Lawyer Monthly Magazine August 2020 Edition

37 AUG 2020 | WWW.LAWYER-MONTHLY.COM The GCC Patent filing system provides an easy way to secure protection in each of the member countries. All member states of GCC are automatically covered in a Gulf Cooperation Council Patent application. Patents granted by the GCC Patent Office covers: • Kingdom of Bahrain • United Arab Emirates [U.A.E] • State of Kuwait • Sultanate of Oman • State of Qatar • Kingdom of Saudi Arabia There are no further prosecution steps required at the national level and are enforceable in each of the said countries. The GCC Patent office has no branch office. Therefore, all Patent applications are examined at the office located in Riyadh, Saudi Arabia. It is also prudent to note that the GCC Patent system is neither part of the Paris Convention nor the Patent Cooperation Treaty. However, according to Article 7(2) of the GCC Patent law, a GCC Patent application can claim priority from a prior convention application as if the GCC system was a signatory to the Paris Convention. The fact that GCC is not part of the Paris Convention is important as it is not possible to claim priority under the Paris Convention to an application that was first filed at the GCC Patent office. Therefore, animal species, biological methods of producing plants or animals, discoveries, mathematical principles, business methods does exist in individual country laws. Inventions that may lead to violation of the public order or morals are also not patentable. Denying protection to inventions whose exploitation would lead to the flouting of public order or morals confirms the respect of Sharia law. There is no guidance given from patent regulations regarding what inventions will offend public policy or morality. Potentially, an invention related to the production or consumption of alcohol or pork, products which contain natural compounds extracted from pork [such as fatty acid extracted from born fat of pork] would ‘encroach upon’ the morality and religious sentiments of the state. Does having a unified patent system across the GCC countries have its benefits? Filing of patent rights in the GCC countries can be effected in three ways: • Direct filing of patent application in the countries of interest with or without claiming priority under the Paris Convention • National phase PCT application • GCC Patent filing system AN INTERVIEW WITH NEVIN KOSHY a potential applicant must consider this while strategising their Patent filings. What complications are prone to arise when trying to secure a patent? A handful of common oversight some clients do make are: • Not understanding the procedural formalities (at least from filing till registration) in each country beforemaking the decision to file for the application. For example, if the Applicant [Foreign entity] is not aware that legalized documents [such as Power of Attorney] are needed to complete the filing formalities, the costs and the time needed for these steps may not have been factored in the initial decision process. • Not being aware that the profession of a Patent Attorney is not linked to the qualification of the person, (but the filing licence is given to the firm). Therefore, you might have agents filing patent applications who are not qualified, let alone have a technical background. • Not understanding that high quality technical Arabic translation is required for filing the patent application in most Arabic speaking jurisdictions. If this is not taken care at the time of filing the application, the Applicant may end up increasing the Disclaimer: Although a comprehensive insight to the topic is not an objective of this interview, the interviewee’s primary objective is to shed some light into the patent protection practice in this region. The firm accepts no liability for the content/legal advice given in this document, or for the consequences of any actions taken based on the information provided. Therefore, any further deliberative action that will be taken based on the above opinion has to be consulted with the firm.