In a session with local IP agents on December 25, 2023, the UAE Patent Office announced forthcoming regulations on patents in the UAE.
The implementation of these new regulations is scheduled to commence on January 15, 2024. Notable points highlighted by the MOE expert include the following:
1) Clients should submit any outstanding documents at the time of application filing, if feasible. Filing amendments within 90 days will incur a fee using the portal's Amendment service.
Arabic translations following the application filing will be subject to an official fee per submission.
2) The commercial registration or certificate of a corporation if it is issued outside the UAE, could be only certified by the issuance department, and no need to be notarized.
3) SME filing fees are applicable only for the UAE companies that hold certificates from a government department showing that this is an SME project.
4) The express examination will incur a fee as per the re-structured schedule of patent and design fees, and the examination results will be issued within 6 months. After the payment of the express examination, the result of the examination will be issued within 6 months from the date of the payment. However, this depends on the ministry's capacity to receive or stop the express examination.
The start date of the express examination service not yet decided by the patent office.
5) Examination fees can be refundable, only in case the examination was not carried out.
The examination fees will depend on the number of claims, and the electronic portal will automatically calculate the fees.
6) The online portal will show the registered agent for the application to avoid paying the annuity twice.
7) If an application surpasses the designated deadline, restoration is still possible, but a new late filing fee will be charged for each month it exceeds.
Restoration applies only to registered applications, not pending ones. However, if a pending application lacks maintenance through annuity payments or if the agent fails to respond to examiner requirements promptly, it will incur fines and ultimately lapse after 9 months.
8) The Change of Agent can now be facilitated through a new mechanism, wherein the new agent has the option to request the patent office to link their portal account to the specific application. Additionally, they can request the dismissal of the previous agent associated with the application by paying the required fee for the agent change.
9) Any minor errors in the application should be identified during the second round of examination, and the examiner will be the authority to determine the nature of these minor errors.
In 2025, the patent office plans to issue examination results within one year from the filing date by outsourcing the examination process outside the UAE.
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.
