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Thailand Patent Registry Set to Enforce Modified Examination Regime for Greater Efficiency

Throughout 2017 so far, the government in Thailand has been signalling its intention to revamp the country’s patent system to provide a more efficient standard of service to applicants and inventors.

In February, Prime Minister Prayut Chan-O Cha pledged to urgently deal with a problem: around 20,000 domestic and international patent applications made to the Department of Intellectual Property (DIP) were still awaiting decision. After holding a meeting of key stakeholders in government bodies including the DIP and those in the food, health, pharmaceuticals, technology and trade industries, the government announced its intention to issue a Section 44 order focused upon speeding up all patent examination.

Section 44 is a decree of ultimate authority, empowering the PM to issue any order for the sake of, amongst other things, ‘suppression of any act detrimental to … national economy or public administration’. Despite the Thai people voting on a new constitution which has been enshrined into law in April 2017, Section 44 from the Interim Constitution of 2014 will remain in force at least until a new government is elected, which is expected to be in mid-2018.

The solution that is set to be enforced by the Section 44 order is termed ‘modified examination’. Under this new system, the DIP predicts that the time taken to carry out examination of applications will be cut in half when compared to the current examination procedure. At present, about 20,000 patent applications in Thailand are unexamined. It is the DIP’s hope that under this scheme, around 12,000 of these applications will proceed to grant within three months.

To apply for modified examination, an applicant must have either: filed an application with the DIP over five years ago, but not yet have been published, or: requested a substantive examination at the DIP over five years before the Section 44 order was announced.

To be applicable for modified examination, the corresponding patent must have been granted in Europe, USA, Japan, China, Korea or Australia – the six current International Searching Authorities (ISAs) and International Preliminary Examination Authorities (IPEAs) currently recognised by the DIP (as mentioned below, Singapore is set to become the seventh on this list).

The DIP is set to provide a new application form for modified examinations. After the Section 44 announcement has been made, applicants will have a fixed period of three months to submit requests for modified examination. There will not be an official fee in relation to these requests.

The Section 44 order announcement is expected to come before the end of 2017 – therefore patent holders with outstanding applications must be vigilant in order to process their matters more swiftly using the Thai Government’s new initiative. The invocation of Section 44 to boost the efficiency of Thailand’s intellectual property prosecution shows that the authorities are becoming ever more seriously focused upon rapid improvement of enforcement of IPRs.

Another step that has been taken towards improving the efficiency of the Thai patent system is the 2-year extension of the Patent Prosecution Highway Pilot Program (PPH Pilot Program) between the DIP and the Japanese Patent Office (JPO) until December 2017. The PPH Pilot Program involves the collaboration between DIP and JPO to expedite the patent examination process of Thai applications by relying on corresponding Japanese applications. Having proven effective so far, it is expected that the PPH Pilot Program will be further extended or perhaps evolved into an official, fully-fledged agreement. The success of the said program could also prove to be the trigger for possible future collaborations with other major patent offices such as the European Patent Office (EPO).

Further, another avenue for acceleration of the patent examination process in Thailand is via ASEAN cooperation. In addition to the Thailand’s participation in the  ASEAN Patent Examination Cooperation (ASPEC) Program, ASEAN cooperation in the patent sphere is set to be further boosted in June 2017 with the expected DIP announcement to recognise the Intellectual Property Office of Singapore (IPOS) as a competent International Searching Authority (ISA) and International Preliminary Examination Authority (IPEA) for PCT applications filed with the DIP or International Bureau of the World Intellectual Property Organisation (WIPO) as the receiving Office.

IPOS was the first national registry office in the ASEAN community to be granted ISA/IPEA status in 2014. With the Intellectual Property Office of the Philippines (IPOPHL) also expected to be appointed an ISA/IPEA in October 2017 (the 2nd in ASEAN and 23rd globally), this year is set to be a strong one for South East Asian regional integration in intellectual property.

The combination of the above international initiatives displays the Thai Government’s might to address the pressing issue of reducing the period of pendency of Thai patent applications. It is hoped that such efforts will boost investor confidence, with proprietors of IP expecting serious progress in this area, moving forward in 2017.

By Gladys Mirandah and Hilmi Bin Zaini