IP Cases & Commentary – Details
04 June 2013
Patent Protection in the Middle East - An Introduction
Much of the tremendous growth and development of countries in the Middle East over the past 30 years or so has traditionally come from oil and gas revenues, particularly in those countries surrounding the Gulf region. However, there has been increasing focus on investment in technology as the Gulf states look to reduce reliance on technology licensed from outside the region.
Additionally, overseas companies are seeing the region as an increasingly important market especially in those countries which form the Gulf Cooperation Council (the GCC countries are Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates (UAE)). For example, the number of patent applications filed at the GCC Patent Office grew by around a factor of 50 from when the GCC Patent Office first opened in 1998 up to 2008. Applications dropped off slightly in 2009 to 2011 but have since picked up again with 3001 being filed in 2012. The vast majority of these applications are from countries outside the GCC, with over 16 times as many applications being filed by companies from overseas as those from the GCC.
The GCC Patent Office is based in Riyadh in Saudi Arabia and a GCC patent provides a centralised system for obtaining protection in all six states of the GCC. This brings cost reduction benefits as well as providing a longer patent term than if the patent was applied for via a national office (20 years duration as opposed to typically 15 years).
The specification must be filed in both Arabic and English. There are also requirements for many of the documents such as the power of attorney and assignment from inventor to applicant to be legalised up to a consulate of one of the GCC states. A legalised certificate of incorporation or similar document, such as a legalised extract from the commercial register, is also needed. So, when considering applying for a GCC patent, the extra time scales and costs associated with these formalities should also be taken into account.
Substantive examination of a GCC application is often outsourced to the Austrian, Chinese or Australian patent offices. Applicants who have already dealt with these offices may therefore have a slight advantage due to similarities in working practices when it comes to substantive exam.
It is important to note that the GCC is not a signatory of either the Paris Convention or the Patent Cooperation Treaty (PCT). While it is possible for a GCC patent application to claim priority from a prior convention application as if the GCC were a signatory to the Paris Convention, it is not possible to claim priority under the Paris Convention to an application that was first filed at the GCC Patent Office. Therefore, it is generally thought to be more flexible to file in a Paris Convention country as a first filing rather than a GCC application.
Also, as the GCC is not a signatory of the PCT, it is not possible to select a GCC application for PCT national phase entry. Having said that, four of the GCC countries are also members of the PCT (Bahrain, Oman, Qatar and UAE), although significantly Kuwait and Saudi Arabia are currently not members (Saudi Arabia recently acceded to the PCT and the Treaty will enter into force on 3 August 2013). So, if protection in the Gulf States may be desirable this should be considered during the priority year rather than waiting until PCT national phase entry is due, otherwise it may be difficult to obtain the desired protection. It is therefore currently common to file both a PCT application and a GCC application at the same time if protection in the Gulf States is sought, especially if Saudi Arabia or Kuwait are a key market. However, as the PCT will soon enter into force in Saudi Arabia, this should provide applicants with further flexibility when considering protection in the Gulf States.
It is also possible to seek patent protection via a national application. However, whilst the patent systems in some states such as UAE and Saudi Arabia are fairly well established (the Saudi Arabian Patent Office has recently started to accept online filing of applications), it is fair to say that others are very much in their infancy. For example, the Omani Patent Office has only very recently started formal examination of all pending applications, and the Qatari Patent Office has recently started accepting local applications and national phase PCT applications. Since both Oman and Qatar are already part of the GCC and the PCT, it may be more desirable to seek protection via a GCC or PCT application in these countries rather than a national patent, unless there are good reasons to do so.
In summary, there are several different routes by which patent protection may be obtained in the Gulf states depending which countries are of interest. A combination of a PCT application and GCC application is generally thought to provide the most flexibility and coverage.