WHERE THE WORLD IS FULL OF INTELLIGENCE AND CREATIVITY – THERE IS AN AMPLE NEED FOR INTELLECTUAL PROPERTY PROTECTION.

PATENT

A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years. Under the World Trade Organization’s (WTO) TRIPS Agreement, patents should be available in WTO member states for any invention, in all fields of technology, provided they are new, involve an inventive step, and are capable of industrial application.

The applications made for the Patent registration must meet the requirements, such as novelty, usefulness, and non-obviousness. Patents have a state monopoly, i.e., the application is made on a country-to-country basis.

Federal Law No. 31 of 2006 pertaining to the “Industrial Regulation And Protection Of Patents, Industrial Drawings, And Designs” protects Invention, Know-how, Industrial drawings, and designs. As per Article 4 of the Law, “A letters patent shall be awarded to any new invention resulting from an innovative idea or inventive step in all fields of technology, provided that such an idea or inventive step has a scientific basis and is capable of industrial application. The invention shall be deemed industrially applicable in its broadest term is used or utilised in such fields as agriculture, fisheries, handicrafts, and services.”

Has UAE signed any international treaty for the protection of Patents?

Yes, UAE has signed many international treaties for the protection of copyright work. Some of the treaties signed are:

• Patent Cooperation Treaty (PCT), (10 March 1999)
• World Intellectual Property Organization (WIPO) Convention, (September 24, 1974)
• The Paris Convention (September 19, 1996)
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (April 10, 1996)
• The Gulf Cooperation Council (GCC).

Process of registering a Patent:

• Application for Patent registration – Once all the documents are collected and compiled, including but not limited to, the application form, passport copy or the trade license of the Inventor, deed of assignment, Power of Attorney, subject matter of the Patent, and document of priority (if any), then the documents are submitted within 90 days from the date of filing the application.
• Examination of the application – After all the documents are submitted, the authorities at the Patent department in the Ministry of Economy examines the veracity and accuracy of the documents. Currently, due to the agreement between UAE and Korean Intellectual property office (KIPO), the examination is done at a comparatively faster pace than the previous year. It takes usually 1 to 2 years for examining a patent application.
• Publication in newspaper and in official gazette – Once all the documents are examined, the next step is to publish the Patent in the official gazette of the department. The publication is done for 60 days. This is in order to enable all the commercial entities registered in the UAE to file an objection if they feel any similarities in their registered patent and that of the new application.
• Receiving Initial Approval – Within 90 days from the date of publication, if there is no objection raised against the Patent application then the Patent department issues initial approval, commonly known as “Letters Patent”, or, “Utility Certificate”.
• Receiving Final Certificate of registration – After the Initial approval is granted, it usually takes 4 to 5 years before the final certificate of Patent registration is granted

What happens when there is an objection filed within 60 days of the publication?

If an objection is filed within 60 days of publication, an application can be made for re-examination supported with justifiable reasons.

What is the time-period of Patent protection?

Once registered, Patent protection is available for a limited period of 20 years from the date of filing. However, an annuity fee is paid annually from filing such an application.

Are there any criteria available for registration of patent on an international level?

A patent application can be filed on a national level or an international level. Applications can also be filed at the GCC Patent Office, which gives valid protection in all six GCC countries. A separate application is filed within 12 months of filing an application in the home country for all other countries. The applicant can also take the PCT route, which is valid in all the 150 member states.

Trade Secrets & Rights against the unfair competition:

Trade Secrets are generally termed “Confidential Information,” which is not generally known to the public, such as clientele, a particular practice, formula, process, method, or information. To be covered under the domain of trade secret, the three basic elements must be present, which are:

• Not generally known to the public.
• Economic benefits are derived from such information.
• The owner took reasonable efforts to make such information as secret.

The Law for Trade secrets is provided under Federal Law No. 31 of 2006 under the “Know-how” section. Article 39 says that “Without violating the rights that the patent or the utility certificate authorises, the know-how has the benefit of protection from any illegal usage or disclosure or announcement from third parties, as long as it hadn’t been published or put at the public disposal, and having the benefit of protection stipulates that the owner of the know-how had adopted the necessary measures for maintaining the secrecy of its elements by the manner the bylaws indicate for such act.

Article 40 provides that “Any party having duly acquired, on his own or through legal means, a scientific knowledge shall have the right to use such a knowledge or convey it to other parties, even though third parties may have acquired the same knowledge.

Moreover, the UAE Civil Code provides additional clauses for protecting secret information. Article 905 puts the liability on the part of the employee to keep the trade secrets of the employer, and, Article 922 provides a liability on the part of the employee, that the breach of a trade secret can even be entertained in the court after the expiry of the limitation period of 1 year.

Unfair competition: Federal Law No. (4) of 2012 provides for unfair competition.

Article 3 provides that the provisions of the Law shall apply to the economic activities carried out by the Organisations in the UAE and to the exploitation of intellectual property rights inside and abroad in the UAE. This Law shall also apply to the economic activities practiced abroad in the UAE and affect competition in the UAE. The objective of the Law is to protect and promote competition and anti-monopoly practices.

There are 3 categories of unfair competition, which includes:

• Acts causing confusion
• Acts are misleading.
• Acts damaging goodwill or reputation

Method of protecting trade secrets:

• By registering the trade secrets in the form of copyright and in the same manner as provided in the copyright section.
• Through executing NDA, non-compete agreements with the employees and the stakeholders.

Geographical Indications:

A geographical indication (GI) is a name or sign used on products that correspond to a specific geographical location or origin (e.g., a town, region, or country). Using a geographical indication as a source may certify that the product possesses certain qualities, is made according to traditional methods, or enjoys a particular reputation due to its geographical origin.

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) defines “geographical indications” as indications that identify a good as “originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographic origin.”

In 1994, when negotiations on the WTO TRIPS were concluded, governments of all WTO member countries (164 countries, as of August 2016) had agreed to set specific basic standards for the protection of GIs in all member countries. UAE became a permanent member of the WTO on April 10, 1996.

Article 22 of the TRIPS Agreement says that all governments must provide legal opportunities in their laws for the owner of a GI registered in that country to prevent the use of marks that mislead the public about the geographical origin of the good. This includes the prevention of using a geographical name that, although true, “falsely represents” that the product comes from somewhere else.

It also says that governments may refuse to register a trademark or invalidate an existing trademark (if their legislation permits or at the request of another government) if it misleads the public about the true origin of a good. Article 23 says governments may refuse to register or may invalidate a trademark that conflicts with a wine or spirits GI whether the trademark misleads or not.

Protection of Geographical Indications can be done by trademark registration at the Trademark Department of Ministry of Economic in the same manner as provided in the Trademark section. The scope of protection covers agricultural, natural, industrial, and handicraft products

More comprehensive research and study are currently being carried out on the above subject-matter and therefore, the page is subject to additions and amendments. For more inquiries or comments, kindly contact us at info@awsuwaidi-advocates.com