Removal of Unified GCC Patent System

The Gulf Cooperation Council, also known as the Cooperation Council for the Arab States of the Gulf, is a trade bloc that involves six states: Bahrain, Kuwait, Oman, Qatar, Kingdom of Saudi Arabia and United States of Emirates. The former Patent Regulation system came into force after the GCC Patent Regulation and the Statute of the GCC Patent Office were granted approval during the 13^th Summit meeting held in Abu Dhabi on 21 and 2 September 1992. The system was solely for protection of the patent in the six states of the GCC.

The major change is that the GCC Patent Office (GCCPO) will cease to operate the unified filing system for the GCC member states, effective 4^th January 2021. However, the patent protection can be attained at the national levels in individual countries. The meeting resulted in an amended GCC Patent Regulation issued in May 2021 and was implemented in November 2021.

GCC, Patent Unified System, Patent regulations

Article 32 of the GCC Patent Law confers the authority on the Commercial Cooperation Committee to issue the implementing regulations of the law. With reference to this Article, the Committee approved, in its sixtieth meeting held on 27^th June 2021, on the implementing regulations amending for the GCC Patent System. The implementing Bylaws of the amended law were published on 1^st November 2021 and were effective from 1^st February 2022. The new Bylaws define and explain the roles of the new committees as well as authorities established, the procedures involved in their work, governing law and the relationship between the national offices and the GCC Patent Office.

The key change was brought in the introduction of Article 1 (bis) and its provisions wherein the GCC Patent Office may only accept the new patent filings and examine them at the request of the GCC national offices. In all cases, no patent will be granted without the approval of the requesting national office(s). The patent granted shall only be enforceable in the country or countries which have requested for the registration. The system is different from the previous one wherein the applications were independently received, examined and granted by the GCC and such applications were automatically valid in all the six member states.

Based on the new changes, the new applications shall be accepted based on the following conditions:

• The GCC Patent Office will accept and handle the patent applications, their examination, prosecution and grant, only when requested by the Member State(s).
• The grant of patents will be subject to the approval of the Member State(s).
• The granted patent shall only have effect in the requesting State(s).

Key Amendments made by the Bylaws:

1. The Implementing Bylaws provide an option to the national offices to elect the GCC Patent Office as the filing, granting and examination authority. All the applications have to be given serial numbers according to the date and time of submission post the payment of requisite fees.
2. The Byelaws provided different options with the national offices to elect the GCC Patent Office for applications. First, the patent office received the patent application and then examines it formally in accordance with the existing laws. Then, it is referred to the national competent authority within 120 days and further steps are carried on by the authority. The second option is that the patent office examines the application formally first and after it passes this stage, the application is substantively examined for the basic requirements of patents. The application shall then be referred to the national competent authority for observations to be provided within 30 days. The national competent authority can then provide its decision for granting the patent or not. The last option is that the patent office completes the activities from receiving the application to granting the patent on its own. Under this, after a formal and substantive examination, the national competent authority is asked for the comments. If no comments are received within the stipulated time frame, then the grant shall be automatic and in case, the authority rejects the application, then the same shall be communicated to the applicant.
3. After this amendment, the name of the country/countries in which the protection is sought must be provided on the first page of the patent issued by the office.
4. In case, the country/countries appoint the GCC Patent Office to act as the filing, examination and granting authority, the authority must transfer the annual fee for the patent granted to the concerned authority.

Thus, these are the main changes brought by the implementing Bylaws in the gulf countries.

Additionally, Articles 6 and 7 of the new Regulations set out the requirements for filing a ‘provisional document’. The document is available for the applicants who wish to demonstrate their invention publicly at a formal exhibition in the GCC state and seek a temporary protection for a potential invention. The document shall be valid for up to six months from the date of formal opening of the exhibition. The applicant can then apply for the registration without showcasing the novelty again.

The fees for the applicants have also been reduced. It is set at SAR 1500 (USD 400) for individual applicants and SAR 3000 (USD 800) for corporate applicants.

Therefore, the new model of the GCC Patent System is a positive step towards creating a stringer and efficient patent system in the region so that it is closely harmonised with the international patent systems.   

Conclusion

The removal of a unified patent system and the key changes brought forward by the rules and regulations clearly indicate the benefits and the complications of the future. The applicants are benefitted because they need not apply twice in the national office as well as the GCC patent office to attain national as well as regional registration respectively. Under the new system, the national offices shall be responsible of attaining the registration in the requested country or countries by the applicant. Moreover, the national authority will also be able to request the patent office or competent authority to process the application and examine it to subsequently pass the grant. One of the drawbacks can be that pressure and multiple applications as well as processes might pile up for the patent office once the national authorities pass on their work. Therefore, the future holds the way in which proceedings shall be carried on.

Author: Tanya Saraswat – a student of  Institute of Management Studies (NMIMS), in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com. or at Khurana & Khurana, Advocates and IP Attorney.