Restructuring Your GCC Patent Filing Strategy in View of the Amendment to GCC Patent Law

The GCC Patent Office (“GCCPO”) ceased to accept new patent filings for GCC patent applications as of 6 January 2021.

Following the 41st GCC Supreme Council meeting, held on 5 January 2021, a decision was made by the GCC Council of Ministers to amend the existing GCC Patent Law and to require the GCC Patent Office to cease receiving new filings for GCC patent applications as of 6 January 2021. The decision was announced through a statement made on the GCCPO website. The full announcement can be found here.

The GCC Patent Office is a regional GCC body which was established by the GCC Council in 1992 providing a unified patent registration system for the GCC region.

What will happen to GCC patent applications filed before 6 January 2021?

According to the communication, the GCCPO will continue to prosecute and grant patent applications filed prior to 6 January 2021, and it will continue to maintain any pending and granted applications. As patent applicant, you are not required to do any action for the time being with respect to previously filed patent applications.

Restructuring GCC Patent Filing Strategy – What are the remaining routes for patent protection in the GCC countries?

Applicants currently seeking patent protection in any of the six GCC member states are now required to file their patent applications directly to the respective GCC state’s Patent Offices. Each GCC country – UAE, KSA, Qatar, Bahrain, Oman and Kuwait – has its own national patent office.

All the GCC member states are member countries of the Paris Convention and the Patent Cooperation Treaty (PCT), so applications can be made through these routes. A national patent application under the Paris Convention in any one of the GCC countries of interest will need to be filed before the expiration of 12 months from the convention priority date. A national phase application in any one of the GCC countries under the PCT Convention will need to be filed before the expiration of 30 months of the priority date.

Some challenges are expected to occur in Kuwait as the local patent regulations are yet to be issued. Applicants can file their patent applications for the time being in front of the KW Patent Office to preserve their rights, however without further prosecution or grant of the patent applications.

Any further upcoming changes of the GCC Patent System?

There has not been much information communicated so far beside the above, and we do expect further communications to be issued within the upcoming 2-3 weeks. The new amended GCC Patent Law may come with further amendments.

We do expect further amendments towards a harmonized unified GCC Patent Law for the various GCC countries, walking away however from a unified filing system and leaving the role of patent registration to the individual countries. This will be similar to the GCC trade mark protection regime.

Our patent team will continue to monitor the situation and will send further client alerts in due course.

How can we help?

We would be delighted to help you in restructuring your patent filing strategy in the GCC region in view of the latest law amendments at the regional GCC level and at the individual GCC states level, as well as in view of the major other recent socio-economic changes in the region.

Click here to download our Patents & Designs brochure.