Monday, 17 August 2015

After the oil runs dry - protecting inventions from GCC countries overseas

Beam pump in the West Kern Oil Museum in Tait, California, USA
Photo Konrad Summers
Creative Commons Licence
Source Wikipedia

Over the last few years the governments of the Gulf states have invested heavily in education and research to diversify their economies and lessen their dependence on oil and gas.  Saudi Arabia founded what is now the King Abdulaziz City for Science and Technology in 1977. Dubai established its International Academic City in 2007. The Qatar Foundation has set up Education City in Doha. Such investment appears to have led to good academic research but there have not yet been many applications for patents. Of the 205,268 applications for patents through the Patent Cooperation Treaty ("PCT") in 2013, Saudi Arabia accounted for 187, the United Arab Emirates 57, Oman 3 and Bahrain 2 (see page 41 of WIPO Facts and Figures 2014 ). As for applications to the Gulf Co-operation Council ("GCC") and national patent offices, there were 2,991 to the GCC 1,426 to the United Arab Emirates, 931 to Saudi Arabia, 332 to Qatar and 170 to Bahrain.

Patents are important because they confer a monopoly of a new invention. Art 28 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") requires member states of the World Trade Organization to provide that:
"A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process."
Such monopolies are granted to stimulate research and development.  By restricting the exploitation of a new invention to patent owners, inventors and their investors have an opportunity to recoup their expenditure and perhaps earn a little extra.

In order to maximize a new invention patents should be sought not just for the country in which the invention was invented but also for the countries where the invention or its products are likely to be sold and those in which they could be manufactured.  Two international agreements facilitate patenting of new inventions:
Art 4 of Paris gives applicants for patents up to 12 months priority from the date upon which they make their first application. The PCT facilitates simultaneous applications for patents in a number of countries from a single filing.

The first step for an inventor is to apply for a patent for his or her own country.  Before taking that step the inventor will probably wish to satisfy himself or herself that there is a market for the invention, that he or she can secure investment for it and similar matters. He or she may well be asked for particulars of the invention. if the inventor agrees to such a request he or she should make such disclosure only in confidence. The law of the Dubai International Financial Centre recognizes a duty of confidence (see DIFC Law of Confidence 27 Jan 2011). Inventors who wish to take advantage of such law should make sure that their confidentiality or non-disclosure agreements require the confidante to submit to the courts of the DIFC and provide for the agreement to be construed and enforced in accordance with DIFC law. We can advise you on the law of confidence of the DIFC and draft such agreements for you.

PCT applications proceed in two phases: 
  • an international phase where searches and examinations are carried out for novelty, inventiveness and utility on behalf of all parties to the PCT; and 
  • a national phase where individual offices determine whether an application complies with their national law. 
The reason for those two phases is that the basic requirements of patentability such as novelty, inventiveness and utility are shared by all countries but there are important differences from state to state in other requirements. For instance, art 52 (2) (c) of the European Patent Convention excludes programs for computers from the definition of "invention".  However, that paragraph is subject to art 52 (3) which provides:
"Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
That provision has been incorporated into the laws of each of the parties to the Convention including the UK. Art 52 (2) (c) and (3) and their corresponding provisions in national law have been considered many times by the courts of the contracting states and the Boards of Appeal (internal tribunals) of the EPO over the years. It appears that an invention  can be patented even if it is implemented by a computer program so long as it is something more than a program. Thus, a patent can be granted for a digitally controlled machine tool even if it consists of a known components so long as the tool is novel, inventive and useful but not for the program that actuates the processor that controls the tool.

Because of such considerations, applications for patents should be drawn up by attorneys with experience of the PCT. Attorneys from firms with offices outside the GCC may offer an advantage in that regard and there are several UK firms with offices in the Gulf. We should be glad to effect introductions to such firms if so requested. The same firms will can offer sure footed support to GCC inventors in national and regional patent offices during the national phase.  Occasionally disputes over patentabiluty arise that have to be resolved in the Boards of Appeal or other courts and tribunals. We can represent GCC inventors in hearings before EPO Boards of Appeal, hearing officers representing the Comptroller in the UK Intellectual Property Office and the courts of England and Wales.

Patent enforcement can be expensive particularly in common law jurisdictions such as the UK. We advise GCC inventors to consider taking out IP insurance from the time they file their applications. We can introduce inventors to specialist brokers if need be.  Disputes over whether a patent has been infringed are resolved by the courts of the country in which the infringement takes place. If a GCC inventor's patent has been infringed in the UK we can offer advice and representation in the Patents Court and the Intellectual Property Enterprise Court of England and Wales. A number of European countries including the UK have agreed to establish a Unified Patent Court to resolve disputes over unitary and other European patents (see the Agreement on a Unified Patent Court of 19 Feb 2013). When that court opens we can advise and represent inventors before that court also. For further advice on our services see Jane Lambert IP Services from Barristers 6 April 2013 4 to 5 IP.

Should anyone wish to discuss this article or patent law or the law of confidence on general, he or she should call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.

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