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August 24, 2015

Update on Thailand’s Patent Prosecution Highway

Informed Counsel

As a result of an agreement between the Thai Department of Intellectual Property (DIP) and the Japanese Patent Office (JPO), on January 1, 2014, the DIP initiated a two-year Patent Prosecution Highway (PPH) Pilot Program. The PPH Pilot Program provides a fast-track channel that allows applicants who have filed a patent application in Japan first, followed by a counterpart application in Thailand, to accelerate substantive examination of their Thai application by utilizing the examination results of their Japanese application.

Upon receiving a request for substantive examination under the PPH Pilot Program, the Thai Patent Office, within approximately six months from the date on which the request is filed, will issue its first official communication in the form of either an Office Action or a Notification requesting payment of the registration fee.

According to JPO’s website, as of December 2014, there have been 58 applications under the PPH Pilot Program. As of November 20, 2014, Tilleke & Gibbins filed 38 of these applications, and to date, 29 have received first official communication from the Thai Patent Office within four-and-a-half months on average, counting from the date on which the request for participation in the PPH Pilot Program was filed. From January to June 2015, Tilleke & Gibbins submitted 19 applications under the PPH Pilot Program, but no official communications have been received.

Based on available statistics, the PPH Pilot Program effectively accelerates substantive examinations of Thai applications. As the program was initiated based on an agreement between the DIP and JPO, only applicants who have first filed a patent application in Japan are eligible to participate in the PPH Pilot Program, and they can expect their Thai applications to mature to grant in a shorter period of time.

There are, however, some major obstacles to the fast-track route, such as the limited number of Thai Examiners and the Thai Patent Office’s internal procedures which are unrefined and often cause oversight when cases are transferred. If these hurdles are overcome, then the patenting process will be much faster.

The PPH Pilot Program is scheduled to finish at the end of December 2015, but is expected to be extended for another two years if found to be effective by the DIP and JPO. In order to shorten the protracted periods of pendency for patent applications, the DIP is likely to continue offering the fast-track option to those who qualify.

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