Throughout history, people have looked for better ways to meet their needs and to satisfy their expectations. The wheel, gunpowder, the compass, printing, the internet, these are all solutions to problems and testaments to human ingenuity. Patents incentivise the research and development that goes into creating such innovations, which drive the economies of today.

A patent is a legal right to keep others from manufacturing, using or selling an invention without authority. A right granted by a government for a limited time typically 20 years in exchange for making the invention public so that others may learn from it and improve on it. Thus, the patentee is rewarded for taking the risks of making the investment necessary to make the invention. The society benefits from the ripple effect of becoming technologically strong and in turn economically. It is no coincidence that the most economically advanced countries in the world are also the most technologically strong.

Patents are territorial
Generally speaking, each country grants its own patents and that patent provides protection only in the country in which it is granted.

The GCC patent and the European patent are notable exceptions in that its member countries have decided that a single patent office should examine patent applications for patentability and be bound by the decision of that patent office as if it were their own.

Have Invention, Will Travel
Good inventions are likely to be borderless. iPad multimedia devices, BLACKBERRY communication devices, VIAGRA pharmaceuticals are hot products in markets throughout the world. In this globalised world, there is every reason to think big and venture into new markets. Filing for patent protection in foreign countries requires a well thought out strategy as time is of the essence and costs are high.

Patent applications must have an effective filing date which predates any public disclosure of the invention. Typically, it is a requirement that the invention remains undisclosed prior to filing for patent protection. Now, it is difficult to exploit an invention without disclosing it. Accordingly, with such a dilemma, the applicant faces a financial burden to protect their invention through a filing program. This places the applicant under considerable time pressure in meeting filing deadlines.

As a regional player, Al Tamimi & Company is well placed to present a regional response to putting in place a regional filing program for your inventions by using appropriate tools.

GCC patent system
The GCC patent system provides a convenient way for applicants to secure patent rights effective in each of the GCC member states.

The Cooperation Council for the Arab States of the Gulf, also known as the Gulf Cooperation Council("GCC"), is an association comprising Saudi Arabia, UAE, Kuwait, Qatar, Bahrain and Oman. The association forms a trade bloc and provides a common market, and this includes coordination of customs regulations and various trade-related laws, and even a proposal for a unified currency.

The GCC patent system does not form part of the Patent Cooperation Treaty (PCT) nor is it a signatory to the Paris Convention. However, it is important to note that the GCC Patent Office ("GCCPO") honours the Paris Convention priority rules and a GCC application can claim priority from a prior convention application as if the GCC were a signatory to the Paris Convention.

Upon filing, examiners at the GCCPO examine a GCC patent application for compliance with formalities. The applicant then has an opportunity in which to address any objections arising out of the formalities examination. Substantive examination is then undertaken on behalf of the GCCPO by IP Australia, the Austrian Patent Office or the Chinese Patent Office.

If the patent opposition period has ended, and the GCCPO has granted the patent, the grant of the patent may be challenged before the responsible authority in Saudi Arabia, the Board of Grievances.

In contrast, allegations of patent infringement are heard by the responsible authorities in the GCC member state in which the infringement is alleged to have occurred.

Paris Convention
The Paris Convention is useful in that it allows an applicant to delay the filing of a patent application in another member country by up to 12 months so long as you have filed a patent application in one member country.

The practical benefit is that once the patent application is filed, the applicant can disclose the invention e.g. by selling products embodying the invention and still obtain patents for the same invention in other member countries of the Paris Convention providing that applications are lodged within the 12 months period and a claim to Paris Convention priority is made.

Patent Cooperation Treaty ("PCT")
This is the most international of patent applications one can file where a single filing can secure an effective filing date in all of its member countries. Its membership comprises a large number of countries and the list continues to grow.

The PCT application does not mature into some kind of "international" registration. It merely acts as another useful delaying vehicle for essentially filing your application at each and every one of the national patent offices of the member countries you are interested in.

A delay for up to 18 months in having to incur the expenses of proceeding with an application at each national patent office of interest buys the applicant valuable time in seeking funds from investors or find partners or just to reassess the commercial viability of its invention.

Foreign applicants would note from the accompanying table and map that a number of countries in the Middle East are not PCT members including Saudi Arabia and Kuwait. A GCC patent application would be an appropriate tool for seeking patent protection in these countries.

For local UAE applicants, a common strategy would be to file a UAE application followed by a PCT application if overseas markets outside of the GCC common market are of interest. Otherwise, if only the GCC countries are relevant to say a purely GCC focused product, then it would be expedient to file a GCC patent application.

The GCC patent system, Paris Convention and the PCT are all valuable tools at the disposal of applicants as they seek to protect their inventions in the Middle East.

The accompanying table sets out some quick facts in an easy to reference format on filing requirements across the countries in which Al Tamimi & Company's award winning IP/IT team routinely assist our clients to strategise patent protection.

To view the table please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.