Formal requirements
Substantive requirements
What is not registrable?
Divisional applications


This article is the third in a series outlining the practical aspects of patent legislation and procedure in the United Arab Emirates.(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 the United Arab Emirates, and explains how divisional applications work.

Formal requirements

The formal requirements for a patent or utility certificate 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).
  • 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 UAE Patent Office.

Substantive requirements

Patents
An invention may be patented in the United Arab Emirates if it:

  • is new (ie, not known to the public);(5)
  • is contrived from a creative idea or creative enhancement;
  • forms an inventive step; and
  • is capable of industrial application.

The law does not provide a comprehensive list of possible inventions. Instead, a list of inventions that cannot be patented is set out.

Utility certificates
An invention may be granted a utility certificate if it is new and capable of industrial application. It need not meet the requirement of an inventive step.

What is not registrable?

Patent protection will not be granted to:

  • methods of diagnosis or treatment of the human or animal body;
  • principles, discoveries, scientific theories and mathematical formulae;
  • research, plant varieties or animal breeds and biological methods of propagation, except methods of microorganisms and their products;
  • plans, rules, software, pure mental abilities, games and methods of conducting business;
  • natural substances, except methods of isolation or purification; and
  • applications against public order, morality or Sharia Law.

Divisional patent applications

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.

Endnotes

(1) For earlier articles in the series, please see:

For the third article in a similar series on patent law in Saudi Arabia, see "Practical guide to patents in Saudi Arabia: 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 UAE 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) There is a 12-month grace period from the date of initial disclosure, provided that the disclosure was made by the inventor or third party who obtained information directly or indirectly from the inventor.