United Arab Emirates: Welcoming 2024: UAE's Bold Leap Into The Future Of Patents Law With The New Set Of Amendments

INTRODUCTION

As the United Arab Emirates (UAE) strides boldly into the year 2024, the nation stands at the intersection of a dynamic business landscape and a commitment to global innovation. In the last three decades, the UAE has undergone a profound metamorphosis, emerging as the 26th best nation for doing business, as per the World Bank Group. This transformation is not only evident in its economic prowess but also in its ascendancy in the Global Competitiveness Index and the Global Innovation Index. With an exponential increase in patent applications – from approximately 8,000 in 2010 to surpassing 25,000 in 2020 – the UAE is not just a global competitor but a vanguard in promoting innovation and safeguarding intellectual property.

RECENT MAJOR AMENDMENTS IN THE UAE PATENTS LAW:

1. 2021 AMENDMENTS:

In 2021, the UAE embarked on a significant journey of legal reform with the issuance of Federal Law No. 11 of 2021. This sweeping legislative revision, published in the Official Gazette on May 31, 2021, encompasses patents, industrial designs, integrated circuits, undisclosed information, and utility certificates.

In 2021 amendments of the Patents Law, for the first time, the definition of inventive step was introduced. As per the definition, an invention is considered to involve an inventive step when it is not axiomatic (obvious) in the opinion of an ordinary craftsman. A patent can be granted for a new application, modification or an addition made to an invention which existed earlier.

A noteworthy amendment involved the introduction of a twelve-month grace period for the disclosure of inventions before filing a patent application in the UAE, as stipulated in Article 5(4). Additionally, Article 14 ushered in expedited examination procedures for specific patent categories. This article outlines provisions for urgent applications, allowing the Ministry to prioritize the examination of certain patent or utility certificate applications over others, irrespective of submission or examination dates, provided it does not compromise priority applications.

Another significant amendment pertained to the establishment of "Divisional Patent Applications" under Article 16. A modification to Article 11(8) now permits the filing of patent applications in either English or Arabic. In cases where one of these languages is unavailable at the time of filing, a provision in Article 11(9) allows for late filing within 90 days.

Concerning the exclusion of patentable subject matter, the amended Patents Law introduced the exclusion of "software" from patentability by amending Article 7(d). Another noteworthy exclusion involved "Natural substances", as amended in Article 7(e). Specifically, Article 7(e) delineates that "Natural substances" obtained through purification or separation from natural resources fall outside the patentability criteria. However, the "method" of purifying or separating such natural substances from their natural resources remains within the scope of patentability.

2. 2022 AMENDMENTS:

Among various challenges faced by foreign applicants seeking to file patents and industrial designs in the UAE, the requirement for document legalization, including Power of Attorney and Deed of Assignment, posed a significant obstacle. The most noteworthy amendment in UAE Patent Law, introduced in 2022, addressed this hurdle. Specifically, on September 21, 2022, the Ministry of Economy issued a circular email detailing new legalization requirement for Powers of Attorney (PoA) related to patents and industrial designs.

The amendments bring about a crucial change by eliminating the necessity for Consulate legalization of POAs and other requisite documents. The revised law stipulates that notarization of such documents is now sufficient. Additionally, the amendments clarified that a stamp from a UAE public entity, such as government organizations or national universities, is considered equivalent to notarization.

Another significant modification involves a simplification of the requirements for proving the right of invention by the applicants. The amended law specifies that if the inventor is an employee of a UAE company, they can now submit a certificate of employment or a copy of the employment contract as evidence, alleviating the previous necessity for a deed of assignment.

3. 2023 AMENDMENTS:

On November 13, 2023, the UAE issued Cabinet Resolution No. (112) of 2023, signifying a substantial shift in the legal landscape. This resolution introduces amendments to certain provisions outlined in Cabinet Resolution No. (20) of 2020. The official publication of the resolution occurred in the UAE Gazette 763 on November 15, 2023, with a scheduled effective date of January 15, 2024, two months after its publication.

These amendments represent a noteworthy evolution in the registration of patents, utility models, and industrial designs in the UAE. A key aspect of these changes is the introduction of new fees for services, including accelerated examination, re-examination for minor office actions, and post-grant examination. The primary objective of these modifications is to streamline the patent examination process, ultimately enhancing the efficiency of the industrial property system within the UAE.

KEY AMENDMENTS:

1. Official Filing Fee based on Applicant type: A crucial provision within Federal Law 11/2021 involves the introduction of official fees based on the type of applicant. This strategic step aligns with established practices in other significant jurisdictions, such as the USA and India, where office fees for various filing activities are categorized into distinct groups. In a similar vein, the UAE amended law delineates four distinct categories of applicant types, as detailed below:

1. natural persons/Individuals
2. companies
3. academic institutions
4. small and medium enterprises (SMEs)

For example, below table depicts the changes in the filing fee of patents & industrial designs pre-amendment and post-amendment:

2. Limitation imposed on the number of claims on patents:

A pivotal aspect of Federal Law 11/2021 involves the imposition of limits on the number of claims for patents. The revised law sets a maximum cap of 50 claims per patent. Ministerial Decision 112/2023 responds to this limitation by introducing category-wise fee structure, featuring three distinct examination fees correlated with the number of claims. Accordingly, the substantive examination is now based on the below claim categories:

1. Category-1 (1-10 Claims) – Official Fee 7000 AED
2. Category-2 (11-30 Claims) – Official Fee 8000 AED
3. Category-3 (31-50 Claims) – Official Fee 9000 AED

Importantly, the framework allows for the submission of requests to increase the number of claims from one category to another. This tiered approach aligns seamlessly with international best practices, ensuring that the fee structure is both fair and reflective of the resources needed for the examination process.

For example, below table depicts the changes in the Examination fee (First Exam) and Re-examination of patents & industrial designs pre-amendment and post-amendment:

3. Introduction of Annual Maintenance Fees: To ensure continuous commitment to intellectual property rights by the applicant/patentee, an official fee for annual annuities has been introduced. The renewal fee increases every five years over the term of the patent. The newly introduced renewal fees are provided below for your reference:

4. Introduction of Time Limit & Official Fee for revival of Lapsed Patents: The amended regulations now provide the opportunity to reinstate lapsed patent applications, allowing restoration within a specified timeframe of nine months from the date of lapse, subject to the payment of designated fees. This intentional time constraint serves as an incentive for applicants to promptly take action in reinstating applications that may have lapsed. The Cabinet Decision accompanying this change introduces adjustments to the fees associated with requests for the restoration of applications post-lapse. It is noteworthy that this process, which was formerly free, now involves specified fees, emphasizing the importance of timely and proactive measures in reinstating lapsed patent applications.
5. Introduction of New Services: Cabinet Decision 112/2023 brings forth substantial modifications, introducing nuanced fee adjustments for additional services as outlined in the UAE Patent Law 11/2021. Notably, these adjustments pertain to services like express examination, rectification of minor errors (as an alternative to issuing a new examination report), pre-grant & post-grant amendments, and re-examination after grant. The rationale behind these adjustments is to fortify the flexibility and efficiency within the patent prosecution process. By addressing specific aspects of the patent lifecycle, the amendments strive to create a more adaptive and streamlined framework, aligning the UAE's patent system with contemporary standards. The followings are new services:
   1. Express examination
   2. Pre-Grant Amendments of minor errors (instead of issuing a new examination report)
   3. Post Grant Amendments
   4. Re-Examination Post Grant
6. Introduction of Penalties for delay in submission of Official Fee: A groundbreaking initiative has been implemented, introducing a distinctive methodology to address delays in fee payments for any industrial property service. This innovative approach incorporates the imposition of monthly penalties, ensuring that there are consequences for tardiness in fee settlement. Importantly, these penalties are capped at the equivalent of 10 months, establishing a well-structured framework designed to instill a sense of urgency and facilitate timely compliance with payment obligations for industrial property services. This forward-thinking measure aims to promote adherence to deadlines and uphold the integrity of the fee payment system within the industrial property landscape.
7. Promoting the Filings by Academic Institution: The revised legislation in the UAE has implemented a reduction in the official fees that academic institutions are required to pay for the filing of patents and industrial designs. This strategic adjustment underscores a proactive approach by the UAE government, explicitly encouraging academic institutions to increase their participation in filing patents and industrial designs. By decreasing the financial burden through lowered official fees, the government seeks to foster an environment that stimulates greater engagement from academic institutions in the innovation and intellectual property landscape. This initiative reflects a concerted effort to promote research and development within academic spheres and enhance the nation's standing in intellectual property contributions.

CONCLUDING REMARKS:

In the wake of sweeping amendments to UAE patent laws from 2021 to 2023, the nation emerges as a pioneering force in cultivating innovation and intellectual property protection. From introducing a twelve-month grace period to streamlining procedures for foreign applicants, the legal revisions reflect a commitment to global competitiveness. The strategic categorization of applicant types, limitations on claims, and the introduction of new fees underscore a forward-thinking approach, aligning the UAE's intellectual property framework with international standards. Particularly noteworthy is the government's initiative to empower academic institutions through reduced official fees, signaling a commitment to cultivating a vibrant ecosystem of research and development. As the UAE positions itself on the global stage, these amendments not only reshape the legal landscape but also affirm a dedication to fostering innovation, protecting intellectual property, and driving sustained growth.

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