Out of the IP bad books, with work still to do

Out of the IP bad books, with work still to do

Washington's upgrade of Thailand signals recognition of a decade of efforts to improve protection and enforcement

The decision by the United States to remove Thailand from a list of poor performers in intellectual property (IP) protection marks an important milestone for the country and will improve business confidence, according to the Bangkok-based law firm Tilleke & Gibbins.

The Office of the US Trade Representative (USTR) announced the move on Dec 15 when it upgraded Thailand from its Priority Watch List (PWL) of countries deemed to have deficient IP practices. The country is now on the Watch List, meaning there are issues that still must be addressed, but they are not as serious as before in Washington's view. The country had been on the PWL since 2007.

"Thailand's upgraded status is an acknowledgment by the USTR that the country's efforts to update its IP legislation for the 21st century are proceeding in the right direction," said Wiramrudee Mokkhavesa, an attorney-at-law with the firm.

The USTR reviews IP practices worldwide in its annual Special 301 report, named for the section of the Trade Act that covers such issues. The report designates countries based on an assessment of whether their IP policies are deemed harmful to US commercial interests, explained Alec Wheatley, a consultant with the firm's intellectual property group. The designations are:

Priority Foreign Countries: These are countries that the USTR believes have the most onerous or egregious policies with the greatest adverse impact on US rights holders or products. These countries are subject to accelerated investigations and possible sanctions.

Priority Watch List: This covers countries that do not provide adequate IP protection and enforcement or market access for US creators.

Watch List: Countries in this category merit bilateral attention to address underlying IP rights problems.

Over the past decade, successive Thai governments have made significant efforts to improve IP protection and enforcement against infringement, Tilleke and Gibbins noted. The effort appeared to pay off in April 2017 when Washington announced an out-of-cycle review of the country's PWL status if the government continued to take positive steps.

"Such reviews are conducted when a country has made significant efforts to strengthen IP protections, and are designed to encourage countries on the PWL to continue driving progress in resolving high-priority IP issues," the firm said.

In light of the influence that an out-of-cycle review can have, Prime Minister Prayut Chan-o-cha took the matter under serious consideration by instructing the relevant agencies to take immediate steps to suppress the circulation of counterfeit goods.

He also supported a number of legislative changes designed to improve IP enforcement, and encouraged the country's prompt accession to the Madrid Protocol. In cooperation with all relevant stakeholders, the government also took aggressive action to remove counterfeit goods from notorious markets.

The USTR has recognised the country's efforts as a sign of a genuine desire to improve its IP regime. In its statement, it highlighted several notable steps, including:

Creating the National Committee on Intellectual Property Policy, headed by Gen Prayut.

Setting up the Suppression of Intellectual Property Infringement Subcommittee, headed by Deputy Prime Minister Prawit Wongsuwon. It includes additional agencies, such as the Food and Drug Administration (FDA), that had not been included in previous incarnations of such committees.

Significantly increasing the number of examiners at the Department of Intellectual Property (DIP) to address the backlog of patent and trademark applications.

Acceding to the Madrid Protocol, an international agreement that allows for a trademark registered in one country to be registered in any other countries that are part of the Protocol.

Enacting new amendments to the Copyright Act and Computer Crime Act to address online IP infringement and internet service provider liability.

Involving pharmaceutical stakeholders in amending the Drug Act, and allowing regular consultation with the FDA.

Many of these efforts address shortcomings that the USTR had noted in previous versions of its Special 301 report. It highlighted copyright piracy, counterfeiting and deficiencies in the patent system.

The rise of e-commerce in recent years has brought further challenges, given that many counterfeit goods and IP-infringing products are now sold online. The USTR has noted several issues in this area, such as the lack of reliable notice-and-takedown procedures, and legal provisions prohibiting circumvention of technical protection measures and deletion of rights management information.

"On the enforcement side, by introducing amendments to the Copyright Act and Computer Crime Act, the government has provided additional legal approaches for IP owners seeking to enforce their rights online," Tilleke and Gibbins said.

"On the protection side, increasing the capacity of the DIP to process patent and trademark applications will reduce the current backlog and encourage companies in IP-intensive industries, such as entertainment, pharmaceuticals and technology, to do business in Thailand.

"Similarly, accession to the Madrid Protocol will also make it easier for foreign companies that want to use the international application pathway to protect their valuable trademarks in Thailand, further demonstrating to foreign companies that the country is a safe place to do business."

Now that the country has been removed from the PWL, the government is in a strong position to continue driving efforts to achieve the goals of Thailand 4.0 and the economic prosperity of a value-based economy by providing strong and effective IP protection, the firm said.

"The time is right for IP owners to take advantage of the current legal climate by taking steps to fully protect and enforce their IP rights in Thailand," it said.

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