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Thailand – Claim Amendment under the Thai Patents Act

The scope of protection of an invention is defined by its patent claims in the patent. The applicant should therefore ensure that his invention is properly described and comprehensively claimed, in order for the applicant’s rights to be well protected. Consequently, the applicant shall take all necessary actions to amend the claim(s) in the earliest as soon as possible if should he finds that the claim(s) is/are no longer in line with the commercial value of his invention purpose.

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). Any amendments made must be in accordance to the Ministerial Regulation issued by virtue of Section 20 of the Thai Patents Act. The Section 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 extend  / enlarge 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 that when the proposed amendments claim is are unreasonably rejected, the appropriation solution applicant acceptable course of action can file a complaint with at the IP Court against the DIP’s Director General’s order.

Case in Point

The Thai Supreme (Dika) Court Decision (Dika) 3296/2549 – the applicant has filed a patent application for a process patent for a pharmaceutical product. The Thai Patents Act was amended in 1992, Thai Patent allows the applicant to claims for patent over the pharmaceutical products itself. As such, the applicant applied wish 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. The applicant 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 has been disclosed by the previous in another application (the previous application). The applicant subsequently then appealed to the Supreme (Dika) court in order to challenging the Examiner’s order to reject the new patent application. The applicant argued that the new patent application was for the amendment of the previous application, and be within the right to amend the application under Section 70(7) of TRIPS Agreement.

The Thai Supreme (Dika) Court 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 must/shall not extend/enlarge the scope of the invention. However, after publication, the applicant may submit a request to the Director General for permitting any of the amendments. If the request is unreasonably 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 remain not 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 only just specifies 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 must/shall be in accordance with to the Thai Patents Act.

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