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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

To qualify for a patent, an invention must be new, involve an inventive step and be industrially applicable.

What are the limits on patentability?

The following subject matter is excluded from patentability:

  • discoveries, scientific theories and mathematical methods;
  • schemes, rules and methods for doing business, performing purely mental acts or playing games;
  • plant varieties, animal species and biological methods of producing plants or animals, with the exception of micro-organisms, non-biological and microbiological processes; and
  • surgical or therapeutic methods of treatment applied to humans or animals and methods of diagnosis applied to humans or animals, with the exception of products used in any of these methods.

To what extent can inventions covering software be patented?

Computer programs as such cannot be patented under Saudi law. However, if a computer program is suitably tied to hardware and presented as a technical solution to a technical problem, a patent application may be pursued, provided that the other criteria for patentability are satisfied.  

To what extent can inventions covering business methods be patented?

Business methods are excluded from patentability.  

To what extent can inventions relating to stem cells be patented?

Saudi patent law has no provisions regarding stem cells. Natural substances are excluded from patentability, but processes for isolating natural substances may be patented.  

Are there restrictions on any other kinds of invention?

Patent protection will not be granted if the commercial exploitation of the invention contradicts Sharia law or harmful to human or animal life, or public health, or is substantially harmful to the environment. Alcoholic beverages and methods for producing them are examples of such inventions.  

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

Saudi Arabia has no grace period.  

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

An interested party can oppose the grant of a patent and partial and total revocation can be sought, provided that the patent violates a legal requirement. The opposition must be filed with the Patent Committee within 90 days of the decision to grant the patent being published in the Official Gazette.     

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

There are no other options to challenge a patent before the Patent Office.  

How can patent office decisions be appealed in your jurisdiction?

The Patent Office’s decisions are subject to appeal before the Patent Committee. The committee’s decisions are subject to appeal before the Riyadh Administrative Court and its judgments are subject to appeal before the Administrative Court of Appeal. Administrative Court of Appeal judgments are final, unless they:

  • violate Islamic principles or any codified regulations;
  • are based on an incorrect application or interpretation, including the judicial precedents established by the Administrative Supreme Court;
  • have been issued by an incompetent court;
  • have been issued by a court not duly formed according to the law;
  • are based on an incorrect characterisation or description of facts; or
  • contradict a previous judgment between the same parties.

If any of the above exemptions exist, the Administrative Court of Appeal’s judgment will be subject to a further stage of cassation before the Administrative Supreme Court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

Patents are usually granted about three to five years after filing. For applicant companies, the costs associated with filing and receiving a patent are approximately $8,000, including official fees and patent agent fees – provided that no examination reports are issued. Costs associated with translating the application into Arabic are excluded. Additional costs are associated with filing responses to substantive examinations, amounting to approximately $2,600 per response (including professional fees). Up to three responses can be filed during an examination. Individual applicants will receive a 50% discount on official fees.  

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Enforcement proceedings can be initiated only after a patent has been granted. Courts may stay infringement proceedings pending the outcome of revocation proceedings brought as a defence.

The Patent Committee has statutory jurisdiction to hear revocation disputes.  

What scope is there for forum selection?

There is no scope for forum selection.

Under the Saudi national patent system, a patent infringement action is initiated by submitting a statement of claim before a special quasi-judicial committee (ie, the Committee for Reviewing Patent Disputes) established for this purpose by King Abdul-Aziz City for Science and Technology. The committee’s decisions are subject to appeal before the Riyadh Administrative Court and the Riyadh Administrative Court’s judgments are subject to appeal before the Administrative Court of Appeal. Administrative Court of Appeal judgments are final, unless they:

  • violate Islamic principles or any codified regulations;
  • are based on an incorrect application or interpretation of the same, including the judicial precedents established by the Administrative Supreme Court;
  • have been issued by an incompetent court;
  • have been issued by a court not duly formed according to the law;
  • are based on an incorrect characterisation or description of facts; or
  • contradict a previous judgment between the same parties.

If any of the above exemptions exist, the Administrative Court of Appeal’s judgment will be subject to a further stage of cassation before the Administrative Supreme Court.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

There are no pre-trial procedural stages. The interested party must file its statement of claim directly before the Patent Committee, whether the alleged infringement relates to a Saudi national patent or a patent issued under the regional Gulf Cooperation Council (GCC) patent regulations. After filing, the committee will set a date for the first hearing.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

It is common for a defendant not to appear at the first hearing and several adjournments may be granted in order for the defendant to appoint an advocate to appear on its behalf.  

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Invalidity and infringement actions both fall within the Patent Committee’s jurisdiction. Separate invalidity proceedings may be filed in response to infringement proceedings and the infringer may request that the committee stay the infringement action until it decides on the patent invalidity claim.  

At trial
What level of expertise can a patent owner expect from the courts?

The Patent Committee is formed of three lawyers and two technical experts nominated by the King Abdul-Aziz City for Science and Technology president.

In addition, the committee may seek assistance from experts with regard to the technical matters surrounding each dispute.

Are cases decided by one judge, a panel of judges or a jury?

The Patent Committee is formed by three lawyers and two technical experts nominated by the King Abdul-Aziz City for Science and Technology president.

The committee’s decisions are made by majority vote. The grounds for a decision must be stated and read during a committee public session. The committee must notify the King Abdul-Aziz City for Science and Technology of its decisions. A first-instance trial before the committee takes approximately two years. The timeline depends on the committee’s workload and the existence of the committee itself, as it is formed every three years by a Council of Ministers resolution.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist in Saudi Arabia.  

What role can and do expert witnesses play in proceedings?

The Patent Committee may seek assistance from different expert bodies with regard to technical matters within a particular dispute. In such cases the committee may order the litigants that it holds liable to deposit, within a certain period, amounts equal to the estimated costs of the expert. If the respective party fails to submit the expert expenses within the specified period, the other party may deposit the amount, without prejudice to its right to recover the expenses should the dispute be decided in its favour.  

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

No case law supports the doctrine of equivalents. To date, case law has dealt with literal infringements only.  

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

In theory, preliminary injunctions are available if the following conditions are met:

An infringement action has already been filed before the Patent Committee or, in the absence of such action, the applicant has filed an infringement action before the committee within 10 days of the injunction.

The applicant submits a surety or guarantee bond, as requested by the committee.
There is prima facie evidence that the original infringement action is likely to be decided in favour of the applicant.

How are issues around infringement and validity treated in your jurisdiction?

According to the Saudi national patent system, there is a special action for patent invalidation. Invalidation actions are subject to no time limitations and any interested party can file an invalidation action at any time. Therefore, it is unlikely that the Patent Committee will allow an infringer to raise the issue of patent invalidity as a defence against alleged infringement, because the infringer will already have had a chance to invalidate the relevant patent before infringing it. A separate invalidation case may be filed.

The party initiating an infringement action must establish its personal interest in the action by proving its ownership of the protected subject matter or its rights of exploitation under a duly recorded licence.

In a revocation action, the plaintiff need not prove that it has personal interest in the action, because anyone can file an invalidation action as long as the patent violates a legal requirement.

Declaratory proceedings are not recognised in Saudi Arabia.

Contributory infringement is not recognised. Nevertheless, nothing prohibits a patent owner from suing infringers jointly in an infringement action where their collective efforts resulted in the infringement of the owner’s patented rights.

Other than lack of novelty and inventive step claims, a patent may be invalidated if:

  • its commercial exploitation violates Islamic principles;
  • its commercial exploitation is harmful to life, human, animal, or plant health or is substantially harmful to the environment; or
  • the relevant invention is non-patentable under the law.

A patent may also be invalidated if it was granted to someone other than the creator of the invention.

Invalidity and infringement actions both fall within the Patent Committee’s jurisdiction. Separate invalidity proceedings may be filed in response to infringement proceedings. The infringer may request that the committee stay the infringement action until it decides on the patent invalidity claim.

Other grounds of defence against an infringement allegation include:

  • where the subject matter is a process, that the products were produced using a process different from the protected process;
  • that the subject matter is illegal in light of Islamic principles, codified regulations or established judicial precedents; or
  • that the subject matter is unsafe in light of its effect on human or animal health or the environment.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Courts may consider decisions from cases involving similar issues or equivalent patent rights, but they are not bound by these.  

Damages and remedies
Can the successful party obtain costs from the losing party?

Costs awards are generally unavailable.   

What are the typical remedies granted to a successful plaintiff?

Although it is theoretically possible for aggrieved parties to claim damages, Saudi courts are generally reluctant to make damages awards. In order for a damages claim to be accepted in Saudi Arabia, the relevant damage must be proved to be direct, actual and countable. Indirect damage, lost profits and damage that is likely to occur are not accepted under Islamic principles. Damages awards are very rare in practice.

Other possible forms of relief for patent infringements are:

  • confiscation and destruction of infringing products;
  • confiscation and destruction of all materials and tools used by the infringer to produce the infringing products;
  • a prohibition on the import of infringing products.

Declarations are not available.

How are damages awards calculated? Are punitive damages available?

In order for a damages claim to be accepted in Saudi Arabia, the relevant damage must be proved to be direct, actual and countable. Indirect damage, lost profits and damage that is likely to occur are not accepted under Islamic principles. 

Punitive damages are not available.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Courts may order the cessation of “the effects of an activity contravening the law”, which should effectively mean a permanent injunction. However, some commentators believe that this would apply only to the infringement at issue, and not to future acts of infringement. There is little precedent with respect to patent infringement disputes in Saudi Arabia on which uniform conclusions regarding court practices can be drawn.   

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

It takes approximately two years for a first-instance trial before the Patent Committee to be concluded and for a judgment to be issued. The time depends on the committee’s workload and the existence of the committee itself, as it is formed every three years by a Council of Ministers resolution.  

How much should a litigant plan to pay to take a case through to a first-instance decision?

Proceeding costs will vary greatly, depending on a number of factors, including:

  • whether a foreign or local firm is appointed as representation;
  • the complexity of the case;
  • the number of experts required; and
  • the amount of evidence that must be translated into Arabic, notarised and ratified.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The first-instance judgment issued by the Patent Committee is subject to appeal before the Riyadh Administrative Court. Riyadh Administrative Court judgments are subject to appeal before the Administrative Court of Appeal. Administrative Court of Appeal judgments are final, unless they:

  • violate Islamic principles or any codified regulations;
  • are based on an incorrect application or interpretation of the same, including the judicial precedents established by the Administrative Supreme Court;
  • have been issued by an incompetent court;
  • have been issued by a court not duly formed according to the law;
  • are based on an incorrect characterisation or description of facts; or
  • contradict a previous judgment between the same parties.

If any of the above exemptions exist, the Administrative Court of Appeal judgment will be subject to a further stage of cassation before the Administrative Supreme Court.

Appeal cases are usually concluded faster than cases before the court of first instance, in approximately eight to 12 months.

Options outside court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

 Border measures for patent infringements are regulated by the unified GCC Customs Law, which “prohibits admission, transit or exit of prohibited or infringing goods”. Goods that violate IP rights are considered ‘prohibited goods’. To prevent the import of infringing goods into other GCC countries, a court order is required. In theory, patent infringements may be stopped at the border where the goal is to import or export the infringing goods. However, in practice, an ex officio action is available only with respect to trademarks and some copyright infringements in Saudi Arabia; a court order is required in relation to patent infringement.