Navigating the GCC Patent Office’s New Working Model
Since granting its first patent in 2002, the Gulf Cooperation Council (GCC) Patent Office has been the regional office for securing patent protection in the Kingdom of Saudi Arabia, the United Arab Emirates, the Sultanate of Oman, the State of Kuwait, the State of Qatar and the Kingdom of Bahrain (the GCC Member States).
However, recent changes to the local laws have brought about a seismic shift in the way patents are granted in the GCC and the scope of their protection.
How did the old system work?
Before January 2021, you could apply for a unified GCC patent. In other words, if your patent was granted, your invention would be protected in all the GCC Member States. One application for protection in six jurisdictions.
However, this system was not without its flaws. With the previous process, applicants had the option to file two requests for the same patent, both a national and GCC application, which were then filed and granted separately. However, with this independence there was little co-ordination between the regional patent offices and the GCC.
Given that the patent’s validity would be open to challenge, the law has now been amended.
What changes have been made?
There are two significant changes. First how patents are filed and granted. The second is the scope of the protection afforded by patents granted by the GCC Patent Office.
The GCC Patent Office now only handles patent applications that have already received prior approval from a national patent office in the GCC.
The new process is:
- File for a patent at a national patent office in one of the GCC Member States
- The national patent office reviews the application
- If the national patent office approves the application, it could send it to the GCC Patent Office for examination.
- However, receiving approval from the GCC Patent Office no longer means that your patent will be effective in all GCC Member States. Now, the granted patent only has effect in the jurisdiction of the national patent office you originally applied to.
While this may appear less convenient on the face of it, these changes actually tighten up the whole procedure. The GCC now has a stronger patent-granting process, which is more closely aligned with international patent systems.
What this means for you?
For lawyers, individuals, or companies who want to apply for patents in the GCC, you need to be strategic about your filing decisions.
The first thing to note is that you can no longer file patent applications directly with the GCC Patent Office. Instead, you file a patent application at one of the GCC Member State offices, and that office, depending on the availability of examiners, requests the GCC Patent Office to conduct the examination.
Secondly, you need to follow a more complicated procedure if you want your patent to be enforceable across all GCC Member States. Rather than relying on sweeping protection from the GCC Patent Office, you will now need to file an international patent application.
You can do this in one of two ways:
- File your patent application in each GCC Member State, through a direct Paris Convention application within the 12-month priority period.
- File a national phase application in each of the GCC Member States under the PCT, within the 30-month priority period
Which route you choose depends on your budget, and the length of time you need.
The PCT route takes 18 months longer than the Paris Convention route. This might be helpful to you if you need longer to evaluate the commercial viability of your invention. But if you’re ready to press ahead, you may prefer the shorter timeframes involved with the Paris Convention route.
The other determining factor is costs. Issuing under the PCT will incur high charges in filing fees, so if you have a small budget, and you only want to issue your patent in a handful of countries, then it’s advisable to send your application directly to the Paris Convention.
How Welocalize can help
If you have English patent applications that you would like to file in the GCC Patent Office, Welocalize can translate your documents into Arabic. Our translators are fluent in both English and Arabic, but also have the essential knowledge of IP terminology and legal lexicon to provide you with accurate, reliable translations.
For those clients with an international strategy for your patent portfolio, Welocalize can manage the entire process for you. We provide the highest quality translation services, and we file patents all over the world on our clients’ behalf.