“IP Law and Administration in the UAE ”

Presented By: Omar M. ObeidatPartner & Head of IP/IT Dept

20 December 2010

Basic Definitions: IP• Patents• Designs• Trademarks• Copyrights• Trade secrets• Geographical indications• Domain names

Patents• UAE Patents, Designs and Industrial Models

Law No.17 of 2002;• Monopoly Right;• Protects Inventions (products & process);• Duration: 20 years;• Patent protection extends to ideas that are

new, involve an inventive step and capable of industrial application and exploitation.

Patents• Patent’s life runs for 20 years from the date of

filing of a patent application in a given country.

• The scope of protection is limited to country of registration.

• The right to a patent covers the exclusive rights to prevent others.

• Ministry of Economy/Patent offices; examination contracted with foreign examination office.

Patent Filing Process• Filled out English and Arabic form• CD of patent application forms in soft copies

and Copy of Priority Document• Patents Office retains Excel sheets of

Applicants and Inventor Details as well as Priority Details

• Grace Period 90 Days for outstanding Documents (POA, DOA and Certificate of Incorporation, Certified Copy of Priority Document if Using Paris Convention).

Patent filing Process• Application Number Allocated• Annual Fees Paid to Patents Office• Patents Office once accepted application form sends

file for substantive examination.• Examination carried out through Austrian Patents

Office (Absolute Novelty).• Examination result issued within one year (either

acceptance or rejection with allowance of two time amendments).

• Payment of Publication fees and Publication• Issuance of Certificate of Registration with the lapse

of six months.

Patent filing Process• No. of patents granted (200)• No. of Patents pending approx. 10,000• No. of staff 8• No. of examiners 2• Fees for filing AED 800 Corp., AED 400 Ind.• Fees for Examination 7,000• 95% of Applications are PCT• 2-3 % are locally developed inventions

Designs• UAE Patents, Designs and Industrial Models

Law No. 17 of 2002;• Monopoly right;• Ornamental or aesthetic aspect of an article;• May consist of 3-D features such as the shape

or surface of an article or of 2-D features, such as pattern, lines and color;

• Must be novel and can be used as industrial or craft product;

• Duration: 10 years.

Design Filing Process• Filled out English and Arabic form• CD of design application forms in soft copies

and Copy of Priority Document• Office retains Excel sheets of Applicants and

Designer Details as well as Priority Details• Grace Period 90 Days for outstanding

Documents (POA, DOA and Certificate of Incorporation, Certified Copy of Priority Document if Using Paris Convention).

Design Filing Process• Application Number Allocated• Annual Fees Paid to Office• Office once accepted application in form,

examines design (national novelty) • Average Examination result issued within two

years from filing date• Payment of Publication fees and Publication• Issuance of Certificate of Registration with the

lapse of six months.

• No. of Designs issued approx 1,000• Pending Designs approx 3,000 (2006)

Trademarks• UAE Trade Mark Law No.37 of 1992 • Any sign that distinguishes goods/services;• Can indicate source;• Protects goodwill;• Sign can include: shapes, designs, symbols,

devices, 3-D shapes, smells, etc…• Renewable indefinitely every ten year periods.• 150,000 applications filed in UAE

Trademark Filing Process• Application Form (applicant, Description of

trademark and representation, class, designation of goods and services)

• Nice Classification 45 Classes• Payment of Filing Fees• Examination -Acceptance without conditions-Technical Examination (Amendments, requiring re-

filing and another examination)-Review-Conditioned Acceptance (Disclaimer)-Objection-Rejection-Objection

Trademark Filing Process• Payment of Registration and Publication Fees• Publication• One month opposition period• Registration• Average time frame 18-24 months for

certificate to be issued (no objection, re-examinations or oppositions)

• Average filing to publication 8-10 months• Average filing to examination 4-6 months

Trademark Infringement• Use of identical or confusingly similar mark on

identical or similar goods/services without permission;

• Theft;• Penalties: Fine and/or imprisonment,

confiscation/destruction of goods, publication of judgment and damages.

Comparison – Original vs Counterfeit

Original Counterfeit

Comparison – Original vs Counterfeit

CounterfeitOriginal

Confusing Similarities - Look a likes

Confusing Similarities - Look a likes

Original Look a like

Trade Names• Trade names are the registered commercial

entity name as recorded with licensing authorities. This name cannot exist without the physical and legal set up of the corporate entity. – CONRAD HOTEL (Trade name) hotel activity– CONRAD HOTEL (Trademark) hotel services

Unfair Competition• Prohibited use of claims "Number one

pharmaceutical solution" or "Most preferred medication"

• Acts inciting employees of a competitor to target its customers

• False origin, specification, description of goods• Defamatory statements

Copyright• Federal Law No. (7) for the Year 2002• Protection for broad range of creations of the

mind, but more specifically literary works (incl. computer software), artistic & musical works and broadcasts;

• Automatic upon publishing;• Right to copy is only allowed to copyright

owner &/or owner’s licensee.

Copyright • Duration:

– Life of author + 50 years– 50 years from publication

• Assignment possible• Author has exclusive right to reproduce work• Deposit possible but not necessary: S. 4• Protects Author from Unauthorized Copying,

thereby encouraging innovation

Scope of Protection The law protects authors and related rights

holders of copyrights in intellectual works. The law also provides, inter alia, a definition of the works protected, the duration of protection, licenses permitting the use of works and provisions relating to certain works, collective management of copyright and related rights, provisional measures, penalties as well as general provisions.

Copyright• Copyright protection extends to expressions

of original or creative works in the field of literary works, art, or sciences.

• Copyright protection exists from the date of publication and runs for 50 years plus the life of the offer.

• Copyright does not extend to ideas and is subject to limitations of fair use.

Copyright• Protection extends to the content / text as

well as to the creative outline and arrangement of a work.

• No. of Copyrights filed per annum 750-800

Copyright - ADACH CD Cover

Copyright - ADACH CD Content

Trade Secrets• Examples

1. Know how2. Business methods3. Database

Trade Secrets• Conditions:

– Information including formula, software and equation

– Commercial value– Confidential– Measures in place to protect confidentiality

Thank YouAny Questions