Design patent registration

         Design patent is a creative work concerning the physical appearance of a product which is different from usual products and must be a new design for industry or craftwork. It is a design which has not been widely spread in the country or its substance or detail has not been revealed in any document or printed media prior to the patent application date and it must not be similar to any existing products.

Submission of application

          The applicant shall file the application for the design patent and pay the fee to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or file the application with supporting documents via registered mail to Design Office, Department of Intellectual Property.

Conditions of application submission

1.    Accurate application and supporting documents

1.1  The application is filled accurately, clearly and completely as prescribed in the form

1) Type the details in the form

In case the applicant has filed the application for the design patent in a foreign country may claim the first foreign filing date as the filing date in the country if the application is filed in the country within six months following the first filing date in the foreign country.

2) Affix the signature of the applicant or patent agent/patent attorney (In case of authorization) registered with the Director-General of the Department of Intellectual Property.

1.2  Type the claim for the design patent in accordance with the product picture.

1.3  The picture of design applied for the protection can be demonstrated by Drawing or  Photograph. The picture must clearly show the physical appearance of the product from all aspects in accordance with the drawing principles.

1.4  Statement of Applicant’s Right to Apply for a Patent (Form P1/PD/PP/001-2 Add)

1.5  Right transferring letter: In case the applicant is not the work creator, the right transferring letter shall be an evidence of ownership.

1.6  ID card of the applicant

1) In case of a natural person, the applicant shall submit a copy of national ID card or other ID issued by a governmental office.

2) In case of a juristic person, the applicant shall submit the latest Certificate of Juristic Person issued not more than 6 months, with certification of an authorized person according to the laws.

2.    Authorization

         In case of application submission by the representative or patent agent/patent attorney, the representative or patent agent/patent attorney must be registered with the Director-General of the Department of Intellectual Property. The application submitter shall attach a copy of authorization letter or power of attorney with the revenue stamp of 30 Baht per patent agent/patent attorney and a copy of ID card of representative or patent agent/patent attorney.

2.1  In case the applicant of the patent does not reside in the Kingdom of Thailand, he shall authorize the patent agent/patent attorney registered with the Director-General of the Department of Intellectual Property to act on his behalf. In this regard, the power of attorney shall be presented to the Director-General in accordance with the following regulations;

1)  If the authorization is done in a foreign country, the signatures in the authorization letter or power of attorney shall be certified by the authorized official of the Thai embassy or consulate or Director of the office of the Ministry of Commerce located in the country where the principal or power grantor resides, or the person authorized to act on behalf of the said officials or the person authorized to certify the signature according to the law in that country, or

2)  In case the authorization is done in the Kingdom of Thailand, the applicant shall submit a copy of passport or temporary residence certificate of the principal or power grantor, or any evidence indicating that at the time the authorization was made, the principal or power grantor was in Thailand.

2.2  In case the applicant for patent residing in the Kingdom of Thailand wishes to authorize other person to act on his behalf, the patent agent/patent attorney must be registered with the Director-General of the Department of Intellectual Property as an patent agent/patent attorney.

2.3  In case the power of attorney or certification under the item 2.1 is made in foreign language, its Thai translation must be submitted with correct translation certification of the translator and the patent agent/patent attorney in accordance with its original document. The translation must be submitted together with the power of attorney or certification, as the case may be.

Preliminary Examination

The examiner shall inspect and may require the correction, if the examiner deems that the application is not correct as follows;

1.  If the details in the application form for the design patent and supporting documents, such as the title of the designed product, the patent applicant’s name and his contact address in Thailand, the designer’s name and his contact address in Thailand, the name of the patent agent/patent attorney and his contact address in Thailand, are inconsistent with the principles and methods prescribed in the Ministerial Regulations, the examiner shall require the applicant for the correction and re-submission within the timeframe stipulated by the law.

2.  Only one claim for the design patent shall be indicated, by which the applicant shall clearly indicate the scope of right applied for protection in accordance with the product’s picture attached to the application.

3.  The picture of the product applied for protection shall demonstrate the protection scope in terms of features, design or color of such product. The picture shall clearly demonstrate the outside details of the product in all aspects in accordance with the drawing principles to be used as a model in industry or craftwork. The picture of the design applied for the protection can be in the form of drawing or photograph.

3.1  Drawing shall clearly demonstrate the outside details of the product in all aspects and in all 3 dimensions in accordance with the drawing principles.

3.2  Photograph shall clearly demonstrate the outside details of the product in all aspects and in all 3 dimensions. The background in the photograph must be even level. The photograph is demonstrated in black and white. However, if the design is composed of different colors, then the photograph of the product must be in colors.

4.  The examiner shall consider whether the product applied for the patent has special characteristics and can be used as a model for industry and craftwork production or not.

5.  Upon consideration, the examiner may issue an inquiry or ask the applicant to make a statement, submit a written clarification or submit additional documentary evidences related to registration as necessary for examination or consideration.

6.  Preliminary examination process according to the laws;

6.1  Section 65, together with Section 10, 11, 13, 14, 15 is referred to upon examination of application for the patent.

6.2  Section 58 is referred to upon examination of the design which cannot applied for the patent.

6.3  Section 59 and the Ministerial Regulation No. 21 (B.E. 2542) issued under the Patent Act B.E. 2522 and amendment are referred to, by which paragraph 1 of clause 2, paragraph 4 of clause 4, paragraph 1 of clause 7, 9, 12, 13, 14, 15 and 16 concerning patent application are enforced by relents. And section 17, 18, 19, 20 and 22 are referred to upon verification of application documentation for the design patent, comprising the application form, claim, drawing, photograph and supporting documents.

6.4  Section 65, together with section 19, is referred to upon examination of the application submission date.

6.5  Section 65, together with section 22, is referred to upon examination of confidentiality.

6.6  Section 60 (bis) is referred to upon examination of the patent application submission date in a foreign country.

6.7  Application fee, in case of fee exemption according to the Notification of the Department of Intellectual Property

6.8  The application submission date at the provincial office of Ministry of Commerce and application submission via registered mail.

7.  Result of preliminary examination

7.1  In case all documents and picture of the product are correct and complete, the official shall inform the applicant to pay for the publication according to Section 28, paragraph 2.

7.2  In case all documents and picture of the product are not correct or incomplete, the official shall inform the applicant to correct the application according to Section 59.

Application for correction

         In case of request for correction, the applicant shall submit the correction application and pay the fee to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or submit the correction application via registered mail to Design Office, Department of Intellectual Property. Whether the applicant submits the correction according to orders of the official, or submit the correction by himself, he shall submit the correction within the specific time specified by laws (according to the official’s order) and pay the fee for 50 Baht per application.

         - The applicant shall submit the correction within 90 days of the notification reception date. In case the applicant fails to do so, he shall submit the appeal letter to the Director-General of the Department of Intellectual Property. After the specific time period, without an appeal letter, the applicant shall be deemed to have abandoned the application for patent according to Section 27.

Publication

         In case the application passed the examination, the applicant shall pay the fee for patent application publication to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or submit the payment together with the publication fee payment document via registered mail to Design Office, Department of Intellectual Property.

         - In case the applicant does not pay the publication fee within the specific time period of 60 days for the first time (starting from the notification reception date), the Design Office shall issue the notice of the publication fee payment for the second time. The applicant shall pay the fee within the specific time period of 60 days (starting from the notification reception date).

         - If the applicant still does not pay the fee according to the second notice, the Design Office shall dismiss the application according to Section 28 of the Patent Act B.E. 2522 as amended by the Patent Act (No.3) B.E. 2542.

         Opposition : If any person deems that he has the better claim for the patent than the applicant, or deems that the application contradicts Section 5, 9, 10, 11 or 14, he could submit the opposition within 90 days of the publication date according to Section 31.

         Upon the opposition submission, the objector shall submit the opposition (Form 007-Kor) indicating reason(s) of opposition together with the fee and documentary evidences within 90 days of the publication date to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or submit the opposition via registered mail to Design Office, Department of Intellectual Property.

         - The objector could file the application to additionally present the documentary evidences or opposition statement (Form 007-Kor(Phor)) within 30 days of the opposition submission date (In case the applicant wishes to submit the additional documentary evidences in support of the opposition.)

         Argument submission : When the applicant receives the opposition notification, the applicant shall submit the request for filing the counterstatement (Form 008-Kor) with details and documentary evidences (if any) without fee payment within 90 days of the notification reception date to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or submit the request for filing the counterstatement via registered mail to Design Office, Department of Intellectual Property.

         - The applicant for the patent could submit the documentary evidences or the additional argument statement (Form 007-Kor (Phor)) within 30 days of the argument submission date (In case the applicant wishes to submit the additional documentary evidences in support of the argument.)

         Notification of the discretion result : If the objector or the patent owner disagrees with the Director-General’s discretion, he can submit the appeal with documentary evidences and fee to the Patent Committee within 60 days of the notification reception date to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or submit the appeal via registered mail to Design Office, Department of Intellectual Property.

Re-consideration of design

1.  The official shall consider the application after 90 days of the publication date provided that there is no opposition.

2.  In case of opposition and no appeal by the applicant within the specific time, the official shall abandon the application for patent and the discretion shall be deemed as final (no further consideration).

3.  Upon the consideration for registration, the official shall consider the design, especially on the substantial part applied for protection according to the claim, such as features and shape of the product. The design applicable for the registration shall be inspected according to the following laws;

3.1  Section 16 is referred to upon the examination of patent right. The person who firstly filed the application for the patent is entitled to the patent.

3.2  Section 56 is referred to upon the examination of for industry and craftworkapplicability.

3.3  Section 57 is referred to upon the examination of newness.

3.4  Section 60 is referred to upon the examination of each application. Only design used with the product can be applied for the patent.

4.  Based on the Ministerial Regulation No. 22 (B.E. 2542) issued by the virtue of the Patent Act (B.E. 2522), clause 11, the official shall inspect whether the design applied for the patent complies with Section 56 or not. The official shall consider whether the application indicates the substantial content or details in the document or printed material prepared in support for the right examination. The design database prepared for examination is arranged according to categories of designs called Locarno Design Classification. The Department of Intellectual Property of Thailand categorizes designs according to the international standard. It collects design data which attained the patent since 1990 until present. At present, the existing database, either in the form of printed material and computer database, can be searched to inspect the newness of the design applied for the patent.

5.  The examination of the substances is the consideration on the substance of the design applied for the patent, in comparison with the existing products. The examiner shall search for the existing designs of the same category in and outside the country, then compare the products of the similar size and appearance.

5.1  If the examiner finds that the product applied for the patent is not similar to the existing products, the examiner shall propose the acceptance and registration of the product according to Section 56 and issue the notification of registration fee payment.

5.2  If the examiner finds that the product applied for the patent is similar to the existing product(s), the examiner shall propose the application rejection according to Section 57 and issue the notification of rejection to the applicant.

- If the applicant disagrees with the official’s discretion, he may submit an appeal, documentary evidence(s), and fee to the Patent Committee within 60 days of the notification reception date via registered mail to Design Office, Department of Intellectual Property.

Notification issuance

         The applicant shall file the application and pay the fee for the patent registration to the official on the 3^rd floor of the office of Department of Intellectual Property, Ministry of Commerce, or the provincial office of the Ministry of Commerce, or file the application and the fee via registered mail to Design Office, Department of Intellectual Property.

         - If the applicant does not pay the fee and submit the documentary evidences as specified in the notification within 60 days, the applicant shall be deemed to have abandoned the application for patent according to Section 33.

Notes :

         The working process starts after the examination of the documents is completed, as specified in the manual of the public service.

         In case the application or documentary evidence is not correct or incomplete, the official shall record the defect of the document or indicate the required additional documentary evidence (Record of conditions on application reception). The applicant shall correct the document and/or submit the additional document within 90 days of the application submission date. If the applicant fails to submit all additional documents within the specific period of time, the applicant shall be deemed to have abandoned the application for patent. The official shall return the application to the applicant and inform the reason of the return and his appeal right.

         Any fee paid to the Department of Intellectual Property shall not be refunded in all cases, except (1) The law stipulates that the fee must be refunded, or (2) The applicant double-paid or overpaid the fee, by which the faulty payment resulted from the mistake of the state official, not the payer. In this regard, the Department of Intellectual Property shall consider the refund case by case.

         In case the applicant is required to submit many additional documentary evidences, the applicant shall submit all additional documentary evidences in the same time.

         In case the applicant submits the copy of the documentary evidence, the applicant shall certify the copy of the documentary evidence.

         In case the applicant submits the document in foreign language, the applicant shall submit the document with Thai translation and the correct translation certification of the translator.

         In case the applicant (application owner) or the authorized patent agent/patent attorney does not file the application by himself, and granted power to the other person to file the application, the application submitter shall present a sub power of attorney or temporary power of attorney, so that he is eligible to file the application and sign in the record of conditions on application reception. If it appears that the application and the documentary evidence is not correct or incomplete, and the application submitter is not authorized to sign on the said record, the official shall not receive the application.

         In case the applicant submits the application for the design patent, request, or other applications via internet, and it appears that the application is not correct or in complete and the official cannot consider the application, then the applicant shall submit the additional document in the same period when the application for the design patent, request, or other application is submitted via internet to the Department of Intellectual Property (i.e. within 15 days of reception date of application number and the application submission date). The official shall inform the examination result via e-mail which the applicant provided in the following working day.

Relevant laws

• The Patent Act (B.E. 2522) as amended by the Patent Act (No. 2) (B.E. 2535) and the Patent Act (No. 3) (B.E. 2542).