New UAE Patent Law
The UAE is a member of the Paris Union and thus, since beginning, has implemented a robust patent law to incentivise the creators and give them a broad range of inventions to categorise their own. The patent seekers develop the confidence in the Intellectual Property regime and get their innovation protected. The oldest and foremost law related to industrial protection and law relating to patents and designs was enacted as Federal Law No. 44 in 1992. The same was then amended in 2002 and later updated in 2006. The law was not amended until recently in 2021. The UAE, through its Federal Law no. 11 of 2021 concerning the regulation and protection of Industrial Property Rights, repealed the former laws and regulations. The notification was published in the Official Gazette no. 703 on 31st May 2021. The review of the laws depicts the changes to be in harmony with the international prevalent laws.
Changes in the law and subsequent implications
• Based on International Standards: Article 5 of the regulations related to patents and designs states that a patent shall be granted for a new invention contrived from a creative idea, forms an inventive step and is capable of industrial application. The standards have been made less ambiguous and the specific definitions have been provided in the new law. The “inventive step” is when the invention is non-obvious to an ordinary person who is skilled in the art. The patent can be granted, amended, modified or enhanced based on whether the patent was already provided or not.
• Disclosure grace period: One of the prime requirements of a patent is ‘novelty’. An invention is considered ‘novel’ if it has not been disclosed to the public already. There are certain national legislations that allow disclosures to be made provided that the application is made within a certain grace period. The grace period is usually six or twelve months counted from the date of the disclosure of invention made to the public. The grace period is explicitly provided through the law and just in case, the grace period is not provided, then absolute novelty, with no disclosures to the public in any manner, is essential. The new amendment to the UAE legislation provides under Article 5(4) that disclosures by the inventor occurring within 12 months of the filing date shall have no effect on the novelty. The implications of the amendment are both beneficial and complicated for the UAE applicants. The amendment can ensure that even if the patent is disclosed accidently, it does not lose its novelty. However, it must be understood that once an applicant decides to file an application in a country where grace period is allowed, then it shall have to take appropriate actions and time-related precautions while applying in the non-grace period countries.
• Exclusion of certain categories: The former law already provided certain subject matters that must be excluded from the patent protection. Essentially, the exclusions were plant varieties, animal species or biological methods of production. In the new law, the research on plants and animals as well as software are also excluded. The former law was uncertain about the computer-related inventions. In India as well, the algorithms and software are considered non-patentable.
• Request for accelerated examinations: The applicants now have an option to accelerate their examinations for “urgent applications” as provided under Article 14. The provision can prove to be helpful for the country if it wishes to be a part of the Patent Prosecution Highway program wherein the patent examiners can make use of the work products from other offices to accelerate their own process. There is no clarity of UAE’s participation in the program but given the actions and circumstances, the participation can be anticipated.
• Publication of Patent Applications: Every application, if accepted, rejected or withdrawn is published in journals across several nationalities. However, in accordance with the former UAE law, only the accepted applications were published and an average application took three to five years to be accepted. Meanwhile, other rejected or pending applications were not shown through any records to the public. It made difficult for the applicants to anticipate the novelty of their own invention and led to clashes. However, in the new law, under Article 13, if the conditions of patentability are fulfilled, the acceptance by Ministry shall be published in the Official Gazette.
• Issues with notarisation of assignments: The UAE patent office requires a Deed of Assignment which authorizes a person other than the inventor to apply for the invention. A deed of assignment is a legal document that proves the transfer of such right to the applicant by the inventor. However, notarisation of the deed is difficult in the UAE. It is because the patent office requires the applicant to provide the proof of grant of the patent. It is however, impossible to show such a proof because the patent shall not be granted to the applicant without any notarised deed. For applicants outside the UAE, the issue of notarisation does not exist because the UAE patent office shall willingly accept the deed that has been provided and duly notarised by any other patent office. The issue still sustains, even after the amendment has taken place.
• Another provision provides that a patent shall not be infringed by a third party if the same has been used for non-commercial educational or research purposes or where the patent enters for temporary basis. The latter part of the amendment is ambiguous because even if a product is patented on temporary basis, infringement shall take place during the time of protection. However, the amendment does not provide any clarity on the same.
• Another exclusion from infringement is provided under Article 22 wherein it is stated that a patent shall not be infringed if the patent is a combination of two or more medicines for a medical treatment as prescribed by a licensed pharmacist. However, it is not specified whether the provision shall continue post pandemic as well or not.
To summarize, the UAE is taking all the steps to ensure that it emerges as an industrial hub in the near future and attracts certain inventors and business owners. In an economy, it is essential that the businesses find it convenient to exist. There is a thin line between flexibility and non-accountability. The business owners must exist in a flexible yet rigid environment but must be held accountable for all their doings. National and international applicants shall only be incentivised to register their patent in UAE, once the laws and regulations are in their favour as well. The amendment in the patent laws ensures that the applicants find an ease in applying and promoting their innovations. However, it appears that the country is focusing more on the international applicants because one of the provisions is strictly against the domestic applicants. The execution of the regulations is yet to be observed and hence, a strict interpretation cannot be brought forward.
Author: Tanya Saraswat – a student of Institute of Management Studies (NMIMS), in case of any queries please write back us via email at email@example.com or contact us at at Global Patent Filing.