Defence Equipment Development Agreements - An Opportunity for the English Speaking Common Law Courts?

Kyiv by Night

Author Roman Naumov  Licence CC BY-SA 4.0  Source Wikimedia Commons

 

Jane Lambert

My last post Demand for English Legal Services in the Gulf expressed anxiety over the long-term future of the Gulf Cooperation Council member states.  I observed:

"It goes without saying that the current hostilities in the region are bad for business, and the longer they continue, the more difficult it will be. Much will depend on the outcome."

Although there has been a ceasefire between the United States and its allies in the Gulf and Iran, the United States Navy's counter-blockade of Iranian shipping has arguably added to the difficulties of restoring normality to the region.

However, there has been at least one development which may stimulate demand for the services of the English-speaking common law courts in the United Arab Emirates and Qatar and the lawyers who practise or would be eligible to practise in them.  President Zelenskyy's visits to the GCC states and the agreements that he has negotiated to develop and manufacture weapon systems based on Ukrainian technology are well-documented (see, for example, Sasha Vakulina What are Ukraine's new Gulf defence deals? Here is what Zelenskyy signed 30 March 2026 in Euronews and Jodesz Gavilan Ukraine Defense Firms See Surge in Foreign Partnership Offers 27 April 2026, The Defense Post).

The implementation of these international agreements will require weapons development agreements between defence contractors in Ukraine, the GCC countries and elsewhere.  Many, if not most, of those agreements will be in English, and they will all need to be construed and applied in accordance with an agreed system of law.  Since the laws which the DIFC, Abu Dhabi Global Markets and Qatar Financial Centre Courts are based on English law there is every reason to suppose that at least some of those parties will submit to the jurisdiction of one of those courts.  As Dubai has a Digital Economy Court which was presided over by fellow Mancunian, Michael Black KC, that would be my personal choice.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page at any time.

Demand for English Legal Services in the Gulf

Author Masterdeis Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

For many years, the members of the Gulf Cooperation Council and neighbouring states have been a large and growing market for British goods and services.  To support suppliers of those goods and services, many British law firms and some chambers have established a presence in the region.  The Dubai International Financial Centre, Abu Dhabi Global Market and the Qatar Financial Centre have set up English-speaking common law courts to resolve disputes within their jurisdictions.

I have been following those developments in this publication for over 15 years.  Stephen Somerville, one of our most senior staffers, has made several visits to Dubai to promote the services of our members.

It goes without saying that the current hostilities in the region are bad for business, and the longer they continue, the more difficult it will be.  Much will depend on the outcome.  For instance, whether the US and Israeli forces break Iranian resistance or harden it and the type of regime that eventually emerges in Tehran.   In that regard, it must be remembered that countries have interests and that a more liberal successor to the present theocracy may not have altogether different ambitions.   Russia can no longer be described as a socialist state, but its conduct in international affairs is not very different from that of the former Soviet Union.  

For the moment, the courts continue to sit.  Both the DIFC and the ADGM courts have delivered judgments since 28 Feb 2026.  I am reminded of an observation by Sir Robin Jacob when he spoke in Leeds last month (see Robin Jacob Visits Leeds 1 March 2026 NIPC Yorkshire).  He said that while Adolf was pounding the United Kingdom, the House of Lords was deciding King Features Syndicate Inc. v Kleeman (O. & M.) Ltd, [1941] A.C. 417 | [1941] 2 All E.R. 403 | [1941] 5 WLUK 46.  That case moulded product design law in the UK and much of the Commonwealth until 1989.   In some areas of the law, such as frustration of contracts and force majeure, there may even be an uptick in work in the short term, as there was in London immediately after Suez.  

I shall continue to monitor developments and report the more significant ones here.  Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send a message through my contact form at any time.

IP Provisions of a Free Trade Agreement between the Gulf Cooperation Council and the UK

By Commander Leroy Chiao - NASA website, Public Domain,
https://commons.wikimedia.org/w/index.php?curid=397518

 

Jane Lambert

Negotiations for a free trade agreement between the British government and the Gulf Cooperation Council have been underway since 2022.  According to the Minister of State for Trade Policy and Economic Stability, negotiations have covered services, investment and digital technologies as well as trade in goods (see Free Trade Agreement with the Gulf Cooperation Council (GCC): Update on Continuous Negotiations Statement made on 18 December 2024 Statement UIN HCWS333).

In June 2022, shortly before the negotiations began, the Department for International Trade published UK-Gulf Cooperation Council Free Trade Agreement UK’s Strategic Approach.  Although it was the work of the previous government, that publication has never been revoked, superseded or amended.  It is therefore reasonable to suppose that it reflects the present administration's thinking.

Chapter 3 sets out the government's objectives, which include:

"Intellectual property 

• Protect the UK’s existing IP standards. 
• Ensure rights holders receive protection and fair remuneration for the use of their works abroad, whilst ensuring reasonable and fair access for consumers. 
• Achieve an effective balance between rewarding research and innovation, whilst refecting wider public interests such as ensuring access to medicines. 
• Secure adequate protection for brands and design intensive goods, whilst keeping the market open to fair competition. 
• Promote the accessible, transparent, effective, and effcient enforcement of IP rights, including for online IP infringement, and facilitate cross-border collaboration on IP matters.
• Promote cooperation on an approach on geographical indications which ensures consumers are not misled about the origins of goods, while ensuring they have access to a range of products. 
• Promote provisions which take account of emerging opportunities and challenges in the digital age.
• Ensure consistency with the UK’s existing international obligations, including the European Patent Convention, to which the UK is party to."

An inkling of the provisions that could be agreed is indicated by art 5.1 of the Free Trade Agreement between the European Free Trade Association and the Gulf Cooperation Council Member States:

"ARTICLE 5.1 

Protection of Intellectual Property Rights 

1. For the purpose of this Chapter, "intellectual property" comprises copyright, including copyright in computer programmes and compilations of data, as well as neighbouring rights, trademarks for goods and services, geographical indications, industrial designs, patents, plant varieties, topographies of integrated circuits, as well as undisclosed information within the meaning of Article 39 of the WTO Agreement onTrade-Related Aspects of Intellectual Property Rights (hereinafter referred to as “theTRIPS Agreement”). 

2. The Parties shall ensure adequate, effective and non-discriminatory protection of intellectual property rights, including effective means of enforcing such rights against infringement thereof, in accordance with the provisions of this Chapter. 

3. Each Party shall accord to the nationals of the other Parties treatment no less favorable than that it accords to its own nationals with regard to the protection of intellectual property rights. Exemptions from such obligation must be in accordance with exceptions provided for under Articles 3 and 5 of the TRIPS Agreement. 

4. The Parties shall grant to each other’s nationals treatment no less favourable than that accorded to nationals of any other country. Exemptions from this obligation must be in accordance with the provisions of the TRIPS Agreement, in particular Articles 4 and 5 thereof.

 5. The Parties agree, upon request of any Party to review this Chapter in the Joint Committee in order to avoid or remedy trade distortions and to improve the level of protection. If problems in the area of intellectual property protection affecting trading conditions were to occur, urgent consultations shall take place in the Joint Committee at the request of a Party, with a view to reaching mutually satisfactory solutions. 

6. The Parties shall not later than two years after the entry into force of this Agreement conclude negotiations on an Annex containing further provisions on the protection and enforcement of intellectual property rights. "

As I argued in DIFC IP Law Update 2025 on 24 Jan 2025, the DIFC Intellectual Property Law (DIFC Law No. 4 of 2019) appears to provide a high level of protection for intellectual property owners who fall within the jurisdiction of the DIFC courts.  They have the option of complaining to the Commissioner of Intellectual Property under art 59 (3) (a) of the IP Law and art 2 of The DIFC Intellectual Property Regulations or bringing an infringement action in the Court of First Instance. Where it is not possible to persuade a local licensee or other contracting party to accept English law and the jurisdiction of the English courts, a DIFC choice of law and jurisdiction clause would be the next best thing.

Anybody wishing to discuss this topic may call me on +44 (0)20 7404 5252 or send me a message through my contact form.

DIFC IP Law Update 2025

Dubai Creek

Author Aravind Parameswaran Licence  CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

As a result of such initiatives as the Innovation Hub and the Metaverse Platform, new products and services are being developed in the Dubai International Financial Centre ("DIFC") in such technologies as fin-tech, virtual reality and artificial intelligence. They will require legal protection in the DIFC and beyond.  That is not as straightforward in the DIFC as it is in the rest of Dubai because the DIFC has its own legal system. It is for that reason that the Ruler of Dubai proclaimed the DIFC Intellectual Property Law (DIFC Law No. 4 of 2019) on 14 Nov 2019.

That law does not establish any IP rights for the DIFC as such.  It implements the existing intellectual property laws of the United Arab Emirates ("UAE") in the DIFC and provides for their enforcement.  These are:

• the Federal Decree-Law No. 38 of 2021 on Copyrights and Neighbouring Rights; 
• the Federal Law No. 11 of 2021 on the Regulation and Protection of Industrial Property Rights; 
• the Federal Law No. 17 of 2009 on the Protection of New Plant Varieties; and 
• the Federal Law No. 36 of 2021 on Trademarks.

The relationship between those federal enactments and DIFC Intellectual Property Law is explained in my article Introduction to, and Overview of, the New DIFC Intellectual Property Law which I wrote on 11 Dec 2019.

In that article, I observed that:

"The most interesting provisions of the new Law relate to the Commissioner of Intellectual Property, Art 5 provides that the Law and any legislation made for the purpose of that Law shall be administered by the Commissioner."

The first Commissioner was Dr Tarek Hajjiri and he gave a very interesting interview to Mariam Sabet on YouTube at the INTA virtual conference in 2021.  Dr Hajjiri held that appointment until 2023 and his successor is Katherine Nixon.

I noted that the Commissioner has very extensive powers under art 59 (3) of the DIFC Intellectual Property Law in my article.  Art 59 (3) (a) requires him or her to receive and decide on all complaints or disputes filed in connection with the law in the DIFC, and to impose fines for non-compliance with the Law and any related regulations.  Drafting those regulations and submitting them to the DIFC Directors was another of the Commissioner's responsibilities,  The DIFC Intellectual Property Regulations came into force on 5 July 2021. 

As I stated in The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020, anyone seeking a patent for the DIFC may apply to the Gulf Cooperation Council Patent Office for a GCC patent or to the federal Ministry of Economy for a UAE patent.  I wrote about GCC patents in Patents: Gulf Co-operation Council on 21 Jan 2011.  The Ministry of Economy is also the appropriate authority for the registration of utility certificates, trade marks, industrial designs and the layout of integrated circuits that apply to the DIFC.  The UAE is party to the Patent Cooperation Treaty ("PCT") and the Madrid Protocol.

IP rights that do not have to be registered with the UAE Ministry of Economy include copyrights, rights in performances and other neighbouring rights and the right to prevent unauthorized use or disclosure of trade secrets.  I discussed those rights in The New DIFC Intellectual Property Law - Copyright and Neighbouring Rights on 28 June 2020 and DIFC Trade Secrecy Law on 7 July 2021.  Two IP rights that predate the new Law are the rights to enforce an obligation of confidence under art 37 of the Law of Obligations DIFC Law No. 5 of 2005 and the right to bring an action for passing off under art 38.. I wrote about the duty of confidence in DIFC Law of Confidence on 27 Jan 2021 and The DIFC Law of Passing off on 7 April 2011.

A rights owner who believes that his or her right has been infringed has the choice of complaining to the Commissioner under art 59 (3) (a) of the DIFC Intellectual Property Law and art 2 or bringing an infringement action in the Court of First Instance.   By far the cheaper and less formal procedure is to complain to the Commissioner.  Complainants complete a simple form and pay an initial fee of US$500. By contrast, the fees for issuing a claim form range from US$1,500 to US$130,000 depending on the value of the claim.  The Commissioner has jurisdiction to hear claims under the Law but not for breach of confidence or passing off.  The Court, on the other hand, can grant interim injunctions including search orders and freezing injunctions.  It can also conduct inquiries as to damages and accounts of profits. Most complainants, particularly startups and small and medium enterprises, will complain to the Commissioner and the DIFC has prepared a helpful guide to assist them,  Those with urgent high-value claims are likely to prefer the courts.

Although there is no intellectual property division in the Court of First Instance the Technology and Construction Division will hear claims relating to the design, supply and/or installation of computers, computer software and related network and information technology systems and services under Rule 56 (3) (5) of the DIFC Court Rules. Similarly, the Digital Economy Court will hear claims involving:

"(1) fintech;
(2) digital assets, including the digital environment, platform or system in which a digital asset exists or may exist;
(3) distributed ledger technology and blockchains including applications based on blockchain technology;
(4) substantial or complex databases;
(5) artificial intelligence and any devices or components of devices whether integrated or not that are dependent on or controlled by artificial intelligence;
(6) data stored digitally including on cloud or other remote platforms, including distributed ledger technology;
(7) e-commerce, online intermediaries, digital payment platforms or marketplaces which include virtual asset service providers in relation to: exchange between virtual currencies; exchange between virtual and fiat currencies; the safe-keeping or administration of virtual assets; or, enabling participation in financial services connected to the offer or sale of virtual assets;
(8) interactions and transactions within virtual reality and the Web3 economy, including digital peer-to-peer transactions;
(9) the application of automatic dispute resolution processes;
(10) decentralised autonomous organisations (DAOs), decentralised finance vehicles (DeFi) and decentralised applications (DApps);
(11) the validity of digital signatures and digital identification and verification systems;
(12) the design, supply and /or installation of computers, computer software and related network and information technology systems and services;
(13) cyber-physical systems such as unmanned aerial vehicles, 3D printing technologies, and robotics;
(14) intellectual property claims arising out of or in relation to any of the above claims;
(15) insurance claims arising out of or in relation to any of the above claims;
(16) claims under the DIFC Data Protection Law (Law 5 of 2020); and
(17) any combination of the above claims."

under Rule 58 (7).

As all the IP rights enjoyed in the DIFC except the obligation of confidence and the law of passing off are established under federal law it is conceivable that conflicts will arise between rights existing in one system and those existing in the other.   The Ruler of Dubai jas recently established a Conflicts of Jurisdiction Tribunal to resolve such disputes.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

UK's New IP Attaché to the Middle East and North Africa

Author Nederlandse Leeuw Licence CC BY-SA 4.0 Source Wikimedia Commons

Jane Lambert

The UK has a new IP attaché for the Middle East and North Africa ("MENA") region.  Her name is Sanaz Javadi Farahzadi and she is interviewed in the latest issue of IP Overseas.  Ms Farahzadi succeeds Yamish Yakoob who was IP attaché to the Gulf Cooperation Council states between 2021 and earlier this year. Further information about Ms Farahzadi and her mission appears in the latest edition of the Attaché Contact Details guidance.

MENA is a large and diverse region stretching from the Atlantic to the Arabian Gulf. It includes some of the wealthiest states on the planet as well as some of the poorest. Wars are taking place in several parts of the region and the political complexion of the governments ranges from absolute monarchy to Ba'ath socialism.  

The countries of the region vary widely in their level of protection for intellectual assets.  Morocco and Tunisia have validation agreements with the European Patent Office.  Saudi Arabia is hosting the Design Law Treaty Diplomatic Conference.  The TRIPS agreement was signed in Marrakech.  On the other hand, Palestine offers much more limited IP protection as I stated in  IP Law in Palestine last year.

As I mentioned in Why is there no longer a British IP Attaché to the Gulf Co-operation Council? these chambers have invested heavily in the region.  We are all entitled to appear as advocates before the English language, common law, commercial courts in Abu Dhabi, Doha and Dubai and several of us have appeared before those tribunals.  We also sit as or appear before arbitrators and mediators in all parts of the region.  We can also advise and represent clients from that region with interests in the United Kingdom,

Stephen Somerville, our first deputy senior clerk is currently in Dubai.  Should anyone in that Emirate wish to meet him his email address is ssomerville@4-5.co.uk.  Anyone wishing to discuss this article may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my contact form,

Enforcing Intellectual Property Rights in the DIFC

 

Jane Lambert

On 14 Nov 2019, the Ruler of Dubai proclaimed the DIFC Intellectual Property Law (DIFC Law No. 4 of 2019) ("the IPL"). That legislation does not create a separate body of intellectual property rights for the Dubai International Financial Centre ("DIFC"). It provides for the enforcement of rights subsisting under Emirati federal law in the financial centre.  I have discussed the IPL in the following articles:

• Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019; 
• The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020;
• The New DIFC Intellectual Property Law - Designs on 7 June 2020; 
• The New DIFC Intellectual Property Law - Copyright and Neighbouring Rights on 28 June 2020;
• The New DIFC Intellectual Property Law - Trade Marks and Trade Names on 20 Sept 2020; and
• DIFC Trade Secrecy Law on 7 July 2021.

One of the most interesting provisions of the IPL is the establishment of a Commissioner of Intellectual Property ("the commissioner").  Art 5 of the enactment provides that the IPL and any legislation made for the purpose of that law shall be administered by that commissioner.  He or she has very extensive powers under art 59 of the IPL.

In accordance with art 56 (1) of the IPL, the President of the DIFC has appointed Dr Tarek Hajjiri as the DIFC's first commissioner.   He has been interviewed on Al-Tamimi & Co's YouTube channel (see Mariam Sabet interviews Dr Tarek Hajjiri, Senior Vice President - #INTA202). One of his most important functions is

"receiving and deciding on all complaints or disputes filed in connection with the Law in the DIFC, and imposing fines for non-compliance with this Law and any related Regulations"

under art 59 (3) (a) of the IPL.  Pursuant to art 60 (1) of the law, the DIFC's directors have made the Intellectual Property Regulations ("IPR") to assist him in exercising that function.

Complaints filed with the commissioner must contain the following information:

"(a) full name, address and capacity of the Complainant;
(b) the name and details of the Respondent;
(c) the details of the complaint;
(d) a detailed statement of the alleged facts which the Complainant believes gives rise to the complaint; and
(e) the relief sought by the Complainant."

The complaint should be  supported by the following documents:

"(a) proof of ownership of intellectual property rights or the right to claim protection pursuant to such ownership, which may include patent registration certificates, trademark registration certificates and agreements evidencing ownership; 

(b) if a complaint is filed on behalf of the owner of the intellectual property or the holder of intellectual property rights, a suitable power of attorney; 

(c) any documents or other evidences, including witness statements, confirming that the infringement, misappropriation or conflict occurred within the DIFC; 

(d) proof of payment of the fees in accordance with Regulation 2.3; and 

(e) an undertaking to cover any costs and expenses incurred by the Commissioner (or his delegate) to investigate the complaint."

Unless the commissioner is of opinion that notifying a respondent of a complaint may pose a risk to the investigation of the complaint or the preservation of evidence relating to the complaint, he must notify the respondent in writing of the details of a complaint filed against him or her, within 10 business days of receiving the complaint or any additional documents, information or other evidence that the commissioner may have requested, whichever may be later.

A respondent has the right to respond to a complaint within 10 business days of receiving it or such other time as the commissioner may allow.  The commissioner should provide the complainant with a copy of the response together with any supporting documents on which the respondent may rely.  The complainant may then file a reply to any further points raised by the Respondent in his or her response. Any such reply must be filed by the complainant within 10 business days of receiving the respondent’s response from the commissioner or such other time as the commissioner may allow. The commissioner must provide the respondent with a copy of any reply that may be submitted by the complainant.

The commissioner may invite one or more of the parties to a meeting to discuss the dispute if he is minded to issue a direction.  He may also visit the respondent's premises with (or in some cases without) notice to inspect or collect evidence.  The parties may be represented in any of these proceedings by a legal practitioner registered on Part I or Part II of the DIFC Courts' Register of Legal Practitioners. My chambers are listed in Part II of that register and my friend Arann Dowling-Hussey who is also a member of the Irish Bar practises in the DIFC courts.  Other members of the English Bar including intellectual property specialists can qualify easily to practise in the DIFC.

After considering a complaint and completing all the investigations and inspections that the commissioner may deem necessary, he must issue a direction in accordance with art 66 of the IPL and art 3.1 of the IPR. If the commissioner is satisfied that a person has violated the IPL, he may issue a direction with 1 or more of the following measures: 

(i) order the respondent to refrain from the violation and carry out all necessary acts to comply with the IPL; 

(ii) request the DIFC Registrar of Companies to suspend temporarily the respondent's DIFC licence; 

(iii) order confiscation of all materials, goods, tools, machines, equipment, signs and advertisements related to the violation and order the transfer, storage and destruction of the same, at the expense of the respondent; 

(iv) impose fines in accordance with art 66 (1) and Sched 3 of the IPL; or 

(v) in case of a repeated infringement, request the DIFC Registrar of Companies to revoke the DIFC licence of the respondent.   The commissioner may also impose up to double the fines stipulated in Sched 3 pursuant to art 66 (2) of the IPL

If the commissioner is not satisfied that a person has violated the Law, he may issue a direction rejecting the complaint.   Alternatively, if the commissioner is unable to decide whether a violation has been committed, he will issue a direction requesting the parties to refer the matter to the DIFC Court of First Instance ("the court").

Should a respondent fail to comply with a direction the commissioner may apply to the court for an order to compel him or her to do so under art 66 (5) of the IPL  Any person aggrieved by the direction of the commissioner may file a request to the court to review the direction within 15 days of receiving a notice of direction from the commissioner.

My Deputy Senior Clerk, Stephen Somerville, has recently returned from a short visit to Dubai where he met several of my readers including some who practise before the DIFC Courts. He was accompanied by Arran and other members of chambers who were there for Dubai Arbitration Week 2023.  Those members have penned Decree No 34 of 2021 Concerning the Dubai International Arbitration Centre: Two Years On: Some Practical Issues which discusses recent changes to arbitration law in that emirate.

Anyone wishing to discuss my article or any of the topics mentioned in it may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

The Oman Commercial Arbitration Centre

Mr James Bridgeman SC

 

Jane Lambert

I am delighted to report that my friend and colleague, James Bridgeman SC, will give a talk entitled  "Commencing an International Arbitration under the laws of England & Wales" n the Muscat Hall of the Oman Commercial Arbitration Centre ("OCAC") between 10:30 and 13:30 tomorrow.  James is a member of my chambers and a silk of the Republic of Ireland Bar.   He is also a member of the Bars of England and Wales and Northern Ireland, a past President of the Chartered Institute of Arbitrators and an accredited mediator.  He sits on several dispute resolution panels including the arbitration and domain name dispute resolution panels of the World Intellectual Property Organization. 

Oman is the latest member state of the Gulf Cooperation Council to establish an international dispute resolution centre.  The United Arab Emirates has the Dubai International Financial Centre Courts and the Abu Dhabi Global Markets Courts, Qatar has the Qatar International Court and Dispute Resolution Centre and Bahrain has the Bahrain Chamber for Dispute Resolution.   The OCAC was founded by Royal Decree 26/2018  dated 17 Oct 2018.   The Centre is governed by Regulations issued by the Board of Directors Chairman of the Oman Chamber of Commerce pursuant to art 2 of the Royal Decree. 

The Centre was set up to encourage investment in accordance with Oman's 2040 Vision.  It offers arbitration, mediation and other alternative dispute resolution through its panellists.  Its arbitration and mediation rules are published on its website.  OCAC also trains arbitrators in collaboration with the Chartered Institute of Arbitrators and mediators in collaboration with the Centre for Effective Dispute Resolution ("CEDR").  Photos of its hearing and meeting rooms, hire charges and other costs appear on the OCAC's website.

Anyone wishing to discuss this article may call me during UK office hours or send me a message through my contact form. 

The DIFC Courts' Space Dispute Guide

Standard YouTube Licence

Jane Lambert

On 18 Nov 2017, I introduced Dubai's Courts of the Future Initiative.  That initiative has two projects:

• Courts of the Blockchain; and
• Courts of Space.

I discussed the DIFC Space Courts on 10 Feb 2021.  An international expert working group will explore space-related legal innovations and consider potential space-related disputes and the likely outcomes in a Space Dispute Guide.  The foreword to that guide explains that it was prepared to demonstrate the type of disputes that the DIFC Courts expect to decide. They include disputes between states, space agencies, businesses and individuals over the manufacture, launch, navigation, and re-entry of a space object arising out of contract, tort, legislation or treaty.  The guide discusses two possible disputes,  One is between a company and a state over damage to a satellite caused by space debris. The other is about the liability of parties to a launch contract after the insolvency of a bank that agreed to guarantee the transaction.

Anybody wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal UK office hours or message me through my contact page at other times.

DIFC Trade Secrecy Law

Jane Lambert

 

In November 2019 the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)). I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificates, industrial drawings and designs, copyrights and neighbouring rights and trade marks and trade names in subsequent articles. In this article, I discuss the provisions relating to trade secrets (arts 52 to 55). There was already an action for breach of confidence under the Law of Obligations which I discussed in DIFC Law of Confidence on 27 Jan 2011.

According to the table to para 3 of Sched. 1 of the Intellectual Property Law, the term "Trade Secret" includes the following:

"all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, programs, devices, formulas, designs, prototypes, methods, techniques, processes, procedures, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialised physically, electronically, graphically, photographically, or in writing

Art 52 of the Law provides that a Trade Secret can be protected when it meets each of the following criteria:

"(a) the information involved constitutes a Trade Secret, or part thereof; 

(b) the information derives actual or potential economic value from not being generally known to other persons who may obtain economic value from its disclosure or use; and 

(c) the person lawfully in control of the information has taken reasonable measures to keep the information a secret."

 This is not dissimilar to art 2 (1) of  Directive (EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 15.6.2016 L 157/1) ("the Trade Secrets Directive"):

"(1) ‘trade secret’ means information which meets all of the following requirements: 

(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; 

(b) it has commercial value because it is secret; 

(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

As in the Trade Secrets Directive, the owner is deemed to be the person lawfully in control of the Trade Secret and he or she is defined as "a  person lawfully in control of the Trade Secret is every person having the right of its disclosure, use and storage" (see art 53 (1) (a) and art 53 (2)).  Such person has "the right to licence (sic), transfer, s4 hare, or assign lawful control of the Trade Secret to any person in return for a consideration or otherwise" under art 53 (1) (b) and also "to prevent any person from misappropriation of the Trade Secret, and shall have the right to claim compensation for any damage caused due to misappropriation thereof by any person" under art 53 (3).

Art 54 provides that the following acts shall constitute misappropriation of a Trade Secret and prohibited under the Law: 

"(a) the acquisition of a Trade Secret by Improper Means; 

(b) the disclosure or use of a Trade Secret by a person who used Improper Means to acquire knowledge of the Trade Secret; 

(c) the acquisition, disclosure or use of a Trade Secret by a person who at the relevant time knows, or ought to have known, that the knowledge of the Trade Secret was: 

(i) derived from or through a person who had utilised Improper Means to acquire it; 

(ii) acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or 

(iii) derived from or through a person who owed a duty, towards the person lawfully in control of the Trade Secret, to maintain its secrecy or limit its use. 

(d) the disclosure or use of a Trade Secret by a person who knows, or ought to have known, that it was a Trade Secret and that knowledge of it had been acquired by accident or by mistake."

"Improper Means" is defined in the above-mentioned table to include "fraud, forgery, theft, bribery, misrepresentation, breach or inducement of a breach of a legal or contractual duty to maintain secrecy, or espionage through electronic or other means."   

The following acts, however, are permitted by art 55:

"(a) the discovery, acquisition or use of information from public sources, or known and available information; 

(b) the discovery, acquisition or use of information as a result of scientific research, innovation, invention, development, modification and improvement exerted by persons independent of the person lawfully in control of the Trade Secret; 

(c) the discovery of information pursuant to a licence, transfer, sharing, or assignment of the information; or 

(d) the discovery of information through reverse engineering."

This is an important branch of the law because every invention starts life as a trade secret and there are some technologies that can only be protected by trade secrecy law.  In the next few days, I shall write a short article with some practical tips on how inventors, entrepreneurs and others can safeguard secret technical or commercial information.  It will be angled for a British audience but it should apply equally to the DIFC.

In the meantime, anyone who wishes to discuss this article or trade secrecy and confidentiality generally may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my contact form. 

DIFC Space Courts

Author European Space Agency Licence CC BY-SA 3.0 IGO 

Jane Lambert

Just a few days before a probe from the United Arab Emirates was due to enter Mars orbit, the Dubai International Financial Centre Courts and the Dubai Future Foundation announced a Courts of the Future initiative known as Courts of Space (see Courts of Space launches into orbit in support of global space economy press release 1 Feb 2021 04:49 PM).

The initiative has three main objectives:

• An international working group from the public and private sectors  will consider the types of dispute that might arise from space research and travel;
• The working group will compile or procure the compilation of a Space Disputes Guide; and
• Training judges in the resolution of space disputes.

I discussed the Courts of the Future, The Courts of the Future Forum Charter and the draft Part 40,000 of the DIFC Court Rules in Dubai's Courts of the Future Initiative on 18 Nov 2017.

The international space working group will find that the UN General Assembly proposed the Outer Space Treaty (Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies) as long ago as 16 Dec 1966.  There is a UN Office for Outer Space Affairs with responsibility for Space Law.

A number of countries including the United Kingdom have enacted legislation in accordance with the Outer Space Treaty.  The Outer Space Act 1986 provided for the licensing of space activities and the registration of space objects.  More recently, the Space Industry Act 2018 was passed to enable British businesses to increase their share of a global market estimated to be worth between £155 and £190 billion in 2018. I discussed the topic in Commercial Exploitation of Space: Space Industry Act 2018 on 10 April 2018 in NIPC Law.  The House of Commons last discussed the space industry in its debate on the UK Space Industry on 4 Feb 2021 (see Hansard 4 Feb 2021).

Considerable revenues are already generated from such activities as remote sensing, telecommunications, tourism and weather forecasting.  The absence of gravity and an atmosphere is an opportunity for low orbit manufacturing which opens the possibly of new products and processes that will require legal protection.  Confereneces on IP in space have been held in Luxembourg and the USA which I discussed in Forthcoming Conference in Luxembourg on Innovation, Space Technologies, and Patents on 30 July 2018 in NIPC News and The Role of Intellectual Property in Space Commerce on 18 July 2019 in NIPC Cornwall.

I am following the space industry not out of sheer intellectual cutisoity but because there are opportunities for businesses of all sizes throughout the workd including the Gulf and that these businesses will require advice and representation in respect of their research, development and marketing of new products and manufacturing processes.  Anyone wishing to discuss this article or any of the topics mentioned in it should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

The New DIFC Intellectual Property Law - Trade Marks and Trade Names

Author Mostafameraji Licence CC BY-SA 4.0  Source Wikipedia Tourism in Dubai

 

Jane Lambert

Last November the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)).  I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificates, industrial drawings and designs and copyrights and neighbouring rights in subsequent articles.  In this article, I discuss the provisions relating to trade marks (arts 43 to 49) and trade names (arts 50 and 51).   There was already an action for passing off under the Law of Obligations which I discussed in The DIFC Law of Passing Off on 7 April 2011.

What is a Trade Mark?

The table in paragraph 3 of Schedule 1 to the IP Law defines a trade mark as:

"any signs or combination of signs or names, words, signatures, letters, numbers, Drawings, Symbols, addresses, Hallmarks, stamps, pictures, vignettes, notices, packages, colour or combination of colours, or any other mark or combination of marks having a distinctive form and used or intended to be used to distinguish goods, products or services. Sound and smell can be considered as trade marks."

That is broadly consistent with art 2 of Federal Law No. 37 of 1992 on Trademarks (as amended by Law No. 19 of 2000 and Law No. 8 of 2002).

Registration
The DIFC Intellectual Property Law makes no provision for registering trade marks in the DIFC.  Instead, art 43 of the Law provides that a trade mark registered under the Federal trade mark law is recognized for the purposes of the DIFC IP Law and is valid and enforceable in the DIFC.  "Federal trade mark law" is defined in the table in paragraph 3 of Schedule 1 as "UAE Law No. 37 of 1992 as amended by UAE Law No. 8 of 2002 and its implementing regulations, any other future amendment or Federal Law with respect to trade marks."  I have already discussed that statute including registration in UAE Trade Mark Law on 20 May 2013.  According to the WIPO, the UAE is not yet a party to either the Madrid Agreement or Protocol.  It appears from Saba Al Sultani and Rob Deans that trade mark law has been harmonized among the Gulf Cooperation Council states but there is not yet a unitary GCC trade mark on the lines of the GCC patent or EU trade mark (see Al Sutani and Read GCC Trademark Law Coming Soon Sept 2014 WIPO Magazine).

Prohibited Marks
The following marks will not be recognized in the DIFC unless they are registered under Federal trade mark law:

"(a) a mark which is not distinctive; 

(b) a mark consisting of a generic name used in relation to goods, products or services; 

(c) a mark that contains one or more familiar drawings or common pictures of goods; 

(d) a mark that is contrary to the public order or morality of the UAE; 

(e) a mark containing the insignia of the UAE, any governmental body in the UAE, flags and other symbols pertaining to the UAE (or any emirate thereof), Arab or international organisations (or any agencies thereof), or any foreign country except with the authorisation of those parties, as well as any imitation of such insignia, flags or symbols; 

(f) a symbol of the Red Crescent or the Red Cross, or any other similar symbol or mark which is an imitation thereof; 

(g) a mark which is identical or similar to a symbol of a purely religious nature; 

(h) a geographical name, where the use thereof may cause confusion as to the origin or source of the goods or services; 

(i) a name, surname, photograph or emblem of a third party, unless his, or his legal successors’, prior consent has been obtained. 

(j) a mark containing a title of honour, where the person applying for registration cannot prove that he is lawfully entitled to its use; 

(k) a mark which may mislead the public or which is identical or confusingly similar to a mark or marks of another party, even though not registered, or which contains false information as to the origin or the source of products or services, or about their other characteristics, as well as a mark containing an imaginary, imitated or forged trade name; 

(l) a mark owned by a person with whom it is illegal to deal with under Federal Law or Dubai Law. 

(m) a mark which, if used for certain classes of products or services, would diminish the value of other products or services distinguished by such mark; 

(n) a mark containing the word or expression: "Patent", "Patented", "registered", "registered Design", "copyright" or "Imitation is forgery" or similar words and expressions; 

(o) a mark containing national and foreign decorations, coins and paper currency; or 

(p) a mark that constitutes a translation or imitation of a well-known mark or the main part thereof or other previously registered mark, where the registration would confuse consumers as to the identity or origin of the goods or services that are distinguished by the mark or similar goods or services" (art 44).

The Commissioner of Intellectual Property ("the Commissioner") may levy a $5,000 fine upon anyone using a mark that falls within sub-paragraphs (d) to (p) pursuant to art 48 (1) and art 59 (see my Introduction to, and Overview of, the New DIFC Intellectual Property Law of 11 Dec 2019).

Well Known Marks
Art 45 (1) of the DIFC Intellectual Property Law protects well-known trade marks of international reputation ("well-known marks") that surpass their country of its origin and acquires fam in a relevant sector among consumers in the UAE. The decision as to whether a mark is or is not a "well-known mark"appears to be one for the court.   In making that decision, art 45 (2) enables the following factors can be taken into account{

"(a) the degree of public knowledge or recognition in a relevant sector; 

(b) the duration, extent and geographical area of use; 

(c) the duration, extent and geographical area of any promotion of the goods or services to which the trademark applies; 

(d) the duration and geographical area of any registrations, or any applications for registrations, to the extent that they reflect use or recognition of the trademark; 

(e) the record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark was recognised as well known by competent authorities; or 

(f) the commercial value associated with the trademark."

Nobody may use a mark that is identical or confusingly similar to a well-known trade mark in the DIFC (art 45 (3)).  Transgressors of this rule can be fined US$15,000 by the Commissioner.  

Owners of well known marks also have the following rights of action under art 45 (4) and (5):

• the right to prevent any party from using in the DIFC identical or confusingly similar marks, to distinguish goods or services that are not identical to those in respect of which, the well-known trade mark is registered, if: 
• the use of the mark indicates a possible connection between goods or services and the owner of the well-known trademark; and 
• the interests of the owner of the well-known trade mark are likely to be damaged by such use; and
• the right, to prevent another person’s commercial use of a mark or trade name in the DIFC, if such use began after a well-known trade mark has become well-known and the use of the mark or trade name causes dilution of the distinctive quality of the well-known trade mark.

The Commissioner can fine anyone using a trade mark in a way that may cause dilution to a well-known trade mark US$15,000.

Trade Mark Owner's Rights of Action
Art 46 confers upon the proprietor of a trade mark that is registered in the United Arab Emirates the exclusive right to exclude others from the import, export, use, sale, offer for sale, advertising, transit, distribution or use in any manner of goods or services distinguished by an identical or confusingly similar trade mark 

Defences
Art 49 provides that the following acts shall not infringe a trade mark or well-known mark:

"(a) to indicate the intended purpose of the goods or a service related thereto, provided that such use is necessary and in good faith;
(b) in news reporting, news commentary or parody; or
(c) by another person in comparative commercial advertising or promotion to identify competing goods or services, provided that such use is in good faith and in accordance to honest practices in commerce."

Should a defendant allege that the trade mark in suit is invalid or should be cancelled for other reasons, art 48 (2) requires him or hee to must issue proceedings in a court with jurisdiction to cancel the registration and satisfy the DIFC court that there are clear and solid grounds for such proceedings.  If he or she does so, the infringement proceedings in the DIFC will be stayed until the court of competent jurisdiction has ruled on the cancellation claim.  If the defendant does not do so, the infringement proceedings in the DIFC will continue.

Punishable Infringements
The following infringements are punishable with the following fines:

• US$30,000 for "counterfeiting or imitating" a registered trade mark, or a well-known trade mark, with the intent or effect of misleading the public (art 48 (1) (b));
• US$25,000 for unlawfully using a registered trade mark or a well-known trade mark without the proprietor's consent (art 48 (1) (c));
• US25,000 for unlawfully using a trade mark that is confusingly similar to a registered trade mark with the intent to, or effect of, causing confusion and misleading the public (art 45 (1) (d))'
• US$25,000 for knowingly selling, offering for sale or possessing with purpose of selling goods or services bearing a trade mark, or well-known trade mark, that is counterfeited, imitated or unlawfully used (art 48 (1) (e),

Licensing
Art 47 (1) permits the owner of a trade make by a written instrument, grant a licence to any person to use the trade mark for all or part of the goods or services in respect of which the trade mark is registered.   The owner of the trade mark may also use the mark contemporaneously with the licensee unless otherwise agreed in writing (art 47 (2).  Such a licence is known as a sole licence as opposed to exclusive licences which can be used by the licensee to the exclusion of the licensor and all other persons and non-exclusive licences that can be used by the licensor and any number of licensees.   

A licensee may not assign its rights to any other party, or grant a sub-licence in respect thereof, unless expressly allowed by the terms of the licence agreement (art 47 (3)).

Unless the licence agreement provides otherwise, a licensee is entitled to call on the owner of the trade mark to take infringement proceedings in respect of any matter which affects the licensee’s interests by virtue of art 47 (5) If the owner refuses to act in accordance with a request by the licensee, or fails to do so within two (2) months of being called upon to do so, the licensee may bring such proceedings in his or her own name, as if he or she were the registered owner of the trade mark.

Any act of a licensee in contravention of a licence agreement shall constitute trade mark infringement pursuant to art 47 (4) and may be punished by the Commissioner with a US$30,000 finr.

Trade Names
A trade name is defined in the table to paragraph 3 of Schedule 1 "as every name used in trade to designate particular business and registered with the competent authority."  Art 50 requires of persons registered, incorporated, licenced or permitted to operate in the DIFC to comply with the provisions of the Operating Law (DIFC Law No 7 of 2018) in relation to trade names, and to display such names conspicuously displayed on the façade of their business premises in the DIFC. Failure to display the name in accordance with the law attracts a fine of US$5,000.   Art 51 enables the Commissioner to resolve any conflict between a trade name registered in the DIFC and a trade mark, or a well-known Trademark, which is likely to damage the interests of a person, cause confusion or mislead the public.   Failure to comply with an order of the Commissioner to change a trade name in conflict with a trade mark may be punished with a fine of US$10,000.

False Claims
Art 48 (1) (f) prohibits falsely representing that a mark is registered as a trade mark, or as a well-known trade mark, or making any statement with the intent or the effect of leading others to such a conclusion.  The Commissioner can impose a US$5,000 fine for such misconduct.

Comment
Because DIFC law differs from English and EU trade mark law in a number of important respects, particular care should be taken in drafting a trade mark licence or assignment or a franchising, distribution or other agreement to be governed by DIFC law or likely to affect the DIFC.   Should it be necessary to enforce a trade mark or resist enforcement proceedings in the DIFC courts, members of the bar of England and Wales in good standing can obtain quickly and easily the right to appear before those tribunals. Actions to cancel UAE trade marks will have to be undertaken by Emirati lawyers.

Anyone wishing to discuss this artiucle or DIFC law generally should call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my comtact form;  

The New DIFC Intellectual Property Law - Designs

Author Imre Salt Licence CC BY-SA 3.0 Deed Source Wikimedia Commons

Jane Lambert

On 21 Nov 2019, a new intellectual property law known as Intellectual Property Law DIFC Law No 4 of 2019. came into force in the Dubai International Financial Centre.  I wrote an introduction to, and overview of the new law on 11 Dec 2019 and discussed its provisions on patents and utility models (known as "utility certificates" in the DIFC) in The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020. In this article, I discuss Chapter 2 of Part 2 of the Law on General Rules on Industrial Drawings and Industrial Designs.

Design is important to Dubai   A report commissioned by The Dubai Design & Fashion Council and the Dubai Design District expected the design sector, which includes architecture, fashion, graphic, interior and product design, to grow by 6% a year between 2016 and 2021.  The Dubai government supports designers through the Council by providing advice and information on intellectual property and other legal services.  Well before the new Intellectual Property Law came into force, the Council agreed with the DIFC Disputes Resolution Authority to incorporate a DIFC choice of law clause into their contracts and designate the DIFC Dispute Resolution Authority for the resolution of disputes (see Designer Courts  12 March 2018 DIFC Courts press release).

The new DIFC design law is compressed into three short articles:

• Art 14 confirms that the registration of Industrial Drawings and Industrial Designs with the UAE Ministry of Economy is recognized in the DIFC and that the rights conferred by registration will be enforced in the DIFC;
• Art 15 sets out the rights conferred by registration; and
• Art 16 applies the provisions on entitlement and infringement in patent and utility certificates law to Industrial Drawings and Industrial Designs.

The table in para 3 of Sched 1 to the Law defines an Industrial Drawing as:

"Any innovative creation of lines and colors which generate a product that can be used in any industry or craft and in respect of which the Ministry has issued a deed of protection."

The same table defined an Industrial Design as:

"any innovative three-dimensional shape that can be used in industry or craft and in respect of which the Ministry has issued a deed of protection."

Applications to register Industrial Drawings and Industrial Designs are made to the Ministry.  The patent application portal appears to indicate that it is possible to apply for registration through that page but it has not been possible to obtain confirmation through the chat facility.

As art 16 applies the provisions of arts 9 to 13 to Industrial Drawings and Industrial Designs, the rules as to entitlement and employees' compensation are4 the same as for patents. Readers are referred to my article on patents and utility certificates of 9 Jan 2020.

Art 15 (1) of the Law confers on the registered proprietor of an Industrial Drawing or Industrial Design the following exclusive rights:

"(a) using the Industrial Drawing or Industrial Design in manufacturing any product;
(b) using, selling, or offering for sale any product relating to the Industrial Design or Industrial Drawing;
(c) importing any product using an Industrial Drawing or an Industrial Design; or
(d) possessing an Industrial Drawing or an Industrial Design with intention to use, or offer for sale, or sell the same."

Art 15 (2) makes clear that the rights referred to in art15 (1) shall be restricted to acts that are undertaken for industrial or commercial purposes and shall not extend to acts relating to a protected product after its sale.  This is similar to art 8 (2) for patents and utility certificates and seems to indicate the incorporation into DIFC law of something like the US first sale doctrine.

The rules on infringement, defences to patent infringement and reversal of,  the burden of proof that apply to patents and utility certificates under arts 9 to 11 are applied to Industrial Drawings and Industrial Designs by art 16. References in those articles to "patents" or "utility certificates"are deemed to refer to "Industrial Drawings" or "Industrial Designs" as the case may require.  Once again, readers are referred to my article on patents and utility certificates.

Anyone wishing to discuss this article or DIFC design law generally should call my clerk on  +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, VoIP or email,

The New DIFC Intellectual Property Law - Patents and Utility Certificates

Jane Lambert

On 21 Nov 2019, a new Intellectual Property Law came into force in the Dubai International Financial Centre ("DIFC") which I discussed in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019.   The rights protected by the new law include patents and utility certificates.  A "utility certificate" is defined in the table to paragraph 3 of Schedule 1 of the new law as  "a right pursuant to the issuance of the deed of protection granted for an invention by Ministry where such inventions do not involve an inventive step sufficient for the grant of deed of patent."  Art 3 (3) of the DIFC IP law makes clear that it does not establish any registry for IP rights but any IP rights that are registered in the UAE under applicable federal IP Laws shall be recognized as valid and enforceable under this legislation in the DIFC.

Federal IP Laws

The DIFC is established in the Emirate of Dubai. Dubai is part of a federation of emirates known as the United Arab Emirates ("UAE").  The UAE is a member of the Gulf Cooperation Council ("GCC") which has established a GCC Patent Office.   Patents for the UAE may be granted by the Federal Ministry of Economy under Federal Law No. (31) For The Year 2006 pertaining to the Industrial Regulation and Protection of Patents, Industrial Drawings, and Designs ("Law 31 of 2006") or the GCC Patent Office under the Patent Regulation of the Cooperation Council for the Arab States of the Gulf ("GCC Patent Regulation").  As there is as yet no such thing as a GCC utility model, utility certificates for the UAE are available only from the Ministry of Economy under Law 31 of 2006.

Entitlement

Unless the invention is made by an employee, the rights to an invention shall belong to the inventor or his or her successor pursuant to art 13 (1) of the DIFC IP law.

If an invention is made within the scope of employment by an employee pursuant to an employment contract the employer will be the owner of the invention by virtue of s.12 (1) of the law unless agreed otherwise between the employer and employee in writing. An invention is deemed to have been made within the scope of employment if:
(a) the invention was made in the course of the normal duties of the employee, or in the course of duties falling outside the employee’s normal duties, but specifically assigned to the employee, and the circumstances, in either case, were such that an invention might reasonably be expected to result from the carrying out such duties (art 12 (2) (a)); or
(b) the invention was made in the course of the duties of the employee and, at the time of making the Invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had an obligation to further the interests of the employer (ar 12 (2) (b)).

Art 12 (3) further provides that unless otherwise agreed upon between the relevant parties in writing, if an invention falls outside an employee’s scope of employment but relates to an employer’s business or professional domain and has been conceived by the employee using primarily the employer’s resources such as know-how, documents, tools, premises and other facilities of the employer, the invention shall belong to the employer,. 

Employees' Duty to Notify

An employee must notify an employer of an invention as soon as practicable by way of a written report including all the technical details of the invention (art 12 (4)). 

Employees' Compensation

An employee to whom art 12 (3) applies shall be entitled to fair compensation in which his or her remuneration, the economic value of the invention and the benefits that the employer shall gain through the Invention shall be taken into consideration.

If the employer is not interested in using the invention that it is so notified of, it may in its sole discretion, assign all right, title and interest in the invention to the employee instead of paying the employee compensation for the invention if required under art 12 (3),.

 If an employer does not make an election of its interest in an invention that it was notified of pursuant to art 12 (4) through a written notice to the employee before the end of the employee’s employment contract, the employer is deemed to have made an election to keep the invention and either party may apply to the Court to determine the compensation due to the employee for the Invention unless otherwise agreed between the parties.

Monopoly

Art 8 provides that a patent or utility certificate shall confer on its owner the following exclusive right to exclude others from exploiting the Invention in the DIFC. Where the invention is a product, such exploitation shall include using, manufacturing, offering for sale, selling or importing the product.  Where the invention is a process or method, the owner shall enjoy the exclusive right to use the product or method including the exclusive right to market and distribute any product derived directly from such process or method.   Such owners will be assisted by art 11 (1) which provides that where the subject-matter of a patent is a process for manufacturing a product and the owner of the patent can show that a substantial likelihood exists that a product is manufactured by an infringer by such process but is unable through reasonable efforts to determine if such process was actually used in the manufacturing of the product, the burden of proving that the product is not manufactured by the process that is the subject of the patent shall move to the alleged infringer of the patent or utility certificate in any infringement proceedings in the DIFC

Infringement

Art 9 provides that those exclusive rights are infringed by the following acts if done in respect of at least one of the claims of a patent or utility certificate without the authority of the owner:

"(a) exploiting in or from the DIFC, for industrial or commercial purposes, an Invention protected by a patent or utility Certificate;
(b) using, manufacturing, selling, offering for sale in or from the DIFC, or importing into the DIFC, or possessing in the DIFC, with the intention to trade, products or processes protected by a patent or utility certificate, or products obtained using processes protected by a patent or utility certificate;
(c) inducing another person to infringe a patent or utility certificate in or from the DIFC, even if the inducer is located outside the DIFC; or
(d) cooperating with another party to an act of infringement of a patent or utility certificate in or from the DIFC, even if the other party is located outside the DIFC."

Art 9 (3) introduces a doctrine of equivalents into DIFC law:

"A claim granted under a Patent or Utility Certificate is considered to be infringed even though the alleged infringing product, process or method does not fall within the literal scope of the patent claim but nonetheless equivalent to the claimed invention. The construction of the claim is made in light of the entire specifications and drawings of the Patent or Utility Certificate involved."

Defences

Art 8 (2) provides that the rights referred to in art 8 (1) shall be restricted to acts that are undertaken for industrial or commercial purposes.  They shall not include acts relating to a product protected by a patent or utility certificate after its sale.  The last provision seems to introduce something akin to the US first sale doctrine into DIFC patent law.  The precise limit of this exception is likely to be the subject of litigation.

Art 10 (1) provides:

"A person has the right to exploit an Invention, product, process or method, which otherwise would constitute an infringement in the DIFC under Article 9, if in good faith, the person initiated an act of exploitation, or has made effective and serious preparations to initiate an act of exploitation before to the priority date of a Patent or Utility Certificate within the UAE."

However, that defence is limited because art 10 (2) adds:

"A person’s right to continue with an act of exploitation in the DIFC under Article 10(1) shall remain until:

(a) any products produced or acquired by that person inside the UAE prior to the grant of the relevant Patent or Utility Certificate, are sold, or otherwise exhausted; or
(b) until any machine used prior to the grant of the relevant Patent or Utility Certificate to execute any such patented process is expired,

provided that such right is a personal right and cannot be assigned or transferred to another person."

Anyone accused of infringing a patent or utility certificate can contend that the instrument is invalid but the person alleging invalidity is required by art 10 (4) to bear the burden of proof in respect of such invalidity. The court shall have the discretion to suspend the infringement proceedings until an order in respect of the validity of the patent or utility model is pronounced by the competent court.

Further Information

Anyone wishing to discuss this article or the DIFC intellectual property law generally may call me during normal British office hours on +44 (0)20 7404 5252 or send me a message through my contact page.