Patent Litigation 2021

Last Updated February 15, 2021

Saudi Arabia

Law and Practice

Authors



Rouse and Kadasa Intellectual Property are two of the leading IP firms in the Middle East. They have been in a formalised association together advising IP owners since 2010. Established in 1990, Rouse is an intellectual property law firm and consultancy, with offices in 13 countries, including the UAE. It provides the full range of IP services required by its clients to develop, implement and continually revise an IP strategy, from the implementation of global enforcement strategies to the provision of commercial IP services, and IP acquisition and maintenance services. Based in the Saudi capital Riyadh, Kadasa IP embraces a tradition of providing quality service and provides filing through registration or grant of trade marks, patents, domain names and copyrights. Nassir Ali Kadasa has the distinction of being the first Saudi attorney to prosecute and win an infringement lawsuit on behalf of a foreign entity against a national infringer.

Saudi IP Rights

Intellectual property rights in Saudi Arabia are based on statute.

Saudi Arabia enacted the Law on Patents, Layout-Designs of Integrated Circuits, Plant Varieties and Industrial Designs (Saudi Patent Law), effective July 2004, and conferred a term of protection of 20 years for patents of inventions counted from the date of filing the patent application. Claiming priority of another application is possible and is defined as 12 months from the initial filing of the basic application. Patent applications filed with the Saudi Patent Office (SPO) will be published within 18 months from the date of filing. Saudi Arabia is also a member of the Patent Cooperation Treaty (PCT) and accepts national phase applications. Such applications are generally granted faster.

Industrial designs are protected by the industrial designs provisions in the Saudi Patent Law. The same applies to layout-designs of integrated circuits and plant varieties. A new draft Utility Model law is under revision by, the Saudi Authority for Intellectual Property (SAIP), which has the mandate to regulate, support, develop, sponsor, protect, enforce and upgrade intellectual property fields in the Kingdom in accordance with international practice.

GCC IP Rights

In 1992, the Gulf Cooperation Council (GCC) states, including Saudi Arabia, approved a patent regulation that established a unitary patent right covering all GCC countries. The GCC Patent Office was established in 1992 in Riyadh, Saudi Arabia, and started accepting applications in 1998. The GCC Patent Regulations were amended in 2000.

Following the GCC member states' 2020 Summit, which concluded on 5 January 2021, it was announced that the GCC Patent Office (GCCPO) will stop accepting new patent application filings as of 6 January 2021.

The SPO, which operates under the supervision of the SAIP, undertakes the patent examination process and grants patents.

A local attorney or patent agent must be appointed to process the patent application. A power of attorney should be executed by an authorised signatory before a Notary Public and legalised up to the Saudi Consulate in the country of the applicant. In practice, the power of attorney can be submitted within three months of filing application. A formal and two substantive examinations are usually conducted. The applicant is provided with the chance to amend the application or respond to objections raised by the examiner up to the second examination report. After the second examination, a decision will be issued by the SPO. If the application is allowed a patent will be granted. The term of protection for a patent is twenty years calculated from the date of filing a Saudi patent application.

Term of protection for a PCT national phase application will also be twenty years. The term will be calculated from the filing date of the international patent application.

The time required to obtain a patent in Saudi Arabia depends on several factors, including the subject matter of the invention, the number of rejections during patent prosecution and the number of patent examiners at the SPO. The average prosecution period for a PCT national phase application is 24 months and for a national application (via the Paris Convention) is 36 months.

The cost associated with obtaining a patent varies with a number of factors such as translation costs, the number of substantive examinations required to allow the application and the amount of time taken to respond to SPO comments or objections. As a guide, one may expect USD4,000–5,000. This includes official fees and patent attorneys' fees up to the point of a grant of patent.

The term of protection for a patent is twenty years calculated from the date of filing a Saudi patent application. Term of protection for a PCT national phase application will also be twenty years. The term will be calculated from the filing date of the international patent application. There is no supplementary protection of inventions or extensions of the term of a patent.

The registered design protection period is ten years from the date of filing the application or ten years from the date of the start of its commercial exploitation anywhere in the world. In any case, the protection period may not exceed fifteen years from the date of developing the design.

A patent owner has the statutory right to exclude any other party from exploiting the invention without their authorisation in any form whatsoever, including manufacturing, packaging, marketing, using, selling, offering for sale or importing any identical products; or any product which relies on using or adopting, in any manner, any method or process identical to, equivalent to, substantially similar to or incorporating the essential steps of any of the method(s) or process which are the subject matter of claims of the patent. Special rules apply to pharmaceutical patents whereby a third party may apply for marketing approval in the final two years of the patent term but not enter the market in that time.

Annuity fees are payable.

Pursuant to the Commercial Court Law, effective from June 2020, the jurisdiction of patent infringement cases has been granted to the Commercial Court. The Committee for Reviewing Patent Disputes (the Committee) will no longer adjudicate patent infringement cases with the exception of cases filed prior to the effective date of the Commercial Court Law. A patent infringement action is initiated by submitting a statement of claim before the Commercial Court. The decisions of the Commercial Court are subject to appeal before the Court of Appeal in Riyadh, and its judgments are also subject to a final appeal before the High Court on questions of law. 

Injunctions are technically available, but in practice, are rarely granted.

There is no supplementary protection of inventions or extensions of the term of a patent.

Extensions of patent terms for administrative delays are not available.

After a formal and substantive examination, if the SPO finds that an application qualifies for the grant of a patent, it will be allowed and published. Interested parties can file an appeal against the decision to grant before the Committee. Current patent law does not specify the opposition procedure, although the Committee is competent to hear appeals against a decision of the SPO. The proceeding will be filed under provisions related to the revocation of a patent.

An appeal can be filed with the Administrative Court against the decision by the Committee. The decision of the Administrative Court is further appealable to the Court of Appeal. A final appeal on questions of law can be filed with the High Court.

An appeal can be filed with the Committee against an adverse decision by the SPO. The decision of the Committee is further appealable to the Administrative Court, and the decision of the Administrative Court is further appealable to the Court of Appeal. A final appeal on questions of law can be filed with the High Court.

With respect to a national application via the Paris Convention, annuities are paid from the year following the application filing year. An applicant must pay the annuity from January 1st to March 31st in the following year.

With respect to a national phase application via the PCT, annuities are paid from the year following the application filing year. The annuity in the following year shall include the annuity from the international filing date of the PCT application. An applicant must pay the annuity from January 1st to March 31st in the following year.

If annuity fees are not paid in time, the application is deemed withdrawn and the patent expires.

Once a patent is issued it cannot be amended unless the amendment relates to the ownership of the patent. However, please see 4.2 Partial Patent Revocation/Cancellation and 4.3 Amendments in Patent Revocation/Cancellation Proceedings for discussion of partial revocation ordered by the courts.

The patent owner or an exclusive licensee can bring an infringement action before the Commercial Court. In practice, most infringement actions are brought by the patentee with the licensee as co-plaintiff.

Under Saudi patent law, any unauthorised exploitation of a patent is an infringement of the patent and will give a cause of action to the right-holder. Manufacturing, selling, offering for sale, use, storage or importation of any protected product without the permission of the patent owner will be considered unauthorised exploitation.

An action before the Commercial Court is straightforward; there are no pre-trial procedures involved. The patentee will file a written statement of claims with the court. Evidence can be submitted at a later stage; however, the cause of action must be stipulated in the initial statement of claims.

The patent law has a provision for the appointment of technical experts, and the court, in its sole discretion, can appoint such experts.

Depending on the complexity of the issues framed, a typical trial before the court may last 18–24 months.

Alternative dispute resolution is highly encouraged under Islamic principles. Mediation and arbitration between the parties to the dispute are encouraged in all form of litigations. Arbitration in Saudi Arabia is governed under the Law of Arbitration, issued vide Royal Decree No M/34, which is based on the UNCITRAL Model Law on international commercial arbitration, although not adopted verbatim. Under this law, parties can exclude the jurisdiction of Saudi courts to take cognisance of a dispute between parties. Recourse to arbitration may save the parties’ time in dispute and a specialised arbitrator – who has the relevant knowledge and skill – may be selected to settle the dispute. The parties may choose the language of the proceedings and the place of arbitration. 

In the absence of any prior agreement to arbitrate, the parties would both need to agree to this form of dispute resolution. This may be done after the commencement of litigation.

The invalidity and infringement actions now fall within the jurisdiction of the Committee and Commercial Court, respectively. Therefore, ideally, the court should stay the infringement proceedings if invalidation is raised as a defence and such a claim is followed by the initiation of an invalidation action before the Committee. It is not, however, a common practice of Saudi courts to stay proceedings, therefore practice will clarify how the courts will deal with such a situation.

Pursuant to the Commercial Court Law, effective from June 2020, jurisdiction over patent infringement cases has been granted to the Commercial Courts. The Committee will no longer adjudicate patent infringement cases, with the exception of cases filed prior to the effective date of the Commercial Court Law. A patent infringement action is initiated by submitting a statement of claim before the Commercial Court. The claimant does not have a choice between tribunals. The decisions of the Commercial Court are subject to appeal before the Commercial Court of Appeal in Riyadh, and its judgments are also subject to final appeal before the High Court on points of law.

Patent infringements are generally adjudicated through Saudi courts. However, subject to an agreement between the parties to a dispute, and in accordance with the Saudi arbitration rules, the Saudi Centre for Commercial Arbitration (SCCA) is available for the settlement of disputes. This is not a common practice in Saudi Arabia.

There are no specific pre-trial steps or requirements. Production of technical evidence is optional and a party may obtain technical evidence to support its claims and position in the case. 

Litigation before the Commercial Court is not subject to any court fee. The interested party must directly file its statement of claim before the court. The court will send the statement of claim to the defendant, which must submit its reply within a specific period determined by the court (usually two months), which can be extended upon reasonable request from the defendant. There are hearings before the court and both parties shall submit written arguments during the hearing. The court usually takes 16–24 months to issue a decision.

Representation of parties to a patent dispute in Saudi courts requires an authenticated power of attorney. A party must authorise a Saudi-licensed advocate to represent it in court.

The court has the power to issue interim injunctions until a final decision is issued by the court; however, in practice, interim injunctions are hardly ever granted, especially in intellectual property disputes.

Interim injunctions may be granted under the following conditions.

  • A request for interim injunction must be filed with the Commercial Court. 
  • There is a chance of irreparable damage to the commercial interests of the patentee.
  • There is a prima facie evidence of infringement.
  • If an interim injunction is granted, the patentee shall file main case within seven days of the issuance of that injunction.
  • A guarantee may be demanded by the court to compensate the defendant if the claim is not successful.
  • The court, in its sole discretion, may grant interim injunction ex parte.

Protective briefs are not practised or accepted by Saudi courts against the possible grant of interim injunctions. As noted in 2.7 Interim Injunctions for Intellectual Property Matters, interim injunctions are hardly ever granted, especially in intellectual property disputes.       

However, if an interim injunction is granted, the courts require a guarantee to compensate the defendant if the claim is not successful.

There are no specific time limits in patent infringement cases. An infringement action can be initiated as long as the patent is in force. However, it is advisable to bring an action as soon as an infringement is noticed.

There is no codified evidence law applicable in Saudi Arabia. Therefore, there are no provisions regulating the disclosure of relevant documents. The Saudi courts apply, in the absence of a provision governing the dispute or a specific issue, the general rules and Islamic principles observed in Saudi Arabia. It can be inferred from such general rules and the general understanding of existing regulations that the court can compel a party to disclose relevant documents or materials unless such disclosure violates the right of said party to protect its trade secrets and other protectable information.

A judge can, depending on the circumstances, ask any party to produce certain documents, but the law does not oblige litigating parties to produce them.

There are no specific pre-trial steps or requirements. Production of technical evidence is optional, and a party may obtain technical evidence to support its claims and position in the case. Nevertheless, such technical evidence, if produced, does not bind the court, which is entitled to seek the assistance of different expert bodies for whatever it deems necessary regarding the technical matters referred to it and to determine the party liable for the expenses incurred. 

Class actions are not recognised in Saudi Arabia.

Exhaustion of patent rights is one the main possible restrictions on patentees. Although there is no notable case as such on this specific issue, it is possible, by analogy, that Saudi courts may confirm the restriction of exhaustion as one of affirmative defence in the future.

Anti-competitive behaviour may be a restriction if a patentee’s claim is not within scope of the granted patent. Such defences are not common in Saudi litigation.

The patent owner or an exclusive licensee can bring an infringement action before the Commercial Court. It is recommended that the right to bring legal action by the exclusive licensee is clearly mentioned in the licence agreement. In practice, most infringement actions are brought by the patentee with the licensee as co-plaintiff.

Saudi patent law is concerned with literal infringement. Inducement and contributory infringements are generally not recognised in Saudi Arabia. However, in the case of contributory infringement, the extent of that contribution may be decisive. For instance, if the contribution to the infringement was made by exploiting a component of the patent, with prior knowledge of the existence of that patent and that the use of that component would be an infringement, it might make the contributory infringer liable for such acts. To be actionable under the law, the contributory infringement should be committed within the territorial limits of Saudi Arabia or the infringing component should be imported into Saudi Arabia.

Nothing in the law prohibits suing multiple infringers to the extent of their contribution to the infringement.

If a dispute is based on the use of a patented process, and the patent owner is not able, after reasonable efforts, to confirm whether the process used is infringing the patent, the burden of proof shifts to the defendant.

One of the conditions is that there must be a high probability that an "identical product" would have been produced with the patented process. The law does not explain or indicate what would constitute an identical product.

In Saudi Arabia, literal infringement analysis is made by the judicial bodies. Prosecution history is not considered in infringement cases. In June 2020, the jurisdiction over infringement cases was shifted from the Committee to the Commercial Court. The approach of the Commercial Court towards patent infringement cases is yet to be clarified.

Under Saudi Patent Law, the following defences are available.

  • Prior-use rights are available if a person, in good faith, manufactures a product or uses a process before the filing date of the relevant patent application or before priority application of that patent application; such a person shall have the right to continue such acts despite the issuance of patent but the expansion of such acts is prohibited by law.
  • Patent exhaustion is not a statutory defence under the Saudi Patent Law and there is no notable case in this regard, it can, however, be raised as a defence.
  • Compulsory licence is certainly a defence to patent infringement action.
  • Laches and equitable estoppel are not recognised in Saudi patent infringement cases.

Under the Saudi Patent Law, a court, in its sole discretion, can appoint technical expert(s). Experts are mostly appointed from renowned Saudi universities and the role of an expert is limited to the technical questions provided by the court. Before appointing an expert, the court will fix the expert fee which may be up to USD8,000. Such fee is payable by the losing party; however, during the initial stages of litigation, the court may ask the plaintiff to pay the fee, which is reimbursed by the defendant if the infringement is established.

Saudi courts are not bound to follow the opinion of experts.

In Saudi patent litigation there is no specific and well-defined procedure for the interpretation of claims. However, as a critical element, the court certainly pays attention to the scope of a patent in its claimed features. The expert's role is also important in this regard. 

Invalidity proceedings can be initiated on following grounds.

  • The invention lack novelty at the time of filing.
  • The invention lacks inventive step.
  • The invention is not industrially applicable.
  • The subject matter of the patent is hit by exclusionary subject matters (ie, the subject matter is not capable of being patented). 
  • Commercial exploitation of the invention violates Islamic principles.
  • Commercial exploitation of the invention is harmful to life; to human, animal or plant health; or to the environment.

Any interested party may file an invalidation action. The law does not define the interested party; however, in our opinion, any party which has an interest in the exploitation of an invention can be considered as an interested party and we believe Saudi courts will interpret this question broadly if it is raised in future.

Partial revocation is possible under the Saudi Patent Law. Such revocation may be based on any of the grounds mentioned in 4.1 Reasons and Remedies for Patent Revocation/Cancellation. In the case of a partial revocation, the claimed features of the invention as revoked will be considered as null and avoid from the date of issuance. The patent law protects the licence fee earned by the patentee under some conditions.

Voluntary amendment is not possible in revocation proceedings. The patent is either fully revoked or partially revoked through judgment of the court.

Prior to the issuance of the Commercial Court Law in June 2020, the jurisdiction over cancellation and infringement proceedings lay with the Committee. It was conceivable that the Committee might hear both cancellation and infringement actions together if invalidation were raised as a defence to infringement or a separate invalidation action were filed. However, after the issuance of the Commercial Court Law, jurisdiction over infringement proceedings is granted to the Commercial Court whereas invalidation proceedings rest with the Committee. We believe that the Commercial Court may suspend infringement proceedings if an invalidation action is filed with the Committee by a defendant during infringement proceedings. Suspension of proceedings is, however, not part of the general practice of Saudi courts.

There are no special procedural provisions, as such, in respect of intellectual property proceedings.

Patent infringement cases are decided by judges, Saudi Arabia does not have specialised courts. Saudi judges are, however, well versed in patent disputes. Judges have legal backgrounds but, for technical questions, courts usually also appoint technical experts from local universities.

Settlement of a case is possible through out-of-court settlement agreement between the parties. Both parties can agree on terms, put these in writing and submit them to the court. The court will issue its decision based on the settlement agreement between the parties. Parties may settle a case at any stage of proceedings.

Prior to the issuance of the Commercial Court Law in June 2020, the jurisdiction of cancellation and infringement proceedings was with the Committee. It was conceivable that the Committee would hear both cancellation and infringement actions together if invalidation were raised as a defence to infringement or a separate invalidation action were filed. However, after the issuance of the Commercial Court Law, jurisdiction over infringement proceedings is granted to the Commercial Court whereas invalidation proceedings rest with the Committee. We believe that Commercial Court may suspend infringement proceedings if an invalidation action is filed with the Committee by a defendant during infringement proceedings. Suspension of proceedings is, however, not part of the general practice of Saudi courts. 

The following remedies are available to a plaintiff in infringement proceedings.

  • Permanent injunction – this can be issued against defendant upon the conclusion of the proceedings.
  • Interim injunction – this can be granted by the Commercial Court within three days of filing a request; if an interim order is issued, the plaintiff must file main claims within seven days of the issuance of the interim order.
  • Award of damages – under sharia principles on damages only the actual and quantifiable damage can be granted; the law also imposes a financial penalty to a maximum of SAR100,000 (approximately USD26,700), which may be doubled in case of repeated violations.

Saudi courts do not grant attorneys' fees.

Saudi courts do not allow reimbursement of any fees to the defendant in the case of a successful defence. 

The remedies described in 6.1 Remedies for the Patentee are available for any type of patent infringement action in any field of technology.

If an interim injunction is granted by the court, the defendant can file an appeal against that injunction. Unless the Court of Appeal reverses the decision granting the injunction, the defendant will be obliged to comply with the injunction.

The defendant is not obliged to comply with a permanent injunction awarded by the first instance court unless the judgment granting that permanent injunction is upheld by the Court of Appeal, or if the decision of the first instance court is not challenged before the Court of Appeal during the limitation period of the appeal.

There are no special provisions for intellectual property proceedings. In the case of patent infringement, a decision of the first instance Commercial Court is appealable to the Commercial Court of Appeal within 30 days of issuance of the written decision.

The decision of the Commercial Court of Appeal is appealable the High Court within 30 days on a question of law.

The Commercial Court of Appeal can fully the review the case, both on questions of fact and of law. However, the High Court’s jurisdiction is limited to questions of law. 

If the Commercial Court of Appeal accepts the appeal, it will remand the case to the Commercial Court of first instance to reconsider it based on observation(s) raised in the written decision of remand. After issuance, a second decision by the Commercial Court of first instance is again appealable to the Commercial Court of Appeal, at which point the Commercial Court of Appeal will then decide the case rather than remand it.

The cost of a patent infringement case will be around USD25,000–50,000, depending on its complexity. Warning letters may cost up to USD2,000.

There are no court fees in Saudi Arabia.

Each party must bear its own costs. Saudi courts do not award any litigation costs.

Mediation and arbitration between the parties to a dispute can be adopted in all form of litigation and has strong roots in sharia law and traditions. Arbitrations in Saudi Arabia are governed under the Law of Arbitration, issued vide Royal Decree No M/34.

Out-of-court settlement is commonly exercised in Saudi Arabia during the course of litigation. Both parties can agree on terms, put these in writing and submit them to the court. The court will issue its decision based on the settlement agreement between the parties. Parties can settle the case at any stage of proceedings.

The following requirements are stipulated in the law for the assignment of a granted patent.

  • The assignment must be in writing.
  • It must be signed by both parties and duly attested by relevant authorities.
  • No transfer of title shall be effective vis-à-vis a third party, except after recording it with the SPO.
  • A legalised power of attorney from the assignee in the name of a local agent.

Subject to the requirements mentioned in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights, a completed deed of assignment is filed online with the SPO. The assignment is published within three to five months of filing.

The requirements to license an intellectual property right are the following.

  • The licence must be in writing.
  • It must be signed by both parties and duly attested by relevant authorities.
  • A legalised power of attorney from patentee in the name of local agent.
  • The patentee may grant a licence to others to perform all or some of the acts of exploitation within the scope of the patent.
  • A licence contract shall not be valid vis-à-vis a third party unless it is recorded with the SPO.
  • The licence does not prevent the patentee from exploiting the subject matter itself or granting another licence for the same patented subject matter, unless the earlier licence contract states otherwise.
  • The SPO may demand an amendment in the licence to prevent abuse of the patent right (eg, if, in the opinion of the SPO, it may have a negative effect on competition or the acquisition of technology and its dissemination.
  • There is no right to sub-licensing by default unless specifically authorised in the licence deed.
  • The licence is by default for the whole of the protection period, unless otherwise specified in the licence deed.

Subject to the requirements mentioned in 10.3 Requirements for Restrictions to License an Intellectual Property Right, a completed deed of licence is filed online with the SPO. The licence is published within two to three months of filing.

Kadasa (in association with Rouse)

Ibn Katheer Street
King Abdulaziz Street
Kadasa Building
PO Box 20883
Riyadh
Kingdom of Saudi Arabia
11465

+966 1 4740777

+966 1 4761044

info@kadasa.com.sa www.rouse.com
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Law and Practice

Authors



Rouse and Kadasa Intellectual Property are two of the leading IP firms in the Middle East. They have been in a formalised association together advising IP owners since 2010. Established in 1990, Rouse is an intellectual property law firm and consultancy, with offices in 13 countries, including the UAE. It provides the full range of IP services required by its clients to develop, implement and continually revise an IP strategy, from the implementation of global enforcement strategies to the provision of commercial IP services, and IP acquisition and maintenance services. Based in the Saudi capital Riyadh, Kadasa IP embraces a tradition of providing quality service and provides filing through registration or grant of trade marks, patents, domain names and copyrights. Nassir Ali Kadasa has the distinction of being the first Saudi attorney to prosecute and win an infringement lawsuit on behalf of a foreign entity against a national infringer.

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