UAE introduces new Industrial Property fees: Cabinet Resolution No. (112) of 2023

Please be advised that as of 15 January 2024, UAE Cabinet Resolution No. (112) of 2023 (“Resolution”) has come into effect. The key amendments amongst others, pertain to the fees associated with services offered by the Ministry of Economy mainly patents, utility models and industrial designs.

What is the main objective of the Resolution?

The Resolution hopes to bring the UAE Industrial Property application system more in line with international standards and procedures. This is to ensure faster and more efficient operation of the application system, along with the introduction of new services and fees.

What are the changes enacted in the Resolution?

The key changes include but are not limited to:

Reinstatement of official fees for annuities: The UAE has reinstated the annuities charged, which were previously dropped in 2020 in response to the COVID-19 pandemic. There will also be a monthly fine on delayed payment of annuities. All annuities due from November 2024 will have to be paid with official fees. If the annuities payable from November 2024 have been settled earlier, they will need to be repaid with official fees.

Limitation on number of claims: The Resolution caps the number of claims at 50 per patent application.

Substantive examination based on claim categories: The Resolution divides substantive examination into 3 groups based on the number of claims. This is categorized into three groups: Group 1 (1-10 Claims), Group 2 (11-30 Claims), and Group 3 (31-50 Claims). It is also possible to submit a request for an increase in the number of claims from one group to another.

Applicant category: The Resolution has now added new categories of an applicant’s status; these are:

• Small & Medium Enterprises (SMEs)- only SMEs based in the UAE will be considered.
• Academic institutions

This brings the total number of categories to four (along with companies and natural persons).

Revival of lapsed applications: Lapsed patent applications can now be restored or revived only within nine months from the date of lapsing, contingent on the payment of specified fees. This time limit encourages prompt action to reinstate lapsed applications.

Penalty for delay in fee payments; One new approach is to charge a monthly penalty for failing to pay fees on time for any industrial property service. The fines are limited to the equal of ten months, setting a structure that encourages timely compliance.

New services: Fee adjustments for some new services stated in the UAE Industrial Property Law No. 11 of 2021 such as express examination, amendments of minor errors (instead of issuing a new examination report), amendments after grant, and re-examination after grant have been introduced in the Resolution. The purpose of these changes is to mainly improve the patent prosecution process’s efficiency and flexibility.

How can we help?

Our Innovation, Patents, and Industrial Property (3IP) expertise includes well-seasoned IP, tech transfer and commercial lawyers, patent attorneys, scientists, technical experts, and business consultants. Our diverse team consists of qualified Arabic, Western and Asian lawyers who are well versed in Middle Eastern and international legal systems and thus puts us in a unique position of being able to provide incisive advice and effective representation to international standards. Our team handles and manages patent applications across the GCC and MENA region.

For any queries, please feel free to contact Ahmad Saleh- Partner, Head of 3IP (ah.saleh@tamimi.com), Umme Salamah Tyebjee- Senior Associate (u.tyebjee@tamimi.com), Dima Al Saeed (D.AlSaeed@tamimi.com) and Mayssaa Al Hajjar (M.ALHajjar@tamimi.com) with a copy to 3IP@tamimi.com.