This is the seventh post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order). Our first six posts examining divisional practice in Brazil, Mexico, China, India, Argentina and Canada and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina and Divisional Practice – Canada.
Time Periods for filing a Divisional Application
In Thailand, the filing of a divisional application is governed by Section 26 of the Thai Patent Act B.E. 2522 as amended by the Patent Act (No.3) B.E. 2542 (Act), which states:
Section 26. In examining a patent application, if it appears to the competent official that the patent application involves several inventions which are not so linked as to form a single inventive concept, the competent official shall give a notification to the applicant to divide the application into several divisional applications, each of which relates to a single invention.
If the applicant files any of the divisional applications according to paragraph one within one hundred and twenty days from the date of receipt of the notification from the competent official, the applicant shall be deemed to have filed such divisional application on the date of filing of his initial application.
The division of the application shall be in accordance with the rules and procedures prescribed in the Ministerial Regulations.
In the case where the applicant does not agree with the order of the competent official, the applicant shall appeal to the Director General within one hundred and twenty days. Once the Director General has made a decision, the decision of the Director General shall be final.
Unlike many other countries, according to Section 26 of the Act, the filing of a voluntary divisional application is not permitted in Thailand. Instead, a divisional application can only be filed if an Examiner believes that the application claims multiple inventions which are not linked to form a single inventive concept. In other words, a divisional application can only be filed when an Examiner raises a “lack of unity” rejection. Typically, what occurs is that during the examination stage, the Examiner simultaneously issues two Office Actions. The first Office Action contains a lack of unity rejection that requires the Applicant to elect only a single (one) invention for prosecution. The second (simultaneously issued) Office Action, which is sent together with the first Office Action, requires the Applicant to file one or more divisional application(s) for any non-elected inventions. The Applicant is required to file any such divisional applications within 120 days following the date of receipt of the Examiner’s instructions. The filing of a divisional application beyond the 120-day time limit is not possible (e.g., any such divisional application filed will be rejected). In the event the Applicant files one or more divisional applications in response to the Examiner’s instructions, any such divisional applications are deemed to have been filed on the date of filing of the initial parent application. Because divisional applications are filed in response to a lack of unity rejection, double patenting issues generally do not arise in Thailand.
Requirements for Filing a Divisional Application
The filing of a divisional application is treated as a filing of a new patent application, thus all applicable fees, professional and official, for filing a new application, including any amendment fee, priority fee, etc. are required. However, new documentation is not required. In other words, copies of the Power of Attorney, Deed of Assignment and certified priority documents from the initial parent application can be used. Additionally, divisional applications are examined for both formality and patentability requirements. Thus, during examination, an Examiner applies the same rules regarding lack of unity with respect to an application claiming multiple inventions which are not linked to form a single inventive concept (i.e., regardless of whether the application being examined is a divisional application or an originally filed application). Additionally, the term of any divisional application is calculated based on the term of the original parent application.
The current Act is silent on whether a divisional application can be filed only off of an original (parent) applications only, or a pending divisional application. Because the Act does not contain a specific provision prohibiting the filing of a further divisional application off of an already existing divisional application, an Applicant may do so (but, as mentioned previously herein, only upon receipt of instructions from the Examiner).
Future Changes to Divisional Practice
We are pleased to report that changes to the procedures and rules regarding the filing of divisional applications are expected in the next amendment of the Thai Patent Act B.E. 2542. Under the current draft amendment, voluntary filing of divisional applications will finally become possible. Additionally, under the draft amendment, the filing of one or more divisional applications in response to an Examiner’s instructions will remain available, however, the time period for filing such a divisional application will be shortened from 120 days under the current law to 90 days. The draft amendment has undergone a public hearing and is currently being reviewed by the Office of the Council of State. Unfortunately, we do not have any clear indication when the amendment may pass into law, and the expectation is that it may take some quite time. Please continue to watch BRICS & Beyond for updates on when the draft patent amendment might pass into law.
This post was written by Lisa Mueller and Prateep Naboriboon of Satyapon & Partners Limited.