PATENT OFFICE PROCEEDINGS

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The total fee for the grant of a patent, excluding the examination fee, is US$755. The examination fee is calculated by the patent examiner and the applicant informed. The fee depends on the volume of work estimated by the examiner in examining the application. The patent office allows two substantive examinations. The professional fees of agents may vary. A typical agent fee may range from US$2,000 to $3,000. It may take 25 to 30 months until the issuance of a patent.

Saudi Arabia is also a member of the Patent Cooperation Treaty (PCT) with effect from 3 August 2013. The cost of obtaining a patent through a national phase is the same as a Saudi national application; however, national phase PCT applications are granted within 22 to 24 months.

The above cost does not include annuities and the cost of translations.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There is currently no such procedure available.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

There are clear guidelines on the contents of patent applications. The following are a necessary part of the patent application:

  • that the application shall be filed on the prescribed form;
  • the title of the invention, name and details of the applicant or applicants;
  • the name and details of the inventor or inventors;
  • the assignment deed, if the applicant is not an inventor;
  • the priority document, if claimed;
  • legalised power of attorney in the agent’s name (where applicable) up to the Saudi consulate;
  • a full and clear description sufficient that an ordinary person skilled in the art may carry out such process;
  • best mode disclosure (a requirement under Saudi patent law);
  • a brief on the previous state of the technology, and the problem that the applicant’s invention will solve; and
  • at least one independent claim, together with any dependent claims.
Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

It is a requirement under Saudi patent law to provide details on the previous state of technology as background to the invention. The applicant should state any problem related to the previous state of technology that its invention may overcome. The application shall also indicate the merits of the invention compared with the previous state of technology. These requirements will certainly require the applicant to provide a background of the prior art.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Before the decision to grant is issued, the applicant can file an amendment to its pending application through deletion or addition by paying the prescribed fee; however, such deletion or addition shall not exceed what was previously disclosed in the application at the time of filing. Additional claims can be filed through a new application; however, the new application shall fulfil the mandatory conditions of an independent patent application.

It is also possible to file divisional applications by claiming priority of the original application before the decision to grant the original application is made by the patent office. The concept of a patent of addition is not provided for in Saudi patent law.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An appeal can be filed with the Committee against an adverse decision by the patent office. The decision of the Committee is further appealable to the administrative court, and the final appeal lies with the court of appeal.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

After a formal and substantive examination, if the patent office finds that the application qualifies for a grant of a patent, it will be accepted and published. Interested parties can file an appeal against the decision to grant before the Committee. Current patent law does not specify the opposition procedure, although the Committee is competent to hear appeals against a decision of the patent office. The proceeding will be filed under provisions related to the revocation of a patent.

An appeal can be filed with the administrative court against the decision by the Committee. The decision of the administrative court is further appealable to the court of appeal.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

In Saudi Arabia, the first-to-file rule applies. If multiple inventors develop an invention independently, then an applicant with first filing will have priority over the grant of the patent.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

An applicant can file voluntary modifications before the decision to grant a patent is issued, through filing amendment (by deletion or addition) to its pending application together with payment of the prescribed fee. However, such modification shall not exceed what was previously disclosed in the application at the time of filing.

Other than voluntary modification, the patent office can ask the applicant to amend its application during first and second substantive examinations. The modifications in such case shall satisfy the objections raised by the patent office. There are two substantive examinations conducted; therefore, it is possible to amend the application twice. After a second examination report is issued, any amended application filed in response is considered final and will be followed by a final decision on the patent application.

In an appeal against refusal decisions, the amendment of a patent application during an appeal before a court is not possible. In the case of invalidity actions, the court has the authority to revoke a patent partially or completely.

Patent duration

How is the duration of patent protection determined?

The duration of a patent is 20 years from the date of the filing application in Saudi Arabia for Saudi national patents, and 20 years from the international filing date of PCT applications.