The Cabinet of Ministers Resolution No. (6) of 2022 regarding the Executive Regulations of Federal Law No. (11) of 2021 regarding the Regulation and Protection of Industrial Property Rights was published on March 14, 2022, Gazette no. 723/52 and will come into force in June 12, 2022.
The Executive regulations (hereinafter referred to "ER") include 82 Articles, in which Articles (1 to 8, 79 to 82) are general provisions. Patents are covered from Article 9 to 56, Industrial designs from Article 57 to 65, Integrated Circuit Layout Designs from 66 to 70, Undisclosed information in Article 71 and the Registration Agents from 72 to 78.
The regulation will contribute to the provision of an integrated legislative environment that stimulates innovation and increase the registration of patent applications in the country and will reflect positively on strengthening the position of the UAE as a destination for innovators and invention owners in various fields, especially in the sectors of technology, new economy, research and development.
Some notable changes are as follows:
- Notarization of documents
The ER stipulated in Article 19 (6) that the documents shall be duly certified in accordance with the Ministry's instructions. The Ministry confirmed that only notarization is required.
Accordingly, the legalization of the documents (such as Power of Attorney, Deed of Assignments, etc.) from the UAE consulates in the Applicant's country is no longer required.
The elimination of the legalization process required by the Former Law and practice will ease the process for Applicants which used to consume time, costs and efforts.
- Title and Claims
Article 22 of the ER provides the criteria to be taken into consideration while drafting the claims which must be related to a product or a method. The Ministry further clarified that the word (use) is not allowed in the title, only the words method or apparatus are allowed.
The number of claims, as per the said Article, must be reasonable in relation to the nature of the invention, and the number of claims must not exceed (50) fifty for a patent and (10) ten for the certificate of utility. Such limitation is recently introduced by the ER and there were no restrictions to the number of claims earlier.
- First-to-file patent system
Article 18 of the ER provides the first-to-file patent system not the first to invent.
- Patent Publication
As per Article 32 of the ER, the Ministry may publish the patent application and related information in whole or in part to disclose the application to the public after (18) eighteen months, or at the request of the applicant, even before the expiry of this period, unless the invention is related to the Security and Military Industries. There was no system of patent application publication before, but it was introduced recently as per the ER.
Article (32) does not apply to the publication of an industrial design application, as it is not permissible to publish an industrial design prior to its registration except upon a request from the applicant. Moreover, the said article does not apply to the Schematic Design of the Integrated Circuit as the same shall not be published.
- Grace period
Articles 5(4) of the Law and 17 of the ER provides that if an invention is disclosed by the inventor or by a third party who obtained the information directly or indirectly from the inventor prior to filing the patent application within 12 months, it can still be submitted and meet the novelty condition. Unlike, the Former Law which required absolute novelty.
As provided in the ER, the inventor may request from the Ministry to exclude this disclosed invention from previous industrial techniques and shall submit a copy of the disclosed invention within 12 months prior to the filing date.
There is an exception provided by Article 17 (2) of the ER, in which the applicant cannot submit the application as per the above articles, if the invention has been disclosed in the Industrial Property gazette, any regional foreign patent authority, or the World Intellectual Property Organization.
- Accelerated examination
Article 14 of the Law and 38 of the ER provides that the Ministry may expedite examining an urgent or utility certificate application prior to others, regardless of the filling dates or the date of examination request, upon the request of the applicants or from its own initiative.
For this purpose, the Applicant shall submit a written application to be submitted through the online portal to the Ministry and pay the relevant fees, no supporting documents are required. Unlike the Former Law, which did not provide such possibility. The Ministry informed that this new possibility will depend on the availability of enough examiners. When the new service of accelerated examination is reflected on the online portal, we believe that additional information might be provided along with the specified fees.
- Divisional applications
Article 16 of the New Law and 29 of the ER provides 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 (i.e. cannot include any new advantage outside the scope of disclosure provided to the Ministry at the date of submission) and provided that the original application is still under examination before the Ministry. The divisional application will maintain the same filing date as the original application. If the application is a national filing for an international PCT application, the applicant may modify the application and its annexes within the description, claims and drawings of the international application submitted on the date of the international filing.
The applicant for division shall determine the priority claim by providing the number and date of the priority application and the office that received the priority application in the event that the applicant claims priority on the basis of the Paris Convention. In the event that the requirement is not fulfilled, the applicant cannot benefit from the right to claim priority stipulated in the original application.
Noting that the applicant claiming priority in the division of the original application may mention the documents submitted in the original application.
It is worth mentioning that there was no provision in the former law nor its regulations allowing the divisional application, however, as per the practice prior to the New Law and ER, the divisional applications were allowed to be filed with mentioning the parent/original application filing date and number.
- Application Conversion
Article 6 of the Law and Article 29 (2) of the ER provides that an applicant for a utility certificate may convert the application into a patent application and vice versa, within the scope of the original application, while the application is being examined by the Ministry. The original application will be considered as withdrawn at the time of transfer. This possibility is introduced recently by the new law and ER.
As provided in the ER, if the application is a conversion of an earlier application, the applicant may modify the application and its attachments within the description, claims and drawings of the original application submitted on the original filing date.
The converted application will maintain the same filing date as the original application. If the application is a national filing for an international PCT application, the applicant may modify the application and its annexes within the description, claims and drawings of the international application submitted on the date of the international filing.
The applicant for conversion shall determine the priority claim by providing the number and date of the priority application and the office that received the priority application in the event that the applicant claims priority on the basis of the Paris Convention. In the event that the requirement is not fulfilled, the applicant cannot benefit from the right to claim priority stipulated in the original application.
Noting that the applicant claiming priority in the converted application may mention the documents submitted in the original application.
- Re-examination after Grants
Article 42 of the ER provides that any person may request the Ministry to re-examine after grants in order to request the cancellation of registration in whole or in part if a registered patent or utility certificate that does not meet any of the requirements set out in paragraphs (a) to (j) of section (1) of article (39) of the ER within (90) ninety days of publication of the registration.
The party concerned with a fundamental interest may request a re-examination after the grants in accordance with section (1) of this article at any time after (90) ninety days from the date of publication of the registration, and the applicant may prove after the grant that they have a substantial interest in the patent or certificate of registered utility; if the requirement is not met, the Ministry must reject the application without re-examination after the grants.
A person requesting a re-examination after grants must provide the reason for partial or total cancellation of registration with supporting evidence and payment of the relevant fees. Post-grant examination is re-examined by a group of at least three examiners with sufficient experience to confirm the validity of the registration. The issuance of the registration certificate will be suspended until the group of examiners decides after the completion of the re-examination after the grants that the registration is correct. If the examiner group cancels the registration, the registration is counted as abandoned.
Any party related to the post-grant re-examination may submitted a petition before the Committee requesting that the decision of the examiners' group be annulled within (60) sixty days of the decision being handed over to the parties concerned.
As per the Executive Regulations of the Former Law (article 24), any interested party has the right to appeal against this decision before the committee within sixty days from the date of publication, with the right to challenge the committee decision before the Court.
Accordingly, we believe that the post-grant examination by the examiners is an alternative which will help to reduce the time and costs consumed in litigation.
- Annual Fees
Article 45 of the ER, the applicant must pay the annual fees at the beginning of each year from the year following the date of application, and the applicant may pay the annual fees in advance for the full duration of the protection or part of it in accordance with the Ministry's instructions.
If the applicant does not pay the annual fee on time, the applicant may pay the annual fee within three months after the specified time without any late fee, and after the period of three months lapse, the applicant may pay the annual unpaid fees with the late fee up to the date of registration of the application.
Annual fees must be paid for a registered patent or utility certificate. If the annual fee is not paid within the specified time after registration, the owner of the registered patent or utility certificate may pay the annual fee within an additional three months without a late fee. A further nine months are allowed as a grace period for the payment of annual fees with late fees.
When the owner of the patent or registered utility certificate does not pay an annual fee in accordance with section (5) of this article, the registration of the registered patent or utility certificate expires the following day after the nine-month grace period granted.
It is worth mentioning that in the meantime, as per the current practice, we are submitting the annuities request/s through the Ministry's portal yearly with official costs of (ZERO AED) in order to maintain the application and avoid the same being lapsed.
- Industrial design (Number, division, term)
Article 62 of the ER stipulates that the industrial design application must include one design only. However, it provides an exception by which the applicant may submit an Industrial Design application for more than one design if the designs belong to one set of items of the same class. Unlike the Former Law which provided that the application may include more than one industrial design or model, provided that these industrial designs or models are related in terms of manufacture and use, and their number does not exceed twenty industrial designs or models.
The said article of the ER also provides the possibility to divide the application into more than one application within the scope of the original application while the original application is under examination at the Ministry.
As per Article 45 of the Law, the period of protection for the industrial design increased to be (20) years starting from the date of submission of the application.
- Integrated Circuit Layout Designs
Article 66 of the ER provides that any person who has created a schematic design for integrated circuits or his legal successors may submit an application to register the schematic design with the Ministry within two years from the date of commercial use of the schematic design.
The term of protection which is ten (10) years.
- Conclusion
The Ministry announced as per its official website, its goal to use the ER to reduce the time periods of patents' examination results "i.e. first office action" from 42 months to six months. The ER is silent regarding this matter and hopefully this goal will be achieved for quicker process as to patents protection in the UAE1.
In light of the progress and advantages provided by the New Law, the applications for patents and utility certificates submitted to the Ministry between 2020 and 2021 achieved a growth of 26.7%, while the percentage of these applications achieved a growth of 17.8% during the first quarter of 2022, compared to the same period in 2021.
Footnote
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.
