The UAE government has announced proposals to introduce major amendments to the IP regime in the UAE. These proposed changes will have an impact across three areas:
- Confidential Information – Introducing, for the first time, a mechanism for protecting confidential information through the civil courts;
- Patent And Design Protection – Introducing numerous improvements to the current regime, including, clarifying the test to be applied for assessing what constitutes a patentable invention and extending the term of protection for registered designs; and
- Integrated Circuits – Introducing, for the first time, protection for layout designs for integrated circuits.
These changes have been proposed by way of amendments to the UAE's existing Patents, Industrial Drawings and Designs Law (No. 31 of 2006) (the "Patent Law").
Confidential Information
The biggest impact of the amendments is likely to be in relation to the protection of confidential information. The proposed amendments will for the first time:
- enable rights in confidential information to be enforced by way of an injunction;
- allow parties to non-disclosure agreements to enforce their rights by way of an injunction;
- provide a claim for damages in the event of unauthorised disclosure of confidential information;
- clearly define what constitutes protectable confidential information (broadly defined as information which is (i) confidential, (ii) has commercial value, and (iii) is subject to reasonable steps to maintain confidentiality); and
- provide specific protection for test data required for regulatory approvals for pharmaceutical and agricultural chemical products.
Patents
The proposed amendments:
- clarify the basic standards of patentability, which were not
expressly stated in previous versions of the Patent Law. The Patent
Law will apply the following tests for patentability of inventions
in the UAE:
- novelty is to be judged on an absolute, worldwide basis;
- inventiveness is to be judged by reference to what is obvious to the ordinary person skilled in the art; and
- the question of whether an invention is capable of industrial
application is to be interpreted broadly, so as to include all
types of industry, including handicrafts; and
- remove the requirement that an Arabic translation of a patent
application must be submitted at the time of filing. This is very
positive news for patentees and practitioners alike because of the
very real risks which arise when translations of highly technical
patents are prepared at the last minute before the filing of
priority applications.
The deadline for filing Arabic translations has not yet been fixed but, if it matches the timetable for the submission of other supporting documents, then it is likely to be 90 days after filing.
These amendments are welcomed, although some clarification is required and further changes are desirable, such as:
- allowing decisions of the Patent Office on the examination of patents to be appealed to the courts;
- clarifying which of the two filing languages (Arabic and English) takes priority when it comes to enforcement;
- clarifying how GCC patents are to be enforced in the UAE;
- clarifying the deadlines for the payment of annuities (the current Patent Law creates a good deal of confusion between the deadline for paying annuities for international filings and the deadline for paying annuities for national phase, priority filings);
- providing a mechanism for lapsed patents to be restored, in certain limited circumstances where the patentee is not at fault; and
- clarifying an existing provision which excludes infringement by manufacturers whose use of an invention predates the filing or priority date for the patent application. It is hard to make sense of this provision in its current form as the prior use of an invention would appear to destroy novelty, rendering the invention unpatentable.
Designs
The proposed amendments:
- increase the term of protection for designs from 10 to 15 years; and
- clarify the basic standards of registerability, which were not expressly stated in previous versions of the Patent Law. The Patent Law will require novelty to be judged on an absolute, worldwide basis.
Similar to the position in relation to patents, this is welcomed although some additional clarification and further changes would also be beneficial.
For example, the provision which excludes infringement by users of a design whose use predates the filing or priority date for the application should be removed. It is hard to make sense of this provision as such prior use would appear to destroy novelty, rendering the design unregisterable.
Integrated Circuits
The proposed amendments will for the first time introduce protection in the UAE for the layout designs for integrated circuits. The amendments envisage:
- a regime under which layout designs for integrated circuits can be registered with the Patent Office (although it is unclear as to whether there will be any examination process);
- a two year priority period (from the date of first commercial exploitation); and
- a 10 year term of protection.
Comment
The introduction of these proposed amendments is positive news for rights owners.
The new provisions for layout designs and the protection of confidential information are both requirements in the TRIPS agreement, which will bring the UAE a step closer to compliance with the agreement.
The UAE government is also engaging in a consultation process
which is also very welcome news, and which may result in further
positive amendments being made to the legislation. Much, however,
will depend on the Implementing Regulations which have not yet been
published and which will have a significant impact on how the
amendments are to work in practice.
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.