to a certain length in a case where
there is a period in which the patent invention cannot be worked.
(3) Introduction of provision for indirect infringement
We are grateful that Sections 25 and 26 of the draft revision of the Patent Act
stipulate details on prohibited acts by parties other than a patentee. However, if
the 1979 Patent Act and Sections 25 and 26 of the draft revision of the Patent Act
refer to the working of a patent invention as the working of the constitution as awhole of the patent invention, the working of part of the patent invention is notregarded as infringement of the patent right.
This would cause the following disadvantages.
(i) If there is a party that does not infringe a patent but conducts a so-called
preliminary act highly likely to infringe when the party is left as it is, this act
cannot be prohibited.
(ii) infringement of a patent right is constituted by a requirement wherein the- 6 -working of a patent is carried out with the purpose of production, etc., andthus it is interpreted that none of those capable of only partial production or
final assembly as an individual or at home, for example, a manufacturer ofparts finally used for assembling, are responsible for infringement.
If these acts are not effectively prohibited, the effect of a patent right isdiminished.
To prevent such a case, it is requested to clearly stipulate that these acts(indirect infringement) be infringement of a right in the Patent Act.
(4) Abolition of authentication system (power of attorney)
Even when the draft revision of the Patent Act is reviewed, authorization of apower of attorney is still required (Section 17 of the 1979 Patent Act, Section 21,
No. 13 of the ministerial regulations in 1999 based on the provision of the revised
Patent Act in 1999). Although a burden is necessary for the authorization
procedure, companies hardly utilize it; and thus it is requested that authorization
is not required for a power of attorney.

- 7 -Comments on Draft Revision of the Thai Patent Act (2)Section 3: Modification of contents on the definition of "Design"
We appreciate the introduction of a partial design system in which a partial
scope is defined as a right.
On a worldwide basis, the number of countries that have introduced a partial
design system is increasing. Considering that about 40% of design applications
is for partial design in Japan, there are many demands therefor from users; andit is considered that there are high needs for introduction of a partial design
system. We are deeply grateful that users' needs are appropriately reflected in
the draft revision.
Section 57(2): Exceptions to publicly known designs
We appreciate the expansion of cases where exceptions to lack of novelty
are applied.
Section 60/4: Introduction of related design system
We appreciate the introduction of the system. In the process of design
development, a plurality of products are sometimes designed based on acommon concept, and the introduction of a related design system that cancomprehensively protect these products as a "group" is a system that users havedefinitely desired. We are deeply grateful that the users' demand is taken into
consideration and reflected in the draft revision.
Meanwhile, a further extension of a period for which a related design can be
filed is demanded. In the design development, model changes are often carriedout by adding a modification to a design little by little depending on a market trend
after development of a product. If there is a restriction on the period for filing,that is "within 6 months from the filing of a principal design or before thepublication of the principal design," it is difficult to file a design including a minor
model change as a related design. It is considered that the restriction of before
the publication of the principal design should be removed and a term of 6 months
from the filing should be extended at least 2 to 3 years.
Section 60/7: Introduction of a system not to publicize an application for a certain
periodWe appreciated the introduction of the system. After the filing of a design,- 8 -public announcement of a product is sometimes delayed for a business reason;and in this case the design would be publicized earlier than the publicannouncement of the product depending on the term of delay. Therefore, theintroduction of a system not to publicize an application for a certain period is asystem that users have desired. We are deeply grateful that the users' demandis taken into consideration and reflected in the draft revision.
However, because the certain extendable period is unclear, it is requested toclarify it. In Japan, a secret design system allows publication to be extended to
36 months after registration, and thus it is requested to clearly stipulate anequivalent period therefor in the section.
In addition, it is also requested that an extension can be withdrawn. Even
when a request for extension on a design is made once, the design is sometimes
brought into a situation where early acquisition of a right is needed for a reason
such as changing of a public announcement schedule of a product or finding of acounterfeit. Considering that countries or regions such as Japan or Europe thathave introduced a system for delaying publication permit a procedure forwithdrawal of an extension, it is requested to introduce the withdrawal of an
extension together with the extension request.
In addition, it is also requested to issue a publication after registration in the
future although only "publication of an application" is available at present in yourcountry. For a case where the contents of an application are amended in theprocess of substantive examination or opposition after publication of theapplication, it may be impossible to accurately understand a right only from thepublication of the application. In such a case, issuance of a publication of aregistered design including amended contents is desired.
Section 62: Term of right
We appreciate that the term of a right is extended to 15 years. However, inconsideration of the actual circumstance where there are an increasing numberof products that penetrate their brands by continuous use of a product design fora long term, a much longer term of a right is demanded. Based on the fact thata maximum of 25 years is permitted for the term of a right in Europe, Japan or
the like, a further extension of the term of a right is requested in your country.
Sections 65/1, 65/2, 65/3, 65/4, 65/5, 65/6, 65/7, 65/8, 65/9, 65/10 and 65/11:
International registration of industrial designs based on Hague Agreement- 9 -We appreciate that your country participates in Hague Agreement. The
number of member countries of the Hague Agreement is increasing, and many
merits such as improvement of efficiency in filing procedures or cost reduction in
managing rights will be enjoyed by users that file applications in many countries
and regions including your country.
Others: Early granting
The period required from filing of a design application to granting thereof inyour country is about 4 years (according to JETRO's survey in 2014), and it isrelatively long; and thus it is requested to shorten the period up to granting. A
longer period from the filing to the granting would shorten the period for
substantial use of a right and cause difficulty in substantially protecting a productwith a short life cycle; and these bring disadvantageous situations to right holders
and they are not desirous to users. Although not listed in the contents of thepresent draft revision, it is requested to consider the abolition of a system of
publication of unexamined applications and a system for opposition, and theintroduction of an accelerated examination system in the long term in order tocontribute to earlier establishment of rights.
END- 10 -