PHARMACEUTICAL PATENTS AND THE FUTURE OF OBJECTION PROCEEDINGS IN THAILAND
Three years ago, the Department of Intellectual Property (DIP) issued guidelines for examining chemical and pharmaceutical patents, with the aim of harmonising them with those for examining petty patents. The guidelines were developed by a variety of groups with an interest in patents, including non-government organisations involved with pharmaceuticals, government departments, academics, patent practitioners, and local and international pharmaceutical companies.
The guidelines provide examples of the proper format for claims, specifications and the requirements to prove the novelty and inventiveness of pharmaceutical patent applications, which had been a source of controversy for a long time.
Since the guidelines took effect, NGOs have raised questions about the completeness and accuracy of information in the database of patent applications published online by the Patent Office, the Thai Patent Gazette. As the database is often not as up to date and accurate as it should be, the NGOs claim it poses a significant challenge to monitor whether published pharmaceutical patent applications meet the requirements for patents.
As a result, the NGOs argue that they often do not have sufficient time to file objections to published patent applications, given that the Patent Act stipulates that an objection to a patent application must be filed within 90 days from the date the application is published in the Thai Patent Gazette. This is known as the pre-grant objection process. The NGOs proposed that the DIP should make its database more up to date and accurate, and that the objection period should be longer.
In January this year, the department held a meeting on amending the Patent Act. In order to expedite the registration process, one of its proposed amendments was to eliminate the current pre-grant objection process (i.e. the 90-day period after the patent application is published in the Thai Patent Gazette), and replace it with a post-grant objection process. Under the latter, a request for objection must be filed with the Patent Office within a prescribed period of time, dating from when the patent was granted.
Some NGOs and government agencies have argued that eliminating the pre-grant objection period would not help expedite the registration process. They say it should be retained, but with an extended objection period.
In addition, under the current Patent Act, the only way to take action against any patents that are later found not to meet registration requirements is to file an invalidation action with the Central Intellectual Property and International Trade Court (IP Court). As such, these NGOs and state agencies would also like to see a post-grant objection process handled through the Patent Office against any granted patents, as an alternative to pursuing invalidation through the IP Court, as it would be less costly and time-consuming.
The NGOs proposed that amending the Patent Act to provide both a pre-grant and a post-grant objection process would better balance the interests of patentees and the public. They also proposed that the pre-grant objection period should start from the date of publication of the application, and run until the patent is granted. They suggested that the time period to file a request for invalidation should be within one year from the date of the patent being granted.
Some countries allow both a pregrant and a post-grant objection process, while some allow only one of the two. For instance, India allows both, but the European Patent Office allows only a post-grant objection. Under the Indian Patent Act, any person can file a notice of pre-grant objection at any time from the date of publication of the patent application until the granting of the patent. In addition, the Indian Patent Act allows any interested person to file a notice of post-grant objection within one year from the date of the patent being granted. A “person interested” is defined as one who is engaged, promoting, or researching in the same field as that of the invention.
Clearly, the processes proposed by the Thai NGOs are similar to those provided in the Indian Patent Act. However, the advantages and disadvantages will not become clear until the system has been in place for some time; sufficient to iron out any teething problems as often arise with major changes in practice. What is certain is that in an ideal world we need to balance the interests of both patentees and the public.
The DIP is expected to finish drafting the amendments to the Patent Act this year. It remains to be seen whether it will accept the NGOs’ suggestions, which, although they arose from the issue of pharmaceutical patents, will affect the whole Thai patent system.