Compared to some jurisdictions, the United Arab Emirates (UAE) has a young patent system. There has however been significant growth and reform over the last few years, including the recent amendments to the UAE Patent Law (Federal Law no. 11 of 2021). According to data from the World Intellectual Property Organisation, in 2011 there were 200 patents in force in the region. As at 2020 there were 2,416. Between 2019 and 2020 the figure almost doubled, an indication of the investment opportunities being created in the region. For patent holders seeking to effectively protect their monopolies in the UAE it is inevitable that they will seek monetisation and enforcement opportunities in the future.
As the system of enforcement develops in the UAE, and the courts become increasingly familiar with patent matters, we expect that they will look to the practices and bodies of law in other jurisdictions. Notwithstanding the fact that the UAE is a civil law jurisdiction, it is likely that the common law jurisdiction of the UK will have some bearing on the development of the issues in the UAE. This is due to the UK's reputation for providing consistent and well-reasoned patents judgments from experienced judges with considerable technical and patent expertise.
In this article we look at some of the procedural differences between patent litigation in the UK and the UAE. First, we remind readers of the process for obtaining patent rights and utility models in the UAE.
Both patents and utility models provide a way of protecting inventions in the UAE. Patents protect inventions which are novel and not obvious (and not in a category excluded from protection). The term of protection of a patent is 20 years from the filing date. Utility models protect inventions which are not sufficiently inventive to be granted a patent. Their term of protection is 10 years from the filing date. There are significant similarities between the procedures for obtaining patents and utility models – in this article we focus on patent rights.
1. Drafting + Filing
A patent attorney will usually take responsibility for drafting and filing patents in the appropriate jurisdictions where coverage is sought. In the UAE, only local agent firms registered with the UAE Ministry of Economy as an intellectual property (IP) agent can file UAE applications. So it is common for many international firms to appoint a local agent to manage UAE filings on their behalf.
As the UAE has acceded to the Paris Convention and is a signatory to the Patent Cooperation Treaty (PCT), there are three routes available to obtaining protection in the UAE:
- designate the UAE in a PCT application
- file an application in the UAE claiming priority to an earlier filed application under the Paris Convention
- file a direct national application in the UAE
Applications can be filed in English but Arabic translations are required and must be late filed within 90 days of the filing date. Other supporting documents are also required to meet the formality requirements including a power of attorney, and where the applicant is a company, an assignment from the inventors and a copy of the commercial license. All foreign supporting documents must be notarised. Legalised documents are no longer required for UAE patent applications.
After filing an application at the UAE Patent Office, there will be a period of examination of the application before the patent office issues a decision to allow or reject the patent. It's not possible to request examination in the UAE. Instead the Patent Office issues a notice to the applicant to pay the substantive examination fees once all formality requirements are met. The examination period can take two to three years but can be accelerated if the claims for a corresponding foreign application (which has been allowed or granted) are submitted during examination. The Patent Office has also recently introduced the option of accelerated examination at an additional fee where the first examination report is issued in as little as six months from payment of the examination fees. This is a new option for applicants and should help to reduce the time to grant. During the examination stage, the Patent Office will issue up to three examination reports for an application, after which the application is rejected if the objections are not overcome.
3. Patent grant
A patent application may take anywhere between three to six years from filing to grant. If the application successfully passes the examination stage and is allowed, the Patent Office will invite the application to settle the publication and grant fees. It may be that the final set of claims of the patent (which set out the scope of protection) have been amended during prosecution to overcome the examiner's objections such that they are in a form in which they are different to those which were originally filed.
4. Post-grant opposition window
At grant, details of the application are published in the Official Patent Gazette in Arabic. The publication procedure is expected to change soon to be more aligned with international patent systems. UAE applications will soon be published (in English and Arabic) at 18 months from the earliest filing date.
Under the former law, third parties who wanted to oppose the grant of a UAE patent had to file an opposition within 60 days of publication to the Appeal Committee. The process was costly and time-consuming for applicants. Under the new law, third parties can request a post-grant re-examination at the Patent Office within 90 days from publication of the UAE patent. The re-examination is handled by senior technical examiners at the patent office and promises to be cheaper and faster. Once the examiner issues a decision, there will be an additional 60 day window to file an opposition to the Appeal Committee. Opposition before the Appeal Committee can be a more cost effective means of challenging the validity of a patent than in the national courts, however the timeline is short – 90 days is significantly shorter than the nine month post-grant opposition window allowed by the European Patent Office.
Patents and utility models are assets and therefore can be monetised by means of assignment and licensing. Applicants are advised to record patent assignments and licenses at the UAE Patent Office. If the claims of the patent are being infringed by another party then a patent holder may need to bring proceedings before the UAE courts (a remedy available after the relevant patent(s) have granted).
Below we have focused on aspects of the UK and UAE systems which are relevant to a patent holder seeking to enforce its patent(s). As we note above, we expect that as the UAE courts develop further they will look to other jurisdictions, including the UK, in order to develop an efficient and effective system.
Venues for enforcement
Patent litigation actions are typically commenced before the High Court (in either of the specialised IP courts - the Patents Court or the Intellectual Property Enterprise Court (IPEC)).
The IPEC typically hears lower value, less complex IP cases (including some patent cases). In this forum, there is a cap on the amount of costs which the successful party can recover from the losing party (£60,000) and on the level of damages (£500,000).
The Patents Court is a dedicated court for patent matters, and cases are typically heard by one of the dedicated Patents Court judges.
The appeal courts are the Court of Appeal and the Supreme Court.
United Arab Emirates
The UAE is a civil law jurisdiction. No specialist patent courts exist in the UAE but there is a judicial circuit within the Federal court system in Abu Dhabi that provides its judges with IP-specific training.
Only local advocates with rights of audience can represent parties to a patent dispute before the courts. Proceedings are held in Arabic.
Patent litigation actions are brought before the civil courts or the criminal courts and the procedures are essentially the same. Actions are usually first heard in the Court of First Instance with appeals heard by the Court of Appeal and issues around points of law referred to the Court of Cassation.
For civil proceedings, actions are brought before the local court of the Emirate. There are seven Emirates in the UAE - Dubai, Abu Dhabi, Ras Al Khaimah, Sharjah, Umm Al Quwain, Fujairah, and Ajman. Of these, Dubai, Abu Dhabi and Ras Al Khaimah have their own local court systems. The Federal court in Abu Dhabi will preside over litigation actions for the remaining Emirates which do not have their own court system.
The UAE also has two free zones which have their own court system. If a party to the action is based in the free zones of Dubai International Financial Centre (DIFC) or Abu Dhabi Global Market (ADGM), the infringement occurs there or the parties agree to the jurisdiction, the action can be brought before the common law courts of DIFC and ADGM, where proceedings are available in English.
Availability of urgent preliminary relief
The UK courts offer options to take action against an alleged infringer on an urgent basis e.g. preliminary injunctions. These can be effective in very quickly preventing actual or threatened infringing activity.
In deciding whether to grant a preliminary injunction (which can be made either with or without notice having been given to the allegedly infringing party) the court will consider, among other things, whether the balance of convenience lies in favour of granting the relief i.e. whether the harm to the claimant in not granting the injunction outweighs the harm to the defendant in granting the injunction. Outside the pharmaceutical field where preliminary injunctions may be ordered to prevent the launch of generic drugs they are rare, but not unheard of.
United Arab Emirates
The UAE courts offer an interim 'precautionary measure order' in special urgent circumstances which can be sought before the main claim is filed. If the application for a precautionary measure order is filed before the main claim is brought, the plaintiff has eight days from the time the preliminary measure order is granted to file the main action.
The purpose of such orders is to search and seize infringing goods, or equipment used to produce the infringing goods before trial.
Stages in proceedings
In the UK patent proceedings will typically be "split" such that liability issues are addressed first, followed by any damages claim (if relevant after the liability stage).
If issues concerning the infringement and validity are both in issue in the proceedings (which is usual) both the issues will be heard together at the same liability trial, and the resulting judgment will address both - the matters are not bifurcated as they are in some jurisdictions.
The main stages of UK Patents Court proceedings (liability stage) are as follows:
- Exchange of pleadings (which might be quite brief documents)
- Case management directions agreed or ordered by the Court
- Disclosure (if relevant)
- Parties conduct experiments (if relevant)
- Exchange of expert evidence (and witness statements, if relevant)
- Pre-trial review hearing
- Exchange of skeleton arguments for trial
- Post-trial form of order hearing (for example to address relief and costs)
United Arab Emirates
Civil trials are conducted on the basis of exchanging written memoranda and documentary evidence.
Validity and infringement are heard in different proceedings - patent infringement cases are brought before the Emirate-level court while issues of invalidity cases are heard at the Federal-level courts. Therefore, it can be difficult procedurally to raise a defence of invalidity in an infringement action.
The main stages of UAE Court proceedings are as follows:
- Appointment of local advocate and completion of formality document requirements (e.g. a power of attorney)
- Disclosure - Parties will prepare memoranda and documentary evidence for the Court
- Exchange of expert evidence (and witness statements if relevant)
Judgments are rendered orally. The written judgment is usually available about one or two weeks after the oral judgment. Appeal periods are calculated from the date of the oral judgment.
Only Court of Cassation judgments are published. Other level judgments cannot be obtained by members of the public.
While the principles of open and natural justice remain fundamental to the system of justice in the UK, the courts manage the disclosure of highly confidential information in a way that balances these principles with the need for preservation of confidentiality in sensitive commercial and technical information. The relevant rules restrict the subsequent use that may be made of documents disclosed in the discovery process. More generally, where appropriate mechanisms may be ordered (or agreed) for the provision of confidential information/documents (whether in pleadings, evidence or discovery) under the protection of "confidentiality clubs", the club members provide undertakings requiring them to keep the information and documents secure.
Usually a confidentiality club will include at least one individual from each party, for example the in-house IP lawyer with primary responsibility for providing instructions to its external solicitors, and typically a small team associated with them, as well as the external solicitors. However where considered appropriate in the circumstances the court has permitted information to be shared on an 'external eyes only' basis (excluding access to highly sensitive information by in-house lawyers of the recipient) or declined to order disclosure of certain material.
United Arab Emirates
There are no provisions in the law relating to confidentiality requirements during trial. Being a civil law jurisdiction, confidentiality is maintained as the proceedings are private held between the parties and the Courts' judgments are never published (with the exception of judgments made by the Court of Cassation).
Disclosure in patent proceedings is typically more limited than in other commercial litigation proceedings. In most cases an alleged infringer will be ordered by the Court to create and provide a Product and Process Description (PPD), which describes the alleged infringing product or process in sufficient detail for the infringement issues to be addressed. This would typically replace any requirement for disclosure of documents which are in the parties' possession or control.
The patent owner may be ordered to provide disclosure on specific discrete issues (such as relating to the sufficiency of the patent(s) in dispute), although this is more rare than provision of a PPD by the alleged infringer.
In certain circumstances, an order can be made against a third party (not a party to the proceedings) for disclosure of documents in their possession or control.
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There is no mandatory pre-trial disclosure procedure in the UAE. The evidence is presented during the trial in court or disclosed to the expert as and when requested.
The typical forms of relief sought by a patent holder in patent cases include a final injunction and damages.
Although a permanent and final injunction is not an automatic right, the Court will order these in the majority of cases. Breach of an injunction can result in a finding of contempt of court.
Damages assessments before the Court are rare (most cases settle before that stage) but there is a reasonably developed line of case law which indicates the likely extent of damages recoverable by way of (1) the patent holders' lost profits or (2) the infringers' profits achieved by the infringing activity. The patent holder must choose between those two heads of damage.
United Arab Emirates
The typical forms of relief sought by a patent holder in patent cases include an injunction and damages.
Injunctions are generally unavailable under the new Law but the Court may order the 'confiscation of the seized articles and may order the destruction or removal of effects of the action breaching the law and the machines and tools used'. This should effectively mean a permanent injunction.
Damages or an account of profits are estimated based on evidence placed before the Court. The Court may ask an expert to assist with calculating. As there is no discovery process, there may be difficulty in having real evidence put forth to establish damages or an account of profits.
In addition to the above for criminal proceedings, the Court may also impose a prison sentence on the infringer and order the publication of the judgement in the official Gazette or in a local newspaper.
Where the court makes an order about costs (which is usual following the substantive decision), the general rule is that the unsuccessful party is ordered to pay the costs of the successful party. However, in deciding what order to make about costs, the court will have regard to all the circumstances, including the conduct of all the parties, whether a party has succeeded on part of its case, and, in some circumstances, offers to settle.
Where the parties fail to reach agreement regarding payment of costs and it falls to the court to assess the amount of costs payable, the usual basis for assessment is the 'standard' basis. Pursuant to the standard basis, the court will only allow costs which are considered to be proportionate to the matters in issue and to have been reasonably incurred, and will resolve any doubt in favour of the paying party.
United Arab Emirates
Cost awards are generally not available. Instead the court may make an order for legal fees to be paid. The recoverable legal fees are usually nominal and will not cover the cost of the proceedings.
Court fees and court-appointed expert's fees (if any) are recoverable from the unsuccessful party. Each party will have to cover its own costs for self-appointed experts.
Length of proceedings/trial
The Patents Court will endeavour to bring a patents case from issue to trial within 12 months. Appeals in the Court of Appeal can be heard within a matter of months thereafter.
Trial lengths vary depending on the complexity of the case, and the number of issues in dispute. An action concerning infringement and validity of a single patent in a non-complex field of technology might be expected to take between two to four days in total. This will include time for opening submissions, cross-examination of experts and witnesses, and closing submissions.
United Arab Emirates
First Instance proceedings generally take 12 to 18 months to complete but can be longer. It is common for the defendant not to appear at the first hearing and several adjournments may be granted in order for the defendant to appoint an advocate. Proceedings are also delayed if the technical expert appointed by the court delays the submission of their report or if the parties look to appoint further experts.
Proceedings at the Court of Appeal generally take between three to six months and proceedings at the Court of Cassation usually take between two to eight months.
Alternative Dispute Resolution
The Court will expect that the parties consider resolving disputes outside of the courts (both before and during the litigation). This might involve mediation (a third party facilitating a resolution), arbitration (a third party deciding the dispute) or, offers to settle.
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The Courts do not order the parties to undertake mediation or arbitration prior to commencing court proceedings. Arbitration is not common for patent infringement cases because (1) the courts will normally assume jurisdiction unless the parties have contractually agreed to arbitration in advance; (2) it is difficult for parties to reach an agreement for an arbitral award; and (3) timeframes and costs can be greater than litigation before the courts.
If you have any questions about this article, please contact Tamara El-Shibib or Alex Driver.