Covid-19 Grace Period for Intellectual Property (IP) related Prosecution
As Covid-19 (“Coronavirus”) continues rampage through the country, Thailand Department of Intellectual Property (“DIP”) will be allowing applicant/owner to file a request for a grace period extending the usual deadline. This grace period is preliminary provided for those who is directly affected by Covid-19. Further explanations are below.
What does this Covid-19 grace period cover?
Everything that is under the administration of DIP, including: patents, petty patents, design patents, trademarks, geographical indications and topography of integrated circuits.
This grace period will apply to all IP related prosecution process, such as: application deadline, opposition deadline, registration deadline, office action deadline or any payment deadline.
Who can apply for this?
The owner/applicant.
How does this work?
For individual, he/she must submit relevant documents showing evidence of sickness and treatment of Covid-19. In short, documents showing that Covid-19 has directly affected the ability to handle IP prosecution.
For company, it must prove that Covid-19 has directly impact and hinder the handling process of the related IP prosecution process. If the CEO or director became ill from Covid-19, he/she can submit related medical document on behalf of the company.
It is uncertain whether agent/lawyer can make a similar claim. At this time, it would seem that DIP will only allow a request made directly by the applicant/owner.
What are the required documents?
- Copy of the passport of the affected person (important);
- Medical certificate showing Covid-19 infection (important);
- Document proving resident within Covid-19 outbreak areas (important);
- Document verifying high-risk individual, close proximity of the infected or close proximity to those returning from high-risk areas;
- Any document that may prove direct impact from Covid-19 outbreak;
- Document verifying Covid-19 infection or outbreak have ended (important);
It is unclear as to how the Thai examiner/registrar will review these documents. Nonetheless, we have marked the important documents that should be submitted, and we will further discuss with the examiner/registrar if this is the case.
What happen after I submit the documents?
Once submitted, the examiner/registrar will review the request on a case-by-case basis. If approved, the applicant/owner will be granted a 30 days extension from the approval date. On the other hand, if the request is rejected, the applicant/owner can file an appeal within 15 days from the decision date. Once again, it is uncertain as to how DIP will calculate the dates.
Our recommendation
Avoid applying for a Covid-19 grace period unless it is necessary. Seeing multiple uncertainties, including document criteria, deadline on top of examiner/registrar own discretion, it may not be beneficial for owner/applicant to use this. There are considerable risks involve, if the request should fail it may subsequently cause the related IP matter to lapse.
Overall, we recommend that applicant/owner/agent maintain the formal deadline and prepare ahead of time. Our firm has implemented a work-from-home protocol and we are ready to assist you. If you have further question or concern, please contact ipgroup@ilct.co.th.
By:
Chart Chotiphol
Counsel/Business Development