One of the golden wishes of every patent applicant is not only to get their patent granted with a satisfying claims scope, but also to get them granted as quickly as possible. The quicker the application is granted the longer the opportunity they have to utilise their patents. The Thai Patent Office has been noted for taking quite a long time to examine and grant patent applications, with the waiting period approximately 7-10 years from the filing to the patent being granted.
Statistic on patent activities published by the Thailand’s Department of Intellectual Property shows that, from 2017 – 2021, the Thai Patent Office has received an average of 8,065 patent applications per annum, with an average of 3,307 patent applications granted yearly. This means that an average 41% of patent applications are granted with the remaining 59% accumulating in the pile of backlogs each year.
Many factors play a role in causing such delayed examination, either administrative or legislative. Administratively, the number of patent examiners compared with the number of patent applications are relatively off-balance. Currently, there are about 100 patent examiners at the Thai Patent Office. A rough calculation based on the above statistics yields one examiner handling over 200 patent applications per year. Although the Thai Patent Office tries to recruit more patent examiners, it cannot keep up with the growing number of filings.
A legislative trap is another contributing factor causing the delay. For instance, a formality examination includes an examination of subject matter eligibility. Section 28 of the Thai Patent Act B.E. 2522 states that before patent applications are accepted for publications, apart from ensuring the Thai patent specification complies with formality requirements, examiners must delve into the claims to determine subject matter eligibility, which untimely prolongs the stage of formality examination.
In addition, the current law provides a period of five years from publication date to file a request for substantive examination. In the early days of patent in Thailand, this provision was aimed to assist patent examiners who were just learning about patent. The purpose of such five-year gap was to allow the corresponding foreign applications to be examined and granted, and such granted patents would form a basis of examination of its parallel Thai applications. The recently draft amendment of the Thai Patent Act anticipated that such five-year requirement will be reduced, now that Thai patent examiners are more well-verse in patent examinations and the patent granting period in many other countries takes only two to three years.
Whilst under the current predicaments, what could patent applicants do to speed up examination in Thailand?
1. Check subject matter eligibility
Subject matter eligibility is provided in section 9 of the Thai Patent Act B.E. 2522 as amended. Any claims that falls under the subject matter in section 9 will be rejected. As such, when submitting any claims that relates to any of the subject matter in the section, it would need to be amended so as to differ from the subject matter not accepted under the Act. Any amendments to the claim must be clearly provided for and supported in the description of the patent application. Otherwise, the examiner can still object to the added matter and deemed it as introducing a new matter.
Subject matter that falls under section 9 are as follows:
- naturally occurring microorganisms and their components, animals, plants or extracts from animals or plants;
- scientific or mathematical rules or theories;
- computer programs;
- methods of diagnosis, treatment or cure of human and animal diseases; and
- inventions contrary to public order, morality, health or welfare.
2. Request for substantive examination as quickly as possible
When the patent applications are published, instead of waiting until it is closer to the end of the five-year time limit, applicants should file requests for substantive examination as soon as possible. This will get the applications in line for the substantive examination fast.
3. Use prosecution highway, if applicable
The Thai Patent Office currently offers three patent prosecution highways (“PPH”), the ASEAN Patent Examination Co-Operation, PPH pilot program between the Japan Patent Office and the Department of Intellectual Property of Thailand, and the Target Patent Fast-Track Program.
ASEAN Patent Examination Co-Operation (“ASPEC”)
The ASPEC program is a work-sharing program implemented between nine ASEAN member states (“AMS”), Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Vietnam. Applicants who participate in the ASPEC program can benefit from getting their patents granted faster under the 2nd AMS using the search and examination work products established by the 1st AMS. Of course, the admissibility of the search and examination work products still needs to be in line with the national laws and requirements.
Apart from the regular ASPEC, two additional ASPEC initiatives were piloted, and implemented since 27 August 2019, and projected to end in 2021:
- ASPEC Acceleration for Industry 4.0 Infrastructure and Manufacturing Pilot Programme (ASPEC AIM); and
- Patent Cooperation Treaty-ASEAN Patent Examination Cooperation (PCT-ASPEC).
Due to increasing demands and benefits of the applicants, the ASPEC AIM is extended for two years until 26 August 2023, while the PCT-ASPEC is extended for three years until 26 August 2025.
To date, over 250 ASPEC requests were filed with the Thai Patent Office as the 2nd AMS, with the Intellectual Property Office of Singapore (IPOS) being the most selected 1st AMS. An average pendency rate from filing the ASPEC request to receiving the 1st Office Action is eight months and over 94% of applications are proceeded to grant.
The Thai Patent Office is generally able to maintain the eight-month pendency period after ASPEC request to issuance of the 1st Office Action, especially when the patent applications are in engineering or related technologies. Normally, Thai examiners would agree with the search and examination of the 1st AMS.
PPH pilot program between the Japan Patent Office (“JPO”) and the Department of Intellectual Property in Thailand (“DIP”)
The JPO – Thai DIP PPH pilot program is another examination work product sharing program where applicants can file a request to the Thai Patent Office to benefit from the search and examination made prior by the Japan Patent Office. This pilot program was commenced in Thailand since 2014 and has recently been extended for another two years, from 1 January 2022 to 31 December 2023. Further extension will be subjected to future review and agreement between the two Patent Offices on whether the number of PPH requests is still within a manageable level.
Over 2,800 PPH requests were filed with the Thai Patent Office as the Office of Later Examination, with an average of 8-10 months pendency from the PPH request to receiving the 1st Office Action.
The Thai Patent Office would accept the search and examination work products conducted by the Japan Patent Office, which makes this PPH pilot program a proven effective way to speed up the substantive examination. Similar to the ASPEC program, Thai examiners usually agree with the findings of the Japan Patent Office and would only conduct a supplementary examination to ensure that the Thai patent applications comply with local requirements.
Target Patent Fast-Track Program
The Target Patent Fast-Track Program (“Fast-Track Program”) commenced on 1 June 2022 in celebration of the Thailand Department of Intellectual Property’s 30th anniversary. The aim of the Fast-Track Program is to reduce examination period for patent applications (within 12 months) or petty patent applications (within six months) in the field of medical sciences.
As the Fast-Track Program is an attractive offer, it comes with greater requirements. Applications entering the Fast-Track Program must possess detailed qualifications before they could even be shortlisted. A working group of officials is appointed especially to consider the requests for the Fast-Track Program each month. The application selected for Fast-Track Program will be published and the examination must be completed within the prescribed time limit from the publication date. Since its implementation, two petty patent applications have been selected for the Fast-Track Program.
The following qualifications must be met to be shortlisted for the Fast-Track Program:
- The patent/petty patent application is only for the medical science field, and the applicant must be able to showcase that the invention is beneficial to the public and ready for commercialisation.
- In case of patent applications, requests for substantive examination must already be filed for no less than three months.
- In case of petty patent applications, the petty patent applications and complete formality documents must already be filed for no less than three months.
- The patent/petty patent applications must be first filed in Thailand, or a national phase entry into Thailand of a PCT International Application which is filed via the Thailand’s Receiving Office (RO/TH) with no priority claim to foreign applications.
- Claims of the patent/petty patent applications must not exceed 10 claims.
- All transactions must only be done via the Thai DIP’s electronic filing portal, and the request can only be filed on the 1st – 10th days of each month.
If the available prosecution highways are not the right fit for your patent applications, one can still rely on examination results of corresponding foreign applications, subject that substantive examinations have been carried out before grant. Although it does not offer guaranteed turnaround time like the prosecution highways, submission of corresponding granted patents has proven to provide good assistance to examiners as they can rely on search and examination products previously made by other patent offices. In any event, each patent family is unique. Devising a satisfying prosecution strategy for each one should be made under the view of global or regional expertise.
This alert is for general information only and is not a substitute for legal advice.
For further information, please contact:
Linda Wang, Partner, Zico Law
info@zicolaw.com
