Thailand: Impact of International Patent Developments

patent-without backgroundToday’s blog post has been kindly shared with us by our external experts Mr. Daniel Greif and Mr. Dhanasun Chumchuay from Spruson & Ferguson. In this article, Mr. Grief and Mr. Chumchuay explain the two announcements made by Thai Department of Intellectual Property and their impact on companies wishing to apply for patents in Thailand. This article first appeared in Managing Intellectual Property Magazine. 

On May 5 2017, the Thai Department of Intellectual Property (DIP) issued two announcements in regard to patent processes in Thailand: (1) Announcement on the Establishment of a List of International Search Authorities and International Preliminary Examining Authorities (No 2); and (2) Announcement on Fees for International Applications, International Searches, Delivery of International Applications and Late Payment of Fees.
The first announcement specifies the Intellectual Property Office of Singapore (IPOS) among the list of International Search Authorities (ISA) and the International Preliminary Examining Authorities (IPEA), while the second announcement establishes new fees for international applications, which have been adjusted to reflect the current fee rates charged by the listed ISAs and the current currency exchange rates.
These two developments reflect the continued positive steps being taken by the DIP to create greater efficiencies and to upgrade patent processes, as well as to clear the patent backlog that poses a constant obstacle to timely patent prosecution in Thailand.

IPOS as ISA and IPEA
The DIP’s Announcement on the Establishment of a List of International Search Authorities and International Preliminary Examining Authorities (No 2) confirms the IPOS as a body qualified as an ISA and an IPEA for international applications filed in Thailand.
According to the search fees outlined in the Announcement on Fees for International Applications, International Searches, Delivery of International Applications and Late Payment of Fees, fees for searches conducted by IPOS are the third highest after the United States Patent and Trademark Office and the European Patent Office at ฿61,000 ($1,720) without the possibility of a reduced rate. However, numerous possible advantages of using the IPOS as the ISA and IPEA should not be overlooked. As IPOS’s turnaround time to issue a first office action is approximately 60 days, and the Office is able to review prior art published only in Chinese as part of the search and examination process, the use of IPOS as the ISA and IPEA represents a fast and thorough search process. IPOS is also used as the ISA and IPEA for PCT applications filed with the United States, Japan, Mexico, Brunei, Indonesia, Laos or Vietnam as the receiving office.

Amended fees for international patent applications
The Announcement on Fees for International Patent Applications, International Searches, Delivery of International Applications and Late Payment of Fees establishes new fees, which have been adjusted to reflect the current fee rates charged by the listed ISAs and the current currency exchange rates.
According to this Announcement, the international application paper filing fee in Thailand is set at ฿53,000 ($1,430) for the first 30 pages of the application and ฿750 ($22) per subsequent additional page. Further, the online filing fees have been adjusted to between ฿41,000 and ฿49,000 ($1,155 to $1,380) depending on the electronic file types in which the documents are submitted. Reduced rates are available for applicants who are nationals of or reside in certain countries, as specified under the PCT.
Overall, the fees have been slightly reduced from the previously applicable rates in order to reflect the exchange fluctuations. Additionally, the search fees for each qualified ISA have been reduced as well, except for the Japan Patent Office and the Australia Patent Office. Such fee reductions will be beneficial for all patent applicants.

Daniel Greif and Dhanasun Chumchuay

Spruson & Ferguson

This article first appeared in Managing Intellectual Property and is reposted here with the kind permission of the authors. Please see the original article here: http://www.managingip.com/Article/3728764/Thailand-Impact-of-international-patent-developments.html 

daniel_greif

Author’s Name:  Daniel Greif

Law Firm:  Spruson & Ferguson

EmailDaniel.Greif@spruson.com 

Short Bio of the Author 

Daniel Greif is a Principal of Spruson & Ferguson (Asia). Daniel oversees the firm’s Thailand office, which provides patent and trade mark attorney services, as well as other intellectual property services in Thailand and the Mekong region.

Daniel specialises in trade mark law representing a wide variety of major global brand owners and SMEs in all aspects of contentious and non-contentious trade mark matters in Thailand, the Mekong Region, ASEAN and the Asia Pacific.  Daniel has a particular specialty in strategic brand portfolio management and has consistently been rated by World Trademark Review, Asia IP and other leading trade mark rating entities as one of the foremost trademark lawyers in the Asia Pacific.

Daniel was Trademark Counsel for The Coca-Cola Company for seventeen years and before that he was Senior Trademark Counsel for Sony Corporation. Most recently, Daniel was Head of the Intellectual Property Practice at Siam Premier International, one of Thailand’s leading law firms.

Daniel provides strategic and tactical advice (eg. searches, clearance, applications, IP enhancement strategies and IP enforcement strategies) related to trade marks, trade dress, designs, copyrights, domain names and other trade indicia for high-profile multi-country marketing campaigns. Daniel has worked on numerous trade mark acquisitions and other trade mark related and IP business transactions.

Author’s Name: Dhanasun Chumchuay

Law Firm:  Spruson & Ferguson

Email:

Short Bio of the Author 

Dhanasun graduated with an LLB Law with French Law from University College London, in 2010. In 2011 he was awarded the 8 New Square Prize for Top Performance based on his results in the 2009/10 academic session.

Prior to joining Spruson & Ferguson’s Thailand Office, Dhanasun was an Associate at Siam Premier International Law Office where he was involved in dealing with Thai and International clients in all stages of trademark registration. This ranged from providing initial advice and customised fee proposals to filing and prosecuting trademark applications. During this time Dhanasun also gained experience in the Thai prosecution process for patent applications.

Dhanasun is fluent in both English and Thai, and is professionally proficient in French.

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