1. GCC Summary
“GCC” stands for the Gulf Cooperation Council, and was established in 1981 as a regional cooperative organization of the countries in the Middle East and Arabian Gulf regions.
Signatories are the six oil-producing states of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates (hereafter referred to as UAE). The combined population of the six member states is 38.6 million, and their combined GDP exceeds 900 billion dollars.
This figure may be about one-fifth of Japan's GDP, but Saudi Arabia, UAE and Kuwait have markets matching those of developed countries. The six countries of the GCC, together with other nations such as Israel, Jordan, Turkey, Morocco and Egypt, are collectively referred to as the Middle East and North Africa (MENA), and are gaining recognition as targets for investment.
The GCC has set goals such as the adoption of similar systems and laws concerning the fields of economics, finance, industry, customs, education, legislation, administration, etc. The adoption of a common intellectual property system is also among the goals.
On the other hand, due to changes in political conditions, Saudi Arabia, Bahrain, and UAE have kept a break in diplomatic relations with Qatar since June 2017, and so it is necessary to pay attention to how the framework of GCC will change in the future.
|The GCC logo
||The six GCC member states（map source: reference material 2）
2. Summary of the GCC's patent system
At the thirteenth GCC summit, which was held in December 1992, the GCC Patent Regulation was approved, and the GCC patent office was established. It is situated in Riyadh, the capital of Saudi Arabia, and receipt of patent applications was initiated in August 1998. In November 1999, Regulation was partially amended and these amendments went into effect on August 16, 2000. On the same day, the GCC also acceded to the TRIPs Agreement and it has been a signatory thereof up to the present.
|Intellectual Property Systems
|Necessity of a local representative
|Language of application
||ExistsRequires payment of examination fee within the three months from filing date
|Designation of GCC in PCT applications
|Filing an application by route of the Paris Convention
|Publication of application
|Preferential examination/accelerated examination
|Duration of term of patent right
||Twenty years from filing date (no system for extension of duration).
||Subject to compulsory license grant after three years of non-implementation
Only patent applications may be filed in the GCC at present. Utility models and designs are not adopted. This makes it necessary to file utility model and design applications in each country of the GCC. Note, however, that at present, no system for utility models exists in Saudi Arabia.
Regarding trademarks, a GCC Unified Trade Mark Law was enacted in 2006 in order to unify the trademark systems within GCC. In 2015, the GCC Trade Cooperation Committee passed the Implementing Regulations of the GCC Trade Mark Law, which put the Unified Trade Mark Law into effect in Kuwait, Bahrain, and Saudi Arabia. Following this, in July 2017, the Unified Trade Mark Law also came into effect in Oman. UAE and Qatar are presently preparing legal amendments which will put the Unified Trade Mark Law into effect in those countries as well. It will therefore be possible, in the near future, to register trademarks in each GCC states under the unified law.
It is important to note that while the GCC Unified Trade Mark Law does unify trademark systems within the GCC, it does not establish a system for centralizing trademark applications across all GCC states, as is done with the EU's EUTM. Each GCC state will continue to have its own trademark registry which will be maintained and managed independently. As such, an applicant wishing to register a trademark in each GCC state will be required to file a separate application in each country, in the same manner as before the passing of the unified law.
- (2) Number of Applications and Registrations
• Changes in Number of Applications
|Number of Applications
90% or more of the number of applications is from non-GCC member states. In 2013, the number of applications from Japan was 247 out of 2890. The medicine field received the largest number of applications (accounting for about 28% of the entire application).
• Number of Registrations
The number of registrations changes from 300 to 500 each year. The number of registrations as of March 2018 is 7,387.
The inventor(s) or his/her successor(s) may apply. If the applicant is not a resident of the GCC, it is necessary for him/her to appoint a registered representative who is a resident of the GCC.
- (4)Application documents, languages
Application documents are as follows: 1. Request for Application; 2. Specification, 3. Claims(the same dependent form as in Japan is acceptable), 4. Abstract, 5. Drawings (if necessary).
In addition to the above documents, as supplemental documents for the Request for Application, 6. Power of Attorney (General Power of Attorney is also accepted), 7. Deed of Assignment (for application by entity only), 8. Copy of Register, and 9. Priority Certificate (if right of priority is claimed) must be filed within three month from the date of the application.
Applications are filed in Arabic, but it is necessary to attach English translations of the specification, claims, drawings and abstract. Since it is not possible to file applications in English, the local representative must ensure a sufficient translation period.
Documents 6 through 8 above require certification by a consul of a GCC state. The certification procedure requires a significant amount of time which must be taken into account during the application process.
The patent office is open from Sunday to Thursday. Since there are restrictions such as shortening of working hours in Ramadan and suddenly specified holidays, it is desirable for the applicant to make an action early.
1. Application to the GCC
(a) Application claiming priority under the Paris Convention can be filed in the GCC (the GCC is not signatory to the Paris Convention, but values the Paris Convention as to its provisions related to the right of priority). Once a patent is granted by the GCC, the effect of the patent comes into force in all the six member states (UAE, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia) of the GCC.However, since UAE does not specify enforcement regulations on the GCC patents, there is a possibility that the GCC patents do not function effectively in UAE. Accordingly, in UAE, it seems effective to seek protection by the procedure 2 below.
(b) It is not possible to designate the GCC patent office in a PCT application.
2. Application to member states
(a) With the exception of Kuwait, it is possible to (i) file a direct application to the member states and (ii) doubly file a direct application to the GCC patent office and to the GCC member states.
(b) Application claiming priority under the Paris Convention can be filed in any of the member states, with the exception of Kuwait. It is also possible to seek protection by the PCT route in the member states except Kuwait. The transition period is thirty months from the priority date.
On April 3, 2016, Kuwait stopped accepting new patent applications and made it necessary to file applications with the GCC patent office. This means that obtaining a patent in Kuwait requires filing a GCC application. This change was brought about when Kuwait approved the GCC patent law and implementing regulations thereof and subsequently issued its own new law on April 3, 2016. As such, it is possible to patent an invention in Kuwait by filing an application through the GCC while claiming priority under the Paris Convention.
Kuwait has become the 149th member to the PCT, and has been bound by the PCT since September 9, 2016. Thus, any PCT applications dated September 9, 2016 or later will automatically include Kuwait as a designated country.
However, it is currently impossible to designate the GCC patent office in a PCT application. This means that in order to be able to patent an invention in Kuwait via the PCT route in the future, one of the following will be required: (i) enablement of designating the GCC patent office in a PCT application or (ii) amendments to Kuwaiti law which would allow a PCT application to be entered into the national phase in Kuwait.
- (6) Developments between application and registration
1. Formality examination
If the application documents filed with the GCC patent office fulfill the formal requirements, an application number is assigned to the request, and the date of filing is confirmed.
Application maintenance fees must be paid during the period from January to March each year. It is possible to pay these fees from April to June with an additional fee for late payment.
2. Publication of application
Since there exists no system for the publication of applications, no publication is conducted.
3. Substantive examination
Substantive examination is conducted upon payment of the examination fee within three months from the filing date. No payment is regarded as abandonment of application. There are no preferential examination and accelerated examination systems. PPH has not been introduced yet, either.
The GCC patent office has its own examiners, but some (a small number) of the substantive examinations are outsourced to the Austrian Patent Office or the Chinese patent office (SIPO).
Issuance of a first office action takes approximately 3 years. It takes approximately 42 months from the date of application to have the patent application examined.
4. Voluntary amendment
Voluntary Amendment can be filed before the decision to grant a patent is issued, but cannot be filed after the payment of examination fees.
5. Patent requirements
- Novelty : It is required that the invention not be anticipated by prior art
- Exceptions to loss of novelty
Disclosure of the invention to the public is not regarded as loss of novelty in the following cases
(i) In cases where the disclosure has taken place due to or as the result of an act of abuse against the applicant or his/her predecessor one year prior to the filing date or the priority date.
(ii) In cases of disclosure at an accredited exposition within the six months preceding the filing date.
- Inventive step : With regard to prior art related to the patent application, if the invention is not obvious to a person with ordinary skill the technical field of the invention, it is considered as having an inventive step.
- Industrial applicability
If it is possible to produce or use the invention in some type of industry, agriculture, fishing, or service, the invention is regarded as industrially applicable.
*With regards to product-by-process claims, the product itself must satisfy patentability requirements. A new process for producing a product will not, in and of itself, be deemed as novel.
- Grounds for non-patentability
The following items are not regarded as inventions and cannot be granted patents.
(i) Discoveries, scientific theories, mathematical methods, and computer programs
(ii) Mechanisms, rules and methods for exercising purely psychological practices or playing games
(iii) Biological methods used for producing plant varieties, animal breeds, plants or animals. However, microbiological methods and products of such are excluded.
(iv) Methods of surgical treatment or diagnosis of the human or animal body, as well as diagnostic methods used with regard to the human or animal body. However, products used in these methods are excluded.
*Surgical, therapeutic, and diagnostic methods are non-patentable whether they apply to humans or animals.
6. Notification of reasons for refusal
(i)The result of the substantive examination is disclosed to the applicant, and he/she may respond within three months from the receipt of the notification. The period for a response cannot be extended even if the applicant resides outside the GCC member states. Since a response is required to be made in Arabic, it is generally necessary to translate the response from Japanese to Arabic via English. Accordingly, it is desirable for the applicant to make instructions to the associate firm in the GCC member states early.
(ii) Up to three office actions may be issued.
(iii) If an application is refused, the applicant may file an appeal with the GCC patent committee within three months of the date of the decision of refusal.
7. Divisional application
Divisional application can be filed before the decision to grant a patent is issued.
8. Occurrence of patent right/opposition
(i) After the decision to grant a patent is issued, it is no longer possible to make amendments or corrections to claims and the specification.
(ii) A fee must be paid within three months from the receipt of the notification of approval of patent grant. After paying a publication fee as well as a grant fee, the decision is published and a patent certificate is issued to the applicant.
(iii) Opposition proceedings may be initiated within three months from the publication date. If no opposition is declared in the three months after the publication of the grant, or if opposition was rejected, the patent is entered in the patent register.
(iv) Duration of the patent right is twenty years from the filing date. The patent right is valid in all GCC member states. The period of duration cannot be extended.
9. Invalidation trials
A cancellation system exists. Persons who object to the decision made by the GCC patent office may appeal to the GCC patent office committee within either three months from the date on which the decision is known to have been delivered, or the three months from the date of publication.
10. Implementation duties
The patent right holder is required to sufficiently implement the invention in the GCC member states within three years from the patent grant. If the invention is not sufficiently implemented, it becomes subject to compulsory license grant.
- (7) Reference materials/URLs
1. JPO Entrusted JETRO Intellectual Property information, imitation countermeasures manual Middle East (March 2009, JETRO)
2. Investigation research report on the intellectual property systems of Russia, Central and South America and the Middle East and their current practices (March 2010, AIPPI Japan)
3. GCC patent office website : http://www.gccpo.org/
4. Japan institute for promoting invention and innovation, Support project for measures against industrial property right infringement etc. in foreign countries, Mini guideline for industrial property right systems in the world and outline of measures against industrial property right infringement (including Outline of GCC patent system)
5. The first edition of “Important points in obtaining and enforcing a patent in UAE and Saudi Arabia” (JIPA)
6. UAE and Saudi Arabia Investigative Committee Report (JIPA)
7. Report on System for Obtaining Patent Rights through the GCC Patent Office [Japanese-language reference] (JETRO, Dubai Office, IP Rights Dept.)