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Facebook’s creepiest patents Page 16 GCC PATENTS The end of the GCC Patent: what next?

Munir Suboh and Felicity Hammond, of BSA Ahmad Bin Hezeem & Associates LLP provide an overview of the discontinuation of the GCC patent with a breakdown of the standard national application requirements now in play for the GCC countries.

n 5 January 2021, the Supreme Council Existing GCC Patents of the GCC held its annual meeting and According to the latest communications, any patents Oissued its decision to discontinue the filed prior to 5 January 2021 will be processed GCC Patent, with the announcement that the and examined as normal and the GCC Patent GCC Patent Office will no longer accept any Office will continue to provide patent grants. new patent applications as of 6 January 2021. However, this is subject to further clarification The GCC Patent Office, located in , has and it is possible the pending applications will been receiving patent applications since 1998 be transferred or outsourced to a third party. We and was established to implement and grant a await further update on this point. harmonized form of patent protection Given the uncertainty surrounding the future throughout the GCC countries. The main idea of of the GCC patent, and the circumstances of GCC Patent system is to give the holder(s) of a examination and grant, it may be advisable for GCC granted patents the benefit of legal Munir Suboh those who have recently filed a GCC patent to protection of patent rights in all the GCC countries reconsider their existing strategy and file a from one single regional application, which patent application in each of the individual GCC significantly reduced the financial and admini- countries, to avoid any unnecessary delay and strative burden on applicants. It should also possible complications to grant protection. urge patentees to acquire patents in the GCC region and invest more to support the innovative Why was the GCC Patent and creativity principles. discontinued? The departure from the GCC Patent initiative The Supreme Council has not given any indication has left many questions for existing and prospective of what led to the wind up of the GCC Patent. applicants, the majority of which remain relatively However, in practice the GCC patent faced several unclear and subject to further substantiation by challenges across the GCC countries for many the Supreme Council. years. Rectification of treaty in each member Felicity Hammond state amongst other formalities raised many Initial Implications questions on whether this regional patent protection The impending dissolvement of the GCC Patent would be enforceable or not. As a result, there Office means that all new patent applications in are known instances where courts within the the GCC countries filed after 5 January 2021 GCC have refused to enforce a GCC Patent. must be filed either: The GCC patent granted an inventor unified 1. By filing a patent application in each of protection across the GCC countries and theoretically the individual GCC countries via a Paris is subject to a uniform GCC legislation, which is Convention application within the actively in force in all of the member countries. priority period of twelve months; or However, in practice, the GCC Patent legislation is not relied upon in several of the GCC countries 2. By filing a national application in each of and each country would always refer to their own the individual GCC countries under the laws. Furthermore, no unified GCC court system Patent Cooperation Treaty national was ever established. As a result, any objections phase entry, within a thirty month to the patent would be managed by the priority period. authorities in and any patent disputes

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1 2 0 2 / 4 0 / 8 008/04/2021 10:53 71 THE PATENT LAWYER abstract (in Arabic and English); and Arabic (in abstract the UAE up to and legalized applicant consulate); and Arabic into translated inventor(s), consulate); the UAE up to legalized the from 90 days (within document(s) Arabic); into translated filing date, applications). required drawings, abstract in (in Arabic Arabic in (in abstract drawings, required translation); with English • specifications, claims, copies of Three • drawings, claims, required Specification, • the by (executed Attorney of Power • the by deed (executed Assignment • the priority Certified copies of • PCT no. (for application PCT There are no restrictions on type of claim, claim, on type of no restrictions are There documents are standard The following claim dependency or the number of claims, nor claims, nor of the number or claim dependency a large for fees official additional any is there claims. of number Saudi Arabia the by regulated are Arabia in Saudi Patents Integrated of Layout-Designs on Patents, Law Designs and Industrial Varieties, Plant Circuits, Law). (Saudi Patent patent obtain applications to for required registry: patent the local before protection ” Munir’s IP Practice encompasses advising on all aspects of Felicity has worked with numerous well-known regional clients and Résumés Partner Suboh, Munir Intellectual Property Munir is a Partner of BSA and founder of the in the field, Munir Practice. With more than 15 years’ experience matters in a contentious, represents clients across a wide range of non-contentious and commercial context. He is described in legal directories as a “quick thinking lawyer” who is “thorough and thoughtful in everything he does”. Munir was named as a MENA Super 50 Lawyer in 2021. Intellectual Property, including trademarks, patents, know how, trade secrets and copyright. Recent noteworthy assignments have included multi-jurisdictional strategic patent advice, concerning medical instruments in COVID-19. Associate Hammond, Felicity Felicity joined BSA Ahmad Bin Hezeem & Associates LLP as an Associate in the Intellectual Property Department. Felicity has been working in the Middle East since 2016 and has expertise in both trademark and patent prosecution, in addition to several prominent, cross-jurisdictional contentious IP matters. has been part of creating their portfolio and brand enforcement strategies. Felicity has also worked with many high-profile international clients who have sought to enforce their rights in the Middle East. Felicity holds an LL.B in Law from the University of Liverpool in the United Kingdom.. The departure from the GCC Patent initiative has left many questions for existing and prospective applicants. “

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d In the spirit of the GCC Charter and the basic Charter the GCC In the spirit of a the implementation of That said, thus far, In addition, the GCC patent system was not not was system patent the GCC In addition, For now, we await further update and and update further await we now, For The following standard documents are required required documents are standard The following d n i . CTC Legal Media those concerned about the viability of the GCC the GCC of viability those concerned about the the national with filing under proceed to patent in protection The patent each country. of route as era a new go through will offices local GCC in investment massive require offices many the improve to infrastructure prosecution patent The current process. protection patent set out below. which are of requirements recognise the GCC Trade Mark Law and continue Mark Law Trade the GCC recognise In view of current time frames for processing processing for time frames current of view In annuities, the GCC the and paying patents at least 2040. In the continue until shall Patent the GCC whether meantime, the question enforceable be practically continue to will patent unclear. remains the GCC throughout will Council the Supreme the GCC, of objectives integration deeper advocate continue to countries. However, the member between is a there law, a unitary advocating of instead GCC amend the existing will that they possibility similar a unifying law, of be more to Law Patent Mark Law. Trade GCC current the to countries member the GCC across unifying law The GCC without challenges. been has not into enter to envisioned was Mark Law Trade harmonizing the countries, the GCC in all force in each country. systems trademark national completing the legal countries all Despite and implement the law approve to formalities countries the member of all not nationally, What is the future for the What is the future GCC Patent? would be managed by the independent courts the independent be managed by would country. GCC in the concerned nor Treaty Cooperation the Patent part of and this made the Paris Convention, of signatory applicants seeking for option it a less popular through protection worldwide straightforward periods. priority the respective to use and rely on the national legislation legislation on the national use and rely to the that expect therefore We instead. provisions any of practically, or implementation, legally place for take not would law Patent unified GCC some time still. for applications to obtain patent protection protection patent obtain applications to for registry: patent the local before Current standard requirements for National Applications Arab United Emirates Law Federal by regulated are in the UAE Patents No Law Federal 2002 (as amended by of 17 No 2006). 31 of clarification from the Supreme Council and advis and Council the Supreme clarification from 2 v _ 3 5 L P

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• Power of Attorney (executed by the • Three copies of specifications, claims, applicant and legalized up to the Saudi required drawings, abstract in (in Arabic consulate); with English translation); The • Assignment deed (executed by the • Power of Attorney duly legalized up to “ inventor(s) and legalized up to the Saudi the Consulate of or Apostilled; question consulate); • Simple copy of Certificate of whether • Certified copies of the priority incorporation or Extract from the document(s) (within 90 days from the Commercial register; the GCC filing date, translated into Arabic); • Letters patent (home registration patent will • PCT application no. (for PCT certificate) legalized up to the Consulate applications). of Oman; continue • Deed of assignment signed by both The legalized inventor’s assignment(s) and parties duly legalized as above or to be Power of Attorney must be submitted within Apostilled, if the applicant is not the practically three months from the application filing date. As inventor; with the UAE, there are no restrictions on type • Certified copy of the priority document, enforceable of claim, claim dependency or the number of if claiming priority; throughout claims, nor is there any additional fees for a • International publication sheet and large number of claims. search report (if filing through PCT); the GCC • PCT Preliminary Examination Report. Oman remains Patents in Oman are regulated by the Law of unclear. Industrial Property 67/2008. Patents in Bahrain are regulated by Patents and The following standard documents are required Utility Models Law No. 1 of 2004, as amended by for applications to obtain patent protection Law 14 of 2006. before the local patent registry: The following standard documents are required

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for applications to obtain patent protection applicant is not the inventor; before the local patent registry: • Certified copy of the priority document, • Title of the patent and summary if claiming priority; description of the invention; • PCT details in case of national phase. It is apparent • Specification, claims, required drawings, “ abstract in (in Arabic with English It is noteworthy that the requirements for that each translation); are subject to review and further • Power of Attorney duly legalized up to substantiation from the Kuwaiti Patent Office. of the GCC the Bahraini Consulate or Apostilled; The country that will be most affected by the countries • An Extract from the Commercial end of the GCC patent is Kuwait. For many years, Register or a Certificate of Incorporation protection in Kuwait could only be obtained via apply very duly legalized as above or Apostilled; a GCC patent office. Prior to this, applicants similar • Deed of assignment signed by both would simply file the application in Kuwait and parties duly legalized as above or obtain a filing receipt. No examination would requirements Apostilled, if the applicant is not the take place in Kuwait and there was no system inventor; for administering grants or paying annuities. for patent • Certified copy of the priority document There has not been any formal announcement protection. duly legalized as above or Apostilled, if on Kuwait’s position following the end of the claiming priority. GCC Patent, but it is likely we will soon see a development in this area and Kuwait will establish procedures so that it may grant its first The Qatari Patent Law (No. 30 of 2006) was national patent. ” enacted in 2006. The following standard documents are required In conclusion, it is apparent that each of the for applications to obtain patent protection GCC countries apply very similar requirements before the local patent registry: for patent protection and arrangements. This • Title of patent (in Arabic and English); should continue to improve and ultimately ease • Specification, claims, required drawings, the process of local application in each member abstract in (in Arabic with English countries. Having said this, and in light of recent translation); development with GCC patent registry, we • Power of Attorney duly legalized up to strongly urge all patent holders to review their the Consulate of Qatar; patent protection strategy in the GCC countries • Certified copy of the Extract from the and obtain a strategic advice on what options Commercial Register or a Certificate of they can exercise. This should impact the Incorporation; existing patent applications, granted patents as • Deed of assignment duly legalized as well as the new inventions that will require above, if the applicant is not the patent protection in the future. inventor; • Copy of international publication (if published) and search report (for national phase application); • Certified Priority documents, if priority is to be claimed.

Kuwait Law No. 4 of 1962 regulates the registration of patents and industrial models in Kuwait. The following standard documents are required for applications to obtain patent protection before the local patent registry: Contact • Three copies of specifications, claims, BSA Ahmed Bin Hezeem & required drawings, abstract in (in Arabic Associates LLC with English translation); Level 6, Building 3 • Power of Attorney duly legalized up to Dubai International Financial Centre (DIFC) the Consulate of Kuwait; The Gate District, Dubai • An Extract from the Commercial Register or a Certificate of Incorporation Tel: +971 4 528 5555 duly legalized as above; [email protected] • Deed of assignment signed by both www.Bsabh.com parties duly legalized as above, if the

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