Introduction to the New Patent Law

The United Arab Emirates (UAE) recognizes the importance of intellectual property rights in driving innovation and economic development. To align its practices with global standards and address challenges in patent and industrial design procedures, the UAE’s Ministry of Economy has recently implemented a new patent law. The new Federal Law No. 11 of 2021 replaced the previous Federal Law No. 17 of 2002 and marks a significant milestone in intellectual property protection within the UAE. This comprehensive legislation introduces significant changes to the registration processes for patents, industrial designs, integrated designs, undisclosed information, and utility certificates.

This article provides an analysis of the new patent law, highlighting major amendments and key differences from the previous law and these are mentioned below:

1. Patentability Criteria

Article 5 of the new Patent law, outlines the essential conditions for patent eligibility. It emphasizes that an invention must be novel, arising from either an innovative idea or an innovative improvement, modification, or addition to a previously patented invention, while also being capable of industrial application, meaning it can be manufactured or utilized in any field. The law no longer uses the term ‘letters patent’ and provides a clear definition for the concept of an ‘inventive step.’ Accordingly, an invention is considered to involve an inventive step if it is not obvious or “axiomatic” to an ordinary skilled person based on the existing state of the art. This aligns with international norms, as an invention generally requires an inventive step if it is non-obvious to a person skilled in the relevant field.

2. Extension of Grace period

To register a patent, the invention must fulfill the criterion of novelty, which entails being new and not publicly disclosed prior to the patent application. However, the patent laws of certain countries, provide exceptions known as a grace period, allowing for disclosures within a specified timeframe before filing. The new patent law extends this grace period for public disclosures from 6 months to 12 months. Previously, the 6-month grace period only covered publications in national exhibitions. Under the new law, any national or international disclosure, including exhibition displays and articles, can be exempted if it falls within the 12-month grace period.

3. Simplified Formalities and Post-Filing Amendments

The registration of a patent requires the applicant to specify their desired protection through patent claims. Previously, strict formalities were imposed, necessitating the submission of claims during the filing process. In the event of errors, applicants received no clear guidance on rectifying them.

However, the new law has simplified the formality procedure. Claims are no longer required at the time of filing, but it can be filed within 90 days from the date of the application, allowing applicants more time to determine the scope of their invention. Furthermore, Article 26 of the new law permits amendments to be made to the application after filing, as long as the modifications remain within the boundaries of the original application.

4. Publication of Pending Patent Application

Previously, patent applications were only published after registration, leaving no opportunity for the public to access or evaluate them before approval. However, under the new law, pending patent applications are now published 18 months after filing. This early publication aims to promote public awareness and facilitate better examination of the applications.

5. Divisional Applications and Conversion of Applications

In certain countries, when a patent application contains multiple inventions, applicants can choose to divide the application into separate applications, each focusing on a single invention. These divided applications are known as divisional applications. Previously, divisional applications were accepted based on the Paris Convention, as there were no explicit provisions for them in the old patent law. However, the new patent law now explicitly permits divisional applications for patents, utility models, and industrial designs while the original application is still pending. Additionally, the new law allows for the conversion of an application from a patent to a utility model, or vice versa, while the application is still pending. This provides flexibility for applicants to switch between a patent application and a utility model application even after filing. If a conversion application is submitted, the original application will be automatically withdrawn.

6. Introduction of Post Grant Re-Examination

Previously, objecting to the grant of a patent in the UAE required direct submission to the Appellate Committee, resulting in a costly, time-consuming, and challenging opposition procedure. Moreover, there were limited opportunities for additional technical review by experts. However, the new patent law has introduced post-grant re-examination and opposition, making the process faster and more cost-effective. Under the updated system, a group of at least three examiners conducts the re-examination when a person opposes a patent application. This shift allows for easier administration through e-services and enables the review to be conducted by senior examiners possessing technical and legal expertise.

7. Revisions to Address Minor Errors in Patent Applications

Under the previous regulations, any minor errors found in a patent application necessitated a re-examination process for correction. This resulted in increased costs and a longer time frame for obtaining a patent registration. However, the latest legal amendments have brought about a significant change in this procedure. Now, in the event of minor errors in a patent application, applicants have the option to rectify these defects following the instructions provided by the examiner. This streamlined approach makes the overall registration process more cost-effective and time-efficient.

8. Express Examination

Under the new UAE patent law, the introduction of express examination addresses a gap that was absent in the earlier legislation, resulting in a more efficient registration process. Applicants now have the option for their initial examination to be conducted within a shorter timeframe of 6 months, upon payment of specific fees (AED 7000). This enhancement significantly reduces the time required for the registration process, offering expedited services to applicants.

9. Subject Matter Exclusions

The new patent law essentially mirrors the exclusions present in the previous legislation but incorporates certain additional elements. In accordance with the old patent law, patentability was denied to plant varieties, animal species, and the biological methods employed for their creation. However, the new law broadens this scope by encompassing research activities involving plant or animal species. Furthermore, while the old Patent Law did not address computer-implemented inventions, the new Law explicitly excludes “software” from being eligible for patents under Article 7(d).

10. Filing Priority Applications

The new patent law provides the opportunity to assert priority based on prior applications submitted in a different state that is a party to a relevant convention or treaty, such as the Paris Convention. The duration of the priority term is set at twelve (12) months from the date of the initial filing for patents and 6 months for designs.

11. Patent Term and Annuity

Under the new regime, patents are valid for a duration of 20 years, while utility certificates have a validity period of 10 years, both starting from the date of application submission. Regarding annuity payment, the grace period has been extended to 12 months after lapse, providing applicants with additional time for payment. The protection period for industrial designs has been extended from 10 to 20 years. Furthermore, the new law introduces a 10-year protection period for integrated circuit layout designs.

12. Final Rejection After Second Re-examination

In the past, the law lacked any specific provisions for final rejection of patent applications, resulting in instances where there were unlimited re-examinations. However, the recent legal amendments have addressed this issue directly. The new law explicitly states that after the second re-examination, the examiner can make a final rejection if they believe the applicant has had sufficient opportunities to rectify any deficiencies. This inclusion aims to decrease the number of applications lingering in a prolonged state and provide both applicants and third parties with legal certainty.

13. Post-Grant Amendments Allowed For Claims

The new patent law now permits post-grant amendments for claims, marking a significant change from the previous law. Previously, once a patent was granted, the holder was unable to make any amendments to it.

14. Renewal of Agent Registration

Under the previous law, agent registration renewal was required annually. However, the new law has extended the renewal period to once every three years.

15. Format of Drawings

The introduction of the new law brings explicit provisions regarding the method of claims drafting, the format of drawings, and the order of formality amendments made by the examiner. These provisions aim to provide clarity on these subjects, which were previously unclear under the old law.

The recent implementation of the new patent law in the UAE has ushered in significant and ground breaking transformations, all geared towards stimulating the growth of patent applications within the country. Numerous provisions pertaining to procedural aspects that were previously ambiguous under the old patent law have now been clarified and expounded upon. As a result, the overall impact of the new patent law is poised to be highly favorable, introducing a greater degree of flexibility, cost-effectiveness, and time savings in the process of obtaining patent registration in the UAE.

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