Effective as of November 1 2014, the UAE Patent Office has changed its practice in relation to the payment of official fees for the substantive examination of patent applications.
On the face of it, this change is innocuous. However, when considered in the context of other recent changes implemented by the UAE Patent Office, this change may be more significant than it initially appears. In particular, it potentially heralds a significant change in the UAE Patent Office's examination policy – moving forward, applications may be subject to substantive examination much more quickly than has previously been the case.
Change in practice
As of November 1 2014, the official fees for the substantive examination of patent applications in the United Arab Emirates are due either:
- when an application is filed (where the application is filed simultaneously with all supporting documents); or
- within 90 days of the application date (where the applicant makes use of the 90-day statutory period to file legalised supporting documents).
The UAE Patent Office's notification of its change in practice states that a failure to pay the official fees within the stipulated timeframe will cause the relevant application to lapse. This changes the previous practice, under which the UAE Patent Office issued a notice (at some stage after completion of the formality examination) requiring substantive examination fees to be paid. This was an inefficient procedure, as it was one of a number of communication steps between the applicant, the UAE Patent Office and the Austrian Patent Office (to which the examination of UAE patent applications had been outsourced) which needed to be completed before substantive examination could take place.
While the previous procedure was in place, a significant backlog of applications was created in the UAE Patent Office, with the initial substantive examination of applications often taking many years to complete.
Other changes in practice
At the same time as announcing this change in practice, the UAE Patent Office stated that official fees for the substantive examination of applications filed in 2011, 2012 and 2013 must be paid within 90 days (ie, by January 23 2015). Again, if relevant applicants do not meet this deadline, their applications will be deemed to have lapsed.
This is in line with a similar announcement from the UAE Patent Office in February 2014, whereby it called for official fees for the substantive examination of applications filed in 2008, 2009 and 2010 to be paid. Following this announcement, the UAE Patent Office processed those applications within the 90-day timeframe.
Consistent with these developments, the UAE Patent Office entered into a memorandum of understanding with the South Korean Intellectual Property Office (KIPO) on February 7 2014, under which it was agreed that KIPO examiners would be engaged to examine patent applications received by the UAE Patent Office. This replaced the previous arrangement, under which the examination of applications filed with the UAE Patent Office was outsourced to the Austrian Patent Office.
Impact of changes in practice
By itself, the UAE Patent Office's announcement that applicants must pay official fees for substantive examination at the outset of the application process may be seen as nothing more than a requirement for applicants to make payments at an earlier stage of the application process. However, when considered alongside the other changes that the UAE Patent Office has implemented throughout 2014, it appears that the UAE Patent Office is looking to revise its policies in order to make the application process more efficient and to enable the substantive examination of pending applications to take place much earlier than was previously the case.
Of course, as this new policy has been in place only for a short time, the true impact of these changes remains to be seen. Only time will tell whether the backlog in the United Arab Emirates will be cleared and whether new applications will be examined within a relatively quick timeframe.
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