Two-year Extension of the Patent Prosecution Highway (PPH) Program in Thailand

The standard route to expedite the examination process under Section 27 of the Patent Act B. E. 2522 (1979) as amended by Patent Act (No.2) B. E. 2535 (1992) and Patent Act (No.3) B. E. 2542 (1999) in conjunction with Clause 13 of Ministerial Regulation No. 22 (B.E. 2542) issued under the Patent Act B.E. 2522 is to submit an examination report and any document showing the examination result of the corresponding application filed in another country. However, an applicant who files the application in Thailand is permitted to join another patent acceleration program: the ASEAN Patent Examination Cooperation Program (“ASPEC”) for a Thai application which has a corresponding application filed in another ASEAN country; and the Patent Prosecution Highway Program (“PPH”) for the Thai application that has a corresponding application filed in Japan - which takes 12-18 months before the Thai applicant receives a first action from the Thai patent office, i.e. faster than the standard acceleration process.

After expiration of the former Patent Prosecution Highway Pilot Program (“PPH”) between the Japan Patent Office (“JPO”) and the Department of Intellectual Property of Thailand (“DIP”) in 2023, the two IP offices have reached a mutual agreement to extend the PPH-DIP acceleration program for another two years from 1 January 2024 to 31 December 2025, according to the JPO’s and DIP’s official websites.

[https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/japan_thailand_hi…]
[https://www.ipthailand.go.th/images/26669/Patent/PPH/4PPH.pdf]

The PPH program is useful because its objective is to expedite the grant of patent at an early stage globally and improve utilisation of search and examination results between IP offices, thereby reducing the burden on local examination and improving the quality of global examination. Statistically, the applicant who submits an examination acceleration request under the PPH program is most likely to receive the first office action and registration within approximately one year from the date of submitting the PPH request.

The PPH program will be available in Thailand until the end of 2025 for both PCT and Paris Convention routes, as shown in the below schemes. The applicant who files a patent application with the DIP or JPO may capitalise on its claims and examination results by accelerating the patent registration with the other patent office. In other words, when a Japanese examiner allows “claims” in a corresponding Japanese application, the applicant is able to expedite the examination process in Thailand under the PPH pilot program by submitting a PPH request together with one of the following office actions: (a) Decision to Grant a Patent; (b) Notification of Reasons for Refusal; (c) Decision of Refusal; or (d) Appeal Decision.

To summarise, in order to accelerate the examination process in Thailand, a PPH request shall be submitted together with the allowed/registered claims of the corresponding Japanese patent, and the claims of the pending Thai patent application must conform with the allowed/registered claims of the Japanese patent. Accordingly, the allowed/registered claims and examination results of the corresponding Thai patent application may be adopted in order to for expedite the examination process in Japan.

In addition to the above examination acceleration process in Japan, the applicant may exploit the plausible opportunity to submit a PPH request through the “Target Patent Fast Track Program (TPFT)” in Thailand; under which, one of the required conditions is that Thailand must be the first jurisdiction of the application [please see our article: “Chapter II of Target Patent Fast Track System”]

In conclusion, due to the extension of the mutual agreement on the PPH pilot program between JPO and DIP, consequently, opportunities for the acceleration of patent examination and the granting thereof remain open for the applicant who files patent applications in Japan and Thailand.

For further information about the PPH program and other patent acceleration programs, please do not hesitate to contact us at SCL Nishimura & Asahi, Bangkok Office.

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