Answer ... Thai law does not authorise the Patent Office or any administrative body to revoke invalid patents. Patents may be cancelled by court order only.

Answer ... As per Section 54 of the Patent Act, any person or the public prosecutor may file a petition to the Central Intellectual Property and International Trade (IPIT) Court to challenge the validity of a granted patent.

Answer ... In accordance with the Patent Act, an invalidation action may be brought if:

• the patent is not new;
• the patent does not involve an inventive step;
• the patent is incapable of industrial application;
• the patent is directed to non-patentable subject matter (ie, naturally occurring micro-organisms and their components; plants or animals, or extracts of plants or animals; scientific or mathematical principles or theories; computer programs; methods of diagnosis or treatment for animal or human diseases; and anything that is contrary to public order, morals, health or safety);
• there are named inventor issues; or
• there are unqualified application issues.

Thailand has yet to see a judgment acknowledging lack of unity, lack of enablement or improper prosecution as sufficient grounds for patent invalidation.

Also, and unlike in other countries, the current Thai law does not foresee the possibility to invalidate a patent due to insufficient disclosure, unlawful amendment, fraud or anti-competitive practice.

Answer ... There is no evidentiary standard set out in Thai law in relation to invalidation or cancellation proceedings. Each party may submit technical evidence if detailed in its respective evidence list, which may include documentary evidence, physical evidence and expert witness reports.

Answer ... Once a patent has been issued, its validity may be challenged as in questions 4.2 and 4.3. There are no other post-grant review or other post-grant procedures.

The validity of an issued patent may be challenged at any time during its term or after through either invalidation proceedings or a counterclaim in an infringement lawsuit.

There is no time limit for an application for revocation of the patent and there are two grounds for revocation:

• The patent was issued for an invention which does not truly satisfy the criteria of patentability; or
• The patent holder was not entitled to apply for the patent.

Answer ... It is not possible in Thailand to oppose a granted patent; only invalidity proceedings are available post-grant.

Answer ... The Patent Act provides only for pre-grant opposition of a patent application. Within 90 days of publication of the patent application (following the formality examination), anyone that believes it has a stronger right to the patent than the applicant or that the application does not comply with Section 5 (patentability criteria), Section 9 (unpatentable subject matter), Section 10 (designation of true inventor), Section 11 (right to apply for patent) or Section 14 (patent holder’s qualifications to apply for a patent) of the Patent Act may file an opposition with the patent examiner.

Answer ... There are five grounds to file an opposition under Thai law, as per the five sections outlined in question 4.7:

• The invention to which the patent relates does not satisfy the criteria of patentability (novelty, inventive step and industrial applicability);
• The subject matter of the patent is unpatentable;
• The applicant is not entitled to apply for the patent;
• The opposing party has a stronger right to apply for the patent; or
• The applicant does not meet the criteria to qualify to apply for a patent – that is:
• • being a Thai national or a legal person with its head office
  • in Thailand;
  • being a national of a country which is a party to a convention or an
  • international agreement concerning patent protection to which Thailand is also a party;
  • being a national of a country which allows a Thai national or a legal
  • person with its head office located in Thailand to apply for a patent in that country; or
  • having a domicile or a real and effective industrial or commercial establishment in Thailand or in a country which is a party to a convention or an international agreement concerning patent protection to which Thailand is a party.

Answer ... Once an opposition has been filed, it is notified to the applicant, which must file a counterstatement within 90 days. If the applicant fails to file such counterstatement, the application is deemed abandoned. Evidence may be submitted by the opposing party and the applicant, and a decision is then communicated to both parties by the director general of the Department of Intellectual Property. This decision may be appealed to the IPIT Court within 180 days.

If the opposition is successful and the opposing party is granted the right to apply for the patent, its application will be deemed as filed on same day as the applicant’s opposed patent.

Answer ... The legal standards regarding opposition proceedings are the Patent Act and the Patent Act Regulations. The burden of proof rests with the opposing party.

Answer ... A post-grant invalidation decision of the IPIT Court may be appealed before the IPIT Court of Appeal and may be further appealed before the Thai Supreme Court (final level of jurisdiction).