At the 41st Gulf Cooperation Council (GCC) Summit on 5 January 2021, the GCC Supreme Council approved amendments to the GCC Patent Law.
As yet, these amendments have not been published, and there is no indication that they have been implemented by any of the GCC member states. However, there have been some immediate changes to the practices of the GCC Patent Office which indicate that a single unified GCC patent is no longer available.
With this in mind, and although nothing has been formally confirmed to date, it is important that IP owners immediately re-evaluate their patent filing and prosecution strategies in the GCC region, and consider taking the other steps set out below.
What do we know?
At present, the only confirmed information is that:
- a communique has been published by the GCC Supreme Council stating that “The Supreme Council approved the amended Patent Law (Regulation) for the Cooperation Council for the Arab States of the Gulf” (Click here for the full communique);
- an announcement as been published by the GCC Patent Office stating that it has “stopped accepting patent applications” (Click here for the full announcement – in Arabic); and
- as from 6 January 2021, the GCC Patent Office has stopped accepting new applications although it is (at least for now) continuing to allow applications filed prior to 6 January to be prosecuted.
What don’t we know?
As yet, we do not know the contents of the amended GCC Patent Law. We therefore do not know:
- whether the GCC Patent Office’s decision to stop accepting GCC patent applications is permanent or temporary;
- whether there will be any impact on existing applications which have not yet been granted; and
- whether there will be any impact on GCC patents that have already been granted.
Before we can provide answers to these questions we must wait for the amended GCC Patent Law to be published together with the implementing laws of the GCC member states which will be required to give effect to these amendments.
What should IP owners do?
Based on the available information (and while taking into account what we do not know yet), there are a few steps which IP owners should take:
- immediately re-evaluate patent filing strategies for the GCC region (particularly for Bahrain, Kuwait, Oman, Qatar and Saudi Arabia) on the basis that GCC patents are no longer available.
Given the lack of clarity regarding existing GCC patent applications, additional national filings should be considered (where possible) in order to ensure continuity of protection in the event that current GCC patent applications are not permitted to proceed to grant;
- consider delaying paying annuities until the position with regard to existing applications and registrations is clarified.
The Implementing By-Laws to the GCC Patent Law require annuity fees to be paid within the first three months of each calendar year. The deadline for filing 2021 annuity payments is therefore 31 March 2021. This should provide time to confirm that existing applications and registrations will continue to have effect before the 2021 annuity payment deadline; and
- monitor for the amended GCC Patent Law to be published and for the implementing laws of the GCC member states to be enacted.
Once this information is available, there will be more certainty as to the position, and IP owners will be able to plan accordingly.
What is the GCC patent, and what does a future without GCC patents look like?
The GCC Patent Law was approved by the GCC Supreme Council during the 13th GCC Summit on 21 and 22 September 1992, and amended in 2000. The GCC Patent Office has been relatively popular with IP owners with over 40,000 applications being filed since 1998 (with over 11,000 of these applications proceeding to grant).
Importantly, the GCC Patent Law is unitary patent, which leaves enforcement of granted GCC patents to the individual GCC member states. Over the years, the GCC Patent Law has been implemented into national law by all the GCC member states, except the UAE.
Accordingly, the GCC Patent Law allowed protection to be obtained across five of the six GCC members states through a single application. This allowed IP owners to put in place filing strategies for the GCC countries which matched the profile of their interests in the region (often combining a mixture of GCC and national filings).
In the event that GCC patents are no longer available, the position will be simpler in that IP owners will only have the option of filing national applications. However, for IP owners with interests across the region, this simplicity will come at a cost – multiple applications will be required when, until now, only two applications were needed to obtain protection across the GCC.
Rob Deans and Adam Cusworth
11 January 2021