In the latest Official Gazette issued by the Gulf Cooperation Council (GCC) Patent Office, the Patent Office confirms the start of the new 'outsourcing' model announced earlier in 2021 for new patent applications.
From 1st January 2023, the GCC Patent Office will begin handling national patent applications on behalf of the requesting GCC country. So far, only the patent offices of Bahrain and Kuwait have been confirmed to be referring their national applications from January 2023 to the GCC Patent Office to handle formality and substantive examination. There has been no announcement from the remaining GCC members, Oman, Qatar, Saudi Arabia and the UAE, as to if or when filings through these national offices may be handled through the GCC Patent Office.
New official fees were also published in the Gazette. In line with recent official fee changes in IP matters in the Gulf region, the official filing fees have been reduced. The official filing fee for company applicants is now around USD 800, approximately 20% lower than pre-2021 official fees. The substantive examination fees are still case dependent and estimated by the examining authority at the time of examination.
It is not clear how this arrangement will affect the official fees for applicants filing national applications in Bahrain and Kuwait, i.e., if applicants have to file at the national offices who then refer applications to the GCC Patent Office for a fee or if they can file directly at the GCC Patent Office and rely on the published fees. Once the applications are examined, the GCC Patent Office will transfer these electronically to the national offices for grant.
It is also not clear if applicants will have the option of choosing which office handles their application i.e., the national offices or the GCC Patent Office. If it transpires that applicants will have an option as to where the application can be published, we may find a degree of forum shopping for those offices which may examine applications more quickly, or are perceived as offering a more-applicant favourable level of examination. This is something we will consider further as information comes forward from the GCC Patent Office.
As of now, it appears that the decision to refer applications has been made at the national level and that all applications will be referred. However, it is not yet confirmed whether pending applications (filed prior to January 2023) will also be forwarded for examination once the new process kicks off.
Tamara joined Gowling WLG's Dubai office in 2021 to support the growth of its patent practice. She works with regional startups, tech companies, universities and R&D-based organisations to build and manage their patent portfolios regionally and implement IP management and technology transfer practices to support innovation. Tamara is a part-qualified UK attorney with a postgraduate degree in Intellectual Property Law and an undergraduate degree in Pharmacology. She has been based in the Middle East since 2009 previously working for the Qatar Foundation (QF), a non-profit organization focused on human capital development, research and innovation. In the 7 years she spent at QF, Tamara led an IP audit of its national research funding program and played an instrumental role in the establishment of IP management and technology transfer policies and practices at the Foundation. Prior to joining Gowling WLG’s Dubai office, Tamara worked with a Dubai-based IP legal consulting firm for over 4 years. Tamara is one of the recommended individuals in the IAM Patent 1000 for the UAE for 2020 and 2021.
Gowling WLG is a top 100 global law firm, operating in 19 offices across 10 countries. They have had an established presence in the Middle East since 2007. They serve their clients through our offices in Dubai and Abu Dhabi as well as in Saudi Arabia and Oman though their professional associations with local firms.
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Source: Gowling WLG-Tamara El-Shibib
Editor: IPR Daily-Ann