Transcript “IP Law and Administration in the UAE ” Presented By: Omar M.

“IP Law and Administration in
the UAE ”
Presented By: Omar M. Obeidat
Partner & Head of IP/IT Dept
20 December 2010
Basic Definitions: IP
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Patents
Designs
Trademarks
Copyrights
Trade secrets
Geographical indications
Domain names
Patents
• UAE Patents, Designs and Industrial Models
Law No.17 of 2002;
• Monopoly Right;
• Protects Inventions (products & process);
• Duration: 20 years;
• Patent protection extends to ideas that are
new, involve an inventive step and capable of
industrial application and exploitation.
Patents
• Patent’s life runs for 20 years from the date of
filing of a patent application in a given
country.
• The scope of protection is limited to country
of registration.
• The right to a patent covers the exclusive
rights to prevent others.
• Ministry of Economy/Patent offices;
examination contracted with foreign
examination office.
Patent Filing Process
• Filled out English and Arabic form
• CD of patent application forms in soft copies
and Copy of Priority Document
• Patents Office retains Excel sheets of
Applicants and Inventor Details as well as
Priority Details
• Grace Period 90 Days for outstanding
Documents (POA, DOA and Certificate of
Incorporation, Certified Copy of Priority
Document if Using Paris Convention).
Patent filing Process
• Application Number Allocated
• Annual Fees Paid to Patents Office
• Patents Office once accepted application form sends
file for substantive examination.
• Examination carried out through Austrian Patents
Office (Absolute Novelty).
• Examination result issued within one year (either
acceptance or rejection with allowance of two time
amendments).
• Payment of Publication fees and Publication
• Issuance of Certificate of Registration with the lapse
of six months.
Patent filing Process
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No. of patents granted (200)
No. of Patents pending approx. 10,000
No. of staff 8
No. of examiners 2
Fees for filing AED 800 Corp., AED 400 Ind.
Fees for Examination 7,000
95% of Applications are PCT
2-3 % are locally developed inventions
Designs
• UAE Patents, Designs and Industrial Models
Law No. 17 of 2002;
• Monopoly right;
• Ornamental or aesthetic aspect of an article;
• May consist of 3-D features such as the shape
or surface of an article or of 2-D features, such
as pattern, lines and color;
• Must be novel and can be used as industrial or
craft product;
• Duration: 10 years.
Design Filing Process
• Filled out English and Arabic form
• CD of design application forms in soft copies
and Copy of Priority Document
• Office retains Excel sheets of Applicants and
Designer Details as well as Priority Details
• Grace Period 90 Days for outstanding
Documents (POA, DOA and Certificate of
Incorporation, Certified Copy of Priority
Document if Using Paris Convention).
Design Filing Process
• Application Number Allocated
• Annual Fees Paid to Office
• Office once accepted application in form,
examines design (national novelty)
• Average Examination result issued within two
years from filing date
• Payment of Publication fees and Publication
• Issuance of Certificate of Registration with the
lapse of six months.
• No. of Designs issued approx 1,000
• Pending Designs approx 3,000 (2006)
Trademarks
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UAE Trade Mark Law No.37 of 1992
Any sign that distinguishes goods/services;
Can indicate source;
Protects goodwill;
Sign can include: shapes, designs, symbols,
devices, 3-D shapes, smells, etc…
• Renewable indefinitely every ten year periods.
• 150,000 applications filed in UAE
Trademark Filing Process
• Application Form (applicant, Description of
trademark and representation, class, designation of
goods and services)
• Nice Classification 45 Classes
• Payment of Filing Fees
• Examination
-Acceptance without conditions
-Technical Examination (Amendments, requiring refiling and another examination)-Review
-Conditioned Acceptance (Disclaimer)-Objection
-Rejection-Objection
Trademark Filing Process
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Payment of Registration and Publication Fees
Publication
One month opposition period
Registration
Average time frame 18-24 months for
certificate to be issued (no objection, reexaminations or oppositions)
• Average filing to publication 8-10 months
• Average filing to examination 4-6 months
Trademark Infringement
• Use of identical or confusingly similar mark on
identical or similar goods/services without
permission;
• Theft;
• Penalties: Fine and/or imprisonment,
confiscation/destruction of goods, publication
of judgment and damages.
Comparison – Original vs Counterfeit
Original
Counterfeit
Comparison – Original vs Counterfeit
Original
Counterfeit
Confusing Similarities - Look a likes
Confusing Similarities - Look a likes
Original
Look a like
Trade Names
• Trade names are the registered commercial
entity name as recorded with licensing
authorities. This name cannot exist without
the physical and legal set up of the corporate
entity.
– CONRAD HOTEL (Trade name) hotel activity
– CONRAD HOTEL (Trademark) hotel services
Unfair Competition
• Prohibited use of claims "Number one
pharmaceutical solution" or "Most preferred
medication"
• Acts inciting employees of a competitor to
target its customers
• False origin, specification, description of goods
• Defamatory statements
Copyright
• Federal Law No. (7) for the Year 2002
• Protection for broad range of creations of the
mind, but more specifically literary works (incl.
computer software), artistic & musical works
and broadcasts;
• Automatic upon publishing;
• Right to copy is only allowed to copyright
owner &/or owner’s licensee.
Copyright
• Duration:
– Life of author + 50 years
– 50 years from publication
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Assignment possible
Author has exclusive right to reproduce work
Deposit possible but not necessary: S. 4
Protects Author from Unauthorized Copying,
thereby encouraging innovation
Scope of Protection
The law protects authors and related rights
holders of copyrights in intellectual works. The
law also provides, inter alia, a definition of the
works protected, the duration of protection,
licenses permitting the use of works and
provisions relating to certain works, collective
management of copyright and related rights,
provisional measures, penalties as well as
general provisions.
Copyright
• Copyright protection extends to expressions of
original or creative works in the field of
literary works, art, or sciences.
• Copyright protection exists from the date of
publication and runs for 50 years plus the life
of the offer.
• Copyright does not extend to ideas and is
subject to limitations of fair use.
Copyright
• Protection extends to the content / text as
well as to the creative outline and
arrangement of a work.
• No. of Copyrights filed per annum 750-800
Copyright - ADACH CD Cover
Copyright - ADACH CD Content
Trade Secrets
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Examples
1. Know how
2. Business methods
3. Database
Trade Secrets
• Conditions:
– Information including formula, software and
equation
– Commercial value
– Confidential
– Measures in place to protect confidentiality
Thank You
Any Questions