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Rising Challenges In Patent Prosecution In The MENA Region

January 5, 2021

The Middle East and North Africa region, more commonly known as MENA, receives its share of news in the international circuit. Saudi Arabia, for example, has been a steadily growing economy, which with the introduction and implementation of a number of reforms, has seen a sudden boom with the diversification of the economy and further opening of its borders to foreign investments. Egypt has also drawn considerable attention from foreign investment with its development of a number of industries, including manufacturing and pharmaceuticals.

The MENA region has been the stage for political and economic developments that led to a rapidly growing middle class, with a penchant for innovative products and innovation itself. A combined, relatively young population of half a billion growing at double digit rates, plays a significant role to making the region one of the fastest growing markets in the world with five year compound annual growth rate outlooks of between 9 to 30 percent depending on the field or sector.

In that same period, and with the support of at least the WIPO, EPO, and/or the USPTO, the countries of the region have established, implemented, or ratified their laws governing intellectual property.

A key development in an increasing number of countries of the region is the implementation of substantive examination leading to legally valid patents. This point has become one of utmost importance since the Patent Offices in most of the countries of the region have taken on the burden of rejecting or granting patents based on substantive examination, rather than placing the burden on the applicant meeting the patentability criteria of novelty, inventive step, applicability, unity, and compliance with local laws and regulations on allowed subject matter.

The Patent Offices of the following countries have been issuing decisions based on substantive examination: the United Arab Emirates, Saudi Arabia, Oman, Bahrain, Qatar, Iraq, Egypt, Jordan, Algeria, Morocco, and Tunisia. This is the list of most of the countries generally included in the MENA region, and only leaves out a handful of countries, such as: Lebanon, Libya, Yemen, and Kuwait. Less than five years ago, the number of countries was much smaller and excluded Oman, Bahrain, Qatar, Tunisia, and Algeria. Going back even longer, the number of countries with substantive examination was even smaller.

The quality and level of examination of course varies from country to country. The trend though has been for most countries to adopt the same strategy and refer to the International Search and Opinion (i.e. ISR and IRPR), at least for the First Examination Report (FER). For the majority of applicants, this is a welcome implementation since it provides for the possibility to adopt a similar strategy in those countries as the one adopted in most countries where the IPEA’s opinion is applicable. Most of the examiners in the countries in the MENA region, with the proper compliance and arguments on file, will look favorably at foreign grants and acknowledge their peers’ decisions. This is not to say that a foreign grant will automatically result in a national grant. The examiners have to be convinced that the objections raised are adequately addressed. This then brings us to the challenges faced by the local agents representing multinational corporations and small and medium-sized enterprises, and even in some cases, local or regional companies.

Pursuant to the laws of the countries in the region, foreign applicants have to be represented by a locally registered practitioner with a local address. Historically, the capabilities and competencies of these local representatives were primarily limited to administrative duties, as a result of the absence of any particular need for technical expertise or know-how. With a number of Patent Offices issuing technical examination reports, and in most countries in the local language, Arabic, applicants tend to depend on the local representative to fully understand the technical and legal implications and provide a plan or strategy for preparing and filing the best response to address these reports in a methodical, adequate and timely manner. In many instances, an interview with the examiner may be required. As the applicant’s local representative, the latter should be able to understand the applicant’s strategy and adequately argue with the examiner as needed to address any remarks or comments made during an interview.

Such competencies are hard to find in the MENA region, especially considering the rapidity within which the Patent Offices started issuing examination reports in order to go through the backlog created from maintaining pending applications until the implementation of the examination guidelines set in motion. Such competencies also come at an elevated price. For some local or regional IP firms, this means loss of the ability to offer the same services with the usual competitive pricing. For others, this means expanding the patent teams to include foreign patent attorneys, which comes however with a limitation due to the language barrier.

With these changing parameters, foreign applicants are now faced with additional variables when considering their global patent strategy where this now includes the MENA region. Pricing will always be an important variable to consider when looking at budgets. But the quality and competence of the team prosecuting the patent applications has become as important for at least two reasons: (1) identifying subject matter which may be patentable at different stages of the patent procurement, and (2) ensuring a streamlined prosecution with minimal office actions and the ability to proceed to grant when needed.

As the MENA region begins to attract the attention of a growing number of industries, the importance of securing legally valid IP rights and the ability of adequately enforcing those rights necessitate the identification of local representatives with both the capabilities and abilities to understand not only the legal aspects of these rights, but also their merits and validity to withstand cancellation and/or possible acts of infringement. Needless to say, this will also necessitate a review of the budgets relating to IP for the MENA region.

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