The United Arab Emirates (UAE) has enacted Federal Law No. 11 of 2021 (“the Law”), which regulates and protects industrial property rights. The old Patent Law, Law No. 17 of 2002, will be repealed by this law. The law covers patents, industrial designs, integrated designs, concealed knowledge, and utility certificates. The law was published in Official Gazette No. 703 on May 31, 2021, and the Executive Regulations are likely to be released in November 2021. The amendments appear to align the UAE’s patent law with international Patent laws. The most noticeable change is the addition of a 12-month grace period for invention disclosures before filing, as well as an expedited review of “urgent applications.” We’ll go over the significant legal changes and their effects in the sections below.
Patentability Criteria
If an innovation constitutes an inventive step and is capable of industrial application, it is eligible for patent registration in the UAE. The new legislation explains what constitutes an innovative step. From an ordinary person’s viewpoint, an innovation will entail an inventive step if it is neither obvious nor apparent. When an innovative step is included, it is non-obvious to an ordinary person versed in the art, according to the new definition, which is in line with worldwide patent registration requirements. Once the government announces the Executive Regulations, patent registration agents in the UAE can provide you with further information.
Grace period for disclosure
Article 5(4) of the Law states that disclosures made by the inventor within 12 months of the filing date do not affect novelty. An invention must be ‘new’ or innovative to meet the broad standards for getting a patent. If an invention has not been disclosed to the public in any way (orally or in writing)
before the filing date, it is considered as a “new” invention. This criteria for innovation is common in most national patent laws. Some laws permit disclosures by the inventor or third parties who get information from the inventor if they are made within a particular ‘grace period.’
A grace period usually is 6 or 12 months after the innovation is publicly disclosed. Suppose an invention is disclosed to the public before submitting a patent application in nations with no grace period (i.e. when absolute uniqueness is needed). In that case, it loses its originality and is ineligible for patent protection.
Patent filing requirements
A new clause has been added that specifies the filing requirements. Article 11 of the Law states that applications must be filed in either English or Arabic, but a late submission is an option if neither is available. Article 11(9) of the Law provides a 90-day timeframe for meeting the missing document requirements after receiving the official notification. If the changes are within the scope of the original application, the clause allows for adjustments to the application after it has been filed.
Urgent patent applications
Under Article 14, applicants can now request that the UAE patent office expedite the review of “urgent Patent applications.” This clause may be significant if the UAE decides to join the Patent Prosecution Highway (PPH) initiative, under which patent examiners from participating offices can utilise the work products of other offices to expedite examination and patent awards.
Publication of Patent application
One of the aims of a patent system is to share information to foster further invention. Applications that are in the process of being reviewed or rejected cannot be seen. According to Article 13 of the Law, if the invention meets the standards for patentability, the Ministry will announce the approval of the patent grant in the Official Gazette following the Executive Regulations. It’s unclear if the Regulations would enable pending applications to be disclosed before they are granted, but we anticipate further information to be provided in the Regulations.
Divisional Applications
Suppose an initial application comprises two or more innovations. In that case, an applicant can now submit one or more divisional applications under Article 16, as long as the subject matter is within the scope of the original application. The original application’s filing date will be used for the divisional application. The Regulations will outline the requirements for an application’s divisibility.
Other Modifications
- Addition of an Additional Exception
A patent would not be infringed by a third party if it was used for non-commercial educational or research purposes or if the patented product entered the state on a transitory basis, according to Article 19 of the previous Law. Article 22 of the new Law adds an extra exemption to patent infringement where the patent is used in a “combination of two or more medications for the purpose of medical treatment by a licensed pharmacist.”
- Broaden the scope of Compulsory License
Compulsory licenses have been expanded to encompass ‘crisis or disaster,’ as well as emergency, grave public necessity, and non-commercial causes. The value of penalties for infringement has also been adjusted. These may be anything from AED 5,000 to AED 100,000 under the previous law. The new law imposes fines ranging from AED 100,000 to AED 1,000,000, as well as the possibility of imprisonment. The Executive Regulations are intended to provide more specifics on how the Law will be put into practice.
Adopting a new law will likely enhance the UAE’s patent registration framework since the emphasis appears to be on bringing the regulations in line with international norms. UAE applicants are expected to benefit from the grace period for disclosures and the provision for urgent patent applications. Only when the Ministry issues the implementing rules will a clear picture emerge. Patent registration agents in the UAE, such as HHS Lawyers and Legal Consultants, can keep businesses up to speed on recent legislative developments. Trustworthy patent registration services in the UAE provide a strong barrier of protection for businesses.
