Introduction
12-month grace period
Patent exclusions
Patent and claim interpretation
Publication of patent applications
Urgent applications
Divisional applications
Assignment of patents
Exemptions for compulsory licences
Multiple industrial designs
Period of protection for designs
Grievance and opposition
Comment
The United Arab Emirates recently released its new law on industrial property – namely, Federal Law No. 11 of 2021 Concerning the Regulation and Protection of Industrial Property Rights. Article 3 of the law defines its scope of effectiveness, which includes:
- patents;
- industrial designs;
- integrated circuits;
- undisclosed information; and
- certificates of utility.
The law is deemed to be effective six months from its publication, which took place on 31 May 2021 through Official Gazette 703. The existing regulations under Federal Law No. 17 of 2002 will continue to dictate practice until the new regulations are issued. The new regulations were expected by the end of November 2021 but are still yet to be issued.
Article 3 defines the jurisdictional scope of the law to cover all emirates of the United Arab Emirates, and the various free zones. The inclusion of the free zones is important since the Dubai International Financial Centre (DIFC) recently enacted its own Intellectual Property Law, DIFC Law No. 4 of 2019. The DIFC IP law – which covers patents, utility certificates and industrial drawings and designs – fully recognises and enforces UAE patents within its jurisdictional territory.
Interestingly, the UAE law and the DIFC law contain differing provisions when dealing with the respective intellectual property. The outcome of this is that certain patent transactions within the DIFC may be subject to more stringent regulation when compared with the same transactions taking place outside it.
Nonetheless, the new UAE law has brought about some important changes to the existing law when dealing with patents, designs, industrial drawings and utility certificates. Some of the biggest changes affect the patent and industrial designs practices. The changes appear to be motivated by the United Arab Emirates' desire to align its patent and design practice with that of global practices (for further details, please see "New UAE patent legislation – shift towards US system?").
Some of the most notable changes are outlined in this article.
Article 5 of the law provides a grace period for any disclosures made by the inventor or a party who obtained information directly or indirectly from the inventor. Provided that the disclosure originates from the inventor and was made less than 12 months prior to the filing date, the application will still be deemed novel for substantive examination purposes.
Similarly, a 12-month grace period will also be applicable to industrial designs (article 43).
Article 7 of the new law specifically added the exclusion of "software"-based inventions and natural substances, even if purified or isolated from nature.
The debate around "software"-based inventions – or "computer-implemented inventions", as they are commonly referred to – is therefore expected to continue.
The remaining patent exclusions remain largely unchanged.
Patent and claim interpretation
Under article 11, the "summary of invention" as part of the specification has been excluded for the purposes of interpreting the application. The summary will now only serve the purpose of providing public information or the technical character of the patent.
This is contrary to the previous law where, under article 16, the entire specification could be used to interpret the application.
Publication of patent applications
Under article 13, the Patent Office will begin publishing patent applications (ie, applications filed and awaiting substantive examination or grant). Previously, the Patent Office only published granted patents.
Under article 14, an applicant may now request expedited examination of their patent application. This is despite the date of filing the application. An expedited examination process was previously not available.
The ability to file and prosecute a divisional application is now specifically dealt with in article 16 of the new law. Divisional applications were not specifically dealt with under the previous law.
The divisional application will share the filing date of the parent application. Further guidance as to the process of applying for divisional applications is expected with the issuance of the new regulations.
Not an addition to the law, but rather a portion which may have required revision, is the assignment of a patent application under article 21. This article still requires the assignment document to be attested by a notary public within the United Arab Emirates, a process which has caused issues in the past due to the notary public's refusal to do so.
Notary publics will not attest an assignment document for a patent application without a patent certificate identifying and certifying the rights that are to be assigned. However, an assignment document must be submitted to meet the formal requirements for filing a patent application.
It remains to be seen whether this catch-22 paradox will be resolved when the regulations issue.
Exemptions for compulsory licences
Article 28 of the new law allows the state to ignore the conditions set out for granting a compulsory licence (set out in article 25) in the face of an emergency, crisis, disaster or dire public need, or for non-commercial purposes. Previously, the requirement was that the invention had to make a significant contribution to the public interest. The article has likely been included in the wake of the covid-19 pandemic.
Although multiple designs were previously allowed (provided that they were related in terms of their manufacture and uses – or stated differently – falling under the same Locarno classification), article 41 of the new law removes the limitation that a party may have only 20 such designs.
Period of protection for designs
Article 45 extends the period of protection from 10 years to 20 years. The extended period will only begin from the date of filing the application.
Article 74 provides for a committee to be formed, comprising a judge and two members who are experienced in the IP rights field, one of whom must be an employee of the International Centre for Patent Registration (ICPR) under the Ministry of Economy. The committee's purpose will be to review grievances lodged by concerned parties regarding the ICPR's decision to grant a patent, design or utility certificate.
The grievance, or request for re-examination, must be made after the patent, design or utility certificate has been granted, but within a period to be set out in the executive regulations of the new law.
These latest amendments to the patent and design laws show the United Arab Emirates' intention to modernise its laws to keep pace with innovations and support its vision of creating a knowledge-based economy. The soon-to-be-released implementing regulations will provide additional guidance on applying these new laws, for the creation, protection and enforcement of the respective intellectual property.
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.