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December 5, 2018

Development of Trademark and Patent e-Filing in Thailand: Benefits of New System Explained

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WTR Daily, World Trademark Review

Thailand’s Department of Intellectual Property (DIP) has been working to introduce an electronic filing system for some time, first introducing electronic filing (e-filing) for patent and trademark applications in 2016 and working to improve it ever since.

The first approach saw two separate platforms for trademark and patent applications. The system required the relevant office fees to be paid at a specific bank within 24 hours of submission, and hard copies of the documents already filed electronically to be submitted within 15 days from the e-filing date. The system was quite unstable and caused a number of difficulties and problems. As a result, it was unpopular with IP owners and agents and was mostly only used in urgent cases.

On July 3, 2017, the DIP announced an updated version of the e-filing system for trademark registration (and especially for sound marks), in response to the Thai national policy of promoting the digital economy (popularly referred to as “Thailand 4.0”). However, this revised e-filing system was only a trial and the requirements for bank payment and the submission of hard copies remained unchanged.

Latest e-Filing System

A significant change later emerged on March 5, 2018, when the DIP announced a new e-filing system, which allowed users to submit the four main types of intellectual property application (trademark registration, patent registration, design registration, and recording copyright) via one platform with a single login (called “e-Authentication”). More importantly, the new system introduced alternative payment channels and removed the requirement for applicants to submit hard copies if the documents already filed online met the DIP’s requirements. The new e-filing system is an optional tool, intended to operate in parallel with the submission of documents in person at the DIP office. With the introduction of this new application management system, the redundant and inefficient workflow processes would be eliminated. Moreover, the DIP has planned to launch an electronic delivery of office actions to applicants who filed e-filing applications via this system. We believe that this will increase efficiency for communication between the DIP and IP owners.

To be eligible for e-filing, users (including applicants and IP agents) must create an account with the DIP and submit supporting identity documents before registering for an electronic signature. As mentioned earlier, an applicant is no longer required to submit hard copies of documents filed via the e-filing system, subject to certain exceptions. For example, the following must still be submitted if used in support of an application:

  • an original certified copy of the foreign application for a priority claim
  • an original registration certificate for assignment of a trademark
  • hard copy evidence of use to prove the secondary meaning of a trademark

In those cases, the required original documents must be submitted to the DIP within 15 days from the e-filing date.

Benefits of Using E-Filing

The new e-filing system is a faster and more convenient tool for filing intellectual property applications with the DIP. The new electronic-based workflow system consists of several significant modules:

  • e-filing of applications and requests
  • e-payment via bank transfer
  • paperless modules
  • e-signature modules

With these new capabilities, enabled by an advanced IT system, filing an application can now be carried out immediately without wasting time on the traditional procedure of manually preparing hard-copy files. Internal application retrieval requests and instructions from the Registrar can be quickly processed through this new information system, which allows users to input and immediately save any information related to requests, instructions, etc. This certainly makes the entire process of trademark registration considerably more convenient and time-effective.

Under this new e-filing system, fees can be paid via several channels and with more time flexibility, although payment of official fees must be made by 10 p.m. of the following day. In addition to the traditional routes of paying the official fee via cash, bank transfer during a visit to the bank, or through other payment service providers, this new system allows a user or applicant to pay the official fee via credit card payment online or via online banking.

Current Situation

Even though these improvements to the registration process are quite recent, the numbers of new users are gradually increasing. Online trademark filings comprised 2,648 of the 52,936 total requests made in 2017 (5%) and online patent filings comprised 766 of the total 3,337 requests between January and October 2018 (23%). It is hoped that this application and registration management system and workflow process, specifically designed for trademark registration, will greatly enhance the DIP’s services, by allowing them to be delivered in a more convenient, timely, and cost-effective manner to all trademark owners and the public.

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