1.     Introduction

The Gulf Co-operation Council (‘GCC’) is made up of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates. The GCC states co- operate on many economic, legislative and security matters. The goal is to achieve a common market and monetary union.

2.     Patents within the GCC

i) GCC Patent Regulation

In 1992, the GCC approved a patent regulation that established a unitary patent right covering all GCC countries. The GCC Patent Office was established in 1992 in Riyadh, Saudi Arabia and started accepting applications in 1998. The GCC Patent regulations were amended in 2000, notably adding in a novelty requirement for patentability.

The law is broadly TRIPs compliant. One feature that can be seen as unique is the requirement that, in addition to the normal requirements of novelty, inventive step and industrial applicability, inventions must also not be in conflict with Shari’ah law.

The decision of the GCC Patent Office to grant a GCC patent is published in the GCC patent gazette. Any interested person may file before the GCC Patent Grievances Committee an action for invalidation within three months of such publication. There are at least four decisions of the Patent Grievances Committee in which it decided that it has no jurisdiction to review any action of invalidation of a GCC patent after three months from the date of publication of the decision of grant in the patent gazette. Under a proposed amendment to the Saudi Patent Law, the Saudi Patent Disputes Committee would be abolished and jurisdiction to hear patent-related proceedings in the first instance will shift, likely to the Courts. It remains to be seen, if this amendment is passed, what impact this will have on the GCC patent legislation and procedure.

The decisions of GCC Patent Grievances Committee are subject to appeal before the competent authority in the hosting state, Saudi Arabia. Therefore, appeals are filed to the Administrative Court in Riyadh.

ii) Protection Routes in GCC

Table 1 summarises the routes an applicant may take to secure patent protection within the GCC block of countries.

Table 1: Patents in GCC: Routes to Protection 

iii) Translation

The language for filing and prosecution in all countries in the GCC is Arabic. Translation can pose challenges and it is strongly recommended that at least the claims are reviewed by an experienced patent practitioner with fluency in the language to minimise issues with enforcing a patent in the future.

iv) Professional Practice

The patent agent/attorney profession is not regulated by a professional body in the GCC. Whilst individual national patent offices will grant licences to firms to act before them, there is no requirement to have a separate qualification of being a ‘patent attorney’. This has resulted in some difficulties for applicants who have instructed firms with poor understanding of patent law and practice. To date, the UAE Patent Office has been sympathetic to applicants where their rights have been significantly prejudiced through agent errors. However, there is no guarantee that they will continue to exercise their discretion in this manner.

The lack of a robust professional regulating body in the region does hamper the development of patent practice.

3.     Revocation and Infringement

a) General

Litigation in relation to patents has been relatively limited. This is due to a number of factors:

• • Patent systems are relatively new to the region and only small numbers have been granted as yet.
  • It is difficult to obtain information and therefore difficult to understand how the judiciary are treating general principles of patent law – Court decisions are rarely published, and when they are, only the highest level decisions are published.
  • There is a lack of specialist judges and experts in the region to hear such In 2017, we reported two developments in this area. The Federal Court of the UAE established a new specialist IP division to hear IP related cases. The judges in this division were to receive additional training on IP rights and law. This division has commenced hearing cases and is moving cases very quickly. Much of the process is conducted with the Case Management Office and only once the parties have completed all their submissions of arguments and evidence does the matter go before a judge. Contrary to this was a potential step backwards in Saudi Arabia, where proposed amendments to the Patent Law would disband the specialist Patent Committee in favour of cases being sent to the criminal division of the Board of Grievances (despite being civil cases). This amendment has yet to be passed as of the time of writing.

There continues to be some reluctance in industry to access the patent systems in the region, believing that the costs of securing a patent will not result in an easily enforceable right. This has been reinforced by a recent decision of a court in the UAE to refuse to enforce a GCC patent on the grounds that the necessary regulations to do so had not been issued locally.

Saudi Arabia has seen the most patent litigation, having the longest established patent system and being the largest market in the GCC. In addition, it deals with revocation of GCC patents.

b) Revocation

Revocation of a GCC patent is a complicated issue. This is due to the fact that it is not an easy task to determine the exact forum before which the action has to be filed. The difficulty is attributed to the following facts:

• • there is an apparent gap in the GCC Patent Law in relation to the issue of invalidation of a GCC patent;
  • the jurisdiction of the Patent Committee is limited to review of the decisions of the GCC Patent Office within three months from the date of notification or publication of relevant decision; and
  • the issue of enforceability of the GCC patents is left to each state

c) Infringement

Infringement proceedings may only be commenced after the grant of a patent and should be commenced in the country where the infringement occurs.

With respect to GCC patents, if a defence of invalidity is claimed, then the revocation proceedings should be brought in Saudi Arabia. Invalidity of a GCC patent as a defence against infringement action is legally justifiable and acceptable, because the Saudi Patent Committee has statutory jurisdiction to review the action of infringement of a GCC patent. This is supported by case law: Decision of Committee No. 52/1432 H. Lundbeck AS v. SPIMACO. The decision stated:

A. The Saudi Patent Committee has jurisdiction to enforce GCC patents in Saudi Arabia and the legal means of enforcement is the action of infringement. Invalidity is an acceptable defence to such an infringement action.

B. Invalidity is an acceptable defence to such an infringement.

Therefore, if the infringement proceedings are commenced in another GCC country, the Court may use its discretion to stay the infringement proceedings pending the outcome of the revocation proceedings. The potential delay that this may cause in having infringement issues considered, in a region where interim injunctions are difficult to obtain, is potentially frustrating to patentees.

With respect to UAE national patents, the infringement proceedings should be filed in the Emirate where the infringement is occurring. Again, there is potential for conflict of jurisdiction between Emirate-level courts hearing infringement cases, and Federal Courts who would have jurisdiction over any corresponding revocation proceedings.

d) Emerging Jurisprudence in Saudi Arabia

As noted above, of the GCC countries, Saudi Arabia has seen perhaps the most patent-related litigation. Most of the patent litigation cases are related to either the pharmaceutical area or petrochemical area.

No plaintiff, to our knowledge, has ever been awarded damages in a patent infringement lawsuit in Saudi Arabia. The Court may resort to a variety of methods in calculating patent damages, including lost profits and reasonable royalties. However, because Shari’ah law requires a very strong causal relationship between cause and effect in damage calculations, damages are very difficult to prove and even in the event of successful patent litigation, such damage awards are likely to be quite small.

Injunctions are statutorily available under Saudi Law; however, no court or administrative body in Saudi Arabia has ever granted a Plaintiff’s request for an injunction.

The proposed changes to Saudi Arabia’s Patent Law outlined above, may reduce the efficacy of litigation in relation to patents in the short term. The GCC patent system is relatively new and evolving. There are few precedent cases.

4.     Proposals for Amendment of GCC Patent Law

According to the General Director of the GCC Patent Office, it is necessary to:

• • update the law generally as it is the oldest in comparison to the national patent laws of the Council States;
  • provide protection for Utility Models;
  • ensure compliance with some of the provisions of the international agreements of PLT and PCT – this may be more likely since Kuwait has now acceded to the PCT;
  • benefit from the developmental aspects provided by the TRIPS Agreement as affirmed by Doha Declaration on the TRIPS Agreement and public health; and
  • tackle aspects not contained in the current law (publication of applications, invalidation, national treatment and the like).

5.     Technology Development in the GCC

Many of the GCC governments are now expressly emphasising and putting in place programmes to encourage the development of technology-based economies. Part of this drive comes from the desire to move away from traditional economic reliance on oil and gas.

Saudi Arabia, the United Arab Emirates and Qatar are three of the most active in this drive for technological innovation and Qatar has embarked upon a recent legislative agenda to strengthen its IP regime in approving new laws on designs and in relation to copyright. Approaches have included funding for university research, encouraging private sector funding of research, subsidising the filing of patent applications, and establishment of technology- targeted free zones. Some examples of free zones that have been established to target particular technology based and innovative industries include:

• • Masdar City – a carbon neutral city focused on renewable and alternative energy;
  • Dubai Science;
  • Dubai Silicon Oasis – IT-related componentry and technologies.

These initiatives have had varying degrees of success and many are starting to gain traction now.  However, it is clear that many businesses that would consider investing are still wary of weaknesses in the patent (and IP) systems in the region – prosecution delays, prosecution expense (particularly the need for Arabic translations and notarisation and legalisation of documents), lack of specialist courts, judges and experts, and protection of trade secrets and confidential information. For the GCC countries to truly benefit from investment in turning their economies into being technology-based, these issues will need to continue to be addressed.

This is an extract from the International Comparative Legal Guide for Patents 2018.

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