What you need to know about patent litigation?

The United Arab Emirates has built up a rigorous intellectual property protection regime in the country. The UAE is also a signatory of various international treaties relation concerning intellectual property protection such as the ‘World Intellectual Property Organization Convention’ (WIPO), ‘Trade-Related Aspects of Intellectual Property Rights’ (TRIPS), ‘Paris Convention for Protection of Industrial Property’, ‘Patent Cooperation Treaty’ (PCT) and the ‘Gulf Cooperation Council’ (GCC).

Patent rights, in particular, are governed by the Federal Law no. 17 of 2002 for the ‘Organization and Protection of Industrial Property for Patents, Designs and Industrial Models’ and its amendments (‘Patent Law’). Pursuant to this, ‘A patent shall be awarded to any new invention resulting from an innovative idea or inventive step in all fields of technology, provided that such an idea or inventive step has a scientific basis and is capable of industrial application. The invention shall be deemed industrially applicable in its broadest term is used or utilized in such fields as agriculture, fisheries, handicrafts, and services. The application must be restricted to one invention only or to a group of interrelated inventions yielding one general innovative concept..’(Article 4). Thus, the main criteria for awarding Patents under the said law is focused on the concept of new inventions containing an ‘inventive step’ which is capable of industrial use or exploitation. A patent is granted for a twenty years’ time period extending from the date of filing the patent. The UAE’s federal ministry of economy is responsible for patent protection, and the granted patent protection applies to all the seven emirates of the UAE, namely, Dubai, Abu Dhabi, Fujairah, Ajman Sharjah, Umm Al Qwain and Ras al Khaimah.

Once a patent is approved and duly registered in the UAE, the patent holder is granted the absolute right to prevent any third parties from either using, manufacturing, selling the patented product or process in the UAE, unless such parties have obtained consent from the patent holder by virtue of a license agreement. Thus, pursuant to article 58 of the Patent law, in the instance of infringement, the patent holder can proceed with the legal measures against the infringer, ‘The owner of the protection title or the beneficiary of all or some of the industrial property rights provided by this Law may request the competent court, either before or during the civil or criminal proceedings, to issue a writ of attachment on the invention or industrial design, or on the establishment or the part of the establishment using or exploiting any of the industrial property titles mentioned, in relation to which an infringement or an unlawful act has been committed that contravene this Law or contracts or licenses granted under the provisions thereof.

As part of the litigation measures, the patent holder can also claim damages for the losses caused to them on account of the infringement action. Although the Patent Law is silent on the calculation of a compensation claim based on an infringement action, the patent holder can still proceed with a compensation claim under Federal Law No 5 of 1985 on commercial transactions. For ascertaining the damages, the claimant may also request the court for an appointment of an expert.

It is interesting to note that patent infringement in the UAE allows for a variety of legal remedies, including criminal, civil claims as well as commercial claims. Patent applications in the UAE are routinely filed majorily from Pharma, Information technology and Petrochemical industries. The number of patent applications are projected to increase further in the coming years, along with the further growth and diversification of the economy.

Dr. Hassan Elhais is a legal consultant in Dubai, specializing in the drafting of all statements of claim, memos and consultation on litigation of all manner.