Good news for SMEs wishing to acquire patents in Thailand, as the country is committed to clearing its backlog of patent applications. Today’s blog post has been kindly shared with us by our external IPR experts, Ms. Darani Vachanavuttivong and Ms. Jitluedee Siemanond from Tilleke & Gibbins. In this article, Ms. Vachanavuttivong and Ms. Siemanond further explain the steps undertaken by the Thai Department of Intellectual Property to ensure faster patent application procedures.
The problem of long periods of pendency for patent registration in Thailand may finally be successfully solved after several past attempts, even though an expected executive order under section 44 of the nation’s interim constitution has not yet been formally announced.
The Thai Department of Intellectual Property (DIP) has put forward great efforts in setting up an effective action plan and has substantially increased its Patent Office manpower in 2016 and 2017, in order to effectively and promptly examine pending patent applications. The number of patent examiners in each examiner group has increased more than 100 percent, with the total number of examiners growing from 39 in 2015 to 143 in August 2017. The approximate headcount of each examiner group at the Patent Office is as follows:
With the increase in patent examiners, the current DIP patent registration process is proceeding at a much faster pace. From October 1, 2015, to September 30, 2017, the Patent Office has published 24,288 patent applications and 7,926 design patent applications. During the same time period, it has also granted 7,299 patents, 8,027 design patents, and 3,735 petty patents, or about 1.39 times the total average of 13,687 per year for patent, design, and petty patent applications in the past five years (2012–2016) (shown in table 1).
The increase in examiners is a step in the right direction to solve the long-standing problem of how to clear the huge backlog of applications pending for an inordinate amount of time in the patent prosecution process. With the greater output from the increased Patent Office manpower, it is advisable for local representatives to keep pace by managing and increasing their own resources to handle the expected influx of office actions from the Patent Office and prevent backlogs from accumulating.
With the improvements in the DIP’s application-to-patent-examiner ratio, it remains to be seen whether the increase in productivity rates will contribute to an increase in patent registrations. If the issuance of office actions continue at present rates, it is likely that the DIP may be able to register intellectual property rights within the parameters set out by the Licensing Facilitation Act B.E. 2558 (2015), which prescribes the time to register an invention patent to be within 55 months, design registration to be within 15 months, and petty patent registration to be within 3 months.
This is positive news for Thailand as the registration of intellectual property can be completed in a more timely and predictable manner, which will serve to attract investments in technology into the kingdom and contribute to the government’s “Thailand 4.0” policy.
Darani Vachanavuttivong and Jitluedee Siemanond
This article first appeared on the website of Tilleke and Gibbins and is reposted here with their kind permission. Please see the original article here: http://www.tilleke.com/resources/thailand-now-clearing-its-backlog-patent-applications
Name: Darani Vachanavuttivong
Law Firm: Tilleke and Gibbins
Tel: +66 2056 5888
Short Bio of the Author
Darani Vachanavuttivong is a formidable enforcer of intellectual property rights (IPR), including trademarks, copyrights, and patents. Regarded as “a brilliant, hands-on lawyer who works extremely hard for her clients” (WTR 1000), Darani is currently recognized as a top IP practitioner by such publications as Asialaw Leading Lawyers (2003-2017), The Legal 500 Asia Pacific (2003-2018), and Chambers Asia-Pacific (2008-2018). She was named as one of the most accomplished female IP practitioners in the world by Managing Intellectual Property magazine, which included Darani in its list of the “Top 250 Women in IP” in 2016.
Darani helps clients protect IPR in some of the toughest jurisdictions in the world—Thailand, Vietnam, Cambodia, Laos, and Myanmar. Darani previously headed the firm’s trademark registration group and is well-versed in writing patents, having represented numerous patent clients and having attended several high-level courses on drafting patent specifications, including the South East Asian Patent Drafting Training Course and the Patent Agent Training Course organized by the Department of Intellectual Property, Bangkok.
A leading IP attorney and a leader in the IP field, Darani is the managing director of the Tilleke & Gibbins intellectual property group, which is consistently recognized as the preeminent IP practice in Thailand. Outside of the firm, Darani was elected by her peers to serve on the ASEAN Intellectual Property Association (AIPA) as the Country Head for Thailand (2009-2019) and as a Council Member (2007-2019). She is a member of the International Trademark Association (INTA) Harmonization of Trademark Law and Practice Committee (2016-2017). She served as President of the Thailand group of the Asian Patent Attorneys Association (2012-2015) and continues to serve the APAA as Vice President of the Thailand Group (2015-2018). In addition, she was the President of the Intellectual Property Association of Thailand (IPAT) for two terms (2005-2009) and continues to be involved in IPAT as the Secretary General and as a member of the Board of Directors.
Darani takes a realistic, no-nonsense approach to protecting intellectual property in Southeast Asia, and notes that, “protecting IPR should be viewed as an investment in the product and the company’s good name and as a critical line-item in any originator’s budget.”
Name: Jitluedee Siemanond
Law Firm: Tilleke and Gibbins
Tel: +66 2056 5739
Short Bio of the Author
Jitluedee Siemanond is a patent agent in the firm’s intellectual property group. She helps clients obtain Thai patents by offering advice pertaining to Thai patent law, representing clients in patent application filing procedures, and corresponding with clients regarding patent, design patent, and petty patent applications.
Having received a technical education and industry experience in software solutions in Texas, Jitluedee specializes in drafting and prosecuting patent applications in technical fields that include software and business methods.
Jitluedee has also participated in a number of courses on patents and patent drafting, including the South East Asian Patent Drafting Training Course and courses organized by the American Bar Association and Thailand’s Department of Intellectual Property.