The UAE has issued Federal Law no. 11 of 2021 ("the Law") concerning the regulation and protection of Industrial Property Rights. The Law revoked the ("former Law") No. 17 of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs. The Law shall be applied to patents, industrial designs, integrated circuits, undisclosed information and utility certificates in the UAE, including free zones. The Law was published in Official Gazette no. 703 on 31 May 2021 and will come into force when the Executive Regulations are published in November 2021.
Some notable changes are as follows:
Disclosure of information by the inventor or by a third party who obtained the information directly or indirectly from the inventor shall not affect the obtaining of a patent if this occurred within (12) months before the date of filing the application, as per Article 5(4).1
This is a new article provides that if invention is disclosed prior to filing the patent application within 12 months, it can still be submitted and meet the novelty condition. Prior to the Law, the former Law required absolute novelty, except the situation stipulated in Article 3 of the former law, which stipulates as follows: "Temporary protection shall be awarded for the inventions, drawings, and designs which are exhibited in local fairs under the terms and conditions set forth by the implementing regulations of this law, taking into account the provisions stated in international agreements, treaties, or conditions of reciprocity".
The Ministry might accept to examine some urgent patent or utility certificate application prior to others, upon the request of the applicants regardless the dates of filing such applications or the date of examination request as per Article 14, provided that this does not prejudice priority applications in accordance with the criteria and conditions specified by the Executive Regulations.
This article is new and the Executive regulations will specify the conditions and criteria for this case. This article is important if the UAE decides to join the Patent Prosecution Highway "PPH" agreements. The PPH offers a mechanism by which positive examination results in one office can be submitted to a second office to accelerate patent prosecution in the second office.
It is a new article giving the Applicant a possibility to file for one or more divisional applications where an original application contains two or more inventions provided the subject matter is within the scope of the original application, as per Article 16. The divisional application will maintain the same filing date as the original application. The conditions will be defined by the Regulations.
Rights that are not subject to the patent or utility certificate as per Article 22(3):
The combination of two or more medicines for the medical treatment by a licensed pharmacist. This a new added exception to infringement.
As per Article 19 of the former Law, the rights that are not subject to the patent were only: 1) Activities related to the academic research, 2) using of patent for transportation means being introduced to the UAE on temporary basis whether such a use is intended for the body structure, the engine, or for the spare parts of the said means, considering only the actual needs of the vehicles. Hence, the new Law retains the said two exceptions and added a third exception as explained above.
Can be converted into a patent application as per Article 6. This a new provision and the Executive Regulations will set out the conditions.
Inventions during the execution of the contract:
This was arranged by the former Law in Article 9. The new Law (Article 10) added only a new part which considers the application of an invention applied by the worker within two years from the date of leaving the service as if it was during the service. The rights and obligations of the employer and the worker who makes an invention and the compensation entitlement are covered as well by the new Law.
As per Article 43, it shall be new and not violating public order or morals, otherwise it will not be permitted to use commercially. It is considered new only when it has not been disclosed to the public, prior to the filing date of the application, whether by publication, use, or any other method. However, the design shall not be deemed to have been disclosed to the public whenever such disclosure is made within one year from the date of submitting the application. As per Article 45, the period of protection for the industrial design increased to be (20) years starting from the date of submission of the application. The term of protection in the former Law was only 10 years.
The new Law set out the conditions of protecting a design in a more comprehensive way than the former Law, particularly as to the novelty condition.
Integrated Circuit Layout Designs:
The new Law added a chapter (no. 5) for the protection of the Integrated Circuit Layout Designs including the criteria and conditions of protection and the term of protection which is ten (10) years. The former law did not include any articles for the same.
The protection of the Undisclosed information was added in Chapter 6 in the new Law and its conditions and scope of protection. The former Law did not include any articles related to the same.
As per the new Law, there are 3 criteria for the protection of such information as per Article 61: (1) Information which is confidential, in the sense that it is not, as a body or in the precise configuration or assembly of its components, generally known or common among those involved in the industrial art within the scope of which the information falls, (2) Information that has commercial value because it is confidential. (3) Information that depends on the effective measures taken by the person lawfully in control of it, to keep it confidential.
Article 64 of the new Law stipulates the acts which are considered as unfair competition and Article 65 provides the acts which are not considered as unfair competition.
The penalties are significantly increased under the new Law, to provide greater protection for IP owners, to a fine of no less than AED 100,000 (one hundred thousand dirhams) and not more than AED 1,000,000 (One million dirhams) and/or imprisonment. Under the former Law, these ranged from AED 5,000 up to a maximum of AED 100,000 and/or imprisonment. The penalties, as stated in Article No. 69 of the new Law, apply for anyone who submits documents or provides incorrect or forged information to obtain a patent, a utility certificate, an industrial design, or a layout drawing of an integrated circuit, as well as anyone who imitates an invention or a manufacturing method, or willfully infringes any right protected by this Law. Details about the implementation of the Law are expected to follow in the Executive Regulations.
In conclusion, and pursuant to Article 2, the Law aims to protect industrial property and regulate the procedures for its registration, use, exploitation, and assignment, to ensure support for knowledge and innovation in the state and to enhance the state's competitiveness in the field of industrial property rights by observing best international practices and standards.2
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.