The Thai Patents Act provides that an Applicant has the right to make amendments to the claims after the patent application has been submitted to the Department of Intellectual Property (DIP). AnyThe amendments made must be in accordance to the Ministerial Regulation issued by virtue of Section 20 of the Thai Patents Act. The SectionIt states that an applicant may amend his claim before publication, or submit his claim to the Director General of the DIP for his approval of the claim amendments provided that the amendments do not extendenlarge beyond the scope of the invention as filed.
Thai Patent Act provides that the applicant has right to amend his Claim after submitting an application; however, the amendment must be in accordance to the Ministerial Regulation which issued by virtue of section 20 of Thai Patent Act. The applicant may amend his claim before publication, or submit a claim to Director General of Patent Office for permitting amendment application. And the amendment cannot enlarge the scope of invention.
In the case thatwhen the proposed amendmentsclaim is are unreasonably rejected, the appropriation solutionapplicantacceptable course of action can file a complaint withat the IP Court against the DIP's Director General's order. Even the
Case in Point
The Thai Supreme (Dika) Court Ddecision (Dika) 3296/2549 - the applicant has filed a patent application for a process patent for a pharmaceutical product. The Thai Patents Act was amendedin 1992 as amended in 1992, Thai Patentallows the applicant to claims forpatentover the pharmaceutical products itself. As such, Tthe applicant appliedwish to amend the application to cover the such product. He requested for an amendment to be made to the claims. However, the Director General rejected the request. rejected his request The applicantHe then submitted a new patent application to amend the previous application. The new patent application is was also rejected, because to the invention was considered as having ha s been disclosed by the previousin another application (the previous application). The applicant subsequentlythen appealed to the Supreme (Dika) cCourt in order to challenginge the Examiner's order to reject the new patent application. The applicant argued that the new patent application wasis for the amendment of the previous application, and be withhe hads the right to amend the application under Section 70(7) of TRIPS Agreement.
The Thai Supreme (Dika) Ccourt decided that, after the submission of a submitting patent application and before its publication, the applicant has the right to amend the patent application, but the amendment mustshall not extendenlarge the scope of the invention. How ever, after publication, the applicant may submit a request to the Director General for permitting anythe amendments. If the request is unreasonablye rejected, the applicant could legally challenge the Director General's order, for the reason that the order has affected his right under the Thai Procedure Code. If the applicant cannot provide enough evidence to prove that the Director General's order is unreasonable, the Director General's order would remainnot be revoked.
Submitting a new application for amendment of the previous application does not constitute valid grounds.
The decision also mention that, under article 70(7) of TRIPS agreement onlyjust specifiesy that the member state is required to allow the pending application to be amended, however the member state is not bound to grant the amendment. The Thai Patents Act thus conforms to the TRIPS provision. The applicant is allowed to amend the patent application within the scope of invention under Section 20. However, the amendment mustshall be in accordance withto the Thai Patents Act.
