Formal and substantive examination
Publication
Opposition and grant
Amendments
Restoration
This article is the fourth in a series outlining the practical aspects of patent legislation and procedure in Saudi Arabia.(1) In particular, this article sets out the procedure for applying for a patent.
Formal and substantive examination
No accelerated examination procedure exists in Saudi Arabia. However, Saudi Arabia has entered into patent prosecution highway (PPH) programmes with the United States, Europe, Japan, China and South Korea. The PPH programme with the United States and Europe are currently operating as pilot programmes, and will end on 31 December 2022 and 1 July 2025, respectively. Under the PPH programme, an applicant whose claims have been favourably examined in one jurisdiction may ask for accelerated examination of their corresponding application at the office of later examination (OLE). The examining office and the OLE will share work, results and data, to reduce the duplication of work in examining applications. The sharing of work and results also leads to reduced costs and increase in speed of prosecution in the OLEs.
The examiner performs a substantive examination of the application once all formal requirements have been settled (for further details, see "Practical guide to patents in Saudi Arabia: patentability requirements"). The substantive examination will determine the novel and inventive aspects of the application.
The examiner will notify the applicant of its intention to begin substantive examination. The applicant is then required to submit a request for substantive examination, along with payment of an examination fee (for further details of the fees required, see "Practical guide to patents in Saudi Arabia: applications and applicants").
The examiner then examines the application and provides its findings to the applicant in the form of an examination report. The report will either accept, object to or reject the patent application, in part or in its entirety.
Applicants are given an opportunity to respond to the examination report. The response may include arguments against the examiner's findings, or amendments to the specification to comply with or avoid issues raised by the examiner.
A second round of examination may then take place, wherein the application (with arguments or amendments) is returned to the examiner, with a second request for substantive examination and payment of a second examination fee.
If the examiner still objects to the application, the applicant must proceed with an appeal to the examiner's report in order to continue prosecution and overturn the examiner's decision.
Applications are automatically published within 18 months of the earliest filing date. Applicants may request an earlier publication if desired.
Once the substantive requirements have been met, the application will be published and "lie open" for public inspection for an opposition period of 60 days. At this stage, any third party may object to the intended grant of the application based on the novelty or inventiveness of the invention taught. Additional objections as to the condition of the application (ie, correct inventors or chain of title, condition of the specification or drafting or sufficient disclosure of the invention) may also be raised.
Oppositions are lodged with Patent Committee. Objections must be brought once the application is first open to public inspection, and may include a request for re-examination or that the application be deemed null.
Appeals against a decision of the Patent Committee may be brought within 60 days of the decision being made known. Further appeals are then brought before the Commercial Court, the Commercial Court of Appeal and the high courts.
If no objections are raised, the application will proceed to grant.
Substantive amendments are available up until a request for substantive examination. After substantive examination has begun, amendments will only be possible in response to substantive examination. Formal amendments (ie, to rectify clerical errors and typos) are available.
Where an application is rejected or forfeited for lack of compliance with the required actions within the timeframe set out above for reasons beyond the applicant's control, the applicant may request restoration by:
- filing a petition of restoration within two months as of the date that the circumstances which led to the non-compliance end or within 12 months from the rejection date, whichever is sooner; and
- providing the reasons that led to the non-compliance and proving that the non-compliance was unintentional or due to force majeure, and that the delay happened despite exerting every possible effort.
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.
Endnotes
(1) For earlier articles in the series, please see:
- "Practical guide to patents in Saudi Arabia: relevant legislation";
- "Practical guide to patents in Saudi Arabia: applications and applicants"; and
- "Practical guide to patents in Saudi Arabia: patentability requirements".
For the fourth article in a similar series on patent law in the United Arab Emirates, see "Practical guide to patents in the United Arab Emirates: procedure".