July 24, 2015

Thailand: Patent Applications Now Subject to Strict Deadlines on Submission of Formal Documents

Tilleke & Gibbins

The Thai Department of Intellectual Property (DIP) has introduced new guidelines limiting the ability of patent applicants to request extensions on the submission of certain formal documents. The new guidelines, which are effective July 21, 2015, were introduced as part of an effort to expedite government licensing procedures under Thailand’s new Facilitation Act.

In line with official requirements, a patent application must be filed with certain formal documents, including a Power of Attorney, a Deed of Assignment (if applicable), and a Statement of Applicant’s Right to Apply for a Patent (if applicable). Prior to July 21, 2015, if these formal documents were not submitted together with the patent application, then a request for a 90-day extension, counted from the Thai filing date, was required to file the patent application. In addition, two extension requests were previously available—90 days and 30 days, respectively—meaning that 210 days were provided to file the requisite documents.

Under the new Facilitation Act, if formal documents are not filed at the same time as a patent application, then they must be submitted within the non-extendable deadline of 90 days from the Thai filing date. Failure to comply will result in the application being deemed abandoned. The new practice does not affect the deadline to file a certified copy of the priority document (if applicable), which is within 16 months from the first filing date of the base application. In addition, the due date to submit a complete Thai translation of the specification is unchanged—it is still 90 days from the Thai filing date (which is a non-extendable deadline).

The changes in the relevant deadlines are set out below:

Document Type

 

Deadline Under Previous Regulation

Deadline Under New Regulation

(Effective July 21, 2015)

 

Power of Attorney90 days + 90 days + 30 days90 days (non-extendable)
Deed of Assignment90 days + 90 days + 30 days90 days (non-extendable)
Statement of Applicant’s Right to Apply for a Patent90 days + 90 days + 30 days90 days (non-extendable)
Complete Thai-Language Specification90 days90 days (unchanged)
Priority Document16 months from the first filing date16 months from the first filing date (unchanged)
Response to Office Action90 days + 90 days + 30 days90 days + 90 days + 30 days (unchanged)

As it is no longer possible to request extensions to several of the key deadlines in the patent application process, applicants must ensure that all formal documents can be submitted in a timely fashion.

In addition to these changes to the patent application process, it is likely that the Thai DIP will introduce new guidelines affecting trademark registration in the near future. We will keep you up to date on any significant developments.

If you have any questions about the IP registration process in Thailand, please contact Darani Vachanavuttivong at [email protected]

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