Understanding Patent Infringement: A Simplified Guide

January 28, 2024by Saniya Mariam Thomas0

Patent infringement is a criminal offense that invites penalties including fines, imprisonment and confiscation. Fines range from AED 100,000 to AED 1,000,000. Additionally, the court may issue orders for confiscation, destruction, or removal of infringing items and equipment.  

The patent system stands as a powerful driver of human progress, empowering inventors with protection and recognition for their ingenious and innovative creations. With the privilege of exclusive intellectual property rights, patents grant inventors a limited monopoly over their novel and practical ideas for up to 20 years. This legal grant allows inventors and their authorized licensees to fully exploit and commercialize their inventions within the specified territory. 

By incentivizing investment in research and development, patents create an environment where risk-taking and innovation thrive. Moreover, patents foster knowledge-sharing and progress, as the public disclosure of patent applications and granted patents ensures that valuable technological insights are available for future development and collective growth in technologies and industries. In the UAE and beyond, the patent system serves as a crucial catalyst for nurturing innovation, protecting inventors’ rights, and paving the way for a future characterized by continuous progress and technological excellence. 

The Purpose of Patents and Their Impact on Innovation 

The core purpose of granting patents is to encourage investment in innovation and foster advancements in society through intellectual and inventive progress. By offering inventors a protected period to recover their research and development investments, patents provide the incentive needed to drive innovation. To benefit society as a whole, patent applications and granted patents are made public, sharing valuable technological knowledge with the world. 

Patents in the UAE 

In the United Arab Emirates (UAE), patents can be obtained either through the UAE Patent Office or a regional Gulf Cooperation Council (GCC) patent, covering all six GCC countries. As of January 6, 2021, the GCC Patent Office stopped accepting new patent applications for the UAE. However, existing GCC patents and pending applications may still have effect in the UAE. 

Rights of a Patent Holder 

Article 19 of Federal Law No. 11/2021 outlines the rights of a patentee in the UAE. A patent provides the holder the right to utilize and exploit the invention for commercial or industrial purposes, including activities like use, sale, offering for sale, and import. The scope of protection is defined by the claims specified in the granted patent. For determining infringement, the claims in Arabic language, as granted and valid in the UAE, are considered authoritative. The description and drawings in the patent are crucial in interpreting the scope of claims accurately, highlighting the importance of accurate translations of patent specifications to avoid disputes. 

Understanding Patent Infringement 

Patent infringement occurs when a third party undertakes an act reserved exclusively for the patent holder under Article 19 of Federal Law No. 11/2021 without the right to do so. To constitute infringement, the product or method used must incorporate all the elements described in at least one claim of the patent. The infringing party’s awareness of the patent’s existence is irrelevant to determining penalties or damages. 

Patent infringement claims cannot be asserted in the UAE until the patent has been granted. To protect their rights, patent applicants and holders often take steps to inform potential infringers of their pending patent applications. Common approaches include marking products as “patent pending” or mentioning the UAE Patent No. XXXX and sending warning letters to potential infringers. 

Penalties and Remedies for Patent Infringement 

Patent infringement is a criminal offense in the UAE, and a complaint can be filed with the police. Penalties may include fines ranging from AED 100,000 to AED 1,000,000, as well as imprisonment. Additionally, the court may issue orders for confiscation, destruction, or removal of infringing items and equipment used in the infringement. Federal Law No. 11/2021 addresses the absence of specific provisions relating to civil remedies, providing patent holders the right to claim damages and compensation for infringement. 

Challenges in Patent Infringement Cases 

Obtaining a copy of the granted claims of a patent in Arabic from the UAE Patent Office was historically difficult, making it challenging to determine infringement. However, recent developments, such as the availability of patent specifications and claims through the UAE online Patent Portal, show efforts to improve accessibility to patent information. 

Moreover, the limited number of patent infringement cases in UAE courts has led to a lack of practical experience in interpreting claims and assessing infringement. Courts may appoint experts with varying levels of expertise, potentially leading to challenges in resolving patent infringement disputes effectively. 

One particular challenge lies in establishing infringement for a method of manufacture. International treaties recognize this difficulty and provide for a reversal of the burden of proof, requiring the alleged infringer to demonstrate that their products do not result from the use of the patented process. Though this principle is not explicitly stated in Federal Law No. 11/2021, the law is bound by international agreements, making it likely that this principle still applies in the UAE. 

Defenses and Non-Infringing Uses 

Various defenses exist to protect individuals or entities from being accused of patent infringement, such as: 

  1. Prior User: A person who was using the invention in the UAE before the earliest priority date of the patent application can continue their acts without infringing on the patent. 
  2. Research: The use of patented subject matter for scientific research purposes is not considered infringement. 
  3. Temporary Introduction: The non-permanent introduction of a product covered by a UAE patent into the UAE, solely for transport purposes, is not an infringement. 
  4. Invalidity: An alleged infringer can file a countersuit challenging the validity of the patent as granted. 
  5. Exhaustion of Rights: The patentee’s rights to the invention are limited to the activities practiced for industrial or commercial purposes and do not extend to the product’s subsequent use after being sold. 

GCC Patents and Enforcement in the UAE 

While GCC patents have technical validity in the UAE and can be enforced, a recent court decision has raised doubts about the enforceability of such patents. As the UAE has not issued specific implementing regulations relating to GCC patents, their enforceability may be uncertain. 

 Understanding patent infringement is crucial for both inventors seeking protection and potential infringers aiming to avoid legal disputes. Patents play a vital role in fostering innovation and rewarding inventors for their contributions to society. In the UAE, patent protection provides inventors with the security and motivation to push the boundaries of technology and drive progress across various industries. As the UAE continues to evolve its patent system, addressing challenges in patent infringement cases and ensuring efficient enforcement of patent rights will be essential in creating a robust intellectual property landscape that nurtures innovation and technological advancement. 

Disclaimer

The opinions expressed in this blog are those of the respective authors. ATB Legal does not endorse these opinions. While we make every effort to ensure the factual accuracy of the information provided in our blogs, inaccuracies may occur due to changes in the legislative landscape or human errors. It is important to note that ATB Legal does not assume any responsibility for actions taken based on the information presented in these blogs. We strongly recommend verifying information from official sources and consulting with professional advisors to ensure its accuracy and relevance to your specific circumstances.

About ATB Legal

ATB Legal is a full-service legal consultancy in the UAE providing services in dispute resolution (DIFC Courts, ADGM Courts, mainland litigation management and Arbitrations), corporate and commercial matters, IP, business set up and UAE taxation. We also have a personal law department providing advice on marriage, divorce and wills & estate planning for expats.

Please feel free to reach out to us at office@atblegal.com for a non-obligatory initial consultation.

by Saniya Mariam Thomas

Saniya is a legal consultant at ATB Legal. She is a law graduate from Calicut University, earned her master’s from Christ University, Bangalore, and is enrolled with the Bar Council of Kerala. She has earned several prizes in national and international moot court competitions.

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