Thailand’s Membership in the Patent Cooperation Treaty: Effect on the Pharmaceutical Industry

Thailand's Membership in the Patent Cooperation Treaty: Effect on the Pharmaceutical Industry

Thailand has been preparing to join the Patent Cooperation Treaty (PCT) for a long time. However, such preparation appeared to be going at a snail's pace. More recently, it seemed that the process was picking up speed, when earlier this year a ministerial regulation regarding implementation of the PCT was reviewed by the government's legal arm, the Council of State. An instrument of accession, to be submitted to the World Intellectual Property Organization (WIPO), was also prepared. It was expected that the instrument of accession would be submitted in mid-July, with Thailand becoming a participating member of the PCT in October 2009.

However, as is often the case, things did not go as planned. The Ministry of Foreign Affairs delayed submitting the accession instrument, as it did not want to rush things.  Despite all these delays, finally, on 24 September 2009 the instrument of accession to the PCT was formally submitted to the WIPO, with Thailand becoming the 142nd state to become a contracting party. The PCT will become binding on Thailand three months from the date of submission, i.e., on 24 December 2009. A real Christmas present, as all applications filed on or after such date will automatically designate Thailand.

Membership of the PCT will help to facilitate the registration of patents abroad for Thai inventors. The PCT registration system meets international standards and is accepted by numerous countries; thus, inventors can receive protection in PCT member countries, many of which are Thai export markets, such as the United States, Japan, Australia, China, and India. Thailand's participation in the PCT will also help applicants from other member countries seek patent protection for their inventions in Thailand.

The pharmaceutical industry is a major PCT player, due to the number of patent applications filed. Pharmaceutical manufacturers, regardless of whether they are large or small companies, seek patent protection for their products through the PCT system due to its scope. A pharmaceutical manufacturer can file a single patent application and receive legal protection that extends to all 140+ member countries. Thailand's participation in the PCT means that each patent application will also include legal coverage in Thailand, whereas before a separate application had to be filed if protection was needed.  

The pharmaceutical industry also benefits from the PCT application process itself. Pharmaceutical manufacturers usually file patent applications for as many research-and-development-based inventions as possible, but only pursue those inventions with commercial potential to registration. Applications for inventions that have no such potential are abandoned. Manufacturers can use the preliminary search reports and preliminary examination reports provided by the PCT system for use in determining patentability, and deciding whether to further proceed with applications.

Another benefit of the PCT system is that the steps and timeframe of the application process are clearly set out. This allows certain costly steps, such as translating patent applications into various languages, to be taken only if an applicant decides to enter the national phase for a specific country. The clear timeframe also allows manufacturers to predict when they will obtain certain patents. The examination and issuance of patents in Thailand, for example, is currently backlogged. The Thai Patent Office records clearly  indicate that patent applications for pharmaceutical products suffer the longest delays.  Substantive examinations for nearly 1,000 pharmaceutical patent applications, filed more than 10 years ago, have yet to be undertaken. While the PCT system will not benefit these pending applications, the process for future applications will be speeded up considerably.   

Below outlines the significant provisions of the ministerial regulation. It should be noted that at this stage, the regulation is a draft waiting publication in the Royal Gazette. Procedurally, however, there should not be any further changes made.

Applicant Qualifications: A Thai national or a person who has domicile in Thailand, either an individual or a juristic person, may file a PCT application with the Department of Intellectual Property (DIP). The DIP will be the Receiving Office. Persons who are actually engaged in industrial or commercial enterprises in Thailand, or juristic persons whose principal office is located in Thailand, are deemed as having domicile in Thailand.  In the case of joint applicants, at least one party meets the residency qualification.  If an application is filed by a person who is unqualified, the application will be forwarded to the International Bureau (IB) for further handling.

Patent Agent/Attorney: A PCT application may be filed by an applicant or by his/her authorized representative. Only patent attorneys registered with the DIP are allowed to act as authorized representatives in this regard.

Language of Application: English or Thai. If an application is filed in Thai, an English translation must be submitted within one month from the filing date.

Priority Claims: An applicant may claim priority if he/she files a PCT application within 12 months from the date a patent application for the same invention was first filed. The applicant must submit the priority claim document to the DIP or the IB within 16 months from the first filing date. An applicant who wishes to claim priority but is not able to file a PCT application within 12 months may submit a request for restoration of the right of priority with the DIP, within a further two months. In this connection, the applicant must provide reasons and evidence showing that the applicant has used all due care to obtain the priority document.  

Receiving Office Withdrawal: The Receiving Office (the DIP) may withdraw an application due to failure of the applicant to rectify flaws therein within a prescribed period. However, the applicant has the right to file an appeal against the withdrawal.

National Phase: A PCT applicant who wishes to seek protection in Thailand can file a national phase application, with a Thai translation of the PCT application and government fees, within 30 months from the first filing date. If the applicant is unable to file the national phase application within the 30-month period, he/she may submit a request for restoration of the right to have the PCT application enforceable in Thailand with the DIP, within two months from when the cause for failure to file ceased or within 12 months after the completion of such 30-month period, whichever ends first. If the DIP considers that the applicant was unable to file a national phase application despite having taken all due care, the DIP will allow the restoration.

As Thailand moves forward with the PCT, it is hoped that not only will examination and issuance of patents be greatly speeded up to meet international standards, but there will be a knock on effect whereby registration processes in other areas of intellectual property will also improve.