Under the former UAE Patent Law, patents which related to national security were excluded from patent protection. This position is changing. New restrictions have been introduced in the Implementing Regulations for the new UAE Patent Law which came into effect in June 2022. These are likely to be of particular relevance for companies or research organisations operating in the military defence or national security sectors.
The Regulations introduce a change in the way the UAE patent office will handle technologies in the military defence or national security sectors going forward. Technologies subject to the restrictions may range from biotech to advanced computing, big data analytics, AI and other emerging tech areas with potential applications in defence and national security.
The position under the new law
Under the new law, it will be possible to secure UAE patents in the military defence or national security areas. However, there are restrictions which affect the public disclosure and potential to file foreign patents which relate to these technologies.
These are set out under Articles 13-15 of the Regulations as follows:
Article 13 - Determining the invention related to the security and military industries
- The Ministry determines the patent applications for the security and military industries submitted by the applicant residing in the country according to the classification chosen by the Ministry.
- The Ministry bases its classification mainly on the Strasbourg Agreement Concerning the IPC or other classifications that the Ministry deems appropriate.
- Upon receiving an application related to the security and military industries, the Ministry shall submit a copy of the application and its attachments to the concerned department of the Ministry of Defence.
Article 14 - Review by the Ministry of Defence
- The Ministry of Defence shall review the application and its attachments as received from the Ministry under Clause (3) of Article 13 of this Decision within a period specified by the Ministry of no less than 90 days.
- In the event that the Ministry does not receive the results of the Ministry of Defence's review of the application stipulated in Clause (1) of this Article within the period specified by the Ministry, this shall be considered as the Ministry of Defence's unwillingness to maintain the confidentiality of the invention or to prevent the inventor from submitting an application regarding it to a foreign country based on Article (15) of this Decision.
Article 15 - Prohibition of applying to a foreign country and maintenance of confidentiality
- The Ministry of Defence may prevent the owner of an invention related to the security and military industries from submitting an application to a foreign country to obtain any of the industrial property rights.
- The Ministry of Defence may decide to keep the invention confidential for the period it deems necessary.
- The owner of the invention may request the Ministry of Defence a fair compensation for losses arising from compliance with the provisions of Clauses (1) and (2) of this Article.
New review process by the UAE Patent Office and Ministry of Defence
From the date of implementation, UAE companies who wish to protect any patents in the national security or military defence sectors, will only be able to do so once permission has been secured from the UAE Ministry of Defence. It will not be possible to file patents in the military or national security sectors overseas, until or unless, Ministerial approval is obtained. This means that going forward you will need to file a UAE patent application first, in order to then obtain the permission.
From the implementation date, applications in the military defence or national security sectors will be subject to different treatment by the UAE patent office officials. UAE patent applications in these technical areas will be reviewed by the UAE patent office officials and a copy of any patent application it classifies to have applications in national security and/or military defence, will be submitted to the concerned department of the Ministry of Defence.
The classification will be based mainly on the Strasbourg Agreement Concerning the International Patent Classification (IPC) or any other classification that the UAE patent office deems appropriate.
The UAE Ministry of Defence will then review the application and issue a decision within 90 days (or by the date specified by the patent office) on whether there is a prohibition to filing the patent(s) overseas, or if there is a requirement to maintain confidentiality.
It is not yet clear how the new process will affect the timeline for substantive patent examination by the patent office which currently takes up to 2 years. As there is a 12 month priority window from the UAE patent filing date for a patent applicant to file overseas, there will be a need for the UAE Patent Office and the Ministry of Defence to work together to issue any ruling within the 12 month priority window.
Considerations for your business
Where there is any such filing for your business, and you may have an intention of filing overseas, you will need to engage with the relevant UAE officials from the outset in relation to any UAE application(s). The patent office officials will need to ensure that they promptly approach the Ministry of Defence, if deemed necessary, and in turn the Ministry of Defence will need to ensure it promptly issues the ruling within the 90 days. This is to provide you with sufficient time to be able to file within the priority 12 month window if permitted to do so.
There is no indication as to whether there will be an appeal process with the Ministry of Defence, and so again, it will be important to secure their views as soon as possible, so that there is time to discuss further with them if required, and have time to seek overseas patent protection if permitted to do so.
Where the Ministry of Defence issues a restriction on foreign filing or publication, the patent holder may request a 'fair compensation' from the Ministry of Defence for losses arising from compliance with the provisions. The Regulations are silent as to how these losses may be calculated or claimed.
These provisions follow similar restrictions imposed by the U.S. Government for controls and exports of sensitive equipment, software and technology as a means to promote national security interests and foreign policy objectives.
Please reach out to Tamara El-Shibib of our UAE-based IP team for further information or if you require any advice or assistance regarding the above.