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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
The Patent Committee is formed of three lawyers and two technical experts nominated by the King Abdul-Aziz City for Science and Technology president.
In addition, the committee may seek assistance from experts with regard to the technical matters surrounding each dispute.
Are cases decided by one judge, a panel of judges or a jury?
The Patent Committee is formed by three lawyers and two technical experts nominated by the King Abdul-Aziz City for Science and Technology president.
The committee’s decisions are made by majority vote. The grounds for a decision must be stated and read during a committee public session. The committee must notify the King Abdul-Aziz City for Science and Technology of its decisions. A first-instance trial before the committee takes approximately two years. The timeline depends on the committee’s workload and the existence of the committee itself, as it is formed every three years by a Council of Ministers resolution.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Jury trials do not exist in Saudi Arabia.
What role can and do expert witnesses play in proceedings?
The Patent Committee may seek assistance from different expert bodies with regard to technical matters within a particular dispute. In such cases the committee may order the litigants that it holds liable to deposit, within a certain period, amounts equal to the estimated costs of the expert. If the respective party fails to submit the expert expenses within the specified period, the other party may deposit the amount, without prejudice to its right to recover the expenses should the dispute be decided in its favour.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
No case law supports the doctrine of equivalents. To date, case law has dealt with literal infringements only.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
In theory, preliminary injunctions are available if the following conditions are met:
- An infringement action has already been filed before the Patent Committee or, in the absence of such action, the applicant has filed an infringement action before the committee within 10 days of the injunction.
- The applicant submits a surety or guarantee bond, as requested by the committee.
- There is prima facie evidence that the original infringement action is likely to be decided in favour of the applicant.
How are issues around infringement and validity treated in your jurisdiction?
According to the Saudi national patent system, there is a special action for patent invalidation. Invalidation actions are subject to no time limitations and any interested party can file an invalidation action at any time. Therefore, it is unlikely that the Patent Committee will allow an infringer to raise the issue of patent invalidity as a defence against alleged infringement, because the infringer will already have had a chance to invalidate the relevant patent before infringing it. A separate invalidation case may be filed.
The party initiating an infringement action must establish its personal interest in the action by proving its ownership of the protected subject matter or its rights of exploitation under a duly recorded licence.
In a revocation action, the plaintiff need not prove that it has personal interest in the action, because anyone can file an invalidation action as long as the patent violates a legal requirement.
Declaratory proceedings are not recognised in Saudi Arabia.
Contributory infringement is not recognised. Nevertheless, nothing prohibits a patent owner from suing infringers jointly in an infringement action where their collective efforts resulted in the infringement of the owner’s patented rights.
Other than lack of novelty and inventive step claims, a patent may be invalidated if:
- its commercial exploitation violates Islamic principles;
- its commercial exploitation is harmful to life, human, animal, or plant health or is substantially harmful to the environment; or
- the relevant invention is non-patentable under the law.
A patent may also be invalidated if it was granted to someone other than the creator of the invention.
Invalidity and infringement actions both fall within the Patent Committee’s jurisdiction. Separate invalidity proceedings may be filed in response to infringement proceedings. The infringer may request that the committee stay the infringement action until it decides on the patent invalidity claim.
Other grounds of defence against an infringement allegation include:
- where the subject matter is a process, that the products were produced using a process different from the protected process;
- that the subject matter is illegal in light of Islamic principles, codified regulations or established judicial precedents; or
- that the subject matter is unsafe in light of its effect on human or animal health or the environment.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Courts may consider decisions from cases involving similar issues or equivalent patent rights, but they are not bound by these.
Damages and remedies
Can the successful party obtain costs from the losing party?
Costs awards are generally unavailable.
What are the typical remedies granted to a successful plaintiff?
Although it is theoretically possible for aggrieved parties to claim damages, Saudi courts are generally reluctant to make damages awards. In order for a damages claim to be accepted in Saudi Arabia, the relevant damage must be proved to be direct, actual and countable. Indirect damage, lost profits and damage that is likely to occur are not accepted under Islamic principles. Damages awards are very rare in practice.
Other possible forms of relief for patent infringements are:
- confiscation and destruction of infringing products;
- confiscation and destruction of all materials and tools used by the infringer to produce the infringing products; and
- a prohibition on the import of infringing products.
Declarations are not available.
How are damages awards calculated? Are punitive damages available?
In order for a damages claim to be accepted in Saudi Arabia, the relevant damage must be proved to be direct, actual and countable. Indirect damage, lost profits and damage that is likely to occur are not accepted under Islamic principles.
Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
Courts may order the cessation of “the effects of an activity contravening the law”, which should effectively mean a permanent injunction. However, some commentators believe that this would apply only to the infringement at issue, and not to future acts of infringement. There is little precedent with respect to patent infringement disputes in Saudi Arabia on which uniform conclusions regarding court practices can be drawn.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
It takes approximately two years for a first-instance trial before the Patent Committee to be concluded and for a judgment to be issued. The time depends on the committee’s workload and the existence of the committee itself, as it is formed every three years by a Council of Ministers resolution.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Proceeding costs will vary greatly, depending on a number of factors, including:
- whether a foreign or local firm is appointed as representation;
- the complexity of the case;
- the number of experts required; and
- the amount of evidence that must be translated into Arabic, notarised and ratified.
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