A Saudi Industrial Design

A Saudi Industrial Design

  1. Is it possible to register industrial design in Saudi Arabia?

Yes, under Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Design, it is possible to acquire design protection in Saudi Arabia.

  1. What can be registered as an industrial design in Saudi Arabia?

A composition of two-dimensional lines or colors or any three dimensional shape that gives an industrial product or product of traditional craft a special appearance can be registered as an industrial design.

  1. What is criteria for grant of industrial design registration in Saudi Arabia?

    Following requirements shall be met by industrial design:

    1. Novelty
    2. Visibility
    3. Distinguishing features
    4. Not necessitated by functional or technical features
    5. Design shall not be in violation of Shariah (Islamic) law.

  2. What cannot be granted an industrial design protection in Saudi Arabia?

Any products which shape is necessitated by functional or technical features are excluded from design protection. Design protection is strictly limited to ornamental and aesthetic features.

  1. How long it takes to register an industrial design?

It may take 10 to 12 months to register a design filed with King Abdulaziz City of Science and Technology (KACST).

  1. What is official cost of filing an industrial design upto grant?

Total official fee for grant of a design is USD 175.

  1. Is Saudi Arabia a member of Hague System for International protection of Industrial Designs?

No, Saudi Arabia is not a member of Hague system for international registration of designs.

  1. What kind of power of attorney is required for filing an industrial design through an agent?

A local agent/attorney requires a power of attorney whether a general or specific one before filing a patent application. The power of attorney should be executed by an authorized signatory before a Notary Public and legalized up to the Saudi Consulate in the country of the applicant.

  1. Can an industrial design be amended during prosecution in Saudi Arabia?

Yes, amendment can be made either as a result of formality examination or by submitting application to amend by applicant.

  1. How many substantive examinations are conducted for industrial design application in Saudi Arabia?

There is no substantive examination for industrial designs. Only formality examination is conducted by patent office.

  1. Can applicant claim right of priority from convention application?

Yes, Saudi Arabia is a member of Paris convention and accepts priorities from convention application.

  1. What is the limit on number of views in industrial design application?

There is no such limitation stipulated in the law.

  1. How can applicant specify part of industrial design for which protection is claimed from other parts? Are there available guidelines?

An applicant can use black lines for part of product which is claimed for protection. Any feature of product which is expressed through dotted lines will not be protected.

  1. How can applicant classify the class of products for filing design application?

Saudi Arabia has adopted international Locarno classification for industrial design applications.

  1. Can applicant withdraw pending design application?

Yes. A pending design application can be withdrawn before final decision to grant or refusal is taken.

  1. Where is appeal against refusal decision filed?

Appeal against refusal decision can be filed with a specialized quasi-judicial Patent Dispute Committee.

  1. What is term of protection for a design in Saudi Arabia, and how is it calculated?

Term of protection for a design is ten years. It is calculated from date of filing an application.

  1. Is it possible to claim color in design application?

Yes, it is possible to claim colors. Any features of product represented with colors will be registered for the same color.

  1. Can a design be amended during appeal stage?

No. In practice it is not possible to amend design application during appeal stage. This is equally applicable to appeal before a Saudi court upto any level.

  1. What is the procedure for payment of annuities for a granted industrial design in Saudi Arabia?

Annuities are paid from the year following the application filing year. An applicant must pay annuity from January 01 to March 31 in the following year.

  1. In event of more than one application for same subject matter created independently by both applicants, what is rule of priority of ownership?

Saudi Arabia follows first to file rule. Priority will be given to an applicant who files first application with KACST.

  1. Is there procedure in place for expediting processing of a design application by paying additional fee?

No. There is no such procedure in place.

  1. Is it possible to apply multiple design in a single application? What conditions are applicable to this?

The regulations of patent law does not allow filing multiple design applications in one application.

  1. Is it mandatory to register an industrial design license?

No, it is not mandatory, but advisable to record a design license agreement.

  1. What are consequences of non-recordal or registration of a license?

Non-recorded license will not be effective vis-à-vis third party in Saudi Arabia.

  1. Can an industrial design right be assigned?

Yes, it is possible to assign a registered design.

  1. Who has right to initiate design infringement action?

A registrant of design, and an exclusive licensee having right to initiate action provided in recorded license agreement may sue for infringements.

  1. How is design infringement assessed in Saudi Arabia?

There is no specific criteria in place for assessment of infringement, however exploitation of registered design or substantial part of it for commercial purpose is infringement according to law.

  1. Are there custom measures available for right holders to take actions on infringing goods?

Custom procedures are not available for design enforcement, however patent dispute committee is competent to issue any type of interim orders to stop infringing activities.

  1. Which is the competent forum for hearing design disputes?

Patent dispute committee is competent to hear design infringements cases, and invalidity actions.

  1. Can invalidity proceedings be filed by any interested party?

Yes. Invalidity proceedings can be initiated by interested party either as a fresh suit or as a defense in infringement cases.

  1. Are there administrative procedures available for design infringement cases?

No. For design infringements, there are no administrative procedures.

  1. Can an applicant acquire design registration for GCC region through single filing?

No there is no unitary filing system for industrial design in gulf region. The only route to acquire design rights is national route.

  1. Is it possible to claim damages in design infringement cases? How much damages are awarded?

In theory, damages are possible to be recovered, however in practice it is very unlikely that patent dispute committee or Saudi court will award damages. Shariah (Islamic) law is applicable to calculation of damages, which requires cause and effect relationship between infringing activity, and actual damages caused as a direct result of such acts.

  1. Is it mandatory to submit Arabic translation during filing patent application and in infringement suits?

Saudi patent office, dispute committee and courts will accept only Arabic documents or its Arabic translation by a certified translator. This includes priority documents, power of attorney, and translation of certificates in other jurisdictions used as evidence.

IP Decisions KSA