The Utility Model : A New Form of Protection For Minor Inventions

By Fabrice Mattei

The Patent Act B.E. 2522 (1979), amended by the Patent Act B.E. 2535 (1992), was, after years of consideration, revised to comply with the TRIPS Agreement. Finally, the draft amendment was approved by the Parliament and published in the Royal Gazette on 31 March 1999 and entered into force on 27 September 1999. One of the most significant changes is the introduction of utility models :

"The introduction of utility model is a deliberate attempt to boost the degree of research and development of technology in the country (Thailand)"

This article briefly reviews how to register utility models in Thailand.

1. WHY UTILITY MODELS ?

Thai patent law covers three kinds of patents. These are : patents for inventions; design patents; and a new type of industrial property right: utility models known as "petty patents".

The idea of utility model is to bridge the gap between patent and design protections. Indeed, many technical creations involve a contribution of minor additions to existing technology but do not comply with higher criteria of inventiveness that may be required to be patented.

Of the three, utility models are likely to play an important role in Thai patent system. One of the major reasons for this might be that utility models do not go through substantive examination and the criterion of inventiveness is lower than for patents for inventions. However, the lack of substantive examination might result in multiple grants for identical inventions and conflicts between industrial property right owners.

2. CRITERION OF REGISTRATION

An invention is eligible for registration as a utility model if it is new and has industrial applicability.

Novelty Requirement

A new invention is an "invention which is not a work already shown to be in existence" in or outside of Thailand. To get a strong patent for utility model, it is preferable to have a pre-filing novelty search to ensure that the patent stands firm against any possible post-grant challenge to the validity of the patent in respect of novelty.

Industrial Application

The Patent Act 1979 as amended by the Patent Act 1999 defines "industrially applicable invention" as one which can be used in industrial production, including handicrafts, agriculture as well as commerce.

Inventiveness

Unlike patentable inventions, there is no need, for utility model protection, to prove prominent substantive feature and notable progress to existing technology.

3. FILING A UTILITY MODEL APPLICATION

Utility model protection does not arise automatically when a technical creation is made. Indeed, the inventor must apply for utility model registration to the Department of Intellectual Property. Application forms must contain certain documents such as :

- Title of the proposed utility model;

- Features of the proposed utility model

- Purpose of the proposed utility model

- other features as prescribed by Ministerial regulation.

4. EXAMINATION PROCEDURE

Under the amended Patent Law, applications for utility models do not go through substantive examination. A utility model is granted if no cause for rejection is found after preliminary examination. So, by means of a challenging mechanism, "cross-examination", patentability is checked.

Preliminary Examination

The grant of a utility model is subject to a preliminary examination which covers the formalities of the application and whether the technical creation belongs to a category of prohibited inventions for which protection cannot be granted such as: biotechnology inventions which exist in nature, scientific rules, mathematics theories, and computer programs. Examinations regarding the criteria of patentability are not conducted and the time taken to grant a utility model is thus much shorter than for patent for inventions. Applications for utility models are granted at the applicant's risk. So, by means of a challenging mechanism, "cross-examination", the patentability of utility model is checked.

Cross-examination

The cross-examination of a utility model may take place after its publication in the patent gazette. Accordingly, the competent official will carry out the examination only when an interested person has filed a request for examination within one year from the publication date. This cross-examination can only be requested on the grounds that a utility model patent does not fulfil patentability conditions which are referred above. The cross-examination procedures end at the Intellectual Property and International Trade Court ("CIPITC"). Consequently, decisions made by the Director General of the "DIP" concerning validity of a utility model can be challenged in court.

5.THIRD PARTY's COUNTERCLAIMS

Any person can file a claim of invalidity, against a utility model if the invention for which the utility model registration has already been patented.

6. PROTECTION TERM

The term of a utility model lasts for six years from the date of application, with possibility of its extension for up to four years (2 renewals for a period of two years each).

FM Industrial Property Research Institute , University of Paris II - 1999