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The Kingdom of Saudi Arabia Intellectual Property Information



1. Summary of the Kingdom of Saudi Arabia (hereafter referred to as Saudi Arabia)

Saudi Arabia is a leading state in the Middle East which boasts the world's greatest oil reserves. It has a population of 31.5 million (2015) and a GDP of approximately 653.5 billion dollars (2015). As a kingdom governed by the House of Saud, it is an absolute monarchy observing Islamic law, and Islamic rules apply to foreigners as well.


Chief industries are petroleum, LPG, and petrochemistry. Although there are currently no prominent industries besides those related to petroleum, Saudi Arabia has been putting efforts into the establishment and nurturing of research and educational institutions for the development of new alternative sources of energy, and results in this area are expected in the near future. In addition, since it is a large-scale market in the Middle East and because young adults comprise a high percentage of its population, Saudi Arabia has been gaining recognition as a promising market.In 2016 the current number of Japanese companies expanding into Saudi Aribia was 118 ("Annual Report of Statistics on Japanese Nationals Overseas " (digest edition of 2016) of the Japanese Ministry of Foreign Affairs.


Main exports to Japan are crude oil, petroleum products, and LPG. Main imports from Japan include automobiles, electric machinery, and metals. For Saudi Arabia, Japan is a major trade partner in terms of both import and export.


Saudi Arabia is a member state of the Gulf Cooperation Council (hereafter referred to as GCC), which is the regional cooperation organization in the Persian Gulf. With the GCC’s seat being situated in its capital Riyadh, Saudi Arabia plays a major role within the organization.



2. Summary of Saudi Arabia's Intellectual Property Law

The features common to each area of legislation with regard to intellectual property are summarized in Table 1.

Patents and designs in Saudi Arabia are protected under the Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Models Law (hereafter referred to as Patent Law), which was issued by Royal Decree No.M/27 on July 17, 2004. Trademarks are protected by the Trademarks Regulation, issued by Royal Decree No.M/21 on August 4, 2002. No utility model system exists.



Table 1

  Patents Designs Trademarks Utility models
Necessity of a local representative Necessary Necessary Necessary N/A
Language of application Arabic Arabic Arabic
Substantive examination Exists None Exists
Request for examination Exists None None
Duration Twenty years from filing date (no extension possible) Ten years from filing date Ten years from filing date, extension possible every ten years
Opposition proceedings Exist Exist Exist
Invalidation trial Exists Exists Exists


3. Patents
  • (1) Applicant eligibility

The inventor(s) or his/her successors may apply (Patent Law, Article 8, Patent Law implementing by-laws, Article 10 (2)). In cases where the applicant is not a resident of Saudi Arabia, appointment of a representative who is a resident is necessary (Patent Law implementing by-laws, Article 8 (3)).

  • (2) Application documents, languages
  • (a) Application for a Patent, Specification, Power of Attorney, Deed of Assignment, and Priority Certificate must be filed (Implementing Regulations of the Law of Patents, Articles 9 through 17).
  • (b) Specification must include an abstract, detailed description, claims, and if necessary, drawing(s) (Implementing Regulations of the Law of Patents, Article 11).
  • (c) Power of Attorney (General Power of Attorney is also accepted) and Deed of Assignment require consular legalization, and must be filed within three months from the date of the application. On the other hand, it is unnecessary to file Copy of Register.
  • (d) The language of application is Arabic (Implementing Regulations of the Law of Patents, Article 8 (1)), but an English translation of the specification, claims, drawings, and abstract must be attached.
  • (e) The number of claims is not limited, and the same dependent form as in Japan is acceptable.
    The Jepson form, the Markush form, and a function claim are all available.
  • (f) A plurality of inventions which are related to each other so as to constitute one invention or a single general inventive concept can be contained in one application.
  • (3) Application Routes

Saudi Arabia is a signatory to the Paris Convention, and is one of the member states of the GCC. Further, Saudi Arabia acceded to the PCT in August 2013, and has been accepting applications through the PCT route since January 2015. Therefore, in case of claiming a priority, protection may be sought

  • 1. By filing an application under the Paris Convention in Saudi Arabia,
  • 2. By filing an application under the Paris Convention with the GCC, or
  • 3. By designating Saudi Arabia in a PCT application.

If a patent is registered in the GCC, the patent right is valid not only in Saudi Arabia but extends to all six GCC member states.

  • (4) Developments from application to registration

1. Formality examination
Patents are under the jurisdiction of the General Directorate of Patents (patent office) at King Abdulaziz City for Science and Technology (KACST). The patent office conducts a formality examination directly after the application is filed, and if the requirements are fulfilled, an application number is assigned and the filing date is confirmed (Patent Law, Article 12, Patent Law implementing by-laws, Article 8 (2)). If the application is formally in order, it is usually possible to secure a priority date.
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
On condition that a publication fee is paid, the application is published within 18 months from the filing date, (Patent Law, Article 11).

3. Substantive examination
If no problems are detected during the formality examination, the applicant is informed of the necessary expenses with regard to substantive examination, and upon payment of said expenses within three months from the date of the notification, substantive examination is initiated by the Saudi Arabia patent office (Patent Law, Article 13, Patent Law implementing by-laws, Article 35). Therefore, it can be said that a system of request for examination practically exists.
The period between the filing of an application and the notification of the expenses is about 12-18 months, the period between the notification of the expenses and a notification of the 1st Office Action is about 12-18 months, and thus the average period between the filing of an application and the decision to grant a registration is about 20-26 months.

4. Accelerated examination
An applicant can make a claim that protected matter is infringed or that infringement of protected matter to a panel which consists of 3 lawyers and 2 technical specialists according to Articles 35-39. and request that the panel swiftly carries out the examination (Article 41 of the Patent Law Enforcement Regulations).

5. Voluntary amendment
Voluntary amendment can be filed until the decision to grant a patent is issued. The voluntary amendment can be made within the scope of the specification.

6. Patent requirements:
・Novelty
It is required that the invention not to be anticipated by art prior to the filing date or the priority date (Patent Law, Article 44 (a)). Novelty is not considered in geographical terms such as domestic or international.

・Exceptions to loss of novelty
The following cases are not considered as loss of novelty (Patent Law, Article 30):
(i) If the invention has been disclosed in the six months prior to the filing date or the priority date as a result of an act of abuse with regard to the applicant or his/her predecessor.
(ii) If the invention has been disclosed in the one year prior to application at an acknowledged international exposition in a country that is a signatory to the Paris Convention.

・Inventive step
If, in relation to prior art with regard to the patent application, the invention is not obvious to a person with ordinary skill in the field, it is considered to possess inventive step (Patent Law, Article 44). Inventive step is judged on the basis of the skill of the average person in the technological field derived from the cited documents (Patent Law implementing by-laws, Article 36 (f)).

・Industrial applicability
Inventions are expected to ”bear a relation to products, industrial methods or anything connected ” (Patent Law, Article 43). That is, new objects and processes or improvements to objects or processes are included. Medical inventions are also protected.

If the invention can be produced or used in some kind of industry or agriculture including handicrafts, fishing or services, it is considered industrially applicable (Patent Law, Article 44 (c)).

・Grounds for non-patentability
The following items may not obtain patents*:
*Note that (i) is an item peculiar to Islamic states. Operative, therapeutic or diagnostic methods with regard to either humans or animals are non-patentable. Plant varieties may be protected by the right of plant cultivators.

(i) Inventions whose industrial application is contrary to Islamic law.
(ii) Inventions whose industrial application would endanger life, or damage the health of humans, animals, or plants, or be harmful to the environment to a considerable extent.
(iii) Discoveries, scientific theories and mathematical methods.
(iv) Business activities, psychological practices, or schemes, rules and methods for playing games
(v) Plant varieties and animals breeds, as well as methods used for producing these. However, microbiological methods and the substances obtained from such are excluded.
(vi) Surgical therapies or diagnostic methods 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.

7. Notification of reasons for refusal
(i) Once the applicant is notified of the result of the substantive examination, he/she may respond within three months from the notification (Trademark Law implementing by-laws, Article 42 (4)). Extension of the response term by one month is possible. Extension fee and statement of a reason for extension are not required. Telephone interviews with the examiner are possible.
(ii) If reasons for refusal are issued a second time and it is clear that that regardless of the applicant's response, his/her application does not fulfill the requirements, a decision of rejection is made (Patent Law, Article 14).
(iii) An appeal with regard to that decision may be filed with a committee made up of legal and technical experts (Patent Law, Articles 35 and 36).

8. Divisional application and conversion of application.
Divisional applications can be filed until the decision to grant a patent is issued. Applications cannot be converted since there is not such system.

9. Term of patent right duration
If the reasons for refusal are overcome and publication fee is paid, protection documents are issued and the invention is published in an official gazette. The term of duration of patent right is twenty years from the filing date (Patent Law, Article 19 (a)). For patents directed to trees, the term of duration is twenty five years. There exists no system of extension with regard to the term of patent right duration.

10. Opposition proceedings/invalidation trials
Systems of post-grant opposition proceedings and invalidation trials exist (Patent Law, Article 32). Interested parties may file a request for complete or partial cancellation with the Committee mentioned in 7.
Objections to a committee decision can be raised with a board of appeals within sixty days of the date of notification of the decision (Patent Law, Article 37). If no objections are raised, the Committee's decision becomes final.

11. System of offer of information by a third party
There is no such system.

12. Implementation duties
If the right holder has not implemented his/her invention or has not done so sufficiently without valid reason for the four years after filing the application or the three years after grant (whichever is earlier), upon request by an interested party, it may become subject to compulsory license grant (Patent Law, 24 Article, Paragraph 1(a)).

13. Implementation of invention
In a case of product invention, manufacture of, sale of, offer of sale of, exploitation of, and storing of the product and importation of the product for any one of the foregoing purposes fall under implementation of the invention. In a case of invention of industrial method, not only use of the method but also the above actions with respect to a product produced by the method fall under implementation of the invention. Implementation of the invention by a legally non-authorized party falls under infringement of the patent.



4. Designs

Design law in Saudi Arabia is prescribed as part of the Patent Law, and "industrial designs" are eligible for protection. Industrial designs are defined as arrangements of two-dimensional lines or colors or three-dimensional figures that render the distinctive appearance of an industrial product or a traditional handiwork. However, designs are not limited simply to items with functional or technical purposes, and also include designs for textiles etc. (Patent Law, Article 2).


Below is a summary of Saudi Arabia's design systems. Features common with patents are omitted.

  • (1) Application documents (Patent Law implementing by-laws, Article 25)

A request for application, industrial design data and all other related documents are required, as well as an illustration of the industrial design to be protected (an image or a drawing).

”Industrial design data” refers to a document that includes an explanation of the industrial design, product type based on the Locarno Classification, international design classification and so on.

  • (2) Application routes

Since the GCC only deals with patents, in the event of claiming a priority, applications have to be filed in Saudi Arabia under the Paris Convention.

  • (3) Developments from application to registration

1. Publication of application
No system for the publication of applications exists.

2. Substantive examination
No system for substantive examination exists (Patent Law, Article 13). If formal requirements are fulfilled, upon payment of a registration fee, the design is registered. Indication of the registration is not necessary.
The term of protection is 10 years from the date of application.

3. Systems peculiar to designs
No systems for partial designs, related designs, designs for a set of articles, or secret designs exist.



4. Registration requirements


・Novelty
It is required that the design not have been disclosed to the public by an obvious display due to use or in another way prior to the filing date or the priority date (Patent Law, Article 59). Novelty is not considered in geographical terms such as domestic or international.

・Exceptions to loss of novelty
The same conditions as with patents apply with regard to abuse of right. If the design has been disclosed at an acknowledged international exposition in a country that is a signatory to the Paris Convention, it is required that the above has occurred in the six months preceding the filing date. (Patent Law implementing by-laws, Article 30).

・Grounds for unregistability (Patent Law, Article 4):
(i) Items whose industrial application is contrary to Islamic Law
(ii) Items whose industrial use would endanger life, or damage the health of humans, animals, or plants, or be harmful to the environment to a considerable extent.

・Opposition proceedings, invalidation trials
Based on the Patent Law (Patent Law, Article 32). Since the system does not include examination, if registration requirements are not fulfilled, it is necessary to make use of opposition proceedings or an invalidation trial.



5. Trademarks

The following outlines the trademark system of Saudi Arabia. Things that are common with patents are omitted.


  • (1) Applicant eligibility (Trademarks Law, Article 4)
  • a) Natural persons that have Saudi Arabia nationality or entities
  • b) Persons who usually reside in Saudi Arabia and are allowed to engage in commerce or business activity
  • c) Nationals of countries that adhere to a principle of reciprocity with Saudi Arabia
  • d) Nationals or residents of countries that are signatory nations of multinational treaties that Saudi Arabia has signed
  • e) Public organizations

Saudi Arabia is a signatory to the Paris Convention, and is one of the member states of the WTO.


  • (2) Eligibility for protection (Trademarks Law, Article 1

Shapes with distinctiveness, signatures, words, letters, numbers, figures, drawings, symbols, seals and relief inscriptions as well as other marks or their combination. Marks of goods and marks of services are both recognized.

  • - Since visibility is required, sound trademarks, scent trademarks, etc. cannot be protected.
  • - Three-dimensional marks are not recognized, but their registration as industrial designs is possible.

Under GCC Unified Trade Marks Law described further below sound trademarks and scent trademarks are eligible for protection. Thus, when the laws of Saudi Arabia are revised, there is a change of such trademarks to become eligible for protection.


  • (3) Application documents and languages
  • In the Request for Application, besides bibliographic items, a copy of the trademark to be registered, an explanation of the trademark to be registered, the goods or services and their classification, etc. must be described (Trademark Law implementing by-laws, Article 2).
  • There is a system for collective trademarks. When a collective trademark is filed, it is required to submit a photocopy of the statute of the association or public corporation that request the trademark registration (Trademark Law implementing by-laws, Article 34).
  • The language of application is Arabic ((Trademark Law implementing by-laws, Article 4).
  • If the mark includes words in one or more foreign language(s), a certified translation into Arabic and a phonetic transcription thereof must be indicated.
  • No system of multiple-class trademark application exists. Instead it is a system of one class per application (Trademarks Law, Articles 6 and 7 as well as Trademark Law implementing by-laws, Article 1).
  • Saudi Arabia has not acceded to the Nice Agreement, but it exercises classification of goods and services based on the Nice Agreement classification. However, trademarks related to class 33 wine, spirits and liqueur are not eligible for registration.
  • (4) Application routes
  • It is possible to claim priority rights based on applications that were first filed in signatory nations of multilateral agreements that Saudi Arabia has signed or in other countries that agree on a principle of reciprocity with Saudi Arabia.
  • Saudi Arabia is not a signatory to the Madrid Agreement and Madrid Protocol.
  • Regarding the GCCs, a GCC Unified Trade Mark Law was enacted in 2006 in order to unify the trademark systems within GCC. Saudi Arabia has adapted the Unified Trade Mark Law, but a revision of the national law following the adaption has not occurred.
  • The aim of the Unified Trade Mark Law is a unification of systems. However, since the foundation of a trademark office for a wide area is not its aim, an institution lie a GCC patent office has not been established.

  • (5) Flow from application to registration

[1] Laying open of application
It is not done because there is no system of the application opening to the public.

[2] Substantive examination
No system of examination exists. Principal grounds for unregistrability are listed below (Trademark Law, Article 2).

(i) Trademarks that lack distinctiveness
(ii) Trademarks that contravene public order and morality or the Islamic religion
(iii) Marks similar or identical to well-known trademarks (including unregistered trademarks) concerning similar or identical goods or services
(iv) Marks similar or identical to previously registered trademarks concerning dissimilar or nonidentical goods or services

* Regarding (iii) and (iv) it is that necessary that use of the trademark damages the owner of a well-known trademark

(v) Descriptions which include false information regarding the origin of descriptions, goods or services that misleading the public

(vi) Trademarks similar or identical of previously registered trademarks of other persons and concerning similar of identical goods or services

* The decision of analogy of trademarks is made based on appearance, appellation and concept. However, the judgement is strict and there seem to be cases, in which examiners conclude that there is even the slightest risk of confusion, and therefore reject applications (entry 1 of the bibliography).

[3] Office Actions Within 60 days form the filing date, a decision to approve of an application is made if an application fulfills the requirements for registration, and an Office Action will be issued if it does not meet the requirements for registration (Trademark Law, Articles 10 and 11).
A response to an Office Action has to be filed submitted within 90 days. If a decision of refusal is issued, an appeal may be filed with the minister of commerce within 60 days of the notification of the decision (Trademark Law, Articles 12 and 13).
Regarding decisions for rejection, an appeal may be filed with the Committee within thirty days (Trademark Law, Article 12).

[4] Occurrence/duration of trademark right and opposition proceedings
・A system for opposition proceedings before grant exists. Interested parties may file an opposition against the board of appeal within sixty days from the announcement date (Trademark Law, Article 15). In this case, the trademark office has to be notified of the objection accompanied by a copy of the written opposition. From the on the trademark office stops the processing until the board of appeal pronounces their final decision regarding the opposition.
・When a decision of approval of a trademark registration becomes final, the trademark is entered into the trademark register and a trademark right is generated (Trademark Law, Article 16). The term for protection is ten years from the filing date (Trademark Law, Articles 20 and 22).
・Registrations are renewed upon request (Trademark Law, Article 23), and are renewed without being examined again.
There is no system for defensive marks.
・It currently takes at least 8 months until a registration procedure is completed.

[5] Cancellation trials
・With regard to unlawful registration, the attending department and interested parties may request the cancellation of a registered trademark with the board for appeal examination (Trademark Law, Articles 25 and 26).
・If the owner of a trademark right does not continually use a trademark for five years without a valid reason, the attending department or interested parties may request the cancellation of a registered trademark with the board of appeal examination (Trademark Law, Article 25).

[6] Trademark right infringement

Trademark Law Article 43 provides that persons who fall under a-c below infringe trademark rights. Criminal actions have to be brought within five years from the occurrence of the unfair practice.
a. Persons who counterfeit or imitate registered trademarks in a way that misleads the public and persons who use counterfeit or imitated trademarks in bad faith
b. Persons who use affix or use trademarks owned by others in bad faith for their own goods or services
c. Persons who, despite being aware of the situation, offer products with counterfeit or imitated trademarks or illegally affixed or used trademarks for sale with the intend to sell these products, market or sell them, or persons w who offer services under such trademarks despite being aware of the trademark owner and the situation
The Anti-Counterfeiting and Fraud Department (ACFD) which has the authority to enforce trademarks, understands "imitation" above as "even though skillful, the act of fabricating a false trademark in order to model an false trademark after a genuine trademark, and thereby misleading consumers or purchasers regarding the false nature of said trademark".






Bibliography

1. JPO Entrusted JETRO Intellectual Property Information, Imitation Countermeasures Manual Middle East (March 2009, JETRO) (in Japanese)

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) (in Japanese)

3. Patent News, Nos. 12954 to 12956, Research Institute of Economy, Trade and Industry

4. The first edition of “Important points in obtaining and enforcing a patent in UAE and Saudi Arabia” (JIPA)

5. Written reports of studies regarding the actual conditions of the examination practice for patents, utility models, designs and trademarks as well as regarding examination guidelines and examination manuals in the countries of the Middle East (International Association for the Protection of Intellectual Property of Japan)




Patent&Trademark Attorney


Patent&Trademark Attorney
Researcher
Kazuki MATSUMURA
Kazuki MATSUMURA Kazuki MATSUMURA, born in 1967, obtained a MS in Animal science and technology from Tohoku University. The targets of his research include Animal products chemistry, Immunology and Food chemistry. His specialty covers Biochemistry and Food ingredients. He is presently a member of JPAA.

Technology is steadily advancing, and the law is often reformed with increased importance of protecting and utilizing intellectual property.
To cope with these circumstances accurately, I make efforts to answer our client's request and to contribute to industrial development by continuing earnest studies and doing my work sincerely.
Osaka Legal Department Trademark Division Manager
Legal Department
Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation
Researcher
Kazunori TAKEDA
Kazunori TAKEDA Majored in science of business law.
Specialized in design, trademark, copyright, computer program registration, semiconductor circuit layout-design registration.

As a patent attorney, I feel a great responsibility for establishing and protecting our clients’ important intellectual property rights.
I will make every effort to be of great assistance to our clients.
Secretariate and Administration Department
Researcher
Sayaka EBI
Sayaka EBI Graduate in foreign language, major in Arabic
Two-year work experience in Jordan

I will make every effort to provide a better service.
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