Patent Filing Procedures under GCC Patent Office

The Gulf Cooperation Council was formed in 1981 in Abu Dhabi by Kuwait, Bahrain, Oman, Qatar, UAE, and KSA (founding members). According to the GCC Charter, its main objectives are:

• To effect coordination between the Member States to achieve unity between them
• To strengthen relations between their peoples in different fields
• To formulate similar regulations in fields such as economic and financial affairs, commerce, communications, education, and culture
• To stimulate scientific and technological progress in areas such as mining, industry, water, agriculture, and animal resources

The GCC Patent Office was settled in 1992, and it is located in Riyadh (KSA) within the Secretariat General of the GCC. In its twentieth session in November 1999, the Supreme Council revised the GCC Patent Regulation (accepted by the Council in the 13th session detained in December 1992). According to article 2 of the GCC Patent Regulation (the Regulation), to qualify for a patent according to the provision of this Law, an invention must be: new, involve an inventive step, and industrially applicable. Furthermore, it must not conflict with the Sharia Law or general rules in the GCC States. According to this Regulation, the following must not be regarded as inventions (Article 3):

• Scientific theories, computer programs, mathematical methods, and discoveries
• Methods, rules, and schemes for doing business
• Varieties of plants, animals, or biological processes used to produce animals or plant
• Methods of surgical or healing treatment in the animal or human body.

As per Article 5 of the Regulation, the patent application (PA) must contain:

Once the application has satisfied the terms before stipulated, the Office must register the application filing date and formally examine it. The Office may demand that the applicant completes the application requirements within three (3) months at most from the date he was informed. If he fails to do so within the specified date, his application must prescribe. If the application has satisfied the terms specified in the Regulation, the Office must decide to concede the patent, enter it in the register, and announce it. The patent certificate must be delivered to the owner of the invention three months from the announcement date should any concerned party submit no objection to the Grievance Committee. IP protection aims to safeguard not only new inventions or creations but also those that are still in existence and any legal queries in this regard may be addressed by intellectual property lawyers.

The patent allows its owner to exploit the invention. The invention of a product must be considered controlled by use, manufacturing, sale, or exhibition for sale. When the Patent subject is a product, the Patent owner must have the right to prevent others from using, importing, manufacturing without his prior consent. The patent owner must make sufficient exploitation of the patented invention in the Member States within three (3) years from the date of funding. According to the Regulation, The Compulsory license must be cancelled in the following cases:

• If the recipient of this license fails to exploit it satisfactorily in the Cooperation Council States within two years from the date of the concede of the license, renewable for additional two years should the delay be found to be due to an authentic reason.
• If the recipient of the compulsory license fails to pay the unpaid amounts and the amounts specified in the Bylaws within three months from the date of maturity.
• If the recipient of the compulsory license fails to contain any other term specified in the decision conceding the license.
• If the conditions due to which the license was granted finish and are improbable to return, providing that the legitimate rights of the licensee must be observed.

Concerning the fees, the patent must be subject to a yearly fee paid in advance at the start of each year beginning from the year next to the request filing date. Should the patent proprietor fail to pay such charges within a maximum of three months from the starting of the year, he may do so within another three months, starting upon expiry of the previous one. In such a case, an extra fee shall accrue. And the Office must collect fees from the beneficiaries in the following instances:

• Filing a patent application.
• Charges of granting and publication of the patent.
• Annual fees
• Amendment or addition to the patent application.
• Additional charges for delay of payment of an annual patent fee.
• Transfer of rights to the application or change of patent ownership.
• Procurement a copy of the application, of its record, or the patent.
• Requesting the grant of a compulsory license.
• Grant of a compulsory license.
• Requesting registration of the license contract.
• Registration of the license contract
• Registration of appeal before the Committee.
• Renewal of appeal before the Committee.
• Requesting sample of microorganism.
• The request for a voucher for temporary protection during an exhibition.
• Search in the Office documents.
• Substantive Examination.

In 2016 was introduced online patent filing services in the GCC Patent Office; the process was simplified as follows:

Recently, The Supreme Council of the GCC, following the 41st meeting, announced that the GCC Patent Office has stopped accepting new patent applications from January 6, 2021. Customers with current or future interest in patent protection in the GCC Member States are advised to continue as follows:

• For new applications of GCC Member States filet after January 5, 2021, can choose between:

• Filing a PA in each of the GCC Member States of interest through a direct Paris Convention request within the 12-month priority period, together with a priority claim back to the priority application.
• Filing a national stage request in each of the GCC Member States of interest within the 30-month priority period using the Patent Cooperation Treaty (PCT), together with a priority claim back to the priority application.

• For pending GCC PA filed or before January 5, 2021: the GCC Patent Office will remain to operate until the termination of the last pending GCC patent request or GCC patent filed on or previously January 5, 2021. For a GCC patent application that was new from a still pending, priority patent request of particular importance or value, it may be prudent to file a direct Paris Convention request in one or further of the GCC Member States.