Expedited Patent Examination to Be Implemented

by Nathapong Tongkaew (Domnern Somgiat & Boonma, Thailand)

The Thai government plans to implement an expedited examination process for applications which have been pending for 5 years or more. With this process, it is expected that approximately 12,000 patents will be granted in 3 months.

It was announced by the Spokesman of the Prime Minister’s Office that the joint meeting of the Cabinet and the National Council for Peace and Order (the “NCPO”) resolved to authorize the Prime Minister as the Head of the NCPO to issue an order pursuant to Section 44 of the Interim Constitution in order to tackle a delay in patent examination. This order of the NCPO’s head is expected to establish an expedited examination process. To be eligible for this so called “modified examination”, the following requirements must be satisfied:

  1. The application must have been pending for 5 years or more; and
  2. The claims must correspond to those in an equivalent patent already examined and granted by at least one of the following: the United States Patent Office, the European Patent Office, the Japanese Patent Office, the Australian Patent Office, the State Intellectual Property Office of the P.R.C., and the Korean Intellectual Property Office.

To have applications examined under this procedure, qualified applicants must submit requests with the Patent Office within 3 months from the effective date of the order.

However, the patent granted under this modified examination may be subject to invalidation in a re-examination process, which may be requested within 1 year from the date of grant. The existing cancellation action in court will also remain possible.

According to the Spokesman’s announcement, it is estimated that approximately 12,000 patents (from more than 20,000 pending applications) will be granted under this procedure in 3 months.

At this stage, the details of the order and the procedures are being discussed by the relevant authorities, including the Department of Intellectual Property and the Ministry of Public Health. Some proposed that this modified examination should not be available for drug-related patents as that would increase drug prices. However, many disagree, considering the proposed exception contrary to the non-discrimination principle of TRIPs. In addition, there exist other mechanisms to regulate drug prices.

Section 44 of the Interim Constitution empowers the Prime Minister as the Head of the NCPO with the approval of the NCPO to issue judicial executive and legislative orders as necessary in order to solve certain problems of the country, including national security and economy. All actions taken pursuant to these orders are also considered lawful and final. The orders under this Section have effectively solved various severe problems, such as illegal, unreported and unregulated fishing, corruption, and aviation safety standard. The permanent Constitution of 2017, coming into effect on April 6, 2017, still maintains the Head of NCPO’s power to issue the order under this Section 44.

Though the modified examination has not been implemented yet, this demonstrates the government’s deep concern about the problem and great effort to solve it.