Q: Will the country gain
benefits or competitive advantage in becoming PCT’s member?
And how?
Only a fraction of patents filed by Thai applicants in
Thailand are ever filed outside the country. Patenting
abroad is costly, and only relatively high quality inventions
in general are patented abroad. The PCT will help Thai
applicants to file, protect and license their inventions
in more countries than in the past. It should contribute
to enhance the transfer of Thai technologies in foreign
countries. Not protected in foreign countries, some Thai
inventions are simply exploited by third parties without
paying any royalties or financial compensation to Thai
inventors. If Thai inventors use PCT appropriately, we
should witness an increase of Thai inventions patented
abroad including Thailand’s major export markets such
as US and Japan.
In contrast, patents filed in Thailand by non-Thai residents
represent approximately 86 % of the total patents in this
country. In other words, 9 inventions out of 10 are filed
by foreigners in Thailand. It is expected that the % of
patents filed in Thailand by non Thai residents will increase
after December 24, 2009 resulting in more pressure on
Thai individuals and companies to be vigilant before launching
their products on the Thai market or using particular
process. This could eventually turn into an opportunity
for Thai inventor to gain access to information on new
inventions, and subsequently use the information to create
additional value (e.g. improvement of technology etc).
Other possible benefits of using the PCT are more speculative,
and it is not known how great these benefits will be in
practice. There should in theory be advantages in speeding
up the national filings, if the PCT search and examination
helps make the examination process of patents filed at
the Department of Intellectual Property in Thailand faster
or more certain.
Q: Under these circumstances, we
should ask ourselves what are the benefits for Thailand
of becoming a PCT member country?
With PCT, Thai inventors can apply for patent protection
abroad easier, cheaper and can expand and use their products
or process abroad with less risk of being blocked by a
third party. It should then encourage inventors to innovate
and to protect and commercialize their inventions not
just in Thailand but abroad as well. Accordingly, this
should help Thai inventors to gain access to new marks,
enhance research and development in Thailand.
One of the main objective of any patent is to reveal
the main idea of the invention to public. An increase
of patents filed by non Thai residents should allow the
Thai industry to gain access to information on new inventions,
and subsequently use the information to create additional
value. In turn, this will increase the competitiveness
of the Thai industry.
The Thai Patent Office, Ministry of Commerce will earn
additional income from the international filings and,
in turn, according to the Department of Intellectual Property
“it can use this revenue to set up funds to promote research
and development for the Thai inventors as well as to support
their expenses in applying for a patent abroad”.
Q: What will be its effect
to Thai Economy?
A rule of thumb is that the PCT is economically attractive
for more than three countries in addition to the domestic
patent. However they are increasingly using the PCT rather
than direct filing once they have a number of foreign
patents to consider.
There are transactional advantages. Using the PCT involves
a single application, versus a number of disparate applications
in different countries. Although the national filing is
ultimately the responsibility of the user and proceeds
in a way little different from the direct application
from that point on, there are several simplification in
managing the process for the user by having a single initial
application and a priority date established clearly. This
includes a standardized formality check, which may be
especially valuable to small users, unfamiliar with national
requirements, but which also applies to any user unfamiliar
with all the differences between national filings. The
PCT also imposes a discipline on the filing schedules,
with the focus of the applications in one place, with
known deadlines, helps avoid the problem of missed deadlines
and formalities when filing directly.
Another significant factor is the potentially very great
value to the patentee of the extended priority period,
which may postpone national filing by up to 8 to 18 months.
This can be very valuable in some circumstances, by giving
extra time to get the national patent filings right, to
check the commercial value of the innovation, or simply
to postpone various patent costs. There are three aspects.
First, this gives additional time to prepare application
correctly. Second, it allows the applicant to postpone
the high costs of translation, attorney/agent fees, and
PTO filing (and maintenance) fees. Third it allows the
applicant additional time to examine the technical and
commercial viability of the patent. This last may be very
important, since it is estimated that as many as 20-25%
of applications may be dropped before national filing,
saving further application costs.
Q: By being member of PCT,
what will be benefits to Thai’s inventions and innovations?
The benefits to Thai inventions and innovations will
transpire in protection that those inventions might gain
in foreign countries. Until now, for procedural and cost
reasons, Thai inventors and applicants have not substantially
extended their patents registered in Thailand to too many
countries which result in less business opportunities
for them and sometime even Thai inventions being copied
in foreign countries.
Innovation will also benefit. As more patents will be
filed in Thailand, we expect that more patents will be
exploited in this country, it should allow the Thai inventors
to gain access to information on new inventions, and subsequently
use the information to create additional value. In turn,
this will increase the competitiveness of the Thai industry.
The extra filing time will also give firms an additional
period in which to form views as to the patentability
of the innovation, and of the commercial value of the
innovation. The value of a patent depends on three main
features: the viability of the patent in terms of its
legal strength, the enforceability of the patent in different
jurisdictions, and the commercial value of the patent
in different markets. The additional time and information
will give the patent application the option of amending
or dropping the patent filing depending of these three
key aspects. Coupled with the information from the international
search report and international preliminary examination
report the user has additional time in which to decide,
from a technical viewpoint, whether to file the patent,
where to file, and whether to amend the filing at the
national level.
Q: Will this encourage
Thai to create new inventions and innovation? Do we need
other mechanism to support this?
The cost of developing technology has risen to the point
that innovators often must consider joint ventures and
alliances to develop and commercialize new technology.
Technological development is complex and risky. Investments
are made with long payoff periods and unpredictable outcomes.
The viability of such arrangements depends on the innovator’s
ability to define and protect its rights to the technology
brought to the venture. By the same measure, firms are
increasingly likely to use out-licensing as a revenue
source, and in licensing as a means of cheaply accessing
new technologies. As a result concerns about the interaction
between legal rights and innovation strategy will be greater
in Thailand than ever before.
Q: What is the registration
process under PCT's terms and conditions?
A PCT patent application has two major phases:
PCT applications are accepted by a number of Receiving
Offices (ROs), including Thailand, and forwarded to the
International Bureau of the PCT Directorate for processing.
This begins the International Phase (Phase I) of the application.
The application is checked for conformity to the patent
requirements of the countries designated for national
patenting in the application. The patentee designates
a list of countries in which a patent may be sought, and
to which a copy of the application will be sent at the
publication date, 18 months after the priority date (the
1st patent application). For all applications the PCT
subjects the application to an international patent search,
citing relevant prior art, to be performed by a designated
International Searching Authority (ISA), and generating
an International Search Report (ISR). The report is sent
to the applicant and published. The PCT also publishes
the application, at 18 months after filing.
The application moves to the National Phase (Phase II),
at a time selected by the applicant (within the overall
application schedule). The applicant decides with which
national offices to file, typically far fewer than originally
designated. The applicant pays the national fee and supplies
the national offices with translations if needed. The
application is then forwarded to the national Patent Office.
The PCT does not grant “international patents” granting
the patents is the responsibility of the national and
regional Patent Offices.
There are three key filing dates for the application:
the initial PCT filing date, the election for PCT examination,
and the national filing data.
Q: How Rouse can be of
service to Thai’s inventor?
Rouse is well placed to assist Thai inventors in drafting,
filing and prosecuting their patents via the PCT. We have
a team of experienced Thai and foreign patent agents specialized
in different technical fields as well as a legal team
well acustomized with PCT rules.
For more information please visit www.iprights.com or
call 02-653-2730-3. |
