INTRODUCTION.
As technological advancements continue to levitate, it becomes very crucial for the forerunner to forfend his innovation. The legality of this ballgame needs intermittent structuring from time to time.
Issuing the new Federal Law no. 11 of 2021, concerning the regulation and protection of Industrial Property Rights, coming into force, the Arab legislators of the UAE have made the patent filing procedures easier than ever.
AMENDMENTS
- Letter patent
The former law used the word "Letters Patent". But, in the current amendments, the word "Letters Patent" has been replaced with the word "Patent" in the new law. Letters patent is basically a legal instrument in the form of a published written order, issued by sovereign power, such as king, president, head of state or corporation, that gives a patentee an exclusive right and privilege over the invention.
- Disclosure period
The most important test for a patent claim to be patentable is that it must be a novel (new). In simple words, an invention is considered novel, when it has not been disclosed to the public before the filing date through any medium. Patent protection is very crucial for the inventors as it gives them the legal right to an invention.
Having said that, in contradiction to the novelty requirement is the practice of disclosure/grace period that some legislations allow. This period was scaled at six months in the former law and has been extended to twelve months by the latest amendments under Article 5(4) of Federal Law No. 11 of 2021. The grace period allows the inventors to disclose the invention and can even publish and sell the same before filing it at the Patent Office. All the technical disclosures of the invention that occur within these this twelve-month period will not affect the requirement of novelty. The grace period is not a part of novelty consideration, and novel status still applies to the whole invention.
There are legislations where absolute novelty is required and there is no concept of grace period. In countries like these, if an invention is disclosed to the public prior to filing a patent application, it loses its novelty and is not eligible for patent protection. Novelty requirements vary from state to state but are standard in most of the legislations.
- Divisional and Conversion applications
In the new Patent Law, the legislators introduced the concept of filing divisional applications applicable for Patent, Utility Model, and Industrial Design. Now, the Applicant can file one or more divisional applications for an application that contains two or more inventions provided that the subject matter is within the scope of the original application.
Also, the new Patent Law has introduced a provision for conversion of the applications while the application is pending. These applications include patent and utility model applications. Now, after filing the application, the Applicant can convert the application, and the original application will be withdrawn automatically after conversion of such application.
- Grace period for annuity payment
Article 18 of the new Patent Law provides the two months grace period for filing the annuity payment after lapse and 12 months of grace period with late fee.
- Publication and examination
The biggest drawback of the former law was that the applications were published after registration. In other words, those applications which were rejected during examination were not published and only granted patent applications were published. In the UAE patent database, there were no entries of such rejected applications.
Now, under Article 13 of the newest law, the patent applications will be published within 18 months if the invention meets the conditions required by the law and its Executive Regulations. This amendment is very beneficial as it provides public access to the filed patent application. It encourages public examination, and any interested party can oppose it.
With the help of the latest amendment made to the law, express examination procedure has been also introduced. Under Article 13 of the new Patent Law, the Applicant can file a request for express examination by paying a fee of AED 2,000. Thereafter, the first examination of the patent application will be initiated within 6 months from the date of the payment of express examination fee.
- Examination
In the new Patent Law, a formality amendment order by the Examiner has been introduced. If the Applicant fails to respond to the Examiner for any formality amendment order after filing the patent application in the UAE and before grant, the application will be deemed to be withdrawn. If the Applicant files the response against such order, the Patent Office will take the patent application in examination, otherwise the Examiner will reject the application.
The new Patent law also reduces the examination fee for minor defects. If any minor defects are found by the Examiner, the Examiner will order the Applicant to amend such defect. The amendments for correcting the defect will be filed along with a reexamination request and a fee of AED 2,000 for patent or AED 1,000 for utility model. As per the preceding law, the examination fee was AED 5,000 and minor errors were corrected only by filing a request for reexamination.
In UAE, there were multiple reexaminations of a patent application by the patent office, based on several requests of reexamination from the Applicant. Therefore, it is restricted by the amended regulations now. The examiners can reject the patent application after the second examination and dispose of the case. This amendment is quite beneficial for the Patent Office to reduce the time of the examination as well as expediate the process in disposing of the patent applications. However, the Applicant will have limited chances to overcome the Patent Office objections.
The major amendment in the new Patent Law is to introduce post grant re-examination. In a general term, the post grant opposition refers to those oppositions which are filed after the patent is granted. The post grant opposition may be filed by any interested party with filing of evidence within a prescribed time. In the past, there was no provision related to post grant reexamination, thereby chances of technical review of the subject matter by the experts were less. According to the new Patent Law, the Applicant can request a Post Grant Re-examination within 90 days from the date of the Ministerial decision and publication. Any interested party can file an opposition within 60 days of the decision of the senior examiners. Senior examiners having legal and technical expertise can only perform the post grant reexamination. This small change gives ample time to the interested parties and patent owners to challenge the patent on the grounds of its inconsistency and get it invalidated. The latest amendments to the law have also introduced post-grant amendments in claims of patent applications.
- Infringement Penalty
Article 69 of the new Patent Law increases the amount of penalty from Max. 100,000 Dirham to Max. 1,000,000 Dirham.
- Protection Term for Industrial Design
The term for protecting the industrial design has been extended for ten years from the filing date of the application. Now, the protection of industrial design shall be valid for twenty years. As per the Article 45 of the new Patent Law, the Applicant shall pay annual fees to the industrial design registration throughout the whole applicable duration of protection.
- Protecting Integrated Circuit Layout Design
This is a major amendment in the UAE IP system. The Integrated Circuit layout design is protected in many countries. However, it was not previously covered in the UAE. Now, with the latest amendments, the legislators have introduced protection of Integrated Circuit (IC) layout design. The term for protecting the IC Layout Design is ten years from the filing date or the first commercial use. This amendment provides a shielding zone to manufacturers and layout makers of semiconductor integrated circuits.
- Specification Drafting
Claims are a very important aspect of the patent application. The claims represent the whole invention and are examined during prosecution. All foreign countries have their own restrictions on drafting claims. However, in the preceding law, no provisions were defined. These provisions are now well defined in the new law. As per Article 15 of the new Patent law, the claims shall include "A priori" and "a posteriori" that refer to how, or on what basis, a proposition might be known. The category of each independent claim shall be defined. The Applicant should define whether the claim is a device claim or a method claim. Now, the claim numbers are restricted in the up-to-date patent law. The Applicant can file maximum 50 claims in patents and 10 claims in utility patent.
The provisions for filing drawings have also been introduced. The drawings must be filed in black and white. Applicants are allowed to take screenshots or photos if it represents the design of the application. If the design contains color, the color will be recognized as an element of the design unless specified otherwise.
- Filing Procedure
The filing procedure has been made more rudimental which in turn will help the patent owners to overcome the filing complexities and save time to meet the filing deadlines.
With the help of the new mandate, a user-friendly patent filing procedure looks like this:
- At the time of filing, claims do not need to be filed. However, in the previous law, the claims had to be submitted at the time of filing the patent application.
- The certification requirements have become lenient and flexible with the help of lower level of notarizations and attestations. Foreign notarizations of the documents are now accepted and there is no certification required for a UAE public sector document. In the former law, the certification requirements were very stringent, and all foreign documents had to be attested by the UAE Embassy, whereas the local documents had to be attested through the Notary Public.
Notarization and translation of all substantive documents such as the patent descriptions, claims, drawings, and formality documents such as the Power of Attorney, Deed of Assignment, Certificate of Incorporation & Priority document shall be done in accordance with the Executive Regulations of this law.
CONCLUDING REMARKS
These amendments to the former patent guidelines and regulations have provided a new IP legal framework to protect innovations in a time efficient manner. It also reduces the cost of the innovators for processing and filing their applications in the UAE. However, the procedural measures are unclear in the current amendments and can only be understood with the help of the executive regulations. Further, there is a need for more clarity on provisions related to invalidity and infringement cases.
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.
