In 2018, SAIP (the Saudi Authority for Intellectual Property) was established. At the time, this prompted optimism that there would be positive developments to the landscape for intellectual property protection and enforcement in Saudi Arabia.
Two years later, it appears that such optimism was justified. SAIP has overseen a phased approach to developing a national strategy for intellectual property rights and then implementing that strategy.
The impact of this approach is now being felt, with a national intellectual property strategy in place (phase one), which is leading to a number of practical developments (phase two).
Phase One: Developing a national intellectual property strategy
SAIP’s mandate is wide ranging. It includes:
- preparing and implementing Saudi Arabia’s national strategy for the promotion of intellectual property;
- proposing rules and regulations relating to intellectual property;
- acting as the national intellectual property office (IPO), granting patent and industrial design, trade mark and copyright registrations; and
- promoting the use of intellectual property to build an advanced knowledge based economy in Saudi Arabia.
These are lofty goals and, at first, progress appeared to be slow. Although SAIP was established in June 2018, it did not become operational until the first quarter of 2019.
However, SAIP has been continuously moving forward. Through 2018 and 2019, SAIP was busy working on its strategy and laying the foundations to achieve its goals.
This culminated in a national intellectual property strategy for Saudi Arabia being presented in November 2019 and implementation commencing immediately.
The foundation work carried out by SAIP included entering into:
- Memoranda of Understanding (MoUs) for the exchange of best practices for examining, processing and registering IP rights. Such MoUs have been entered into with:
• South Korea (September 2018);
• the US Patent and Trademark Office (January 2019); and
• Japan (October 2019).
- a MoU to establish a national centre for training in the field of IP with the World Intellectual Property Organisation (WIPO) (October 2019);
- patent prosecution highway (PPH) agreements under which patent applications in Saudi Arabia may be accelerated where an application claims priority from an application filed with the Patent Office which is the counterparty to the PPH agreement. SAIP has entered into PPH agreements with:
• the Korean Intellectual Property Office (January 2019);
• the US Patent and Trademark Office (October 2019); and
• the Japan Patent Office (October 2019);
- an intellectual property strategy program with South Korea, the purpose of which was to prepare a national IP strategy for Saudi Arabia, in the form of a master plan with a five year timeframe for implementation (June 2019).
Phase Two: Implementing the national intellectual property strategy
- A national IPO
In line with its mandate, SAIP now operates a national IPO which deals with the registration of patents, industrial designs, trade marks and copyright. Previously, the Ministry of Trade and Investment was responsible for trade mark filings, while King Abdulaziz City for Science and Technology (KACST) was responsible for patent, industrial design and plant variety filings. Bringing these functions together under a single, national IPO should lead to improved systems, consistency of approach and efficiency improvements.
- Register of copyright works
Previously, it was not possible to register copyright in Saudi Arabia. As a result, there was a significant amount of uncertainty around the enforcement of copyright in Saudi Arabia.In December 2019, SAIP created a national register of copyright works covering computer software and architectural designs and which may be expanded to include other forms of works in the future. The ability to secure a copyright registration is a significant step in that the existence of a registration provides clear evidence of subsistence and ownership of copyright. As a result, this should make the enforcement of copyright in Saudi Arabia a much more straightforward task.
It is important to note that it the registration of copyright is not mandatory in Saudi Arabia. The Berne Convention, which applies in Saudi Arabia, does not allow participating states to make formalities (such as the registration of a copyright work) a condition for protection.
Accordingly, holding a copyright registration in Saudi Arabia should not be a pre-requisite for succeeding with an infringement action. However, in practice, this is likely to be a valuable tool.
- Intellectual property disputes
The Commercial Courts Law, which came into effect on 16 June 2020, consolidated the handling of all intellectual property infringement claims into a single forum.
Specifically, all “claims and violations arising from the application of intellectual property laws” must now be brought before the Commercial Courts. This is a welcome development, in that the handling of intellectual property infringement claims by a single Court is likelyto lead to increased efficiencies and more consistent decisions
- Licensing of intellectual property agents
In August 2020, SAIP issued a draft Regulation consultation concerning the mandatory licensing of “intellectual property businesses”.
The term “intellectual property business” is defined to include agents that apply for registration of IP rights on behalf of third parties or who handle objections to third party applications on behalf of their clients in Saudi Arabia. Importantly, draft regulation provides that a licence may only be granted to individuals who met certain education and training requirements, including the requirement to hold a SAIP professional qualification examination certificate.
The regulation of intellectual property professionals in this way is another welcome development.
Phase Three: What next?
Looking forward, we can expect SAIP to take further steps to enhance the environment for protecting, commercialising and enforcing intellectual property rights in Saudi Arabia.
South Korea implemented three back to back five year strategic plans to enhance its competitiveness in the field of intellectual property with great success. Accordingly, given the intellectual property strategy development program which Saudi Arabia has entered into with South Korea, we can expect a similar approach to be adopted by SAIP.
This means more of the same – continued improvements to the regime for intellectual property in Saudi Arabia. Watch this space.
By Adam Cusworth
1 September 2020