On 5 January 2021, the Supreme Council of the GCC held its annual meeting and issued its decision to discontinue the GCC Patent, with the announcement that the GCC Patent Office will no longer accept any new patent applications as of 6 January 2021. The GCC Patent Office, located in Riyadh, has been receiving patent applications since 1998 and was established to implement and grant a harmonized form of patent protection throughout the GCC countries. The main idea of GCC Patent system is to give the holder(s) of a GCC granted patents the benefit of legal protection of patent rights in all the GCC countries from one single regional application, which significantly reduced the financial and administrative burden on applicants. It should also urge patentees to acquire patents in the GCC region and invest more to support the innovative and creativity principles.

The departure from the GCC Patent initiative has left many questions for existing and prospective applicants, the majority of which remain relatively unclear and subject to further substantiation by the Supreme Council.

Initial Implications

The impending dissolvement of the GCC Patent Office means that all new patent applications in the GCC countries filed after 5 January 2021 must be filed either:

  1. By filing a patent application in each of the individual GCC countries via a Paris Convention application within the priority period of twelve months; or
  2. By filing a national application in each of the individual GCC countries under the Patent Cooperation Treaty national phase entry, within a thirty month priority period.

Existing GCC Patents

According to the latest communications, any patents filed prior to 5 January 2021 will be processed and examined as normal and the GCC Patent Office will continue to provide patent grants. However, this is subject to further clarification and it is possible the pending applications will be transferred or outsourced to a third party. We await further update on this point.

Given the uncertainty surrounding the future of the GCC patent, and the circumstances of examination and grant, it may be advisable for those who have recently filed a GCC patent to reconsider their existing strategy and file a patent application in each of the individual GCC countries, to avoid any unnecessary delay and possible complications to grant protection.

Why was the GCC Patent discontinued?

The Supreme Council has not given any indication of what led to the wind up of the GCC Patent. However, in practice the GCC patent faced several challenges across the GCC countries for many years. Rectification of treaty in each member state amongst other formalities raised many questions on whether this regional patent protection would be enforceable or not. As a result, there are known instances where courts within the GCC have refused to enforce a GCC Patent.

The GCC patent granted an inventor unified protection across the GCC countries and theoretically is subject to a uniform GCC legislation, which is actively in force in all of the member countries. However, in practice, the GCC Patent legislation is not relied upon in several of the GCC countries and each country would always refer to their own laws. Furthermore, no unified GCC court system was ever established. As a result, any objections to the patent would be managed by the authorities in Saudi Arabia and any patent disputes would be managed by the independent courts in the concerned GCC country.

In addition, the GCC patent system was not part of the Patent Cooperation Treaty nor signatory of the Paris Convention, and this made it a less popular option for applicants seeking straightforward worldwide protection through the respective priority periods.

What is the future for the GCC Patent?

In view of current time frames for processing patents and paying the annuities, the GCC Patent shall continue until at least 2040. In the meantime, the question whether the GCC patent will continue to be practically enforceable throughout the GCC remains unclear.

In the spirit of the GCC Charter and the basic objectives of the GCC, the Supreme Council will continue to advocate deeper integration between the member countries. However, instead of advocating a unitary law, there is a possibility that they will amend the existing GCC Patent Law to be more of a unifying law, similar to the current GCC Trade Mark Law.

That said, thus far, the implementation of a unifying law across the GCC member countries has not been without challenges. The GCC Trade Mark Law was envisioned to enter into force in all the GCC countries, harmonizing the national trademark systems in each country. Despite all countries completing the legal formalities to approve and implement the law nationally, not all of the member countries recognise the GCC Trade Mark Law and continue to use and rely on the national legislation provisions instead. We therefore expect that the implementation, legally or practically, of any unified GCC Patent law would not take place for some time still.

For now, we await further update and clarification from the Supreme Council and advise those concerned about the viability of the GCC patent to proceed with filing under the national route of each country. The patent protection in GCC local offices will go through a new era as many offices require massive investment in patent prosecution infrastructure to improve the patent protection process. The current requirements of which are set out below.

Current standard requirements for National Applications

United Arab Emirates

Patents in the UAE are regulated by Federal Law No 17 of 2002 (as amended by Federal Law No 31 of 2006).

The following standard documents are required for applications to obtain patent protection before the local patent registry:

  • Specification, claims, required drawings, abstract (in Arabic and English);
  • Power of Attorney (executed by the applicant and legalized up to the UAE consulate);
  • Assignment deed (executed by the inventor(s), translated into Arabic and legalized up to the UAE consulate);
  • Certified copies of the priority document(s) (within 90 days from the filing date, translated into Arabic);
  • PCT application no. (for PCT applications).

There are no restrictions on type of claim, claim dependency or the number of claims, nor is there any additional official fees for a large number of claims.

Saudi Arabia

Patents in Saudi Arabia are regulated by the Law on Patents, Layout-Designs of Integrated Circuits, Plant Varieties, and Industrial Designs (Saudi Patent Law).

The following standard documents are required for applications to obtain patent protection before the local patent registry:

  • Three copies of specifications, claims, required drawings, abstract in (in Arabic with English translation);
  • Power of Attorney (executed by the applicant and legalized up to the Saudi consulate);
  • Assignment deed (executed by the inventor(s) and legalized up to the Saudi consulate);
  • Certified copies of the priority document(s) (within 90 days from the filing date, translated into Arabic);
  • PCT application no. (for PCT applications).

The legalized inventor's assignment(s) and Power of Attorney must be submitted within three months from the application filing date. As with the UAE, there are no restrictions on type of claim, claim dependency or the number of claims, nor is there any additional fees for a large number of claims.

Oman

Patents in Oman are regulated by the Law of Industrial Property 67/2008.

The following standard documents are required for applications to obtain patent protection before the local patent registry:

  • Three copies of specifications, claims, required drawings, abstract in (in Arabic with English translation);
  • Power of Attorney duly legalized up to the Consulate of Oman or Apostilled;
  • Simple copy of Certificate of incorporation or Extract from the Commercial register;
  • Letters patent (home registration certificate) legalized up to the Consulate of Oman;
  • Deed of assignment signed by both parties duly legalized as above or Apostilled, if the applicant is not the inventor;
  • Certified copy of the priority document, if claiming priority;
  • International publication sheet and search report (if filing through PCT);
  • PCT Preliminary Examination Report.

Bahrain

Patents in Bahrain are regulated by Patents and Utility Models Law No. 1 of 2004, as amended by Law 14 of 2006.

The following standard documents are required for applications to obtain patent protection before the local patent registry:

  • Title of the patent and summary description of the invention;
  • Specification, claims, required drawings, abstract in (in Arabic with English translation);
  • Power of Attorney duly legalized up to the Bahraini Consulate or Apostilled;
  • An Extract from the Commercial Register or a Certificate of Incorporation duly legalized as above or Apostilled;
  • Deed of assignment signed by both parties duly legalized as above or Apostilled, if the applicant is not the inventor;
  • Certified copy of the priority document duly legalized as above or Apostilled, if claiming priority.

Qatar

The Qatari Patent Law (No. 30 of 2006) was enacted in 2006.

The following standard documents are required for applications to obtain patent protection before the local patent registry:

  • Title of patent (in Arabic and English);
  • Specification, claims, required drawings, abstract in (in Arabic with English translation);
  • Power of Attorney duly legalized up to the Consulate of Qatar;
  • Certified copy of the Extract from the Commercial Register or a Certificate of Incorporation;
  • Deed of assignment duly legalized as above, if the applicant is not the inventor;
  • Copy of international publication (if published) and search report (for national phase application);
  • Certified Priority documents, if priority is to be claimed.

Kuwait

Law No. 4 of 1962 regulates the registration of patents and industrial models in Kuwait.

The following standard documents are required for applications to obtain patent protection before the local patent registry:

  • Three copies of specifications, claims, required drawings, abstract in (in Arabic with English translation);
  • Power of Attorney duly legalized up to the Consulate of Kuwait;
  • An Extract from the Commercial Register or a Certificate of Incorporation duly legalized as above;
  • Deed of assignment signed by both parties duly legalized as above, if the applicant is not the inventor;
  • Certified copy of the priority document, if claiming priority;
  • PCT details in case of national phase.

It is noteworthy that the requirements for Kuwait are subject to review and further substantiation from the Kuwaiti Patent Office.

The country that will be most affected by the end of the GCC patent is Kuwait. For many years, protection in Kuwait could only be obtained via a GCC patent office. Prior to this, applicants would simply file the application in Kuwait and obtain a filing receipt. No examination would take place in Kuwait and there was no system for administering grants or paying annuities.

There has not been any formal announcement on Kuwait's position following the end of the GCC Patent, but it is likely we will soon see a development in this area and Kuwait will establish procedures so that it may grant its first national patent.

In conclusion, it is apparent that each of the GCC countries apply very similar requirements for patent protection and arrangements. This should continue to improve and ultimately ease the process of local application in each member countries. Having said this, and in light of recent development with GCC patent registry, we strongly urge all patent holders to review their patent protection strategy in the GCC countries and obtain a strategic advice on what options they can exercise. This should impact the existing patent applications, granted patents as well as the new inventions that will require patent protection in the future.

Originally Published by The Patent Lawyer.

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.