Moving to an innovation economy

Victor Siriani of AVID Intellectual Property provides a comprehensive outline of patent protection and enforcement in the United Arab Emirates

As the United Arab Emirates (UAE) pushes to shift its economy from traditional oil and trading, it has been actively supporting businesses and universities to become more innovative and to venture into more creative projects. For example, the UAE government recently launched a $545 million fund to help innovators from all sectors realize their inventions and help promote the ‘new’ economy. Key to benefitting from this fund is that innovators must register their projects as intellectual property. This goes along with the changes and improvements in patent laws, and IP laws in general, that have been made in the UAE over the years.

There are some basic aspects to patent protection in the UAE that deserve to be outlined:

Memberships and law

The UAE is a member of the World Intellectual Property Organization (WIPO) as well as a signatory to the Paris Convention, the Patent Cooperation Treaty (PCT) and the World Trade Organization, and by extension the obligations of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

It is also a member of the Gulf Cooperation Council (GCC), which has established a GCC patent office where an applicant can choose to file a single application effective in all the six members of the council: Saudi Arabia, the UAE, Kuwait, Oman, Qatar and Bahrain.

Patents in the UAE are governed by Federal Law No 31 of 2006 on the industrial regulation and protection of patents, industrial drawings and designs, and is managed by the Administration of Industrial Property, under the Ministry of Economy.

Patent requirements and protection terms

A patent application in the UAE is examined as to whether it meets certain criteria, including absolute novelty, non-obviousness and industrial applicability. The UAE currently does not perform substantive examination of patent applications. Instead, it has agreements with other patent offices, such as the Austrian Patent Office, which conducts the substantive examination on its behalf.

Computer programs (software) are patentable as long as they are used with hardware (including machinery) and the use of which requires the computer program.

Each patent application must cover only one invention or a group of inter-related inventions that encompass one complete concept.

Types of patents and exclusions

Inventions may include products or a method of manufacturing (process) and cover mechanical and devices, new methods or processes used in manufacturing, and using existing methods to solve technical problems.

The standard exclusions of patent eligibility include: diagnostic methods, treatments, and surgical operations needed for humans and animals; scientific and mathematical principles, discoveries and methods; guides, rules or methods followed to conduct business or perform mental activities or play games; and inventions that may lead to a violation of the public order or morals.

Patents are also not granted for inventions related to animal species and biological methods of producing plants or animals. Microbiological methods and by-products are allowable inventions.

Since 2010, when Law No 17 of 2009 on the protection of plant varieties and plant breeders’ rights came into effect, patents can be issued for plant varieties. The requirements are that the new plant variety be new, distinct, uniform and stable.

Application procedures

Filing a patent in the UAE can be done in three ways:

  • File directly with the Administration of Industrial Property;

  • File a patent claiming priority based on an earlier application in another Paris Convention country within 12 months from the filing date of the first application; or

  • Designate the UAE as an ‘appointed office’ for applying for a patent under the terms of the PCT within 30 months.

Patent applications must be submitted in both Arabic and English. Once an application is filed with the administration, the application will be examined under the relevant formalities and to ensure it meets the basic requirements. If the application meets the requirements then the application will proceed to the substantive examination stage, which will include searching prior art for novelty, inventiveness and industrial applicability.

Upon acceptance of the application in the examination stage, the application will be published in the official gazette and there will be a 60-day period for any interested party to file an opposition against the patent application.

If no opposition is filed within this period, then the application will proceed to registration and the patent will be issued.

Rights of a patent holder

The patent protection term is 20 years from the date of the UAE patent application.

In the case of a PCT application, the protection period is calculated from the original (earliest) application date.

A patent holder has the right to exploit the invention, whether it is a product or a process. In case of a product, the owner can stop anyone from manufacturing, selling, importing or using the invention, and in case of an industrial process, to stop anyone from using the process or byproducts of the process.

The owner of a patent may assign its rights or licence, or mortgage the patent to another party. A licence agreement must be registered with the administration and published in order for it to have effect.

In the case of joint ownership of a patent, each joint owner may individually assign its share in the patent to another party and the consent of the other owners is not required. To grant a licence to another party, the approval of all owners is required.

Remedies against infringement

In the case of an infringement, the patent owner may request a court to issue a precautionary seizure order of the offending items. Such measures may also be taken against actions that are in conflict with contracts and licensing agreements.

Bail is usually required to be deposited against the precautionary seizure request, the amount of which is determined by the court.

Infringing items can be destroyed or impaired, including machinery and equipment used for the infringement.
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