In January 2021, the Patent Office of the Gulf Cooperation Council (GCC patent office) stopped accepting new GCC patent applications following a meeting of the GCC Supreme Council. This meeting resulted in an amended GCC Patent Regulation being issued in May 2021 and more recently the Implementing Regulations in November 2021. Below we take you through the key takeaways for the new Regulations.
A review of the Regulations confirm the position set out in the amended GCC Patent Regulation, that the GCC Patent Office will resume handling patent applications, their examination and grant, as well as annuities. However, the significant change from pre-January 2021 applications, is that the GCC Patent Office will only do so upon request from a national patent office in the GCC. Rather than file directly with the GCC Patent Office, applicants will have to file for a GCC patent through a national office.
This patent 'outsourcing' arrangement means that the GCC Patent Office will no longer receive and grant applications independently of the national offices. The good news is that this avoids the issue of double patenting where an applicant could previously file two applications for the same invention - a national application and a GCC application - which were examined and granted independently. Patents are now granted by the GCC Patent Office only after approval by the requesting national patent office and will only have effect in that country.
There is still some uncertainty as to how this new arrangement will work in practice but we expect these uncertainties to be cleared up fairly quickly once the GCC Patent Office starts accepting new applications again. We wait to hear when the office will "reopen" for new applications.
At the moment it is not clear if the move is a step towards establishing the GCC Patent Office as a regional patent office (like the European Patent Office) where applications can be filed directly at the GCC Patent Office and the granting of patents is decided (or validated) by the national patent offices.
Another possible model is that applications filed at the national patent offices will be referred to the GCC Patent Office by the national patent offices for handling. Whether applicants have the option of referring their applications to the GCC Patent Office or if this is decided by the national patent office is not clear. What is clear is that the national offices can opt for one of the service packages set out in Article 10 where the GCC Patent Office can 1) receive applications on their behalf for formal examination only; 2) receive applications for formal and substantive examinations; or 3) receive, examine and grant applications on behalf of the requesting national office.
Articles 6 and 7 of the new Regulations set out the requirements for filing a 'provisional document' (formerly known as 'certificate of temporary protection'). These should not be confused with the standard provisional applications available in the US, France and other countries. They are available for applicants who wish to demonstrate their invention publicly at a formal exhibition in a GCC state and are seeking temporary protection for a potentially patentable invention. These certificates were available under the former law. The provisional document is valid for up to 6 months from the date of the formal opening of the exhibition and enables the applicant to file a patent application over the invention after the event without comprising the novelty requirement. The GCC Patent Office maintains a register for provisional certificates.
There does not appear to be any changes with regards to the GCC Patent Office's position in relation to the Patent Cooperation Treaty (PCT) filing system. The GCC Patent Office has never been a member of the PCT so applicants cannot file GCC Patent Office applications through the PCT filing system. However, all six GCC countries are individually members of the PCT, so applicants can obtain patent protection across the GCC by filing PCT national phase applications in the six GCC countries. Of course, the draw back to this is that at the national phase stages, it means putting in place supporting documents for six countries, as opposed to one set of supporting documents for a GCC Patent Office application. With legalisation fees being up to USD 1,500 per document per country, there can be significant cost savings in using the GCC Patent Office route, over PCT filings into the GCC Member States.
Lastly, applicants will also be glad to see that the official filing fees have been reduced for individual applicants to SAR 1,500 (USD 400) and for company applicants to SAR 3,000 (USD 800). The other official fees, including annuities, are unaffected with the exception of official patent search fees which have increased.
The new working model is a positive step towards creating a stronger patent system in the region which is more closely harmonised with international patent systems.
We expect an update very soon on when the GCC Patent Office will begin accepting new applications, whether directly or through the national patent offices in the GCC. There was an expectation that the office would start accepting new applications from the beginning of February 2022. However, it seems it is not yet started to accept new applications, so we will provide an update once the reopening is confirmed.