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Federal Law No. 44 of 1992 for the Organization and Protection of
Industrial Property for Patents, Designs and Industrial Models
TABLE OF CONTENTS Page
Chapter I: Definitions and General Provisions............................... 1
Chapter II: Inventions...................................................................... 3
Section 1: Patents and Utility Certificates...................................... 3
Section 2: Compulsory Licenses and Expropriation of Inventions 7
Section 3: Surrender and Invalidation of Patents Utility Certificates or Licenses ................................................. 9
Section 4: Special Provisions for Certain Inventions ..................... 10
Section 5: Know-How.................................................................... 11
Chapter III: Industrial Designs ......................................................... 11
Chapter IV: Contractual Licenses ..................................................... 13
Chapter V: Preventive Measures, Offenses and Penalty.................. 14
Chapter VI: Industrial Property Directorate and Final Clauses......... 14
We Zayed Bin Sultan Al Nahyan, President of the U.A.E. in cognizance of the Provisional Constitution;
and Federal Law (1) of 1972 concerning capacities and powers of Ministers and the amending acts there to;
and Federal Law No. (5) of 1976 concerning Federation of Chambers of Commerce and Industry;
and Federal Law No. (1) of 1979 concerning organizing Industrial Affairs;
and Federal Law No. (4) of 1979 concerning eradication of fraud and cheating in commercial matters;
and Federal Law No. (8) of 1984 concerning commercial companies and amending laws there to;
and according to the proposal of the Minister of Finance and Industry and approval of the Council of Ministers and sanction of the Supreme Federal Council;
promulgate the following law:
Chapter One Definitions and General Provisions
1. In this Act, unless the context requires otherwise, the following terms shall have the meanings attributed to them:
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Minister: The Minister of Finance and Industry.
Administration: The Industrial Property Directorate, Ministry of Finance and Industry, as well as branches thereof in the United Arab Emirates.
Committee: The Appeal Committee, Industrial Property Directorate.
Competent Court: The Civil Court of First Instance.
Title of Protection:
The document that certifies the registration of the industrial property rights in a patent, utility certificate or industrial design.
Patent: The title of protection granted for an invention by the Industrial Property Directorate on behalf of the State.
Know-How: The technical information, data or knowledge that result from professional experience and are applicable in practice.
Industrial Design: Any form constituted by lines or colors, or any three-dimensional form that is primarily related to lines or colors, provided that it has a specific appearance and can be used as a model in industry or handicraft.
Mark of Origin: Any expression or symbol used to indicate the origin of a product, whether a State, a group of States, a province or a region.
2. The provisions of this Law shall not contravene any international convention or treaty to which the United Arab Emirates is a party, and which governs the rights of the nationals of the Contracting States as well as the rights of the persons who are treated as such.
Foreigners to whom the preceding paragraph does not apply shall have the same rights as are granted to nationals under this Law, provided that they have the nationality of a State which applies the reciprocity principle to the United Arab Emirates.
3. The By-Laws for the implementation of this Law shall provide for the provisional protection of inventions and industrial designs related to products displayed at exhibitions organized in the United Arab Emirates, taking into consideration the provisions of the relevant conventions and treaties as well as the principle of reciprocity.
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Chapter Two Inventions
Section One Patents and Utility Certificates
4. A patent shall be granted for any new invention that is the result of an innovative idea or an innovative improvement on a patented invention. Both the idea and the improvement shall be scientifically founded and industrially exploitable whether in relation to new industrial products, to industrial processes or methods or to applications of known industrial processes or methods.
An invention shall be considered industrially applicable if it can be applied or used in any kind of industry. “Industry” shall be understood in its broadest senses, which includes agriculture, hunting, handicraft and services.
5. A utility certificate shall be granted for any new invention that is industrially applicable but does not involve an inventive step sufficient to such an extent that it may be granted a patent.
6. Neither a patent nor a utility certificate shall be granted for the following:
(i) plant or animal research, or biological processes for the production of plants or animals, with the exception of microbiological processes and products thereof;
(ii) chemical inventions related to foodstuffs, drugs or pharmaceuticals, unless such products are made by means of special chemical processes, in which case protection shall extend only to the processes and not to products of the processes;
(iii) scientific principles and discoveries;
(iv) inventions related to national defense;
(v) inventions which, if disclosed or exploited, would be contrary to public policy and morality.
7.—(1) Without prejudice to the provisions contained in Article 9, the right to the invention shall belong to the inventor or to his successor in title.
(2) If two or more persons have made an invention jointly, the right to the invention shall belong jointly to them or to their successors in title. However, any person who has merely assisted in the execution of the invention without having contributed to the actual inventive step shall not be considered an inventor or in the position of an inventor.
(3) Without prejudice to Articles 8 and 9, the first person to file an application for a patent or a utility certificate, or to claim priority for the same invention, shall be considered an inventor or successor to the inventor.
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(4) Any interested person may oppose or appeal against a decision accepting or refusing an application, as provided in this Law and the By-Laws.
8. Where the essential elements of an invention are obtained by using the invention of a third party without his consent to such use or to the filing of an application for protection, the person who is prejudiced by the act may request that the application, or the patent or utility certificate if granted to the person who has caused the prejudice, be transferred to him.
9.—(1) Where an invention is made in pursuance of a commission or an employment contract, the right to the invention shall belong, in the absence of contractual provisions to the contrary, to the person who commissioned the work or to the employer.
(2) Where the invention has an economic value much greater than the parties could have foreseen on concluding the contract, the inventor shall have a right to an additional compensation which shall be fixed by the Appeal Court in the absence of agreement between the parties.
(3) When an employee whose employment contract does not require him to engage in inventive activity makes, in the field of activities of his employer, an invention by relating to his employer’s area of concern using expertise, documents or instruments of the employer or raw materials available to him by virtue of his employment, the right to the invention shall belong to the employee after the expiration of a period of four months from the date on which he submits to the employer the report on the invention referred to in paragraph (4) of this Article or from the date on which the employer is otherwise informed of the invention and does not make a written declaration of his interest therein.
(4) Any employee who makes an invention shall immediately inform the employer of the fact in a written report.
(5) If the employer makes a declaration of his interest in the invention within the time limit fixed in paragraph (3) of this Article, the right to the invention shall be considered to have belonged to him from the date on which the invention was made. The employee who made the invention shall have the right to equitable compensation that takes into account his salary, the economic value of the invention and any benefit derived by the employer from the invention. In the absence of agreement between the parties, the compensation shall be fixed by the Competent Court.
(6) Any agreement under which the employee is granted lesser privileges than are provided for in this Article shall be considered void.
10. The inventor shall be named in the patent or utility certificate unless he declares in writing his wish not to be named. The application for the registration of an invention and any relevant data shall be filed according to the By-Laws.
11. The application for registration may contain a declaration claiming the priority of an earlier application filed in a State party to a convention or treaty to which the United Arab Emirates has acceded. In such cases, the application shall indicate the registration date and
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number of the earlier application and the State in which it was filed, as provided in the By-Laws.
12. The Directorate shall examine registration applications according to the provisions of this Law and its By-Laws, and may require the fulfillment of any conditions it considers necessary for the grant of a patent or utility certificate.
Where registration is refused, the Directorate shall notify the refusal to the applicant who may appeal to the Appeal Committee against such a decision within sixty days from the date of the notification.
13. Patents and utility certificates shall be granted by decision of the Minister, which shall be published in the Official Gazette. Any interested party shall have the right to file a complaint with the Committee against such decisions within sixty days from the date of publication.
The patent or utility certificate shall be granted to the owner of the right, once recorded in the Special Register, provided no complaint is filed within the prescribed period provided for in the previous paragraph. The patent or certificate shall have a registration number, an issue date, evidence of payment of the registration or renewal fee and other relevant data, as prescribed by the By-Laws of this law.
14. The duration of the patent and utility certificate shall be fifteen years and ten years respectively, and shall start on the filing date of the application. The term of the patent may be extended once for not more than five years. The renewal application shall be filed within the last three months of the original term. Renewal shall be granted on condition that the inventor proves that the invention is of a special importance and that he has not derived benefits commensurate with his effort and activity.
For patents granted under Article 6 (ii), the term shall be ten years and are not renewable.
The By-Laws shall fix the amounts of the registration and renewal fees, and also that of a progressive annual fee which shall be paid as from the year after the filing date of the application. The annual fee shall be paid within the last three months of each year, failing which the patent or certificate shall lapse. A period of grace of thirty days shall be allowed for the payment of the annual fee together with a surcharge fixed by the By-Laws. In all these cases, annual fees may be paid in advance for all or part of the term of the patent or certificate.
15. The owner of a patent or utility certificate shall have the right to prevent third parties from performing the following acts:
(i) when the patent or utility certificate has been granted for a product; making or importing the product, offering it for sale, selling it and using it, or stocking it for the purposes of offering for sale or use;
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(ii) when the patent or utility certificate has been granted for a process; using the process, or engaging in any of the acts referred to in paragraph (i) in relation to a product obtained directly by means of the process.
16.—(1) The scope of protection afforded by a patent or utility certificate shall be determined by the registration application.
(2) The description and drawings shall be used to interpret the content of an application.
17. The rights conferred by a patent or utility certificate shall cover only acts performed for industrial or commercial purposes. They shall not extend to acts in relation to the protected product once it has been sold in the United Arab Emirates. However, if the patent or utility certificate relates also to a specific use of the product, the owner shall have the right to reserve that use for himself.
18. Where a person has in good faith been manufacturing a product or using an invented process or has made serious preparations therefor in the United Arab Emirates on the filing or legally claimed priority date of an application, that person shall have the right, notwithstanding the grant of the patent or utility certificate, to continue such manufacture or use and also to perform the acts referred to in Article 15 in relation to products so obtained. Such right shall be regarded as personal and intransferable except to the establishment benefiting from it.
19.—(1) Patents, utility certificates may be assigned to third parties or can be applied for before they are granted.
(2) The assignment of the patent or utility certificate or its application therefor shall be in writing and signed by the contracting parties before the Officer-in-Charge in the Directorate or their signatures be attested by a public notary.
(3) The assignment of a patent or a utility certificate shall be recorded in a special register on payment of a fee specified in the By-Laws.
(4) The assignment of a patent or utility certificates may be invoked only after it has been recorded in the Patent Register or Utility Certificate Register and published in the Official Gazette.
20. If two or more persons jointly own a patent or a utility certificate, each of them may, unless otherwise agreed, separately assign his share in the invention protected by the patent or utility certificate, exploit the invention and exercise the rights conferred by Article 15, unless otherwise agreed. However, the joint owners may only jointly grant license to a third party to exploit the invention.
21. A patent may be pledged as security for the payment of a debt, either independently or with the related business establishment. The pledge shall be recorded in the Patent Register and published in the Official Gazette.
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22. Creditors may distrain patents or utility certificates owned by their debtors by means of attachment or garnishment proceedings, as the case may be. The Directorate shall not be required to confirm the distraint.
The creditor shall notify the Directorate of the distraint and auction adjudication, which shall be recorded in a special register and published in the Official Gazette. The prescribed fees shall be collected as provided in the By-Laws. The distraint or adjudication shall be binding on third parties as of the date of publication.
Section Two Compulsory Licenses and Expropriation of Inventions
23.—(1) Any interested party may, after the expiration of a period of four years from the filing date of the patent application, three years from the date of the grant of the patent, three years from the filing date of the utility certificate application or two years from the date of the grant of the utility certificate, make a request according to the procedure under Article 29 with a view to obtaining a compulsory license on one or more of the following reasons:
(a) the invention covered by the patent or utility certificate, which is exploitable in the United Arab Emirates is not being exploited according to the provisions of Article 23 (3);
(b) the exploitation in the United Arab Emirates of the invention covered by the patent or utility certificate is not sufficient to respond reasonably to the demand for the product;
(c) the exploitation in the United Arab Emirates of the invention covered by the patent or utility certificate has been suspended by the beneficiary for two consecutive years;
(d) the refusal of the owner of the patent or utility certificate to conclude a license contract under fair terms has seriously impeded the development of industrial or commercial activities in the United Arab Emirates.
(2) No compulsory license shall be granted in any of the aforementioned cases if the owner of the patent or utility certificate has valid grounds to justify his position. Importation shall not constitute a valid ground.
(3) For the purposes of this Article, “exploitation of an invention covered by a patent or utility certificate” means the manufacture of a protected product, the use of a protected process or the use of a protected instrument for manufacturing purposes by a real and effective establishment in the United Arab Emirates.
24.—(1) The compulsory license shall confer on the beneficiary thereof the right to perform all or some of the acts mentioned in Article 15 according to the terms of the license, excluding the right to import the product.
(2) The licensee shall have the right to exercise the rights of the owner of the patent or utility certificate under civil and criminal law in order to protect and exploit the invention if the owner has failed to do so in spite of having been aware or informed of an unlawful act.
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25.—(1) If an invention covered by a patent or utility certificate cannot be exploited in the United Arab Emirates without infringing rights conferred by a patent or a utility certificate granted on the basis of an earlier application, the owner of the later patent or utility certificate may on request be granted, a compulsory license on the terms provided for in Article 28 of this law and to the extent necessary for the exploitation of his invention, provided that the said invention serves industrial purposes different from those of the invention covered by earlier patent or utility certificate, or represents a significant technical advance in relation to the invention claimed in the earlier patent or utility certificate.
(2) If both the earlier and the later invention serve the same industrial purpose, the compulsory license shall be granted to the owner of the later patent or utility certificate, subject to the owner of the earlier patent or utility certificate retaining the right to obtain, on request, a license for the later patent or utility certificate.
(3) Both parties may conclude a written agreement however. The Directorate shall be notified of such an agreement and shall enter a mention thereof in the Special Register.
26. A compulsory license for the exploitation of an invention may only be granted once the person requesting it has supplied evidence that the owner of the invention has been notified thereof by registered mail, but that it has not been possible to reach an agreement on equitable terms within a reasonable time.
27. The compulsory license shall be granted only to the requesting person who provides the necessary guarantees that the invention will be exploited sufficiently to overcome the shortcomings, and respond to the needs, that have led to the compulsory license being requested.
28.—(1) The compulsory license may not be unconditional.
(2) The terms of the compulsory license may include obligations and restrictions binding on the licensor and the licensee of the compulsory license.
29. The request for a compulsory license shall be submitted to the competent court as an action against the owner of the patent or utility certificate. The Directorate shall be summoned to be represented before the court. The court may allow the parties a time limit to reach an agreement. The time limit may be extended if the court finds a justified reason therefor.
If the time limit expires, the court shall decide either to refuse the grant of the compulsory license or to grant it, and also to determine the terms and scope thereof and the compensation for the owner of the patent or utility certificate, in accordance with the provisions of Article 23 of this law. The decision shall be announced to the other party and the Directorate, recorded in the Special Register and published in the Official Gazette on payment of the prescribed fee. The decision shall be binding on other parties as from the date of publication.
30.—(1) The compulsory license may only be transferred to the establishment of the licensee, or to the part of his establishment that exploits the invention. The transfer shall be
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approved by the authority granting the compulsory license, failing which it shall be invalid. The provisions of Articles 29 and 32 of this law shall apply to acts of transfer.
(2) The beneficiary of a compulsory license may not grant sublicenses.
31.—(1) At the request of the owner of the patent or utility certificate or of the beneficiary of a compulsory license, the authority that has granted the compulsory license may modify the terms of the license, provided that the modification is justified by new facts, and, in particular, where the owner of the patent or utility certificate agrees to grant a contractual license on terms better than those of the compulsory license.
(2) The authority that has granted the compulsory license may decide to revoke it at the request of the owner of the patent or utility certificate if the licensee fails to comply with the terms of the license, or if the grounds justifying the grant of the license no longer obtain. In the latter case, the licensee shall be allowed a reasonable delay time within which to discontinue the exploitation of the invention if immediate discontinuation were to cause him a serious prejudice.
(3) The provisions of Articles 36 and 37 of this law shall apply to any modification or revocation of compulsory licenses.
32. Compulsory licenses and any relevant information shall be recorded in the Special Register and published in the Official Gazette on payment of the prescribed fees, as provided in the By-Laws of this law.
33. By decision of the Minister, an invention may be expropriated or a compulsory license issued without observing the time limits specified in Article 23 of this law if the invention is important to the public interest, to national defense or to the national economy. Such expropriation or compulsory license may cover all or some of the rights deriving from the invention, without prejudice to the right of the owner of the patent or utility certificate to the compensation fixed by the Committee.
Before the decision is issued, the owner of the patent or utility certificate shall be notified so that he may express his opinion on the matter. A mention of the decision to expropriate an invention or grant a compulsory license shall be entered in the Special Register and published in the Official Gazette.
The decision to expropriate an invention or grant a compulsory license, or the evaluation of the compensation, may be the subject of an appeal to the competent court within sixty days from the date of notification of the owner of the patent or utility certificate.
Section Three Surrender and Invalidation of Patents,
Utility Certificates or Licenses
34. The owner of a patent, utility certificate or compulsory license may surrender the patent, utility certificate or compulsory license, as the case may be, by a written declaration submitted to the Directorate and to any person having a right deriving therefrom.
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The surrender may relate to one or more of the rights conferred by the patent, utility certificate or compulsory license. It may not prejudice the rights of third parties unless those rights have themselves been surrendered in writing.
The surrender shall be recorded in the Special Register and shall take effect from the date of its publication in the Official Gazette.
35. Any interested party may institute court proceedings to invalidate the patent, utility certificate or compulsory license.
The owner of the patent, utility certificate or license, the Directorate and any person having a right deriving therefrom shall be notified of the proceedings in the following cases:
(i) if the patent, utility certificate or license has not been granted in compliance with the provisions of this Law or its By-Laws;
(ii) if the patent, utility certificate or license has been granted without the priority of earlier applications having been taken into account under Article 11 of this law.
The invalidation request may extend to a part of the patent, utility certificate or license, in which case, the decision shall be considered a limitation of the rights conferred by the title concerned.
36. Subject to Article 31 of this law, the decision invalidating the patent, certificate or license in whole or in part shall be effective from the date of the grant thereof. The owner of the patent, certificate or license shall not, however, be required to refund the compensation obtained for exploitation of the invention under a compulsory license if it is proved that the exploiter or licensee has made a profit on the exploitation. The invalidation decision shall be recorded in the Special Register and published in the Official Gazette.
Section Four Special Provisions for Certain Inventions
37.—(1) The owner of the patent or utility certificate or his successor in title shall have the right to a patent or utility certificate of addition granted for any improvement, change or addition to a protected invention. The request for a protection title of addition shall be subject to the same conditions as are applicable to the original protection application, and shall have the same effects as those of the original protection title.
(2) The duration of the protection title of addition shall expire on expiration of the term of the original protection title. The annual fees for the protection title of addition shall be specified in the By-Laws.
(3) The request for a protection title of addition may be changed into an application for an independent patent or utility certificate before the protection title of addition is granted.
38.—(1) Neither a patent nor a utility certificate may be granted for a confidential invention. An invention shall be considered confidential if it relates to national defense, unless otherwise decided by the Minister of Defense.
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(2) If the Directorate finds, on examination of the protection application, that the invention relates to national defense, it shall immediately notify the Minister of Defense thereof in a written report accompanied by the corresponding protection application.
(3) By order of the Minister of Defense, the invention shall be considered confidential or allowed protection in accordance with the prescribed procedure.
(4) If the invention is considered confidential, it shall not be disclosed.
(5) The owner of the invention shall surrender his invention to the Ministry of Defense against equitable compensation.
Section Five Know-How
39. Without prejudice to the rights conferred by a patent or utility certificate, know-how shall be protected against any unlawful use, disclosure or communication by third parties unless it has been published or made available to the public. In order to enjoy protection, the owner of the know-how shall take the necessary steps to preserve the confidentiality of its elements, as provided in the By-Laws of this law.
40. Any person who succeeds through his own efforts in developing or legally obtaining an industrial process or know-how related to the application of industrial means and methods may use that process or know-how or communicate it to third parties, even if another person has developed the same process or know-how.
41. A know-how contract must be in writing and must identify the essence, intended use and terms of transfer of the know-how, failing which the contract shall be considered invalid.
The provisions on the exploitation, surrender, transfer and licensing of inventions shall be applicable to know-how contracts as specified in the By-Laws of this law.
42. Any use, disclosure or communication of any element of know-how without the consent of its owner shall be deemed an unlawful act, provided that the person committing the act was aware of the confidential nature of the know-how or could not have ignored such nature.
Chapter Three Industrial Designs
43. The protection provisions laid down in this Law with respect to industrial design shall not prejudice the literary and artistic rights relating thereto, whether conferred by the law or by the conventions or treaties to which the United Arab Emirates is party.
44. The industrial design shall be eligible for protection under this Law only if it is recorded in the Special Register kept by the Directorate. The registration application shall be
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filed and examined according to the procedure, and on payment of the fees, prescribed by the By-Laws of this law.
45. The priority provisions of Article 11 of this law shall be applicable to industrial designs.
46. The industrial design must be original or novel and usable as an industrial or craft product. However, any industrial design that is contrary to public policy or morality of the state shall not be registered.
47. The industrial design shall be registered by order of the Minister. A notice of registration, and the corresponding industrial design, shall be published in the Official Gazette on payment of the prescribed fees.
Any interested party may appeal to the Committee against the registration decision within sixty days from the date of publication. If no such an appeal is made within the said period, the owner shall be issued a registration certificate which shall specify the registration number and date and also any other information, in accordance with the By-Laws of this law.
48. The term of the registration of an industrial design shall be five years starting on the filing date of the registration application. That term may be renewed twice consecutively. The renewal application must be filed within the last three months of the preceding term. The registration, renewal and progressive annual fees shall be prescribed by the By-Laws. Payment of the annual fee shall start in the year after the filing date of the registration application. The annual fee shall be paid within the last three months of each year, failing which the registration shall lapse. A period of grace of thirty days shall be granted for the payment of the annual fee together with the surcharge prescribed by the By-Laws. The renewal decision or any lapse of registration shall be published in the Official Gazette.
In all cases, all or some of the annual fees may be paid in advance.
49. The protection afforded to an industrial design under this Law shall confer the right to prevent third parties from doing the following:
(i) using the industrial design in the making of any product;
(ii) importing any product related to the industrial design, or possessing such a product for the purpose of offering it for sale or selling it.
The aforementioned acts shall not become lawful merely by virtue of a difference between the field in which they are performed and the field in which the legally protected industrial design is used, or because they relate to a product that differs from the registered industrial design.
50. Where a person has in good faith engaged in acts mentioned in the foregoing Article before the filing of a registration application, that person shall have the right to continue doing so with respect to products already obtained. Such a right shall be considered personal, and may only be surrendered or transferred to other parties as part of the establishment benefiting from it.
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51. The provisions of Articles 7, 9, 15, 18, 19 and 20, and also the provisions of Sections Two and Three of Chapter Two, of this Law shall be applicable to industrial designs.
Chapter Four Contractual Licenses
52. The owner of the protection title may license any natural or legal person to use or exploit the protected right, provided that the duration of the license does not exceed that of the protection granted under this Law. The license contract must be in writing and must be signed by the parties to it.
53. The license contract shall be recorded and a mention thereof entered in the Special Register for Protected Rights on payment of the prescribed fee. The license shall be binding on third parties from the date of its publication in the Official Gazette.
The recorded license contract shall be struck off the Special Register, at the request of the parties to it, if it is rescinded or revoked by virtue of a court decision or when the term of the contract expires.
54. In the absence of any provision to the contrary in the license contract, the owner of the protection title shall be entitled to exploit or use the subject matter thereof or grant other licenses to third parties.
55. In the absence of any provision to the contrary in the license contract, the licensee shall have the right to exploit and use the subject matter of the license in the United Arab Emirates, in all fields and by all means, for the duration of the legal protection.
The licensee shall also be entitled to use the rights conferred on its owner by the protection title to stop any infringement, imminent infringement or prejudice affecting the subject matter of the protection title. The licensee shall notify the owner of the protection title, by registered mail, or any such infringement, imminent infringement or prejudice. If the latter fails or neglects to institute the necessary proceedings within thirty days from the date of notification, the licensee shall be entitled to institute such legal and court proceedings and seek compensation for any damages that may have resulted from the inaction or negligence of the owner of the protection title, or from acts committed by third parties.
56. Unless otherwise provided in the license contract, the licensee shall not surrender the license or grant sublicenses to third parties as long as the ownership of the establishment or part of the establishment that exploits the license has not been surrendered or transferred.
57. Any contracts by which protected subject matter is licensed or surrendered or ownership thereof is transferred, or any modification or renewal of such contracts, shall be subject to verification by the Directorate as to their compliance with the terms, guarantees and rights embodied in the protection titles. The Directorate may request that such contracts be modified to serve the legal interests of the parties and the economic interests of the State. If the parties do not respond to the request, the Directorate shall be entitled to refuse approval of the contract and to record the refusal in the Register, as provided in the By- Laws of this law.
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Chapter Five Preventive Measures, Offenses and Penalty
58. The owner of the protection title or the beneficiary of all or some of the industrial property rights provided by this Law may request the competent court, either before or during the civil or criminal proceedings, to issue a writ of attachment on the invention or industrial design, or on the establishment or the part of the establishment using or exploiting any of the industrial property titles mentioned, in relation to which an infringement or an unlawful act has been committed that contravenes this Law or contracts or licenses granted under the provisions thereof.
59. The person requesting the attachment shall deposit a guarantee in court before the writ of attachment is issued. The distrainer shall institute court proceedings within eight days from the date of issue of the writ, failing which the writ shall be regarded as not having existed.
The distrainee may lodge an action for damages within sixty days from the date of expiration of the aforementioned period or from the date on which a final decision is rendered dismissing the action of the distrainer.
The aforementioned guarantee shall be paid once a final decision has been rendered on the distrainer’s or distrainee’s action.
60. Without prejudice to any severer penalties provided by another law, any person who provides false or falsified documents or information in order to obtain a patent, utility certificate or know-how, who imitates an invention, a process or an element of know-how, or who intentionally infringes any right protected by this Law shall be punishable by imprisonment for between three months and two years or a fine of not less than Five Thousand Dirhams or both.
The same sanction shall apply in cases that relate to industrial designs.
61. In any civil or criminal action, the competent court may decide to confiscate the property that has been or is to be attached and deduct its value from the fine or damages, or dispose of the property in whatever other manner it deems appropriate. The court may also order the destruction of the equipment used in committing the act of imitation, and remove the effects of any illegal act. The court may also order any of the preceding measures in cases of acquittal.
The court may likewise order publication of the decision in the Official Gazette or any daily newspaper at the expense of the condemned person.
Chapter Six Industrial Property Directorate and Final Clauses
62. A Directorate shall be established at the Ministry of Finance and Industry and shall be called the Directorate of Industrial Property. The Directorate and its branches shall be entrusted with the implementation of the provisions of this Law and its By-Laws.
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The Minister shall issue a decree relating to the functions of the Directorate and its branches as provided by this Law and its By-Laws.
63. The employees of the Directorate shall have the status of officers of the Judicial Police for the enforcement of the provisions of this Law and its By-Laws. They shall be under the obligation, while employed and after termination of their employment, neither to reveal professional secrets nor to communicate, disclose or use information obtained in their capacity as employees of the Directorate, either in their own interest or in the interest of third parties. They may not keep in their personal possession an original, or a copy of any document. They may not practise the profession of agents before the Directorate while employed or for three years after the termination of their employment.
64. By a decree of the Minister, a Committee shall be formed to be presided over by a member of judiciary and four members one each from the Ministry of Finance and Industry, the Ministry of Economy and Commerce, the Federation of Chambers of Commerce and Industry and the General Secretariat of U.A.E. Municipalities. Each member shall be chosen by the concerned Ministers and by the Chairman of the Federation of Chambers of Commerce and Industry and by the Secretary General of the Municipalities as per conditions.
The representative of the Ministry of Finance and Industry may not be a staff member of the Directorate. However, the representative of the aforementioned Federation or General Secretariat may be an employee of a member chamber of the Federation or of a municipality of any Emirate of the Union.
The Committee shall be competent to hear any opposition filed by interested parties against decisions rendered pursuant to this Law and its By-Laws.
The functions of the Committee, the opposition and hearing procedures and also the relevant fees shall be prescribed by the By-Laws.
65. Decisions of the Committee may be appealed against in court, according to the relevant procedures, within thirty days from the date of notification of the Committee’s decision.
The court may seek the assistance of experts competent in the field to which the dispute relates or request the opinion of the Directorate thereon.
66. The By-Laws shall provide for the profession of registration agent authorized by the Directorate and shall determine the conditions to be fulfilled by agents, their duties, the fees to be paid for their names to be included in the List of Registration Agents and cases in which entries are cancelled and names struck off the List.
67. The implementing By-Laws of this Law shall be issued by the Council of Ministers on recommendation from the Minister and include assignment of functions, hierarchy, and authorizations in carrying out the provisions of this Law. It shall also provide for the types of registers, application examination system, required information and documents, fees, expenses and publication fees, as well as the rules and provisions needed for implementing this Law.
YH UNITED ARAB EMIRATES
Patents, Law, 12/10/1992—1413, No. 44 page 16/16
68. Any provision which violates or contradicts the provisions of this Law is deemed to be repealed.
69. The law shall be published in the Official Gazette and come into effect three months after the date of its publication.
Zayed bin Sultan Al Nahyan President of the United Arab Emirates
Issued by us, at the Presidential Palace in Abu Dhabi.
This day: 15 Rabia Al Thany 1413 Corresponding: 12 October 1992