Saudi Arabia

Overview of the Kingdom of Saudi Arabia (hereinafter referred to as “Saudi Arabia”)

Saudi Arabia is a major country in the Middle East, facing the Arabian Gulf, with a population of 35.01 million people (2020), a GDP of approximately $701.5 billion (2020), and boasts the world's largest oil reserves. On the other hand, it is an absolute monarchy that is ruled by the House of Saud and abides by Islamic law, and Islamic discipline is also applied to foreigners.

The main industries are petroleum, LPG, and petrochemicals, and so far we have not seen the creation of any notable industries other than petroleum-related, but we are also focusing on establishing and nurturing research and educational institutions for the development of new energy sources to replace petroleum. It is hoped that the results will see the light of day in the future. In addition, Saudi Arabia has a large market size in the Middle East and has a high proportion of young people, so its future potential as a market is attracting attention. The number of Japanese companies operating in Saudi Arabia is 108 (Ministry of Foreign Affairs "Survey on the Number of Japanese Companies Expanding Overseas - 2021 Survey Results (as of October 3, 10)").

Along with the aim of moving away from dependence on oil, interest in intellectual property rights is increasing, and the Saudi General Authority for Intellectual Property (SAIP) was established as part of the Saudi Vision 2030 initiative. SAIP is promoting cooperation with IP institutions in various countries.

The main exports to Japan are crude oil, petrochemical products, and LPG, and the main imports from Japan include automobiles, electrical machinery, and metals. For Saudi Arabia, Japan is a major trading partner for both import and export.

Saudi Arabia is a member country of the Gulf Cooperation Council (GCC), a regional cooperation organization in the Arabian Gulf coastal region, and the GCC Patent Office is located in its capital, Riyadh. occupies a major position.

Overview of Saudi Arabia’s intellectual property system

Regarding the intellectual property system in Saudi Arabia, Table 1 shows the matters common to each jurisdiction.

In Saudi Arabia, patents and industrial designs are protected by the Law on Patents, Layout of Integrated Circuits, Plant Varieties and Industrial Designs (hereinafter referred to as the "Patent Law") issued by Royal Decree No. M/27 of July XNUMX, XNUMX. , trademarks are protected by the GCC Trademark Law.There is no utility model system.

[Table XNUMX]

*In June 2021, SAIP published the Arabic Intellectual Property Glossary (6st Ver.). Contains over 1 intellectual property terms in English and Arabic translations.

patent system

The inventor and his/her successor may be the applicant (Article 8 of the Patent Act, Article 10(2) of the Enforcement Regulations of the Patent Act). If the applicant is not a resident of Saudi Arabia, it is necessary to appoint an agent who is a resident of Saudi Arabia (Article 8 (3) of the Patent Law Enforcement Regulations).

(i) An application, specification, power of attorney, letter of assignment, and priority certificate are required (Articles 9 to 17 of the Patent Law Enforcement Regulations).

(ii) Priority must be claimed at the same time as filing.

(iii) The specification shall include an abstract, detailed explanation, claims, and drawings if necessary (Article 11 of the Patent Law Enforcement Regulations).

Measurements are given in metric units, and temperatures in degrees Celsius.

The abstract should not exceed one page. The title of the invention shall not exceed 7 words.

(iv) Power of attorney (general power of attorney possible) and assignment letter required. Submit within 60 days from the filing date, and extensions can be extended up to 2 months by paying the fee. A certified copy of the register is not required.

For applications with a filing date on or after December 7, 2022, consular authentication such as a power of attorney is not required, and it is sufficient to submit documents with an apostille. If requested by the Saudi Patent Office, the document must be further certified by the Ministry of Justice. Therefore, it is preferable to arrange the documents as early as possible. There are no costs associated with the certification process by the Ministry of Justice.

(v) The language of the application is Arabic. English translations of the specification, claims, drawings, and abstract must be attached.

(vi) The new Enforcement Regulations dated June 2019, 6 have made it possible to file applications in English. However, an official Arabic translation must be submitted within three months from the filing date.

(vii) There is no limit to the number of claims. Dependent forms of claims similar to those in Japan are possible. Jepson format, Murkush format, and functional claims are all acceptable.

(viii) A single invention or multiple inventions so related as to constitute a single general inventive concept can be included in a single application. Violation of unity is not a ground for invalidity.

(ix) Electronic filing is possible.

Saudi Arabia is a member of the Paris Convention and a member of the GCC. In addition, it joined the PCT in August 2013, and has been accepting domestic migration to Saudi Arabia since January 2015. Therefore, when claiming priority,

protection can be sought. If registered in the GCC, the patent rights will be effective not only in Saudi Arabia but also in all six GCC member countries.

Note)The GCC Patent Office announced on January 6, 2021 that it will stop accepting new patent applications. On January 1, 2023, the acceptance and examination of patent applications resumed for Kuwait and Bahrain, but for Saudi Arabia, the use of ② above is no longer possible, and patent applications must be obtained directly through the Paris route or through the PCT route. there is a need. Examination of pending GCC applications will continue.

If Saudi Arabia requests the GCC Patent Office to accept, examine, and grant patent applications in whole or in part, option 2 will be available, but it is unclear at this point whether a request has been made.

The national phase deadline for PCT applications is 30 months from the priority date.

The Saudi Patent Office is designated as an International Searching Authority and an International Preliminary Examining Authority.

①Formal examination

　Patents are under the jurisdiction of the General Patent Office (Patent Office) within the King Abdulaziz City of Science and Technology (KACST).
　The Japan Patent Office conducts a formality examination immediately after filing an application, and if the requirements are met, an application number is assigned and the filing date is fixed (Article 12 of the Patent Act, Article 8 (2) of the Enforcement Regulations of the Patent Act). If the application is formally filed, it is usually possible to secure a priority date.

　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 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.

　For PCT applications transferred to Saudi Arabia, cumulative pension payments starting from the international filing date are required during the first pension payment deadline after the transition (January 1 to March 1 of the year following the transfer).

②Application publication

　The application will be published within 18 months from the filing date, subject to payment of a publication fee. (Article 11 of the Patent Law).

③Substantive examination

(i) The prescribed publication fee shall be notified to the applicant and must be paid within three months from the date of notification. If the payment is not made, the application will be rejected and this will be recorded in the register and published in the official gazette (Article 35 of the Patent Law Enforcement Regulations).

(ii) The costs necessary for substantive examination will be notified to the applicant, and by paying the costs within three months from the date of notification, substantive examination will be started at the Saudi Patent Office (Patent Law Enforcement Regulations No. 35). Article). Therefore,There is essentially a review request system.I can say that. If the payment is not made, the application will become invalid, and this will be recorded in the register and published in the official gazette (Article 35 of the Patent Law Enforcement Regulations).

　The average period from the filing date to the first OA delivery is approximately 1 to XNUMX months, and the average period from the filing date to the date of examination decision is approximately XNUMX to XNUMX months. In XNUMX, the number of patent applications was XNUMX and the number of registrations was XNUMX.

④ Early examination

(i) The applicant shall file a claim that the content of protection has been infringed or that infringement of the content of protection is imminent, by three lawyers and two technical experts as provided for in Articles 35 to 39 of the Act. The committee can request the Patent Office to conduct the examination promptly (Article 3 of the Patent Law Enforcement Regulations).

(ii) Patent Prosecution Highway (PPH) pilot programs available with the United States Patent Office, Korean Patent Office, Chinese Patent Office, and Japan Patent Office. However, the scope is limited to patent applications related to physics, civil engineering, machinery, and metallurgy.

⑤ Spontaneous correction

　It is possible to obtain a patent. Amendments can be made within the scope stated in the specification.

⑥Patent requirements

·Novelty
　It must not have been anticipated by prior art before the filing date or priority date (Patent Law §44(a)). Geographical requirements do not matter whether domestic or foreign.

・Exception to loss of novelty
　Novelty will not be lost in the following cases (Article 30 of the Patent Law Enforcement Regulations).
(i) Disclosed during the six months prior to the filing date or priority date due to abusive conduct against the applicant or his prior rights holder;
(ii) was disclosed as a result of an exhibition at an authorized international exhibition in one of the Paris Allied countries during the year preceding the filing date;

・Inventive step
　If the prior art related to the patent application is not obvious to a person skilled in the art, it is deemed to involve an inventive step (Article 44(b) of the Patent Law). Inventive step is assessed through the use of the average person's knowledge of the technology derived from the relevant documents (Article 36(f) of the Patent Law Enforcement Regulations).

・Industrial applicability
　An invention is defined as ``a product, an industrial process, or anything related to any of the above'' (Article 43 of the Patent Law). In other words, all new products, manufacturing processes, and improvements in products or manufacturing processes are included, and medicinal inventions are also protected.

　A product is considered to be industrially applicable if it can be manufactured or used in any type of industry or agriculture, including handicrafts, fishing, and service industries (Article 44(c) of the Patent Law).

・Reason for non-patentability
　The following cannot be patented: (i) is a specific matter. Surgery, treatment, and diagnostic methods are grounds for non-patentability even if they involve animals. Plant varieties can be protected by plant variety breeder rights.

⑦Notification 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 the notification (Article 42(4) of the Patent Law Enforcement Regulations). The response period can be extended for one month. There is no need to state the extension agency costs and reasons for the extension. A telephone interview with the examiner is possible.
(ii) If you are notified of the reasons for refusal again and respond, but it turns out that the conditions for grant of a patent are not met, a decision will be made to refuse the application (Article 14 of the Patent Law).
(iii) Decisions may be appealed to a committee consisting of legal and technical experts (Articles 35 and 36 of the Patent Law).

⑧Divisional application/change of application
Divisional applications are possible until a patent is granted (Article 46 of the Patent Law). Changes to the application are not possible as there is no system in place.

⑨Duration of patent right
Once the reasons for refusal have been resolved and the publication fee has been paid, a protection document will be issued and published in the official gazette. The duration of patent rights is20 years from the filing date(Article 25(a) of the Patent Act). Trees are allowed for XNUMX years. There is no registration system for extending the term. Pension payments must be made by January XNUMXst of the year following the year in which the application was filed, and each year thereafter by January XNUMXst of the following year.

⑩ Opposition/invalidation trial
There is a post-grant opposition system and an invalidation trial system (Article 32 of the Patent Law). Interested parties may request the committee listed in ⑦ to cancel the agreement in whole or in part.

The period for filing a patent opposition is within 90 days from the date of publication of registration.

If you are dissatisfied with the committee's decision, you may file a complaint with the Appeal Board within 60 days from the date of notification of the decision (Article 37 of the Patent Law). Otherwise, the committee's decision will be final.

⑪ Third party information provision system
Not possible because there is no system in place.

⑫ Correction judgment
No system.

⑬ Obligation to implement
The patentee has not exploited or fully exploited his or her invention without justifiable reason during the expiry of four years from the date of filing of the patent application or three years from the date of grant, whichever comes first. If not, it may be subject to a compulsory license upon application by an interested party (Article 24, Paragraph 1 (a) of the Patent Law).

⑭Act of implementation
In the case of an invention of a product, this applies to the manufacture, sale, offer for sale, use, storage, or importation of the product for the purpose of any of the above. In the case of an invention of an industrial process, in addition to the use of the process, the above-mentioned acts related to the products manufactured by the process fall under this category. Exploitation by a person without legal title constitutes patent infringement.
Patent infringement is punishable by imprisonment or a fine of up to 600 million yen.

⑮International deposit of microorganisms
Since Japan has ratified the Budapest Treaty, it is possible to file a patent application that satisfies the requirements for deposit by depositing microorganisms with an international depositary authority.

design system

In Saudi Arabia, the Design Law is stipulated as part of the Patent Law, and "industrial designs" are subject to protection. Furthermore, an industrial design is defined as "a two-dimensional line or color or a three-dimensional shape that gives an industrial product or traditional craft a special appearance. (Article 2 of the Patent Law).

The design system in Saudi Arabia is outlined below. I have omitted the parts that are common to patents.

An application, industrial design data and all other relevant attachments are required, as well as illustrations (images and drawings) of the industrial design for which protection is sought.

"Industrial design data" is a document that describes the industrial design, the type of product based on the Locarno classification, the international industrial design classification, etc.

The GCC only handles patent applications, so if you want to claim priority, you will need to use the Paris route to apply to Saudi Arabia. The priority period is 6 months.

① Application publication

The application publication system is not adopted.

②Substantive examination

The substantive examination systemnot exist(Article 13 of the Patent Law). If it meets the formal requirements, it will be registered by paying the registration fee. No registration display required.
The protection period is10 years from the filing date.

③ System specific to designs

All of the partial design system, related design system, assembly design system, and secret design systemnot exist.

④Registration requirements

·Novelty
　It must not have been disclosed to the public by use or other means of visible publication anywhere before the filing date or priority date (Article 59 of the Patent Law). Geographical requirements do not matter whether domestic or foreign.

・Exception to loss of novelty
　Disclosure due to abuse of rights is the same as for patents. For exhibitions at authorized international exhibitions in one of the Paris Allies, prior to the filing date.during juneis a timing requirement (Article 30 of the Patent Law Enforcement Regulations).

・Reason for non-registration (Article 4 of the Patent Act)
(i) commercial use is contrary to Islamic law;
(ii) whose commercial exploitation is injurious to life or to human, animal or plant health, or to a significant extent harmful to the environment;

・Opposition, invalidation trial
　Similar to patents (Article 32 of the Patent Act). Since it is a non-examination registration system, if the registration requirements are not met, an opposition or invalidation trial will be used.

trademark system

The trademark system in Saudi Arabia is outlined below. Saudi Arabia previously had the Trademark Law of 2002 in force. However, it introduced the Gulf Cooperation Council (GCC) Trademark Law and Implementing Regulations, published on September 2016, 9.

*The GCC Trademark Law seeks to unify the trademark systems of GCC member countries, and all GCC member countries participate.

*Even if a trademark has been registered in Saudi Arabia under the GCC Trademark Law, if you wish to register it in another member country, you will need to apply separately.

Since Saudi Arabia is a member of the Paris Convention and the WTO, Japanese nationals are eligible to apply.

① Application publication

　It is not done because there is no system.

②Substantive examination

　There is no review request system. Examples of main reasons for non-registration are as follows.

③Office action

　Within 90 days from the filing date, if the application meets the registration requirements, a decision will be made to approve the application, and if not, the reasons for refusal will be notified.
　A response to a notice of reasons for refusal can be made within 90 days, and if a decision of refusal is made, an appeal can be filed with the Minister of Commerce within 60 days from the date of notification of the decision.

④ Occurrence, duration, and opposition of trademark rights

・There is a pre-grant opposition system. Interested parties may file an objection to SAIP within 60 days from the date of publication. In this case, the Trademark Office must also be notified of the opposition along with a copy of the notice of opposition. This will cause the Trademark Office to suspend processing until the Appeals Board makes a final decision on the objection.
- Once the decision to approve trademark registration is finalized, it will be registered in the registry and commercial law rights will arise (Article 16 of the Trademark Law). The duration is10 years from the filing date.
- Registration renewal is done by application and is renewed without a new examination.　
-There is no defensive mark system.
・It will take approximately three to four months to complete the registration procedure (if no office action is involved).

⑤Cancellation trial

- Interested parties can request cancellation of trademark registration regarding erroneous registration.
・Saudi Arabia does not require the use of trademarks as a requirement for filing and maintaining registration. However, if a trademark right holder does not use the trademark for five years without justifiable reasons, there is a risk that the trademark registration will be canceled by interested parties.

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)
③Patent News, No. 12954-12956, Economic and Industrial Research Institute
④ Points to note when acquiring and exercising patent rights in the UAE and Saudi Arabia (first edition) (Japan Intellectual Property Association)
⑤ 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)
⑥SAIP homepage:https://www.kacst.edu.sa/eng/IndustInnov/SPO/Pages/spo.aspx
⑦Survey on Saudi Arabia's intellectual property system and its operation (JETRO)

Patent attorney specialist　　Ichijo Matsumura