According to the United Arab Emirates (UAE)’s Official Gazette no. 703 on 31st May 2021, Federal Law no. 11 of 2021 concerning the regulation and protection of Industrial Property Rights has been issued. This new law will repeal the former Patent Law, Law No. 17 of 2002. Federal Law no. 11 of 2021 on Regulation and Protection of Industrial Property Rights will come into force on 30 November 2021.
The Law introduces numerous changes in patents, industrial designs, integrated designs, undisclosed information, and utility certificates. Some of the most important changes may be listed as follow:
The disclosure grace period
When filing for patent registration, novelty or ‘new’ is an absolute requirement for all inventions. It is the core principle that makes up a design or an innovation.
However, the novelty might easily be lost in some jurisdictions because at the moment, many countries still considered the novelty feature must be absolute.
That means that the invention must not be known to the public, whether deliberately or accidentally. This requirement is harsh because in most cases, the inventor only discloses the invention by accident or because of third parties.
Accordingly, some countries have introduced a grace period for the disclosure of innovation. For example, Australia has just established a 12 months grace period for designs.
Normally, the grace period lasts for 6 or 12 months before the submission of the patent application.
For the UAE, it has established a 12 months period under Article 5(4) of the Law.
This means that during that time, an application may be submitted and still meet the novelty criteria provided it is filed within that grace period.
Filing requirements
According to Article 11 of Federal Law no. 11 of 2021 on Regulation and Protection of Industrial Property Rights, the applicant needs to submit the application in Arabic or English.
Nonetheless, if either version is unavailable at the time of filing, late filing is possible.
According to Article 11(9), the applicant has 90 days from receipt of the official notice to submit the missing documents.
In addition, the new law also grants the applicant post-filing amendments provided the changes fall within the scope of the original application.
Urgent patent applications
According to Article 14 of the new law, applicants can now request the UAE patent office to accelerate examination for “urgent applications.” Not only does this help the applicant to receive their patent sooner but it also opens up many opportunities for them, such as the participation of the Patent Prosecution Highway (PPH) program.
Change in the patent system to meet international standards
The patent system’s function is not to only grant the patent to the applicant, instead, it is also served as a giant database for the citizens, potential applicants, patentees, and other IP offices.
However, at the moment, the UAE’s patent system only displayed granted patents, not pending or denied applications.
Accordingly, this creates a giant drawback for the UAE’s applicants who want to submit their applications, not knowing that other similar applications have already been pending or denied. Consequently, they will waste a lot of time waiting for their applications to be denied or rejected – the information that they should have known or avoided from the beginning.
The current patent system of the UAE is contrary to most international patent systems which publish all patent applications 18 months after the first filing date. With this new law, it is still unclear whether or not pending applications will be published pre-grant but hopefully, further clarification of the Law will provide details on this issue.
On the other hand, another drawback of this system is that applications in the UAE are published only in Arabic in the Official Gazettes. Consequently, foreign parties who want to enter the UAE’s market and register their innovation will find it difficult when they are carrying out searches and analyzing their innovation’s patentability.
According to article 13 of the Law, if the conditions for patentability are met by the invention, the Ministry will publish the acceptance of the patent grant in the Official Gazette according to the Executive Regulations.
You can see a list of UAE IP firms here.