1. Patent Enforcement
1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant’s choice?
The UAE has no administrative authority with jurisdiction to enforce patents.
The UAE is a federation of seven Emirates – Abu Dhabi, Dubai, Sharjah, Ajman, Ras Al Khaimah, Umm Al Qwain and Fujairah. Of these seven Emirates, three have their own Court systems, namely Abu Dhabi, Dubai and Ras Al Khaimah. Therefore, an infringement occurring in these Emirates should be brought before the Courts of these Emirates. An infringement occurring in one of the other four Emirates should be brought before the Federal Courts of the UAE.
The Emirate of Dubai has a further Court System – the common law and English language Courts of the Dubai International Financial Centre (‘DIFC’). The DIFC may hear any dispute where the parties agree to its jurisdiction. It is unlikely that an infringer would agree; however, in the event of two large multi-national companies being involved in a patent infringement dispute in the UAE, they may agree to take the dispute to this Court. We believe this would be a remote scenario at this time.
1.2 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
An interim ‘conservatory measures’ order may be sought before filing of the main claim. The purpose of such orders is to search and attach infringing goods/equipment used to produce infringing goods, etc. for preservation before trial.
There are no pre-trial procedures. Once the claim is filed and the Court fee paid, the Court will assign the first hearing date and summon the parties. This will normally be within one month of the claim being filed. The Court fee is calculated based on the value of the claim. Expert fees are paid to the Court separately and at a later stage of the case.
It is common for the defendant not to appear at the first hearing, and several adjournments may be granted in order for the defendant to appoint an advocate to appear on its behalf.
1.3 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
This is not generally a feature of litigation in the UAE. However, in limited circumstances an order may be issued to seize evidence prior to trial. An interim ‘conservatory measures’ order may be sought before filing of the main claim. The purpose of such orders is to search and attach infringing goods, or equipment used to produce infringing goods, etc. for preservation before trial.
1.4 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?
Evidence will be presented during the trial (which takes place as a series of hearings over the course of 12 to 18 months).
1.5 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?
Civil trials are conducted on the basis of exchange of written memoranda and documentary evidence. In rare circumstances, the Court may call oral witnesses. The Court will also appoint an expert, who will meet with the parties. The expert then prepares and submits a report to the Court. The Court is not bound by the expert’s findings and both parties may also submit further memoranda addressing the findings of the experts. The parties may also seek leave from the Court to each appoint their own further experts.
Further arguments may be raised at any time in first instance proceedings. In the event of further arguments, the other party would be given the chance to respond.
In the event of a criminal prosecution for patent infringement, oral witnesses may be called by the Prosecutor.
1.6 How long does the trial generally last and how long is it before a judgment is made available?
First instance proceedings generally take 12 to 18 months to complete but can be longer, particularly if the expert delays submission of his/her report or if the parties seek to appoint further experts.
Judgments are rendered orally. The written judgment is usually available about one or two weeks after the oral judgment. Appeal periods are calculated from the date of the oral judgment.
1.7 Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?
Only Court of Cassation judgments are published. Other level judgments cannot be obtained.
1.8 Are there specialist judges or hearing officers, and if so, do they have a technical background?
The Federal Court in Abu Dhabi has recently established an Intellectual Property division to hear intellectual property-related cases. The judges sitting in this division do not have a technical background but have had additional training in intellectual property law, including patents. The Court appoints experts, who may be technical experts, in almost every case.
As mentioned in the answer to question 1.1 above, an infringement matter in Dubai, Abu Dhabi or Ras Al Khaimah would need to be brought before the Emirate level courts of those emirates. In the other four Emirates, the Federal Courts in each Emirate have jurisdiction. Accordingly, at this stage, the specialist division outlined above would not hear infringement matters. A revocation suit would go to this division.
1.9 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?
i) Infringement proceedings: the patentee or a licensee having rights to enforce a patent.
ii) Revocation proceedings: any interest party. This would be interpreted broadly.
iii) Declaratory proceedings: not provided for by the Patent Law.
1.10 If declarations are available, can they address (i) non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?
Declarations are not available.
1.11 Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of, but not all of, the infringing product or process?
Secondary or contributory liability is not expressly provided for in the Patent Law.
1.12 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?
Yes. Patentee rights include the right to prevent importation of products made using the patented process.
1.13 Does the scope of protection of a patent claim extend to non-literal equivalents?
There is no clear jurisprudence at present. We would hope that the new Intellectual Property Division of the Federal Court will provide guidance on this in its decisions.
1.14 Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence e.g. where there is appending opposition?
This is not expressly provided in the legislation. Technically, raising such a defence would raise jurisdictional issues. Patents are federally granted rights. If infringement proceedings were brought in the Courts in Dubai, for instance, and invalidity was raised as a defence, then a Dubai Court would decide on validity of right that has effect across all seven Emirates.
Generally speaking, a counterclaim for invalidity should be filed before the Federal Courts and a stay in infringement proceedings may be issued.
1.15 Other than lack of novelty and inventive step, what are the grounds of invalidity of a patent?
The Patent Law does not set out defined grounds and therefore, on a broad interpretation, it may be possible to argue additional grounds such as misappropriation.
1.16 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?
It may be considered by the Court determining the infringement.
1.17 What other grounds of defence can be raised in addition to non-infringement or invalidity?
Other grounds of defence include acts carried out for non-commercial purposes (such as academic research), temporary introduction by transport means, and good faith prior use.
1.18 Are (i) preliminary, and (ii) final injunctions available, and if so, on what basis in each case? Is there a requirement for a bond?
Conservatory measures orders are the interim orders available under the Patent Law. An asset attachment order to freeze assets/funds may generally be available in some cases.
The Court may order the cessation of “the effects of an activity contravening the law”, which should effectively mean a permanent injunction. However, some commentators believe this would only apply to the infringement at issue in the case, and not to future possible acts of infringement.
However, we believe that the law should be read in line with the UAE’s international treaty obligations and allow the granting of effective permanent injunctions.
1.19 On what basis are damages or an account of profits assessed?
Damages or an account of profits are estimated based on evidence placed before the Court. The Court may ask an expert to assist with calculating. As there is no discovery process, there may be difficulty in having real evidence put forth to establish damages or an account of profits.
Damages awards do tend to be small (generally in IP cases, there is little jurisprudence for patent litigation) as the Courts do not yet have the experience to consider the issues in depth.
1.20 How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?
The Execution division of the Court will execute the orders.
1.21 What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross-border relief?
As discussed above, the Court may order the cessation of "the effects of an activity contravening the law”, which should effectively mean a permanent injunction. However, some commentators believe this would only apply to the infringement at issue in the case and not to future possible acts of infringement.
However, we believe that the law should be read in line with the UAE’s international treaty obligations and allow the granting of effective permanent injunctions.
1.22 How common is settlement of infringement proceedings prior to trial?
There has been little infringement litigation as yet so no clear trends have emerged. We would suspect that settlement would be preferred in many instances given the Court’s current lack of experience which does bring uncertainty to litigants. Additionally, non-punitive damages orders and no costs orders may also act to encourage settlement.
1.23 After what period is a claim for patent infringement time-barred?
There is a general limitation period of three years from the date of knowledge for acts that cause damage. No limitation period is established under the Patent Law.
1.24 Is there a right of appeal from a first instance judgment, and if so, is it a right to contest all aspects of the judgment?
The Court of First Instance and the Court of Appeal are Courts of fact and law and therefore their judgments may be contested.
1.25 What are the typical costs of proceedings to first instance judgment on (i) infringement, and (ii) validity? How much of such costs are recoverable from the losing party?
Costs awards are generally not available. The losing party will normally have to pay the Court and expert costs.
Typical costs of proceedings will vary greatly depending on a number of factors:
1.26 For jurisdictions within European Union: What steps are being taken in your jurisdiction towards ratifying the Agreement on a Unified Patent Court, implementing the Unitary Patent Regulation (EU Regulation No. 1257/2012) and preparing for the unitary patent package? For jurisdictions outside of the European Union: Are there any mutual recognition of judgments arrangements relating to patents, whether formal or informal, that apply in your jurisdiction?
This is not applicable in the UAE.
2. Patent Amendment
2.1 Can a patent be amended ex parte after grant, and is so, how?
Yes, the patenee may cancel the whole or part of a patent at any time by application to the Patent Office.
2.2 Can a patent be amended in inter partes revocation/invalidity proceedings?
A patentee may apply to amend the patent at the Patent Office and submit these amendments to the Court.
2.3 Are there any constraints upon the amendments that may be made?
Any surrender of part or whole of a patent must not damage the rights of any other person without their specific consent in writing.
As mentioned above, in cases of partial cancellation, amendments need to be limited to ‘part of the patent’. This wording likely means that the ‘whole claim’ needs to be removed, rather than being allowed to submit true amendments.
3.1 Are there any laws which limit the terms upon which parties may agree a patent licence?
The parties generally have freedom to contact in defining the licence terms, including the scope of the licence and the territory. Licences must not exceed the period of protection of the patent and must be in writing. Licences are non-exclusive unless otherwise specifically stated and should be recorded with the Patent Office. The licensee has the right to bring proceedings for infringement of the patent if he notifies the licensor of the infringement and the licensor does not take appropriate actions within 30 days. If the licensee enforces the right, he may also seek compensation from the licensor.
Generally, contract laws will govern licences. Excessive penalty interest provisions are generally deemed invalid (under Shari’ah law, interest is not valid).
3.2 Can a patent be the subject of a compulsory licence, and if so, how are the terms settled and how common is this type of licence?
Yes, compulsory licences are available three years after granting of the patent, if the patent has not been worked or worked insufficiently.
The prospective licensee must have made reasonable efforts to secure a licence on reasonable commercial terms.
Compulsory licences may not be unconditional, must satisfy the needs of the local market, and must grant the patentee fair compensation.
An application for a compulsory licence is filed with the Court.
4. Patent Term Extension
4.1 Can the term of a patent be extended, and if so, (i) on what grounds, and (ii) for how long?
Patent extensions are not possible.
5. Patent Prosecution and Opposition
5.1 Are all types of subject matter patentable, and if not, what types are excluded?
The following are excluded from patentability:
5.2 Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents? If so, what are the consequences of failure to comply with the duty?
There is no positive duty to disclose such documents. The Patent Office may request anything it considers necessary.
5.3 May the grant of a patent by the Patent Office be opposed by a third party, and if so, when can this be done?
The grant of a patent may be opposed by a third party within 60 days of publication.
5.4 Is there a right of appeal from a decision of the Patent Office, and if so, to whom?
There is an appeal right to the Patent Committee and then from the Patent Committee to the Courts.
5.5 How are disputes over entitlement to priority and ownership of the invention resolved?
If two or more people participate in the creation of the invention, they (or their successors) will share the right to the invention.
Where two or more people claim the same invention, the first to file has priority.
A person who has had their invention misappropriated may seek the transfer of the application/granted patent to themselves through a Court order.
5.6 is there a “grace period” in your jurisdiction, and if so, how long is it?
There is no grace period available in the UAE.
5.7 What is the term of a patent?
Twenty years from date of filing or deemed date of filing or the international filing date, whichever is earlier.
6. Border Control Measures
6.1 Is there any mechanism for seizing or preventing the importation of infringing products, and if so, how quickly are such measures resolved?
The GCC Customs Law is a unified law relating to Customs matters in the six GCC countries – Bahrain, Kuwait, Qatar, Oman, Saudi Arabia and the United Arab Emirates.
The GCC Customs law “prohibits admission, transit or exit of prohibited or infringing goods…”. Goods that violate intellectual property rights are considered "prohibited goods".
Therefore in theory, patent infringements may be stopped at the border, both imported or exported. However, in practice, there is no ex offcio action available (this is restricted to trade mark infringements and certain types of copyright infringements at this time) and in order to prevent importation of a patent infringement, a Court order would be required.
7. Antitrust Law and Inequitable Conduct
7.1 Can antitrust law be deployed to prevent relief for patent infringement being granted?
There is no clear guidance on this in the law and no jurisprudence. We would consider the chances remote at this time given the level of experience of the Courts with patent infringement matters.
7.2 What limitations are put on patent licensing due to antitrust law?
There are no specific competition law provisions that directly affect the exploitation of patents. However, the Consumer Protection Law stipulates general provisions for fair competition and combating monopolies. Any contracts or agreements that aim to create or have the impact of creating a prohibited monopoly contravene this law, although this is not known to have been used specifically in relation to the exploitation of patents.
The Commercial Transactions law also covers situations relating to unfair competition and similar activities between traders, which in theory may extend to the misuse of patents.
8. Current Developments
8.1 What have been the significant developments in relation to patents in the last year?
A concerted effort to clear the backlog for examination of patent applications filed since 1994 continues. The Korean Patent Office is now co-operating with the UAE Patent Office to assist with examination of these backlogged applications.
As reported in last year’s guide, draft amendments to the Patent Law have been prepared and are presently awaiting approval by the UAE Cabinet of Ministers.
The establishment of the intellectual property division of the Federal Court (discussed in section 1) is a welcome development.
8.2 Are there any significant developments expected in the next year?
An amendment to the Patent Law is expected with one expected amendment being proper provision for divisional applications.
Kuwait’s accession to the Patent Cooperation Treaty (‘PCT’) now opens the way for the GCC Patent Office to consider joining the PCT. A GCC patent gives protection in the UAE, and such accession would be welcomed by applicants.
8.3 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
The Government continues to focus on innovation and supporting innovation as an economic driver. Notwithstanding this, patent law and enforcement are still in the early stages in the UAE.
This is an extract from the International Comparative Legal Guide for Patents 2018.