Patents

PATENTS
 

The second form of Intellectual property is Patents. With respect to this form, we have two available systems and options for filing patent applications.

The first option is to file the patent application with the Saudi Patent Office, and in this regard the patent filed, in case of patent grant, will be protected only in Saudi Arabia.

Saudi Arabian government has realized the importance of guarding the right of creative people like any modern country in the world today. It has enacted laws and regulations to protect the right of creative people; among which is Patents Law, which was promulgated by Royal Decree NO: M /38 dated 10/ 6/ 1409 AH. Article (3) of Patents Law stated that the Patents Directorate within King Abdulaziz City for Science and Technology should be responsible for granting patent and insuring the protection thereof according to the provisions of this Law and its Implementing Regulations.

On the other hand, we are pleased to update you that, lately, Saudi Arabia has completed the major steps for enacting a new Patent Law which will include beside patent protection the other important rights like Industrial Designs, Semiconductors, Drawings and Plant Varieties. However, previously, these rights didn’t provide for by Saudi Patent law. The proposed Patent Law may be effective soon. As a result of joining International Conventions related to IP protection, disclosed patents filed between 7th of February and 10th of March 2004 will not be received. Moreover, Patent applications claiming priority exceeding 12 months filed after the effective date of 11th of March 2004, will e rejected.

The second option is to file the patent application with the Gulf Cooperation Council (G.C.C.) States’ Patents Office in Riyadh. The gulf Co-operation Council (G.C.C.) is a regional organization comprises of (6) Arab Countries, Kingdom of Saudi Arabia, Qatar, Kuwait, United Arab Emirates, Sultanate of Oman and Bahrain. The founding charter of the (G.C.C) States provide for formulating similar regulations, in various fields including (Economic and financial affairs, commerce, customs and communication, Education and culture. Etc.

However, the GCC Patent Office is a regional office that registers patents in the Member States of the (G.C.C.) which are: (Kingdom of Saudi Arabia, State of Qatar, State of Bahrain, State of Kuwait, the United Arab Emirates and Sultanate of Oman). Patents granted by the Office shall be valid in all GCC Member States, and shall need no further processing in any GCC Member State. Therefore, we highly recommend the second option, because it is more practical and the patent grant will be recognized and enforced in all (GCC) States including Saudi Arabia.

Thus, as you see there are two effective and enforceable Patent Laws, the Saudi Patent Law and the GCC Patent Law. However, the below information applicable to the said Patent laws, unless otherwise stated.

Patents offer inventors monopolies on their creation for specific periods, and thus provide incentives for research and development. Without the possibility of patent protection, many people might not take the risks or invest the time and money involved in devising and perfecting new products.

The main functions of the Patents Authorities are to:

1. Receive and examine applications for patents and grant patents to qualifying applicant.
2. Record assignments of patents.
3. Maintain search files of Saudi and foreign patent documents.
4. Publish and disseminate patent information.

What is a patent?
 

Through a patent, the government gives you, the inventor, the right to exclude there from making, using or selling your invention from the day the patent is granted to a maximum of 15 years from the day of grant. On the other hand, in accordance with the GCC Patent Law, the term of a patent protection shall be twenty years counted from the date of filing the patent application. You can use your patent to make a profit by selling it, licensing it or using it as an asset to negotiate funding. In exchange, you are expected to provide a full description of the invention so that all Saudis can benefit from this advance in technology and knowledge. The patents Directorate will publish your application approximately 18 months from the filling date in Saudi Arabia.

People may then read about, though not make, use or sell, your invention without your permission. Only after your patent has expired may anyone freely make, use or sell your invention. The idea is to promote the sharing of technological information while giving you a monopoly on your creation.

For the invention to be patent able, it must be a development or an improvement that would not have been obvious beforehand to workers of average skill in the technology involved. An invention shall be considered as involving an inventive step if, in the light of the related subsequent art, it is not obvious to a person of ordinary skill in the art. An invention shall be considered as capable of industrial application if it can be manufactured or used in any kind of industry or agriculture including use in crafts, in fishing or in services.

For the purpose of the two patent laws, the following shall not be regarded as invention:
 

1. Discoveries, scientific theories and mathematical methods.
2. Principles, rules and techniques of doing business, pure mental activities or playing any game.
3. Varieties of plants or animal species or biological processes used to produce plants or animals
   with the exception of microbiological processes and products thereof.
4. Methods of surgical or medical treatment of the human body or of animals and methods of diagnosis applied to the human body or to animals with the exception of products used in any of these processes.

A patent shall not be granted if the invention itself or its use is contrary to the Islamic Sharia, any patent granted to the contrary should be abrogated. Save those patents, which are contrary to Islamic Sharia, the granting of a patent to an interested party may not be withheld according to this Law. However, no patent already granted may be revoked on the grounds that the application of the invention is prohibited under prescribed rules.

You may obtain a patent for an improvement to an existing patented invention, but keep in mind that the original patent may still be in force. Hence, manufacturing or marketing the product with your improvement would probably be an infringement. This situation is often resolved by agreement between the patentees to grant licenses to each other.

When to Apply for a Patent

In  accordance with the said Patent Laws, patents are given to the first inventor to file an application. Therefore, it’s wise to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to conceive of the invention, you lose the race if a competing inventor files before you do. On the other hand, filing too soon, while you have still developing your invention, may mean omitting essential features from the application. You may then have to reapply adding to your expenses and risking possible patent disputes.

Preparing and Filing a Patent Application

Qualified Agents:

Preparing, prosecuting and following through on a patent application is a complex task. Prosecution involves corresponding with the Patent authorities, making any necessary amendments to the application, and fixing the legal scope of the patent protection. This requires broad knowledge of patents law, Patents authorities practice and knowledge that you can expect from an agent.
A qualified agent can save you from many headaches caused by such things as a poorly drafted patent that inadequately protects your invention. Hiring such an agent recommended, and most inventors do so.

A licensed Lawyer, in Saudi Arabia, specializing in patent law with many years in practices the most recommended agent to be employed for such task. Be aware of unqualified patent agents; they are not authorized to prosecute applications and are not subject to any disciplines. It is better to ask for the agent’s qualifications before hiring one. Patent agents' fees are not regulate by any laws, so that you and your agent should agree on fees before work on your application begins.

Once have appointed a patent agent, the Patent Authorities will correspond with no one else about the prosecution of your application. You may, however, change patent agent at any time.
 

Assisting Your Patent Agent

You can assist your agent to obtain the strongest possible patent and avoid unnecessary costs by providing him with the right information. You should carefully prepare a statement to cover the following points:

1. Subject matter of the invention.
2. A broad description of the invention.
3. Objectives of the invention. Its main practical advantages over existing practices or products.
4. The “preferred practice,” that is, the most appropriate use of your invention, giving details of at
   least one practical application.
5. Features of the invention that is new and distinguish it from what has come before. State these features regardless of whether they may be patented.
    
6. The scope of the invention the materials, compositions etc., used to obtain good results.
    
7. Limitations. (Can one obtain satisfactory results throughout the given range of the invention, or
   there are exceptions?).
    
8. Results of laboratory or commercial tests illustrating both preferred practice and the conditions
   under which one could expect unfavorable or hazardous results.
    
9. Lists relevant patents or use to technical articles you have already found in any literature
   search, including full details such as name of inventor, number of patent, country and date of
   issue, or name of periodical and date. Indicate the similarities and differences of practices or
   products relevant to your invention.
    
10. An indication of any disclosure you have made.
     
11. Your name, address and citizenship.
     

Examination
 

The Authorities of Patents shall examine whether the application has complied with prescribed particulars, documents and procedures. If such is the case, the applicant is invited to pay the prescribed fee. The application should not be registered unless the prescribed fee is paid. The patent examiner will assess your application to determine whether it’s in the proper format.

The next step is a study of the claims and a search among prior patents and other technical literature to find what is most closely related to the features covered in your claims. If the examiner found, upon substantive examination, that the invention complies with the prescribed conditions, the Patent Authority shall issue a decision for the grant of a patent and the Authority in the order of its issuance shall publish the decision. Where it is found through substantive examination that the applicant is not entitled to the grant of patent, the Authority of Patents shall prepare a memorandum containing the reasons for rejection and a copy thereof shall be sent to the applicant or his agent.

Official Fees

Further, in accordance with the G.C.C Patent Law, the patent shall be subject to an annual fee paid in advance at the beginning of each year starting from the year following the application filing date. Should the patent owner fail to pay such fee within a maximum of three months from the beginning of the year, he may do so within another three months period starting upon expiry of the previous one. In such case, an additional fee shall accrue. However, annual fees may be paid in advance to entirely or partially cover the validity term of the patent. If the owner of the patent fails to pay the annual fee within the aforementioned legal grace period (six months from the due date), the patent shall lapse. For the purposes of this Article, the same provisions governing the patent shall apply to the application. Should three years expire without the Office making a decision on the merits of the application, the applicant may abstain from payment of fees until the Office makes a decision granting the patent, and shall, in such case, pay all unpaid annual fees.

DOCUMENTS & REQUIREMENTS

The filing requirements and documents for Patent application with Saudi Patent Office are as follows:

1. Power of Attorney signed by the applicant, notarized and legalized up to the nearest Saudi
Consulate at the applicant’s residence. (we attached herewith a form of power of attorney).

2- Specification of the invention including Abstract, Full Description, claims, and drawings.
Detailed description must be under the following headings:

I- Title of the invention
II- Full Description:

a. Background of the invention.
b. General description of the invention.
c. Brief description of the drawings.
d. Detailed description.

3. Deed of assignment from the Inventor(s), in case the applicant is the assignee of Inventor(s).

4. Details of the applicant such as

a) Address, telephone number(s), fax number(s), if any, Telex number(s), if any.
b) If the applicant is a company or corporation, then it's registration number and date of  registration is required.

5. Particulars of home, foreign application, such particulars may include application Number(s),
filing date(s), and country of filing.

6. In case the invention has been disclosed to the public in any other country then the following
information is required:

I- Country of filing.
II- Filing dates.
III- Application number.
IV- International patent classification
V- Patent and publication date.

The filing requirements and documents for Patent application in the G.C.C. Patent Office are as follows:

1- Power of Attorney signed by the applicant, notarized and legalized up to the nearest Consulate of any of the (G.C.C.) States at the applicant’s residence.

2- Specification of the invention including Abstract, Detailed description, claims, and drawings.
Detailed description must be under the following headings:

A. Title of the invention
B. Technical field
C. Technical background.
D. Disclosure of the invention.
E. Description of figures and drawings.
F. Means of performance of the invention.
G. Method of industrial application of the invention.

3- Deed of assignment from the inventor (s), in case the applicant is the assignee of Inventor (s).

4- Details of the applicant such as

a) Address, telephone number (s), fax number (s), if any, Telex number (s), if any.
b) If the applicant is a company or corporation, then it's registration number and date of registration is required.

5- Particulars of home, foreign application, such particulars may include application Number (s),
filing date (s), and country of filing.

6- In case the invention has been disclosed to the public in any other country then the following
information is required:

I- Country of filing.
II- Filing dates.
III- Application number.
IV- International patent classification
V- Patent and publication date.
VI- Where the applicant is a legal entity, an extract of the commercial register or an official extract from the articles of incorporation, as the case may be. (duly legalized up to any on of the G.C.C States consulates.)

7- Where a priority of an earlier application filed with another country is claimed, a copy of the
earlier application together with the documents attached thereto, and a certificate indicating the
filing date and number, and the country with which the application was filed. Such documents shall be duly certified up to any one of the GCC States Consulates in the country of mother filed.

8- Floppy disk containing the specification (including drawings and claims) of the invention in English language in Microsoft word format.

In accordance with the GCC Patent Law, the required legalized documents (power of attorney, Assignment, if any, extract of the company’s commercial register and a copy of the priority documents) can be filed within (90) days from the date of the patent application.

Specifications

The specifications shall begin immediately following the abstract or at the top of a new page and
shall consist of unnumbered paragraphs in which the following matter shall be dealt with in
approximately the following order:

1. The general character of the class of article or the kind of process to which the invention relates.
2. The nature in general terms of the articles or processes previously known or used which are
   intended to be improved or replaced by resort to the invention and of the difficulties and
   inconveniences which they involve.
3. The inventive idea which the new article or process embodies, and the way in which resort to it
   overcomes the difficulties and inconveniences of previous practices or proposals.
4. A full description of the best way of using or putting into operation the inventive idea. If there are
   drawings, the description should be preceded by a list of these drawings and should be related
   to them by the use of the numerals, which appear upon them.

Drawing

Your application must include a drawing whenever one can show invention. This would include almost all inventions except chemical compositions or processes. But even these can sometimes be illustrated by a drawing. Your drawing must show every feature of the invention defined by the claims.

There are detailed, specific standards for such things as page size and quality of paper, so that issued patents are uniform in style and easy to read and understand.

Drawings must meet the following requirements:

Every sheet shall be 20 cm wide and 33 cm long and shall have a clear margin of at least 2.5-cm on all sides. Every drawing shall be prepared with clear, permanent black lines, and India or carbon ink of good quality shall be used for drawings.

All views on the same sheet shall stand in the same direction and, if possible, stand so that a shorter side of the sheet is the bottom; if a view longer than the width of a sheet is necessary it may stand so that the right-hand longer side of the sheet becomes the bottom, and if a view longer than the length of a sheet is necessary it may be divided between two or more sheets.

All views shall be on a sufficiently large scale to be easily read and shall be separated by sufficient spaces to keep them distinct, but shall not be on a larger scale or separated by greater spaces than is necessary for such purposes; there shall be no more views than are necessary to illustrate the invention adequately.

Section lines, lines for effect and shading lines shall be as few as possible and shall not be closely drawn; sections and shadings shall not be represented by solid black or washes. Reference characters shall be clear and distinct and not less than 3 mm in height; the same character shall be used for the same part in different views and shall not be used to designate different parts; a character shall be connected by a fine line to the part of the view that it designates; a reference character should not be placed on a shaded surface, but if it is so placed a blank space shall be left in the shading where it appears.

The views shall be numbered consecutively throughout without regard to the number of sheets. Each sheet of drawings shall be on white bond paper and nothing shall appear thereon except the drawing and the reference character and legends pertaining to the drawings. If your drawings do not fulfill all the formal requirements, you may be asked to submit them again later together with an additional fee.

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E-mails: attorney@aloufilawfirm.com

      

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