Patents & Trademarks
The key facts about patents & trademarks in the UAE. Prepared in association with STA, a leading law firm in the UAE, this is an extract from The Pharma Legal Handbook: UAE, available to purchase here for GBP 75.
1. What are the basic requirements to obtain patent and trademark protection?
In the United Arab Emirates, patents are granted if the applications meet the criteria of Novelty, Inventive Concept (also known as Non-obviousness) and Industrial applicability.
2. What agencies or bodies regulate patents and trademarks?
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.
The UAE operates under two systems, the PCT system for domestic patents, and the GCC Patent system. The latter 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.
Furthermore, the UAE is a signatory to several international and regional treaties on patent protection, including the World Intellectual Property Organization (WIPO) Convention, the Patent Cooperation Treaty (PCT), the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which govern the registration of patents in pharmaceuticals.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
Categories of products, substances, and processes that cannot be protected by patents include:
- Plant varieties, animal species and biological methods of producing plants or animals.
- Diagnostic methods, treatments and surgical operations.
- Scientific and mathematical principles, discoveries and methods.
- Guides, rules or methods of conducting business, or performing mental activities or playing games.
- Inventions that violate public order or morals, or relate to national defence.
4. How can patents and trademarks be revoked?
In the event of patent or trademark infringement, where the patent/trademark holder exploits the invention by preventing a third party from manufacturing, using, retaining, selling or importing the patented product or process (or product derived from a patented process), the patent or the mark relied on may be cancelled in civil court.
5. Are foreign patents and trademarks recognized and, if so, under what circumstances?
Yes, foreign patents and trademarks belonging to foreign companies or inventors also have a pathway to recognition. A Power of Attorney could be granted to a UAE-based law firm, or any other recognized entity to complete the application process. The aforementioned Power of Attorney shall also accompany the application documentation that must be submitted to the UAE Embassy for approval and legalization.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
While data protection is not specifically protected, knowhow is, under Article 1 of the Patent Law. “Knowhow” is defined as information, data or knowledge of a technological nature acquired through a profession, which has practical application.
As per Article 39 of the Patent Law, knowhow is protected from unlawful use, disclosure, or announcement by third-parties as long as it has not been previously been published, or made its way into the public domain. As per Article 42 of the Patent Law, any such unauthorised use is deemed illegal.
The Drug Control Department of the MOH reviews applications for marketing exclusivity for pharmaceuticals under the Patent Resolution.
It should be noted that marketing protection granted in another country expires at the same time as its patent coverage expires there. The Drug Control Department will not approve a product of similar composition, unless the patent period of the originator has expired in the country of origin.
In case an applicant has obtained patent protection in a WTO signatory state, and is subsequently commercially authorized to promote this invention there, then , as per Article 71 of the Patent Law, the applicant may be entitled to exclusive marketing rights in the UAE.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
While for some GCC countries, the position is unclear with respect to the patentability of second medical use inventions, the United Arab Emirates has adopted a firm stance of guaranteeing patent protection of second medical use inventions under their respective patent laws.
Second medical use inventions refer essentially to medical discoveries related to new uses of known chemical/medical substances. These include the use of a known medication for the treatment of another disease not originally contemplated upon by the medication-innovators, the use of a new dosage regime for administrating a drug producing a new therapeutic effect, and use of a medication for the treatment of a new patient demographic that is not covered by the original bandwidth of the medication.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
As elucidated upon in Question 5, the UAE Embassy must issue an approval for a patent or trademark license agreement with a foreign licensor.