Saudi Arabia has recently amended provisions of its patent regulations, effective as of 19 December 2015. The amendments may be seen as an attempt to harmonise Saudi Arabian patent prosecution with that of the Patent Cooperation Treaty, which it assented to in May of 2013. So what are the effects of these amendments?
An applicant seeking protection within the borders of Saudi Arabia, may file a patent application with the Saudi Patent Office (SPO). The application, once prosecuted and granted, will provide the holder with patent rights in Saudi Arabia.
Saudi Arabia is also a contracting member of the Patent Cooperation Treaty (PCT), which makes it possible to designate and file national phase applications in Saudi Arabia upon the 30 month deadline.
The amendments to the Saudi patent regulations will thus be relevant to an application first filed through the SPO or in instances where Saudi Arabia is entered into as a national phase application.
The amendments cover:
(1) restoration of abandoned or lapsed patent applications;
(2) extension of time periods for claiming priority;
(3) annuity fee calculations; and
(4) submission of supporting documents for a PCT application.
Turning now to each:
(1) Abandoned or lapsed patent applications may be restored, if the applicant can show compelling reasons as to why specific deadlines, which resulted in the lapsing of the application, were not met. The request must be submitted to the SPO within two months from the date on which the application lapsed, or within 12 months from the date of refusal, whichever is earlier.
(2) An extension of time for claiming priority in a PCT application has also been introduced. Applications which have not claimed priority, or which have claimed priority incorrectly, will be afforded the opportunity to correct these deficiencies. Applicants are now afforded an extra 2 months after the 12 month priority period in which to file priority documents or correct the deficiencies in priority claims.
(3) Calculation of annuity fees. The international PCT filing date is now considered as the start date from which annuity fees will accrue. Previously, annuity fees were calculated from the national filing date. Annuity fees are payable on 1 January of each year, with a three month window period available. Fees could still be paid after the window period for a further 3 months, subject to a late payment fee. Since annuity fees now start accruing from the international PCT filing date, the previous year’s annuity fees will become due and payable on the maturity date of the first annuity fee. What this means is that an applicant will now find themselves paying two annuities in the first year of the national phase.
(4) The amendments now provide that all supporting documents (priority documents, powers of attorney and deeds of assignment) must be submitted within sixty days of entering the national phase. This has been reduced from 90 days previously. While this may appear to be a fairly restrictive deadline, applicants are able to request extensions for up to two months to this deadline (taking the period up to an effective 120 days) upon the payment of requisite fees.
As may be seen, the amendments now effect Saudi patent applications and Saudi designated national phase applications.
In practice, should an applicant seek wider protection in the region, an application may be made for a regional patent application applied through the Gulf Cooperation Council Patent Office (GCCPO). The application, upon grant, provides the holder with patent rights in all of the GCC member states. These member states include Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates.
What is important to keep in mind is that the SPO is distinct and separate from that of the GCCPO, both offices are located in Riyadh, Saudi Arabia. Applications filed through the GCCPO are governed by the GCC patent laws, and likewise, applications filed for protection in the Saudi Arabia are governed by the SPO patent laws, and subject to the amendments discussed above.
Furthermore, as the GCC is not a contacting member to the PCT, applications filed through the PCT cannot designate the GCC region for national phase entry. Therefore an applicant must designate Saudi Arabia, and all the other national offices if seeking protection over the GCC region.
Thus, it is unlikely that any amendments to the Saudi patent regulations will have an effect on applications filed through the GCCPO. Only the applications filed through the SPO or designating Saudi Arabia through the PCT filing procedure, are subject to the amendments.