Introduction
Impact on patent filing strategies
Saudi Arabia recently completed the process for acceding to the Patent Cooperation Treaty (PCT), which will come into force with respect to Saudi Arabia on August 3 2013.
At the same time, Saudi Arabia also acceded to the Patent Law Treaty (PLT), which will come into force in Saudi Arabia on the same date.
Saudi Arabia will join Bahrain, Oman, Qatar and the United Arab Emirates - all Gulf Cooperation Council (GCC) states - as members of the PCT, with Kuwait now the only GCC state that is not yet a member. Bahrain and Oman are also members of the PLT alongside Saudi Arabia.
Impact on patent filing strategies
Impact in Saudi Arabia
As the largest economy in the GCC bloc (in terms of both population and gross domestic product), Saudi Arabia is often a key focus for those seeking to establish patent rights in the region.
Now that Saudi Arabia will feature on the PCT designated countries list, patent filers are likely to opt for the extended period in which to enter the costly national filing phase. As a result, the number of direct patent filings to Saudi Arabia is expected to increase.
Furthermore, the Saudi Arabia Patent Office has been undertaking a review of its internal processes concurrently with its accession to the two treaties. This review has been extensive and time consuming (the legislative framework necessary for acceding to the two treaties was implemented in December 2009 through Royal Decree M/63, but it has taken three years for Saudi Arabia to be in a position to complete the accession process). The results of this review have been positive, including the implementation of an electronic filing system that should make the patent process in Saudi Arabia significantly more efficient.
Impact in GCC
Historically, many rights owners have sought to obtain protection for their technology in Saudi Arabia by filing for patents with the GCC Patent Office. Ostensibly, a GCC patent provides rights across all six GCC member states, including Saudi Arabia.
The GCC Patent Law and accompanying regulations were introduced in 1992, with the GCC Patent Office becoming operational in 1998. The law operates on the premise that patents granted by the office apply in all GCC states, with enforcement of GCC patents being the responsibility of each individual state.
Although Saudi Arabia has implemented legislation ratifying the GCC Patent Law, this legislation stops short of providing any more detail as to how patents granted by the GCC Patent Office take effect in Saudi Arabia. In contrast to the system envisaged by the GCC Patent Law, the ratifying legislation in Saudi Arabia does not deal with the enforcement of GCC patents. As a result, there is no clear regime for enforcing patents granted by the GCC Patent Office in Saudi Arabia.
The GCC patent system also operates outside the PCT and filings are accepted in accordance with a 12-month priority period provided for under the GCC Patent Law.
Accordingly, with a more favourable priority period being available through the PCT, and with a question mark over the enforcement of GCC patents, it is expected that rights owners will look increasingly towards filing patent applications in Saudi Arabia and other GCC states directly, rather than using the GCC patent system.
For further information on this topic please contact Rob Deans at Clyde & Co by telephone (+971 4 331 1102), fax (+971 4 331 9920) or email ([email protected]).
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