Guidance to readers: This is the first part of a two-part series on various aspects of patent law in the United Arab Emirates (UAE) including statutory interpretation, dispute resolution mechanism, judicial authority, patent infringement, enforcement, rights of patent holders, procedural aspects and the like. The Patent Law practice at STA has contributed the below Article in Q&A format.
Q1. Explain the UAE Patent Law and briefly and list out the primary sources of law, applicable international treaties as well as regulation(s) surrounding both - patents and patent litigation?
The patent law in the United Arab Emirates (the UAE) applies to new inventions that result from or contain an inventive step and be capable of industrial use or exploitation. The term of protection for patents is twenty (20) years from the filing date (there is no grace period or extension available). For avoidance of doubt, patent applications filed within the United Arab Emirates extends protection only and only within the UAE (namely, the Emirate of Abu Dhabi, Dubai, Sharjah, Ras al Khaimah, Fujairah, Umm Al Qwain, and Ajman) and such applications do not automatically qualify for any protection within the Gulf Co-operation Council or the GCC. In order to avail patent protection across the GCC, a patent application can be filed before the GCC Patents Office. To understand more on the UAE Patent Law, exceptions as to grant of patent rights, patent registration procedure(s), and more, click here. Following are the principal sources of law and regulation regarding patents and patent litigation in the UAE:
l. Patent protection in the UAE is regulated under Federal Law No.17 of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs as later amended by Federal Law No.31 of 2006.
ll. The UAE is a member of various international conventions and treaties including World Intellectual Property Organization Convention (the WIPO), Patent Cooperation Treaty (the PCT), The Paris Convention for Protection of Industrial Property, The Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS) and the Gulf Cooperation Council (the GCC). Being a signatory of such treaties and conventions enables the parties to avail beneficial advantage of such treaties when considering patent protection in the UAE.
lll. The UAE operates under two systems, the PCT system for domestic patents, and the GCC Patent system which provides a mechanism for regional filings of patent applications within the GCC countries. The GCC itself is not part of the PCT system, but GCC member states are PCT members.
lV. Applicants can also apply for a patent application at the GCC Patent Office. Once the patent has been accepted and granted, the applicant is eligible for patent protection across all the GCC States.
In so far, patent litigation is concerned, the following laws and regulations (other than those listed above) apply:
l. UAE Penal Code (Federal Law Number 3 of 1987, as amended);
ll. UAE Criminal Procedures Law (Federal Law Number 35 of 1992, as amended);
lll. UAE Civil Procedures Code (Federal Law Number 11 of 1992, as amended);
lV. UAE Civil Transactions Law (Federal Law Number 5 of 1985, as amended);
V. UAE Commercial Transactions Law (Federal Law Number 18 of 1993, amended); and
Vl. Federal Law No (19) for the year 2016 (as amended) in respect of Combating Commercial Fraud.
Q2. Is it possible for parties to approach arbitration or consider mediation in resolving patent related dispute? Are there specialized courts or tribunals dealing with patent claims in the UAE? Which authority or court can the parties approach to in order to enforce patents and/or patent rights?
All civil claims pertaining to patents can be filed before local courts. Parties may consider (but are not obliged Based on expert's report and further based on submissions made by the parties, the courts will decide and pass a judgment on the claim. Arabic is the only official language accepted before the UAE Courts and shall be used during the proceedings. No other language is accepted and all the other relevant documents submitted to the court must be duly translated in Arabic.
Although patent protection is available in GCC by filing an application before the GCC Patents Office, there is however currently no centralized court system to administer and hear patent litigation claims for GCC members. Accordingly, patent claims are required to be filed before local courts of the respective GCC member state(s) as provided for under Article 26 of the GCC Patent Regulations and its Executive Regulations (as amended).
Q3. What constitutes a claim for patent infringement under UAE Laws? How are such claims generally assessed? When can patent infringement claims be _led? Can Patent owners obtain any reliefs by way of injunction? How are disputes pertaining to priority claim and invention ownership settled?
A potential claim for patent infringement arises in cases where third party illegally or wrongly engages in manufacture, sale, import or distribution of patented product or process.
Assessment of patent infringement claims generally involve a careful construction of the patent claim and comparison of construed claim with the infringing product or process.
Patent infringement claims can be filed only upon grant of patent. Such claims can be filed in the relevant Emirate where the infringement takes place.
Interim and conservatory measures are interim remedies or reliefs available for patent owners and can be applied at any time. Based on evidence provided, the courts may direct or order the defendants to immediately stop any activity or activities that contravene or violate the patent law.
Disputes relating to priority claim and invention ownership can be settled through a court order. With respect to priority claim on an invention, the first party that files will have the priority.
Q4. Is it possible for a party to represent a potential claim on their own? Who else can represent the parties before courts? Is it possible to add or remove parties during litigation?
In accordance with provisions contained in Article 83 of the UAE Commercial Companies Law (Federal Law Number 2 of 2015), the management of a limited liability company can be undertaken by one or more managers as determined by the shareholders in the company's memorandum and articles of association or through a resolution passed at the general meeting of shareholders. In line with Article 83 (2), unless the contract appointing the manager or company's memorandum and articles provides otherwise, the manager has the full powers to manage the company including representing the company before local courts. The UAE Civil Procedure Code (as amended by Civil Procedure Regulation 47 of 2018) provides under Article 26 that a company's manager or any employee (with authorization from company) can represent a claim before the local courts.
Additionally, local advocates with right of audience and representation before the courts can represent the matter(s). It is possible to add or remove parties during litigation in patent disputes in UAE provided that such a claim for altering a party or parties is made before the courts. The facts and underlying circumstances surrounding a claim may need to be reviewed and it may be possible to alter the claim parties if the local courts approve the same. This claim must be made before the courts have set a date for judgment and such an application must set out reasons why such change(s) are being sought. It may also be possible to add the name of a party to a claim as necessary party provided such application evidences reasons as to why a third person/entity is being made a party to the claim. In matters involving patent infringement, for instance, the claimant(s) may wish to add one of the subsidiaries of the defendant as a party upon knowing or realizing that the actual infringer was the subsidiary or the place where infringement actually took place was at the subsidiary.
Q5. Are patent validity and infringement claims dealt together by UAE Courts?
The invalidity actions shall be brought in separate proceedings. While the infringement proceedings are on, a counterclaim for invalidity should be filed in federal courts and a stay in infringement proceedings may be issued and such a stay shall be decided by the court. GCC patent law is not clear on invalidity issues and invalidity aspect is not specifically addressed in the UAE Patent Law. However, invalidity proceedings can be initiated by any interested party either as a new lawsuit before Federal Courts or as a defense or counterclaim. In infringement cases where lack of novelty or inventive step are claimed, the invalidation of a patent would be based on other grounds, such as misappropriation.
Q6. Please discuss the law of limitation in relation to patent claims
While the UAE Patent Law is silent on limitation aspects, other laws including the UAE Criminal Procedures Law (Federal Law Number 35 of 1992, as amended), UAE Civil Transactions Law (Federal Law Number 5 of 1985, as amended), and the UAE Commercial Transactions Law (Federal Law Number 18 of 1993, amended) will apply. The law surrounding law of limitation that applies to civil and criminal claims for patent infringement can broadly be discussed as under:
For criminal claims pertaining to patent infringement, the limitation period is five (5) years from the date the crime is committed.
For civil claims relating to compensation for misappropriation and patent infringement, the limitation period is three (3) years from the date a criminal judgment has been obtained or from the date when damages were proved (in cases where criminal judgment has not been obtained or such damages result from a non-criminal activity)
For commercial claims (in matters involving patent license or assignment of license), the general rule is that affected party may bring a claim against the defaulting licensee/party for breach of contract or other claims within ten (10) years from the date the breach occurred. For claims arising out of or relating to loss of revenue, loss of license fee, and other consideration resulting from a patent license, the limitation period is five (5) years from the due date
Q7. Do courts within the UAE consider previous judgments or decisions that have covered matters that resemble those pertaining to a dispute?
The Courts may refer to previous decisions passed by the Court of Cassation, however the judgment ultimately rests on the discretion of the judges when deciding on a dispute.
Q8. How can an infringed party _le an action to obtain a declaratory judgment on non-infringement?
A declaratory judgment is provided by the court to make parties to an action aware of their legal rights in order to avoid potential confusion so that the parties can proceed with the case after being fully aware of all their legal rights in the respective matter. However, declaratory proceedings are not provided for by the patent law in UAE and there is no procedure prescribed to obtain a declaratory judgment on non-infringement. Declarations are not available to address infringement or non-infringement aspects. Hence, an alleged infringer cannot bring a lawsuit to obtain a declaratory judgment on non-infringement.
Q9. What options are open to a patent holder when seeking to enforce its rights in the UAE
A patent owner can file for civil or criminal proceedings depending upon the type and circumstances of the case, in order to enforce its rights in the UAE jurisdiction and may be issued a temporary and/or permanent order and/or injunction by the court in order to stop such infringement immediately and/or receive compensation from such an infringer for damages (if any) resulting from any relevant cause violating the patent owners' rights and/or cause the seizure of the infringed products. The following remedies and/or penalties are available depending on the type of claim and infraction:
l. A patent owner may request the competent court to issue a precautionary seizure order for the invention, drawing, design , or for parts thereof using the industrial property of any kind, provided that infringement or other illegal activities are being undertaken in violation of the law that protects patents under Article 60 of Federal Law No. (31) of 2006 in UAE pertaining to 'The Industrial Regulation and Protection of Patents, Industrial Drawings and Designs', or in conflict with the contracts or licenses issued thereunder.
ll. In case of any violation of the patent owner's rights, the alleged infringer will be subject to an imprisonment period of not less than three months and not more than two years and (or) be charged not less than 5,000 Dirhams and not more than 100,000 Dirhams at the discretion of the court under Article 62 of Federal Law No. (31) of 2006.
lll. The court may in a civil or penal lawsuit rule to to confiscate the impounded objects or those to be impounded at a later stage. The court may also order the destruction or impairment of the objects resulting from illegal activities, including machineries and tools adopted for infringement (Article 63 of Federal Law No. 31 of 2006).
lV. The court can also oblige the convicted party to publish the decision in the industrial property circular or in one of the daily newspapers
V. The patent owner can file for monetary damages for lost profits, as well as recovery of legal fees
Vl. In case of cross-border relief, if a patent application was submitted by the patent owner to a patent office in one of the member states of the patent cooperation treaty, then through such an application the patentee shall be entitled to protect his invention in the member states in accordance with the terms and conditions provided for in the said treaty. A patent owner can therefore, apply to custom authorities in case of cross-border relief preventing infringed products from entering UAE borders.
Q10. What action can be brought against an entity if it does not pursue the activity explicitly described in the patent?
A patent specification generally describes the patented product or process with detail. The patent owner's rights (including scope of patent protection), and matters precisely covered (or; excluded) by patent are defined in the claims. The rationale and basis for suing or bringing an action against an entity for not following a patent would pave way in defining the cause of action and possible alternatives available to the complainant. In general, however, it may be possible to file a complaint before the Ministry of Economy in UAE.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.