Saudi Arabia Joins the Patent Cooperation Treaty
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Saudi Arabia Joins the Patent Cooperation Treaty Larry Cohen and Don McCombie 1. Introduction The Patent Cooperation Treaty (PCT), the primary mutual assistance treaty which deals with patents, currently has 146 active signatory states. On 3 August 2013 the PCT will include an important additional member, Saudi Arabia. 2. Background to the PCT The purpose of the PCT is to reduce cost and increase certainty for prospective patentees. Under the PCT system, a patent application is made in one member country. This sets priority so that anything which is made available to the public after that date cannot be taken into account in determining the validity or scope of the patent application and any grant upon it. After 12 months the applicant files in a member patent office a PCT application designating the countries which are members of the PCT where the applicant wishes to reserve rights to file a national patent. Regional patents such as the European Patent are included in the system. After 18 months the patent application is published. Then 30 months after the original filing the applicant has to file for the national patent offices where the applicant desires a national or regional patent. The advantage of this widely used system stems from the right to postpone the expensive national phase patent filings until both the patentability and scope of the allowable claims are moving towards determination, and the patentee has a better idea of the commercial value of the patent application. Hence the PCT has been widely adopted, and is widely acclaimed. 3. GCC Patent System As Saudi Arabia has not yet joined the PCT, it has instead operated a regional patent system under the Gulf Cooperation Council Treaty (GCT) (a mutual cooperation treaty amongst six Gulf states; Saudi Arabia, Kuwait, Bahrain, Qatar, UAE and Oman). These six states operate a common regional patent office in Riyadh, Saudi Arabia, unconnected to the PCT system, which grants a GCC patent covering all six member states. This method has two consequences; first, if the place of first filing of the patent application is a non PCT state (e.g., Saudi Arabia), the applicant has to file for individual national patents elsewhere after 12 months rather than 30 months. For the reasons given above, this disadvantages Saudi based patentees, as they must make the expensive decision on patenting based on less complete technical and commercial information. Secondly, a non-Saudi patentee will be less likely to file in Saudi Arabia, because a decision on national patenting has to be made too early. Both consequences harm Saudi industry as they reduce the number of patents filed in Saudi Arabia. 4. Analysis of Saudi Arabia’s Decision to Join the PCT Saudi Arabia’s recent decision to join the PCT is a wholly positive step, enabling Saudi to conform with patent laws in the vast majority of countries and worldwide norms, as well as to lower Saudi business costs. LO\2884293.2 Like every beneficial reform, accession to the PCT comes at a price. The Saudi patent office will now have to prepare to accept and administer PCT applications. While the Saudi GCC patent office does have examiners, they are insufficient for the office’s needs, leading to delays in grant. This has been a particular problem in the UAE, which runs the PCT and GCC systems in parallel. The UAE has outsourced PCT patent applications to the Austrian Patent Office where they are examined in English, and then must be translated into Arabic. This has led to unacceptable delays in granting patents in the UAE. While the Saudi GCC patent office has not detailed how PCT applications will be processed, hopefully, the Saudi patent office will be well prepared and can process PCT applications without undue delay. However, with just over 1000 applications per year, any significant increase is likely to swamp the Saudi Patent Office when the first PCT filings come through. For technical reasons an 18 month delay is expected before the first PCT applications start to be filed in Saudi office. The Saudi GCC patent office must also address a second issue; whether the laws relating to PCT patents and GCC patents in Saudi Arabia will result in grants under each system which provide the same scope of protection. Again, the UAE experience suggests that prosecution through the GCC system results in patents of slightly difference scope than those prosecuted through the PCT. 5. Conclusion Saudi Arabia joining the PCT is a welcome step. If the whole GCC patent system were to join the PCT, a Gulf patent could become a commercially interesting proposition of considerable regional force. Saudi Arabia’s decision on the PCT is a useful reform, potentially on the way the way to a commercially very valuable end point. Disclaimer: Middle East & Africa Technology, IP and Sourcing Focus is made available by Latham & Watkins for educational purposes only as well as to give you general information and a general understanding of the law, not to provide specific legal advice. Your receipt of this communication alone creates no attorney client relationship between you and Latham & Watkins. Middle East & Africa Technology, IP and Sourcing Focus should not be used as a substitute for competent legal advice from a licensed professional attorney in your jurisdiction. 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