Law No. 71 of 2013 Promulgating the Patent Law (Regulation) of the GCC States

Law No. 71 of 2013
Promulgating the Patent Law (Regulation) of the GCC States

Articles of Promulgation

Article One

The Patent Law (Regulation) of the States of the Cooperation Council for the Arab States of the Gulf, the texts of which are attached to this Law, is hereby approved.

Article Two

Part One, and the provisions relating to patents in Part Three, of Law No. (4) of 1962 referred to above are hereby repealed; the provisions of Part Two, and the provisions relating to industrial drawings and designs and integrated circuits in Part Three, of that Law shall remain in force. Any provision contrary to this Law (Regulation) is hereby repealed.

Article Three

Any person who commits any of the following shall be punished by imprisonment for a term not exceeding one year and a fine not exceeding five thousand Kuwaiti dinars, or by either of these two penalties:
1- Imitates an invention for which a patent has been granted in accordance with the provisions of the attached Law (Regulation).
2- Unlawfully places on products, advertisements, trademarks, packaging materials or otherwise, particulars leading to the belief that he has obtained a patent.
3- Violates any other provision of the attached (Regulation).

Article Four

The Ministers, each within his competence, shall implement this Law, and it shall be published in the Official Gazette.

Patent Regulation of the States of the Cooperation Council for the Arab States of the Gulf

Article 1

In applying the provisions of this Regulation, the following expressions shall have the meanings assigned to each of them, unless the context requires otherwise:
1/1- Cooperation Council: the Cooperation Council for the Arab States of the Gulf, composed of (the United Arab Emirates, the Kingdom of Bahrain, the Kingdom of Saudi Arabia, the Sultanate of Oman, the State of Qatar and the State of Kuwait).
2/1- Ministerial Council: the Ministerial Council of the Cooperation Council for the Arab States of the Gulf.
3/1- Committee: the Grievances Committee appointed by the Ministerial Council to exercise its competences set out in this Regulation and its regulations.
4/1- Board of Directors: the Board of Directors of the Patent Office of the Cooperation Council for the Arab States of the Gulf provided for in the Statute of the Patent Office.
5/1- Office: the Patent Office of the Cooperation Council for the Arab States of the Gulf, composed of the Board of Directors and the executive body of the Office.
6/1- Regulation: the Patent Regulation of the States of the Cooperation Council for the Arab States of the Gulf.
7/1- Patent: the document granted by the Office to the owner of an invention so that the invention enjoys statutory (legal) protection in accordance with the provisions of this Regulation and its regulations, and which shall be valid in all the Council States.

Article 2

2/1- An invention shall be patentable in accordance with the provisions of this Regulation and its regulations if it is new, involves an inventive step and is industrially applicable, and does not conflict with the provisions of Islamic Sharia, public order or public morals in the Cooperation Council States, whether it relates to products, manufacturing processes or manufacturing methods.
2/2- An invention shall be new if it is not anticipated by the prior art. Prior art in this respect means everything disclosed to the public anywhere by written or oral description, by use, or by any other means through which knowledge of the invention is made possible, before the date of filing the patent application or the priority application lawfully claimed. For the purposes of applying this paragraph, disclosure of the invention to the public shall not be taken into account if it occurred within one year before the filing date of the application or before its priority date and was due to, or a consequence of, abusive acts committed by a third party against the applicant or his predecessor in title. Nor shall disclosure of the invention to the public be taken into account if it took place at an officially recognised exhibition within the six months preceding the filing of the application; the Executive Regulations shall set out the provisions for protecting the invention in this case.
2/3- An invention shall be considered to involve an inventive step if it would not have been obvious to a person of ordinary skill in the art, having regard to the prior art relevant to the patent application.
2/4- An invention shall be considered industrially applicable if it can be made or used in any kind of industry, agriculture, fishing or services; industry shall be understood in its broadest sense so as to include handicrafts.
2/5- Applications for the registration of inventions that affect the security of any Cooperation Council State shall be subject to the procedures set out in the Executive Regulations.
2/6- Where more than one application is filed for the registration of a particular invention, the patent shall be granted to the first applicant holding the earliest priority date.
2/7/1- If an invention is the result of joint work by several persons, the right to the patent shall belong to all of them equally, unless they agree otherwise. A person who did not contribute to the inventive activity, but whose efforts were limited to carrying out the ideas, shall not be considered a joint inventor.
2/7/2- Ownership of an invention shall belong to the employer where the invention is successful and results from performing a contract or an obligation whose purpose is to devote effort to inventive activity, or if the employer proves that the employee arrived at the invention only by using the facilities, means or data made available to him by the nature of his work.
This shall not prejudice the employee’s right to obtain a special remuneration, assessed by the competent authority in the State where the invention was made in the light of the circumstances of the contract or obligation and the economic importance of the invention.
Any agreement depriving the employee of this right shall be void, and the foregoing provisions shall apply to employees of government entities.
An application for a patent filed by the employee inventor within two years from the date of leaving service shall be deemed to have been filed during service.

Article 3

3/1- The following shall not be considered inventions for the purposes of applying the provisions of this Regulation:
3/1/1- Discoveries, scientific theories, mathematical methods and computer programs.
3/1/2- Schemes, rules and methods for doing business, performing purely mental acts or playing a game.
3/1/3- Plants, animals and biological processes used for the production of plants or animals, with the exception of microbiological processes and the products of such processes.
3/1/4- Methods for the surgical or therapeutic treatment of the human or animal body and methods of diagnosing disease applied to the human or animal body, with the exception of products used in any of those methods.
3/2- This Regulation shall not protect plant varieties or animal breeds.

Article 4

The Ministerial Council may exclude certain inventions from patentability where this is necessary to protect public order or morality, including the protection of human, animal or plant life or health, or to avoid serious harm to the environment.

Article 5

5/1/1- A patent application shall be filed with the Office by the inventor, his accredited agent or the person to whom the rights in the invention have passed, provided that the application contains a request for the grant of a patent and is accompanied by the prescribed fees.
5/1/2- The application shall contain the name of the applicant and of the inventor, and of an accredited agent (if any), and a declaration justifying the applicant’s right to the invention if he is not the inventor.
5/1/3- The application shall relate to one invention only, or to a group of interlinked parts forming a single general inventive concept.
5/2/1- The application shall contain the title of the invention, a description, one or more claims, one or more drawings (if any) and an abstract of the invention.
5/2/2- The description shall disclose the invention in a manner sufficiently clear and complete for a person skilled in the art to carry it out.
5/2/3- The claim or claims shall define the scope of the protection sought; the description and drawings may be used to interpret them where necessary.
5/2/4- The claims shall be clear and concise and shall be fully supported by the description.
5/2/5- The abstract shall be used for the purposes of technical information only and, in particular, shall not be relied upon in interpreting the application.
5/3- The applicant shall provide the Office with such additional information and data relating to his application as it requests.
5/4- The applicant may make such amendments to his application as he deems fit, provided that they are not substantial amendments to the information contained in the original application.

Article 6

If the applicant is not resident in the Cooperation Council States, he shall appoint an accredited agent resident in one of the Cooperation Council States to carry out before the Office the acts delegated to him by the applicant.

Article 7

7/1- A patent application may include a request to claim the priority of an application previously filed in any State or with any regional office. In this case, the application shall state the date and registration number of the earlier application and the name of the State in which it was filed, and the applicant shall submit proof thereof in accordance with the Executive Regulations, failing which his right of priority shall lapse.
7/2- The priority period shall be twelve Gregorian months.

Article 8

The applicant may withdraw his application at any time unless a final decision has been made on it. Withdrawal of the application shall not entitle the applicant to recover the application documents, any amounts paid or any expenses incurred on the application.

Article 9

If the application meets the conditions set out in the Regulation and the Executive Regulations, the Office shall record the filing date of the application and examine it as to form; the Office shall then examine it as to substance or refer it to one of the accredited bodies to do so, after the substantive examination fees have been paid.

Article 10

If the formal examination shows that some of the lawfully prescribed conditions have not been met, the Office may request the applicant to take the necessary action to complete the application within no more than three months from the date of notifying him thereof. If what was requested of him is not done within that period, his application shall lapse.

Article 11

If the substantive examination shows that the application meets the conditions prescribed in this Regulation and its regulations, the Office shall issue a decision granting the patent, and the patent shall be entered in the Register and published; the certificate shall be issued to the owner of the invention three months after the date of publication if no opposition is filed with the Committee by an interested party.
If, however, the substantive examination shows that the applicant is not entitled to the grant of the patent, the Office shall issue a decision rejecting the application, stating the reason for rejection; the applicant shall be notified of a copy of it, and it shall be published.

Article 12

1/12- A patent confers on its owner the right to exploit the invention. Where the subject matter of the patent is a product, exploitation of the invention means making, using, importing, selling and offering it for sale; where the invention is an industrial process or a method of making a particular product, the patent owner shall have the same right in respect of what is directly obtained by using that process or method, in addition to his right to use that process or method.
2/12- Where the subject matter of the patent is a product, the patent owner shall have the right to prevent third parties not having his consent from making, using, offering for sale, selling or importing that product for these purposes.
Where the subject matter of the patent is an industrial process, he shall have the right to prevent third parties not having his consent from the actual use of the method, and from using, offering for sale, selling or importing for these purposes at least the product obtained directly by that method.
3/12- If an establishment, in good faith, was manufacturing a product, using an industrial process for a product or a method of making a product, or had made serious preparations to do so, before the filing date of an application by another person or before the priority date of the application relating to the same product, industrial process or method of manufacture, the establishment shall, notwithstanding the grant of the patent, have the right to continue carrying out those same acts. This right may not be assigned or transferred to others except together with all the other elements of the establishment.

Article 13

The patent owner shall work the patented invention adequately in the Cooperation Council States within three years from the date of grant of the patent. If that period expires without the patent being adequately worked, the provisions of Article (19) shall apply.

Article 14

The rights conferred by a patent shall not extend to the following:
14/1- Acts done for the purposes of scientific research.
14/2- Use of the subject matter of the patent in means of transport entering the territories of the Council States temporarily or accidentally, whether in the body of the means of transport, in its machinery, equipment or apparatus, or in other accessories, provided that the use is limited to the needs of those means.

Article 15

The term of protection of a patent shall be twenty years, calculated from the date of filing the application for the patent.

Article 16

An annual fee shall be payable on a patent, to be paid at the beginning of each year starting from the year following the filing date of the patent application. If the patent owner fails to pay the annual fee within no more than three months from the beginning of the year, he may pay the fee within a further three months starting from the expiry of the preceding period, together with an additional fee.
In all cases, the annual fees may be paid in advance for all or part of the term of the patent. If the patent owner fails to pay the annual fee within the foregoing statutory period (six months from the due date), the patent shall lapse. The provisions of this Article that apply to a patent shall apply to a patent application. If three years pass without the Office deciding on the application, the applicant may stop paying the fee until the Office issues its decision to grant the patent; in that case he shall pay all the annual fees he has not paid.

Article 17

17/1- The owner of a patent enjoying the protection provided for in this Regulation may license others to carry out all or some of the acts of exploitation set out in Article (12/1). The licence shall be in writing, signed by both parties and authenticated by an official authority in one of the Cooperation Council States.
The licence contract shall have no effect unless it is registered in the Office’s records and the fee for the registration request and the fee for registering the licence contract have been paid.
17/2- The grant of a contractual licence shall not deprive the patent owner of the right to exploit the patent himself or to grant another licence for the same patent, unless the first licence contract provides otherwise.
17/3- Contractual licences shall entitle the licensee to carry out all the acts of exploiting the invention set out in the contract. A contractual licensee may not assign the rights and privileges licensed to him by the patent owner unless his right to assign is expressly provided for in the licence contract.

Article 18

A licence contract for the exploitation or disposal of a patent shall be subject to the supervision of the Office. The Office may request the parties to the contract to amend it so as to remove from it any [abusive] use of the patent right and any negative effect of the contract on competition in the Cooperation Council States or on their acquisition and dissemination of technology. If the parties do not comply, the Office may refuse to approve the contract and to enter it in the Register.
* Completed from the context.

Article 19

19/1- If the patent owner has not worked the patented invention at all, or has worked it inadequately in accordance with Article (13), the Board of Directors may grant a compulsory licence subject to the following conditions:
19/1/1- At least three years shall have passed since the grant of the patent.
19/1/2- The applicant for the licence shall prove that, within a reasonable period, he made efforts to obtain a licence from the patent owner at a reasonable price and on reasonable commercial terms.
19/1/3- The licence shall not be exclusive.
19/1/4- The licence shall be mainly to meet the needs of the local market.
19/1/5- The licence decision shall define the scope and duration of the licence as required by the purpose for which it was granted.
19/1/6- The patent owner shall be granted fair compensation.
19/1/7- Exploitation of the patent shall be limited to the licensee, and the licence shall not pass to others except where ownership of the licensee’s establishment, or of the part of his establishment exploiting the patent, is transferred; such transfer shall be subject to the approval of the Board of Directors.
19/2- If the invention relates to semiconductor technology, a licence may be granted only for public non-commercial purposes or to remedy practices determined by judicial or administrative process to be anti-competitive.

Article 20

20/1- A decision granting a compulsory licence shall not preclude the grant of other compulsory licences, nor deprive the patent owner of the right to exploit the invention himself or to grant other licences to exploit it.
20/2- The Board of Directors may waive clauses 19/1/1 and 19/1/2 if the application for a compulsory licence is due to a public emergency or an extremely urgent public need, or is for public non-commercial use, in one or more of the Cooperation Council States.
20/3- If the applicant for a compulsory licence is the government of one of the Cooperation Council States, seeking to exploit a particular invention in that State through one of its agencies on the basis of what the public interest requires, the Board of Directors may approve the grant of the licence on the conditions set out in Article (19), having regard to paragraphs 20/1 and 20/2.

Article 21

If the exploitation of an invention involves an important technical advance of considerable economic significance, and such exploitation requires the use of another invention, the Board of Directors may, having regard to Articles (19) and (20), grant either or both parties a compulsory licence to exploit the other invention, unless they have agreed amicably on the exploitation.

Article 22

A compulsory licence shall be cancelled in the following cases:
22/1- If the beneficiary of the licence does not work it adequately in the Cooperation Council States within two years from the grant of the licence, renewable for a further two years if it is proved that there is a legitimate reason for the delay.
22/2- If the beneficiary of the compulsory licence does not pay the amounts due from him and the amounts provided for in the regulations within three months from their due date.
22/3- If the compulsory licensee does not observe any other condition set out in the decision granting the licence.
22/4- If the circumstances for which the licence was granted have ceased to exist and are unlikely to recur, subject to the legitimate interests of the licensee.

Article 23

23/1- Ownership of a patent and all the rights arising from it shall pass by inheritance; ownership of a patent may also be transferred in whole or in part, for or without consideration.
23/2- Any interested person may submit an application to the Office to amend any particulars of the ownership of the patent or of the application, supported by the necessary evidence. Ownership of the patent shall not pass, and a change to its particulars shall not be enforceable against third parties, except from the date the amendment decision is entered in the Register and published.

Article 24

A grievance may be filed with the Committee against any decision issued by the Office within three months from the date of the acknowledgement of receipt of the decision or of its publication, as the case may be. The Executive Regulations shall regulate the procedures followed before the Committee and the fees for filing and renewing a grievance.

Article 25

The decisions of the Committee may be challenged before the competent authority in accordance with the practice followed in the State of the headquarters, which shall decide thereon in accordance with the provisions of this Regulation and, in turn, its own regulations on patents, and otherwise in accordance with the general rules.

Article 26

The competent authorities in each Council State shall hear all disputes relating to the infringement or likely infringement of a patent, and shall decide those disputes in accordance with the provisions of this Regulation and, in turn, their laws (regulations) on patents, if any, and otherwise in accordance with the general rules.

Article 27

27/1- The Office shall keep a Register in which patents and their particulars shall be entered in accordance with the provisions of this Regulation and its regulations.
27/2- The Office shall issue an official gazette in which all the publications provided for in this Regulation and its regulations shall be published.

Article 28

The Ministerial Council shall issue a decision forming a Grievances Committee as follows:
28/1- The Committee shall consist of twelve members from the Member States, chosen in their personal capacity and not in their official capacity.
28/2- Each State shall nominate two members of the Committee, one of them a legal expert and the other a technical expert.
28/3- The Committee shall have a Chairman and a Vice-Chairman from among the legal experts, chosen by the other members for a term of three years.
28/4- The Committee shall take its decisions by a two-thirds majority of the members present.
28/5- The Committee shall hold its meeting in the presence of at least one member from each State.
28/6- The meeting of the Committee shall be postponed for two weeks if the two representatives of any State do not attend; if they are unable to attend the next meeting, the meeting shall be valid.
28/7- The members of the Committee shall perform their work impartially and independently of the instructions of any entity whatsoever.

Article 29

Members of the Committee, members of the Board of Directors and employees of the Office may not file applications in their own names during their period of service or during the two years following the end of their service. The information in their possession shall be considered strictly confidential.

Article 30

The Office shall collect fees from beneficiaries in the following cases:
1- A patent application.
2- The grant and publication of a patent.
3- Annual fees.
4- An amendment or addition to a patent application.
5- The additional fee for late payment of the annual patent fee.
6- Transfer of the right in an application or transfer of ownership of a patent.
7- Obtaining a copy of an application, or of the register of an application or patent.
8- An application for the grant of a compulsory licence.
9- The grant of a compulsory licence.
10- An application to register a licence contract.
11- Registration of a licence contract.
12- Entry of a grievance before the Committee.
13- Renewal of a grievance before the Committee.
14- A request for a sample of a culture.
15- A request for a certificate of display of an invention at an exhibition.
16- Conducting a search in the Office’s documents.
17- Substantive examination.
The regulations shall determine the amount of these fees.

Article 31

Protection shall not extend to products granted a patent by the Office in any Council State that benefits from paragraph (4) of Article (65) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), annexed to the Agreement Establishing the World Trade Organization, during the period of the exception.

Article 32

The Ministerial Council shall issue the regulations relating to this Regulation.

Article 33

The interpretation of this Regulation and proposals to amend it shall fall within the competence of the Financial and Economic Cooperation Committee, after coordination with the Scientific and Technical Cooperation Committee and the Industrial Cooperation Committee.

Article 34

This Regulation shall come into force three months after its publication and the publication of the Executive Regulations.
* The Executive Regulations (Ministry of Commerce and Industry Resolution No. 115 of 2016) were published on 3 April 2016.

Issued on 14 February 2013 and published in the Official Gazette Kuwait Al-Youm on 25 June 2013.