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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

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

What are the limits on patentability?

The following are excluded from patentability:

  • discoveries, scientific theories, mathematical methods and computer programs;
  • schemes, rules and methods for doing business, performing purely mental acts or playing games;
  • plant varieties, animal species and biological methods for producing plants or animals;
  • surgical or therapeutic treatment methods for humans or animals; and
  • inventions that violate public order, including the protection of human, animal and plant life  and health, or that cause serious damage to the environment. 

To what extent can inventions covering software be patented?

Computer programs as such are excluded from patentability under the Gulf Cooperation Council Patent 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 under the Gulf Cooperation Council Patent Law.  

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

The Gulf Cooperation Council 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?

Inventions that conflict with Sharia law and public rules are excluded from patentability in Gulf Cooperation Council states. 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?

There is no grace period available in the Gulf Cooperation Council.  

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

Third parties may oppose the grant of a patent within three months of its publication.     

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?

Gulf Cooperation Council (GCC) Patent Office decisions can be appealed before the Grievances Committee. Grievances Committee decisions can be appealed before the competent authority of the host country (ie, Saudi Arabia, where the GCC Patent Office is located).  

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?

Gulf Cooperation Council patents are granted approximately 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 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 is granted. The courts of the member state where the alleged infringement occurred have jurisdiction to examine disputes in relation to infringements of a Gulf Cooperation Council (GCC) patent. The Patent Committee in Saudi Arabia has statutory jurisdiction to hear revocation disputes with regard to GCC patents. National courts may stay infringement proceedings pending the outcome of revocation proceedings brought as a defence.  

What scope is there for forum selection?

No uniform enforcement mechanism with regard to Gulf Cooperation Council patents exists. Infringement proceedings must be brought before the court of the country where the alleged infringement occurred. If the infringement took place in more than one state, there is scope to choose the forum for the dispute. However, an infringement decision in one state does not bind other member states. Thus, successful court decisions are advantageous only insofar as they provide leverage to encourage a settlement in another member state.  

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

An interim conservatory measures order may be sought before filing a main claim at the national court of the country where the alleged infringement took place. The purpose of this order is to find and preserve infringing goods and equipment used to produce infringing goods before trial.

There are no pre-trial procedures. Once the main claim is filed, the court will assign the date for the first hearing and summon the parties.

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. If a defendant is not a citizen of the respective country, diplomatic service procedures (which take months) may be needed.  

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?

A claim for invalidation of a granted Gulf Cooperation Council patent can be filed before the Patent Committee in Saudi Arabia. The respective national court may stay infringement proceedings pending the outcome of the revocation proceedings brought as a defence.   

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

There are no specialist patent tribunals or judges in Gulf Cooperation Council member states, other than in Saudi Arabia.   

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

Civil trials in Gulf Cooperation Council member states are conducted on the basis of written memoranda and documentary evidence. A single judge hears most of the cases. In rare circumstances the court may sit as a panel, based on the merits of the case and the amount of damages claimed.  

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 the Gulf Cooperation Council.  

What role can and do expert witnesses play in proceedings?

Written evidence provided by experts can be presented to the court. Courts may also appoint their own experts.  

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

There is no jurisprudence relating to non-literal equivalents. Courts are expected to take a very literal and simplistic view in determining infringement until they gain experience.  

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

Courts may use conservatory measures orders as interim orders. An asset attachment order to freeze assets or funds may be available in some cases.  

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

The Gulf Cooperation Council Patent Law provides no defined grounds to invalidate a patent; therefore, in addition to  lack of novelty or inventive step claims, it may be possible to argue for the invalidation of a patent based on other grounds, such as misappropriation.  

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

The national courts of Gulf Cooperation Council member states may consider decisions involving similar issues from other jurisdictions. The Riyadh Convention provides that each contracting party must recognise court judgments from other contracting parties in civil cases which are final and binding. However, an enforcement order by the national courts is required.  

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

Cost awards are generally unavailable in the Gulf Cooperation Council. The losing party will normally have to pay court and expert fees.  

What are the typical remedies granted to a successful plaintiff?

The typical remedies available are damages or an account of profits.

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 this applies only to the infringement at issue, and not to future acts of infringement.

How are damages awards calculated? Are punitive damages available?

Damages and accounts of profits are estimated based on evidence placed before the court. The court may ask an expert to assist with calculations. As there is no discovery process, it may be difficult to provide evidence to establish damages or an account of profits. 

Damages awards tend to be small (generally in IP cases, as there is little jurisprudence for patent litigation), as courts do not have enough experience to consider the issues in depth. Punitive damages are not available in the Gulf Cooperation Council.  

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 this applies only to the infringement at issue, and not to future acts of infringement. There is little precedent with respect to patent infringement disputes in the Gulf Cooperation Council on which uniform conclusions regarding court practice 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?

First-instance enforcement proceedings generally take 12 to 18 months to complete, but can be longer, particularly if the defendant seeks adjournments, an expert delays the submission of his or her report or the parties seek to appoint further experts.

Judgments are rendered orally. Written judgments are subsequently available. However, lower court judgments are not published and are available only to the parties to the case. Only Court of Cassation decisions are published.

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 will need to 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?

Gulf Cooperation Council member states are civil law jurisdictions. The court of first instance and the court of appeal are courts of fact and law and thus their judgments may be contested. Appeal cases are usually concluded faster than cases before the court of first instance, in about eight to 12 months, but this differs between jurisdictions.  

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 Gulf Cooperation Council (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 when 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 and the United Arab Emirates; a court order is required in relation to patent infringement.