The United Arab Emirates (UAE) has released Federal Law No. 11 of 2021 (“the Law”), which regulates and protects industrial property rights. The law repealed Law No. 17 of 2002 on the Regulation and Protection of Industrial Property of Patents, Industrial Drawings, and Designs (the “former Law”). In the UAE, including free zones, the law will apply to patents, industrial designs, integrated circuits, undisclosed information, and utility certificates. The law was published in Official Gazette No. 703 on May 31, 2021, and it will take effect when the Executive Regulations are published in November of the same year.
The following are some major changes:
Grace period
The disclosure of information by the inventor or a third party who acquired the information directly or indirectly from the creator will not influence the grant of a patent if it occurs within twelve (12) months of the application’s filing date, as per Article 5. (4).
This is a new article that states that if an invention is revealed within 12 months of submitting a patent application, it can still be submitted and fulfill the novelty requirement. Prior to the Law, the absolute novelty was required, with the exception of the situation described in Article 3 of the former law, which states: “Temporary protection shall be awarded for inventions, drawings, and designs exhibited in local fairs under the terms and conditions set forth by the implementing regulations of this law, taking into account the provisions stated in international agreements, treaties, or reciprocity conditions.”
Examining more quickly
On the request of the applicants, the Ministry may examine some urgent patent or utility certificate applications ahead of others, regardless of the dates of filing such applications or the date of examination request as per Article 14, provided that this does not prejudice priority applications in accordance with the criteria and conditions set forth in the Executive Regulations.
This article is brand new, and the Executive Regulations will lay out the requirements and criteria for this situation. If the UAE decides to join the Patent Prosecution Highway “PPH” accords, this article is essential. Positive examination results from one office can be transmitted to a second office to speed up patent prosecution at the second office, according to the PPH.
Divisional applications
It is a new article that allows the Applicant to submit one or more divisional applications if an original application comprises two or more inventions, as long as the subject matter meets the requirements of the original application, as defined in Article 16. The original application’s filing date shall be maintained in the divisional application. The Regulations will specify the conditions.
Utility Certificate
As per Article 6, it is possible to transform the Utility model into a patent application. This is a brand-new provision, and the Executive Regulations will lay out the rules.
Contractual inventions
Article 9 of the previous Law provided for this. The new law (Article 10) merely introduced a new section that considers an invention used by an employee within two years after leaving the service as if it had been used during the service. The new law also covers the rights and duties of the employer and the worker who produces an invention, as well as the compensation entitlement.
Industrial design
It must be novel and not breach civil order or morality, according to Article 43, otherwise, it will not be allowed to be used commercially. It is only considered novel if it has not been made public previous to the application’s filing date, whether by publishing, use, or any other way. However, if the design is released to the public within one year of filing the application, it is not considered to have been exposed to the public. According to Article 45, the length of protection for an industrial design has been extended to twenty years from the date of application filing. In the previous law, the protection period was only ten years.
The new Law specified the requirements for protecting a design in a more detailed manner than the previous Law, notably with regard to the uniqueness requirement.
Designs for Integrated Circuit Layouts
The new Law adds a chapter (no. 5) for the protection of Integrated Circuit Layout Designs, which includes the criteria and requirements for protection as well as the ten-year period of protection. There were no articles for this in the previous legislation.
The list of UAE IP Firms can be found here.