Question Regarding Entering PCT National Phase Entry Into Malaysia

Question 1
Is it true that it is possible to enter national phase in Malaysia with English specification?

Answer 1
Yes, English specification is acceptable for filing in Malaysia, no translation is required.

Question 2
If Q6 is yes, is there any prejudice during the examination stage if the specification is not translated into Malay?

Answer 2
There is no prejudice during the examination stage if only English specification is submitted.

Question 3
Please advise if there is a provision for extension for national phase entry or for submission of translation (file a request? Or to pay an extra fee?)

Answer 3
Please be advised that an English specification is required at the time of filing the application in Malaysia. There’s no extension of time available. As such, we will not be able to file the application in Malaysia without the English specification.

Please be advised further that we do not provide Japanese to English translation of specification. As such, we would require you to provide us with a copy of the English translation for us to file your application in Malaysia.

Question Regarding Entering PCT National Phase Entry Into Thailand

Question 1
Translate into Thai for PCT national phase entry application in Thailand?

Answer 1
Yes, we are able to assist you in translating your PCT application into Thai language for filing in Thailand. Please note that we will require a copy of the application in English as our translator is only fluent in English and Thai languages. Our charges for preparing the translation are USD 27 per 100 English words.

Question 2 (a)
If Q1 is yes, how many months before the entry deadline we need to request you for translation to Thai? (Please answer the nearest to the deadline.)

Answer 2 (a)
Please be advised that the Thai translation document is required to be file within the grace period of 90 days.

Question 2 (b)
In Thailand, when is the national phase entry deadline from the priority date?

Answer 2 (b)
Please be advised that the deadline for entering national phase into Thailand is 30-months from the earliest priority date. However, please note that only PCT international having filing date of 24 December 2009 or later and designate Thailand as the RO is eligible to enter National Phase into Thailand via PCT. This is the date when Thailand officially become member of the PCT.

Question 2 (c)
Please advise if there is a provision for extension for national phase entry or for submission of translation. (file a request? Or to pay an extra fee?)

Answer 2 (c)
No, currently, there’s no provision for extension for national phase entry or for submission of translation.

Question 3
If Q1 is yes, when translating to Thai, is it easier to translate with an English translation (i.e. together with Japanese specification)?

Answer 3
As our translator is only fluent in both English and Thai languages. Therefore, all document submitted for translation must be in English.

Question 4
In Thailand, is there a provision to enter national phase with other language that Thai first (ex. Japanese), then submit the Thai translation later?
(i.e. Is it possible to legally “earn time” for preparing translation?)

Answer 4
No. The current regulation does not allow the entering of national phase in other language except in Thai language. No extension of time is available for submitting the translation. As such, we will not be able to file the application in Thailand without the Thai specification.

Question 5
If Q4 is yes, when it is required to amend during the examination stage, is the base specification for amendment the first language? (ex. If the Japanese specification is submitted first, Japanese is the base specification.)

Answer 5
Please refer to Q4 above.

Question 6
Is it possible for us to correct the errors of the translation of the specifications of a Thai patent application according with its original PCT application? How and when if possible?

Answer 6
Yes. It is possible to correct the errors of the translation of specifications. The correction can be made anytime using an Amendment Application with an official fee of THB 50. The only prohibition on the correction/amendment is that it must not go beyond the original disclosure as filed or enlarge scope of protection under section 20 of Thai Patent Act.

Question 7
I think that you have an employee inventions system. Are there any remarkable points of your system?

Answer 7
The provision about Employee’s Inventions are provided in Sections 11 to 13 of Thai Patent Act. Basically, if employee invents the invention under the employment or commission work, the right to apply for the patent will be transferred to Employer. However, it is provided that the employee shall have a right to further remuneration in addition to his regular salary. However, both the employer and the employee can agree otherwise. If there is no particular provision in the employment contract, it will be understood that the right will be transferred to employer. The employee cannot transfer his right to other unless there is a provision in employment contract to allow him to do so.

Question 8
How long is the average time before we receive the first office action from Thai Patent Office (TPO) and get a grant.

Answer 8
Currently, the application generally takes about 12 months before receiving the first Office Action (OA). If no OA is raised, it application will be published by the 18 month. For those application with OA raised, it will normally take 2 years or more for the application to be published. Once, the application is published, the applicant has up to 5 years to file a request for substantive examination. After that, it will depend on how early we can have available the corresponding granted patent or report of foreign examination from the priority country. Once we have filed the report of foreign examination or the granted patent, the substantive examination will commence and it will take further 1 to 2 years before the notice of allowance will be issued. The Thai patent will generally be granted between 3 to 5 years.
However, patents related to Chemical and Pharmaceutical will often take twice as long to get granted. To my knowledge, most of patent in relation to pharmaceutical will take more than 10 years to be granted by the TPO. Under the PCT, the process may be much faster because at the time of enter national phase, a search report has been established. The search report may be submitted as a Report of Foreign Examination. However, if the current law has not been changed, we may still be required to submit a report of foreign examination or a granted patent when we request for substantive examination. Of course, this will delay the process.

Question 9
When and how could we file the amendments of the specifications of a Thai patent application and file the divisional application with TPO.

Answer 9
Amendment can be filed anytime as long as the amendment does not enlarge the scope of protection under section 20 of Thai Patent Act. The amendment can be made under the Amendment Application with an Official fee of THB50. The applicant cannot file the divisional application without prior approval from the Examiner. As such, the divisional application can only be made if there is specific instruction from the Examiner. The Divisional Application must be filed within 120-day upon receiving Examiner’s instruction under Section 26 of Thai Patent Act.

Question 10
Do we have a duty to disclose the information of a genetic source on filing a patent application before TPO?

Answer 10
Yes. The applicant has a duty to disclose all relevant information before the TPO. The disclosure must be full, concise and clear and exact terms as to enable any person ordinarily skilled in the art to make and use the invention in pursuant to Section 17 of Thai Patent Act. Further, please note that currently, the TPO has not yet accepted the filing of documents in electronic form e.g. submission of genetic sequences in CD-Rom. As such, all information submitted to TPO must be made in printed paper.

Question 11
Does TPO have any standards of judging the similarity of a trade mark?

Answer 11
The Trade Mark Office consider on the following;
- Visual appearance
- Transliteration
- Translation
- Specification
- Good Faith

However, we found that the Registrar, occasionally, consider only on Visual Appearance, Transliteration and Translation. Nevertheless, Trade Mark Appeal Board and IP Court consider 5 issues respectively.

Question 12
I think TPO has a precedent patent searching system. Is it usable for everyone or only for the registered one? What language is available on the system, only Thai?

Answer 12
Normally, conduct the search on the database of EPO, USPTO, and the Australian IPO. Therefore, the language is search is English. To our knowledge, the TPO also uses another two databases: DERWENT and WIPS. The language in search is also English. However, these databases are private databases owned by the DIP. As such, only computers located in the DIP can access this database.