The UAE has issued Federal Law no. 11 of 2021 ("the Law") concerning the regulation and protection of Industrial Property Rights. The Law will repeal the former Patent Law, Law No. 17 of 2002. The Law covers patents, industrial designs, integrated designs, undisclosed information and utility certificates. The Law was published in Official Gazette no. 703 on 31 May 2021 and is expected to come into force when the Executive Regulations are published in November 2021.
On review of the Law, the changes appear to harmonise the UAE's patent law with international patent legislations. The most notable change is the introduction of a 12 months grace period for disclosures of inventions prior to filing and accelerated examination of 'urgent applications'. Below we review the key changes in the law and their implications.
Article 5 of the Law defines the terms for obtaining a patent, noting that "a patent shall be granted for each new invention contrived from a creative idea or creative enhancement, forms an inventive step and is capable of industrial application". The Law no longer refers to 'letters patent' and provides a definition for 'inventive step'. An invention is deemed to involve an 'inventive step' if it is not "axiomatic" (or obvious) in the opinion of the "ordinary craftsman" based on state of the art. This is line with international standards where an invention is generally considered to involve an inventive step if it is non-obvious to the ordinary person skilled in the art. The patent can be granted from a new application, or from a modification, enhancement, or an addition made to an invention for which a patent was previously granted provided the terms set out in the law are satisfied. The executive regulations may provide more guidance on this.
Disclosure grace period
As part of the general requirements for obtaining a patent, an invention must be 'new' or novel. An invention is considered 'new' if it has not been disclosed to the public before the filing date through any medium (orally or in writing). This novelty requirement is standard among most national patent legislations.
Some legislations will allow disclosures by the inventor, or third parties who obtain information from the inventor, provided they occur within a certain 'grace period'. A grace period is usually 6 or 12 months counted from the date of disclosure of the invention to the public. In countries where no grace period is provided (i.e. where absolute novelty is required), if an invention is disclosed to the public prior to filing a patent application, it loses its novelty and is not be eligible for patent protection. However in countries where a grace period is provided, an application may be submitted and still meet the novelty criteria provided it is filed within that grace period. Under Article 5(4) of the Law, disclosures by the inventor that occur within 12 months of the filing date will have no effect on novelty.
The implications of this are beneficial to UAE applicants, but will need careful consideration before taking advantage of the grace period. For example, if an inventor's own publication is cited as prior art in the examination of a priority filing, it will have no effect on the novelty requirement for the corresponding UAE application provided the publication occurred within 12 months of filing the priority application. This follows the US model which similarly provides applicants with a 12 month grace period for self-disclosures. This principle would apply similarly to PCT applications. If the inventor's own disclosure is cited as prior art in the International Search Report (ISR), the option to enter abbr title="Patent Cooperation Treaty">PCT national phase in the UAE is preserved provided that disclosure occurred by the inventor (or third parties) within 12 months of filing the abbr title="Patent Cooperation Treaty">PCT application. However, in taking advantage of the grace period before filing in the UAE (or elsewhere), it may mean that the applicant is no longer able to file for a patent in countries which do not provide any grace period (e.g. other GCC countries, EPO). If there is any possibility that the applicant may wish to file in a country which does not have a grace period, steps must be taken to file for the patent without using the grace period in order to be able to file in non-grace period countries.
Subject matter exclusions
Article 7 of the Law sets out the subject matter exclusions. It essentially replicates the exclusions of the former law with several additions. Under the former patent law, plant varieties, animal species or biological methods for their production were excluded from patentability. The new law extends this scope to include research on plant or animal species. The former Patent Law was silent on computer-implemented inventions whereas the Law now explicitly excludes "software" from patentability under Article 7(d). The patentability of software inventions has been the subject of much debate particularly with the recent explosion of digital technology such as AI and blockchain and their wide ranging applications. Algorithms and software as such are generally considered to be non-patentable in most jurisdictions. This provision confirms the UAE's position with regards to software patents however it does not provide any further explanation or guidance on exceptions to the software exclusion. With the rise of AI based research in the UAE, applicants can expect local patent examiners to follow the US and European approach on computer-implemented inventions. Another exclusion under Article 7 relates to "natural substances" and includes those purified or isolated from the natural environment but does not preclude the methods of isolation or purification from patentability.
A new provision has been introduced which sets out the requirements for filing. According to Article 11, applications must be filed in English or Arabic but if either is not available, late filing is possible. Article 11(9) officially sets a deadline of 90 days from receipt of the official notice to meet the missing document requirements. The provision also allows for post-filing amendments to be made to the application provided the changes fall within the scope of the original application.
Urgent patent applications
Applicants can now request the UAE patent office to accelerate examination for "urgent applications" under Article 14 This provision may be important if the UAE wishes to participate in the Patent Prosecution Highway (PPH) program where patent examiners of participating offices can make use of the work products of the other offices to accelerate examination and patent grants. It's not clear if the UAE will be participating at this stage but if so, the conditions for this are expected to be defined in the Executive Regulations.
Publication of patent applications
One of purposes of a patent system is to disseminate knowledge to support further innovation. One of the drawbacks of the current UAE patent system is the inability for interested parties to request official searches of the UAE patent database. Under the current system, only granted patents are published and it takes an average of 3-5 years for applications to grant. Applications that are pending or rejected cannot be viewed. This is contrary to most international patent systems which publish all patent applications 18 months after the first filing date. In addition, applications in the UAE are published only in Arabic in the Official Gazettes which makes it difficult for foreign parties to carry out searches and perform freedom to operate analysis if they are considering filing UAE applications or bringing exporting technology to the region. Article 13 of the Law, if the conditions for patentability are met by the invention, the Ministry will publish the acceptance of the patent grant in the Official Gazette according to the Executive Regulations. It's not clear whether the Regulations will allow for pending applications to be published pre-grant but we expect the Regulations to provide more details on this.
Under Article 16, an applicant can now 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. The divisional application will maintain the same filing date as the original application. The conditions for divisibility of an application will be defined the Regulations.
When an application is filed in the name of an applicant who is not the inventor, the UAE Patent Office requires the applicant to submit a Deed of Assignment as part of the formality requirements. A Deed of Assignment is an assignment of the IP rights in the invention from the inventor to the applicant. In the UAE, any transfer or assignment of rights is usually executed before a Notary Public who authenticates or 'notarises' the assignment. Notarisation of assignment documents routinely creates issues for local applicants because Notaries Public invariably request applicants to provide a copy of the patent certificate before they are willing to notarise the Deed of Assignment. We understand this is because the Notary Public requires proof of the existence of a legal right in order to have that right assigned, and so without this proof in the form of a certificate of grant, they may not be willing to notarise the assignment documentation. It is impossible for applicants to provide this because patent certificates are only issued for granted patents. Failure to meet the formality requirements has resulted in the lapse of many UAE applications. Some entities have resorted to filing foreign applications first to get around the notarisation issue.
For applicants outside the UAE, or where the first filed application is a foreign application, the notarisation issue is avoided altogether. This is because the UAE Patent Office will accept a Deed of Assignment executed in another country provided it is legalised for use in the UAE. So for example, an applicant who has filed a priority application in the USA can record an assignment for that application at the USPTO. Provided the Deed of Assignment covers rights to the invention in the UAE or worldwide, the applicant can submit an authenticated copy of that Assignment to meet the formality requirements of the corresponding application filed in the UAE.
Patent office officials have indicated that a copy of the inventor's employment contract may be sufficient to get around the requirement for a notarised assignment however no formal guidance has been published on this. For now the requirement for notarised assignments remains under Article 21. The Law requires assignments to be in writing, signed by both parties and attested by a notary public in the state, or duly authenticated in the state.
Under Article 19 of the former Law a patent would not be infringed by a third party if its use was for non-commercial educational or research purposes or where the patented product enters the state on a temporary basis. Under the new Law, Article 22 includes an additional exception to infringement where the patent is used in a "combination of two medicines or more for the purpose of medical treatment by a licensed pharmacist". It's not clear if these changes were introduced in light of the recent pandemic to allow for access to emergency treatments which rely on proprietary drugs or delivery systems. The grant of compulsory licenses have also broadened to include 'crisis or disaster' in addition to cases of emergency, dire public need or non-commercial purposes. Other changes include the value of penalties for infringement. Under the former Law, these ranged from AED 5,000 up to a maximum of AED 100,000. Under the new Law, penalties range from AED 100,000 up to AED 1,000,000 as well as potential imprisonment. Further details on the practical implementation of the Law are expected to follow in the Executive Regulations.
The published law continues the reform of the UAE's legal framework in order to help support the UAE Vision 2021, one of the pillars of which was to continue in its development of a knowledge-based, productive and competitive economy driven by entrepreneurship and innovation. Although the Law is an instrumental component of this, the development of a holistic innovation ecosystem capable of attracting technology and investment to the UAE will also require evidence of a strong enforcement system where IP rights are respected and rights holders can expect some predictability of how patent invalidity or infringement cases will be handled.
For further information, please contact Tamara El Shibib.