News & insights

Saudi Arabia: A Review of the Patent Protection System

May 30, 2012

Saudi Arabia is the largest and richest of the Gulf States. Its wealth derives mainly from its vast reserves of oil and natural gas, which places the country as the largest exporter of petroleum and give it a leading role in the Organization of the Petroleum Exporting Countries. It possesses about one-fifth of the world’s proven petroleum reserves. The Intellectual Property framework of Saudi Arabia has evolved to protect the different intellectual properly rights and to cope with the rapid globalization and technological change. Both globalization and technological advancement have presented significant economic opportunities and challenges to the IP system. As a result, IP rights have become increasingly important in the country, but many of the challenges facing the IP system have yet to be addressed.

The Patent Office in Saudi Arabia is located at the King Abdulaziz City for Science & Technology, an independent scientific organization of the Saudi Arabian Government established back in the year 1977. The Patent Office’s main activities and objectives are to:
(1) Apply the patent law and its implementing regulations: Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Designs
(2) Grant Saudi patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Designs
(3) Establish a Registry for the collection of local and foreign Layout Designs of Integrated Circuits, Plant Varieties and Industrial Designs
(4) Publish the Patents Gazette
(5) Encourage the inventiveness of Saudi nationals.
The Office has taken a number of measures during the past years to hire and train examiners and translators in order to adequately handle patent applications.

Legislation
Law no. 159 on the Protection of Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Models.

Types of Patents
– Patents of Invention
– Divisional Patents

Priority Claim
Saudi Arabia is a member of the Paris Convention. Applicants can benefit from a right of priority of 12 months to file a corresponding Saudi patent application.

Patent Cooperation Treaty
Saudi Arabia has joined the PCT but still the entry of national phase of PCT application is not possible as the relevant regulations and laws have not been issued, we expect the implementation of PCT within next 6-12 months.

Definition of an Invention
An invention must be novel, involves an inventive step and capable of industrial application. The invention may be a product, an industrial process or relates to either (Article 43).

Types of Claims
Product and process claims are acceptable. When a patent is granted for a process, any product made directly by such a process is also protected (Article 47(b)).

Exception to Protection
An invention is not patentable if it is: a discovery; a scientific theory or mathematical method; an aesthetic creation such as a literary, dramatic, or artistic work; a scheme or method for performing a mental act, games or business methods; the presentation of information; or a computer program.

Examination
– Novelty:
the invention must never have been made public in any way, anywhere in the world, before the filing date or the priority date.
– Inventiveness: an invention involves an inventive step if, when compared with what is already known, it would not be obvious to someone skilled in the relevant field.
– Industrial applicability: an invention must be capable of being made or used in some kind of industry.

Novelty
Absolute novelty is required. Any act that makes an invention available to the public before the filing date or priority date has the effect of barring the invention from being patented in Saudi Arabia (Absolute Novelty). Examples of acts that can make an invention available to the public are publications, sales, public oral disclosures and public demonstrations or use, etc. However, the patent application can still be filed if disclosure was very limited and can not be cited by the examiner. Also, a one year grace period is available if the disclosure of the invention was proven to be made without the knowledge or consent of the inventor (Article 44).  Wrong statement article 44 if disclosed within the priority period, but the exception is under article 30 of Implementing Regulations where the grace period is 6 months if the disclosure occurred because of abusive action.

Application Workflow
A formal examination is conducted first. If application fails to meet all the set requirements, the applicant will be notified and will be given a period of 90 days to complete the application. Once completed, the application will proceed to substantive examination. The examiner will assess the application for patentability (novelty and industrial applicability). If the claimed invention is not patentable, the applicant will be requested to present counter-arguments within 90 days from notification date. If the claimed invention is patentable, the applicant will be requested to settle the grant and publication fees. Accordingly, the letters patent will be issued and the decisions to grant the patent will be published in the Patent Official Gazette for opposition purposes.

Opposition
Oppositions may be filed within 90 days from publication date before the Board of Grievances.

Protection Term
The term of protection is 20 years from filing date.

Annuities
A maintenance fee is due annually on patents and is payable the first 3 months of each calendar year following the year the patent application was filed. There is a 3-month grace period for late payment with a surcharge.

Compulsory Licensing
A patent has to be worked. If the patent is not being fully exploited by the patentee within 4 years from the date of filing or 3 years from the date of grant, the patent will be subject to compulsory licensing under the provisions of the law.
Naming of the Inventor on the Letters Patent
Compulsory

Employer and Employee’s Rights
Employer’s Rights
The employer shall be the patentee
(1) if the invention is made in execution of a contract or a commitment for the execution of inventive efforts, unless the work contract stipulates otherwise, or
(2) if the employee would not have developed the subject matter of the protection had he not used facilities, means or data made available through his employment
Employee’s Rights
The employee has the right to receive a remuneration to be agreed upon with the consent of both parties or assessed in light of the various circumstances of the contract of employment and the economic importance of the subject matter of the protection. Any special agreement depriving the employee of this right shall be null and void.
General Provisions
A patent application filed by the employee within two years from the date of termination of employment will be considered as if submitted during employment.
All previous provisions will apply to government employees.

Patent Linkage
Requests for marketing approval of generic drugs must include details on the corresponding patent if available (filing no., filing date, and country of grant). The SFDA will then contact the Saudi Patent Office to confirm whether a patent is involved before giving marketing approval. The GCC Patent Office is not usually contacted.

Filing Requirements
1. Power of attorney, legalized up to the Saudi Consulate
2. 2 copies of the specifications in English with Arabic translation
3. 2 sets of drawings in Arabic and one in English.
4. Deed of assignment from the inventor(s), legalized up to the Saudi Consulate
5. Copy of priority document, if priority is claimed, certified.
Item 3 must be submitted at the time of filing. Document 5 must be submitted within 12 months from priority date.
Documents 1 and 4 may be submitted within 1 month from filing date.

GCC Protection
Patent protection in Saudi Arabia can also be obtained through the Gulf Cooperation Council unified patent registration system (GCC patent law of 1999).

2011 Figures
Saudi Arabia ranked first among the Arab countries in the number of patents granted for the year 2011 which amounted to 147, based on WIPO sources. It also ranked first in the number of patents filed in the same year which amounted to 78.

Should you have any questions, or require any additional information, please do not hesitate to contact us at info@sabaip.com