Patent Litigation 2021

Last Updated February 15, 2021

UAE

Law and Practice

Author



Cedar White Bradley (CWB) is a Dubai-based, specialist IP firm with seven offices serving 22 jurisdictions throughout the Middle East and North Africa Region (MENA). CWB provides the full suite of intellectual property registration services in each country, and has full litigation capabilities in the United Arab Emirates, Saudi Arabia and Egypt – three of the largest markets for patent disputes and counterfeit products in the MENA region.

The UAE offers protection for inventions by (i) allowing inventors to secure a patent or a utility model for the intellectual property rights in an eligible invention, and (ii) affording statutory protection against the misappropriation of trade secrets.

A granted patent or utility model provides the patentee with a 20-year monopoly for the specific invention claimed in the patent, in exchange for public disclosure of the invention. In contrast, trade secrets are typically practices or processes known only to certain individuals within a business and are kept confidential. The protection afforded is therefore narrower, but can last in perpetuity (provided that the secret remains just that and meets certain other criteria under the law).

The protection afforded to patents, utility models and trade secrets arise almost entirely from UAE federal laws (which incorporate provisions from the Patent Cooperation Treaty (PCT) and the Paris Convention for the Protection of Industrial Property).

In order to secure a granted patent, an applicant must apply either through the UAE Ministry of Economy (for a UAE patent) or through the Gulf Cooperation Council (GCC) Patent Office in Saudi Arabia (for a GCC patent). Both types of patent undergo formal and substantive examination. Generally speaking, for a patent to be accepted, it must be novel, contain an inventive step, be industrially applicable, and not fall within the prohibited subject matter. If accepted, it will then proceed to publication and, if no oppositions are raised (or are succesfully overcome), grant.

It is important to note that there have been very few cases concerning infringement of patents or utility models, or the misappropriation of trade secrets in the UAE to date.

Patents

On-shore UAE national patents and PCT national phase patents are protected pursuant to Federal Law 31 of 2006 Concerning the Industrial Regulation and Protection of Patents, Industrial Drawings and Designs (as amended) (UAE Patent Law).

In addition, it was also possible for a patentee to file an application for a GCC Patent through the GCC Patent Office in Riyadh, Saudi Arabia. However, the GCC Patent Office ceased accepting new applications filed on or before 5 January 2021. Any applications that were filed before this date are still being prosecuted and examined; and any granted GCC patents (or applications filed before 5 January 2021 that will proceed to grant) are enforceable before the local courts in each member state of the GCC, including the UAE.

Utility Models

Utility models are also protected pursuant to the UAE Patent Law. For all intents and purposes, these follow largely the same processes and procedures as patents, but have a shortened term of ten years.

Trade Secrets

In addition to statutory patent protection, inventions may be protected by a trade secret, which are protected under various federal statutes in the UAE, including:

  • the Commercial Companies Law (Federal Law No. 2 of 2015), as amended;
  • the Civil Code (Federal Law No. 5 of 1985), as amended;
  • the Penal Code (Federal Law No. 3 of 1987), as amended; and
  • the UAE Patent Law, as amended.

Article 369 of the UAE Commercial Companies Law provides sanctions for any person who utilises or discloses a trade secret of a local company, or deliberately attempts to cause damage to the activity of that company.

Article 905 of the Civil Code provides that employees in the UAE are under an obligation to keep the industrial and trade secrets of their employer, failing which, the employee could be exposed to claims for damages or compensation.

Article 379 of the Penal Code provides for sanction over the unauthorised disclosure of trade secrets, for a person’s own personal interest/benefit, or the interest/benefit of another, where the person became entrusted with the secret by virtue of their profession, craft, position, or art.

Know-How

Articles 39 to 42 of the UAE Patent Law prohibit the disclosure, use or publication of know-how in certain circumstances (see 1.2 Grant Procedures for Intellectual Property Rights for further information).

UAE Patents and Utility Models

Filing requirements

The following information and documents are required for both UAE national application and PCT national phase applications.

At date of filing a patent application in the UAE, the application must be made in the prescribed form in Arabic and English, and must contain, at least:

  • the full details of the applicant(s) and inventor(s);
  • the specification, claims, and drawings (in English);
  • the abstract and title (in English and Arabic); and
  • priority claim(s) information, if any.

Within 90 days from the filing date of the application in the UAE, the following documentation must be submitted in support of the application.

  • A power of attorney, executed before a notary public and legalised up to the UAE embassy in the country of signature.
  • Specification, claims, and drawings (in Arabic).
  • A deed of assignment executed by the inventor(s) before a notary and legalised up to the UAE embassy (if the inventor(s) is/are not the applicant(s)) in the country of signature.
  • A certified copy of commercial registry extract or certificate of incorporation for the applicant (if the applicant is not an individual), legalised up to the UAE embassy in the country of issue.

If the applicant is claiming Paris Convention priority, then a certified copy of the priority application(s) is required (translated into English and Arabic, as required).

Examination

The UAE Patent Office will not commence examination of a patent application until the application has been accepted as to formalities and the applicant has paid the official substantive examination fees. The Patent Office will issue a notice to pay the substantive examination fee after filing, provided that no formalities issues are raised. Substantive examination is usually outsourced to foreign examination authorities (currently South Korea) and may take up to two years for substantive examination to be completed.

Publication and grant

After substantive examination is completed, and upon payment of the requisite publication and grant fees, a patent application will be published in the Official Gazette and then proceed to grant, provided that no third party opposes the application within 60 days of publication.

GCC Patents

Filing requirements

As mentioned in 1.1 Types of Intellectual Property Rights, as of 5 January 2021, it is no longer possible to file new GCC applications.

Publication and grant

For those applications filed before 5 January 2021, after substantive examination is completed, and upon payment of the requisite publication and grant fees, a patent application will be published in the Official Gazette and then proceed to grant, provided that no third party opposes the application within 90 days of publication.

Trade Secrets and Know-How in the UAE

Trade secrets

While the misappropriation of trade secrets is prohibited by the various laws set out in 1.1 Types of Intellectual Property Rights, there is no stand-alone trade secrets legislation that comprehensively defines what a trade secret is, how valuable it must be (and how that value is measured), how it comes into being, what steps (if any) a company needs to take in order to protect it, what methods of disclosure are prohibited, etc.

In the absence of specific legislation, there is some uncertainty as to what constitutes a trade secret and how it can be protected. That said, following international norms, a trade secret would most likely comprise formulas, practices, processes, designs, instruments, patterns, or compilations of information that have inherent economic value because they are not generally known or readily ascertainable by others, and which the owner takes reasonable measures to keep secret. As trade secrets are kept secret by their owners, there is no formal registration process required in order to obtain protection.

Know-how

Closely related to trade secrets is "know-how’" which, in the UAE, is defined to include information, data, or knowledge of a technological nature, acquired through a profession, which is capable of practical application. It is protected by statute under the UAE Patent Law. Articles 39 to 42 prohibit the disclosure, use or publication of know-how where:

  • the owner of the know-how can show that the necessary measures had been adopted for maintaining the secrecy of the elements of the know-how;
  • a written agreement had been in place, validly regulating the know-how acquired (the agreement must include a definition of the elements of, the purpose of using, and the conditions for transferring, the know-how);
  • the know-how has not been published or put at the disposal of the public; and
  • the disclosure has been unauthorised, with the disclosing party knowing that the know-how was confidential, or if it can be proven that another person in their position would have been aware of the confidentiality of the know-how.

On average, assuming no substantive examination issues are identified, UAE patents typically take between three to four years from filing to grant.

Patents are valid for 20 years from the filing date (or, if claimed, the priority date).

Utility models are valid for ten years from the filing date (or, if claimed, the priority date).

Trade secrets are not "granted" as such; they come into being once certain conditions are met, and remain in force until they are disclosed publicly or no longer treated as secret by the owner.

Right to Exploit Invention

The UAE Patent Law provides that the holder of a granted UAE patent has the right to exploit the invention for industrial or commercial purposes (but does not extend to activities related to a product protected after sale).

The law states that exploitation would include the following.

  • Products – manufacture, use, offer to sale, sale or import thereof for such purposes.
  • Method of manufacture of a specific product – the same right as concerns the direct product of such process or method in addition to the right to use such process or method.

Right to Prevent Others

The UAE Patent Law provides that the holder of a granted UAE patent for a product has the right to prevent third parties from manufacturing, using, offering for sale, selling, or importing the said product for such purposes, unless they have obtained a licence or consent.

However, should the object of the patent be an industrial process, the owner shall also be entitled to prevent any other unauthorised person from using the process and the product generated directly therefrom, and from using, offering for sale, selling, or importing the said product for said purposes without consent from the owner.

Damages

The UAE Patent Law does not itself provide for patent or utility model infringement or misappropriation of know-how. However, it is possible for a claimant to seek compensation from the court in a patent infringement case under the Commercial Transactions Law (Federal Law No 5 of 1985).

Conservatory Measures/Injunctions

A granted patent provides the owner with the right to seek “conservatory measures” against an infringer. See 2.7 Interim Injunctions for Intellectual Property Matters for further information.

Annuities

For patents and utility models, annuity fees are due every year in order to maintain the right. See 1.9 Consequences of Failure to Pay Annual Fees for further information.

There is no further protection available for patents or utility models covering inventions once the term has lapsed.

UAE Patents and Utility Models

Third parties may oppose the application within 60 days following publication. There are no grounds upon which patent applications may be opposed set out in the law (and indeed nothing limiting the grounds that may be put forward to oppose an application). However, presumably any of the requirements for grant can form the basis of an opposition. Due to the rarity of such an opposition, the procedures of such an appeal are not yet clearly defined or publicised.

GCC Patents

Third parties may oppose the application within three months following publication. Again, no formal grounds are set out in the GCC Patent Regulation, but presumably any of the requirements for grant can form the basis of an opposition. Due to the rarity of such an opposition, the procedures of such an appeal are not yet clearly defined or publicised.

UAE Patents and Utility Models

If, following examination, a patent is finally refused by the Patent Office, an applicant may appeal the examination to the appeals committee within the Ministry within a period of 60 days from the date of notification of the decision. The appeals committee will review the application and decision, and issue a written decision.

If the appeals committee refuses to grant a patent or utility model, the applicant may appeal the decision to refuse the application to the federal administrative court of first instance within a period of 30 days from the date of notification of the final decision.

GCC Patents

If, after all examination appeal procedures before the Patent Office have been refused, the Patent Office refuses to grant a patent or utility model, the applicant may appeal the decision to refuse the application to the Saudi Authority for Intellectual Property (SAIP) within three months from the date of the final decision.

UAE Patents and Utility Models

In order to maintain a patent, annuity fees are due every year. If an applicant/holder of a patent fails to pay the annual fees before the statutory deadline, then they may pay the annuity fees within three months of the deadline without incurring any penalty fees. Following that, the patentee has three further months to pay the annuity fees; however, payment within this three-month period incurs penalty fees. If the annuity fees are not paid within the total six-month grace period following the statutory deadline, then the patent will lapse.

The UAE Patent Law does not contain any right or procedure to restore a lapsed patent. However, in practice, the Patent Office has allowed the restoration of a lapsed patent on payment of a fee, which it published in its schedule of official fees. While untested before the courts, a question mark does hang over the validity of patents restored in this manner, since the UAE Patent Law does not itself allow for the restoration of lapsed patents.

GCC Patents

In order to maintain a patent, annuity fees must be paid between January 1st and March 31st of every year. If an applicant/holder of a patent fails to pay the annual fees before the statutory deadline, then they may pay the annuity fees within three months of the deadline (ie, before June 30th), which incurs penalty fees. If the annuity fees are not paid by June 30th, then the patent will lapse.

Restoration of a GCC patent is not possible.

UAE Patents

Once a patentee has successfully obtained grant of its patent, it is possible for the patentee to cancel part or all of the patent at any time by completing and submitting the prescribed form issued by the Patent Office and paying the official fee. The UAE Patent Law states that any surrender of the patent, in whole or in part, must not damage the rights of any other person without their specific consent in writing.

GCC Patents

Once a patentee has successfully obtained grant of its patent, it is possible for the patentee to cancel part or all of the patent at any time by completing and submitting the prescribed form issued by the Patent Office and paying the official fee.

Litigation – Civil Proceedings

The primary recourse for an IP rights-holder to enforce rights in a granted UAE patent, GCC patent, utility model or trade secret against a third party in the UAE is by pursuing civil litigation through the UAE courts.

The GCC Patent Regulation stipulates that a GCC Patent should be enforced before the competent authority in the relevant member state. As such, a dispute concerning the infringement of a GCC patent in the UAE should also be brought before the local courts of the UAE. See 2.3 Courts with Jurisdiction for Patent Litigation for further information.

For cases involving infringement of UAE patents in or from the Dubai International Finance Centre (DIFC) – a free zone within Dubai – the holder of a UAE patent may seek redress from the Commissioner of Intellectual Property and the DIFC courts, which follows their own rules and procedures.

Litigation – Criminal Proceedings

Under the UAE Patent Law, wilful infringement of a patent or utility model, or misappropriation of trade secrets, constitutes a criminal offence. As such, a patent holder may lodge a formal complaint to the police in the relevant emirate, who will then investigate the claim and, if there is a case to answer, will refer it to the Public Prosecutor to pursue through the criminal courts.

Border Measures

If an IP holder suspects that an infringed product will be imported into the UAE, it can lodge a complaint with the relevant customs authority to request the detention of these products and prevent them from entering the UAE.

Opposition

Once the patent or utility model is granted, it is published in the official gazette. For a period of 60 days following the date of publication, any third party may oppose the application (see 1.7 Third-Party Rights to Participate in Intellectual Property Grant Proceedings for further information). Due to the rarity of such an opposition, the procedures of such an appeal are not yet clearly defined or publicised.

Invalidation

See 4 Patent Revocation/Cancellation below.

Compulsory Licence

If the patent or utility model holder does not exploit the invention for a three-year period after grant, then a third party could make an application to court for a compulsory licence. To be successful, they would need to show that they had made efforts to enter into a licence on reasonable commercial terms with the rights-holder.

Post-grant Review

There is no scope for post-grant reviews of granted patents set out in the UAE Patent Law or GCC Patent Regulation.

Declaration of Non-infringement

It is not possible to apply to the courts, the Patent Office, or the SAIP (in the case of a GCC Patent) for a declaration of non-infringement in the UAE.

UAE Courts

The UAE comprises seven emirates. Patent infringement cases concerning UAE and GCC patents, trade secrets and other intellectual property rights can be brought before the relevant emirate-level court. Infringements occurring in Dubai, Abu Dhabi or Ras Al Khaimah should be brought before the independent courts operating in those emirates. Infringement occurring in the remaining four emirates should be brought before the federal courts of the UAE, based in Abu Dhabi.

DIFC Courts

In addition, the Dubai International Financial Center (DIFC), a free zone located in the emirate of Dubai, enacted its own IP Law in 2019. Under the new law, disputes concerning patent infringement taking place within or from the DIFC may be brought before the Commissioner of Intellectual Property, who can impose a raft of administrative penalties. Cases that involve injunctions and damages claims should be brought directly before the DIFC courts.

To date, very few cases involving patent or utility model infringement, or misappropriation of trade secrets, have been brought before the courts in the UAE. As a result, the need for a specialised body or organisation for the resolution of intellectual property disputes has been limited. That said, a judicial circuit was established within the Abu Dhabi federal court system. This circuit comprises judges that have been provided with training in intellectual property law generally. However, as the IP judicial circuit sits in the federal courts in Abu Dhabi, it would mainly hear invalidation or revocation cases.

There are no mandatory prerequisites for filing a lawsuit in the UAE (ie, letters of demand, warning letters, or mediation are not required before filing suit). However, if the licensee is entitled to bring proceedings, then in order for the licensee be deemed an "interested party" for the purposes of the dispute, they should record themselves as such against the patent being infringed before initiating the proceedings.

Once the statement of claim is filed and the court fees are paid, the first hearing is typically scheduled within a few weeks.

For cases before the UAE courts, parties in intellectual property disputes must be represented by local advocates with rights of audience before the local courts.

Conservatory Measures

While the UAE legal system does not, in general, provide for interim injunctions per se, it does set out a process for obtaining "conservatory measures", which are very close in nature to an interim injunction. These conservatory measures are granted on an ex parte basis by the court of urgent matters. They focus on the attachment of physical assets (including infringing products and/or the machinery, tools or apparatus used to make such products) – rather than preventing ongoing or future infringing conduct, which is the key difference between these types of order.

Usually, a conservatory order would entail a court bailiff making a detailed inventory of infringing items listed in the attachment petition. If granted, the court bailiff would then confiscate those items for destruction.

Requirements

A petition to the court of urgent matters must be filed, accompanied by:

  • a legalised power of attorney in favour of a local advocate with rights of audience before the courts;
  • a relevant and valid patent registration certificate for the UAE; and
  • sufficient evidence to establish that infringement is currently taking place, or is imminent.

Procedures

A petition to the court of urgent matters must be filed with the supporting documentation mentioned above. If granted, the infringer has 30 days to appeal the order. The court will request the plaintiff to pay a financial guarantee. Ultimately, if the infringement claim is unsuccessful or the main case is not filed within the statutory timeframe, then the financial security may be forfeited. The law is silent as to how the amount of the financial security is to be calculated. 

Once an order for one or more precautionary measures is granted, a court bailiff may be appointed to execute the order.

Timelines

Once a petition is filed, the court will make a decision as a matter of urgency. Once granted, the infringer has 90 days to appeal the order.

There is an eight-day deadline from the date of the order for the plaintiff to initiate the main infringement case before the court. Failure to do so could result in the forfeiture of the financial security.

It is not possible to seek protective briefs to obtain protection against conservatory measures being sought ex parte. However, as mentioned in 2.7 Interim Injunctions for Intellectual Property Matters, the court will request the plaintiff to pay a financial guarantee, which can act as a deterrent to bringing an arbitrary or frivolous action. Ultimately, if the grounds upon which the conservatory measure was sought (ie, the infringement claim) is unsuccessful or if the main case is not filed within the statutory timeframe, then the financial guarantee may be forfeited.

There are no special limitation provisions that apply to intellectual property matters in the UAE.

There is no formal disclosure process in civil proceedings before the UAE courts, and in practice it can be difficult to evidence a case if the defendant is in possession of the key pieces of evidence. A court (or a court-appointed expert) may, however, request to see any specific documents referred to in the parties’ written memoranda or evidence. In criminal proceedings, the police/prosecutor have broader powers to search and seize evidence and information.

Under the UAE Civil Procedure Law, a statement of claim should be filed by the claimant to the registrar or the clerk of the court. It should set out all of the pertinent facts of the case, details of the claimant and defendant, and supporting documentation.

While the level of detail required varies from case to case, in a patent dispute, the claimant should at least provide:

  • a copy of the relevant letters patent (UAE or GCC);
  • sufficient particulars and evidence of the infringement – including any information on the distribution of an infringing product in the UAE or how the business method or industrial process has been used by the defendant;
  • accurate names and addresses of the defendant; and
  • a power of attorney from the claimant to their representative.

If any of the documentation is in a language other than Arabic, then a translation must be obtained from a duly licensed legal translator.

Additional Arguments and Evidence

Once the statement of claim has been lodged, the defendant will be served and the first of several hearings will be scheduled. Further arguments and evidence can be submitted, usually by way of written memoranda, by any party at any of the hearings. The language of all submissions, evidence, and hearings is exclusively Arabic. There is very little oral argument during the hearings. Once the parties have no further evidence or submissions to make and the court is satisfied that it has sufficient information and the parties have been provided with sufficient opportunities to present their case, it will adjourn the case for issuance of the decision. Currently, decisions are taking around 12 to 15 months from the time the statement of claim is filed.

Representative or collective actions (such as class actions) are not permitted generally in the UAE, including in disputes involving intellectual property rights.

The defendant could, in theory at least, raise a counterclaim under the UAE Competition Law (provided that certain conditions are met), if the IP holder asserts its rights in a way that leads to an abuse of its dominant market position; or performs actions that lead to the abuse of such position in order to prejudice, limit or prevent competition.

IP Rights-Holder (or Co-owner)

Any party listed as the owner or co-owner of a patent or utility model may seek to enforce it against an infringer, as may the holder of trade secrets. In the case of a co-owner, they can enforce it independently from the other co-owners, unless there is an agreement in place between the co-owners to the contrary.

Licensees

A licensee of a patent or utility model may seek to enforce it against an infringer, provided that (i) the licence agreement provides the licensee with the right to take action against infringers, and (ii) the licensee is recorded as such against the granted patent (or has otherwise been granted written consent to initiate proceedings by the patent holder).

Other

Any other “interested party” can sue for patent infringement. This term has not been defined in the law, but is likely to require an agreement with the patent holder or consent from the patent holder to initiate proceedings.

None of the laws concerning patents, utility models or trade secrets differentiate between primary and secondary infringement; and this has yet to be tested by the courts for patent or utility model disputes in the UAE.

There are no specific rules regarding infringement of process patents in the UAE.

The scope of protection of an intellectual property right is ultimately determined by the court which, in forming its view, would refer to:

  • the claims that have been granted protection by the Patent Office;
  • the report prepared by the court-appointed expert; and
  • the information/evidence presented by the parties during the trial.

The prosecution history will not usually be presented in court, because the defendant would not usually have access to the patent file at the Patent Office (as this requires a power of attorney from the patent holder).

The UAE courts do not recognise common law concepts such as laches or equitable estoppel; however, the DIFC courts do. Prior-use; compulsory licence; patent exhaustion; or acts done for scientific research, non-commercial or non-industrial use, may all be raised as lines of defence.

Once proceedings have been initiated, the local UAE courts will typically appoint an expert to render an opinion on the case. In the case of a patent dispute, this would involve analysing the scope of protection and determining whether or not the defendant has infringed the patent. It should be noted, however, that due to the paucity of patent cases brought before the UAE courts to date and the level of technical and legal expertise required to analyse patent claims, there are very few IP experts currently available in the pool of experts for the court to appoint – let alone patent or technical subject matter experts.

Court-appointed experts base their reports on the remit issued by the court. In pursuit of that remit, they can conduct their own investigations, call the parties to a closed hearing, ask pertinent questions, and request further documentation from the parties. The expert will then render their opinion and submit it to the court. The parties will usually be provided with the opportunity to make observations in relation to the expert’s report at the next hearing. The court is not, however, obliged to follow the opinion of the expert when making its decision.

There is no separate procedure for construing the terms of the patent’s claims.

UAE Patents

Standing

The UAE Patent Law states that any "interested party" may apply to revoke/cancel a granted UAE patent or utility model. The law does not define what would constitute an "interested party"; however, this is likely to be interpreted broadly.

Grounds

While the UAE Patent Law generally states that interested parties may seek the invalidation of a patent or utility certificate before the courts, it does not expressly set out the specific grounds upon which such invalidation may be sought. However, the law does stipulate that the patent holder, the Patent Office, and all related parties to the invalidation action must be notified if the patent is granted without the fulfilment of the conditions provided for in the law, or if the priority claim is not in order. This suggests that an invalidation could be sought if the patent were granted contrary to the provisions of the law. This would presumably include any contravention of the requirements for grant (such as lack of novelty, lack of inventive step, prohibited subject matter, etc), as well as misappropriation, insufficiency, etc.

In addition, an interested party could seek invalidation of a patent on the basis that the commercial exploitation violates sharia and/or is contrary to public morality.

GCC Patents

Apart from requesting the modification of the particulars of ownership, the GCC Patent Law does not set out grounds for revoking or cancelling a granted GCC patent. In practice, an interested party could seek revocation/cancellation of a GCC Patent through the SAIP, on the same grounds as mentioned above for UAE patents. If ultimately successful, the decision could then be passed onto the GCC Patent Office, which should cancel the patent.

For both UAE and GCC patents, partial invalidation may be sought by an interested party; and the court may order the partial invalidation of a patent, even if an interested party seeks invalidation of the entire patent.

Making amendments during revocation/cancellation proceedings can be procedurally difficult because amendments to patents are handled by the examiners at the Patent Office, while revocation/cancellation proceedings are heard by the local courts. As a result, the parties would need to seek a suspension of the validation case while the patentee attended to amendments at the Patent Office. While this is not an insurmountable issue, navigating the procedural issues that may arise before the court and the timing and examination issues that may arise at the Patent Office may pose a real challenge.

UAE Patents

A revocation/cancellation action sought in defence of a patent infringement claim would affect the infringement proceedings, as the plaintiff in the revocation/cancellation action is likely to seek suspension of the infringement proceedings until the revocation/cancellation action has been decided. However, the decision as to whether or not the infringement proceedings are suspended is at the sole discretion of the court, which usually can only suspend an infringement case for up to six months – making the timeframe for the outcome of the cancellation action and all appeals to be known a real challenge.

GCC Patents

For GCC Patents, the issue of parallel revocation/infringement proceedings presents an even greater challenge. Infringement proceedings concerning patent infringement in the UAE should be brought before the UAE courts (or, in some cases, the DIFC courts). However, as the revocation/infringement proceedings take place before the SAIP, the defendant in the infringement case in the UAE would need to initiate separate proceedings for the revocation/cancellation action in Saudi Arabia; and convincing a civil court in the UAE to suspend proceedings to await the outcome of an administrative case in a different jurisdiction is most unlikely.

There are no special procedural provisions for cases concerning infringement of intellectual rights before the UAE (or DIFC) courts.

UAE Courts

The decision makers at the courts of first instance in the UAE are civil judges, who hear the full gamut of civil cases, including those that cover any aspect of intellectual property law. While there is a circuit of judges with IP training within the Abu Dhabi courts, this circuit mainly hears administrative invalidation cases, as infringement cases are brought before the competent local civil courts for each emirate. There are no jury trials in the UAE.

DIFC Courts

Cases concerning infringement of UAE patents in or from the DIFC may be brought before the Commissioner of Intellectual Property, who decides the case in the first instance and can issue administrative penalties. Cases involving injunctions and damages claims should be brought directly before the DIFC courts.

Settling civil cases once litigation has commenced is relatively rare in the UAE (perhaps because many local advocates are paid their full fees upfront before proceedings are commenced), but it is possible and it does happen. There are no formal mechanisms for settling cases – it is up to the parties to forge an agreement and withdraw the case.

If a patent holder initiates criminal proceedings for patent infringement by filing an official complaint with the police, then once the police and/or the Public Prosecutor has agreed to pursue the case, the patent holder is no longer a party to the case and, therefore, cannot settle or stop it from proceeding. Accordingly, a patent holder should think twice about initiating criminal proceedings against an infringer if the purpose of such proceedings is to apply pressure to the infringer to negotiate a settlement.

See 4.4 Patent Revocation/Cancellation and Patent Infringement.

Civil Damages

Somewhat unusually, the UAE Patent Law does not expressly provide a right for a patent holder to sue for damages for infringement of its patent. However, it is possible for a claimant to seek compensation more generally under a different law (such as the Commercial Transactions Law). Such a claim would then be heard as part of the infringement case.

Damages claims are usually assessed on the basis of actual loss suffered. This can be difficult to quantify through documentary evidence due to the absence of a formal discovery process (which is also true for an account of profits). The court may appoint an expert to help quantify the amount of damage suffered, but there is no statutory formula for doing so. Punitive damages are not available.

Criminal Penalties

The UAE Patent Law also provides for criminal penalties in the case of wilful infringement. These criminal penalties would only be imposed in the event that the patentee lodged a criminal complaint with the police, which would investigate the complaint and, if there is a case to answer, would transfer the case to the Public Prosecutor’s office for pursuing before the criminal courts. If convicted, the infringer could face criminal penalties, comprising of a fine of AED5,000–100,000 (approximately USD1,360–27,200) and/or a term of imprisonment of unspecified duration.

While there have been no criminal cases for patent or utility model infringement, or misappropriation of trade secrets, in the UAE (of which the author is aware), it should not be discounted as an effective enforcement option for a holder of a patent, utility model or trade secret to consider in order to stop the most egregious cases of wilful infringement. There are, however, some drawbacks. For example, given the rarity of criminal proceedings for patent matters, the police and/or public prosecutor may be reluctant to pursue such a case; and, even if a case is pursued, the patent holder would not be a party to the case, unless called by a court-appointed expert to provide testimony. But that said, in cases where the patent holder is aware that infringement is taking place but, due to a lack of evidence available (due to the limited discovery process), it is unable to substantiate a patent infringement claim, then pursuing criminal proceedings may prove to be a good alternative as the patent holder would then reap the benefits of the police’s enhanced investigative powers and evidence collection procedures. In many ways, the UAE Patent Law and court system is more favourable to patent holders who pursue this enforcement option.

A prevailing defendant has very few rights. While the court may order the claimant to bear the costs of the proceedings, in reality the defendant will usually have spent tens of thousands of dollars in attorneys’ fees defending the case. The amount of costs awarded to a prevailing defendant is usually nominal and usually serves only to cover the official court fees.

The remedies are the same under the Patent Law for infringement of UAE/GCC patents, UAE utility models, and misappropriation of know-how. Misappropriation of trade secrets attract different penalties, depending on which law the dispute is based upon (see 1.1 Types of Intellectual Property Rights for further information).

If a conservatory measure was sought and granted before the case was filed at first instance, then that conservatory measure would stay in place until the appeal was heard by the appellate court.

UAE Courts

Court of Appeal

An unsuccessful party has 30 days to appeal the decision of the court of first instance to the relevant civil Court of Appeal. An appeal can be based on matters of fact and/or law; and can include further evidence or submissions that did nor form part of the trial at first instance. A panel of three judges decides the appeal – either in majority or unanimously.

Courts of Cassation

Cases decided by the Court of Appeal may be appealed by the unsuccessful party to the Court of Cassation responsible for the relevant emirate within 30 days calculated from the day after the Court of Appeal’s decision is notified to the appellant (this timeframe may be extended in cases where the appellant is domiciled outside of the Court’s jurisdiction). A panel of five judges decide the appeal – either in majority or unanimously. The Court may decide the appeal itself; or it may refer the case back to the Court of Appeal to reconsider the case, taking into account the guidance from the Court of Cassation.

DIFC Courts

Decisions made by the Commissioner of Intellectual Property may be appealed to the DIFC courts. A further and final appeal to the DIFC Court of Appeal may be made within 15 days from the date of notification to the concerned parties, and is heard by a panel of three judges.

UAE Courts

Courts of Appeal

An appeal to the Courts of Appeal can be based on matters of fact and/or law; and can include further evidence or submissions that did nor form part of the trial at first instance. In practice, the case is heard de novo; in much the same manner as the case at first instance.

Courts of Cassation

The Courts of Cassation decides matters of law alone; and will not review a case on its merits or facts. The Courts of Cassation will not typically accept any evidence or submissions. Instead, it will review any legal arguments put forward in the appeal – which deal directly with legal principles decided on by the Court of Appeal (and not the first instance court).

A claimant may incur costs before initiating proceedings, mainly in relation to some or all of the following, largely optional measures:

  • warning letters;
  • obtaining certified copies of letters patent;
  • engaging technical experts; and
  • preparing evidence of the infringement.

In addition, many local advocates in the UAE still charge some or all of their fees upfront before the statement of claim is drafted, which would usually comprise the majority of the attorneys’ fees payable for the litigation.

Court fees are calculated on the basis of the value of the claim. In addition, the court-appointed expert will charge their own fees for preparing their report, which are usually paid by the claimant.

Generally speaking, the claimant bears the brunt of the legal proceedings in a patent dispute. The court may make an order for legal fees to be paid by the unsuccessful party; however, the quantum of these fees ordered by the court are usually nominal and do not come close to covering the actual cost of the attorneys' fees. The claimant will usually pay the court-appointed expert fees.

Patent disputes in the UAE (including those that deal with infringement of GCC patents) are by and large resolved before the UAE courts. To date, there have been no patent disputes brought before the DIFC courts; and it remains very uncommon for patents disputes to be resolved by arbitration or mediation, or any other form of alternative dispute resolution. This is largely because:

  • timeframes and costs for ADR can be greater than litigation before the courts;
  • courts will assume jurisdiction unless the parties have agreed in writing to arbitration in advance (which is not common for patent infringement disputes); and
  • ratifying an arbitral award can be fraught with difficulties in the UAE.

UAE Patents

In most cases, for an assignment to be effective, it needs to:

  • be made to writing;
  • identify the invention;
  • contain details of the patent application;
  • set out the rights to be assigned; and
  • be duly executed by the assignor(s).

If the assignment is executed in the UAE, then it needs to be signed in front of a Notary Public. If the assignment is being executed outside the UAE, then it should be signed in front of a Notary Public and legalised up to the UAE embassy.

GCC Patents

In most cases, for an assignment to be effective, it needs to:

  • be made to writing;
  • identify the invention;
  • contain details of the patent application;
  • set out the rights to be assigned; and
  • be duly executed by the assignor(s).

If the assignment is executed in a GCC country, then it needs to be signed in front of a Notary Public. If the assignment is being executed outside of the GCC countries, then it should be signed in front of a Notary Public and legalised up to the embassy of any GCC country in the country of signature.

UAE Patents and Utility Models

Assignments may be recorded against pending and granted applications.

The official form for the assignment should be completed and submitted together with:

  • a duly executed deed of assignment, legalised to the embassy of the UAE;
  • a power of attorney in favour of the assignee, legalised to the embassy of the UAE;
  • a certified copy of the certificate of incorporation or commercial extract if the assignee is a company, legalised to the embassy of the UAE; and
  • payment of the official fee.

GCC Patents

Assignments may be recorded against pending and granted applications.

The official form for the assignment should be completed and submitted together with:

  • a duly executed deed of assignment, legalised to the embassy of any GCC country;
  • a power of attorney in favour of the assignee, legalised to the embassy of any GCC country;
  • a certified copy of the certificate of incorporation or commercial extract if the assignee is a company, legalised to the embassy of any GCC country; and
  • payment of the official fee.

UAE Patents and Utility Models

The UAE Patent Law provides that a licence must:

  • not exceed the term of protection afforded by the patent;
  • be in writing and signed by the parties before a Notary Public;
  • be in Arabic (or translated into Arabic); and
  • recorded at the relevant department at the Ministry to be effective.

Other laws may also affect the terms. For example, the UAE Competition Law may restrict certain pricing agreements, and sharia restricts penalty interest provisions. Apart from these considerations, the parties are generally free to determine the terms of the licence, such as the geographical territory, exclusivity, and scope.

In order to record a patent at the Ministry, a patentee must apply by completing and submitting the prescribed application form, together with:

  • a power of attorney in favour of the licensee, legalised to the embassy of the UAE;
  • a licence agreement, legalised to the embassy of the UAE; and
  • payment of the official fee.
Cedar White Bradley

Burj Al Salam, 47th floor
2 Sheikh Zayed Road
Dubai
United Arab Emirates

+971 (4) 3816840

david.harper@cwblegal.com www.cwblegal.com
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Law and Practice

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Cedar White Bradley (CWB) is a Dubai-based, specialist IP firm with seven offices serving 22 jurisdictions throughout the Middle East and North Africa Region (MENA). CWB provides the full suite of intellectual property registration services in each country, and has full litigation capabilities in the United Arab Emirates, Saudi Arabia and Egypt – three of the largest markets for patent disputes and counterfeit products in the MENA region.

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