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

May 29, 2017

Thailand Aims to Clear Patent Backlog Through Modified Examination Process

Subscribe to Updates
Informed Counsel

On March 8, 2017, the key stakeholders from Thailand’s public and private sectors were called together for a meeting at the office of the Secretary General to the Prime Minister to discuss issues relating to long-term patent pendency and the need to accelerate the patent application process.

The meeting was attended by a range of government departments, including the Department of Intellectual Property (DIP), the Food and Drug Administration (FDA), and the National Science and Technology Development Agency. Also in attendance were members of five private associations: AIDS Access Foundation, FTA Watch, the Intellectual Property Association of Thailand, the Pharmaceutical Research and Manufacturers Association, and the Thai Pharmaceutical Manufacturers Association.

The Deputy Prime Minister, Wissanu Krea-ngam, spoke about the possibility of relying on Section 44 of Thailand’s Constitution to expedite patent examination. In encouraging news, he stated that the National Council for Peace and Order (NCPO) has agreed to announce an order to solve the delays and backlog of pending patent applications, which presently number about 12,000. The objective of the meeting was to hold a transparent and public hearing, according to the Constitution. The NCPO decided to temporarily suspend the Section 44 order while holding a public hearing for as many stakeholders as possible before the order takes effect.

Under Section 44, a solution will be announced to solve this long-time problem. There is a precedent case for this type of action that involved the FDA, which had implemented a similar solution in the past to clear its backlog of applications. The solution designed for the patent backlog problem has been proposed and prepared by the DIP and is referred to as “Modified Examination.”

Modified Examination

Any patent applicant can seek Modified Examination of a patent application if it meets either of the following two conditions:

  1. If the patent application was filed with the DIP more than five years ago but has not yet been published; and/or
  2. If the patent application’s request for a substantive examination was filed with the DIP more than five years before the date of the announcement of the Section 44 order and:

2.1. The claims of the requested patent application must conform to (i.e., must be exactly the same as) those of the foreign corresponding patent granted in a foreign country/countries and must not overreach beyond the claims that were published in the Thai Patent Gazette.

2.2. A copy must be provided of the corresponding patent granted in a foreign country that was submitted at the time or after the request for a substantive examination was filed.

The conditions to request a Modified Examination may be subject to changes. The Thai DIP is continuing to review and consider the required conditions.

Under Modified Examination, the patent examiner will closely review the requirements listed above. Once the examination is completed, a patent will be granted immediately.

The DIP expects that the time needed for conducting Modified Examination of an application could be reduced by half from the normal examination period under the current practice.

Corresponding Granted Patents

The corresponding patent must have been granted in one of the following six jurisdictions:

  • Europe
  • USA
  • Japan
  • China
  • Korea
  • Australia

This is the same list as that of the PCT International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA) for Thailand.

Application Form

The DIP will issue a new application form for patent applicants who wish to make a request for Modified Examination. It is possible that, in the application form, the DIP will require that applicants requesting Modified Examination confirm the corresponding patent granted in a foreign country and identify the linkage of each claim that has been conformed to those of the selected foreign corresponding patent to the relevant information appearing in the Thai specification by indicating the page number and line number.

Timing of Request

The request for Modified Examination must be submitted to the DIP within three months from the date of the Announcement of the Section 44 order. After this three-month window has passed, the DIP will not accept any further requests for Modified Examination. As the time of publication of this article, the Section 44 order has not yet been announced.

Official Fee

There will be no official fees required in requesting Modified Examination.

Reexamination

All patents that are granted by the Modified Examination procedure are subject to reexamination requested by an interested person within one year from the granting date. In the case where a request for reexamination is filed, the patent examiner will conduct a substantive examination of the patent in accordance with the patent examination guidelines. A special Examination Committee may be formed for a specific field. For example, in the pharmaceutical field, a representative from the FDA may be one of the committee members. The timeframe to complete the reexamination may possibly be set at one year from the date of filing the initial request.

Outlook

Patent owners should be closely monitoring developments in Thailand for the issuance of this Section 44 order. After the order has been officially announced, patent owners will want to seize the opportunity to pursue Modified Examination for their eligible applications, in order to seek expedited protection for their patents.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 15, 2026
Ambush marketing refers to a strategy in which a business associates itself with an event, campaign, or brand without paying for official sponsorship rights. The tactic is most visible in sports, concerts, and festivals, where official sponsors have invested substantially for exclusivity. Ambush marketers may use suggestive wording, event-themed imagery, athlete endorsements, venue-adjacent promotions, or social media campaigns implying a commercial connection with the event. Common Forms of Ambush Marketing Ambush marketing typically takes one of the following forms: Direct ambushing: using event names, logos, or mascots suggesting authorization Coattail ambushing: sponsoring an athlete or broadcaster connected with the event Subtle ambushing: themed advertising, venue-adjacent campaigns, or similar visual cues The legal analysis in each case turns on whether the marketing crosses from permissible event-based advertising into infringement, passing off, deception, or wrongful exploitation of goodwill, and the risk assessment is necessarily fact-specific. Thailand has no dedicated ambush marketing statute, so legality depends on execution. A campaign that merely comments on a public event may be permissible, but one that uses protected marks, creates consumer confusion, misrepresents sponsorship status, or makes unsubstantiated claims may trigger liability under various Thai laws, as laid out below. Ambush Marketing and Thailand’s Trademark Act The Trademark Act B.E. 2534 (1991) is the primary tool for addressing campaigns that use registered trademarks, event names, logos, mascots, or confusingly similar signs. The law gives registered trademark owners the exclusive right to use their mark for registered goods, and infringement risk arises when a nonsponsor uses an event mark or a confusingly similar sign in advertising. Even referential or playful use may create liability if it causes public confusion as to sponsorship or commercial connection. The law also preserves passing-off claims for unregistered marks. This matters because event names, taglines, or mascots may not always be
Read More
July 13, 2026
When Decree No. 186/2026/ND-CP (Decree 186) takes effect on July 15, 2026, it will introduce the most significant reform of Vietnam’s administrative IP enforcement framework since Decree 99/2013/ND-CP was issued in 2013. These changes are expected to make administrative enforcement faster, more accessible, and better suited to the realities of modern IP disputes. Below are the principal reforms and their practical implications for rights holders and enforcement practitioners. The End of Notarization and Consular Legalization Among the most welcome procedural changes is the abolition of the notarization and consular legalization requirement for powers of attorney (POA) submitted in administrative enforcement proceedings. Under the previous regime, foreign rights holders were generally required to execute a POA, then have it notarized and consular legalized (if seeking customs recordal). In practice, this process frequently delayed enforcement by four to eight weeks, often long enough for infringing goods to disappear before authorities could intervene. Decree 186 removes this bottleneck, now requiring only an original or certified copy of the POA. If the document is in a foreign language, a Vietnamese translation is sufficient, provided it is certified by a competent authority or confirmed by the authorized Vietnamese IP representative. Consular legalization and notarization are no longer required. For rights holders, the practical impact is substantial. Administrative enforcement files that previously took weeks to prepare can now be completed in a matter of days, allowing much faster responses in time-sensitive matters such as warehouse raids, border interventions, and trade-fair enforcement. The decree also introduces a useful administrative simplification. Where an original POA has already been submitted to the same enforcement authority and remains valid, applicants may rely on a copy of that earlier submission by identifying the previous case file. This eliminates unnecessary duplication for rights holders pursuing multiple enforcement actions before the same
Read More
July 9, 2026
Recycling, upcycling, and refill-packaging models are now widely promoted as ways to reduce waste, lower carbon emissions, and respond to consumer demand for sustainable products. However, complications arise when these environmentally driven trends intersect with intellectual property law—particularly where reused or altered packaging continues to display third parties’ registered trademarks. Adding to this complexity, Thailand’s draft Sustainable Packaging Management Act aims to introduce new environmental compliance obligations that businesses must navigate alongside existing trademark concerns. Recycling and upcycling packaging may infringe trademark rights, especially in cases not protected by the first-sale doctrine—the principle that a trademark owner’s rights over a particular mark-bearing product end once the owner first sells it. Furthermore, even refill packaging carries legal risk due to specific statutory prohibitions under Thai law. Compounding these challenges, the draft Sustainable Packaging Management Act will impose extended producer responsibility (EPR) obligations on manufacturers and brand owners, requiring them to manage packaging throughout its lifecycle. These overlapping legal frameworks could deter manufacturers from pursuing ESG-aligned business models unless businesses understand how to navigate both trademark and environmental requirements. Under Thai law, this issue remains uncertain because the Trademark Act does not expressly codify the first sale doctrine, also known as the exhaustion of trademark rights. Generally, this doctrine provides that once a trademark owner has lawfully sold goods bearing its trademark, the owner’s right to control further resale of those particular goods is exhausted. The rationale is that the owner has already received commercial benefit from the first authorized sale; therefore, the purchaser should be free to resell or otherwise dispose of the goods. Although the doctrine is not expressly codified in the Trademark Act, Thai courts have recognized it in relation to genuine goods and parallel imports, as seen in a Supreme Court Judgment No. 2817/2543 in which the
Read More
July 6, 2026
Indonesia’s regulation on reporting online intellectual property (IP) infringement provides comprehensive procedural guidance for IP rights holders and their licensees in reporting online infringement complaints. Issued in December 2025 by the Ministry of Law as Regulation No. 47 of 2025 regarding Handling of Intellectual Property Infringement Reports in Electronic Systems, this regulation covers all types of IP rights. It also specifies documentation when reporting infringement, and lays out the procedures for examination, verification, and enforcement actions. Submission of Complaints Complainants may submit reports through the online system of the Directorate General of Intellectual Property (DGIP) or in person at the DGIP office. Complaints may also be filed through an authorized proxy. Under the regulation, complainants are required to provide the following information and documents: Personal details of the complainant; Brief description of the protected work or subject matter (i.e., type of IP and name or address of the infringing website, portal, account, or application, or a link to the location of the infringing content); Complete description of the alleged infringement; Certificate of registration or recordal of the relevant IP; Recordal of IP license agreement, if any; and Other supporting evidence. Verification and Examination Process Upon receiving a complaint, the responsible formality officer may request clarification or additional supporting documents. In the latter case, the complainant must then submit the necessary administrative documents within 14 days of the notification date. Once the documentation is deemed complete and sufficient, the case will be formally registered. Subsequently, the DGIP will establish a verification team to handle online IP violations, which will include the Civil Servant Investigator (PPNS), the Ministry of Communication and Digital Affairs, experts with relevant expertise in IP, and representatives from related associations such as AVISI (Indonesian Video Streaming Association). After examining the report, the team will prepare the Minutes
Read More