UAE Laws and Islamic Finance

Laws of the UAE and Islamic Finance

Archive for January 24, 2010

An International Patent Application Under The Patent Cooperation Treaty in the UAE

 

 

 

Federal Law No. 17 of 2002 on Regulating and Protecting Industrial Property for Patents, Designs, and Industrial Models[1] (the “Law”) was enacted to bring the UAE Industrial Property Law in line with (“TRIPS”) or the Trade Related Aspects of Industrial Property Rights[2] as part of the UAE’s obligations on becoming a member of the World Trade Organization[3] (“WTO”) on April 10, 1996. 

Under the Law, an applicant of a Patent Cooperation Treaty[4] (the “PCT”) member state may seek patent protection for an invention in all PCT[5] member countries at the same time by filing an international patent application.  The principle of national treatment applies and each member state must treat the PCT[6] patent as if a national patent application had been filed in the national patent office of the said state.  The PCT[7] was concluded on June 19, 1970, amended on September 28, 1979, and modified on February 3, 1984 and October 3, 2001.  It is open to state parties to the Paris Convention for the Protection of Industrial Property (1880).[8]  Instruments of ratification or accession must be deposited with the Director General of WIPO.[9]

The international patent application may be filed with the national patent office of the applicant’s home state of which the applicant is a national or resident or directly with the International Bureau of WIPO in Geneva.  In the case of the UAE, an international patent application can be filed with Industrial Property Department of the Ministry of Economy in Abu Dhabi (the “Department”).  The Department acts as the receiving office under the PCT.  Applicants are required to pay the application fees along with the annual fees for renewal of the application as of the year following the date on which the international patent application was filed.  If the fees are not paid within six months from the date of filing the application with the Department, the application shall be considered as abandoned. 

“If the applicant decides to continue with the international application with a view to obtaining national or regional patents, he or she can, in relation to most contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated Office by furnishing a translation where necessary of the application into the official language of that office, paying to it the necessary fees and acquiring the services of local patent agents.”[10] 

According to the Summary of the Patent Cooperation Treaty (PCT) (1970),[11] the procedure under the PCT has great advantages for the applicant, the patent offices, and the general public:

  • Applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, and to prepare the necessary translations and to pay the national fees;
  • Applicants can be rest assured that if their international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT contracting state patent office during the national phase of the processing of the application;
  • On the basis of the international search report and the written opinion, applicants can evaluate with reasonable probability the chances of their invention being patented; 
  • The international application is subjected to an international search.  The search is conducted by one of the major patent offices and culminates in an international search report which contains a listing of the citations of published documents which might affect the patentability of the invention claimed in the international application.  Furthermore, a written opinion on whether or not the invention appears to meet the patentability criteria in light of the search report is also issued.
  • Applicants have the possibility during the optional international preliminary examination to amend the international application and thus put it in order before processing by the various patent offices;
  • The search and examination of patent offices can be considerably reduced or eliminated thanks to the international search report, the written opinion, and where applicable, the international preliminary report on patentability which are communicated to the national and regional offices together with the international application.
  • Since each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and
  • For applicants, international publication puts the world on notice of their applications, which can be an effective means of advertising and looking for potential licensees.

 


[1] UAE Federal Law No. 17 of 2002 on Regulating and Protecting Industrial Property for Patents, Designs, and Industrial Models.

[2] Trade Related Aspects of Industrial Property Rights, Geneva, (January 1, 1995).

[3] World Trade Organization, Geneva, (January 1, 1995).

[4] Patent Cooperation Treaty, Washington D.C., (June 19, 1970).

[5] Ibid.

[6] Ibid.

[7] Ibid.

[8] Paris Convention for the Protection of Industrial Property, Paris, (March 20, 1880).

[9] World Intellectual Property Organization (WIPO) Geneva, (1967).

[10] http://www.wipo.int/treaties/en/registration/pct/summary_pct.html

[11] Ibid.

UAE Laws and Islamic Finance

Laws of the UAE and Islamic Finance