The GCC tent system provides a convenient way for applicants to secure patent rights effective in each of the GCC member states.
Gulf Cooperation Council
The Cooperation Council for the Arab States of the Gulf, also known as the Gulf Cooperation Council ("GCC"), is an association compromising Bahrain , Kuwait , Oman , Saudi Arabia , Qatar and the United Arab Emirates . The purpose of the association is basically to provide 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's stated objectives extend to fostering scientific and technical progress, facilitating transfer of technology, and boosting economic growth in the region. In furtherance of these objectives, the GCC Patent Office ("GCCPO") was established in Riyadh , Kingdom of Saudi Arabia , in 1998. The GCC Patent Regulations and implementing by-laws were issued shortly after, and the GCCPO then started accepting patent applications.
Substantive patent law
The substantive GCC patent law does not contain any real surprises. To be eligible for a patent under the GCC Patent Regulations, an invention shall be new, involve an inventive step, and be industrially applicable. Further,
- Novelty is absolute;
- Inventive step is assessed with regard to whether or not, having regard to what was known at the priority date, the claimed invention would have been obvious to a person having ordinary skill in the art to which the invention relates;
- Scientific theories and mathematical methods, computer programs, methods of doing business, plant varieties, methods of medical treatment, and so on, are not considered to be inventions;
- The description shall disclose the invention in a manner sufficiently clear to enable the invention to be carried out by a person having ordinary skill in the art;
- The claims shall be clear, concise and fully supported by the description;
- Priority from in an earlier application filed elsewhere may be sought for a period of 12 months from the priority date; and
- The invention shall not conflict with morality (being laws of Islamic Shariah, or public rules of conduct observed in the GCC member states).
Application, examination and grant
The GCC patent system does not form part of the Patent Cooperation Treaty (PCT) nor is it a signatory to the Paris Convention. However, the GCC Patent Office 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 three months 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 and the Chinese Patent Office. Applicants are provided with an opportunity to address any official objections that may arise.
Any decision to grant a patent is published in the official journal, and there is a three month period in which it maybe appealed to the GCCPO Grievance Committee. Decisions of the GCCPO Grievance Committee are, in turn, appealable to the competent authority in each of the member states. In the absence of any appeal, the patent is granted. From application to grant, it currently takes at least 36 months for a GCC patent to be granted.
Subject to the continued payment of the annual maintenance fees, the term of a GCC patent is 20 years from the application filing date. The annual fees are payable in advance, at the beginning of the year starting from the year after the application date. There is a three month grace period for payment of such fees, with a further three month grace period available for an additional fee. It is possible to pay the annual fees in advance to entirely or partially cover the validity of the patent.
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. Specifically, Article No. 26 of the GCC Patent Law states that:
The competent authorities of each Member State shall examine all disputes pertaining to infringement, or imminent infringement of the patent. Such authority shall settle the said disputes in pursuance of the provisions of the Regulation of the GCC Patent Office in addition to its own regulations governing national patents, if any, respectively, otherwise according to the general rules.
We have not encountered any cases involving allegations of infringement of a GCC patent. It remains to be seen as to how a claim of invalidity in response to a claim of patent infringement will be handled. If a claim of invalidity is made in response to a patent infringement allegation, we would expect the responsible authorities in the relevant GCC member state to hear the claim before addressing the infringement allegation. Despite this, there is a possibility that the party alleging invalidity will be required to file a complaint before the relevant authorities in Saudi Arabia in order to have the invalidity aspect addressed, with the infringement action being placed on hold until the invalidity issue is resolved.
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.