Introduction
Translation requirement
Risks of late submissions
Comment
Thailand acceded to the Patent Cooperation Treaty (PCT) on December 24 2009. Following the introduction of Regulation BE 2552 (October 30 2009) of the Ministry of Commerce on filing patent applications for inventions under the PCT, PCT international applications and national phase entries can now be filed with the Patent Office. The regulation details the procedures and the documents required for filing PCT international applications and their associated national phase entries in Thailand.
For PCT international applications filed on or after December 24 2009, their national phase entries can be filed in Thailand with the Patent Office without much difficulty, with one exception.
Clause 22 of the regulation provides that:
"If an applicant who has filed an international application in a PCT member state wishes to request protection for the invention in Thailand, the applicant shall file an application with the Department of Intellectual Property in the form prescribed by the Director-General together with a Thai translation of the international application and pay the prescribed filing fees within thirty months of the priority filing date.
In case the applicant fails to proceed within the time limit prescribed in the first paragraph, it shall be deemed that the said international application has no force and effect in Thailand."
The national phase application in the Thai language and the Thai translations of the PCT request - including the specification, claims, abstract and drawings of the invention - must therefore both be filed with the Patent Office within 30 months of the priority filing date (ie, the first local filing date). Otherwise, the PCT international application will not be protected in Thailand even if Thailand has been selected as one of the countries for protection in the international application.
Preparing full Thai translations of the PCT request documents takes time. While some applicants may still wait to instruct patent agents to enter their national phase entry until a few days before the end of the 30-month period, this approach is risky. Late filings of Thai translations of the PCT request documents are not permitted under Clause 22 of the regulation. If a national phase application is filed without full Thai translations of the PCT request documents, in future any interested party may question the validity of the national phase entry on the grounds that its filing did not fully comply with Clause 22 of the regulation.
All parties concerned are aware of the practical risk created by Clause 22 of the regulation, but efforts and procedures to amend or repeal it can take a long time. In addition, Thailand had a general election in June 2011 and the new cabinet was formed only a few weeks ago. To mitigate this practical risk, relevant instructions and the PCT request documents for national phase entry in Thailand should be given to a patent agent as soon as possible.
For further information on this topic please contact Kowit Somwaiya or Prasantaya Bantadtan at LawPlus Ltd by telephone (+66 2 636 0662), fax (+66 2 636 0663) or email ([email protected] or [email protected]).