Teething troubles over Paris Convention and PCT

A few months ago the cabinet of the previous administration and the National Assembly voted that Thailand should accede to the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty (PCT). However, while government authorities and IP practitioners are delighted with this development, some problems still remain with implementing it.

In order for Thailand to become a member of Paris Convention, its laws must first be in line with all the obligations set out in the convention. However, some lawyers and economists argue that there is still work to be done in this area. For example, existing Thai laws do not cover some significant aspects of the convention’s unfair competition practices, as prescribed in Article 10bis. In addition, under the current Thai system, (i) patent certificates still do not carry detailed information (as provided in Article 4(d)(2) of the Paris Convention), and (ii) applicants do not have the right to ask for teh seperation of teh application, if any, and claim a priority date for a separate application (as set out in Article 4(g)(2)).

As regards the PCT, one of the issues under consideration by the competent authorities is official filing fees. The current Thai Patent Act limits official filing fees to Bt1,000, which is much lower than the limit set out in the PCT. Since the Thai Patent Office is not authorised to collect official filing fees of over Bt1,000, even for PCT applications, the government will have to amend the current legislation in order to overcome this. Another significant problem arises in connection to the Patent Office's authority to proceed with international applications. Section 17 of the Thai Patent Act states that a PCT application shall be treated as a national application. However, it does not clearly set out how to proceed with PCT applications, making it questionable whether the Patent Office is authorised to follow the procedure set out in the PCT for handling applications.

Although it looks likely to be a while longer before Thai patent applicants can enjoy the benefits of the PCT system, there is still widespread optimism that both Thais and foreign inventors will benefit from the adoption of the new system