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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 are excluded from patentability:

  • plant varieties, animal species and biological methods of producing plants or animals;
  • diagnostic methods, treatments and surgical operations for humans and animals;
  • scientific and mathematical principles, discoveries and methods;
  • guides, rules or methods for conducting business, performing mental activities or playing games; and
  • inventions that violate public order or morals or relate to national defence.

To what extent can inventions covering software be patented?

Computer programs as such are excluded from patentability under the UAE 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?

Under the UAE Patent Law, business methods are excluded from patentability.  

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

The UAE 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 violate public order or morals are excluded from patent protection. 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?

No grace period exists in the United Arab Emirates.  

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

A third party may oppose the grant of a patent within 60 days of publication. The opposition must be based one of the following:

  • non-compliance with formalities;
  • non-patentable subject matter;
  • lack of novelty;
  • obviousness;
  • lack of industrial applicability; or
  • lack of unity of the invention.

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?

Decisions can be appealed to the Patent Committee and then from the Patent Committee to the courts.  

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 obtain 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% 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.  

What scope is there for forum selection?

The United Arab Emirates has no administrative authority to enforce patents.

The United Arab Emirates is a federation of seven emirates – Abu Dhabi, Dubai, Sharjah, Ajman, Ras Al Khaimah, Umm Al Qwain and Fujairah. Of these, three have their own court systems – Abu Dhabi, Dubai and Ras Al Khaimah. An infringement occurring in one of these emirates should be brought before the court of the relevant emirate. An infringement occurring in one of the other four emirates should be brought before the UAE federal courts. 

Dubai has a further court system – the common law and English language courts of the Dubai International Financial Centre (DIFC). The DIFC may hear any dispute where the parties agree to its jurisdiction. While it is unlikely that an infringer would agree to DIFC jurisdiction, it is possible that two large multinationals involved in a patent infringement dispute in the United Arab Emirates would agree to take the dispute to this court.  

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. The purpose of an interim order is to find and preserve infringing goods and equipment used to produce infringing goods before trial.

No pre-trial procedures exist. Once a claim is filed, the court will assign the date of the first hearing and summon the parties. This is normally done within one month of the claim being filed. 

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?

A claim for invalidity should be filed before the federal courts. A subsequent application for a stay in infringement proceedings will need to be made in the relevant jurisdiction.   

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

No specialist patent tribunals or judges exist in the United Arab Emirates.   

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

Civil trials are conducted on the basis of written memoranda and documentary evidence. In rare circumstances, a court may call oral witnesses. The court will also appoint an expert, who will consider the arguments and evidence presented and meet with the parties. The expert will then prepare and submit a report to the court. The court is not bound by the expert’s findings and both parties may submit further memoranda addressing the expert’s findings. The parties may also seek leave from the court to appoint their own experts.

Further arguments may be raised at any time during first-instance proceedings. In the event of further arguments, the other party will be given a chance to respond.

In the event of a criminal prosecution for a patent infringement, the prosecutor may call oral witnesses. 

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 United Arab Emirates.  

What role can and do expert witnesses play in proceedings?

Written evidence from experts can be presented to the court. The court may also appoint its own experts.  

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

No available jurisprudence relates 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?

Conservatory measure orders are the interim orders available under the Patent Law. Asset attachment orders to freeze assets or funds are available in some cases.   

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

The Patent Law provides no defined grounds to invalidate a patent; therefore, in addition to lack of novelty or inventive step, 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?

UAE courts may consider decisions from other countries in cases involving similar issues or equivalent patent rights; however, these are not binding.  

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

Attorney cost awards are generally unavailable. The losing party normally has 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.

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

The law should be read in line with UAE international treaty obligations and allow for effective permanent injunctions.  

How are damages awards calculated? Are punitive damages available?

Damages or an account 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 that establishes 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 the courts do not have enough experience to consider the issues in depth.

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 applies only to the infringement at issue, and not future acts of infringement. There is little precedent with respect to patent infringement disputes in the United Arab Emirates on which uniform conclusions regarding court practice can be drawn.

The law should be read in line with UAE international treaty obligations and allow for effective permanent injunctions.  

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 expert delays submission of his or her report or if the parties seek to appoint further experts. 

Judgments are rendered orally. A written judgment is usually available one to two weeks after the oral judgment. Appeal periods are calculated from the date on which the oral judgment was rendered.

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, notarisation 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 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.  

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 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; a court order is required in relation to patent infringement.