What is not registrable?
This article is the third in a series outlining the practical aspects of patent legislation and procedure in Saudi Arabia.(1) In particular, this article sets out the formal and substantive requirements with which patent applications must comply. It also highlights what is not registrable as a patent in Saudi Arabia, and explains how divisional applications work.
The formal requirements for a patent application are as follows:
- The application must be supported by a specification that sets out:
- an explanation of the technical field;
- a description of the prior art (ie, any prior inventions);
- an explanation of the invention, which is understandable to a person who has ordinary skill in the art (ie, technology);(2)
- a preferred method of use or details of the industrial application of the invention; and
- a brief description of the drawings (if any).
- All applications must be filed in Arabic at the time of making the application. Therefore, preparation before filing must take place with enough time to have the specification, claims and drawings (if any) translated ahead of the filing date. Applications will only receive a filing date once the full application (ie, with all translations) are filed. While the Patent Office may on occasion allow applications to be filed in a language other than Arabic, this is not the norm and should not be relied on.
- If the application is being filed by a representative, a power of attorney must be submitted. This may be lodged within 90 days from the date of filing if the representative agrees to file without the power of attorney (some law firms will not agree to this).
- If the application is being filed by a person other than the inventor, a deed of assignment must be submitted. This can be lodged within 90 days from the date of filing.
- If the application is being filed in the name of a company, a certified copy(3) of one of the following must be submitted:
- a commercial registry extract;
- a certificate of incorporation; or
- the company's memorandum of association, showing or evidencing the basis of the incorporation.
This can be lodged within 90 days from the date of filing.
- If the application is claiming benefit of an earlier filed patent application, a certified copy of the priority document must be submitted.(4) This can be lodged within 90 days from the date of filing.
Any supporting document that is filed late will attract a late fee for processing the documents by the Saudi Arabian Patent Office.
"Substantive requirements" refer to what is needed to meet the threshold to obtain a patent. The substantive requirements for a patent application are as follows:
- The invention must:
- be new;(5)
- involve an inventive step; and
- be capable of industrial applicability.
- The invention may be a product, an industrial process or related to either thereof.
- Registration of integrated circuit design may be applied for if the design has not yet been commercially exploited or has been commercially exploited for no more than two years anywhere (ie, worldwide).
- Plant varieties shall be patentable if they:
- are new, distinctive, homogenous and consistent; and
- have a name.
- Industrial model certificates shall be granted if the model is new and has characteristics that distinguish it from known industrial models.
Patent protection will not be granted to:
- inventions that violate Shari'ah law or concepts (in practice, therefore, it is important to obtain legal advice in this respect early);
- inventions that are harmful to life or human, animal or plant health, or that are substantially harmful to the environment;
- discoveries, scientific theories and mathematical methods;
- schemes, rules and methods of conducting commercial activities, exercising purely mental activities or playing a game;
- plants, animals and processes – which are mostly organic – used for the production of plants or animals, with the exception of micro-organisms and non-organic and microbiological processes; and
- methods of surgical or therapeutic treatment of the human or animal body and methods of diagnosis applied to human or animal bodies, with the exception of products used in any of these methods.
Applications covering more than one invention may be divided into two or more applications. Divisional applications, also referred to as "child applications", will retain the filing date of the parent application.
Divisional applications are prosecuted according to the normal rules of prosecution of patent applications. Successful prosecution of a child application will result in a new standalone patent.
Divisional applications may not exceed the scope of description or protection applied for under the respective parent application.
For further information on this topic please contact Richard Gaugeler at Bird & Bird by telephone (+44 20 7415 6000) or email ([email protected]). The Bird & Bird website can be accessed at www.twobirds.com.
(1) For earlier articles in the series, please see:
- "Practical guide to patents in Saudi Arabia: relevant legislation"; and
- "Practical guide to patents in Saudi Arabia: applications and applicants".
For the third article in a similar series on patent law in the United Arab Emirates, see "Practical guide to patents in the United Arab Emirates: patentability requirements".
(2) Given that the specifications must be clear and easily understandable, people often choose to keep their invention a trade secret rather than disclose it in a patent application.
(3) "Certified" means that the document must be authenticated by the issuing body, as is the case with a priority document, or legalised by the Saudi Arabian Ministry in the country where the company is incorporated, as is the case with the documents required above.
(4) Subsequent or additional patent applications must be filed within 12 months in order to claim priority. If filed under the Patent Cooperation Treaty, the priority period will be 30 months from the earliest priority date.
(5) Saudi Arabia does not provide for a grace period. Any disclosure of the invention prior to the filing date will amount to a novelty destroying event.