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Updates to Thailand’s Trademark and Patent Legal Frameworks

by Darani Vachanavuttivong, Tilleke & Gibbins, Thailand

Thailand’s intellectual property regime is constantly evolving to protect IP rights and account for the changing global IP landscape. In the second half of 2017, two notable developments in trademarks and patents could pose important implications for brand owners.

Implementation of the Madrid Protocol

On August 7, 2017, the Thai Ministry of Foreign Affairs submitted its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) with the World Intellectual Property Organization (WIPO), making Thailand the 99th nation to become a contracting state under this international treaty and confirming its commitment to the ASEAN Economic Community Blueprint. The legal foundation for Thailand’s accession was made earlier on July 28, 2016, when the nation amended its Trademark Act to include a new trademark filing arrangement suited for international registration under the Madrid System.

The Madrid Protocol will take effect in Thailand on November 7, 2017, and will enable trademark owners in the country to file a single international application designating other members under the Protocol, as well as enabling other member states’ trademark owners to designate Thailand to seek protection in the country. It should be noted, however, that the decision as to whether or not an applied mark is registrable in Thailand will still be based on the amended Thai Trademark Act.

Proposed Amendments to the Patent Act

Another notable IP development in Thailand is the latest proposed amendments to the Patent Act, which aim to solve and prevent backlogs and long delays in granting patents, reduce the pendency period for patent registration, and ensure that the duration to grant a patent complies with the time frame of 55 months set by the Licensing Facilitation Act. The amendments that are being considered are as follows:

1. Introducing a two-step publication process in the patent system:

1.1 The first publication of a patent application will be made within 18 months of the filing date (no opposition can be filed at this stage).

1.2. A second publication will be ordered after the substantive examination, allowing the public to file an opposition against a patent application.

1.3 An official publication fee will be collected at the time that the application is first filed, well before the first publication date. No official fee is required for the second publication.

2. Reducing the time frame for filing a request for substantive examination from five years to three years.

3. Setting the opposition period to be 90 days from the second publication date of the application.

4. Introducing a Trial Committee for Oppositions.

5. Allowing Third-Party Observations to ongoing proceedings before the Department of Intellectual Property’s Patent Office.

6. Changing from compulsory registration of a patent license agreement to a system of recordation of patent license agreements.

7. Increasing the time frame for extension requests for annuity payments from 120 days with a 30% surcharge to 180 days with a 30% surcharge.

8. Extending the deadline to file a revocation petition with the Board of Patents from 60 days to 180 days.

9. Authorizing the Board of Patents to grant an extension for annuity payments, with a 50% surcharge.

10. Increasing the number of patent examiners tasked with approving the recordation of license agreements from one person to three to five persons.

11. Revising procedures for recordation of patent license agreements and introducing new procedures for issuing compulsory licenses in line with the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

Trademark owners, especially those with international portfolios, are encouraged to keep up to date on the changes that will be brought about when the Madrid Protocol takes effect in Thailand. Meanwhile, patent owners should study the latest draft amendments of the Patent Act to be ready to comply with requirements in the near future, when the bill becomes law.