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.

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.

Expo 2020 Dubai Association Rights

Author SumikashaC Licence CC BY-SA 4.0 Source Wikimedia 

Jane Lambert

Expo 2020 Dubai opened on 1 Oct 2021. It should have taken place between 20 Oct 2020 and 10 April 2021 but, like the Tokyo Olympics, it was postponed for a year because of the pandemic.  As it happens, International Expos have a lot in common with the Olympic Games. They attract visitors from all parts of the world. They require lavish sponsorship.  They are regulated by ithe Bureau International des Expositions much in the way that the Games are regulated by the International Olympic Committee.

Like the Olympics and other major sporting events, their funding is vulnerable to ambush marketing.  The booklet, Expo 2020 Dubai Brand Protection Guidelines, describes ambush marketing as "the act of creating a false or unauthorized association with an event, whether intentional or not." It effectively gives worldwide publicity to the ambushers for nothing.

The right to associate with a major sporting event or Expo is called an "association right" and it is regarded as an intellectual property right (see para 16.1 (6) of the Part 63 Practice Direction).  I discussed the legislation that protected the rights of the International Olympic Committee and the London Organizing Committee in Olympics Association Right and London Olympics Association Right on 31 July 2012 in NIPC Law.  Similar legislation has been enacted for the Commonwealth Games in Birmingham in 2022 which I mentioned in Guidance on Birmingham Commonwealth Games Association Right on 10 Aug 2021 in NIPC West Midlands.

The marks that are protected in the United Arab Emirates include the composite word and device marls of the Bureau International des Expositions and Expo 2020 Dubai. Images of those marks appear on pages 11 to 13 and 16 of the booklet. The booklet suggests that neither the Emirati nor the Dubai government has enacted special legislation to protect those marks or association rights. The intellectual property rights that are mentioned on page 19 are trade marks and copyright. I discussed the relevant legislation in UAE Trade Mark Law on 30 May 2013 and copyright and related rights on 4 Jan 2012 and 11 Feb 2012.

The booklet does not mention the courts in which infringement proceedings would be brought. It is assumed that these will be the civil courts in Dubai. As an intellectual property law has been enacted for the Dubai International Financial Centre. it may also be possible for sponsors to seek relief in the Centre's English speaking common law courts (see  Introduction to, and Overview of, the New DIFC Intellectual Property Law 11 Dec 2019).  An advantage of that jurisdiction is that the DIFC provides a remedy for passiong off (see The DIFC Law of Passing-Off  7 April 2012).

Changing the subject, almost every country in the world seems to be represented with its own pavilion in Dubai including very small states such as Monaco and the Holy See.  The British pavilion seems particularly lavish.   A day ticket to the Expo costs 95 UAE dirhams which is just under £20 and children, students, seniors and "people of determination" get in for free.  That compares very favourably to the Roman remains in Bath, an important tourist attraction in this country. 

Anyone wishing to discuss this article can call me on  +44 (0)20 7504 5252 during office hours or send me a message through my contact 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.

Dubai Smart City Accelerator

Dubai Fort

Author Kimon Berlin
Licence Creative Commons Share-Alike 2.0 Generic

Source Wikipedia Dubai

Jane Lambert

The Dubai Silicon Oasis Authority, which manages a free trade zone for information and communications technology businesses in the emirate, has invited applications for its Smart City Accelerator which will run from September 2019 to January 2020. This is not the first accelerator programme to take place in Dubai.  I reported on the DIFC's financial technology programme in FinTech in Dubai on 3 Aug 2017.

According to the Authority's press release:

"This year, scouts are particularly on the lookout for startups that specialize in 5G applications, connected stadiums, smart retail, smart airports, and smart payments. However, the program is open to applicants from across the spectrum of smart city solutions, including internet of things and connectivity, urban automation and mobility, artificial intelligence, blockchain, open city data, sustainable cities and living, and smart government."

The Accelerator will be run by Startupbootcamp which operates a number of accelerators around the world.

The Startupbootcamp web page offers 10 selected companies hands-on mentorship from over 100 industry experts, office space in Dubai, seed funding, and access to a global network of investors and corporate partners from across the Smart City industries.  The successful candidates will need to know about registering trade marks in the United Arab Emirates and their leading markets around the world as well as the various ways of protecting their investment in technology. It is not clear from the announcements by the Authority or operator who will supply that guidance or whether it will be supplied as part of the programme but I shall be glad to advise them individually or collectively by phone, Skype or otherwise if necessary.

The closing date for applications is 30 June 2019.  This post links to the application page,

Anyone wishing to discuss any of these issues should call me on +44 (0)20 7404 5252 during London office hours or they can contact me through my message form.

Dubai's Courts of the Future Initiative

Author A Vahanvaty
Licence Creative Commons Attribution-Share Alike 2.0 Generic
Source Wikipedia

Jane Lambert

The Dubai Future Foundation is an initiative of the Dubai government to chart the economic, social and cultural future of Dubai. Its initiatives include artificial intelligence and robotics, autonomous transportation, blockchain technology, three-dimensional printing and pilotless aircraft. Each of those technologies is likely to lead to legal issues which are mentioned briefly in the topics section of the Courts of the Future website.

Those issues will have to be resolved in Dubai as they will in the rest of the world and the body that seeks to address those issues in Dubai is the Courts of the Future Forum. This is a panel of 13 lawyers and other experts from around the world including two members of the English bar and partners of Bird & Bird. The acting chief executive and chief operating officer of the Dubai Future Foundation also sit on that panel as does the co-chief executive and registrar-general of the Dubai International Financial Centre Courts (an English speaking common law jurisdiction in the Dubai International Financial Centre which I first discussed in DIFC Courts 7 Jan 2011 J D Supra).

The terms of reference of the Courts of the Future Forum are set out in its charter. Art 1.2 of that charter provides that the purpose of the forum is to advise the courts about:

"(a) the current performance and reputation of the Courts as perceived by the Forum members in relation to handling of the disputes of the future;
(b) the strategic direction required for the Courts to maintain and improve their knowledge, performance and reputation regarding future IP, construction, technology and other related disputes;
(c) developments and trends in the arena of international dispute resolution which may have an impact on the DIFC Courts and its operation and which, if adopted, might benefit the DIFC Courts and its users in resolving disputes of the future."

While its recommendations will be addressed to the DIFC courts, they are likely to be relevant to court services everywhere including, in particular, the Business and Property Courts of England and Wales which were the model for the DIFC courts (see Jane Lambert Launch of a Judicial Super Highway?  12 July 2017 IP Northwest).

The forum has drafted a model Part 40,000 for the DIFC Court Rules which are based on our Civil Procedure Rules.  A footnote explains that the number 40,000 was chosen for the Part because:

"40,000 km/h is the speed at which an object must travel in order to break free of a planet’s gravitational pull."

An introductory paragraph states:

"The founding principles for the Courts of the Future are explained here through an imagined set of rules for processing claims in a new specialist division of a court. This division would be designed to support companies developing new technologies, sectors and applications – from blockchain to 3d printing. The rules include details of how the court itself could use these technologies, for example there is an artificial intelligence for adjudicating small claims. It is the kind of division that this Forum aims to create."

Rule 1 of that Part declares that it applies to Court of the Future claims ("COF claims").  Rule 3 provides:

"A claim may be issued as a COF Claim if it:

(a) involves issues or questions of technical complexity, or 

(b) has no or no single physical geographical nexus, or

(c) the proceedings are likely to involve multiple parties from different jurisdictions.

 The following are examples of the types of claim which may be appropriate to bring as COF Claims, but are not exhaustive and other types of claim may be appropriate to this specialist division:

(1) claims involving international commercial chain transactions;

(2) claims relating to liability for the acts or omissions of artificial intelligence, software or any devices or components of devices whether integrated or not that are dependent on or controlled by such software including, but not limited to autonomous or semi-autonomous vehicles;, medical devices and types of industrial and domestic equipment;

(3) claims involving issues of cyber security in respect of data and/or assets stored online;

(4) claims relating to competition and/or anti-trust issues in respect of online assets or currency;

(5) claims involving online intermediaries and/or online platforms or marketplaces;

(6) claims relating to online peer to peer transactions;

(7) claims relating to online blockchain transactions;

(8) claims relating to 3D printing;

(9) claims relating to or arising out of extraterrestrial activity or territories;

(10) intellectual property claims arising out of or in relation to any of the above claims;

(11) any combination of the above claims;

(12) insurance claims in relation to any of the above claims; and

(13) challenges to decisions of arbitrators in COF disputes."

 The Part has 12 rules as follows:

1 General
2 Specialist division
3 Definitions
4 Rules
5 Joinder
6 Interim Payment
7 Enforcement
8 Record Keeping
9 Processing of personal data
10 Data confidentiality and security
11 COF Practice Direction
12 Micro Disputes Practice Direction

The rules on enforcement and micro disputes are particularly interesting.  Litigants will be required to give details of their blockchain accounts and judgments will be enforced instantaneously via smart contracts.  Micro disputes (that is to say those under US$50,000 where there is no dispute of fact and neither party is a corporation will be determined by computer.

All thought-provoking stuff which will interest judges. lawyers. court administrators and business people everywhere. Should anyone want to discuss this article, he or she should call me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form.

British Participation in Dubai FinTech Accelerator Programme

Jane Lambert

The first 12-week accelerator programme of the Dubai FinTech Hive which I mentioned in FinTech in Dubai on 3 Aug started on 21 Aug 2017 with its first cohort. One of the members of that cohort is the Cardiff wealth management solutions provider, Delio Ltd ("Delio").

Delio was founded by Gareth Lewis and David Newman with the mission of building "!a connected, multi-asset class private market that enhances liquidity and access for today's high net worth investor" (see the About page on the Delio website). Its first product is "a complete white label platform solution for private assets, that helps organisations and their advisors enhance their offering through connecting private deal flow with high net worth capital."

The other members of the first cohort are Bridg and Sarwa from the United Arab Emirates, Labiba of Jordan, Maliyya of Azerbaijan, Middleware, Semantify and Starling Trust of the USA, Norbloc of Sweden, Theme Chain of India and Weinvest of Singapore (see FinTech Hive at DIFC commences Inaugural Accelerator Programme 21 Aug 2017). I wish Delio and all those companies every success in the programme and, in particular, on the Investor Day in November.

A British contribution will also come from Clyde & Co and Simmons & Simmons "who will offer advice on how to navigate the region’s legal landscape."

Delio and the other companies will find more legal resources on fintech on my FinTech page. They will also see that I cover IP and related matters in the GCC countries in NIPC Gulf. I have also started to blog about IP in the Severn estuary conurbation where Delio is based in NIPC Severn-Hafren (see Why NIPC Severn-Hafren 6 Aug 2017).

Anyone wishing to discuss this article or the legal issues of fintech generally should call me on +44 (0)20 7404 5252 during UK business hours or send me a message through my contact form.

See also 
Jane Lambert  FinTech in Dubai 3 Aug 2917

FinTech in Dubai

Standard YouTube Licence


Jane Lambert

On 10 Jan 2017, the Dubai International Financial Centre ("DIFC") launched the FinTech Hive which claims to be the first fintech accelerator in the Middle East, Africa, and South Asia ("MEASA") region (see the DIFC press release "Dubai International Financial Centre Launches ‘FinTech Hive at DIFC’, the Region’s First FinTech Accelerator, Supported by Accenture" 10 Jan 2017). An "accelerator" is a development space for innovative young companies. According to the UK's National Endowment for Science, Technology and the Arts" an accelerator has the following characteristics:

• "Fixed duration programme (usually between three and twelve months) 
• Typically growth-based (payment via equity rather than fees) 
• Often provide seed funding 
• Focus on services over physical space
• Admission in cohorts 
• Provision of startup services (e.g. mentorship, entrepreneurial training) 
• Highly selective"

(see Business Incubators and Accelerators: The National Picture BEIS research paper No 7 by Jonathan Bone and others at page 13).

According to the Hive's website, it offers a 12-week accelerator programme where entrepreneurs have an opportunity to test and develop their innovation in collaboration with senior executives from financial institutions. On that programme they are promised:

• "Mentoring from the industry’s leading firms and senior financial services executives
• Insider knowledge and direct feedback from their target user groups
• Workshops and panel discussions on topics such as procurement, regulation and industry trends,
• Opportunities to raise their profile amongst potential partners and investors, and
• A workspace in DIFC for two employees throughout the programme."

In its press release of 30 May 2017, the DIFC reported that the Hive had received over 100 applications from more than 32 countries including the UAE, UK, US, India, Nigeria and Singapore covering big data and analytics, the blockchain, payments, peer to peer and crowdfunding, roboadvisors, and mobility. You can view one of the applications here.

As I said in my introduction to FinTech, it gives rise to at least three sets of legal issues:

• Privacy and data protecton;
• Intellectual property; and
• Regulation.

The DIFC has its own local laws based on the English common law which includes a data protection law which I discussed in DIFC Data Protection Law 1 Aug 2011. As for regulation, Neil Ainger, fintech correspondent at CNBC.com, has reported that the Dubai Financial Services Authority has created a regulatory sandbox ratjer like the Financial Conduct's Authority's in London (see Dubai fintechs invited to play in regulated innovation sandbox 25 May 2017 CNBC) and it has just announced a new regulaory framework for crowdfunding (see Dubai's DFSA launches crowdfunding framework 1 Aug 2017 Finextra).

You can follow the DIFC FinTech Hive on twitter, Facebook and Linkedin. Should you require more information about the FinTechn hive or fintech in general feel free to call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Further Reading

Date	Author	Title	Publication
03 Aug 2017	Jane Lambert	FinTech	NIPC Law
03 Aug 2017	Jane Lambert	FinTech Glossary	NIPC Law

Dubai Dispute Resolution Authority

By art 3 (3) (c) of a decree dated 21 May 2014 (Law No. (7) of 2014 Amending Law No. (9) of 2004 Concerning the Dubai International Financial Centre) the Ruler of Dubai established the Dubai Dispute Resolution Authority, Art 8 (1) of the Law provides that the Authority shall be comprised of the DIFC Courts, the DIFC-LCIA Arbitration Centre and any other tribunals or ancillary bodies established in accordance with Article 8(5)(b) of that Law. At present, those ancillary bodies include the Academy of Law 
which regulates as well as educates DIFC Court practitioners and the Wills and Probate Registry for non-Muslims with assets in Dubai.

The Authority's mission is to be "a platform for delivering legal excellence in the Middle East and the gateway to a suite of services available to businesses operating in Dubai and beyond."  In a white paper distributed by The Lawyer on the 18 July 2016, James Foster and Robyn Waller of Gowling WLG list 15 facts about the Authority to consider when drafting an international contract. These include:

• the freedom for parties to choose the governing law of the contract;
• the absence of a requirement that any of the parties has a connection with Dubai;
• the prestige and experience of its judges; and
• the DIFC Courts' propensity for innovation.

On the last two points, a press release from the Courts dated 18 May 2016 announced that Sir David Steel had succeeded Sir John Chadwick as Deputy Chief Justice of the DIFC Courts and that Sir Jeremy Cooke had joined the bench and an article in the Emirates Insider announced that the DIFC Courts will open a virtual court in September (see DIFC Courts to launch GCC's first 'virtual court' 23 July 2016 Emirates Insider). The court, which will hear claims of up to AED 1 million (£207,289) using VoIP technology which will enable small and medium enterprises to recover debts and employees compensation for wrongful dismissal without returning to Dubai.  

It should be remembered that the DIFC has its own law of confidence (see DIFC Law of Confidence 27 Jan 2011) and action for passing off (see The DIFC Law of Passing off 7 April 2011). There does not seem to be any reason why this new online court should not entertain trade secrets, franchising and licensing disputes. Practitioners from all jurisdictions can qualify to practise in Dubai but as the rules and practice are modelled on the Civil Procedure Rules and so many of the judges are from London members of the English bar are particularly well placed to do so.

Anyone wish to discuss this article or this topic generally should call +44 (0)20 7404 5252 during office hours or use my contact form.

Pursuing Expatriates in England and Wales

Oxford Combined Court Centre

Author Kaishu Tai

Source Wikipedia

Creative Commons Licence

According to such web forums as the Consumer Action Group, Getoutofdebtfree, LegalBeagles and World Law Direct, banks and other financial institutions in Dubai have been chasing returning expatriates in this country for unpaid bank loans, credit card balances and other debts that they are alleged to have incurred in the Emirates. Much of the advice that is posted to those forums is helpful but some of it is not. One or two posts are downright dangerous. Here are some tips for handling such claims.

1.  Foreign debts can be pursued here

As a general rule the courts in England and Wales will enforce foreign debts and other causes of action. Those courts will apply the law of the place where the debt or other cause of action occurred.  Thus, if you have borrowed money from a Dubai bank or credit card company the court will construe and enforce the loan or credit card agreement in accordance with UAE and Dubai law rather than that of England and Wales. There are a number of exceptions. For example, the English courts will rarely entertain a claim where the parties have agreed to resolve their dispute in the courts of some other country or by arbitration. However, that would not prevent the English courts from enforcing a foreign judgment or arbitration award.

2.  Foreign Limitations Periods 

Every legal system sets a time limit for bringing a claim. That is known as "the limitation period." In England and Wales the limitation period for most other claims is 6 years.  In the United Arab Emirates it is much longer.  Art 473 of the Civil Code provides:

"A right shall not expire by the passage of time but no claim shall be heard if denied after the lapse of fifteen years without lawful excuse, but having regard to any special provisions relating thereto."

For many years the English courts applied the English limitation period even if the law of the place where the contract was made provided a different limitation period but our law was changed by the  Foreign Limitation Periods Act 1984. S.1 (1) of that Act provides:

"Subject to the following provisions of this Act, where in any action or proceedings in a court in England and Wales the law of any other country falls (in accordance with rules of private international law applicable by any such court) to be taken into account in the determination of any matter—

(a)  the law of that other country relating to limitation shall apply in respect of that matter for the purposes of the action or proceedings subject to section 1A; and
(b) except where that matter falls within subsection (2) below, the law of England and Wales relating to limitation shall not so apply."

However, that section is subject to s.2 (1) and (2)  of the Act:

"(1)   In any case in which the application of section 1 above would to any extent conflict (whether under subsection (2) below or otherwise) with public policy, that section shall not apply to the extent that its application would so conflict.
(2)   the application of section 1 above in relation to any action or proceedings shall conflict with public policy to the extent that its application would cause undue hardship to a person who is, or might be made, a party to the action or proceedings."

There have been cases where very short foreign limitation periods have been overridden on the ground that they are contrary to public policy in that they cause undue hardship to the claimant but I have found no case where an exceedingly long limitation period has been overridden by an English court. However, it is at least arguable that s.2 (1) and (2) were inserted to enable the English courts to consider lengthy limitation periods like that of the UAE and to override them if need be. I am aware of at least one recent case where an application for summary judgment by a foreign creditor was dismissed on that ground.

Try to settle quickly

Because costs can mount up quickly for all parties the sooner you settle your dispute the better.  The longer you leave it the more expensive settlement will become because you will have to take account of your own and probably the other side's costs.

Practice Direction - Pre-Action Conduct and Protocols

Paragraph 3 of the Practice Direction - Pre-Action Conduct and Protocols provides:

"Before commencing proceedings, the court will expect the parties to have exchanged sufficient information to—
(a)  understand each other’s position;
(b)  make decisions about how to proceed;
(c)  try to settle the issues without proceedings;
(d)  consider a form of Alternative Dispute Resolution (ADR) to assist with settlement;
(e) support the efficient management of those proceedings; and
(f) reduce the costs of resolving the dispute."

The first step is for the creditor's solicitors to write a letter before claim. It is imperative to acknowledge that letter at once. It is unlikely to be a try on even if it is the first communication you have received from the other side in many years. You then have a very short time in which to seek legal advice in order to answer the letter before claim in full.

Getting the Right Legal Advice

Claims by foreign creditors to enforce foreign contracts involve difficult points of foreign as well as English law and not every law firm or barrister has experience of this kind of litigation. Consumer advice services and websites are even less likely to have all the answers. Ask your legal advisor whether he or she has experience of the sort of claim that you are facing and how such previous claims were resolved. Specialist legal advice does not come cheap but it is a lot less expensive than litigation which is likely to result from bad advice or no advice at all. Remember that there are lots of deals that can be done to reduce or spread the cost of legal advice.

Be prepared for Hard Bargaining

The other side are likely to be represented by law firms with years of experience of this kind of litigation and they can be expected to drive a very hard bargain. There is nothing personal in this. They are just doing their job. The best way to deal with them is to follow the Practice Direction and seek and follow the best advice that is available to you.

Further Information

If you want to discuss this article or any related matter, call me on 020 7404 5252 during office hours or use my contact form.