The UAE government has announced proposals to introduce major amendments to the IP regime in the UAE. These proposed changes will have an impact across three areas:
- Confidential Information – Introducing, for the first time, a mechanism for protecting confidential information through the civil courts;
- Patent And Design Protection – Introducing numerous improvements to the current regime, including, clarifying the test to be applied for assessing what constitutes a patentable invention and extending the term of protection for registered designs; and
- Integrated Circuits – Introducing, for the first time, protection for layout designs for integrated circuits.
The biggest impact of the amendments is likely to be in relation to the protection of confidential information. The proposed amendments will for the first time:
- enable rights in confidential information to be enforced by way of an injunction;
- allow parties to non-disclosure agreements to enforce their rights by way of an injunction;
- provide a claim for damages in the event of unauthorised disclosure of confidential information;
- clearly define what constitutes protectable confidential information (broadly defined as information which is (i) confidential, (ii) has commercial value, and (iii) is subject to reasonable steps to maintain confidentiality); and
- provide specific protection for test data required for regulatory approvals for pharmaceutical and agricultural chemical products.
The proposed amendments:
- clarify the basic standards of patentability, which were not expressly stated in previous versions of the Patent Law. The Patent Law will apply the following tests for patentability of inventions in the UAE:
- novelty is to be judged on an absolute, worldwide basis;
- inventiveness is to be judged by reference to what is obvious to the ordinary person skilled in the art; and
- the question of whether an invention is capable of industrial application is to be interpreted broadly, so as to include all types of industry, including handicrafts; and
- remove the requirement that an Arabic translation of a patent application must be submitted at the time of filing. This is very positive news for patentees and practitioners alike because of the very real risks which arise when translations of highly technical patents are prepared at the last minute before the filing of priority applications.
These amendments are welcomed, although some clarification is required and further changes are desirable, such as:
- allowing decisions of the Patent Office on the examination of patents to be appealed to the courts;
- clarifying which of the two filing languages (Arabic and English) takes priority when it comes to enforcement;
- clarifying how GCC patents are to be enforced in the UAE;
- clarifying the deadlines for the payment of annuities (the current Patent Law creates a good deal of confusion between the deadline for paying annuities for international filings and the deadline for paying annuities for national phase, priority filings);
- providing a mechanism for lapsed patents to be restored, in certain limited circumstances where the patentee is not at fault; and
- clarifying an existing provision which excludes infringement by manufacturers whose use of an invention predates the filing or priority date for the patent application. It is hard to make sense of this provision in its current form as the prior use of an invention would appear to destroy novelty, rendering the invention unpatentable.
The proposed amendments:
- increase the term of protection for designs from 10 to 15 years; and
- clarify the basic standards of registerability, which were not expressly stated in previous versions of the Patent Law. The Patent Law will require novelty to be judged on an absolute, worldwide basis.
For example, the provision which excludes infringement by users of a design whose use predates the filing or priority date for the application should be removed. It is hard to make sense of this provision as such prior use would appear to destroy novelty, rendering the design unregisterable.
The proposed amendments will for the first time introduce protection in the UAE for the layout designs for integrated circuits. The amendments envisage:
- a regime under which layout designs for integrated circuits can be registered with the Patent Office (although it is unclear as to whether there will be any examination process);
- a two year priority period (from the date of first commercial exploitation); and
- a 10 year term of protection.
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