FAQ

P1: Does filing a patent application in UAE provide protection in all Gulf countries?

No, filing a patent application in UAE will provide protection in seven emirates namely Abu Dhabi, Dubai, Sharjah, Fujairah, Ras-Al-khaimah, Umm-Al-Quwain and Ajman.

P2: What is not patentable in UAE?

According to UAE Patent Law Article No. 6(1) No letters patent or utility certificate shall be issued for the following:

a. Plant varieties, animal species, or biological methods of producing plants or animals. Exceptions shall be allowed for the microbiological methods and their products.
b. Diagnostic methods, treatments, and surgical operations needed for humans and animals.
c. Scientific and Mathematical principles, discoveries and methods.
d. Guides, rules or methods followed to conduct business or perform mental activities or play games.
e. Invention that may lead to violation of the public order or morals.


P3: Are utility models granted protection in UAE under the Current Law?

Yes and the protection period is 10 years from the filing date of the application.

P4: Is there a novelty requirement? Is it local or worldwide?

Yes, worldwide novelty is required.

P5: Is the patent protection available for software alone, or must the software be combined with the hardware?

No, unless it is combined with any hardware that does not operate without the software.

P6: Can a registration be obtained for pharmaceutical products?

Yes.

P7: Is deposition of the biological material/chemical product required by the UAE Patent Office?

No.

P8: Is it possible to file an application without Arabic translation?

No, according to the requirement of patent law it is mandatory to submit the application in both English and Arabic languages.

P9: What are the supporting documents required for filing an application?

- Power of attorney from the applicant duly legalized from the UAE consulate
- Deed of assignment from the applicant dully legalized from the UAE Consulate
- Certificate of incorporation or extract from the applicant duly legalized from the UAE consulate
- Certified copy of the priority document.

P10: What is certificate of incorporation? Is it possible to submit Articles of Association instead of certificate of incorporation for Universities and Governmental entities?

Certificate of Incorporation is an official document which attests the legal existence of the company issued by a competent authority in the applicant’s country or an extract from the commercial register.

Yes, it is possible to submit the Articles of Association for Universities and Government entities and the document should be duly legalized by the UAE consulate.

P11: Is it possible to submit assignment of priority application instead of fresh deed of assignment?

Yes, we can submit an assignment of the priority application as an alternative to the deed of assignment provided that the said document assigns inventor’s right worldwide. In case more than one priority is claimed for the corresponding UAE application then an assignment of each priority is required.

P12: Is late filing of supporting documents possible?

The supporting documents can be submitted while filing the application or within 90 days from the national filing date. No extension is allowed as per the law.

P13: What effects will non-submission of supporting documents will have on the UAE application?

Non-submission of documents within the 90 days grace period will result in irrevocable lapse of the application.

P14: Will Patent Office accept supporting documents legalized by a Consulate other than UAE Consulate?

No, according to the requirements of the UAE Patent Office documents should be legalized from the UAE consulate.

However, if the documents are legalized from any other consulate further super legalization of the documents is required up to the UAE Consulate. Direct legalization is recommended for time and cost effects.

P15: Is Local attestation required of the documents for patent, design and utility applications?

No, local attestation is not required for the supporting documents of the above mentioned applications.

P16: What are the charges for legalization?

The charges for legalization vary from country to country where the legalization is carried out.

P17: Is it required to legalize the priority document?

No, certified copy of the priority document is required for application filed claiming any foreign priority for non PCT applications.

P18: Is it required to submit a certified copy of the priority document for PCT applications?

No.

P19: When will the annuities be due for patent application in UAE?

Annuities are due on the anniversary of international filing date for PCT national phase application and on the anniversary of the national filing date for non PCT application (priority and non priority application)

P20: Are annuities payable only after grant of the Patent?

No. They should be timely settled throughout the term of the patent in UAE starting from the next year of filing the application or from the PCT filing date.

P21: Is there any grace period for the payment of annuity?

Yes, Annuity should be paid within 6 months from the due date. First three months without surcharge and latter three months with surcharge.

P22: Is extension allowed beyond six months grace period for payment of annuity? Any exceptions allowed?

Non-payment of annuity within the above mentioned grace period will result in irrevocable lapse of the application. No exceptions are allowed.

P23: Is it possible to pay the maintenance fees all at once?

Yes, it is possible to pay the annual fees in advance for the entire term till the end of the protection period or in parts thereof.

P24: Does Patent Office send notifications for due/lapsed annuities?

No. The same has to be monitored by client’s agent or annuity service.

P25: Can a patent search be conducted in UAE?

Official search from the Patent Office is not possible. However, we conduct searches from our internal database among published applications.

P26: Can convention priority be claimed “Paris Convention.”?

Yes, within12 months from the date of first filing of the priority application.

P27: Is it possible to enter national phase of PCT application?

Yes, within 30 months from the earliest priority date.

P28: Is it possible to file patent application after the expiry of the deadline of 30 months for PCT national phase or 12 months for priority application?

No and grace period is also not allowed after the expiry of the deadline.

P29: What is the term of protection of a patent and from which date is it calculated? Can it be extended?

Twenty (20) years starting from the UAE filing date, (in case of PCT, starting from the PCT filing date). The term of protection is non-extendable.

P30: Are exclusive marketing rights or anything similar awarded to pharmaceutical patents in UAE?

No. They are treated like any other patents of other fields.


P31: Is a secret form of filing a model/design permitted?

No.

P32: Is Electronic filing possible for filing patent application in UAE?

No.

P33: Does the Patent Office publish the patent applications in the Official Gazette?

Yes, accepted patents are published in the Industrial Property Journal.


P34: Is it possible to obtain the status of the application from the Patent Office?

Yes, but only valid and non valid status enquiry is possible.

P35: Must assignments be recorded within a certain period?

No.

P36: Can the specifications or claims be amended after filing the application?

Yes, but before the application reaches examination stage.


P37: Is working of the invention an official requirement to keep protection in force?

Yes, within 3 years from the grant date.

P38: Is it possible to record a license or registered user as per the patent law?

Yes.

P39: What are the conditions that might lead to a compulsory license?

As per Article 24(1) of the UAE Patent Law, following conditions will result in compulsory licensing:

a) The non-working period of patent at least three years since the issuance of the letters patent has passed.
b) If appropriate efforts have been put up by the interested party to obtain the license at a reasonable price and under reasonable commercial conditions.
c) If the patentee is unable to meet the basic requirement of the masses.

 


 

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P.O. Box: 1991, Dubai, United Arab Emirates
Telephone: 00971(4)3966663
Fax: 00971(4)3966662
Email: uae@agip.com
Contact: Amjad El-Husseini (Mr)

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