A new Ministerial Decision no. 112 of 2023 was issued by the UAE Cabinet in November 2023, which introduces changes to the official fees for UAE patent applications, utility models and industrial design applications, amending the official fees associated with Federal law no. 11 of 2021. The Decision was published in the UAE's Official Gazette on November 15, 2023 and these changes came into effect on January 15, 2024. In this article, we examine those changes and how they affect patent applications filed in the UAE.
Summary of changes
The UAE Patent Office has introduced a new category of applicant 'small or medium-sized businesses (SMEs) and academic institutes', which appears to be in line with the country's commitment to supporting innovation. UAE-based applicants who fall in this category will now benefit from a 50% reduction in fees for all services.
Another significant change is the introduction of a tiered fee structure for substantive examination fees for UAE patent applications. There are three sets of examination fees that may apply depending on the total number of claims in the application. In addition, official fees have been introduced, which allow applicants to request expedited examination, re-examination for minor office actions and post-grant examination.
The Decision also reinstates official fees that were previously cancelled by the UAE Patent Office. Among the official fees reinstated are annuity fees, fees for publication, grant, filing amendments, recording changes to the application and transfer of agent. The UAE Patent Office previously cancelled these fees in 2019 and applicants were still required to process non-fee bearing annuities each year to maintain their applications or registered patents. As of January 2024, applicants are required to pay the official annuities to maintain their applications/registrations.
Further details are outlined below.
New category of applicant introduced
Reduced filing fees have been introduced for patents, utility models and industrial designs for UAE-based entities that qualify as SMEs and academic institutes. This appears to be similar to the 'small entity' status available for non-profits or small organisations at the United States Patent and Trademark Office (USPTO).
The new filing fee for these entities is AED 1,000 [approx. USD 273], which is 50% of the standard filing fee. The Decision does not provide any clarification on what qualifies an entity as an 'SME', but officials have made clear that only UAE-based applicants can qualify under this category. To claim 'SME' status, UAE-based applicants will now need to submit a certificate from any local programme that confirms their SME status or a copy of their UAE trade license. The standard filing fee of AED 2,000 [approx. USD 545] will still apply for regular company applicants in the UAE and foreign applicants.
Official fees for late filing of formality documents
Over the last several years, applicants have been able to late file formality documents after the filing date without payment of official fees. Under the new system, applicants are required to pay AED 400 [approx. USD 110] to file formality documents after the filing date. The documents will still need to be filed within 90 days of the filing date to avoid lapse. To avoid this fee, applicants will need to prepare notarised documents (power of attorney, deed of assignment) in advance and submit these at the time of filing.
Tiered substantive examination fees
A tiered system for official substantive examination fees has been introduced. For applications with 10 or less claims, applicants will be required to pay the standard examination fee of AED 2,000 [approx. USD 545]. Applications with claims between 11 and 30 will attract examination fees of AED 8,000 [approx. USD 2,180], and those with over 30 claims will be required to pay AED 9,000 [approx. USD 2,452].
A claim limit of 50 claims still applies, so where applications are filed with more than 50 claims, UAE examiners will only examine the first 50 claims. SMEs and academic institutes will benefit from 50% of the standard examination fees.
Officials have also indicated that, at the time of examination, applicants may be invited to pay the difference in official fees where payment has already been made under the old system. The applicable official fee will be based on the total number of claims at the time the formality acceptance is issued.
Expedited examinations
Applicants will now have the option to request expedited examination for UAE patent applications for a fee of AED 2,000 [USD 545] for companies and individuals. Applicants using this route can expect the first examination report to issue in as little as six months – compared to approximately [12-18 months] for standard examination timescales. This option is only available for the first examination round, so applicants can expect longer turnarounds for re-examination.
Restoration of lapsed applications
Officials have confirmed that applicants will have nine months to restore UAE applications that lapse for failure to meet a deadline set by an official notice e.g. a deadline to respond to an office action or pay official fees. Applicants will be required to pay restoration fees of AED 5,000 [approx. USD 1,362] in addition to a monthly late payment fine for each month leading up to the nine months.
Reinstatement of annuities and other official fees
The Decision reinstates official fees cancelled in 2019. This includes fees for publication, grant, modifying the bibliographic details of an application, or filing claim amendments.
Official annuity fees have been reinstated for UAE patent applications and granted patents. The officials have confirmed that UAE applications will not lapse for failure to pay official annuity fees, but applicants will be required to pay monthly late payment fines in addition to the accumulated annuity fees to progress their applications.
Publication of applications at 18 months
Officials have confirmed that from February 2024, UAE applications will become publicly available at 18 months from first filing in line with international practice. Applicants will be able to view pending UAE applications, granted patent claims and directly access certified copies of UAE documents (in English and Arabic) at no cost on the new e-filing system. Third parties will also be able to access published applications and grants directly on the new system.
Making patent information available is a significant advancement for the UAE patent system. To date, basic patent information has only been available for granted patents and is only published in Arabic. This move will create greater transparency and accessibility for international applicants and interested parties who want to get a better understanding of UAE filing trends. We also expect to see a rise in actions for patent invalidation and patent infringement once patent data becomes publicly available.
Access to patent data will also be invaluable for researchers and developers who wish to see what patents have already been published in the UAE, so that they can take pending patents into account in their ongoing developments to avoid infringement, or potentially, to identify potential licensing opportunities of third-party rights.
The new system was launched on 15 January 2024, with full deployment expected by end of February 2024. For any questions on this article, please contact Tamara El Shibib or Marian Fayek.