12-month grace period
Grievance and opposition
On 31 May 2021, the United Arab Emirates published its long-awaited patent legislation under Federal Law No. 11 of 2021 concerning the regulation and protection of industrial property rights. The new law is expected to come into force later in 2021.
Interestingly, of all the changes and additions made, there are three which appear to have been influenced by US patent practice. This article discusses the provisions in the new Patent Law that now closely resemble their US counterparts.
Article 5(4) of the new law has introduced a 12-month grace period in the event of disclosure of the invention to the public. The grace period is effective provided such disclosure was made by any party who learnt of the invention either directly or indirectly from the original inventor. The new law stops short of describing the nature of the original inventor's disclosure, and whether a disclosure is limited to oral or written communication.
This provides a unique situation in which an individual is protected for up to a full year for an event which would otherwise be a novelty destroying event.
The grace period appears to mirror that of the US approach to disclosures under the Leahy-Smith America Invents Act.(1)
While the 12-month grace period provides recourse to inventors whose invention may have slipped through their fingers through an errant comment, it does not paint the full picture. Many countries around the world still do not accept a grace period for novelty determination. Therefore, any disclosure – even if made directly or indirectly through an inventor – will be a novelty-destroying event in most countries and may form a reason to reject a patent application.
This is particularly true in Europe, where grace periods are generally not respected. The effect is that an applicant utilising the 12-month grace period in the United Arab Emirates may only be able to have their patent outside the United Arab Emirates in specific countries (ie, the United States). However, this same applicant would be denied protection for the same invention in Europe.
However, since countries such as Australia, Canada, Japan, Singapore and of course the United States do respect the grace period, such leniency in novelty-destroying events can lead to a conducive flow of information and knowledge sharing between these nations.
Article 14 of the new law has introduced the possibility for urgent prosecution of an application. The new law provides that applications may be examined out of turn, at the request of the applicants, irrespective of their filing date or the date on which a request for substantive examination was made.
The new law provides little detail on the urgent application process, and whether all applications may be entitled to urgent applications remains to be seen. More information on this process will be uncovered once the regulations issue.
The urgent application process may be deemed similar to the "track-one prioritised examination" programme that is available in the United States. This programme enables applicants to request expedited examination of their applications, from filing to grant.
The United Arab Emirates may have multiple reasons for including the urgent application process in its latest version of the law. One reason would be to provide inventors or applicants the ability to reach the market earlier than a competitor, thus giving them a competitive edge.
Another reason may be to provide a benefit as a member under the Patent Prosecution Highway (PPH) programme. Under the PPH, if one claim is allowed in a member country, an applicant may request accelerated examination in another country based on the first country's examination outcome. Although the United Arab Emirates is not yet a member of the PPH programme, the inclusion of article 14 of the new law has paved the way for applicants to use the programme when, and if, the United Arab Emirates does become a member.
Article 74 of the new law provides an interesting approach to validity testing of patent applications. The article discusses the formation of a grievance council in which third parties may oppose the granting of a patent. Accordingly, the party may object by submitting arguments and paying a fee to the International Centre for Patent Registry (ICPR) at the Ministry.
The grounds on which a person may object to a granted patent have not been expressly defined, and further information on this process is expected when the regulations issue.
This process is akin to a similar process in the United States – namely, the "re-examination" process, which takes place before the Patent Trials and Appeal Board (PTAB).
Re-examination in the United States and the new grievance committee in the United Arab Emirates must be distinguished from the normal opposition process in effect in most jurisdictions. In most countries, a nine-month waiting period is observed once a patent is first granted. In this period, third parties may oppose the grant of the patent on a variety of grounds. If there is an opposition, the arguments are submitted to the office, which re-evaluates the decision to grant. After this process, the office will either reject the arguments and grant the application or void the granting of the patent.
After the nine-month waiting period, third-party objectors are required to challenge the validity of a patent through the country's court system. Given the litigious nature of the US legal system, the PTAB was created to alleviate the number of patent litigation matters flowing through the system.
It would appear that the United Arab Emirates may be interested in following this approach by creating its own version of the PTAB through the patent grievance committee. However, the new law does not go into detail of how the process would function, what grounds of invalidity may be relied on, or the periods for executing a post-grant grievance.
The new law is a promising step for local and international inventors and applicants looking to protect their inventions within the United Arab Emirates and do business within its borders.
The influence of the US system in the drafting of the new law shows a strong intention on the part of the United Arab Emirates to elevate itself to international patenting standards. The creation of a robust and litigious patent system, where patent rights can be effectively enforced, creates trust and confidence in the United Arab Emirates and its legal system.
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.