United Arab Emirates: The Implementing Bylaws For The GCC Patent System (Law)

After more than 20 years of operations and dealing with the GCC patent applications, the Supreme Council of the Cooperation Council for the Arab States of the Gulf in its 41st session held in January 5, 2021, approved set of amendments to the patent system (law) of the Cooperation Council for the Arab States of the Gulf, and the GCC Patent Office stopped accepting new applications from that date.

Four months later, the new GCC Patent Law was published in Official Gazette, No. 22 of April 11, 2021, and revealed some amendments or replacements of a number of articles. The most important was in the introduction of Article 1 (bis) and its various provisions wherein the GCC Patent Office may accept new patent filings at the request of one of the GCC national offices, as well as its examination. No patent will be granted without the approval of the requesting national office or offices, and in all cases, a GCC patent will only be enforced in the said country or countries, which is very different from before, and opposed to the GCC patent filing system as we knew it, where the GCC Patent Office independently received, examined and granted GCC applications, and these applications were valid in all six GCC member states.

Based on this, the new applications will be accepted according to the following conditions:

• The GCC Patent Office will accept and handle patent applications, their examination, prosecution and grant, only upon a request received from a Member State;
• The grant of patents will be subject to approval of the Member State; and
• The granted patent will only have effect in the requesting Member State.

With reference to Article 32 of the GCC Patent Law which states that the Commercial Cooperation Committee issues the implementing regulations of this law, this Committee has approved, in June 27, 2021, in its sixtieth meeting, on the implementing regulations amending for the GCC Patents System (Law).

These Implementing Bylaws of the amended GCC Patent Law were published in November 1, 2021 Issue 25 of the Official Gazette of the Secretariat General of the GCC and are expected to enter into force, as well as the amended Law, on February 1, 2022.

For now, applicants seeking patent protection in the GCC member states can still file new applications directly with the patent office in each state.

In addition, and fortunately, all the six states are members of the Paris Convention and the Patent Cooperation Treaty (PCT), so it is possible to claim priority to an earlier application filed within 12 months or enter the PCT applications into the national phase in each member state before the 30 months deadline.

On the other hand, the new implementing Bylaws define and explain the roles of the new committees and authorities created, the process of work, the governing law and the relationship between the national offices and the GCC Patent Office. This will definitely help us understand the changes done and what should be expected from the implementing regulations to cover. According to the law, these tasks should be the responsibility of The Commercial Cooperation Committee newly created, besides the responsibility of the creation of a mechanism for dealing with patent applications that were filed before the adoption of the new law and formation of a Grievance Committee.

A deep review can clearly reflect the amendments related to receiving and handling patents application, examination and grant, namely Articles (9,10,15,21,22/14,24/3 and 24/4).

Serials numbers for GCC patent applications: (Article 9)

The implementing Bylaws provide the option for national offices to elect the GCC Patent Office to act as the filing, examination and/or granting authority. Patent applications are given serial numbers according to the date and time of their submission after payment of the prescribed fee, which it seems more efficient as one filing number would be assigned to the application.

Optional services (receiving, examination and grants): (Article 10)

The Implementing Bylaws provides the option for national patent offices to elect the GCC Patent Office to act as the filing, examination and/or granting authority, and the office processes patent applications based on the services requested, according to the following:

1. The reception service only : The office receives the patent application and examines it formally in accordance with the provisions of the system (the law) and its implementing regulations, and then it is referred - within 120 days from the date of registration of the application - to the competent authority in the country that chose this service for processing in accordance with its national legislation according to an approved mechanism between the office and the competent authority in that country.
2. The reception service and the substantive examination service (totally or partially): The office examines the application formally and after it passes the formal requirements in accordance with the provisions of the system (the law) and its implementing regulations, the application is examined substantively to verify the availability of the conditions for granting the patent stipulated in the system (law) and its implementing regulations. In case the conditions for the regular (legal) grants are met. The office shall notify the competent authority of this, provided that the competent authority is obligated to make observations - if any - regarding the ability to grant within (30) days of notifying the competent authority. In the absence of observations or the failure of the competent authority to respond within the specified period, the office shall refer the application - within 30 days from the end of the examination phase - to the competent authority in that country to complete the procedures for issuing a decision to grant a patent in accordance with its national legislation, and to take the regular (legal) procedures regarding the continuity of the patent and the collection of annual fees thereon.
3. All services (receiving, examination and grants): The office will process the patent application in accordance with the provisions of the system (law) and its implementing regulations. If the conditions for granting are met, the application is processed according to the following:
4. 1. The office shall notify the competent authority in that country of the fulfillment of the conditions for granting the patent application according to the mechanism and the form prepared for this.
   2. The competent authority must provide the office with its observations within (90) days from the date of the notification issued by the office.
   3. The office issues a decision to grant the patent if the competent authority approves this.
   4. In case that the observations of the competent authority are not submitted within the aforementioned period, this is considered an approval to grant the patent, and the office will complete the granting procedures.
   5. In case that the competent authority submits its observations within the aforementioned period, and the observations indicate that the granting decision was not approved according to the reasons it clarifies, the office shall issue a decision rejecting the application.
   6. The scope of the patent shall be in any of the GCC countries that have chosen the office to perform reception, examination and grant services on its behalf, and the competent authority in each of those countries has approved the granting of the patent.
   7. The office shall, before referring the application to the competent authority in accordance with the provisions of paragraph (1, 2) above, instruct the applicant to appoint an authorized agent in each of the GCC countries in which the application will be referred to the competent authority, unless the applicant has a place of residence in those countries, according to the national legislation of each country.

Inventions related to National Security: (Article 15)

The office does not examine any application related to the national security of any of the GCC countries before informing the competent authority in the country that chose this service, and it is dealt with in strict confidence, unlike what was previously, so that the application is excluded from publishing fees and the patent is granted after passing the formal and substantive examination.

In this case, the competent authority shall inform the office of the special procedures followed and the areas related to national security within 90 days from the date of the notification, otherwise the application shall be considered eligible for the examination procedures.

Periodical Official Bulletin: (Article 21)

The GCC Office issues periodically an official bulletin containing the patents issued by it including application numbers, the specification in the form in which it was filed and the search and examination reports. In addition to the names of the GCC states, the services provided by the office on their behalf, and any updates thereto.

The Patent Cover Page: (Article 22/14)

Based on this amendment, the name of the country or countries in which protection from the GCC applies must be added on the first page of the patent issued by the office.

Annual fees for Patents: (Article 24/3, 24/4)

In case that the country or countries of GCC elect the office to act as the filing, examination and granting authority (full services), the office must transfer the annual fee for the patent granted to the concerned country or countries. Otherwise, the GCC country or countries, in accordance with its national legislation, collects the following annual fee after referring the application to the competent authority in that country, and the office informs the competent authority of the annual fees collected for that request in advance.

Fees Increasing

These amendments also extended to the list of fees and stipulate an increase in the official fees for patent search (from 100 to 1000 SAR for individuals and from 200 to 2000 SAR for companies) and a decrease in the patent application fees (from 1500 to 2000 SAR for individuals and from 4000 to 3000 for companies). As for the rest of the fees, there has been no change.

In a result, the automatic protection of patents in all the GCC countries will disappear, and there is no doubt that these amendments in the GCC Patent Law and its executive regulations will have a significant impact regarding the examination and granting of patents, especially in the process of expediting the examination and grant procedures in the Gulf Cooperation Countries, which usually require a long time in most of these countries.

The upcoming stage will be a testing phase for the national offices and the GCC office as well, who will eventually decide if this system is properly working and will achieve the desired goal.

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.