You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

November 15, 2013

Global Patent Protection under the PCT System

Subscribe to Updates
Bangkok Post, Corporate Counsellor Column

Abraham Lincoln once said, “The patent system added the fuel of interest to the fire of genius.” It was an unmistakably true statement; patents have undoubtedly become an essential tool for protecting new inventions. Not only do patents guard against the unauthorized use of an inventor’s creation, but they foster innovation by granting exclusive legal rights for limited durations.

However, one may ask how legal patent rights can be obtained on a global scale. Clearly, a patent’s efficacy is severely limited if its privileges and effects are limited to just a single country. The solution to this question may lie with the Patent Cooperation Treaty (PCT). This article will discuss how patent owners can extend protection for their inventions under this system.

The PCT is an international treaty regulated by the World Intellectual Property Organization (WIPO). It provides member states with a unified protocol for filing patent applications. Currently, 148 countries including Thailand, which joined in 2009, are members of the PCT.

In recent years, filing patent applications through the PCT has attracted much interest from Thai individuals, businesses, and legal entities. But there is still a misunderstanding that filing a patent application through the PCT will grant worldwide patent protection.

In fact, the PCT does not offer universal or worldwide protection for a claimed invention; it only offers a provisional solution for the unified processing of an application, and it establishes whether or not the claimed invention meets the patentability requirements. Therefore, it helps to ascertain whether or not patent protection is worth pursuing. For PCT applications that meet the patentability requirements, the process for obtaining a fully-protected patent in each PCT-adhering jurisdiction is much quicker and more straightforward.

Obtaining patent protection through the PCT begins with filing an International Application either at the national or regional patent office (known as the Receiving Office) or directly with WIPO. Next, the application will proceed to the International Search and International Publication stages. During the search stage, the appointed patent office will conduct a worldwide search to locate any existing inventions, patents, and non-patent literature (known as “prior art”) that may compromise the patentability of the claimed invention.

After this search is completed, an International Search Report (ISR) and a written opinion will be issued, which list all the documents that may affect the patentability of the claimed invention, and which contain the examiner’s opinion as to why the invention may or may not be patented. In the event of an unfavorable ISR, there will be an opportunity to amend the claims and/or description to improve patentability, and a chance to discuss with the examiner ways to further improve patentability.

As mentioned above, WIPO does not issue a lawfully protected patent; it merely evaluates how likely it is to obtain a patent in a PCT member state. Therefore, PCT applications must be filed at the patent office of a PCT member state to obtain a legally protected patent in that jurisdiction.

Since the PCT process already evaluates the patentability of the claimed invention, any advantageous assessments contained within the ISR and/or written opinion can be used to further facilitate the acceptance of the claimed invention, which reduces the time between filing and grant of a patent. Patent offices of PCT member states are required to accept all PCT applications, and fewer formal documents are required.

From a business perspective, filing a patent application through the PCT offers a number of advantages. For instance, protection can be obtained in 148 member states by filing a single PCT application in one language. PCT applications can also delay payments relating to the filing and prosecuting of a patent application before a national or regional patent office, as they provide an extended time limit for filing additional applications in other member states.

During this extended period, more market research can be conducted to locate potential business partners or investors, and the commercial value of a claimed invention can also be further evaluated. Most importantly, the PCT evaluation allows an informed decision to be made with regard to pursuing a claimed invention, which effectively lowers the cost of filing an application at a national or regional patent office. Ultimately, the PCT system reduces the chance of making a bad investment.

Clearly, the PCT offers many valuable advantages over other patent application systems; but careful steps must be taken to ensure that a PCT application will yield its full range of benefits. Armed with a full understanding of how the PCT system works, patent owners will be in a much stronger position to derive commercial advantages from their inventions.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 27, 2026
In March 2025, Thailand’s Central Intellectual Property and International Trade Court (IP&IT Court) issued a landmark judgment in favor of Luckin Coffee, China’s leading retail coffee chain. The judgment marked a significant turnaround following earlier trademark litigation involving Luckin Coffee from 2021 to 2023 that had generated widespread public attention and raised questions about the protection available to legitimate foreign brand owners in Thailand. In a significant subsequent development, Thailand’s Court of Appeal for Specialized Cases has now affirmed the IP&IT Court’s judgment in its entirety. The appellate decision brings clarity to one of Thailand’s most closely watched trademark disputes. Significantly, this is the first case in Thailand to formally recognize the trademark squatting principle. The Court of Appeal confirmed that Luckin Coffee has a better right to the disputed mark and ordered cancellation of the defendants’ trademark registration—a key application of the “better right” doctrine. The court also upheld the substantial damages awarded at first instance, providing important guidance on assessing harm from systematic trademark squatting. Award-Winning Judgment Affirmed in Its Entirety The significance of the first-instance judgment extended beyond the outcome for Luckin Coffee. The IP&IT Court judgment was subsequently recognized in the IP&IT Court’s Distinguished Judgment Awards in 2025, reflecting the complexity, novelty, and legal significance of the issues considered in the case. The defendants nevertheless appealed the judgment, challenging several key aspects of the IP&IT Court’s decision. Luckin Coffee continued to entrust Tilleke & Gibbins as their sole attorney to pursue the case at the appellate level. After considering the defendants’ appeal and Luckin Coffee’s submissions in response, the Court of Appeal affirmed the first-instance judgment in its entirety. The judgment was announced on July 8, 2026. Better Right to the Marks The Court of Appeal confirmed Luckin Coffee’s superior rights. The orders include cancellation
Read More
July 24, 2026
As food innovation continues to accelerate, manufacturers are increasingly introducing ingredients derived from new sources, produced using novel technologies, or lacking a significant history of human consumption. While these innovations create new opportunities for the food industry, they also raise important questions regarding consumer safety. For this reason, many jurisdictions, including Thailand, the European Union, Australia and New Zealand, Canada, and Singapore, require a premarket safety assessment for novel food ingredients before they can be placed on the market. The objective of this assessment is to ensure that each ingredient is safe for its intended use and level of consumption, does not present toxicological, allergenic, microbiological, or nutritional concerns, and will not mislead consumers. Scientific authorities typically evaluate the ingredient’s identity, manufacturing process, composition, specifications, anticipated dietary exposure, toxicological information, nutritional impact, and history of use before determining whether it can be marketed. Against this background, the Thai Food and Drug Administration (FDA) recently took an important step toward improving regulatory transparency by publishing, for the first time, a consolidated public list of substances that have successfully completed the Thai FDA’s safety assessment process, including substances determined to be novel foods and those determined not to fall within the novel food category. The list identifies the approved substances, the corresponding manufacturers or importers, approval dates, and the approved conditions of use. Although the publication does not change the existing legal framework governing novel food approvals, it provides businesses with greater visibility into the Thai FDA’s regulatory precedents and the types of substances that have previously been accepted through the safety assessment process. The full announcement is available on the Thai FDA’s website. As the list is now publicly available, it also provides useful insight into the types of substances that have successfully completed the Thai FDA’s safety assessment process.
Read More
July 24, 2026
Indonesia has updated its fee framework for intellectual property (IP)-related government services, with implications for IP owners, licensees, lenders, digital platforms, and businesses operating in the country. Government Regulation No. 30 of 2026 on Types and Tariffs of Non-Tax State Revenue Applicable to the Ministry of Law (GR 30/2026) was promulgated on July 2, 2026, and will take effect on August 1, 2026. Key Takeaways GR 30/2026, which replaces the relevant IP service fees under Government Regulation No. 45 of 2024, reorganizes the fee schedule into separate categories for copyright, industrial designs, patents, layout designs of integrated circuits, trade secrets, trademarks, geographical indications, IP enforcement, and other categories. The most commercially relevant changes include a new copyright recordation tariff exemption for songs and music, higher fees for several trademark and geographical indication services, new IP enforcement service fees, and a new fee type for registration of fiduciary security over IP rights objects. In addition, this is the first major update for trademark fees in approximately 10 years. GR 30/2026 is significant not only as a fee update but also as a further indication of Indonesia’s increasing recognition of IP as a financeable commercial asset. By expressly assigning fees to the registration of fiduciary security over IP rights objects, the regulation places IP-backed collateral filings within the Ministry of Law’s administrative service framework. While GR 30/2026 does not create a new secured-transactions regime, this development is relevant for lenders, borrowers, and IP owners structuring financing arrangements secured by trademarks, patents, copyrights, industrial designs, or other registrable IP rights in Indonesia. Copyright: New Fee Exemption for Songs and Music Recordation For copyright, GR 30/2026 creates a fee-exempt category for recordation of works or related-rights products for songs or music, while maintaining a separate category for other works and related-rights products. It
Read More
July 21, 2026
Thailand’s Ministry of Digital Economy and Society (MDES) published a notification establishing an expedited court-ordered takedown mechanism for online content in cases of “urgent necessity.” The notification, which was issued on July 17, 2026, under the Computer Crime Act B.E. 2550 (2007), as amended, took effect the following day. It significantly expands the categories of content subject to rapid government-initiated removal. Content Categories Subject to Takedown The notification defines “urgent necessity” (section 20, paragraph 5, of the Computer Crime Act) as circumstances where any delay in suppressing computer data may impact national security, religion, the monarchy, good morals, social culture, or public order. In this regard, it establishes four broad categories of content: Computer Crime Act offenses. National security offenses. IP and other criminal offenses, where it is contrary to public order or good morals and a competent officer has requested its suppression. Content contrary to public order or good morals, a broad residual category encompassing 14 subcategories approved by the Computer Data Screening Committee. The fourth category is the most expansive. Its 14 subcategories include: Content defaming, mocking, satirizing, or devaluing the monarchy. Online gambling advertising or facilitation. Offering illegal firearms for sale. Offering baraku (hookah) products or e-cigarettes for sale. Offering cannabis inflorescences or processed cannabis products for sale. Advertising or soliciting prostitution. Content inciting violence, hatred, or social division. Unauthorized overseas employment advertising. Offering boiled kratom juice for sale. Online sale or advertising of alcoholic beverages. Content satirizing or degrading Buddhism. Money lending at interest rates exceeding legally prescribed limits. Advertising or disseminating information about surrogacy services. Forgery of documents, cards, or official documents. Enforcement Procedure In cases of urgent necessity, a competent official assigned by the MDES permanent secretary must file a petition with supporting evidence to the court with jurisdiction, requesting an order to
Read More