What PCT membership means for Saudi Arabia and beyond

When the Kingdom of Saudi Arabia announced its formal accession to the Patent Co-operation Treaty (PCT) in April this year, with effect from August 3, the move was warmly welcomed. The accession of the largest country in the Gulf region signifies the continuing commitment to developing accessible and robust IP protection and its importance to continued economic diversification.

Patents in the GCC: routes to protection (as at August 2013)
Country	National patent	Paris Convention	PCT
Bahrain	✔	✔	✔
Kuwait	x System not yet operative, deposit application only	x	x
Oman	✔	✔	✔
Qatar	✔	✔	✔
Saudi Arabia	✔	✔	✔
UAE	✔	✔	✔
GCC Patent Office	✔Direct filing possible	x But 12 months priority recognised	x

The Gulf Co-operation Council (GCC) is made up of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. Increasingly, these countries are embarking on programmes and supporting initiatives that will see their economies transformed from traditional reliance on oil and gas.

To support these changes, there is increasing awareness of the need for robust patent systems. While the other countries in the GCC (apart from Kuwait) have acceded to the PCT over the past few years, the Kingdom of Saudi Arabia, as the largest market in the region, has been a notable exception. However, as of August 3 2013, Saudi Arabia may be designated under the PCT.

As yet, the unitary regional patent, the GCC Patent, remains outside the system. In 1992, the GCC approved a patent regulation that established the unitary patent right covering all GCC countries. The GCC Patent Office was established in 1993 in Riyadh, Saudi Arabia and started accepting applications in 1998. The GCC Patent regulation was amended in 2000, notably adding in a novelty requirement for patentability.

The GCC patent is a unitary right and subject to central attack. If revoked, the patent will cease to have effect in any country in the GCC. Notwithstanding this, the regional nature of the patent is attractive to applicants given that many of the countries are relatively small and the costs of acquiring patent protection relatively high on a national basis.

A summary of the patent routes available in the GCC is set out in the table.

A patent law was first enacted in Saudi Arabia in 1985 and superseded by a new law in 2004. Previously, patent protection in Saudi Arabia could be obtained either by a national filing or via a GCC Patent. However, both these routes required applicants to file within 12 months of the first filing, relying on the right of priority.

Given the costs involved in filing for patent protection in Saudi Arabia, including official fees, translation costs and costs involved in notarisation and legalisation of supporting documents, applicants were reluctant to file before the potential value of the market was known. Notwithstanding the length of time that a patent system has been available, filings remained relatively low and the timeframe for grant was both lengthy and uncertain.

Foreign applicants are therefore welcoming the accession of this important market to the PCT. Local applicants will also be encouraged to engage in the global patent system through accession to the PCT.

As noted above, the GCC member states are engaging in a number of initiatives to encourage the development of technology-based economies. Part of this drive comes from the desire to move away from traditional economic reliance on oil and gas.

Saudi Arabia, the United Arab Emirates and Qatar are three of the most active in this drive for technological innovation. Approaches have included funding for university research, encouraging the private sector to partner with universities and other research centres, subsidising the filing of patent applications, and the establishment of technology-targeted free zones.

These initiatives have had varying degrees of success and many are starting to gain traction. Saudi Arabia has invested heavily in its education sector in particular, and many institutions and major companies now have well-established and highly active technology transfer teams.

However, it is clear that many businesses that would consider investing are still wary of weaknesses in the patent systems in the region – prosecution delays, prosecution expense (particularly the need for Arabic translations and notarisation and legalisation of documents), lack of specialist courts, judges and experts, and protection of trade secrets and confidential information. Engagement in systems like the PCT, that feel familiar to applicants, will assist in devising patenting strategies. It will not negate the aforementioned concerns at national phase stage however. These issues will need to be addressed in due course.

The accession of Saudi Arabia to the PCT will probably provoke applicants to wonder if the GCC Patent Office will be next, something that would be a popular move and further increase participation in patent systems in the region.

© Rouse 2013. Sara Holder (right) is Dubai managing partner at Rouse