G.C.C.

Overview of GCC

GCC is an abbreviation for Gulf Cooperation Council. The GCC was established in 1981 as a regional cooperation organization for the Middle East and Arabian Gulf coastal regions.

The member countries are six oil-producing countries: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates (hereinafter "UAE") (see map). The six member countries have a total population of approximately 38.6 million people and a total GDP of over $900 billion.

Although this is about 1/5 of Japan's GDP, for example, Saudi Arabia, the UAE, and Kuwait have markets comparable to those of developed countries, and the six GCC countries, together with Israel, Jordan, Turkey, Morocco, and Egypt, are in the Middle East. East & North Africa (MENA) is attracting attention as an investment target.

The GCC aims to adopt similar systems and laws in the economic, financial, commercial, customs, education, legal and administrative fields, etc., and one of its aims is to adopt a common intellectual property system. .

Changes in handling due to amendments to patent regulations

The GCC Patent Office announced on January 6, 2021 that it will stop accepting new patent applications.

Pending applications will continue to be examined and, if granted, will be effective in all member states.

Patent rights that have already been granted are valid in each member country until the expiration of the rights term.

The suspension of acceptance of the above-mentioned applications is due to a partial revision of the Patent Regulations on January 2021, 1. The Patent Regulations, published on April 5, 2021, provide the following:

From January 2023, 7, patent applications will be accepted and examined again for Kuwait and Bahrain, and from July 1, XNUMX for Qatar. This seems to be due to the above-mentioned requests from these three countries. It is unclear whether the remaining three countries have made any requests.

The greatest advantage of GCC patents was that, if granted, they would be effective in all member countries. However, the provisions establishing this have been abolished.

At the time of filing, the applicant designates one or more countries selected from the group consisting of Kuwait, Bahrain, and Qatar. A patent right extends only to the designated country.

It is also possible to obtain rights by filing directly with member states, including Kuwait, Bahrain and Qatar, through the Paris route, or through the PCT route.

GCC logo mark

Six GCC member countries (Map source: Reference ②)

Overview of the GCC patent system

At the 13th GCC Summit held in December 1992, the GCC Patent Regulations were passed and the GCC Patent Office was established. The GCC Patent Office is located in Riyadh, the capital of Saudi Arabia, and began accepting patent applications in August 1998. Part of the regulations were revised in November 1999, and the revised regulations came into effect on August 16, 2000. On the same day, Japan also joined the TRIPs Agreement.

However, on January 2021, 1, a portion of the Patent Regulations was revised, resulting in the situation described in above. Therefore, the following statements are considered to apply only when the above-mentioned request is made by a member country to the GCC Patent Office.

Table 1 shows an overview of the GCC patent system.

[Table XNUMX]

Currently, only patent applications can be filed with GCC. There is no utility model system or design system. Therefore, it is necessary to seek protection for utility models and designs in each country. However, Saudi Arabia does not have a utility model system.

On the other hand, regarding trademarks, a system called the GCC Uniform Trademark Law came into effect in 2006, and Kuwait, Bahrain, Saudi Arabia, and Oman have adopted the GCC Uniform Trademark Law.
　On July 2023, 7, implementing regulations adopting the GCC Uniform Trademark Law came into effect in Qatar, and the regulations will be applied from August 10. This will ensure that all six GCC member countries comply with the Uniform Trademark Law, and is expected to improve convenience for users.

However, although the GCC Uniform Trademark Law is an attempt to harmonize the legal fields related to trademarks in the GCC region, it is only a regional harmonization law and does not unify or centralize trademark applications like the EUTM in the European Union. Therefore, each GCC member state will continue to maintain and manage its registry independently. As a result, applicants wishing to register a trademark in the GCC will still need to file separate trademark applications in each GCC member state.

・Trends in the number of applications

　More than 90% of applications come from countries other than GCC member countries.

・Number of registered items

　The number of cases remains around 2020 to 3 per year. As of March 10906, the number of registered items is XNUMX.

In addition, within three months from the filing date to supplement the application,

is required to be submitted.

Applications must be filed in Arabic, and English translations of the specification, claims, drawings, and abstract must be attached. Applications cannot be submitted in English. Since it is not necessary to submit an Arabic translation of the specification etc. at the same time as the application, it is necessary to ensure sufficient time for translation by a local agent.

① Application to GCC

(i) It is possible to file a GCC application claiming priority of the Paris Convention (although the GCC is not a party to the Paris Convention, it respects the rules of the Paris Convention regarding priority rights).

Previously, when a patent was registered in the GCC, it was effective in all six GCC member countries (UAE, Bahrain, Kuwait, Oman, Qatar, and Saudi Arabia). However, due to the amendments to the Patent Regulations, it is now only effective for countries that have made the above request to the GCC.

(ii) A GCC patent office cannot be designated in a PCT application.

② Application to member countries

(i) It is possible to apply directly to each country.

(ii) It is possible to file an application claiming priority under the Paris Convention, and it is also possible to acquire rights through the PCT route. The transition period is 30 months from the priority date.

①Formal examination

If the application documents submitted to the GCC Patent Office meet the formal requirements, the application will be assigned an application number and a filing date will be fixed.

Application maintenance pension must be paid between January and March every year. If the period is exceeded, payment can be made between April and June along with additional fees.

②Application publication

This is not done because there is no application publication system.

③Substantive examination

Substantive examination will be conducted if the examination fee is paid within three months from the date of receipt of the examination fee payment notice. If payment is not made, the application will be abandoned.
There is no priority examination system or accelerated examination system. As of now, PPH has not been introduced.
There is no system to delay substantive examination.
Part of the substantive examination is outsourced to the Australian Patent Office and the Chinese Patent Office. The average time it takes to issue the 1st OA is approximately 3 years from the filing date. The average period until the date of assessment is approximately XNUMX months from the date of application.

④ Spontaneous correction

It is possible to obtain a patent, but not after the examination fee has been paid.

⑤Patent requirements

★Surgeries, treatments, and diagnostic methods are grounds for non-patentability even if they involve animals.

⑥Notification of reasons for refusal

(i) The results of the substantive examination will be notified to the applicant, and the applicant may respond within three months from the date of notification. Even if you are a resident overseas, you will not be allowed an extension of the response period. Since a response in Arabic is required, translation from Japanese to English to Arabic is usually required. It is advisable to give instructions to the local agent as early as possible.
(ii) up to three OAs may be issued;
(iii) If the application is refused, the applicant may file an appeal with the GCC Patent Board within three months from the date of publication.

⑦Divisional application, change of application

Divisional applications can be filed at any time until the patent is granted. Changes to the application are not possible as there is no system in place.

⑧ Third party information provision system

No system.

⑨ Occurrence/opposition of patent rights

(i) Amendments or corrections to claims and specifications are not allowed after a patent is granted.
(ii) pay the fee within three months from the date of receipt of notification of approval for grant of patent; After payment of the publication fee and grant fee, the decision will be announced and a patent certificate will be issued to the applicant.
(iii) Interested persons may file an opposition within three months from the date of publication of the grant of the patent.
Any opposition shall be lodged with the courts of the Member State having jurisdiction. Jurisdiction is determined by where the cause of action originates or by the domicile of the defendant.
If no opposition is filed within three months from the date of publication of the patent grant, or if the opposition is not approved, the patent will be registered in the patent register.
(iv) The term of validity is 20 years from the filing date. It applies only to the country that made the initial request. There is no system for extending the term of service.

⑩ Invalidation trial

Although there is no invalidation trial system per se, a person who is dissatisfied with a decision made by the GCC Patent Office may file a complaint with the GCC Patent Office within three months from the date the decision was made known to the person who received the decision or from the date of public announcement. An appeal may be made.

⑪ Correction judgment

No system.

⑫ Obligation to implement

Patent holders are required to fully exploit their patents within the GCC member countries within three years from the date of grant, and if they are not fully exploited, they will be subject to a compulsory license.

① Commissioned by the Japan Patent Office JETRO Intellectual Property Rights Information Counterfeiting Countermeasures Manual Middle East Edition (March 2009, JETRO)

② Research report on the intellectual property rights system and its operation status in Russia, Central and South America, and the Middle East (March 2010, Japan International Association for the Protection of Intellectual Property)

③GCC Patent Office homepage:http://www.gccpo.org

④ Japan Institute of Invention and Innovation, Support Project for Countermeasures against Infringement of Foreign Industrial Property Rights, Mini-Guide Overview of World Industrial Property Rights Systems and Countermeasures against Infringement of Industrial Property Rights (contains an overview of the GCC patent system):http://iprsupport-jpo.go.jp/miniguide/pdf2/GCC.html

⑤ Points to keep in mind when acquiring and exercising patent rights in the UAE and Saudi Arabia (first edition) (Japan Intellectual Property Association)

⑥Report of the UAE/Saudi Arabia investigation team (Japan Intellectual Property Association)

⑦ Survey on the system outline for patent acquisition at the Gulf Cooperation Council Patent Office (Independent Administrative Agency Japan External Trade Organization Dubai Office Intellectual Property Rights Department)

⑧ Research report on the actual status of examination and operation of patents, utility models, designs, and trademarks in Middle Eastern countries, as well as examination standards and examination manuals (Japan International Intellectual Property Association)

Patent attorney specialist　　Ichijo Matsumura