IPO Guidance on the Gulf Cooperation Council

 

Jane Lambert

On 6 April 2023 the UK Intellectual Property Office ("the IPO") circulated an email headed "Are you a UK business trading in the Gulf Cooperation Council (GCC)? Or thinking of doing so?" to its mailing list, The email announced that the IPO had published guidance to help businesses navigate the IP regimes in each of the six GCC member states providing information on the main IP rights and where to go for further guidance,  It added that the GCC was the UK's 7th largest export market worth £33.1 billion in 2021, that the UK has a longstanding relationship with the GCC, particularly in areas like technology, life sciences, creative industries, financial services and education, and that intellectual property will play a vital role in securing British ambitions in the region.

International IP Service

A button on the email connects to a web page on the British government's website headed Collection International IP Service with the strapline "Protecting your trade marks, patents, designs and copyright abroad" which was first published on 20 Aug 2021 and last updated on 10 March 2023.  It begins with a general observation:

"Intellectual property rights are territorial. You should consider getting IP protection if you want to trade overseas or sell to overseas customers via the internet. Start by developing an international strategy, identifying your markets, business goals and resources."

 I would endorse that advice adding only that an international strategy is an aspect of an IP strategy which is something that every business should develop whether an individual on his or her first day in business or a mighty multinational  (see What is an Intellectual Property Strategy? 19 May 2017 last updated 8 April 2023).  I could help with that as I have many years experience of advising on IP strategy and have written many articles on the topic.

Top Tip

I would also endorse the IPO's "Top Tip":

"Know before you go. Wherever you want to do business, it is important that you understand the steps you should take to protect your IP before entering the market. It is a lot easier to jump over any hurdles before realising it might be too late to act. You will also need to do some research to make sure you’re not infringing someone else’s IP."

Meet the Experts: Yamesh Yaqoob

The next link introduces our IP attachés which are listed on a separate Attaché contact details page.  Our main in the GCC countries is Mr Yamish Yaqoob whose appointment I reported in UK's New Intellectual Property Attache to the GCC on 27 Oct 2021.  The section on Mr Yaqoob states:

"Focus on the GCC: Yamish provides guidance to UK stakeholders in the GCC region on how to effectively protect and manage their IP assets. He also works closely with regional IPOs and official authorities on outreach and awareness raising of the value of IP. Yamish will input on IP in a Free Trade Agreement with the GCC, to further build bilateral cooperation within the GCC on IP practice and policy. Currently, he is also working in close collaboration with the Saudi IP authority on delivering a joint work plan aimed at improving the local IP ecosystem."

IP Country Guides

The International IP Service page links to a list of IP Country Guides.  These include guides on:

• Bahrain 
• Kuwait 
• Oman 
• Qatar
• Saudi Arabia and 
• the United Arab Emirates ("UAE"). 

Each of those guides was published on 2 March 2023 and follows a similar format.  There are passages on trade marks, patents, designs, copyright, enforcement and sources of further information.

The guidance on the UAE fails to mention the English speaking common law jurisdictions in the Abu Dhabi Global Market and the Dubai International Financial Centre free zones.  I have discussed the DIFC courts extensively in this publication and I introduced the Abu Dhabi Global Market legal system in Abu Dhabi Global Market - Yet Another Common Law Enclave in the Gulf on 22 Feb 2016.  It is worth remembering that the DIFC has its own intellectual property legislation which I mentioned in Introduction to, and Overview of, the New DIFC Intellectual Property Law on 13 Dec 2019.  The DIFC courts have always had jurisdiction to hear and determine breach of confidence and passing off and there seems to be no reason in principle why they should not grant injunctions, delivery up of infringing matter and pecuniary relief for infringements of the DIFC Intellectual Property Law.  Having said that, the Law establishes an Intellectual Property Commissioner with extensive powers to resolve IP disputes.

There is a similar English speaking common law jurisdiction at the Qatar Financial Centre known as the  Qatar International Court and Dispute Resolution Centre which I discussed in Qatar Financial Centre: Civil and Commercial Court Regulations on 28 June 2011 and subsequent articles.  The IPO guidance on Qatar does not mention that court or legal system.

Any member of the Bar of England and Wales in good standing can quickly be granted rights of audience in any of those courts.  The procedural law and practice of all three courts are modelled on the English Civil Procedure Rules.  Much of the substantive law is also modelled on British statutes or codifications of English case law. Some of the litigation is conducted online which means that members of the English bar can represent parties from their chambers in London or even their homes elsewhere in the UK. 

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

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. 

Patent Law in Oman

I have already mentioned the intellectual property law of Oman ("Intellectual Property Law in Oman" 31 Aug 2011), the Intellectual property treaties and conventions to which Oman is party and its intellectual property office ("Gulf Co-operation Council Member States - Treaties and Intellectual Property Authorities" 10 May 2012). As Oman is party to the Gulf Co-operation Council Charter, those seeking patent protection in Oman can apply to the GCC Patent Office for a GCC patent or to the Ministry of Commerce and Industry of Oman for an Oman patent.  I discussed GCC patents in my article "Patents: Gulf Co-operation Council" on 21 Jan 2011.  In this article I shall consider the domestic patent law of Oman.

Legislation
The sources of this law are the Royal Decree No. 67/2008 relating to Industrial Property Rights and their Enforcement for the Sultanate of Oman ("the Decree") and Regulations No. 105/2008 under the Law on Industrial Property Rights & Their Enforcement for the Sultanate of Oman ("the Regulations"). The Decree came into force on the 17 May 2008 and the Regulations on the 2 Dec 2008. Both the Decree and Regulations provide for utility models, industrial designs, semiconductor topographies, trade marks, geographical indications and unfair competition as well as patents for inventions.

Registers
S.96 (1) of the Decree requires the Director of Intellectual Property (referred to as "the Registrar") to keep separate registers for patents, utility models, industrial designs, layout designs, marks, collective marks, certification marks and geographical indications.   Those registers are open to public inspection and  are maintained by the Oman Ministry of Commerce and Industry.

Patentability
A patent may be granted if the invention is "new, involves an inventive step and is industrially applicable" pursuant to s.3 (1) of the Decree,  S,2 (1) excludes the following from patent protection:

"(a) Discoveries, scientific theories and mathematical methods;
(b) Schemes, rules or methods for doing business, performing purely mental acts or playing games;
(c) Natural substances; this provision shall not apply to the processes of isolating those natural substances from their original environment;
(d) Known substances for which a new use has been discovered; this provision shall not apply to the use itself, where it constitutes an invention under Section 1;
(e) Animals other than micro-organisms, and essentially biological processes for the production of animals and their parts, other than non-biological and microbiological processes;
(f) Inventions, the prevention within the territory of Oman of the commercial exploitation of which is necessary to protect ordre public and morality; such exclusion shall not be made merely because the exploitation of those inventions is prohibited by law."

As for computer programs, s.2 (2) provides that s.3 (1) shall not apply to the following inventions:

"(a) Process inventions which, in whole or in part, consist of steps that are performed by a computer and are directed by a computer program; and
(b) Product inventions consisting of elements of a computer-implemented invention, including in particular:
(i) Machine-readable computer program code stored on a tangible medium such as a floppy disk, computer hard drive or computer memory; and
(ii) a general purpose computer whose novelty over the prior art arises primarily due to its combination with a specific computer program "

Applications
S.5 (1) provides:

"The application for a patent shall be filed with the Registrar and shall contain a request, a description, one or more claims, one or more drawings (where required), and an abstract. It shall be subject to the payment of the prescribed application fee."

Art 3 (1) of the Regulations requires applications for a patent to be made on a prescribed form which can be downloaded from the Ministry website together with the tariff of the applicable fees.  If the Registrar is of opinion that the Decree has been complied with he must grant a patent pursuant to s.10 (1).   Otherwise the application must be refused.

Scope of Monopoly
 S.11 (1) of the Decree provides that:

• a patent shall confer on its owner the right to prevent third parties from exploiting the patented invention in Oman; and
• the right of the patent owner is defined by the claims.

Patents are granted for 20 years (s.12 (1)) but are subject to compulsory licensing under s.13 and revocation under s.14.   Infringements of those rights are actionable in the courts of Oman under s.66 of the Decree.  Remedies include injunctions (interim as well as perpetual) and compensatory damages.

Further Information
Should anyone wish to discuss this article or any aspect of intellectual property law in Oman, he or she can call me on +44 (0)20 7404 5252 or send a message through my contact form.   I am now practising from 4-5 Gray's Inn Square in London which has considerable expertise in international and intellectual property law. You can also follow me on Facebook, Linkedin, twitter and Xing.

Gulf Co-operation Council Member States - Treaties and Intellectual Property Authorities

Country	Treaties and Conventions	Intellectual Property Office
Bahrain	Berne, Brussels, Madrid Protocol, Paris, Patent Co-operation, Patent Law, Rome, Trademark Law, TRIPS, WIPO Copyright, WIPO Performances and Phonograms	Ministry of Industry and Commerce P.O. Box 5479 Manama Bahrain +973 17530335
Kuwait	TRIPS	Ministry of Trade and Industry Trademarks and Patents Department P.O. Box 2944 Safat 13030 Kuwait +965 22 42 4426
Oman	Berne, Brussels, Budapest, Hague, Madrid Protocol, Nairobi, Paris, Patent Co-operation, Patent Law, Trademark Law, TRIPS, UPOV, WIPO Copyright, WIPO Performances and Phonograms	Ministry of Commerce and Industry P.O. Box 550 Code No. 113 Muscat Oman+968 247 741 26 / 992 226 22
Qatar	Berne, Nairobi, Paris, Patent Co-operation, TRIPS, WIPO Copyright, WIPO Performances and Phonograms	Intellectual Property Center Ministry of Justice P.O. Box 917 Doha Qata +974 448 42 292
Saudi Arabia	Berne, Paris, TRIPS	General Directorate of Industrial Property, King Abdul-Aziz City for Science and Technology (KACST) P.O. Box 6086 Riyadh 11442 +9661 481 4342
United Arab Emirates	Berne, Paris, Patent Co-operation, Rome, TRIPS, WIPO Copyright, WIPO Performances and Phonograms	Directorate of Industrial Property, Ministry of Economy and Commerce P.O. Box 901 Abu Dhabi +971 2 613 1336

Intellectual Property Law in Oman

Oman has an estimated population of 3.6 million in a land area of 309,501 square kilometres. It is a member of the Gulf Co-operation Council ("GCC") and the World Trade Organization ("WTO"). Formerly one of the least developed states in the Gulf, the Sultanate has made such rapid progress since 1970 in economic, political and social development that the United Nations Development Programme acclaimed Oman as the most improved country in the world (see the UNDP Human Development Report for 4 Nov 2010).

Treaties

As a member of the WTO Oman is party to TRIPS (the Agreement on Trade Related Aspects of Intellectual Property Rights) and is thereby bound by the obligations discussed in my article on "Intellectual Property Law in Kuwait". As a member of the GCC, the GCC Patent Regulation and Implementing Bylaws apply in Oman. Oman is also party to the Paris and Berne Conventions, the WIPO Copyright and Performances and Phonograms Treaties, the Patent and Trademark Law Treaties, the UPOV Convention and the Patent Co-operation Treaty, Madrid Protocol and Hague Agreement (see the WIPO Treaties Contracting Parties page for Oman).

Legislation

Oman implements its obligations under those treaties through a number of Royal Decrees made in 2000 on patents, copyrights and neighbouring rights, trade marks and unfair competition, industrial designs, geographical indications and semiconductor topographies. The Sultanate's copyright law has been supplemented by Royal Decree No. 65/2008 Promulgating the Law on Copyright and Related Rights and its law on industrial property rights by Royal Decree No 67/2008. Royal Decree No 49/2009 on the protection of plant breeders' rights has come into effect this year the text of which is available in Arabic.

Intellectual Property Office

The Ministry of Commerce and Industry is the intellectual property office for the Sultanate. The English language page of the Ministry's website suggests that it will soon be possible to file patent, utility model and trade mark applications on-line.

Dispute Resolution

Oman has enacted robust arbitration legislation which would resolve licensing, joint venture and other disputes relating to intellectual property. A press release on 16 March 2010 indicated that the Oman Chamber of Commerce and Industry planned to establish an international arbitration centre in the country. A delegation from the Bar of England and Wales visited Oman in December 2010 (see the Bar Council's press release of 3 Dec 2010).

Further Information

Oman is a country of considerable potential and one that I follow particularly closely. Anyone who wishes to discuss this article or any other issue concerning intellectual property law in the Gulf should call me on 0800 862 0055 or complete my contact form.