Thai­land in the International In­tel­lec­tual Prop­erty ( IP) In­dex

Thai-American Business (T-AB) Magazine - - Content -

Now in its fifth edition, the U. S. Cham­ber’s International IP In­dex con­tin­ues to pro­vide an im­por­tant in­dus­try per­spec­tive on the IP stan­dards that in­flu­ence both long- and short- term busi­ness and investment de­ci­sions. The In­dex is a unique and con­tin­u­ously evolv­ing in­stru­ment. Not only does it as­sess the state of the international IP en­vi­ron­ment, it also pro­vides a clear roadmap for any econ­omy that wishes to be com­pet­i­tive in the 21st cen­tury knowl­edge- based global econ­omy. Large, small, de­vel­op­ing, or de­vel­oped— economies from across the world can use the insights about their own na­tional IP en­vi­ron­ments as well as that of their neigh­bors and international com­peti­tors to im­prove their own per­for­mance and bet­ter com­pete at the high­est lev­els for global investment, tal­ent, and growth.


Thai­land’s over­all score has in­creased from 25% of the to­tal pos­si­ble score in the fourth edition ( with a score of 7.40 out of 30) to 27% ( 9.53 out of 35) in the fifth edition. This re­sult re­flects some strengths in the new in­di­ca­tors added in the fifth edition, in­clud­ing in­di­ca­tor 31 on cus­tom trans­parency, and an im­prove­ment in in­di­ca­tor 30 on bor­der mea­sures com­bat­ing coun­ter­feit­ing and phys­i­cal piracy.


Pa­tentabil­ity re­quire­ments and Patent Op­po­si­tion: The Depart­ment of In­tel­lec­tual Prop­erty ( DIP) con­tin­ues to face long back­logs, es­ti­mated at 38,500 for patents as of mid- 2016. It takes on av­er­age 5 to 9 years for a patent to be granted, par­tic­u­larly for life sciences in­ven­tions and patents sub­mit­ted through the PCT route. Against this back­drop, pro­posed patent amend­ments would re­place the pre- grant op­po­si­tion sys­tem with a time- lim­ited post- grant sys­tem, and would shorten the time to re­quest sub­stan­tive ex­am­i­na­tion from 5 to 3 years. A Board of In­val­i­da­tion would be set up within DIP to man­age post- grant op­po­si­tion pro­ce­dures. As an ad­di­tional mea­sure aimed at re­duc­ing the patent back­log, DIP also un­veiled plans to triple the num­ber of ex­am­in­ers, cur­rently at only about 40. Nev­er­the­less, the pro­posed amend­ments do not ad­dress key chal­lenges about pa­tentabil­ity cri­te­ria, no­tably in re­la­tion to life sciences patents.


Clear im­ple­men­ta­tion of poli­cies and guide­lines re­quir­ing that any pro­pri­etary soft­ware used on gov­ern­ment ICT sys­tems should be li­censed soft­ware: In late 2015, the Thai Se­cu­ri­ties and Ex­change Com­mis­sion was re­port­edly the first ASEAN public body to im­ple­ment soft­ware asset man­age­ment prac­tices. While pos­i­tive, this re­mains an iso­lated ex­am­ple in a con­text of gen­eral high rates of un­li­censed soft­ware.


Dis­crim­i­na­tion/ re­stric­tions on the use of brands in the pack ag­ing of dif­fer­ent prod­ucts:

The To­bacco Con­sump­tion and Con­trol Act, cur­rently un­der con­sid­er­a­tion by the Coun­cil of State, pro­poses re­mov­ing all brand­ing from cig­a­rette pack­ages, save the brand name in small print. In ad­di­tion to im­ping­ing on trade­mark rights, the mea­sures would make it harder to fight coun­ter­feit to­bacco goods, fur­ther ag­gra­vat­ing an al­ready se­ri­ous prob­lem in Thai­land. The in­tro­duc­tion of such a mea­sure ap­plied to any in­dus­try would sig­nif­i­cantly re­strict the use of brands, trade­marks, and trade dress on retail pack­ag­ing, un­der­min­ing the ben­e­fits of trade­marks to busi­nesses and con­sumers alike, and set­ting a neg­a­tive prece­dent for IP pol­icy.

Le­gal mea­sures avail­able that pro­vide nec­es­sary ex­clu­sive rights to re­dress unau­tho­rized uses of trade­marks:

In 2016, Thai­land en­acted amend­ments to the Trade­mark Act aimed at bring­ing its pro­vi­sions in line with the Madrid Pro­to­col, of which the coun­try is seek­ing to be­come a mem­ber. The amend­ments clar­ify some pro­ce­dural as­pects and po­ten­tially shorten pros­e­cu­tion time by re­duc­ing the time pe­riod for re­spond­ing to DIP ac­tions and op­po­si­tions. In ad­di­tion, they broaden the scope of pro­tec­tion by al­low­ing mul­ti­ple- class fil­ing and reg­is­tra­tion of sound marks, as well as by ex­tend­ing the search of sim­i­lar and iden­ti­cal trade­marks to all classes ( at present, it is lim­ited to the one where the ap­pli­ca­tion was filed). Im­por­tantly, the amend­ments also crim­i­nal­ize re­fill­ing ( that is, pass­ing off unau­tho­rized con­tent as le­git­i­mate us­ing orig­i­nal, branded pack­ag­ing).


Civil and pr oce­du­ral reme­dies: In 2016, a new Spe­cial­ized Ap­peals Court was es­tab­lished in Thai­land in an ef­fort to re­duce the back­log and strengthen civil pro­ceed­ings in lower courts. Nev­er­the­less, other bar­ri­ers to se­cur­ing re­lief through the civil sys­tem re­main un­ad­dressed, such as the lim­ited avail­abil­ity of dam­ages, with the re­sult that civil cases are rarely pur­sued by IP rights hold­ers.

Ef­fec­tive bor­der mea­sures: A po­ten­tial loop­hole ex­ists in re­la­tion to in- tran­sit ac­tions in­tro­duced in cus­tom leg­is­la­tion in 2015 that could limit the in­clu­sion of IP within the re­mit of il­le­gal goods be­cause the trans­ship­ment of in­fring­ing goods is not ex­pressly pro­hib­ited in IP law ( only im­por­ta­tion is). How­ever, pos­i­tively, avail­able pre­lim­i­nary ev­i­dence suggests that cus­toms of­fi­cials are in­ter­pret­ing the new pro­vi­sion to in­clude coun­ter­feit goods. On this ba­sis, Thai­land’s score for this in­di­ca­tor in­creased by 0.25.

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