The Thai Government is considering plans to expedite patent examination in Thailand and help clear the country’s backlog of patent applications.
As of October 2016, the Thai Patent Office was still examining patent applications filed in 1998. Although the Department of Intellectual Property (DIP) earlier initiated plans to increase the number of patent examiners, the 36,000 currently pending patent applications pose a serious obstacle to the country’s technological and economic development, as well as the ability of patent owners to protect and enforce their patents.
The Ministry of Commerce and the National Council for Peace and Order (NCPO) have been discussing a plan to create an effective backlog-clearing strategy.
The possibility of expedited patent examination would present a welcome measure to counteract the excessive delays in the patent registration process.
The proposed procedure has the following elements:
- A work sharing-style measure, where Thai patent applications with claims conforming to corresponding patents already granted in Australia, China, the EU (by the EPO), Japan, South Korea and the USA, would be fast-tracked to registration in Thailand.
- The Thai Patent Office would still undertake novelty and inventive step examinations.
- Applications that have been pending for over 5 years and that have cleared formalities examination will be eligible for this expedited examination process. The applicant must file the request for substantive examination within 3 months from the date on which the expedited régime enters into force.
- Within 1 year since the patent has been granted through this expedited process, there would be a possibility for third parties to request re-examination of the patent application by the Patent Board. Such retrospective examination is not a process currently applied in Thailand, and it is still unclear what the effect of the Board’s decision will be or how the applicant may respond in case of a negative decision.
Currently, there are approximately 12,000 patent applications pending for 5 years or more. Although it appears that a large number of patent applications may benefit from the potential expedited process, conditions for expedited eligibility have not yet been decided. Further procedural details still need to be established.
However, it is not expected these details will be resolved quickly as the plan, once announced, was met with opposition from various stakeholders. For example, there have been concerns raised by certain stakeholders who are concerned that expedited examination could open up a large loophole for evergreening pharmaceutical patents.
Public discussions to be held
In view of the scale of opposition, the Ministry plans to proceed with discussion forums in mid-2017 so that the public, as well as the specialized industrial and legal sectors, will have the opportunity to express their views and suggestions.