Patent Application Pendency in Various Countries: Part 3

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As clients begin to develop global patent portfolios, an effective practitioner will be aware of basic information related to application filing and pendency in locales where protection is sought. This article provides a high-level look at application pendency, grant rates, and effects of lapse in select countries in Gulf States.

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Filing, Examination, and Fees

This is Part 3 in an anticipated four-part series on patent application pendency, grant rates, and effects of lapse in select countries. Part 1 can be found here. Part 2 can be found here. Part 3 focuses on Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates. Patent Applicants and Practitioners are advised to contact local counsel with any specific questions not covered in this article.[1] 

Many clients that have complex intellectual property portfolios often have patents and applications in a dozen or more countries around the world. Effective intellectual property management requires understanding of the client’s goals as well as the differences in rules and procedure in various patent examining jurisdictions, and what patent life, if any, may be expected in return for monetary investment in a given patent examining jurisdiction.  One aspect of global intellectual property management is an understanding of application pendency, grant rates, and effects of lapse in countries where the client desires protection.  

This series of articles is meant to aid Applicants in deciding where to spend resources to obtain patent coverage by provide information regarding 1) substantive examination, 2) the length of time expected between filing and the first action from the patent office, 3) the length of patent term, 4) potential consequences of allowing an application to go abandoned should the applicant not want to pay the grant fees or annuities[2], and 5) the current state of the patent examination process. The information is presented on a country-by-country basis.

In 1998, the Gulf Cooperation Council began operating a central patent office with Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates being member states. The central patent office allowed an Applicant to file and prosecute a single regional application to cover all member states. Applicants were still free to file locally in any of the member states should they desire. In January of 2021, the Gulf Cooperation Council announced the central patent office would no longer accept new patent filings, forcing Applicants to file locally in each member state should patent protection be desired. As of this writing, applications pending at the central patent office prior to the January 2021 are on hold and there is no information as to whether the central patent office will continue examination of these applications, although we occasionally receive a communication regarding a pending application. 

The central patent office has recently started accepting applications again, with a limited scope. The central patent office will now receive applications, examine the application, and grant patents upon request from a member state. Accordingly, the central patent office is now more of an outsourcing entity which the member states may elect to use. At least for now, any granted patent is only in force in the requesting member state. Accordingly, it is still beneficial for Applicants to file locally in each member states in which patent protection in sought.

Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates are each party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

If there is interest in obtaining coverage through individual national stage filings as would be provided by the prior regional GCC filing, it is suggested to use a common agent for family filings to save on translation costs.

Kingdom of Bahrain

Over the last decade, Bahrain has seen a steady increase in applications filed by non-residents.[3] It is yet to be seen whether the shift in the Gulf Cooperation Council will have an effect on application filing.

Over this same time period, the number of patents being granted in Bahrain has been relatively few, with an upward trend staring in about 2018.[4]



Bahrain recognizes Utility Patents, Utility Models, and Industrial Designs. A request for examination is compulsory in Bahrain to avoid abandonment and must be requested after the formality examination has been completed. Utility Patents are given a patent term of 20-years from the date of priority.  Utility Models also undergo substantive examination. Utility Models are given a patent term of 10-years from the date of filing, which is not renewable. Industrial Designs are subject to only formality examination and are given a patent term of 10-years from the date of filing with a single, optional 5-year extension.

Annuities in Bahrain are due according to when the application granted. Annuities accumulate until grant, with the accumulated annuities being due with the grant fee. Annuities are paid annually thereafter during the life of the patent grant.

In Bahrain, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. 

Finally, patent examination in Bahrain has been fairly consistent.  Applicant can expect final disposition of an application within about 4-years from date of local filing.

State of Kuwait

Over the last decade, Kuwait has seen very few applications filed by residents and non-residents with 2016 and 2018 being notable outliers.[5] 

Over this same time period, Kuwait has not granted any patents.[6]  As a result of the changes in the Gulf Cooperation Council, examination and granting is expected to change, but no time frame has been established for new examination procedures.

Kuwait recognizes Utility Patents and Industrial Designs. Utility Patents are given a patent term of 20-years from the date of filing in Kuwait.  Industrial Designs are given a patent term of 10-years from the date of filing, which is not renewable. Annuities in Kuwait accumulated and are due before the application publishes for grant. 

However, as a result of Kuwait’s historic non-examination and lack of granting, the patent terms and annuities are not observed. Due to the recent changes with the Gulf Cooperation Council, Kuwait has updated the substantive examination procedures, but examination is still uncommon and no relative time frames for pendency and grant have been established.

Sultanate of Oman

Over the last decade, Oman has had relatively few applications filed, with non-resident applications starting around 2015.[7] 

Over this same time period, the grants in Oman have generally trended with the relative number of filed applications.[8]

Oman recognizes Utility Patents. A request for examination should be filed with the filing of the local application. Formality examination is usually complete within about 6-months from local filing and substantive examination may then take an additional 12 to 18-months for a first action to be issued. Utility Patents are given a patent term of 20-years from the priority application date.  

Annuities in Oman are due starting from the date of filing and annually thereafter if the patent is to remain pending or in force.  Annuity due dates are based upon the international filing date, rather than the local filing date.

In Oman, other than loss of patent rights, there are no negative implications for allowing an application to lapse. 

Finally, patent examination in Oman is fairly routine, but the Omani PTO does have a significant backlog. Applicant can expect a first action to be issued within about 24-months from the date of filing. 

State of Qatar

Over the last decade, Qatar has seen a steady increase in applications filed by non-residents.[9] 

 

Over this same time period, the number of patents being granted in Qatar to non-residents has been relatively few.[10] It is yet to be seen whether the shift in the Gulf Cooperation Council will have an effect on application grants for non-residents.

Qatar recognizes Utility Patents. A request for examination is compulsory in Qatar to avoid abandonment and must be requested after the formality examination has been completed. Utility Patents are given a patent term of 20-years from the date of local filing if first filed, or from the PCT filing date if filed as national stage. 

Annuities in Qatar are due on the anniversary of the priority application starting with the first anniversary. Annuities are paid annually thereafter, including during pendency, during the life of the patent.

In Qatar, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. 

Finally, patent examination in Qatar has been fairly consistent, but more on the slower side. The Applicant can expect a formality examination report within about 3- or 4-years from local filing date and a first substantive action within about 4- or 5-years from date of local filing.

Kingdom of Saudi Arabia

Over the last half-decade, Saudi Arabia has seen a steady number of applications filed by non-residents, while applications filed abroad by Saudi Arabians have steadily increased.[11] It is yet to be seen whether the shift in the Gulf Cooperation Council will have an effect on application filing directly within Saudi Arabia.

 

Over this same time period, the number of patents being granted in Saudi Arabia has been relatively consistent.[12]

 

Saudi Arabia recognizes Utility Patents and Industrial Designs. A request for examination is compulsory in Saudi Arabia to avoid abandonment and must be requested within 3-months after the formality examination has been completed. Utility Patents are given a patent term of 20-years from the date of local filing if first filed, or from the PCT filing date if filed as national stage. Industrial Designs are subject to only formality examination and are given a patent term of 10-years from the date of filing with no extensions.

Annuities in Saudi Arabia are due starting January 1 in the year following filing in Saudi Arabia. Annuities are paid annually thereafter, including during pendency, during the life of the patent.

In Saudi Arabia, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. 

Finally, patent examination in Saudi Arabia has been fairly consistent. Applicants can expect a first examination report within about 2-years from date of local filing.

United Arab Emirates

Over the last decade, the United Arab Emirates has seen a steady increase in applications filed by non-residents.[13] It is yet to be seen whether the shift in the Gulf Cooperation Council will have an effect on application filing.

 

Over this same time period, the number of patents being granted in the United Arab Emirates has be trending upward.[14]

 

The United Arab Emirates recognizes Utility Patents, Utility Models, and Industrial Designs. A request for examination is compulsory in the United Arab Emirates to avoid abandonment and must be requested within 90-days after the formality examination has been completed. Utility Patents are given a patent term of 20-years from the date of priority. Utility Models also undergo substantive examination. Utility Models are given a patent term of 10-years from the date of filing, which is not renewable. Industrial Designs are subject to only formality examination and are given a patent term of 10-years from the date of filing with no extension.

Annuities in the United Arab Emirates are due starting the year after the international filing date. Annuities are then paid annually thereafter, including during pendency, during the life of the patent.

In the United Arab Emirates, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. 

Finally, patent examination in the United Arab Emirates has been fairly consistent. Applicants can expect final disposition of an application within about 3-years from date of local filing.

Part 1 of this series focused on selected countries in South America. Part 2 of this series focused on selected countries in Africa. Part 4 of this series will focus on selected countries in South East Asia and Oceana.