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ANALYSIS OF THE RECENT MAJOR CHANGES
IN GCC PATENT LAW
The major impact of the amended patent law will be felt in the extension of the term of protection from 15 years to 20 years counted from the date of filing the patent application with the GCC Patent Office. Also, the fact that the GCC Patent is valid and enforceable in all GCC States will extend protection to pharmaceutical products in all GCC states; including states that do not provide protection for pharmaceutical products such as United Arab Emirates or states that do not yet have a patent system such as Oman and Qatar.
Another major impact is related to compulsory licenses. The new amendment states that where the GCC patent granted is a product patent, the mere importation of the patented product into GCC states will be considered as full exploitation of the invention and, therefore, no compulsory license can be issued as long as the patented product is sufficiently available in GCC states.
We list hereunder the major changes to the GCC Patent Law:
1. The amended law shall not protect varieties of patents or species of animals [Article 3.2].(1)
2. Claiming Priority of another application is possible and is defined as 12 Gregorian months from the initial filing of the basic application [Article 7.2] (2)
3. The term of protection is 20 years counted form the date of filing the patent application with the GCC Patent Office. [Article 15](3). This is in conformity with TRIPS Article (33).
It is also important to note that the term of protection shall be available for patents in respect of any inventions, whether products or processes, in all fields of technology (this is in conformity with TRIPS Article 27.1).
(1) Article 3/2:
This Regulation shall not protect varieties of plants or species of animals.
(2) Article 7/2:
duration of the priority shall be twelve Gregorian months.
(3) Article 15:
The term of a patent shall be twenty years counted from the date of filing the patent application.
The previous term of protection was 15 years counted form the date of grant. While it was possible under the previous GCC patent system to file an application for a patent of importation it is not possible to file such application after the implementation of the new amendment on August 15, 2000.
4. Article 29(4) has been deleted. Article 29 prevents duplication of registration in the GCC Patent Office and in any other national office in a GCC states. It is possible now to file a patent application in one or more of the GCC states and at the same time seek convention protection.
5.The GCC Patent Office is adopting First to File system. Article 2.6(5) states that if there is more than one application for a particular invention, the patent shall be granted to the owner of the first application that has the earliest priority date.
6.The new amendments provides protection for both pharmaceutical products and process for making such products. Article 2 has been amended to extend to extend protection for new products, industrial processes and manufacturing methods. Article 3.1.4 (6) provides protection for product patents in respect of pharmaceuticals.
(4) Article 29:
Duplication of registration in the Patent Office and in any other patent office in the Cooperation Council State shall not be allowed. Implementing Bylaws shall deal with such matters.
(5) Article 2/6:
Should there be more than one application for a particular invention, the patent shall be granted to the owner of the first application that has the earliest priority date.
(6) Article 3/1/4:
Method of surgical or therapeutic treatment of the human or animal body and methods of diagnosis applied to the human or animal body with the exception of products used in any of these methods.
7. Compulsory Licenses remain available and can be granted under the amended law, subject to the detailed conditions set forth in Article 19.(7) Article 19 states that the Board to Directors of the GCC Patent Office may grant a compulsory license if the patent owner did not make sufficient exploitation of the patented invention in the member states within three years from the date of grant (Article 13). However, the provisions of Article 19 are in line with the TRIPS Article 31.
8. Payment of annuity shall be made within three months form the beginning of each year, starting from the year that follows the filing date. However, it may be paid within an additional grace period of three months and an additional fee shall be paid (Article 24.2(8) of the Implementing Bylaws).
(7) Article 19/1:
Where the owner has never exploited the patented invention, or has insufficiently exploited it according to Article (13), the Board of Directors may grant a compulsory license, with observation of the following:
19/1/1 At least three years have elapsed after the grant of the patent.
19/1/2 The applicant proves that he exerted, over a reasonable period of time, efforts to obtain license from the patent owner for an adequate compensation, under fair terms.
19/1/3 That the license is not exclusive.
19/1/4 That the license is essentially granted to meet the demands of the local market.
19/1/5 That the license decision defines the scope and terms of the license, according to the purposes for which it was granted.
19/1/6 That the patent owner shall be paid an adequate compensation.
19/1/7 That the exploitation of the patent shall be limited to the licensee. The license shall not be transferable to others except in case of change of ownership of the licensee’s establishment, or the section, which exploits the patent, provided the Board of Directors, approves such transfer.
19/2 Should the invention relate to "semi - Conductors" technologies, licensing shall only be permitted for public, general, and none commercial purposes, or to rectify practices that proved none competitive by judiciary or administrative decisions.
(8) Article 24/2:
Payment of fee shall be made within three months from the beginning of each year, starting from the year that follows the filing date. However, it may be paid within an additional grace period of three months, and an additional fee shall paid
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