PATENT SUMMARY

 

Patent Law

 

Patents and utility models in The UAE are protected by Federal Law No. 44 of 1992 pertaining to the Industrial Regulation and Protection of Patents, Industrial Drawings and Designs which was amended by Federal Law No. 17 of 2002 and later replaced by Federal law No. 31 of 2006.

 

The Federal Law covers all the seven Emirates forming The UAE (Abu-Dhabi, Dubai, Sharjah, Ras Al-Khaimah, Ajman, Fujairah and Umm Al-Quwain). A patent granted under said law provides protection in all Emirates.

 

Patent related Treaties

 

The UAE is a member of the Paris Convention (PC), of the WIPO Convention, of TRIPS Agreement, the PCT and in addition, it is a member of the Gulf Cooperation Council (GCC) Patent Office.

 

Filing System

 

Patents with validity in The UAE may be obtained by:

 

a. National Filing

b. Entering National Phase of PCT application, or

c. Filing a GCC patent (A patent granted by the GCC Patent Office which is located in Saudi Arabia will protect the patent in all member countries including The UAE).

d. Protection of the invention as a utility model in The UAE is applicable.

 

Priorities

 

With regard to patent applications in the event of claiming priority rights, it is possible to:

 

a. Claim Priority under Paris Convention within 12 months from the date of first filing of the priority application.

b. Enter National Phase of PCT application within 30 months from the earliest priority date.

 

Patentability Requirements

 

An invention is patentable in The UAE if it meets the criteria of Novelty, Inventiveness and Industrial applicability.

However, a utility certificate may be issued for new inventions capable of industrial application but having no innovative character warranting patentability. 

 

Non-Patentable 

 

a. Plant varieties, animal species, or biological methods of producing plants or animals. Exceptions shall be allowed for the microbiological methods and their products.

b. Diagnostic methods, treatments and surgical operations needed for humans and animals.

c. Scientific and Mathematical principles, discoveries and methods.

d. Guides, rules or methods followed to conduct business or perform mental activities or play games.

e. Invention that may lead to violation of the public order or morals.

 

Examination

 

Patent and utility model applications are subject to examination as to form and substance. Formality examination is conducted by The UAE Patent Office while substantive examination is conducted by the Korean Examiners residing at the UAE Patent Office through a special agreement between both offices.

It is to be noted that, accelerated examination system does not exist in The UAE, and substantial examination fees are to be paid only upon receiving an official notification from UAE patent Office and that within 90 days from the date of said notification; otherwise, the application will automatically lapse and payment of restoration fees will be applicable to revive the same.

Applications satisfying the exigencies of the relevant provisions of The UAE Patents Act; in particular, with regard to patentability, are accepted and a Ministerial Order granting the relative Letters Patent shall be issued and published in the Industrial Property Journal.

Rejected applications are subject to a petition before the competent Committee within a delay of 60 days from the date of the rejection decision.

 

Opposition

 

Published applications may be opposed by any interested party within a delay of 60 days from the publication date. If no opposition has been filed, or no grounds for opposition exist, the patent is entered in the patent register and a patent or utility certificate is issued.

 

Validity

 

Twenty (20) years for Patent starting from the UAE filing date (In case of PCT starting from the PCT filing date). Ten (10) years for Utility Model. The term of protection is non-extendable.

 

Annuities

 

As per The UAE Patent Law, an annual fee (annuity) must be paid within 3 months as from the relative anniversary date of filing (International Filing Date for PCT applications and Local Filing Date for National applications) and is payable before the granting of the patent. A grace period of three months is granted (after the expiration of said period), subject to payment of monthly penalty.

 

However, the non-payment of annuities after the expiration of the grace period would result in the lapse of the application, and payment of restoration fees will be applicable to revive the same.

 

In all cases, it shall be allowed to pay the annuities in advance for each or part of the validity period of the patent.

 

Licensing

 

License may be recorded against granted patents only and licensing is compulsory. A patent has to be worked and if not fully exploited by the patentee within 3 years after grant, it will be subject to compulsory licensing under the provisions of the law.

 

Assignment

 

The right to a patent may be assigned. An assignment shall have no effect against third parties, unless it has been recorded at the Patent Office and published in the Industrial Property Journal.

 

 

PATENT REQUIREMENTS

 

Application for original Patent or Utility Model

 

1- Power of Attorney duly notarized & consularized up to the UAE Consulate.

2- Assignment from the Inventor/s, if the applicant is not the inventor (Notarized & Consularized).

3- Extract from the Commercial Register or Certificate of Incorporation (Consularized).

4- Specification, claims, drawings (if any) & abstract in English itemized consecutively as follows:

    a. Title of the Invention,

    b. Abstract of the disclosure,

    c. Background Art,

    d. Brief Summary of the Invention,

    e. Brief Description of the Drawings (if any),

    f. Detailed Description of the Invention,

    g. Claims, and

    h. Drawings (if any).

5- Arabic translation of the specification (Same can be prepared locally).

6- Copy of Priority document in English, if convention priority is claimed (Only certified).

 

- The specification in Arabic and English (above 4 & 5) is the requisite documents for filing.

- Documents under 1, 2, 3 & 6 can be filed within a non-extendable delay of 90 days from filing date.

 

Entering National Phase of PCT Application

 

1- Power of Attorney duly notarized & consularized up to the UAE Consulate.

2- Assignment from the Inventor/s, if the applicant is not the inventor (Notarized & Consularized).

3- Extract from the Commercial Register or Certificate of Incorporation (Consularized).

4- Specification, claims, drawings (if any) & abstract in English.

5- Arabic translation of the specification (Same can be prepared locally).

6- Copy of the following PCT Forms:

    a. International Application,

    b. International Search Report,

    c. International Preliminary Examination Report,

    d. International Publication.

 

- The specification in Arabic and English (above 4 & 5) is the requisite documents for filing.

- Documents under 1, 2, 3 & 6 can be filed within a non-extendable delay of 90 days from filing date.

 

Change of Name/Address

 

1- Power of Attorney in the new name/address of the applicant duly notarized & consularized up to the UAE Consulate.

2- Official Certificate proving the change of name/address of the applicant (Consularized). This certificate can be obtained from the local competent authority of the applicant’s domicile.

 

Assignment

 

1- Power of Attorney executed by the assignee duly notarized & consularized up to the UAE Consulate.

2- Deed of Assignment executed by both parties (Notarized & Consularized).

3- Extract from the Commercial Register or Certificate of Incorporation of the assignee (Consularized).

 

License

 

1- Power of Attorney in the name of the licensee duly notarized & consularized up to the UAE Consulate.

2- License Agreement executed by both parties (Notarized & Consularized).

3- Extract from the Commercial Register or Certificate of Incorporation of the licensee (Consularized).

 

 

(Any document in a language other than English must be accompanied by a Certified English translation).

© 2016 Associated Patent & Trademark Services

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