A decree of the federal law No. 17 for the year 2002, amending the federal law No. 44 for the year 1992 pertaining to the industrial regulation and protection of patents, industrial drawings, and designs.
I , ZAYED BIN SULTAN AL NAHYAN ,the president of the UNITED ARAB EMIRATES (UAE),
After reviewing the constitution;
The federal law No. (1) for the year 1972, pertaining to jurisdictions of ministries and authorities of the ministers;
The federal law No. 5 for the year 1976 pertaining to the federation of chambers of commerce and industry
The federal law No. 1 for the year 1979 pertaining to regulation of the industrial affairs;
The federal law No. 4 for the year 1979 pertaining to the repression of fraud and infringement in commercial transactions;
The federal law No. 8 for the year 1984 and its amending laws pertaining to commercial companies;
The federal law No. 5 for the year 1985 pertaining to civil transactions, as amended by the law No. 1 for the year 1987;
The federal law No. 11 for the year 1992 pertaining to the issuance of a law for civil transactions;
The federal law No. 18 for the year 1993 pertaining to the commercial transactions;
The federal decree No. 21 for the year 1975 pertaining to the accession of the UAE to the World Intellectual Property Organization;
The decree No. 11 issued by the Cabinet of Ministers in 1993 disclosing the implementing regulations of the federal law No. 44 for the year 1992 pertaining to industrial regulation and protection of patents, industrial drawings, and designs;
The federal decree No. 20 for the year 1996 pertaining to the accession of the UAE to the Paris Convention for protection of the industrial property; The federal decree No. 21 for the year 1997 pertaining to the accession of the UAE into The World Trade Organization;
The federal decree No. 84 for the year 1998 pertaining to the accession of the UAE into the Patent Cooperation Treaty.
The federal law/ decree of the federal law/ the Prime Ministry decree
No. ( ) for the year 2000 pertaining to the patent system to be adopted by the GCC states; and Based on the proposal of the Minister of Finance and Industry, as approved by the Cabinet of Ministers, and on the verification of the Supreme Federation Council,
We have hereupon issued a decree of the following law .
CHAPTER ONE : Definitions And General Provisions
Article – 1 :
In application of this law the following terms shall each have the respective meaning corresponding thereto, unless otherwise indicated in the text :
State: United Arab Emirates .
Ministry : Ministry Of Finance And Industry .
Minster : Minister Of Finance And Industry .
Administration : Administration of Industrial Property, Ministry of Finance and Industry, and its branches in the UAE .
Committee : Committee for petitions, Administration of Industrial Property .
Deed of protection : A document indicating patentability of the invention, industrial drawing, or industrial design being awarded by the competent Administration . This shall be in the form of letters patent, utility certificate, or certificate of registration of industrial drawing or design .
Invention : Any innovative idea relating to a product, a method of manufacture, or an application of a known method of manufacture leading to a practical solution to a technological problem .
Letters patent :A deed of protection being issued for the invention by the Administration of Industrial Property in the name of this state.
Utility Certificate: A deed of protection being issued by the Administration of Industrial Property in the name of this state for an invention that does not result from intellectual effort sufficient for granting a letters patent .
Registration Certificate: A deed of protection being issued for the Industrial design by the Administration of Industrial Property in the name of this state.
Knowhow: Information, data, or knowledge of a technological nature acquired through the profession that is practically applicable.
Industrial drawing: Any innovative creation of lines or colors which generates a product that can be used in industry or craft.
Industrial Design: Any innovative three-dimensional shape that can be used in industry or craft.
Industrial property circular: The circular issued by the Administration which is designated for publishing all that is required to be published under this law and its implementing regulations.
International patent application: An application submitted to the administration to obtain a letters patent pursuant to the patent cooperation treaty.
International filing of a patent application: A patent application submitted to a patent office in one of the member states of the patent cooperation, upon which application the patentee shall be entitled to protect his invention in the member states in accordance with the terms and conditions provided for in the said treaty.
Receiving office for applications : Administration receiving an-application for international patent for processing the same before being forwarded to other administration specified by the patent cooperation treaty.
Selected office: Administration selected by the applicant for examining his application and determining its patentability according to the patent cooperation treaty.
Designated office: Administration designated by the applicant for the issuance of a letters patent according to this law.
Article – 2 :
The provisions of the law herein shall not violate the provisions of the international treaties and conventions which U.A.E is a party thereof, and which regulate the rights of the citizens of the member states in those treaties and conventions and the rights of the persons who have rights to similar treatment. A foreigner not covered by the provisions of the previous paragraph shall have the same rights as the citizens’ rights granted by the law provided that his state of citizenship will reciprocate the same protection to citizens of the United Arab Emirates.
Article – 3 :
Temporary protection shall be awarded for the inventions, drawings, and designs which are exhibited in local fairs under the terms and conditions set forth by the implementing regulations of this law, taking into account the provisions stated in international agreements, treaties, or conditions of reciprocity.
CHAPTER TWO – Inventions
SECTION ONE Patents And Utility Certificates
Article – 4 :
A letters patent shall be awarded to any new invention resulting from an innovative idea or inventive step in all fields of technology, provided that such an idea or inventive step has a scientific basis and is capable of industrial application. The invention shall be deemed industrially applicable in its broadest term if used or utilized in such fields as agriculture, fisheries, handicrafts, and services.
The application must be restricted to one invention only or to a group of interrelated inventions yielding one general innovative concept. If it is evident after the issuance of the letters patent that the condition of interrelationship has not been met in accordance with the aforementioned statement, then such an evidence shall not negate the patent.
Article – 5 :
A utility certificate may be issued for new inventions capable of industrial application but having no innovative character warranting patentability. Upon request of the inventor or his legal representative, the utility certificate shall also be issued for the invention satisfying the conditions provided for in article ( 4 ) .
Article – 6 :
Article – 7:
Where the invention is a combined effort of two or more persons, the right for the invention shall be shared between them or between their legal successors. A person shall not be considered an inventor unless he has duly contributed to the invention with a new and innovative idea.
Article – 8:
If the essential elements of an invention have been derived from an invention owned by another person, without having that person’s approval or for filing an application for protection, the injured person may request title of the application, or to transfer the patent or the utility certificate to his title if being granted to the usurpers.
Article – 9:
Article – 10 :
The name of the inventor shall be indicated in the letters patent or utility certificate, unless otherwise instructed by the inventor.
The applications for the letters patent or the utility certificate shall be submitted as provided for in the implementing regulations of this law .Article – 11 :
Article – 12 :
The administration shall examine the letters patent or utility certificate in accordance with the provisions set forth by this law and its implementing regulations, and may request whatever documents required for the issuance of such a letters patent or utility certificate. The administration shall notify the applicant should the application be rejected and the applicant may file a petition to the competent committee within a period of 60 days as of the date of notification.
Article – 13 :
Upon the decision of the Minister, the letters patent and utility certificates shall be issued and published in the industrial property circular. Any interested party may file a petition thereon to the competent committee within a period of 60 days from the date of publication. The letters patent or the utility certificate shall be issued to the interested applicant if no petition has been filed therefor during the specified period. The letters patent or the utility certificate shall have the registration number indicated thereon, along with the date of issuance, payment of fees, or other relevant data set forth in the implementing regulations of this law.
Article – 14 :
The term of the letters patent shall be a period of 20 years, and 10 years for the utility certificate as of the date of filing the application.
An annual fee shall be payable on the letters patent or the utility certificate, and shall be paid by the beginning of each year starting from the year following the date of filing the applications related thereto. If such a fee has not been duly paid by the owner of the letters patent within a 3- month period, then another grace period of 3 months shall be allowed, within which time the due fee is to be paid, provided that a late- fee shall be added thereto.
In all instances, the annual fees may be paid in advance for the entire term of the letters patent or the utility certificate or for parts thereof. If the fee is not duly paid by the owner of the letters patent or by the holder of the utility certificate within the prescribed period indicated hereinbefore (6 months from the due date), the letters patent or the utility certificate shall then lapse.
Article – 15 :
1- The letters patent shall afford its owner the following rights:
a- The right for exploiting the invention through manufacture, usage, or sale of a product. Where the invention deals with an industrial product or with a process for manufacturing a certain product, the right shall then be afforded to the owner to use such a product or process.
If the invention is a product, the owner shall be entitled to prevent any other party from manufacturing, using, retaining, selling, or importing the said product without a permission from the owner. If the invention is an industrial process, the owner shall also be entitled to prevent any other party from using the process and the product generated directly therefrom, and from using, retaining or importing the said product without permission from the owner. b- The right of using the method and undertaking the tasks referred to in paragraph ( a ) of this article in respect to a product obtained directly by the method once the letters patent or the utility certificate has been issued for a new method or for application of a known industrial technique.
2- The rights afforded by the letters patent or by the utility certificate as referred to hereinbefore in (1) of article –15 shall be restricted only to those activities adopted to industrial / commercial purposes, and shall not extend to other associated activities with the protection of the product following its sale.
Article – 16 :
Article – 17 :
If a person, in a bona fide manner, manufactures the product, uses the invention method or undertakes serious steps for such manufacturing or usage in United Arab Emirates on or before the date of filing the application for patenting by another party or at the date of the legally claimed priority in respect of this application, the prior party shall have the right, in spite of granting the patent or the utility certificate, in undertaking such acts and the other acts mentioned hereinbefore in article ( 15 ) of the law herein stated in respect of the products obtained thereof. Such right is personal and may not be transferred except to the beneficial entity.
Article – 18 :
The letters patent or the utility certificate may be assigned to another party prior to issuance thereof.
the presence of the competent department official, or be authenticated by the notary public.
The assignment of the letters patent or the utility certificate shall be registered in the appropriate record against payment of the fees set forth in the implementing regulations.
Article –19 :
The rights afforded by the letters patent shall not be applicable to the following particulars:
1- Activities relating to academic research.
2 – Use of a patent for transportation means being introduced to the UAE on temporary basis whether such a use is intended for the body structure, the engine, or for the spare parts of the said means, considering only the actual needs of the vehicles.
Article – 20:
The joint owners of a letters patent or utility certificate may separately assign to others their shares in the letters patent or utility certificate and exploit thereof and use the rights entitled by article ( 15 ) of the law herein unless otherwise agreed upon. However, such owners may not individually grant licenses to others for using the invention.
Article – 21:
The letters patent or the utility certificate may be pledged in settlement of a debt either independently or in combination with the facility associated therewith. Such a pledge shall be registered in the letters patent record or in the record of the utility certificates as the case may be, and shall be published in the industrial property circular.
Article –22 :
The assignment or pledge of a letters patent or a utility certificate shall not be deemed an evidence against any party unless such an assignment or pledge has duly been registered in the patent records or in the records of the utility certificates, and have also been published in the industrial property circular.
Article – 23 :
The creditor may seize the letters patent or the utility certificate being owned by his debtor, according to the seizure procedures adopted for third parties as appropriate. The administration shall not require the creditor to declare whatever in his custody for the distrainee. The creditor must notify the administration of both the seizure and the tender award decision for registration of the same in the appropriate record. These shall be published in the industrial property circular, and the appropriate fees shall be collected according to the implementing regulations. The seizure and the tender award decision shall only be in effect as from the date of publication.
SECTION TWO Compulsory Licenses And Expropriation Of Inventions
Article – 24 :
Article – 25 :
(15) of this law under the licensing conditions, with the exception of the right of importing the product.
Article –26 :
The issuance of a compulsory license shall not preclude issuing of other compulsory licenses .
Article – 27 :
Article – 28:
The application for the compulsory license shall be submitted to the competent court in the form of lawsuit being filed against the owner of the letters patent or the holder of the utility certificate. The department shall be notified of the lawsuit for the purpose of representation. The two parties shall then be given the grace period decided by the court for reaching an agreement. This period may be extended if so justified before the court. By the end of this period the court shall decide whether or not the compulsory license is to be issued. Should the compulsory license be issued, the court shall determine the conditions and the scope of the license, and the compensation due to the licensee or to the holder of the utility certificate as provided for in article ( 24 ) of this law. The decision shall be communicated to the second party and to the department for registration in the appropriate record, and shall be published in the industrial property circular after the prescribed fees have been paid. The decision shall come into force for other parties after the date of publication thereof.
Article – 29 :
Article – 30 :
Article – 31 :
Article – 32:
SECTION THREE Surrender And Invalidation Of Patents , Utility Certificates Or Licenses
Article – 33:
The owner of the letters patent, the holder of the utility certificate, or the owner of the compulsory license may assign the previous upon a written notification to the administration or to any party having a right thereof. The assignment may be restricted to one or more rights provided for by the letters patent, the utility certificate, or by the compulsory license, provided that such an assignment shall not adversely affect the other parties, unless such rights have already been assigned in writing by the parties in question. The assignment shall be registered in the appropriate record, and shall come into force only after the date of its publication in the industrial property circular.
Article – 34 :
All interested parties may turn to the competent court to ask for nullification of the patent, the utility certificate or the compulsory license. Moreover, the owner of the patent, the utility certificate and the compulsory license and all related parties shall be notified in the cases hereunder stated:
1- If the patent, the certificate or the license is granted without the fulfillment of the conditions cited in such law or the bylaws thereof.
2- If the patent, the certificate or the license is granted without compliance with the priority of the previous applications according to article ( 11 ) of such act.
Moreover, the nullification application may be restricted to a part of the patent, the certificate or the license and in such case the issued judgment shall be deemed a limitation to the rights authorized thereby.
Article – 35:
Taking into consideration the provisions of article ( 31) of this law, the decisions of the total or partial nullification of the letters patent, the utility certificate or the license shall come into effect from the date of the grant of the letters patent, the utility certificate or the license. However their respective owners shall not be obligated to refund the compensations received in retune for the exploitation of the invention or the compulsory license, if it is proven that the beneficiary or holder of the license has utilized it. The nullification decision should be recorded in the special register and should be published in the industrial property circular.
SECTION FOUR Provisions Related To Some Of The Inventions
Article –36 :
SECTION FIVE International Patent Application
Article –37 :
The administration shall receive the applications for international patents in accordance with the international treaties enforced in this state. The terms and conditions to be considered in this respect are provided for in the implementing regulations of this law.
The administration may upon the approval of the Cabinet of Ministers appoint a patent office in a member state of the treaty to receive the international patent applications on behalf of the administration.
Article –38 :
The administration shall determine the required fees according to the regulations provided for in the international treaty. The annual fees shall be due on the patent application at the beginning of the year following the date of the international filing. The application shall lapse if the prescribed fees are not duly paid by the applicant within 6 months as of the date of filing the application to the administration .
SECTION SIX :The Know How
Article – 39 :
Without violating the rights that the patent or the utility certificate authorizes, the know how has the benefit of protection from any illegal usage or disclosure or announcement from third parties, as long as it hadn’t been published or put at the public disposal, and having the benefit of protection stipulates that the owner of the know how had adopted the necessary measures for maintaining the secrecy of its elements by the manner the bylaws indicates for such act.
Article – 40 :
Any party having duly acquired, on his own or through legal means, a scientific knowledge shall have the right to use such a knowledge or convey it to other parties, even though third parties may have acquired the same knowledge.
Article – 41 :
The know how contract should be confirmed in writing, and should include definition of the elements and the purpose of using thereof and the conditions of transferring thereof, otherwise the contract shall be deemed invalid.
The provisions concerning exploiting the inventions and assignment thereof and licensing for exploiting thereof in the manner that the bylaws of such law stipulates, shall be effective on the know how contracts.
Article – 42 :
Each utilization, disclosure or announcement of any element of the know how without the approval of the owner thereof, if such happens by a party that knows the confidential nature thereof or if no one in his position may be unaware of such nature, is deemed as an illegal action.
CHAPTER THREE The Industrial drawings and designs
Article – 43 :
The provisions of protection which are cited in such law concerning the Industrial drawings and designs should not violate the ethical and the aesthetic rights related thereto, whether the source thereof was the law or the international agreements or treaties in which the state is a party.
Article – 44 :
The industrial design doesn’t have the benefit of the protection defined in such act, except if registered in the related register at the Administration, and the registration application is submitted and is examined according to the procedures and fees defined by the bylaws of such law in such matter.
Article –45 :
The application for protection may include more than just one industrial drawing or design, provided that such drawings or designs are interrelated in terms of manufacture and uses, and that their total number does not exceed 20 drawings or designs.
Article – 46 :
Article – 47 :
The industrial drawing or design must be new, innovative, and be usable as an industrial / handicraft product, and not violate the public order or the morals of the State.
Article – 48 :
The deed of protection shall be issued for the industrial drawing or design upon a decree by the competent minister, and shall be published in the industrial property circular along with the design or the drawing after payment of the prescribed fees.
Any interested party may file a petition against the ministerial decree issuing the deed of protection before the competent committee within a period of 60 days as of the date of publication. If no petition has been filed during the said period, a registration certificate shall be issued to the applicant indicating the number and date of registration with any relevant data provided for in the implementing regulations of this law.
Article – 49 :
The protection term of the industrial drawing or design shall be a period of 10 years as of the date of filing the application for protection.
Article –50 :
Notwithstanding the particulars provided for in articles ( 49 ) and ( 69 ) , the industrial designs shall be bound to the provisions set forth in article ( 14 ) of this law .
Article – 51 :
Pursuant to this law, the protection of an industrial drawing or design shall afford the applicant the right to prevent any other party from undertaking the following activities:
The said activities shall not be deemed legal just because they have a different scope from that of the industrial drawing or design being protected by the law, or because they relate to a product different from the drawing or the design included in the deed of protection.
Article – 52 :
If any party started, in bona fide manner, to undertake the activities provided for in the preceding article (51) prior to the submission of the filing application, he shall then be entitled to proceed with such activities in respect of the products already obtained. This shall be deemed a personal right and shall in no circumstances be assigned or transferred to another party in any form, except when associated with the establishment utilizing it.
Article – 53 :
The industrial drawing or design shall be subject to rules provided for in articles ( 7 ) , ( 9 ) , ( 17 ) , ( 18 ) , and ( 20 ) and to those provided for in section two and three of chapters two and of this law.
CHAPTER FOUR CONTRACTUAL LICENSES
Article – 54 :
The owner of the protection document may license any natural or legal entity in using or exploiting the right subject to the protection, provided that the license period should not exceed the defined protection period pursuant to the provision of the law herein. Moreover, the license contract should be written and signed by the parties.
Article – 55 :
The license agreement shall be registered and endorsed in the appropriate record following the payment of the prescribed fees, and shall not come into force until the date of its publication in the industrial property circular. The registration shall be deleted upon request made by the competent parties of the license agreement, or upon revocation, decision of nullification, or upon expiration of its term.
Article – 56 :
The contractual license shall not prevent the owner of the protection documents from exploiting or using the subject of protection by himself or granting licenses to the third parties unless otherwise cited in the license contract.
Article – 57 :
The licensee is entitled to exploit or to use the subject licensed protection in all aspects throughout the period of the lawful protection in all the territory and by all means unless otherwise is cited in the license contract. Furthermore, the licensee shall have the right to use the rights that the protection document grants to the owner thereof, and which intends to prevent the infringement, threat, or prejudice the subject protection, and the licensee should notify the owner of the protection document by a registered letter of the infringement, the threat or the prejudice, and if the owner of the protection document neglects or delays and doesn’t adopt the due procedures within thirty days from the notification date, the licensee may adopt the legal and judicial procedures and claim for compensation for the damages to him either due to negligence or delay of the owner of the protection document or from the third party’s actions.
Article – 58 :
The licensee may not in other than the condition of assignment or transfer of the organization’s property or the part thereof which exploits the license, to assign the license for third parties or to sublicense, unless otherwise is cited in the licensing contract. The court may also request that the ruling be published in the circular or in one of the local newspapers at the expense of the convict.
Article – 59 :
Licensing agreements, assignments, or transfer of the right of the subject under protection, with any amendments or validation made thereon shall all be subject to supervision of the administration in respect to conditions, securities, and rights being afforded by the deeds of protection. The administration may request the competent parties to amend those agreements involving misuse of an intellectual property right or conflicting with the trade competition associated with the said agreement in the State. Should the agreement not be amended, the administration shall then have the right to deny approval and registration of the agreement in the record as provided for in the implementing regulations of this law.
CHAPTER FIVE Preventive Measures , Offenses And Penalty
Article – 60 :
The owner of the deed of protection or the assignee of some industrial property rights provided for in this law may request the competent court to issue a precautionary seizure order for the invention, drawing, design, or for parts thereof using the industrial property of any kind referred to hereinbefore, provided that infringement or other illegal activities are being undertaken in violation of this law or in conflict with the contracts or licenses issued thereunder.
Article – 61 :
The applicant of the precautionary seizure should deposit a bail evaluated by the court prior to issuing its order for seizure and the seizor should file the relevant action within eight days as from the date of the issuance of the court’s order otherwise the matter shall be deemed null and void. Moreover, it is permissible for the attached person to file an action for compensation within sixty days as from the date of the termination of the previous term or from the date of issuing the final decision of refusing the relevant action which the seizor preferred.
Furthermore, it isn’t permissible to cash the bail referred thereto except after the issuance of a final decision in the seizor’s action or the claim of compensation which the attached person filed.
Article – 62 :
Without prejudice to the stronger penal actions provided for in other laws, any party submitting false documents or giving incorrect information to obtain a letters patent or a utility certificate shall be sentenced into imprisonment for a period not less than 3 month and not more than 2 years and (or) be charged not less than 5,000 Dirham and not more than 100,000 Dirham. This shall also be applicable to any party simulating an invention, a manufacture method, an element of practical knowledge, or an industrial drawing or design.
Article – 63 :
The court may in a civil or penal lawsuit rule to confiscate the impounded objects or those to be impounded at a later stage. The court may also order the destruction or impairment of the objects resulting from illegal activities, including machineries and tools adopted for infringement. The court may oblige the convicted party to publish the decision in the industrial property circular or in one of the daily newspaper. Such a court order can also be effective in case of acquittal by the court.
CHAPTER SIX The Administration Of The Industrial Property Conclusive And Transitional Provisions.
Article – 64 :
An Administration at the Ministry of Finance and Industry called (the Administration of the industrial property) is to be established and such Administration and the branches thereof undertake enforcing the provisions of the law herein and its bylaws. Moreover, the Minister issues a decision of work’s system at the Administration and the branches thereof and how to practice the authorities cited in the law herein and its bylaws.
Article – 65 :
The employees of the Administration have capacity of legal detrain in the field of enforcing the provisions of the law herein and its bylaws and they are banned within the time period of their work and after the expiry thereof from revealing the secrets of their work or giving data or information they are communicated therewith by virtue of their jobs or revealing or using thereof for their interest or for the interest of third parties, and they are not permitted to keep personally the original of any document or paper or a copy thereof, further, they are banned throughout the time period of their work and within three years following the expiry thereof from practicing the job of registration agents at the Administration .
Article – 66 :
Article – 67 :
The decisions taken by the committee may be appealed before the competent court according to the civil procedures law within 30 days as of the date of notification of such a decision before the court. In this regard, the court may seek the opinion of the experts in the filed of dispute resolution, or it may seek the opinion of the administration of Industrial Property.
Article – 68:
The bylaws of the law arrange the job of registration agents at the Administration and includes defining the conditions required for the agents and their duties, the due fees for being recorded in the registration agents , register and the cases of canceling or striking off the record.
Article – 69 :
The fees to be paid to the department for processing an application shall be determined according to this law and its implementing regulations.
Article –70 :
The inventions dealing with the chemistry of drugs or pharmaceutical compounds shall be protected by letters patents or utility certificates if they meet the conditions provided for in this law and its implementing regulations as of 1.1.2005.
Article –71 :
Notwithstanding the preceding article of this law, the administration shall continue to receive applications for protecting those inventions dealing with drugs or pharmaceutical compounds if such applications meet the other legal conditions. These applications shall be subject to the following rules:
Article – 72 :
The bylaws of the law herein shall be issued from the cabinet pursuant of the Minister’s proposal including the responsibilities; the classification thereof and the delegation therein in the field of executing the provisions of the law herein ,as well as the types of registers, the system of examining the applications, the data and the documents that should be submitted; the fees, the expenditures and the publication charges and all the provisions and rules which the execution of the law herein requires.
Article –73 :
Any rule violating or conflicting with those provided for in this law shall be deemed as null and void.
Article –74 :
This law shall be published in the official gazette and shall come into force as of the date of its publication.
Zayed Bin Sultan Al Nahyan
President of the UAE.