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We are excited to share the latest edition of the Law Update, beautifully and appropriately titled “Sustainable Horizons: The Saudi Arabian Vision.” Giving special honor to the Kingdom’s 2030 vision, this update focuses on a collection of both informative and inspiring articles.
For those in construction, you can learn about how the tendering environment impacts risk-pricing for contractors, the updates on the legal framework of the construction industry and how contractors can protect themselves against financial difficulties.
There is good news too from the kingdom’s banking sector, from which the practice of “Open Banking” is being pushed for! But what is open banking? We’re answering that too.
Also . . . Are there any women trail blazers in Saudi Arabia you can name? We’ll help you with that. We cover how the Middle East has been making strides in empowering women in the entrepreneurial space,most notably in STEM fields.Read the full edition
The Saudi Food and Drug Authority (“SFDA”) published a draft initiative, the “Procedure to deal with patents when registering generic products in SFDA” (the “Initiative“). The Initiative has been published on the Saudi Public Consultation Platform website for consultancy purposes and the SFDA has invited the public and pharmaceutical companies to submit their feedback by 16 June 2022.
The Initiative, as reported by the SFDA, aims to raise the level of transparency in the procedures of the SFDA, enhance confidence in the guidelines for patent registration of pharmaceutical products, and facilitate the procedures for registering generic pharmaceuticals.
The Initiative outlines the procedure for a generic company to register a generic product with the SFDA.
The SFDA will request a generic company to submit a Freedom to Operate report (“FTO”) with an acknowledgment that the generic product does not infringe on any existing patents. In case the generic company submits such an FTO, the SFDA will accept the product registration request. In contrast, in absence of such an FTO, the SFDA will reject the request.
In case the originator company believes that the generic product infringes over its KSA patent, the originator company will need to lodge a claim at the commercial courts and obtain a judgment in its favour in order for the SFDA to cancel the generic product registration.
Under the Initiative, one of the IP agencies listed at the Saudi Authority for Intellectual Property (“SAIP”) in KSA should prepare the FTO that is to be submitted to the SFDA. The FTO must be submitted within sixty (60) working days from the date of the submission of the product registration application.
In such a case, the generic company is not required to submit a FTO when submitting a product registration application. If there is no patent protecting the originator product in KSA, the SFDA will accept the product registration request.
For a new registration of an originator product, originator companies must submit a copy of the patent of their product issued by the SAIP in the product registration file submitted to the Authority.
In case a valid patent in KSA has not yet been granted at the time the originator company submits the product registration application to the SFDA, the patent can be submitted within thirty (30) days of its issuance.
With respect to originator products already registered at the SFDA and which are already protected by a valid patent in KSA, the originator company must submit the valid patent to the SFDA within thirty (30) days from the publication of this procedure.
If an originator company believes that the generic product registered with the SFDA infringes on their originator patent, they may raise a case at the commercial courts in Saudi Arabia.
If the commercial court rules in favour of the originator company and the decision is unchallenged, the SFDA will de-register the generic product in Saudi.
In order to ensure that Al Tamimi’s clients’ opinions and feedback are well heard by the authority, we will be preparing and submitting feedback on behalf of our clients. Please find the link to access the complete Initiative here.
Please email us at 3IP@tamimi.com by 15 June 2022 if you would like to share your feedback, recommendations and/or comments regarding the initiative.
If you have any queries, please feel free to reach out to us.
Partner, Head of Innovation & Patentsah.firstname.lastname@example.org
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