On March 14, 2022, Gazette No. 723/52 published the Cabinet of Ministers Resolution No. (6) of 2022 regarding the Executive Regulations of Federal Law No. (11) of 2021 regarding the Regulation and Protection of Industrial Property Rights. This resolution will take effect on June 12, 2022.
The 82 articles that make up the Executive Regulations (hence referred to as the “ER”) are divided into eight general provisions (Articles 1 through 8, 79–82). From Article 9 to Article 56, patents are covered. From Article 57 to Article 65, industrial designs are included. From Article 66 to Article 70, undisclosed knowledge is covered. From Article 72 to Article 78, registration agents are covered.
The regulation will strengthen the position of the UAE as a destination for innovators and invention owners in various fields, particularly in the sectors of technology, new economy, research, and development. It will also contribute to the provision of an integrated legislative environment that stimulates innovation and increases the registration of patent applications in the nation.
The Regulation also establishes the legal framework for organizations and people to present their most recent concepts and developments. This rule clarifies a number of processes, criteria, requirements, and disciplines related to applications for industrial property. The application’s progression through the numerous roles and stages, from the application stage to the registering of the industrial property right, as well as its ensuing rights, privileges, and objections, is further illustrated. This is in line with the industry’s best practices on a global scale, particularly in regards to integrated circuits, utility certificates, patents, industrial projects, and the safeguarding of confidential information.
The Executive Regulation also takes into account important clauses stipulated in international agreements pertaining to industrial property rights, ensuring the quickness, adaptability, and effectiveness of the examination and registration of industrial property applications and protecting inventors. For businesses, SMEs, startups, academic institutions, as well as facilities and corporations, including departments for research, development, and innovation, and multinational companies, it also provides additional flexibility and concessions for patents and industrial property. By registering patents for its operations, all of which are positioned to profit significantly from the industrial property services provided by the Ministry of Economy.
The rules also specify how new inventions must share their expertise with academic institutions, SMEs, and startups in the nation as well as with the private sector for research and development. The ministry was able to use these regulations to shorten the time span from 42 months to six months by defining the timeframe during which patent examination results would be made public.
In accordance with international standards, the laws also specify the controls for drafting protection claims and the mechanisms for formal and substantive examinations, as well as the documentation linked to applications for industrial property rights. They also outline the requirements and data of the industrial property rights registry, as well as the requirements and procedures related to correcting and amending industrial property rights applications. They also define the technical and legal bases in calculating the principle of priority submission for the same invention. Additionally, the regulations make clear a number of issues pertaining to the international application under the Patent Cooperation Treaty, managed by the World Intellectual Property Organization (WIPO), as well as the methods used to determine the industrial property rights’ annual fees, the extent of their protection, their transferability, and other related aspects.
The executive rules outline the additional rights and processes that the new Industrial Property Law introduces in a number of categories of industrial property rights that weren’t included in earlier legislation. One of these is the preservation of integrated circuit layout designs, which is crucial for encouraging and protecting electronic inventions and advances and for advancing the nation’s technological development. Additionally, protecting confidential information promotes research and development in the commercial and industrial sectors.
A number of clauses regarding urgent requests are also included in the executive regulations, which convert patent applications into requests for benefit certificates and vice versa. They offer the option to divide patent, benefit certification, and industrial design applications into several applications, making it easier to secure different stages of their progress and manage the procedures for reclaiming applications and handling complaints about application outcomes.
Between 2020 and 2021, the number of patent and benefit certificate applications filed to the ministry increased by 26.7%. On the other hand, compared to the same period in 2021, the growth rate of applications was 17.8% in the first quarter of 2022. These applications mostly included the areas of transportation, building, and mining, power, textiles, and paper, among other crucial industries.
Notable changes
- First-to-file patent system
The first-to-file system, rather than the first-to-invent system, is provided by Article 18 of the ER.
- Patent Publication
According to Article 32 of the ER, unless the invention relates to the Security and Military Industries, the Ministry may publish the patent application and related information in whole or in part to disclose the application to the public after (18) eighteen months, or at the applicant’s request, even before the expiration of this period. Before, there was no mechanism for publishing patent applications, but it has lately been implemented in accordance with the ER.
Since an industrial design may not be published before being registered, unless the applicant specifically requests it, Article 32 does not apply to the publication of an industrial design application. Additionally, because the schematic design of an integrated circuit is not permitted to be disclosed, the aforementioned article does not apply to it.
- Grace period
If an invention is disclosed by the inventor or by a third party who obtained the information directly or indirectly from the inventor prior to filing the patent application within 12 months, it may still be submitted and satisfy the novelty requirement, according to Articles 5(4) of the Law and 17 of the ER. Unlike the previous law, which demanded complete innovation.
As provided in the ER, the inventor may request from the Ministry to exclude this disclosed invention from previous industrial techniques and shall submit a copy of the disclosed invention within 12 months prior to the filing date.
The exception set forth in Article 17(2) of the ER states that if the invention has been disclosed in the Industrial Property Gazette, any regional foreign patent authority, or the World Intellectual Property Organization, the applicant is not permitted to submit the application in accordance with the above articles.
- Accelerated examination
According to Articles 14 of the Law and 38 of the ER, the Ministry may, at the request of the applicants or on its own initiative, expedite the examination of an urgent or utility certificate application before others, regardless of the dates for filling out the application or the date for the examination request.
The applicant must submit a written application to the ministry for this purpose together with the requisite fees using the online portal; no supporting documentation is needed. In contrast to the previous law, which did not offer such a possibility. The Ministry stated that this new possibility would be contingent on having enough examiners available. We think that extra information might be offered in addition to the stated costs when the new service of rapid examination is represented on the online site.
You can see a list of UAE IP firms here.