With effect from 1 November 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 practice change is innocuous. However, when considered in the context of other recent changes being implemented at the UAE Patent Office, it seems that this could be more significant than it initially appears.
Specifically, this potentially heralds a significant change in the examination policy at the UAE Patent Office such that, moving forward, applications could be subject to substantive examination much more quickly than has previously been the case.
The change in practice
As from 1 November 2014, the official fees for the substantive examination of patent applications in the UAE are due either:
- At the time the application is filed (where the application is filed simultaneously with all supporting documentation); or
- Within 90 days of the application date (where the applicant makes use of 90 day statutory period to file legalised supporting documentation)
The notification of this change in practice issued by the UAE Patent Office states that a failure to pay the official fees within these stipulated timeframes will cause the relevant application to lapse.
This changes the previous practice under which the Patent Office issued a notice (at some stage after the completion of the formality examination) requiring the substantive examination fees to be paid. This was not an efficient 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.
During the time in which this previous procedure was in place, a significant backlog of applications has built up with 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 has stated that the official fees for the substantive examination of applications filed in 2011, 2012 and 2013 must be paid within 90 days, ie by 23 January 2015. Again, if this timeframe is not met in relation to an application filed in one of these years, the application will be deemed to have lapsed.
This is in line with a similar announcement from the UAE Patent Office in February of this year, when it called for the official fees for the substantive examination of applications filed in 2008, 2009 and 2010 to be paid. Following this announcement, the UAE Patent Office has progressed those applications in relation to which the substantive fees were paid within the 90 day timeframe.
Consistent with these developments, the UAE Patent Office entered into a Memorandum of Understanding with the Korean Intellectual Property Office (KIPO) on 7 February 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 announcement by the UAE Patent Office that applicants are required to pay official fees for substantive examination at the outset of the application process may be seen as nothing more than requiring applicants to make payment at an earlier stage of the application process.
However, when considered together with the other steps which have been taken by the UAE Patent Office during the course of 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 has previously been the case. Of course, with this new policy only having been in place for a very short time, the true impact of these changes remains to be seen. Only time will tell whether we will see the backlog in the UAE being cleared together with new applications being examined within a relatively quick timeframe.