Federal Law No. ( 11 ) of 2021
On the Regulation and Protection of Industrial Property Rights
We, Khalifa bin Zayed Al Nahyan, President of the United Arab Emirates,
- Pursuant to the perusal of the Constitution;
- The Federal Law No. (1) of 1972 On the Mandates of Ministries and Powers of Ministers, as amended;
- The Federal Law No. (1) of 1979 on the Regulation of Industry Affairs;
- The Federal Law No. (5) of 1985 on the Promulgation of Civil Procedures Code, as amended;
- The Federal Law No. (11) of 1992 on the Promulgation of Civil Procedures Code, as amended;
- The Federal Law No. (18) of 1993 on the Promulgation of Commercial Transactions Code, as amended;
- The Federal Law No. (17) of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs, as amended;
- The Federal Decree Law No. (2) of 2011 on the Establishment of the National Emergency, Crisis and Disasters Management Authority, as amended;
- The Federal Law No. (4) of 2012 on the Regulation of Competition;
- The Federal Law No. (2) of 2015 on Commercial Companies, as amended;
- The Federal Law No. (19) of 2016 on Combatting Commercial Fraud;
- The Federal Law No. (8) of 2019 on Medical Products, Pharmacy Profession and Pharmaceutical Establishments;
- The Federal Decree No. (21) of 1975 on the Accession of the UAE to the World Intellectual Property Organization;
- The Federal Decree No. (20) of 1996 on the Accession of the UAE to the Paris Convention for the Protection of Industrial Property;
- The Federal Decree No. (21) of 1997 on the Accession of the UAE to the World Trade Organization;
- The Federal Decree No. (84) of 1998 on the Accession of the UAE to the Patent Cooperation Treaty; and
- In accordance with the proposals of the Minister of Economy, as approved by the Council of Ministers and the Federal National Council and attested by the Federal Supreme Council;
- We do hereby enact the following Law:
CHAPTER ONE
Definitions and General Provisions
Article (1) Definitions
In application of this law, unless the context requires otherwise, the following words and terms shall have the meaning assigned to each of them:
State : United Arab Emirates.
Ministry : Ministry of Economy.
Minster : Minister of Economy.
Committee : Petition Committee created by the resolution of the Council of Ministers.
Court : Abu Dhabi Federal Court of Appeal.
Centre : The Ministry’s Internarial Centre for Patent Registration.
Industrial property : The rights related to patent, utility certificate, design, integrated circuit, and undisclosed information.
Protection deed : The document validating the granting of protection by the Ministry to invention, industrial design, or integrated circuit layout.
Invention : An innovative idea conceived by an inventor in any technical field in relation to a product, a method of manufacturing, or both of them, in a way that practically leads to new addition or a solution to a specific problem in such field.
Patent : The protection deed granted by the Ministry to invention.
Utility certificate : The protection deed granted by the Ministry to inventive step that is insufficient to qualify for patent eligibility.
Industrial design : Any two-dimensional or three-dimensional ornamental or decorative creation giving a specific design that may be utilized as an industrial or handcraft product.
Industrial design : The protection deed granted by the Ministry to an industrial certificate design.
Integrated circuit : Any product, in its final form or an intermediate form, in which the elements- at least one of which is an active element- are fixed on a piece of isolating material, with some or all of the interconnections forming an integrated formation which is intended to perform a specific electronic function.
Layout certificate : The protection deed granted by the Ministry to each three- dimensional arrangement prepared for an integrated circuit and intended for manufacturing.
Mandatory license : The license granted to a natural or corporate person for the utilization of a patent, utility certificate, industrial design, layout or integrated circuit within the State without the need to obtain the approval of the right holder or the industrial property right licensee.
Industrial Property : The periodic Industrial Property Bulletin circulated by the Bulletin Ministry to publish all the items required to be published by this Law or its Executive Regulations.
Registration agent : The agent recorded in the Ministry’s Registration Agent List.
International : The application submitted to the Ministry to obtain a patent application under the International Patent System of the Patent Cooperation Treaty.
Application Admission : The national Office where international application is admitted, Office which shall in turn refer the application to any other authority as prescribed by the Patent Cooperation Treaty.
Register : The Register maintained by the Ministry to register industrial property rights therein.
Article (2)
Objectives
This Law is aimed at the following:
1. The protection of industrial property and regulation of the procedures of their registration, use, utilization and assignment to promote knowledge and innovation in the State.
2. The reinforcement of the State’s competitiveness in the field of industrial right protection in line with the international best practices.
Article (3)
Scope of Application
1. This Law shall apply to patents, industrial designs, integrated circuits, undisclosed information and utility certificates recorded in the State inclusive of free zones.
2. The provisions of this Law shall not prejudice the provisions of agreements or conventions to which the State is a party and which regulate the rights of the citizens of other parties thereto as well as the rights of persons who have similar rights under such agreements and conventions.
3. Foreigners shall have similar rights to those granted to citizens by this Law provided that such foreigners are citizens of a state that reciprocates the same treatment with the State.
Article (4)
Independent Rights
Industrial property obtained in the State shall be independent of industrial property obtained for the same invention in other countries, whether members of the Paris Convention for the Protection of Industrial Property or not.
CHAPTER TWO
Inventions
Part One
Patent and Utility Certificate
Article (5)
Conditions of Patent Eligibility
1. Patent shall be granted for each novel invention resulting from innovative idea or innovative improvement, which involves inventive step and is susceptible of industrial application.
2. Patent shall be granted independently for any novel application, modification, improvement or addition related to a previously patented invention if it meets the conditions provided for in this Law.
3. An invention shall be considered new if it is not preceded by any earlier technology previously disclosed to the public in writing or orally, through use, or by any other means which have made such invention known before the date of filing the patent application or of the legally claiming priority.
4. Disclosure of the invention by the inventor or a third party shall not be taken into consideration if such disclosure takes place during the previous 12 months before the date of filing the patent application.
5. Invention shall be considered to involve inventive step if, according to an ordinary person versed in the relevant profession, it is not an intuitive procedure as a result of earlier technology related to the patent application.
6. An invention is considered to have an industrial application if it can be manufactured or used in any field.
Article (6)
Cases of Utility Certificate Eligibility
1. Utility certificate shall be granted to any new invention that has industrial application but has not been resulted from an inventive step that is sufficient to qualify for patent eligibility.
2. Utility certificates shall be granted to any inventions that meet the conditions provided for in Article (5) of this Law if requested so by patent applicants or their legally appointed representatives who want to limit their application to utility certificate.
3. Patent office, upon the request of the inventors, registration agent, or permitted assignees as per Article (9) of this Law, may convert utility certificate to patent application or vice versa in accordance with the controls and conditions provided for in the Executive Regulations of this Law.
Article (7)
Cases of Patent or Utility Certificate Ineligibility
1. Patents or utility certificates shall not be granted for any of the following:
a. Plant and animal researches and species or biological methods of plant and animal breeding, with the exception of microbiological methods and their products in accordance with the Executive Regulations of this Law.
b. Diagnostic methods, medications, and surgical operations related to the treatment of humans and animals.
c. Scientific principles, discoveries and theories and mathematical methods.
d. Plans, rules, software, methods of carrying out commercial activity, performing pure mental activity, or playing games.
e. Natural materials even if purified or separated from natural resources, with the exception of methods of purifying or separation of such natural materials from their natural resources.
f. Inventions the use of which would violate public order or public morals or inventions that are harmful to the life, environment, or public health.
2. If the Ministry discovers upon reviewing the patent application that the relevant invention relates to security or defense industry, the procedures stipulated in the Executive Regulations of this Law shall be applicable.
Article (8)
Cases of Right Holder Determination
1. The name of inventor shall be specified in the patent of utility certificate application, unless the inventor requires otherwise in writing.
2. Without prejudice to the provisions provided for in Article (10) of this Law, the inventors or their legal successors shall have the rights to the inventions.
3. If the basic elements of the invention related to the application are derived from other person’s invention, all rights related to the invention shall belong to such other person being the original inventor.
4. If more than one person jointly take part in achieving an invention, the right shall belong to them jointly. A person whose effort is limited to helping in the creation of the invention without any contribution by any inventive step shall not be considered as an inventor.
5. Without prejudice to the provisions provided for in Articles (9) and (10) of this Law, if more than one person create the same invention independently, the relevant patent or utility certificate shall be given to the first to apply for such patent or utility certificate or claim priority regarding the same invention as applicable, provided that such applicant shall meet the required conditions.
Article (9)
Application for Patent or Utility Certificate
If a person who is not entitled to an invention applies to a patent or utility certificate, the right holder of the invention as per Article (10)(Mis-typing of 8) of this Law may apply to the Ministry to transfer the application, the patent or the utility certificate to himself.
Article (10)
Invention under Agreement
1. If an invention is created under an agreement or similar assignment, the right in such invention shall belong to the employer unless it sis agreed otherwise. Anny patent application submitted by the employee within two years after the termination of employment shall be deemed to be submitted during employment.
2. If such an invention has economical value that considerably exceeds the expectations of the two parties upon executing the agreement, the inventor shall be entitled to additional compensation as determined by the Court unless the two parties agree on a specific additional payment.
3. If an employee, whose employment agreement does not require any inventive activity, achieves an invention related to the field of activity of employer, using the expertise, documents, tools, raw materials provided by employer in the context of performing employment duties, entitlement to such invention shall belong to the employee four months after the date of report to be presented pursuant to Clause (4) below to the employer about the invention or any other date on which the employer becomes aware of such an invention in other way, if the employer during which does not inform the employee in writing about his intention to acquire the invention.
4. Inventing employee under agreement of similar assignment shall report the invention in writing to the employer immediately after the achievement of such invention.
5. If the employer notify the employee about his intention to acquire the invention within the period stipulated in Clause (3) above, the entitlement to the invention shall be deemed to belong to the employer starting from the date of invention achievement. In such case, the employee shall be entitled to a fair compensation taking into consideration the economic value of such invention and any benefit to the employer thereof. If the two parties do not reach an agreement on such compensation, the Court shall determine the same.
6. Any agreement that denies compensation to the employee shall be invalid.
Article (11)
Conditions of Patent or Utility Certificate Application
1. Patent or utility certificate application shall be submitted to the Ministry by the inventor, registration agent or assignee of invention rights as per Article (8) of this Law through explicit request to be presented in accordance with the Executive Regulations of this Law after payment of applicable fees.
2. The application shall include the names of applicant, inventor and registration agent, if any, as well as an acknowledgement reasoning the applicant’s entitlement to the invention if applicant is another person other than the inventor.
3. The application shall include the name, summary and detailed description of the invention in addition to one or more protection element and illustration of it, if any.
4. The summary shall be used for the purpose of general information of technological or technical nature only and may not be used for the explanation of the application.
5. The invention description needs to be in the best possible format at the time of application submission or on the priority date so it can be realized by a professional possessing specialized knowledge in that field.
6. The application shall decide on the element (s) of protection related to the requested protection. Illustrations may be used to explain the same if necessary.
7. The elements of protection must be clear, concise and totally based on the description.
8. The application and attachments thereof shall be submitted in Arabic and English. If one of the two version is not submitted, it shall be provided within the time limit specified in the Executive Regulations of this Law.
9. The applicant shall provide the Centre with any relevant additional information and data as required within ninety (90) days from being notified accordingly.
10. The applicant may introduce any changes to the application if such changes shall not apply to the substantial information included in the original application.
11. Executive Regulations of this Law shall provide for the application’s attachments as well as the time limits to provide them.
Article (12)
Priority Based on a Previous Application Overseas
1. Applicants may request to benefit from right of priority if they have filed previous requests in a country that is a party to an agreement or convention executed with the State. In such case, the application shall include the date and filing number of the previous request and the country in which it has been filed, in accordance with the Executive Regulations of this Law.
2. The period or priority shall be twelve (12) months starting from the date of the first filing.
Article (13)
Examination of Patent or Utility Certificate
1. After payment of the applicable fees by the applicant, the Ministry shall examine the application of patent or utility certificate. In doing so, the Ministry may require additional submissions as it deems necessary in accordance with the Executive Regulations of this Law. If such additional submissions are not provided within ninety (90) days from the date of notifying the applicant accordingly, applicant shall be considered to have assigned the application.
2. If the invention meets the conditions required by this Law and its Executive Regulations, the Ministry shall publish the approval of the application in the Industrial Property Bulletin in the way prescribed in the Executive Regulations of this Law.
Article (14)
Urgent Application
Upon the request of applicants, the Ministry may examine certain urgent applications of patent or utility certificate before other applications regardless of application submission dates or examination application dates, provided that this shall not prejudice priority applications in accordance with the conditions and criteria stipulated in the Executive Regulations of this Law.
Article (15)
Related Inventions
1. Application referred to in Article (11) of this Law may be related to a single invention or a group of related inventions in a way that make them one general inventive concept. Appropriate decision on applications including more than one invention shall be taken in accordance with the Executive Regulations of this Law.
2. If it is established, after the issuance of patent or utility certificate, that the conditions of related inventions are not met in accordance with (1) above, this shall not be deemed as a reason to invalidate the patent or utility certificate.
Article (16)
Splitting of Patent or Utility Certificate Application
1. Applicants of patent or utility certificate applications including more than one invention may split their applications into more than one applications to the limit provided for in the description or illustrations attached with their first application.
2. Applications split in accordance with this Article (16) shall be deemed as have been submitted on the same date as of the first patent application in accordance with the Executive Regulations of this Law.
Article (17)
Procedures of Granting and Data of Patent or Utility Certificate
1. The Centre shall grant patent or utility certificate and publish the same in the Industrial Property Bulletin in accordance with the powers and procedures provided for in the Executive Regulations of this Law.
2. Following their entry in the Register, the patent or utility certificate shall be delivered to the right holder if no objection to the same is submitted through reexamination application or petition within the time limits provided for in the Executive Regulations of this Law. The patent or utility certificate shall include the registration number, date of issuance, evidence of registration or renewal fee payment, and other data as provided for in the Executive Regulations of this Law.
Article (18)
Duration and Fees of Patent and Utility Certificate
1. Patent shall be valid for twenty (20) years and utility certificate shall be valid for ten (10) years starting from the date of application submission.
2. Applicant or holder of patent or utility certificate shall pay annual fees applicable to the patent or utility certificate registration throughout the applicable duration of protection in accordance with the controls and procedures provided for in the Executive Regulations of this Law.
3. The Executive Regulations of this Law shall determine the procedures and conditions of revalidating the patent or utility certificate applications for which applicable fees have been delayed or not paid in accordance with (2) above.
Article (19)
Rights Conferred by Patent or Utility Certificate
A patent or utility certificate shall confer on its holder the following:
1. The right to utilize the invention. Any of the following shall be deemed as utilization of the invention:
a. If the subject matter of the patent or utility certificate is a product, the holder of the patent or utility certificate shall have the right to manufacture, use, offer for sale, sell and import it for such purposes. The holder of the patent or utility certificate shall moreover have the right to prevent third parties from manufacturing, using, offering for sale, selling or importing the product for such purposes without obtaining his prior consent to do so.
b. If the invention involves an industrial process or a manufacturing method of a certain product, the patent holder shall have the same right with respect to the direct product of such process or method. In addition, the holder shall have the right to exploit such process or method and prevent third party without obtaining his prior consent from the actual exploitation of the method or from using, offering for sale, selling, importing of the direct product of such method for such purposes.
2. The right to use the method and conduct any activities prescribed in (a) (1) above with respect to any product directly derived through such method if the patent or utility certificate is granted for a method or a novel application of a known industrial method or process.
3. The rights prescribed in (1) above shall be limited to activities conducted for industrial or commercial purposes only and shall not cover activities related to the product after its sale.
Article (20)
Invention Product Manufacturing or Method Using in Good Faith
If a person, in a good faith, manufactures or uses the product or the method of the invention or undertakes serious steps for such manufacturing or usage in the State before the date of filing the application for protection by another person, or at the date of the legally claimed priority in respect of this application, the first person shall have the right to continue conducting such activities without any further expansion, despite the granting of patent or utility certificate. Such right of using shall not be transferred to third party other than the right holder.
Article (21)
Assignment of Patent or Utility Certificate and Its Conditions
1. Patent or utility certificate or the application thereof may be assigned to third party.
2. Assignment of patent or utility certificate or the application thereof shall be in writing and signed by all contracting parties before the Ministry, authenticated by the Notary Public, or duly attested in the State.
3. Assignment shall be recorded in the Register after payment of the applicable fee.
4. The Ministry may not register the assignment in the Register if such assignment may lead to the abuse of any of the industrial property rights or compromise commercial competition or any other related issue as stipulated in the Executive Regulations of this Law.
Article (22)
Rights Not Covered by Patent or Utility Certificate
Rights conferred by patent or utility certificate shall not cover the following:
1. Activities relating to education and scientific research.
2. Use of the subject matter of a patent or utility certificate for transportation means being introduced to the State on temporary or irregular basis whether such a use is intended for the body structure, machines, equipment, tools or other parts of the said means, provided that their use restricted only to the needs of such means.
3. Combining more than one medication for the purpose of medical treatment by a licensed pharmacist.
Article (23)
Individual Disposal by One of Patent or Utility Certificate Holders
1. Any one of joint holders of patent or utility certificate may individually assign his share in the invention protected by patent or utility certificate, to utilize it, and to exercise his rights granted to him by Article (19) of this Law unless it is agreed otherwise, provided that such action shall not harm other joint holders.
2. No joint holder of patent or utility certificate shall have the right to grant licenses to others for using the invention without agreement among joint holders.
Article (23)
Hypothecation of Patent or Utility Certificate
Patent or utility certificate may be hypothecated in accordance with controls and procedures provided for in the regulations applicable in the State.
Part Two
Mandatory Licenses
Article (25)
Conditions for Granting Mandatory Licenses
1. If the holder of patent or utility certificate does not use it at all or has made insufficient use of it during the following three years after granting the same, any interested party may apply for a mandatory license in accordance with procedures provided for in Article (29) of this Law if such interested party meets the following conditions:
a. The applicant shall demonstrate making efforts during reasonable period to obtain a license from the patent or utility certificate holder against reasonable price and under reasonable commercial conditions. The Executive Regulations of this Law shall provide for the procedures required in this regard.
b. The applied license shall not be exclusive.
c. The license shall be intended to meet the needs of the local market. The Executive Regulations of this Law shall provide for the guarantees that the applicant shall be obliged to offer with respect to the sufficient use of the invention, remedy the deficiencies, or meet the needs that have led to the application for the mandatory license.
d. The licensing resolution shall determine the scope and duration of the license in accordance with the purpose for which it has been granted. It may include also commitments and controls applicable to licensor and licensee.
e. The holder of patent or utility certificate shall be entitled to a fair compensation.
f. The use of the invention shall be restricted to the licensee and shall not be transferable to third party unless the ownership of the establishment or the ownership of the part thereof that uses the invention is transferred and the Court approves such transfer of license.
g. Provisions of Article (29) and (35) of this Law shall be applicable to mandatory license transfer application.
h. If the invention is related to semi-conductors, mandatory license may be granted only for public and non-commercial purposes or to rectify practices that has been decided to be non-competitive based on judicial or administrative proceedings.
2. Mandatory license shall not be granted if the holder of patent or utility certificates offers plausibly justifies his position.
Article (26)
Rights of Mandatory License Holder
1. The mandatory license shall give its holder the right to exercise some or all of the activities stated in Article (19) of this Law in accordance with the conditions of the license.
2. The holder of the mandatory license shall be entitled to exercise the civil and penal rights granted to the holder of patent or utility certificate to protect himself from abuse should the holder of patent or utility certificate remains inactive after being aware of or notified about any illegal act.
Article (27)
Multiple Mandatory Licenses
The issuance of a mandatory license shall not preclude issuance of other mandatory licenses.
Article (28)
Exceptions to the Conditions of Mandatory Licenses
The Court may not accept the requirement provided for in Article (25) of this Law if the mandatory license application is resulting from a case of emergency, crises, disaster, public urgent need or non-commercial purposes.
Article (29)
Procedures of Mandatory License before the Court
1. The mandatory license application shall be submitted to the Court in the form of a lawsuit, in which the applicant complains against the holder of patent or utility certificate. The Centre shall be notified to appoint a representative thereof to attend the proceedings. The Court may give the two parties a time limit as it deems fit to reach a mutual agreement. The time limit may be extended if such an extension is justified by the Court.
2. Upon the expiry of the said time limit provided for in (1) above, the Court shall decide on the application by rejection or approval. If approved, the Court shall decide on its conditions, scope and field as well as the compensation due to the holder of patent or utility certificate in accordance with Article (25) of this Law.
3. Once the judgement provide for in (2) above is final, the licensee shall notify the parties and the Ministry about the judgement. The Ministry shall enter it in the Register and publish it in the Industrial Property Bulletin after payment of the applicable fee. The judgement shall come into force versus third parties starting from the date of the publication thereof.
Article (30)
Issuance of Mandatory License for the Purpose of Public Interest
A mandatory license to exploit an invention protected by a patent or utility certificate may be issued by a decision of the Minister or his authorized deputy if such invention is important for the public interest, in accordance with the conditions provided for in Article (25) of this Law, with the exception of the time limit condition and Clause (a) (1) therein. Such decision by the Minister shall be published in the Industrial Property Bulletin.
Article (31)
Issuance of Mandatory License to Exploit Patent or Utility Certificate
1. If an invention protected by a patent or a utility certificate cannot be exploited in the State without prejudice to rights derived from patent or a utility certificate granted based on a previous application, the holder of the subsequent patent or utility certificate may be granted a mandatory license upon his request in accordance with the provisions of Clauses (c) and (e) (1) of Article (25) of this Law, to the extent necessary for the exploitation of his invention, if this invention serves industrial purposes different from those of the subject matter invention of the previous patent or the utility certificate, or constitutes a remarkable technical improvement to him.
2. If a mandatory license is granted in accordance with Clause (1) above, the holder of the previous patent or utility certificate may obtain a mandatory license for the subsequent patent or utility certificate whenever requested.
3. The mandatory license granted to the holder of the subsequent application may not be assigned to others except by assignment of the subsequent patent.
Article (32)
Amendment the Conditions and Cancellation of Mandatory License
1. The Court or the Minister, as applicable, may amend the conditions of the mandatory license upon the request of the holder of patent or utility certificate or the licensee, if such amendment is justified based on new facts, in particular, if the holder of patent or utility certificate is granted a contractual license with more favorable conditions than the conditions of the mandatory license.
2. The Court or the Minister, as applicable, may revoke the mandatory license based on the request of the holder of patent or utility certificate if the licensee does not observe the conditions of the license or if the reasons that has justified such granting have ended. In such case, the licensee shall be granted a reasonable grace period to stop exploiting the invention if the immediate termination entails gross damage to the licensee.
Article (33)
Registration and Publication of Mandatory License
1. Mandatory licenses and related issuances shall be recorded in the Register and published in the Industrial Property Bulletin after payment of applicable fees in accordance with the Executive Regulations of this Law.
2. Licenses issued in accordance with Article (30) of this Law shall be exempted from fees if government authorities exploit the invention.
Part Three
Patent or Utility Certificate Abandonment and Cases of Invalidating Each of Them
Article (34)
Conditions and Procedures of Patent or Utility Certificate Abandonment
1. The holder of patent or utility certificate or the licensee may abandon the same it by a written notification to the Ministry. The holder shall furthermore notify any party related to the patent or utility certificate of his intention to abandon them.
2. The abandonment may be limited to one or more rights conferred by the patent or utility certificate. Such abandonment shall not prejudice the rights of third parties, unless such third parties have abandoned them in writing and shall be recorded in the Register. The abandonment shall come into force versus third parties starting from the date of the publication thereof in the Industrial Property Bulletin.
Article (35)
Lawsuit to invalidate the grant of patent, Utility Certificate or Mandatory License
1. Any interested party may request the Court to invalidate the grant of the patent, utility certificate or mandatory license if the same are granted without fulfilling the grant conditions provided for in this Law or its Executive Regulations.
2. The holder of patent, utility certificate or compulsory license, the Ministry, and everyone who has a right to any of the same shall be notified of the judgement made pursuant to Clause (1) above. The judgement shall be published in the Industrial Property Bulletin.
The invalidation request may be limited to a part of the patent, utility certificate or mandatory license. In such case, the issued judgement shall be deemed as a restriction of the rights conferred upon their holder.
Article (36)
Situation Reconciliation Following the Issuance of Invalidation Judgement
Subject to the provisions of Article (32) of this Law, the judgment totally or partially invalidating the decision to grant a patent, utility certificate or license shall be deemed effective on the date of granting. Nevertheless, the awarded party shall not be obligated to refund any royalties obtained in exchange for the exploitation of the invention or the mandatory license. The invalidation judgment shall be noted in the Register and published in the Industrial Property Bulletin.
Part Four
International Patent Application
Article (37)
International Applications
The Ministry shall receive international applications in accordance with the Patent Cooperation Treaty. The Executive Regulations of this Law shall regulate the conditions and procedures to be followed in this regard.
Article (38)
Fees applicable to International Phase and National Phase of International Applications
The provisions of the Patent Cooperation Treaty shall govern the fees applicable to the international phase procedures of international applications.
The fees and procedures for the national phase of international applications are subject to the provisions of Articles (11) and (18).
CHAPTER THREE
Industrial Designs
Article (39)
Protection of Copyrights and Artistic Rights Related to Industrial Designs
The protection provisions stipulated in this Law in relation to industrial designs are without prejudice to the copyrights and artistic rights related to them, whether the source of such rights is the law or international agreements and treaties to which the State is a party.
Article (40)
Registration of Industrial Design
An industrial design does not enjoy the protection provided for in this Law unless it is recorded in the Register. The Executive Regulations of this Law shall determine the procedures for submitting and examining the registration application.
Article (41)
Multiple industrial Designs in the Protection Application
The protection application may include more than one industrial design. Such multiple designs must belong to the same category of the international classification in accordance with the stipulations of the Executive Regulations of this Law.
Article (42)
Industrial Design Filing Priority
1. The Provision of filing priority shall apply to industrial design provided for in Clause (1) of Article (12) of this Law.
2. The priority period shall be (6) six months from the date of the first filing.
Article (43)
Conditions of Industrial Design
1. The industrial design must be novel.
2. The industrial design may not be used commercially if it violates public order or public morals.
3. An industrial design is considered novel unless it has been disclosed to the public by publication, use, or any other method prior to the date of application filing.
4. For the purposes of this article application, the industrial design shall not be deemed as being disclosed to the public as long as such disclosure is made within a year prior to the date of the application.
Article (44)
Examination Application Procedures of Industrial Design
1. The Center, after payment of the applicable fee, shall examine the industrial design application. The Centre may require additional submissions as it deems necessary in accordance with this Law and its Executive Regulations. If such additional submissions are not provided within ninety (90) days from the date of notifying the applicant accordingly, applicant shall be considered to have assigned the application.
2. The industrial design must meet the conditions required by this Law and its Executive Regulations and the Ministry shall publish the approval of the application in the Industrial Property Bulletin.
3. The Executive Regulations of this Law shall provide for the requirements and procedures of examination and the way of publication.
Article (45)
Duration of Protection and Fees Payment
1. The protection of industrial design shall be valid for twenty (20) years starting from the date of protection application submission.
2. Applicant or holder of industrial design shall pay annual fees applicable to the industrial design registration throughout the whole applicable duration of protection in accordance with the controls and procedures provided for in the Executive Regulations of this Law.
3. The Executive Regulations of this Law shall determine the procedures and conditions of revalidating the industrial design applications for which applicable fees have been delayed or not paid in accordance with (2) above.
Article (46)
Rights Conferred by the Industrial Design Certificate
1. The protection applicable to industrial design in accordance with this Law shall confer the right to prevent third parties from doing any of the following:
a. Using the design in the manufacturing of any product.
b. Importing and product related to the industrial design or holding it to use it for commercial purposes, offering it for sale or selling it.
2. The activities set out in Clause (1) above shall not be deemed legitimate just because their field differs from the field of the industrial design that is protected by the Law or because they relate to a product that differs from the industrial design covered by the protection deed.
Article (47)
Rights Not Covered by Industrial Design Certificate
1. Rights conferred by Industrial design certificate shall not cover the following:
a. Activities relating to education and scientific research.
b. Use of the subject matter of an industrial design certificate for transportation means being introduced to the State on temporary or irregular basis whether such a use is intended for the body structure, machines, equipment, tools or other parts of the said means, provided that their use restricted only to the needs of such means.
2. If a person, in a good faith, conducts any of the activities provided for in Article (46) of this Law before the date of filing the application or at the date of the legally claimed priority, such person shall have the right to continue conducting such activities without any further expansion. Such right of using shall not be transferred to third party unless along with the establishment benefiting from such right.
Article (48)
Rules of Industrial Design where Specific Provisions Are Not Available
Industrial design shall be subject to the provisions of this Law regarding patent and utility certificate where no specific provisions are provided in this Chapter.
CHAPTER FOUR
Contractual Licenses
Article (49)
Conditions of Contractual Licenses
The holder of the protection deed may grant a license to any natural or corporate person to use or exploit the right subject of protection, provided that the license period shall not exceed the duration of protection established under the provisions of this Law. The contractual license must be in writing and signed by the parties.
Article (50)
Common Provisions Related to Industrial Design, Patent and Utility Certificate
The holder of the protection deed shall enter the contractual license in the Register after payment the applicable fee. The Ministry note it in the Register. The license shall come into force versus third parties starting from the date of the publication thereof in the Industrial Property Bulletin. The entry shall be written off at the request of the parties to the contract or at the expiry of its term.
Article (51)
Contractual License Relation to Third Party
The contractual license shall not prevent the holder of the protection deed from exploiting or using the subject matter of the protection by himself or granting further licenses to third parties unless the licensing contract stipulates otherwise.
Article (52)
Rights of Licensee
1. In accordance with the provisions of this Law and its Executive Regulations, the licensee has the right to exploit and use the licensed subject matter in all of the State’s territories, including free zones, throughout the duration of legal protection in all fields and by all means, unless the licensing contract stipulates otherwise.
2. The licensee shall have the right exercise the same rights granted by the protection deed to its holder to prevent any infringement on, threat, or harm to the subject matter of protection.
3. Any of the licensor or the licensee may take the necessary legal measures and actions to protect their own right.
Article (53)
Assignment of Contractual License
It is not permissible for the licensee, other than in the case of assigning the establishment or transferring its ownership in whole or in part, to assign the license or grant sub-licenses to third parties, unless the contractual license stipulates otherwise.
Article (54)
Monitoring of Contractual License
1. The contractual license or its assignment and any amendment or renewal of its contracts shall be subject to the Ministry’s monitoring in terms of conditions, guarantees and rights conferred by the protection deeds.
2. The Ministry may reject the registration of the contractual license if it includes any misuse of any industrial property right or compromise commercial competition with regard to the subject matter of the contractual licensing in the State. The Ministry may request the holder of the protection deed to amend the terms of the contractual license to eliminate the reasons for rejection in accordance with the provision of the Executive Regulations of this Law.
CHAPTER FIVE
Integrated Circuit Layouts
Article (55)
Conditions of Integrated Circuit Layout Protection
1. The layouts of integrated circuits shall enjoy protection according to the provisions of this Law if they are original, resulting from an intellectual effort exerted by their holders and not parts of the common knowledge among professionals in the industrial domain concerned.
2. A layout shall be considered original if the coupling of its components and interconnection among each other is original in itself, even though the components that compose it may fall within the common knowledge among professionals in the industrial domain concerned.
Article (56)
Components of Non-Protected Integrated Circuit Layout
Any concept, method, technical system or coded information that a layout of integrated circuits may include shall not be protected.
Article (57)
Prohibitions on the Use of Integrated Circuit Layouts
Without prior written consent from the holder of the right to the protected layout, it shall not be permissible to any natural or corporate person to conduct any of the following actions:
1. Copying the layout in whole or any original part of it, whether such copying is made by incorporating it into an integrated circuit or by any other way.
2. Importing, selling or distributing the layout for commercial purposes, whether separately, incorporated in an integrated circuit or as a component of a product.
Article (58)
Permissible Actions without License
Without prejudice to the protection provisions stipulated in this Chapter, any natural or corporate person may conduct, without a license from the right holder, any of the following actions:
1. Reproduction or commercial exploitation, including the import, sale or distribution, of an integrated circuit containing a protected layout or of a product in which such integrated circuit is used if such action is conducted by a person who does not know or has not been able to know at the time of the such action that the integrated circuit or product includes a protected layout. In such case, the holder may dispose of his stock of products or the products for which an order has been made in exchange of a fair compensation to the right holder.
2. Personal use or for the purposes of testing, examination, analysis, education, training, or scientific research of a protected layout. If such use results in the creation of a new layout, the inventor shall have the right to protect it.
3. Inventing a layout identical to another protected layout as a result of independent efforts.
4. Importing a protected layout or an integrated circuit produced using a protected layout, whether such circuit is separate or incorporated into a product, or importing a product containing an integrated circuit that includes a protected layout, whether traded in the State or overseas.
Article (59)
Registration and Protection Duration of Integrated Circle Layouts
1. Integrated circuit layout registration applications shall be submitted to the Centre in accordance with provisions of the Executive Regulations of this Law.
2. The protection duration for layout of integrated circuits shall be (10) ten years starting from the date of submitting the application or from the date of its first commercial exploitation in the State or overseas, whichever is the earlier.
Article (60)
Common Provisions Related to Integrated Circuit Layout, Patent and Utility Certificate
Integrated circuit layout shall be subject to the provisions of this Law regarding patent and utility certificate where no specific provisions are provided in this Chapter.
CHAPTER SIX
Undisclosed Information
Article (61)
Conditions of Undisclosed Information Protection
Undisclosed information shall be protected in accordance with the provisions of this Law and its Executive Regulations if such undisclosed information meet the following:
1. Confidentiality, whereby it is not as a whole or in its construction inclusive of its vocabulary known or in general circulation among those professionals working in the industrial domain in which such information fall.
2. Such information derive commercial value from being secret.
3. Such information relies for its confidentiality on the effective measures taken by its legal holder to maintain privacy.
Article (62)
Scope of Undisclosed Information Protection
1. The protection established by the provisions of this Law shall extend to undisclosed information, if such information are the result of considerable efforts, are provided by the concerned person to government authorities upon their request for the purposes of marketing pharmaceutical, agricultural or chemical products, and where the use of new chemical compounds is required for the testing purposes before obtaining marketing approval.
2. Governmental authorities that receive undisclosed information are obligated to protect them from unlawful disclosure and commercial use, starting from the date when the information are provided to them until the cessation of confidentiality or for up to (5) five years, whichever is shorter.
3. It shall not be considered as an infringement of the undisclosed information holder rights if the competent authorities disclose such information as might be necessary to protect the public.
4. The holder of such information or his legal successor shall have the right to assign them against a consideration or for free.
Article (63)
Responsibility of Undisclosed Information Holder
1. The legal holder of undisclosed information shall be obligated to take measures ensuring the safety of such information and preventing its circulation among non-specialists.
2. The legal holder of undisclosed information shall be obligated to regulate the circulation of this information within the establishment, restricting it to the relevant specialists, and protecting them from being unlawfully disclosed to third parties.
3. The legal holder of undisclosed information shall be liable to the infringement of such information by others, unless he establishes that he has exerted sufficient and reasonable effort to protect them.
4. The confidentiality of undisclosed information and any resulting rights thereof shall continue toward third parties as long as such information stay undisclosed in accordance with Article (61) of this Law.
Article (64)
Actions Conflicting with Fair Business Practices
1. Any of the following acts shall be conflicting with fair business practices and involving illegal competition:
a. Bribery of employees of the entity that possesses the information in order to obtain them.
b. Incitement to disclose information by employees when they are aware of such information because of performance of their duties.
c. If a party to “confidentiality agreements” discloses what he becomes aware of about them.
d. Obtaining information from the places where they are kept in using any illegal way, such as theft, espionage, etc.
e. Obtaining information using fraudulent methods.
f. Use of the information by a third party who receives them as a result of any of the previous actions while knowing their confidentiality status and that they have been obtained through any of said actions.
g. Any other actions that are deemed to be conflicting with fair business practices.
2. It shall be considered as an infringement of undisclosed information any consequences of the actions set out in (1) above, including the disclosure of information or the possession or use of them by third parties unauthorized by the legal holder of the same.
Article (65)
Actions Non Conflicting with Fair Business Practices
Any of the following acts shall not be conflicting with fair business practices:
1. Obtaining information from publicly available sources.
2. Obtaining the information as a result of independent efforts involving testing, experimentation and analysis of products which are traded in the market and which incorporate the undisclosed information.
3. Obtaining information as a result of independent research, innovation, invention, development, improvement or modification made by independent hard working researchers about the holder of the undisclosed information.
4. Possessing and using information which is known, available, and circulated among professional in the industrial domain within which the information fall.
Article (66)
Common Provisions Related to Undisclosed Information, Patent and Utility Certificate
Undisclosed information shall be subject to the provisions of this Law regarding patent and utility certificate where no specific provisions are provided in this Chapter.
CHAPTER SEVEN
Claim of Damage, Preventive Measures and Penalties
Article (67)
Entitlement of Protection Deed Holder to Claim Damage
The holder of the protection deed or his licensee, in the event of violation of any of his rights conferred upon him by the protection deed, may claim damage before the Court as a result of actions made in violation of the provisions of this Law.
Article (68)
Lien
The holder of protection deed or the transferee of all or some of the industrial property rights stipulated in this Law shall have the right to request before the Court placing lien on the invention, industrial design, the layout of an integrated circuit, the establishment or any part thereof that exploit any type of industrial property upon the occurrence of any infringement or illegal action contrary to the provisions of this Law or contracts or licenses granted in accordance with its provisions.
Article (69)
Penalties
Without prejudice to any more severe penalty stipulated in any other law, any person provides incorrect or false documents or information to obtain patent, utility certificate, industrial design or integrated circuit layout, whoever imitates an invention or manufacturing process, or whoever knowingly infringes any rights protected by this Law, shall be punished with imprisonment and a fine no less than (100,000) AED One Hundred Thousand and no more than (1,000,000) One Million Dirhams, or one of these two penalties.
Article (70)
1. The Court may order the confiscation of seized items and it may order the destruction or removal of the consequences of such unlawful action in addition to the machines and tools used in forgery.
2. The Court may order the publication of the judgment in the Industrial Property Bulletin or in one of the daily local newspapers at the expense of the convicted person.
Article (71)
Judiciary Police
The Ministry’s employees who are designated by a decision of the Minister of Justice in agreement with the Minister, shall have the capacity of judiciary police to validate within their jurisdiction any violations of the provisions of this Law, its Executive Regulations and the decisions issued in enforcement thereof.
Article (72)
The Register
The Ministry shall create the Register in accordance with the controls provided for in the Executive Regulations of this Law and the ministerial decisions issued in their regard.
Article (73)
Actions Prohibited for the Ministry's Employees to Perform
The Ministry’s employees, during the period of their service and thereafter, are prohibited from doing any of the following:
1. Practicing the profession of registration agents at the Ministry during two years following the end of their service at the Ministry.
2. Keeping for themselves in their personal capacity the original of any document or paper or any copies thereof.
3. Disclosing their confidential business information or any other data or information that they have obtained while performing their jobs, or using the same for their own benefits or for the benefit of third parties and based on the request of the judicial authorities.
Article (74)
Petition and Objection
1. A committee formed by a decision of the Council of Ministers chaired by one of the judges based on a nomination by the Minister of Justice, and two experts in the field of industrial property rights, provided that none of them is an employee at the Centre. The decision shall specify the committee's work system, term, remuneration of its members, procedures of grievance before it and making decisions on such grievances.
2. The Minister appoints or delegates one of the Ministry’s employees to assume the duties of the committee’s secretary. Such secretary while performing his duties shall observe the instructions of the chairperson.
3. The committee shall decide on the grievances submitted by the concerned parties regarding the decisions issued while enforcing the provisions of this Law and its Executive Regulations.
4. The committee shall hear the grievance after the payment of the applicable fee.
5. Subject to the provisions of Clause (2) of Article (17) of this Law, the committee shall hear the grievance related to the registration of a patent, utility certificate or industrial design only after the person concerned has objected before to the Centre by applying for a post-granting reexamination.
6. The Executive Regulations of this Law shall determine the controls, procedures and time limit of post-granting reexamination application and deciding on it.
7. Subject to Clause (5) above, a lawsuit shall not heard before the Court only after deciding on grievance before the committee.
Article (75)
Conditions Related to the Profession of Registration Agent
1. It is not permissible to practice the profession of registration agents except after being registered in the registration agent list at the Ministry and payment of the applicable fee.
2. The Executive Regulations of this Law shall specify the conditions that must be met by registration agents, their duties, the provisions or controls related to the practice of the profession, and the administrative penalties that are applicable to them.
Article (76)
Fees
The Council of Ministers, based on the proposal of the Minister of Finance, shall determine the required fees to implement the provisions of this Law and its Executive Regulations.
Article (77)
Executive Regulations
The Council of Ministers, based on the proposal of the Minister, shall issue the Executive Regulations of this Law within six months after the date of its publishing.
Article (78)
Nullifications
1. The said Federal Law No. (17) of 2002 shall be null and void.
2. Any provisions to the contrary of the provisions of this Law shall be null and void.
Article (79)
Continuity of Regulations and Resolutions
Until the regulations and resolutions required to enforce the provisions of this Law, the regulations and resolutions issued to enforce the said Federal Law No. (17) of 2002 shall continue into effect subject to the provisions of this Law.
Article (80)
Continuity of Regulations and Resolutions
This Law shall be published in the Official Gazette and shall come into force after six monthsfollowing the date of its publishing.