GCC Patent Office

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The GCC Patent Office (GCCPO) is a regional patent office based in Riyadh, Saudi Arabia, within the Secretariat General of the Gulf Cooperation Council (GCC). [1] The GCC consists of six member countries: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates (UAE). In 2013, it employed about 30 patent examiners. [2]

Contents

The GCCPO was established under the GCC Patent Regulation, which was approved by the Supreme Council of the GCC in its 13th session held in Abu Dhabi, from 21-23 December 1992. [3] The office began accepting applications on 3 October 1998, with the first patent granted in 2002. The patent system was amended in the Supreme Council's 20th session held in Riyadh, from 27-29 November 1999. [4] [5] It was amended to conform to the Trade Related Intellectual Property Rights agreement (TRIPS) within the World Trade Organization (WTO) framework of agreements. [6]

The GCCPO played a role in "encouraging and supporting innovation, creativity and invention" within the GCC. [3] Upon securing patent protection, inventors would find it easier to develop or commercialize their technology across the region.

As of 5 January 2021, the GCCPO has stopped accepting new applications, although it will begin processing them again after amending the Patent Regulation. [7]

Organizing structure

The GCCPO consists of a board of directors and an executive body. The office is managed by the board of directors, which consists of a competent representative from each member state whose rank is not lower than that of an undersecretary. The board of directors is chaired by one of its members for a period of one year in rotation.

Patent protection

The GCCPO receives and examines patent applications in the GCC. Once a patent is granted through the office, it is valid in all six member countries. A patent granted in any of the member countries also has the same protection as one granted through the GCCPO or the international Patent Cooperation Treaty (PCT). [8]

Saudi Arabia approved the GCC Patents of Inventions Regulation of 2001, an amendment of a 1992 statute, by Royal Decree No. M/28 of 2001. This permits the registration of patents throughout the GCC. The GCCPO is a separate office from the Saudi Patent Office (SPO), although it is based in Riyadh. [9]

The GCC is neither a part of the Patent Cooperation Treaty (PCT) nor of the Paris Convention for the Protection of Industrial Property, [3] although it works in accordance with the specified terms.

Filing requirements

In accordance with patent law, a patent has to meet certain requirements, namely novelty, inventiveness, and industrial applicability.

Required documents

The requirements for filing a GCC patent application, which mirror that of the SPO, are as follows: [10]

  1. Specifications, claims, drawings (if any) and an abstract of the invention in Arabic, or in English with Arabic translation
  1. A power of attorney from the applicant
  2. An extract from the commercial register or a certified copy of the certificate of incorporation of the applicant if the applicant is a corporate body
  3. A deed of assignment, if the applicant is not the inventor
  4. A certified copy of the priority document, if the applicant is claiming priority on the basis of a foreign application

Application steps

Upon receiving the application, the GCCPO carries out a formal examination, then a substantive examination. If the application does not meet patentability requirements, the office provides an objection, and the applicant has 90 days to reply with counter-arguments or comply, or the application is deemed lapsed. The examination is carried out by either the Australian, Austrian, Swedish, or Chinese Patent Office. [10] The office had streamlined the examination procedures and granted some applications in as little as 18 months. [8]

If the claimed invention is patentable, the applicant proceeds to pay the grant and publication fees. The letters patent is issued and the decision to grant the patent is published in the Patent Gazette for opposition purposes. Oppositions may be filed before the Board of Grievances within 90 days from the date of publication.

Filing provisions

Fees

The GCC official filing fees are generally higher than those of national offices. However, applicants utilize a unified filing process and only pay one set of annuity fees, reducing long-term costs and making it more cost-effective than filing six separate national applications. [8] The patent maintenance fee is due annually, payable the first 3 months of every calendar year following the year the patent application was filed. [9] Late payments come with a surcharge after a 3-month grace period has passed.

Priority date & dual applications

A GCC patent application cannot coexist with a national patent application in any of the GCC member countries. A national application must be cancelled within 90 days of filing through the GCCPO. However, it is still possible to file an application in a member country and seek convention protection by filing at the GCCPO at the same time. This allows an individual to retain the priority date from the basic application in the member state or a foreign country. The application through the GCCPO needs to be filed within 12 months of the filing the basic application. [10]

Term of protection

The term of protection for a GCC patent is 20 years from filing date, as opposed to 15 years in other nations.[ which? ] However, the patent has to be worked for the protection to be active. If the patent is not being fully exploited within 4 years from filing date, or 3 years from grant date, the patent will be subject to compulsory licensing under the provisions of the law.

41st Session (2021)

In the Supreme Council's 41st Session held in Al-Ula on 5 January 2021, the GCCPO stopped accepting the general filing of patent applications. The office will receive, process, and grant patents only upon receiving a request from a GCC member state. [3]

Related Research Articles

<span class="mw-page-title-main">Gulf Cooperation Council</span> Regional trade bloc in the Middle East

The Cooperation Council for the Arab States of the Gulf, also known as the Gulf Cooperation Council, is a regional, intergovernmental, political, and economic union comprising Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates. The council's main headquarters is located in Riyadh, the capital of Saudi Arabia. The Charter of the GCC was signed on 25 May 1981, formally establishing the institution.

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

A divisional patent application, also called divisional application or simply divisional, is a type of patent application that contains subject-matter from a previously filed application, the previously filed application being its parent application. While a divisional application is filed later than the parent application, it retains its parent's filing date, and will generally claim the same priority. Divisional applications are generally used in cases where the parent application may lack unity of invention; that is, the parent application describes more than one invention and the applicant is required to split the parent into one or more divisional applications each claiming only a single invention. The ability to file divisional applications in cases of lack of unity of invention is required by Article 4G of the Paris Convention.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

<span class="mw-page-title-main">Utility model</span> Patent-like intellectual property right

A utility model is a patent-like intellectual property right to protect inventions. This type of right is available in many countries but, notably, not in the United States, United Kingdom or Canada. Although a utility model is similar to a patent, it is generally cheaper to obtain and maintain, has a shorter term, shorter grant lag, and less stringent patentability requirements. In some countries, it is only available for inventions in certain fields of technology and/or only for products. Utility models can be described as second-class patents.

Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act of Japan. Article 2 defines an invention as "the highly advanced creation of technical ideas utilizing the law of nature".

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

The Office of the Controller General of Patents, Designs and Trade Marks(CGPDTM) generally known as the Indian Patent Office, is an agency under the Department for Promotion of Industry and Internal Trade which administers the Indian law of Patents, Designs and Trade Marks.

<span class="mw-page-title-main">Canadian patent law</span>

Canadian patent law is the legal system regulating the granting of patents for inventions within Canada, and the enforcement of these rights in Canada.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

<span class="mw-page-title-main">Intellectual property in Iran</span>

Iran is a member of the WIPO since 2001 and has acceded to several WIPO intellectual property treaties. Iran joined the Convention for the Protection of Industrial Property in 1959. In December 2003 Iran became a party to the Madrid Agreement and the Madrid Protocol for the International Registration of Marks. In 2005 Iran joined the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, which ensures the protection of geographical names associated with products. As at February 2008 Iran had yet to accede to The Hague Agreement for the Protection of Industrial Designs.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

The GCC Standardization Organization (GSO) is a standards organization for the member states of the Gulf Cooperation Council and Yemen.

Republic Act No. 8293, otherwise known as The Intellectual Property Code of the Philippines lays down the rules and regulations that grant, and enforce patents in the Philippines. Patents may be granted to technical solutions such as an inventions, machines, devices, processes, or an improvement of any of the foregoing. The technical solution must be novel, innovative, and industrially useful. In order for a technical solution to be granted a patent, the inventor must file an application to the Bureau of Patents, which will examine, and in some cases, grant its approval. The law is designed as to foster domestic creativity, to attract foreign investors, and to motivate inventors to release their products for public access.

Intellectual property of Ethiopia is managed by the Ethiopian Intellectual Property Office (EIFO), who oversees Intellectual Property Right (IPR) issues. Ethiopia has not signed IPR treaty such as the Paris Convention for the Protection of Industrial Property, the World Intellectual Property Organization (WIPO) copyright treaty, the Berne Convention for Literary and Artistic Works, the Madrid System for the International Registration of Marks, and the Patent Cooperation Treaty.

References

  1. ↑ "The founding of the GCC". Arab News Japan. Retrieved 2022-10-10.
  2. ↑ Mizael Al-Harbi; Hussam Al-Muqhim (18 April 2013). Gulf countries: introduction to the GCC patent system | South East Asia and the Gulf States — the new patent hot spots (PDF). East meets West 2013. Austria. p. 8.
  3. 1 2 3 4 "Patent Office at the Cooperation Council for the Arab States of the Gulf (GCC-SG) General Information" (PDF). WIPO INSPIRE. Archived (PDF) from the original on 2022-10-10. Retrieved 2022-10-10.
  4. ↑ "The Closing Statement of the Twentieth Session". www.gcc-sg.org. Retrieved 2022-10-10.
  5. ↑ "Closing Statements of the Sessions of the Supreme Council - Sessions 1 - 24" (PDF). Retrieved October 10, 2022.
  6. ↑ "Patent Regulation of the Cooperation Council for the Arab States of the Gulf - 20th Session" (PDF). Retrieved October 10, 2022.
  7. ↑ El-Shibib, Gowling WLG-Tamara (2022-02-01). "Implementing Regulations confirm the GCC patent office's new working model". Lexology. Retrieved 2022-10-10.
  8. 1 2 3 "Patent filing strategies in the GCC". In-House Community. Retrieved 2022-10-10.
  9. 1 2 International, Drug Patents (2015-01-20). "Drug Patents International: Saudi Patent Office AND GULF ( GCC Patent office)". Drug Patents International. Retrieved 2022-10-10.
  10. 1 2 3 Wrede, Jan. "The GCC Patent" (PDF). The Patent Lawyer: 50, 51, 52, 53.


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