Update on Section 44 to Speed Up Patent Backlog Clearance
On 8 March 2017, the Secretariat of the Cabinet called a meeting of stakeholders to share concerns on the Cabinet and National Council for Peace and Order (the NCPO) applying section 44 of the 2014 Interim Constitution to clear the backlog of unexamined patent applications in Thailand. Section 44 was promulgated by the NCPO to grant authority and power to the Head of the NCPO, with approval of the NCPO, to issue any order to suppress, restrain, or perform whatever act, whether such act has a legislative, executive, or judicial effect. Orders so issued are all deemed lawful, constitutional, and final.
The Department of Intellectual Property (the DIP) clarified in the meeting that the proposed scheme could be divided into two parts as follows:
1. Modified Substantive Examination: To request a modified substantive examination, the applicant must have filed a patent application which has been pending with the DIP for five (5) or more years and have a granted patent for the same invention issued by one or more of the following intellectual property offices: European Patent Office (EPO), Japan Patent Office (JPO), United States Patent and Trademark Office (USPTO), Patent Office State Intellectual Property Office of the P.R.C (SIPO), Korean Intellectual Property Office (KIPO), or Australian Patent Office (APO). The applicant must amend the Thai pending patent claims to conform with the granted claims of the selected corresponding overseas patent. In addition, the applicant must also declare whether any patent was granted in any of the other jurisdictions in which it was filed. The DIP explained that the status of non-selected patents will be kept on file but the examiner would not arbitrarily select a non-selected patent and request the applicant to conform the claims with that patent.
Although patentability requirements, including novelty and inventive step, are deemed fulfilled based on the grant of the selected patent, the DIP will still examine patent eligibility according to section 9 of the Thai Patent Act, as well as the guidelines for patent examination, to determine whether the patent claims relate to unpatentable subject matter, such as diagnostic or treatment methods, naturally occurring products, or computer programs. If the patent is eligible, the examiner will grant the patent.
The request for modified substantive examination will have to be submitted within three (3) months from the date on which the scheme is officially launched.
The DIP believes that the above scheme will speed up the patent examination process twofold. However, as this scheme does not appear to differ much from the current modified substantive examination being used, many participants, especially representatives from the Intellectual Property Association of Thailand (the IPAT), were curious as to how this would in fact help speed up the examination process.
2. Reexamination: After a patent is granted, anyone can challenge validity of such a patent via reexamination proceedings. The reexamination will be undertaken by the Patent Board (the “Board”), which contains experts in particular technology fields. The Food and Drug Administration (the “FDA”) representatives will be also invited to the Board for reexamination of pharmaceutical patents. If the Board finds that a patent is unpatentable, the patent will be revoked. It should be highlighted that reexamination does not presently exist in Thailand. It is still unclear whether reexamination may result in a loss of scope of protection of certain claims or of the entire patent. It is also unclear whether post-grant amendment is allowed during the reexamination process.
A request for the reexamination will have to be submitted within one (1) year from the grant date of the patent under this scheme. A reexamination decision will be rendered within one (1) year from the date of submission of the request for reexamination.
Last but not least, as representatives from FTA Watch, AIDS ACCESS Foundation, and the Thai Pharmaceutical Manufacturers Association objected to the application of the above scheme to pharmaceutical patents that came from incremental inventions (so called “evergreening of pharmaceutical patents”), this issue is still ongoing and needs to be further discussed. The point was raised by these and other parties that said objection is contrary to the TRIPS Agreement as Article 27.1 rules that patent rights can be enjoyed without discrimination on the basis of the fields of technology.
Despite the continuing controversy, it is expected that the order will be officially issued under section 44 soon. Once issued, the DIP will hold a meeting to explain the practical guideline of the scheme to stakeholders. We will closely monitor all developments and keep you informed of any updates as they arise.