MARCH 2016 ISSUE #3 bulletin@sabaip.com www.sabaip.com 1
IN THIS ISSUE MENA Increasing IP Asset Value through Strategic Patenting in the Region Saudi Arabia Patenting Cheat Sheet Kuwait Substantial Procedural Changes in Place UAE Laying Down the Law This image is used under the Creative Commons license. 2
INTA s 138th Annual Meeting - Orlando Dear Friends and Colleagues, We will be attending INTA s 138th Annual Meeting in Orlando, FL from May 21, 2016 to May 25, 2016. We look forward to seeing you at the conference this year. Kindly email us at inta@sabaip.com to arrange for a suitable time to meet. Sincerely, INTA TEAM Saba IP Driss Hajjaji Ghaida Ala Eddein Hisham Zahr George Jomaa Hady Khawand Shafic Eid Ramzi Tarazi Maria Abdo Marwan Haddad Zeina Salameh inta@sabaip.com www.sabaip.com
MENA: INCREASING IP ASSET VALUE THROUGH STRATEGIC PATENTING IN THE REGION Now that the patent cliff is behind us and the race to develop new blockbusters against key molecular targets is on, it is certainly time to take a step back and consider your patent portfolio and your filing strategy. With the US now operating on a first-to-file principle, there is no doubt left that filing a first application has now become an imperative. The question then is how to maximize the value of a patent portfolio? There are three general options, which depending on the company s business model, may be considered: 1. Invest and further develop the IP assets; 2. Partner the asset with a major player to mitigate the risk; 3. Sell-off or out-license the asset and reap in the potential revenues and royalties; Again, depending on the business model, the risks and the investment capital available, the decision will be made accordingly. In all three scenarios though, there is one common factor and that is increasing the value of the asset, in preparation for potential monetization. While a first patent filing will generally be made in the country of origin, i.e. US, UK, EU, and Japan, the nature of the patent sector undoubtedly will lead to broader patent coverage via PCT and in many cases, via direct Paris Convention filings for non PCT members in countries or regions with high risk but promising market size, i.e. GCC and Pakistan. Recent reports and statistics have identified the MENA as a rapidly growing region with double-digit Compound Annual Growth Rate. This double-digit growth rate far out-distances the CAGRs of the usual markets, where a CAGR of less than 5%, in some cases nearly 1%, is reported for the equivalent period. In the past decade and more, several industries have seen local development and growth in the MENA region. These include chemical and petrochemicals, pharmaceuticals (primarily generics) as well as some manufacturing related to FMCG. Some of the key markets in the region include Saudi Arabia, UAE, Iran, Egypt and Algeria. The increasing number of patent applications being filed or entered in these countries by some of the world s largest firms from various sectors is a clear indication of the interest in the region and specific countries. The noticeable improvement of patent prosecution and enforcement in the region is also an indication of the region s readiness for investments and further developments from foreign firms and local investors. What does this mean for SMEs? It means that seeking IP protection in the MENA region has to be evaluated when developing their IP strategy. This will certainly have implications on the IP budget, but it is clear the return on investment on a larger IP investment will be higher, especially when negotiating licensing deals and agreements or when being valued for a potential merger or sale. These images are used under the Creative Commons license. 4
SAUDI ARABIA: PATENTING CHEAT SHEET Saudi Arabia, the world s leading producer of oil, has been vigorously promoting innovation and the advancement of the protection and enforcement of patents. The most recent development on this front was the publication of new Implementing Regulations of the Patent Law to include provisions concerning the national stage entry of PCT patent applications. These regulations entered into force starting December 19, 2015 and are retroactive to all PCT entries. The below set of questions sum up the most important and relevant information on patenting in Saudi Arabia. 1. When should I receive my patent filing particulars? The Saudi Patent Office (SAPO) was the first office to launch electronic patent filings in the region. Applications received at the SAPO are numbered in sequential order and the filing particulars are available immediately. 2. Who may apply for a patent? According to the law, only the inventor (or the assignee) may apply for a patent. If two or more persons make an invention jointly, they apply for a patent as joint inventors and are equally entitled to the patent rights, unless they have agreed otherwise. If the applicant is not a Saudi national, then the patent application must be filed by a locally registered agent. 3. What are the novelty conditions for obtaining a patent? Saudi Arabia applies absolute novelty with regards to patents. In order for an invention to be patentable it must be new as defined in Patent Law no. 159, Article no. 44. In other words, if the invention has been described in a printed publication or has been in public use or on sale in Saudi Arabia or any other country before the date on which an application for the patent is filed, a patent cannot be obtained. The disclosure of the invention to the public shall not count if (1) it takes place during the priority period, (2) it occurs without the knowledge or the consent of the applicant during the last six months preceding the application s filing date or the date of the priority, and (3) it occurs as a result of displaying the invention in an officially recognized international exhibition in one of the countries of the Paris Union during the year preceding the filing date of the application. 4. How are patent applications examined? A patent application will first be examined to ensure that it satisfies the formal conditions provided for in Articles 8 and 10 of Law no. 159 and Part Two of its implementing regulations. The application is then published and a substantive examination will then follow upon notification from the SAPO and payment of the related fees. The substantive examination of the application is conducted on the Arabic specifications at the SAPO by technical experts. It consists of a study of the application in compliance with the legal requirements to determine if the invention is novel, inventive and industrially applicable, following a search through publications, foreign letters patent, and available literature to see if the claimed invention meets these criteria. If the examiner s decision on patentability is favorable, a patent is granted. These images are used under the Creative Commons license. 5
5. Is publication of a patent required? Upon establishing that the patent application has satisfied all the prescribed conditions, the SAPO will request from applicant the payment of grant and publication fees within a period of three months from notification date. Upon payment, the SAPO issues the letters patent and approves re-publication in the Official Gazette. 6. Can a patent application be amended? The applicant may amend the application, as indicated in the revised implementing regulations, or when required by the examiner. The description, claims, and drawings must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing. All amendments must not include new matter beyond the scope of the original disclosure. 7. When are office actions issued? If the application does not meet with the formality requirements, an office action is issued requesting that the necessary defects be corrected. If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention is not industrially applicable and/or lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. Upon notification, applicants will have three months to correct or respond to an office action, calculated from the date of issuance of the notification. 8. How are office actions processed? The applicant is notified in writing of the examiner s decision (in Arabic). The reasons for any adverse action or any objection or requirement are usually stated in the office action. The applicant must reply to every ground of objection in writing (in Arabic). On the second consideration by the examiner, the decision is made final. In case of final rejection, the applicant s reply is then limited to appeal before the Committee. 9. How long does it take for a patent application to be processed and for the letters patent to be issued? Currently, the average patent application is processed in 4 to 5 years. 10. How long does patent protection last? Patents are granted for a term of 20 years from the date of filing, subject to the payment of appropriate maintenance fees. For PCT national entries, the 20 year term is calculated form the international filing date. This image is used under the Creative Commons license. 6
11. What information does the Letters Patent show? The Letters Patent usually contains the following: (1) inventor s name, (2) name of owner, (3) address of owner, (4) agent s name, (5) filing number, (6) filing date, (7) patent number, (8) date of grant, (9) priority information (application number, priority date, country), (10) publication particulars (Gazette date and number), (11) international classification of the invention, (12) references, (13) invention s name, (14) summary, and (15) examiner s name. 12. How are annuity fees paid? The international filing date will be the filing date of a PCT national entry and the base year for calculating annuities. Annuity fees for applications will still be due between January 1 and March 31 of each year, starting with the first payment that will include any back payments the year following the entry date. The usual grace period with a late fee will still apply through June 30 of the same year. As an example, if a PCT application was filed in 2014 and entered in Saudi Arabia in 2015, then the 1st and 2nd annuities will become due in 2016. 13. Is the recordal of assignments and licenses possible? A patent is personal property and may be assigned to others or licensed. The assignee / licensee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had. The assignment or license recordal document should be legalized up to the Saudi Consulate. 14. When does infringement of a patent occur? Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within Saudi Arabia, or importing into Saudi Arabia of any patented invention during the term of the patent. If a patent is infringed upon, the patentee may sue before the Committee. The patentee may ask for an injunction to prevent the continuation of the infringement and may also ask for compensation of damages because resulting from infringement. This image is used under the Creative Commons license. 7
KUWAIT: SUBSTANTIAL PROCEDURAL CHANGES IN PLACE The Kuwaiti TMO has introduced a number of substantial procedural changes pursuant to Ministerial Decree No. 500 of 2015 published on December 27, 2015 (approving the Implementing Regulations of the GCC trademark law). The opposition period has been modified. The period will no longer end 30 days from the third publication in the Official Gazette. The opposition period will now be 60 days from publication date according to Article 12 of the regulations, bringing the procedure more in line with international standards. Based on Article 4 of the regulations, a legalized Certificate of Incorporation or an Extract from the Commercial Register must be submitted in support of a trademark application. A certificate of home or foreign registration/application is no longer a requirement. The Certificate of Incorporation or an Extract from the Commercial Register may be used for subsequent filings. Notices for renewal, as well as notices for the recordal of assignment, change of name, change of address, and change of local agent will be published in the Official Gazette. This was not the case in the past. Counterstatements in response to an opposition can now be submitted within 60 days from receipt of notification, instead of 30 days. Also, the deadline to appeal the Registrar s decision in an opposition has been extended. It is now 30 days from notification date instead of 10 days. Revised Filing Requirements POA, legalized Certificate of Incorporation or Extract from the Commercial Register, legalized Certified copy of priority document, if priority is claimed, legalized All of the above documents must be submitted within 3 months from filing date. This image is used under the Creative Commons license. 8
UAE: LAYING DOWN THE LAW In its continuous effort to boost intellectual property protection in the region, the UAE will be setting up specialized IPR courts across the country, as per Ministerial Resolution No. 137 for 2016. This applies to federal courts and hence, emirates which have their own court system, such as Dubai and Ras al-khaimah, are not subject to this resolution. The Judicial Inspection Department will provide specialized training to local judges to assist them with all the procedures and technicalities associated with IPR cases. An increased judicial competence is anticipated to result in effectively and efficiently resolving disputes. Should you have any questions, or require any additional information, please contact us at news@sabaip.com This image is used under the Creative Commons license. 9
THE SABA NETWORK Head Office Tel: +961 5 45 48 88 Fax: +961 5 45 48 44 E-Mail: headoffice@sabaip.com Algeria Cabinet Boukrami (In cooperation with Saba & Co. IP) Centre Commercial et d Affaires El Qods, BU 10-04B Cheraga 16002 Algiers, Algeria P.O. Box 86 Centre Commercial et d Affaires El Qods, Cheraga 16002 Tel: +213 21 34 11 61 Fax: +213 21 34 11 62 E-Mail: algeria@sabaip.com Bahrain Bahrain Tower, Al-Khalifa Road Manama, Bahrain P.O. Box 21013 Tel: +973 17 210 301 Fax: +973 17 224 699 E-Mail: bahrain@sabaip.com Cyprus Mitsis Building #2 14, Makarios Avenue 1065 Nicosia, Cyprus P.O. Box 21143 1502 Nicosia Tel: +357 22 755 434 Fax: +357 22 754 037 E-Mail: cyprus@sabaip.com Djibouti Tel: +961 5 45 48 88 Fax: +961 5 45 48 44 E-Mail: djibouti@sabaip.com Egypt 10 Aisha El Taymouriah Street Garden City, CP 11451 Cairo, Egypt P.O. Box 129, Mohamed Farid Tel: + 20 2 279 59686 Fax: + 20 2 279 52314 E-Mail: info@sabaip-eg.com Ethiopia Tel: +961 5 45 48 88 Fax: +961 5 45 48 44 E-Mail: ethiopia@sabaip.com Gaza E-Mail: gaza@sabaip.com Iraq E-Mail: iraq@sabaip.com Jordan 56 Prince Shaker Bin Zaid Street Al Shemissani Amman, Jordan P.O. Box 840553, Amman 11184 Tel: +962 6 464 2145 Fax: +962 6 464 2159 E-Mail: jordan@sabaip.com Kuwait Al Hajri Building Al-Shuhadaa Street Kuwait, Kuwait P.O. Box 1245, 13013 Safat Tel: +965 2 242 3428 Fax: +965 2 240 2243 E-Mail: kuwait@sabaip.com Lebanon, P.O. Box 11-9420 Tel: +961 5 45 48 40 Fax: +961 5 45 48 42 E-Mail: lebanon@sabaip.com Libya, E-Mail: libya@sabaip.com Morocco 185 Boulevard Zerktouni Residence Zerktouni Casablanca 20330 Casablanca, Morocco P.O. Box 13 921 Casablanca 20032 Tel: +212 522 251 530 Fax: +212 522 251 603 E-Mail: morocco@sabaip.com Oman Muscat International Centre Beit Al Falaj Street Muscat, Oman P.O. Box 2027 Ruwi Postal Code 112, Sultanate of Oman Tel: +968 248 111 26 Fax: +968 248 111 28 E-Mail: oman@sabaip.com Qatar Gridco Building C Ring Road Doha, Qatar P.O. Box 14035 Tel: +974 44 42 3992 Fax: +974 44 32 4106 E-Mail: qatar@sabaip.com Saudi Arabia Al Hadaf Marks Services LLC (In Cooperation with Saba & Co. IP) Al-Oula Building, King Fahd Road Riyadh, Saudi Arabia P.O. Box 61145 Riyadh 11565 Tel. +966 11 2079596 Fax +966 11 2079598 E-Mail: saudi@sabaip.com South Sudan E-Mail: southsudan@sabaip.com Sudan E-Mail: sudan@sabaip.com Syria Adib Khair Building Fardos Street Damascus, Syria P.O. Box 460 Tel: +963 11 223 6628 Fax: +963 11 222 6280 E-Mail: syria@sabaip.com Tunisia E-Mail: tunisia@sabaip.com United Arab Emirates Al Rostamani Building, Al Ettihad Street, Deira Dubai, UAE P.O. Box 42259 Tel: +971 4 2959 650 Fax: +971 4 2959 651 E-Mail: uae@sabaip.com West Bank E-Mail: westbank@sabaip.com Yemen Hadda Towers, Building #7 Hadda Street Sana a, Yemen P.O. Box 1493 Tel: +967 1 420 595 Fax: +967 1 420 596 E-Mail: yemen@sabaip.com 10