Section 44 to Handle Backlog of Unexamined Patents Applications

29
March
2017

The Patent Office under the Department of Intellectual Property (“DIP”) has long struggled to cope with the problems of a large backlog of unexamined patent applications. On 28 February 2017, a government spokesperson announced that the Cabinet has approved an intention to apply the sweeping powers under Section 44 of the Interim Constitution B.E. 2014 to cope with the staggering backlog of unexamined applications.

The measure aims to facilitate faster approval of applications for patents already endorsed in other countries.

Although the official order under Section 44 has not been issued, the government spokesperson announced that the DIP will be authorized under Section 44 to grant patents for those applications which meet certain criteria. The government believes that with this newly implemented legislation, approximately 10,000 patent applications will be granted in less than 1 year.

Criteria for granting of patents under Section 44

Under Section 44, the DIP may grant patents for those applications which meet the following criteria:

  • Pending application has been filed with the DIP for 5 years or longer and a request for substantive examination has been made;
  • A corresponding foreign patent is available; and
  • The claims of the pending applications correspond or are made to correspond to the granted claims of the granted foreign patent.

According to the DIP’s Director-General, Mr. Thosapone Dansuputra, the DIP is expected to announce a 90- day period during which time applicants may file a request to participate under this scheme and submit the prescribed documents and forms for applications which meet the criteria above. The DIP will then examine the applications to see whether they comply with the given criteria and grant the application accordingly. With this scheme, the Director-General believes the applications which meet the given criteria will be granted in less than 1 year.

Previous schemes to handle backlog

This is not the first time the DIP has attempted to solve the issue of the huge backlog of patent applications and there are two previous schemes still in place:

  • ASEAN Patent Examination Co-operation (“ASPEC”)

Launched in 2009, ASPEC aims to share search and examination results between the patent offices of the nine participating countries in South-East Asia to avoid work duplication among the patent offices in the participating countries and therefore allow for faster patent approval. As a participating member, the DIP has, till date, received a total of 83 ASPEC requests.

  • Patent Prosecution Highway (“PPH”)

Launched in 2014 in a co-operation with the Japan Patent Office (“JPO”), the programme enables applicants to request an accelerated examination of Thai patent application. The process reduces the examination time to about 6 months from the date when the PPH request is submitted.

The first trial of this programme ended on 31 December 2015 and has been renewed for a second trial period which will expire on 31 December 2017. The DIP has received 737 PPH requests so far.

Accordingly, the combined number of requests received by the Patent Office under both ASPEC and PPH programmes is merely a small fraction of unexamined applications which currently stands at more than 20,000. Therefore, the backlog of unexamined applications in Thailand remains unsolved.

What this means for patent applications

In an aim to increase investor confidence by resolving the backlog issue and also improve the examination process for the newly filed applications, the new powers given to the DIP under Section 44 will still be a big challenge for the DIP considering the current backlog of patent applications, which currently stands at more than 20,000, and  it only has approximately 30 experienced patent examiners.  Moreover, there is already speculation that the move by the DIP to grant patents under Section 44 will be strongly opposed by various parties, including NGOs who have argued that this scheme should not be applied to pharmaceutical- related patent applications as those applications should be carefully examined in favour of publicinterest and public welfare in terms of price monopoly of patented drugs and access to patented drugs by the public.

In light of this expected opposition, the current number of examiners and records on statistics of granted patents by the DIP, it remains to be seen how the DIP will resolve the backlog issue in an aim to increase investor confidence while at the same time balancing the interests of the patent owner and the public.

If you have any questions or require any additional information, please contact Nuttaphol Arammuang or Titirat Wattanachewanopakorn of ZICO IP.

Authored by: Nuttaphol Arammuang and Prateep Naboriboon.


This alert is for general information only and is not a substitute for legal advice.