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Narrowing the gulf in patent law

The GCC, although still far from the detailed law and practice available in Europe (or one of the other four IP five jurisdictions), is continuously progressing towards a modern patent system. The agenda is quite ambitious and aims for the GCC patent to have an even higher impact in the region. It remains to be seen, however, how fast harmonization on a national GCC member state level will take place.

- Jan Wrede (Director, Dennemeyer & Associates UAE)
- Abdullah Almazroa  (Patent Counsel at the GCC PTO in Riyadh, Saudi Arabia)

The Gulf Cooperation Council (GCC) Patent Office, under the legal provisions of the GCC Patent Regulation (GCCPR), grants unitary patents valid in the six GCC member countries, ie, the Kingdom of Bahrain, the State of Kuwait, the Sultanate of Oman, the State of Qatar, the Kingdom of Saudi Arabia, and the United Arab Emirates.

Article 1 GCCPR states that, “In the implementation of the provisions of this Regulation, expressions shall have the meaning assigned to them below, except where the context otherwise requires.”

Article 1/7 GCCPR defines the GCC patent as, “The document granted by the Patent Office to the owner of the invention so that his invention shall enjoy legal protection within all the Cooperation Council States according to the provisions of this Regulation and its Bylaws.”

Under these two legal provisions, it seems to be clear that GCC patents are valid in all GCC member states simultaneously and in an akin manner. Moreover, the validation of these patents in a GCC member state occurs ex lege and does not need any additional internal procedures to that effect in any member state. According to the doctrine of territoriality, infringement is only possible in a country where a patent is in force. However, there is no GCC Tribunal or Appeal Court (like in Europe), nor is this planned for the near future. Thus, ultimately, GCC patents are enforced at the national level.

Article 26 GCCPR states that, “The competent authorities of each member state shall examine all disputes pertaining to infringement or eminent infringement of the patent. Such authority shall settle the said dispute in pursuance of the provisions of this Regulation, and of its own regulations governing national patents, if any, respectively, otherwise according to general rules.” Literally, this means that infringements of a GCC patent or counterclaims for invalidity during the entire term of the patent shall be examined by the competent authorities of each member state. Thus, the available legal remedies (like injunctions, damages, and seizures) are determined by the competent authority of that particular member state – not by GCC rules. On the other hand, the examination of the three basic validity requirements (novelty, inventiveness, and industriality) shall be carried out according to the GCCPR. For example, two infringement cases of granted GCC patents were recently discussed at the competent courts of two GCC member states, Bahrain and Qatar. The rulings of both cases were in favor of the plaintiffs and patent owners.

On the other hand, reportedly another court case in the UAE was delayed or even denied due to the reluctance of the judge to enforce the GCC patent without explicit further national laws enacted. This finding is in sharp contrast to the wording of the previously-cited rules. Incidents such as these do stress the call for a unified patent court or, at least, for a more harmonized enforcement approach. Although the total number of cases are not reaching European levels, the growing importance of patents in the entire region means there is the quite obvious need for accurate enforcement rules. In any case, all other post-grant proceedings including renewal, surrender, and changes in ownership of the GCC granted patent are determined exclusively according to the GCCPR.

Looking at the European patent system, similar to the GCC patent system, Article 64(3) of the European Patent Convention states, “Any infringement of a European patent shall be dealt with by national law.” This means that infringements of European patents in a European contracting state are determined independently under the respective national law. However, unlike the GCC, almost all post-grant proceedings in the EU like questions of ownership, validity, renewal and revocation, are determined under the national patent laws as well.

The article was first published in the Intellectual Property Magazine.

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