Filing for patent protection in multiple countries can be complex, but the Patent Cooperation Treaty (PCT) simplifies the process by allowing applicants to file a single international application. However, this application must eventually be processed in each member country where protection is sought. The stage of seeking protection in each country, including Thailand, is called the national phase entry, and it involves complying with local laws and regulations to secure patent rights.
This comprehensive guide will explore the key points you need to know about entering the national phase in Thailand for invention patent application under the PCT system, providing steps, requirements, and potential pitfalls.
What is the PCT System?
The Patent Cooperation Treaty (PCT) is an international agreement administered by the World Intellectual Property Organization (WIPO). It allows inventors to file a single international patent application, which can cover over 150 member states. The PCT system does not itself grant patents but simplifies the process of seeking patent protection in multiple countries, and also allows applicants to delay country-specific filings. After the international application is filed and processed by WIPO, applicants must enter the national phase in individual countries where they want to seek patent protection.
Thailand became a member of the PCT on 24 December 2009. Becoming a PCT member has significantly streamlined the patent filing process for foreign applicants seeking protection in Thailand and for Thai applicants seeking protection in other countries. The national phase entry in Thailand is where the Thai Patent Office which is a division within Thailand's Department of Intellectual Property examines the patent application under local laws.
The main advantages of the PCT system are:
Efficiency: It consolidates the initial filing into one application, reducing administrative burden and time.
Cost Savings: Rather than filing separate applications in each country, the PCT simplifies the process and gives applicants time to assess the commercial viability of their invention in different markets.
Deferred Costs: The PCT system allows applicants to delay the significant costs associated with filing in multiple countries by up to 30 months from the initial filing date.
PCT National Phase Entry: Key Steps
Once an international PCT application is filed, applicants have a set time frame to enter the national phase in Thailand, primarily concerning invention patents. Below is a step-by-step guide focused on invention patents. While the key points of the first two steps are the same for both invention and petty patents, the subsequent steps differ slightly in their procedural requirements.
1. Deadlines for National Phase Entry in Thailand
The first and most important aspect of national phase entry is the deadline. To enter the national phase in Thailand, you must file your application within:
30 months from the priority date (the date of the first patent filing, if priority is claimed).
For applicants using Chapter II (international preliminary examination), the same 30-month deadline applies.
If the national phase is not entered within the deadline, the applicant may request for restoration of priority with the Thailand Department of Intellectual Property. The DIP will only allow restorations of priority on the condition of "due care" having been exercised. The "unintentional" criteria are not currently applied in Thailand. The time limit for filing a request for restoration of the right of priority is 2 months from the date of removal of the cause of the failure to meet the time limit to enter the national phase; or within 12 months from the expiry of the priority period, whichever expires first. There is no additional official fee for the reinstatement of rights but because of “due care” standards must be proven, chance of restoration is low.
Missing this deadline can lead to the abandonment of your patent rights in Thailand, so it’s crucial to stay on top of the 30-month deadline.
2. Filing Requirements
When entering the national phase in Thailand, several key documents and requirements must be submitted to the Department of Intellectual Property (DIP) to ensure your application is processed smoothly.
Required Documents:
National Phase Application Form: This form is specific to the PCT national phase entry in Thailand and must be prepared by a local patent agent.
Patent Specification and its Thai Translation: The entire specification must be translated into Thai. The translation must be accurate and precise to avoid any issues with the application process. Inaccurate translations can result in delays, rejections, or even loss of rights. For the deadline for the Thai translation, see the language requirement below.
Power of Attorney: If the applicant is represented by a patent attorney, a signed and notarized power of attorney must be submitted. For applicants from Taiwan, the Power of Attorney must also be legalized. The deadline to submit the Power of Attorney is 90 days from the filing date. There is no late filing fee.
Note: For PCT applications that have not been published by WIPO, the entire international application must also be filed.
Language Requirement:
One of the most critical aspects of the national phase entry in Thailand is the Thai translation of the patent documents. The PCT-specific regulation mentions that the Thai translation must be submitted within the 30-month deadline without referring to any extension. However, Ministerial Regulation No. 21 (BE 2542) stipulates that if a foreign language specification has been filed, the applicant may file the Thai translation within 90 days of the filing date in Thailand. Due to such inconsistency in the regulations, in cases where a full translation is not ready, the Thai Patent Office allows the applicant to at least submit Thai translations of the title, claims, and abstract on the actual filing date in Thailand, and translation of the remaining parts can be submitted within 90 days from the actual filing date in Thailand.
In view that all documents must be submitted in Thai, and there are strict deadlines to follow, it’s essential to work with an experienced local translator and patent agent to ensure compliance with the DIP’s requirements.
3. Formal and Patentable Subject Matter Examination
Once the national phase application is filed in Thailand, the DIP conducts a formal examination. During this examination, the DIP ensures that all necessary documents are provided, the correct fees have been paid, and the application meets the procedural requirements for patent filings in Thailand. In addition to the formal examination, the patent examiners would also evaluate claims for patent subject matter eligibility.
If any discrepancies or missing documents are identified or any of the claims are not patent-eligible under the Thai Patent Act, the DIP will issue an office action and provide the applicant with a 90-day deadline from the date of receipt of the office action to correct any issues. A first extension of 90 days and a second extension of 30 days can be requested. It is essential to respond promptly to avoid further delays or rejection of the application.
4. Publication
If the patent examiner opines that the application meets the formality requirements and the claims are patent-eligible subject matter, the DIP will issue a notice to pay the publication fee. The deadline to pay the publication fee is 60 days from the date of receipt of the notice. If the publication fee is not paid after receipt of the notice, the DIP will issue a second notice. If the publication fee is not paid within 60 days of receipt of the second notice, the application will be deemed abandoned.
After the publication fee has been paid, the application will be published in the Patent Gazette. The opposition period lasts for 90 days from the publication date. During this period, interested persons or third parties who believe the invention should not be patented (e.g., ineligible subject matter, lack of novelty, lack of inventive step, etc.) may file an opposition with the DIP. The DIP will review any opposition and determine whether it is valid.
In Thailand, there is only the above-mentioned pre-grant opposition. There is no post-grant opposition.
5. Substantive Examination
If no opposition is filed within the 90-day deadline, the application proceeds to the substantive examination stage.
Applicants must file a request for substantive examination within 5 years from the date of publication in Thailand. If an opposition is filed and then an appeal against the decision of the Director-General is then filed, a request for substantive examination may be filed within 1 year from the date of issuance of the final decision or 5 years from the date of publication, whichever expires later. If this request is not made within the specified time frame, the application will be considered abandoned.
The substantive examination is where the DIP evaluates whether the invention meets the patentability criteria under Thai patent law, including, novelty, inventive, and industrial applicability. If a non-final office action is issued, the deadline to respond to such office action is 90 days from the date of receipt of the office action to correct any issues. A first extension of 90 days and a second extension of 30 days can be requested. If a final rejection is issued, the applicant may file an appeal with the Patent Board within 60 days from the date of receipt of the office action.
6. Patent Grant
If the DIP concludes that the invention meets all patentability criteria, the DIP will issue a notice to pay the grant fee. The deadline to pay the publication fee is 60 days from the date of receipt of the notice. If the grant fee is not paid after receipt of the notice, the application will be deemed abandoned. After the grant fee has been paid, the patent will be issued within 15 days from the date of payment of the grant fee.
The maximum period of protection in Thailand for 20 years from the filing date, provided maintenance fees are paid.
Benefits of National Phase Entry in Thailand
Securing patent protection in Thailand through the PCT national phase offers several advantages, especially for businesses and inventors looking to enter the Southeast Asian market:
Market Access: Thailand’s growing economy and strategic location in ASEAN make it an attractive market for businesses. Patent protection in Thailand can help inventors prevent unauthorized use of their inventions in this key region.
Cost Efficiency: The PCT system allows inventors to defer the costs of national filings while they evaluate the commercial viability of their invention in various markets. By filing once through the PCT, applicants can avoid the cost of filing separate applications in each country at the initial stage.
Legal Safeguard: Patents granted in Thailand provide the patent holder with the exclusive right to enforce their IP rights, sue for infringement, and prevent others from commercially exploiting the invention.
Global Strategy: Using the PCT system allows inventors to file internationally while keeping their options open for up to 30 months. This can be particularly useful for businesses that need time to secure funding, explore market potential, or assess the patent landscape before committing to national filings.
Common Pitfalls to Avoid
While the PCT system is designed to streamline the international patent process, there are some common pitfalls that applicants should be aware of when entering the national phase in Thailand:
Missing the 30-month Deadline: The 30-month deadline for national phase entry is strict. Missing this deadline could result in losing the opportunity to secure patent protection in Thailand.
Inaccurate Translations: The DIP requires precise and accurate translations of the PCT application into Thai. Poor translations can lead to misunderstandings, delays, or even rejection of the patent application.
Failure to Request Substantive Examination: Substantive examination must be requested within 5 years from the publication date. Forgetting to do so can lead to the abandonment of your application.
Conclusion
Entering the national phase in Thailand under the PCT system is an essential step for inventors and businesses seeking patent protection in the country. By understanding the deadlines, requirements, and processes involved, you can navigate the patent system more efficiently and secure the protection your invention needs.
If you are considering entering the national phase in Thailand, it is highly recommended that you work with an experienced local patent attorney. They can help ensure that your application is compliant with Thai law, translations are accurate, and all deadlines are met, maximizing your chances of securing a successful patent grant.