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.