table of contents
Overview of the United Arab Emirates (hereinafter referred to as “UAE”)
The UAE is an oil-producing country located on the Arabian Gulf coast, with a population of approximately 1,108 million people (2020) and a GDP of approximately $4,211 billion (2019). The country's name is based on the fact that it is made up of seven emirates, including Abu Dhabi and Dubai. The UAE is also a member of the Gulf Cooperation Council (GCC), a regional cooperation organization for the Arabian Gulf region.
The main industries are oil and natural gas, but in recent years, as exemplified by Dubai, they have also focused on tourism and finance, as well as creating industries that can replace oil, such as solar power generation. ing. The main export products are oil, natural gas, and metals, and the largest exporting country is Japan.
Although the UAE's land area is approximately 2019% of that of Japan, it has the fifth largest oil reserves in the world. In addition, it is a wealthy country with a per capita GDP of approximately $XNUMX (XNUMX), which is among the highest in the world, and its market is on par with developed countries, so it is attracting attention as an investment target. The degree is high.
Overview of the UAE intellectual property system
On May 2021, 11, "Federal Law No. 45 of 20 on the Regulation and Protection of Industrial Property Rights" was promulgated, and patents, utility models and industrial designs are now protected. According to Article 10 of the new law, the term of protection for designs has been extended to XNUMX years from the filing date (the term of protection under the old law was XNUMX years). Trademarks are also protected by the Trademark Law No. XNUMX of XNUMX (hereinafter referred to as the "Trademark Law").
On August 2023, 8, in order to strengthen functions related to intellectual property, the Innovation Department/Industrial Property Department, Trademark Department, and Copyright and Related Rights Department will be integrated to form the Intellectual Property Department. was founded.
Regarding the UAE's intellectual property system, Table 1 shows the common items in each jurisdiction.
[Table XNUMX]
| Patent | utility model | design | 商標 | |
| The need for a local agent | want | |||
| Application language | Arabic | |||
| substantive examination | will get | will get | No | will get |
| Request for examination | None | None | None | None |
| Duration | 20 years from the filing date | 10 years from the filing date | 20 years from the filing date | 10 years from the filing date (Can be renewed) |
| Objection | Yes | |||
| Invalidation trial | Yes | |||
patent system
Applicant eligibility
The inventor and his/her successors may be applicants.
Application documents, language
Patent applicationArabicAn English translation of the specification, claims, drawings, and abstract must be attached.
Power of attorney, deed of assignment, certified copy of register, and certificate of priority must be submitted within 90 days from the filing date. Extension of the submission period is not possible. With the enforcement of Article 19 (6) of the Enforcement Regulations, consular authentication is no longer required for all required documents such as powers of attorney, deeds of assignment, and certified copies of registers.
There is no general power of attorney system.
The documents required for application are as follows.
- ①Application form
- ②Specification, claims, necessary drawings, abstract (Arabic and English)
- ③ Power of attorney (signed by the party and notarized only, no consular authentication required)
- ④Deed of transfer (signed by the parties and notarized only, no consular certification required)
- ⑤Priority certificate (within 90 days from the application date. English translation only is acceptable)
・There is no restriction on the format of the claim; it may be in Jepson format, Markush format, etc. There is no provision regarding the dependent form of claims. The maximum number of claims is 50.
- The application must include a single invention or multiple inventions that are related to each other and constitute a single inventive concept. Violation of unity is not a ground for invalidity.
・Payment of application maintenance pension is required between January and March every year. If the period is exceeded, payment can be made between April and June along with additional fees.
・The office is open from Sunday to Thursday. Due to restrictions such as shortened working hours during Ramadan and sudden holidays, it is advisable to take action as soon as possible.
Application route
The UAE is an ally of the Paris Convention and a party to the PCT. It is also a member of the GCC. Therefore, when filing an application claiming priority for a patent application,
- ① Apply to the UAE using the Paris route,
- ② Apply to GCC using the Paris route,
or sending us a message on - ③ Designating the UAE in the PCT application;
protection can be sought.
Note)The GCC Patent Office announced on January 2023, 7 that it will stop accepting new patent applications. Patent application acceptance and examination resumed for Kuwait and Bahrain on January 1, XNUMX, and for Qatar from July XNUMX, XNUMX, but for the UAE, the above ② is no longer available and applications must be filed directly through the Paris route. , or there is a need to acquire rights through the PCT route.. Examination of pending GCC applications will continue.
If the UAE requests the GCC Patent Office to accept, examine, and grant patent applications, in whole or in part, option ② will be available. However, since the UAE does not have detailed rules for the enforcement of GCC patents, options ① and ③ are considered more useful in any case. In cases ① and ③, the patent right applies to all the emirates that make up the UAE. At this point, it is unclear whether or not the above request has been made.
The national phase deadline for PCT applications is 30 months from the priority date. There is no remedy in case of failure.
Flow from application to registration
①Formal examination, substantive examination
If the formal requirements are met, a substantive examination will be conducted subject to the payment of an examination fee. The examination fee must be paid within 90 days from the filing date or the national phase date. If the examination fee is not paid, the application will be virtually withdrawn.
Formality examination will be conducted by the UAE Industrial Property Department. Substantive examination is being conducted under the auspices of the Korean Patent Office.
The average time to 1st OA is about XNUMX years from the filing date, and the average time to decision is about XNUMX years from the filing date.
The “Federal Law No. 2021 of 11 on the Regulation and Protection of Industrial Property Rights” introduced a priority examination system (Article XNUMX of the Law, Article XNUMX of the Implementing Regulations). At the request of the applicant or by the authority of the supervisory authority, urgent patent applications and utility model applications may be examined preferentially.
The first-to-file principle will be adopted (Article 18 of the Enforcement Regulations).
②Application publication
If requested by the applicant, the entire or part of the patent application will be published on or before 18 months from the filing date (Article 32 of the Enforcement Regulations).
③Patent requirements
・Novelty, inventive step
If it is not anticipated based on the prior art, it is considered novel (Article 2 of the Patent Law Regulations). Geographical requirements do not matter whether domestic or foreign.
If the related prior art is not obvious to a person skilled in the art, it is deemed to involve an inventive step (Article 2 of the Patent Law Regulations).
・Exception to loss of novelty
If an invention is disclosed by the inventor or a third party who has obtained information directly or indirectly from the inventor, the invention does not lose its novelty by filing a patent application within 12 months from the date of disclosure. (Article 5 (4) of the Act, Article 17 of the Enforcement Regulations).
・Reason for non-patentability
The following cannot be patented:
However, this excludes microbiological methods or their products.
(ii) diagnostic, therapeutic and surgical methods of treatment of humans and animals;
(iii) scientific principles, discoveries and mathematical methods;
(iv) structures, plans, rules and methods for conducting mental activities, games or business;
(v) Inventions that are contrary to public order and morals
④Correction
Applications can be submitted at any time before the start of the review. After the examination has started, it is possible to respond to the notice of reasons for refusal. New items cannot be added.
⑤ Divisional application/change of application
For patent applications that include multiple inventions, divisional applications may be filed (Article 16 of the Act, Article 29 of the Enforcement Regulations). Multiple divisional applications are also possible.
It is also possible to change the application from a utility model registration application to a patent application. It is also possible to change an application from a patent application to a utility model registration application. The original application is virtually withdrawn.
⑥Response to reasons for refusal
If it is determined that the registration requirements are not met, the applicant will be given an opportunity to make amendments. In response to a decision of refusal, an applicant may file a request for appeal with the Japan Patent Office Trial and Appeal Board within 60 days from the date of receiving notification of the decision of refusal (Article 12 of the Patent Law).
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.
The average time from the filing date to receiving the 1st OA is approximately XNUMX years, and the average time until patent is granted is approximately XNUMX years.
⑦Duration of patent right
From the filing date20 yearsIt is. There is no system for extending the term of service.
⑧Reexamination after patent grant
Once a patent has been granted, it will be published in the Patent Bulletin. No person may submit a post-grant reexamination within 90 days from said publication on the ground that the registered patent does not satisfy any of Article 39(1) (a) to (j) of the Enforcement Regulations. A patent can be requested to be revoked in whole or in part (Article 42 of the Enforcement Regulations). Reexamination will be conducted by a panel of three or more examiners.
Any person interested in the reexamination may request the appeals committee to invalidate the decision within 60 days from the date of notification of the decision.
⑨ Third party information provision system
Not possible because there is no system in place.
⑩ Correction judgment
Not possible because there is no system in place.
⑪Obligation to implement
If the invention is not put into practice or is put into practice insufficiently for at least three years from the date of grant, it may be subject to a compulsory license upon application by any interested party.
⑫Act of implementation
The following acts are deemed to be acts of exploitation, and exploitation by a person without legal title constitutes patent infringement.
b. For inventions of industrial processes, the use of the process, the use of the product directly obtained from the process, the offer to sell the product, the sale of the product, or the act of importing the product for these purposes.
c. Infringement of patent rights is punishable by imprisonment for a period of not less than three months and not more than two years, or a fine of not less than AED 3 and not more than AED 2.
utility model system
A utility model is defined as "the protection given to inventions that have industrial utility but are not inventive or creative enough to warrant patenting."
Although the standard of inventive step is not as high as that required for patents, utility models are also required.Substantive examination will be conductedThis is different from Japan.
The duration of a utility model right starts from the filing date.10 years.
The maximum number of claims is 10.
For other matters, the patent system shall apply mutatis mutandis.
design system
A design is defined as "any arrangement of lines or colors, or any combination of these features, that exhibits a special appearance and serves as a pattern for an industrial or handicraft product," and includes three-dimensional shapes. It is also protected as a "model" (Article 1 of the Patent Law). Hereinafter, the design and the model will be collectively referred to as the "design."
The UAE's design system is outlined below. Matters common to patents have been omitted.
Application documents/language
Submit a registration application accompanied by a novelty statement and design indication (Arabic and English).
Application route
The GCC only handles patent applications, so if you want to claim priority, you will need to apply to the UAE using the Paris route. The priority period is 6 months.
Flow from application to registration
①Substantive examination
The substantive examinationNot done.If the formal requirements are met, a decision on protection will be made and, upon payment of the prescribed fee, an announcement will be made (Article 48 of the Patent Law). If the opposition described below is not filed or if there are no grounds for filing the opposition, the certificate of registration will be served. No registration display required.
The term of protection starts from the filing date.20 years(Article 49 of the Patent Law).
② System specific to designs
All of the partial design system, related design system, assembly design system, and secret design systemnot exist.
③Reason for non-registration
Designs that are not innovative or new, and designs that violate public order and morals will not be registered (Article 47 of the Patent Law).
④ Opposition, invalidation trial
Pre-grant opposition systemexists. Interested parties may file an opposition to a decision granting protection for a design within 60 days from the date of public announcement (Article 48 of the Patent Law).
Interested parties may request the court for an invalidation trial (Article 34 of the Patent Law applies mutatis mutandis).
⑤Implementation act
The same is true for inventions of products in patents.
trademark system
The UAE trademark system is outlined below. Matters common to patents have been omitted.
Applicant eligibility (Trademark Law Article 6)
Natural and legal persons are eligible to apply.
Target of protection (Article 2 of the Trademark Law)
Names, phrases, signatures, letters, numbers, drawings, symbols, addresses, quality certifications, engravings, designs, decorations, packaging, other marks, combinations thereof, three-dimensional marks, single-color marks, hologram marks, sound marks, scents trademark of
Sounds accompanying trademarksare considered to be constituent elements of a trademark.
They are also recognized as product trademarks and service trademarks.
Geographical indications are also protected.
Application documents, language
In addition to bibliographic information, the application form must include a reproduction of the trademark for which registration is sought, a brief explanation of the trademark for which registration is sought, the goods or services and their classification, etc. (Article 5 of the Trademark Law Enforcement Regulations).
If a specific color (or combination of colors) is not specified, the trademark is deemed to be registered for any color.
The application language isArabic. If the mark contains words in a foreign language, an official Arabic translation must be attached to the application.
Multi-class applications (one application with multiple classifications) are permitted.
Pursuant to the new federal law issued on December 2021, 12, the UAE has become a party to the Nice Agreement, and the classification of goods and services is based on the classification of the Nice Agreement. However, trademarks related to alcoholic beverages will not be registered, no matter what category they belong to.
Registration of collective trademarks is also permitted.
Unlike patents, a power of attorney (signature and consular authentication required) is required at the time of filing. In addition, the priority certificate must be submitted within three months from the filing date. Furthermore, applications for world-famous trademarks require the consent of the owner of the famous trademark.
Application route
An application claiming priority can be filed through the Paris route. Additionally, the UAE has joined the Madrid Protocol since September 2021, which is scheduled to come into force from December of the same year.
Flow from application to registration
① Application publication
It is not done because there is no system.
②Substantive examination
There is no review request system. The main reasons for non-registration are as follows (Articles 3 and 10 of the Trademark Law).
- (i) Trademarks lacking distinctiveness
- (ii) Trademarks that are contrary to public order and morals
- (iii) Geographical names that may cause confusion about the origin of goods and services.
- (iv) Misleads the public or contains false information regarding the source/origin of goods and services;
Marks and marks containing fictitious, imitated or forged trade names - (v) Once registered, consumers will be informed of the identity of goods identified by the mark and similar goods;
A mark that, if causing confusion, would be a translation of another mark that is well known or registered. - (vi) Marks incorporating national or foreign emblems or currency;
→ ★Registration was possible before the 2002 law revision. - (vii) A trademark that is the same or similar to an already registered trademark for the same goods or services cannot be registered.
Furthermore, even if the trademark is used for goods or services different from this registered trademark, if its use indicates a relationship between the goods or services and the trademark right holder, or there is a risk of harming the interests of the trademark right holder. , cannot be registered.
③Protection of well-known foreign trademarks
Internationally well-known trademarks cannot be registered unless the original owner (or his agent) requests registration (Article 4 of the Trademark Law).
If any of the following applies, registration will not be permitted for goods or services that are not identical or similar to those for which a well-known trademark is registered.
b) If the use is likely to harm the interests of the owner of the registered trademark.
④Office action
If the application meets the registration requirements, a decision on trademark registration will be made within 30 days from the filing date (Article 11 of the Trademark Law).
The Trademark Division normally issues a preliminary examination report within six to eight weeks from the filing date. After one or more such reports, a decision may be made to reject, permit, or conditionally permit the mark.
An appeal against a decision of refusal can be filed with the Committee within 30 days (Article 12 of the Trademark Law).
⑤ Occurrence, duration, and opposition of trademark rights
Once the application is approved, the Ministry will, prior to registration of the trademark, publish the trademark at the applicant's expense in the Official Gazette and two Arabic daily newspapers published in the UAE (Article 14 of the Trademark Law). .
Interested parties shall be notified from the date of the last public notice.Within 30 daysYou may file an objection.
★Please note that the period for filing an opposition is short.
When a trademark is registered,The effect of registration is retroactive to the filing date.(Article 16 of the Trademark Law).
Duration starts from the filing date10 years. Upon application, it can be renewed repeatedly in 1-year increments without a new examination (Article 3 of the Trademark Law). An application for renewal must be made within one year before the expiration of the term, but a three-month grace period is allowed.
*From around July 2019, renewal agency fees have been significantly reduced. (7 category AED1 (USD10,000) →AED2,725 (USD 6,700))
According to an announcement by the UAE, statistically, approximately 2021 trademarks were renewed and registered in the four months from January to April 1.
There is no defensive mark system.
⑥Cancellation trial
For erroneous registrations, interested parties may seek a court order to cancel the trademark registration (Article 21 of the Trademark Law).
If it is proven that a registered trademark has not been used for five consecutive years, a competent civil court may, upon request from an interested party, order the cancellation of the trademark registration (Article 22 of the Trademark Law). Article).
⑦Trademark infringement, etc.
The following persons shall be punished by imprisonment and/or a fine of not less than AED 5,000 (Article XNUMX of the Trademark Law):
- Any person who imitates or imitates a registered trademark in order to mislead the public, and any person who illegally uses an imitation trademark or a counterfeit trademark.
- Any person who maliciously uses a registered trademark belonging to another person on his or her own product, or any person who uses such trademark illegally.
- A person who knowingly sells, offers to sell, distributes, or intends to sell a product that has been imitated, imitated, or bears an illegal trademark.
- Any person who knowingly provides or offers to provide services under a trademark that has been imitated, counterfeited, or unlawfully used.
★Administrative remedies for trademark imitation are available:Abu Dhabi, Sharjah and Dubai emirates only. Please note that it is currently not available in the other four emirates.
References
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)
③ Japan Institute of Invention and Innovation, Support Project for Countermeasures against Foreign Industrial Property Rights Infringement, World Industrial Property Rights System and Countermeasures against Infringement of Industrial Property Rights
Overview mini guide:http://iprsupport-jpo.go.jp/miniguide/pdf/Arab.html
④ Research report on the actual state 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)
⑤Emirate News Agency News dated May 2021, 5 (see September 4, 2021):https://wam.ae/en/details/1395302932416
⑥Middle East Intellectual Property Newsletter Vol.56 (September 2021, JETRO)
⑦ [Middle East IP Information] United Arab Emirates (UAE) joins the Madrid Protocol (September 2021, 9, JETRO Dubai Office)
⑧Middle East Intellectual Property Newsletter Vol.60 (January 2022, JETRO)
Patent attorney advisor Ichijo Matsumura