On 1 January 2014, the Japan Patent Office (JPO) and Thailand Department of Intellectual Property (DIP) commenced a Patent Prosecution Highway (PPH) pilot program to expedite the patent examination procedure in Thailand. This is the first for Thailand to join a PPH program with a foreign patent office and the 4th ASEAN country having a PPH agreement with the JPO after Singapore, the Philippines and Indonesia.

The PPH is a bilateral agreement between two offices providing patent applicants with an alternative route to fast track the acquisition of a patent in a participating patent office with the utilization of the search and examination results obtained in another patent office. Particularly, the PPH enables a patent application whose claims have been determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon a request from an applicant.

The PPH pilot program between the JPO and the DIP will be in effect for two years starting from 1 January 2014 until 31 December 2015. The duration of this program may be extended after review and assessment of its impact and implementation.

This PPH pilot program may be requested using the national work products from the JPO or from the DIP.

Requirements

  1. PPH Using the National Work Products from the DIP

An applicant can file a request for an accelerated examination under the PPH pilot program with the JPO by filing a request form, “The Explanation of Circumstances Concerning Accelerated Examination.”

For patent applications filed with the JPO, the requirements are as follows:

  • The JPO application (including a PCT national phase application) is:
  1. an application which validly claims priority to a DIP application under the Paris Convention (Figure 1);
  2. a PCT national phase application without priority claim (Figure 2); or
  3. an application which validly claims priority under the Paris Convention to the PCT application which has no priority claim (Figure 3).

The JPO application, which validly claims priority to multiple DIP or direct PCT applications, or which is a divisional application validly based on the originally filed application that is included in (a) to (c) above, is also eligible.

  • At least one corresponding application exists in the DIP and has one or more claims that are determined to be patentable/allowable by the DIP.
  • All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more claims indicated as allowable in the DIP.
  • The JPO has not begun examination of the application at the time of request for the PPH.
  • A request for substantive examination must have been filed at the JPO either at the time of the PPH request or previously.

Required Documents

The following documents are required to be submitted along with the request for PPH:

  • Copies of all office actions issued for the corresponding application by the DIP and their Japanese or English translation
  • Copies of all claims determined to be patentable/allowable by the DIP and their Japanese or English translation
  • Copies of references cited by the DIP examiner
  • Claim correspondence table

Click here to view table

Click here to view table

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  1. PPH using the National Work Products from the JPO

When filing a request for the PPH pilot program, the applicant must submit a request form with the DIP.

For patent applications filed with the DIP, the applicable rules and requirements are as follows:

  • The DIP application (including a PCT national phase application) is:
  1. an application which validly claims priority under the Paris Convention to a JPO application (Figure 4);
  2. a PCT national phase application without priority claim (Figure 5); or
  3. an application which validly claims priority under the Paris Convention to the PCT application without priority claim (Figure 6).

The DIP application, which validly claims priority to multiple JPO or direct PCT applications, or which is a divisional application validly based on the originally filed application that is included in (a) to (c) above, is also eligible.

  • At least one corresponding application exists in the JPO and has one or more claims that are determined to be patentable/allowable by the JPO.
  • All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the JPO.
  • The DIP has not begun examination of the application at the time of request for the PPH.
  • A request for substantive examination must have been filed at the DIP either at the time of the PPH request or previously.

Required Documents

The following are the required documents to be submitted along with the request for PPH:

  • Copies of all office actions (which are relevant in determining patentability of the application in the JPO) issued for the corresponding application by the JPO and their Thai or English translation
  • Copies of all claims determined to be patentable/allowable by the JPO and their Thai or English translation
  • Copies of references cited by the JPO examiner
  • Claim correspondence table

Click here to view table

Click here to view table

Click here to view table

Conclusion

The examination process of patent applications in Thailand normally takes between 5 to 8 years. The PPH pilot program aims to provide a cheap alternative route to speed up the examination process in Thailand. With an enhanced patent examination system in place, it will be no surprise if the number of patent applications in Thailand will rise in the near future.