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 the United Arab Emirates.(1) In particular, this article sets out the procedure for applying for a patent.
Formal and substantive examination
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 the United Arab Emirates: 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.
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.
Accelerated examination is available upon request to the examiner. A request, and payment of additional fees, must be made at the time of filing the application.
Applications are automatically published within 18 months of the earliest filing date. Applicants may request an earlier publication if desired.
Previously, the UAE Patent Office would only publish granted patents – patent applications were not published. The recent changes to the UAE Patent Law changed this position, and applications filed after 30 November 2021 will be published at the 18-month deadline.
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 Grievances Committee. Objections may include a request for re-examination or that the application be deemed null. There are no additional fees required once the application has passed the examination process. However, the request must be formally made.
Appeals against a decision of the Grievance Committee are brought before the local UAE courts. Matters dealing with validity (ie, nullity) may be brought before the Grievance Committee or the local UAE courts. Matters related to infringement or seizures must be brought before the local UAE 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.
Restoration is available only during prosecution in the United Arab Emirates – it is not possible after grant.
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, see:
- "Practical guide to patents in the United Arab Emirates: relevant legislation";
- "Practical guide to patents in the United Arab Emirates: applications and applicants"; and
- "Practical guide to patents in the United Arab Emirates: patentability requirements".
For the fourth article in a similar series on patent law in Saudi Arabia, see "Practical guide to patents in Saudi Arabia: procedure".