Patent Registration in Saudi Arabia
Significant Amendments to the Saudi Labor Law
October 29, 2024
Personal Data Protection Law
November 14, 2024
Abstract
Law of Patens, Layout Designs of Integrated Circuits, Plant Varieties, And Industrial Designs (Patent Law), was enacted by Royal Decree No. (M/27) Dated on 5/29/1425 AH (17 July 2004), and entered into force on 6 September 2004. The Patent Law was recently been amended by the Royal Decree No. (M/45) Dated on 10/03/1445 AH (25 September 2023), which came into effect on 3 October 2023. Saudi government has introduced several methods to modernize the patent examination process and reduce examination pendency, including registration under PCT or Hague Convention, Patent Prosecution Highway (PPH) pilot program with certain countries, fast-tract examination. This commentary proposed to provide an overview of the international conventions adhered to and cooperation with certain countries, to facilitate patent applications through international channels, and provide a brief on the domestic patent application process and the fast-track examination program to expedite the patent registration.International Conventions
Saudi Arabia joined the World Intellectual Property Organization (WIPO) in 1982 and the Paris Convention for the Protection of Industrial Property (the Paris Convention) in 2003. In 2005, Saudi Arabia became a member of the World Trade Organization (WTO) and a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), a multilateral agreement that applies to all WTO members. Countries that are parties to the Paris Convention and a member of the WTO, may have a better understanding of Saudi Arabia’s Patent Law through their domestic laws that are aligned with these international conventions. Additionally, Saudi Arabia has joined the following treaties related to patents:- Patent Law Treaty (PLT) :Saudi Arabia joined the Patent Law Treaty in May 2013. This treaty aims to coordinate and simplify the formal procedures for national and regional patent applications.
- Patent Cooperation Treaty (PCT) : Saudi Arabia acceded to the Patent Cooperation Treaty (PCT) in August 2013. The PCT enables applicants to file a single “international” patent application for simultaneous protection in multiple countries. Citizens or residents of any PCT contracting state can file such applications, either with the national patent office of a contracting state where they are a citizen or resident, or with the International Bureau of WIPO in Geneva.
- Strasbourg Agreement Concerning the International Patent Classification :Saudi Arabia acceded to the Strasbourg Agreement Concerning the International Patent Classification in 2020. The Saudi Intellectual Property Authority (SAIP) use this Classification during substantive examination to categorize applications and conduct patent searches as well as assessments of novelty and inventiveness.
Patent Cooperation between Saudi Arabia and China
As of October 2024, SAIP has signed PPH agreements with the United States Patent and Trademark Office (USPTO), Korean Intellectual Property Office (KIPO), Japan Patent Office (JPO), China National Intellectual Property Administration (CNIPA), and the European Patent Office (EPO). The PPH pilot program with CNIPA has been extended infinitely from November 1, 2023.
If there is at least one corresponding application in CNIPA with claims deemed patentable, the applicant may request accelerated examination of the corresponding application in SAIP. The PPH has two categories: the regular PPH, where the applicant first files a patent application with CNIPA and then with SAIP, and the PCT-PPH, where a PCT application if filed with CNIPA and then with SAIP. For the regular PPH, the application requirements are as follows:
- same earliest date (priority date or filing date);
- the corresponding application has claims identified as patentable by CNIPA;
- the claims in SAIP sufficiently correspond to those identified as patentable;
- SAIP has not yet examined the application at the time of requesting the PPH;
- the application initiated in the office of CNIPA or SAIP.
When submitting a PPH request via email to SAIP, the following documents should be attached:
- PPH application form;
- copies of all office actions from CNIPA and their translations;
- copies of all claims determined to be patentable by CNIPA and their translations;
- copies of references cited by the CNIPA examiner;
- a claims correspondence table.
General Provisions of Domestic Laws and Regulations
1.Patent Applicants
The Patent Law does not impose particular requirements on patent applicants, allowing anyone to apply for a patent. If the patent applicant is not the inventor, the document proving the transfer of patent rights shall be attached to the application. Foreign individuals or entities shall appoint a qualified local agent to submit their application. Abdulaziz Bin Ali Law Firm is a SAIP-certified patent agency in Saudi Arabia that offers patent registration application services.
2.Patent Application Channels
- Applications may be submitted through an agent via the SAIP website.
- Paris Convention: applicants from Paris Convention countries may file a patent application with SAIP within 12 months of filing with the domestic authorities for the same invention, thereby obtaining priority.
- PCT: Applicants shall file a request of entry into national phase with SAIP within 30 months of the priority date and pay a fee of 2,000 SAR.
3.Classification of Patents
Saudi Arabia classifies patents into the following categories:
- Invention Patents shall be new, innovative and capable of industrial application. The following shall not be regarded as inventions:
- Discoveries, scientific theories, and mathematical methods;
- Schemes, rules, and methods for commercial activities or games;
- Plants, animals, and biological processes for producing them, except for microorganisms and non-biological and microbiological methods;
- Surgical, therapeutic, and diagnostic methods for humans or animals, except for related products.
- Integrated Circuit Layout Designs
- Plant Varieties
- Industrial Designs
Application Procedures and Costs for Invention Patents
1.Application procedures
Application: Applications submitted online to SAIP shall be in Arabic with fee of 800 SAR. If submitted in English, a certified translation shall be provided within three months.
Formal examination: SAIP will conduct a formal examination and notify the applicant of any required modifications, allowing 90 days for amendments.
Publication: Following submission, SAIP will publish the application within 18 months, contingent upon payment of a publication fee of 1,000 SAR.
Substantive examination: After the formal examination, SAIP will determine the costs for the substantive examination, which shall be paid within three months of notification. The costs and duration of the substantive examination are not clearly defined. If there are infringements or potential infringements, the applicant may request expedited examination. Following payment of the required fee, SAIP will proceed with the substantive examination.
This examination will evaluate the legality of the patent, ensuring compliance with Sharia, and that it does not harm human, animal, or plant health, or damage the environment. It will also assess the patent’s novelty, inventiveness, and utility.
After the substantive examination, SAIP will issue the first substantive examination report, detailing whether the application meets legal requirements and suggesting necessary modifications. The applicant shall amend the application according to these recommendations or provide a detailed justification for their disagreements. If SAIP accepts the modifications or justifications, it will proceed with granting the patent. If not, SAIP will issue a second substantive examination report, and the applicant shall either amend the application or provide further justification. If SAIP remains unsatisfied, it will decline the application. The applicant shall respond to SAIP within three months, or the application will be deemed canceled.
Publication and granting: To publish and grant the patent certificate, the applicant shall pay a fee of 1,000 SAR within three months of notification. Once the fee is paid, SAIP will issue the patent certificate.
2.Costs
The applicable fees vary depending on whether the patent holder is an individual or a legal entity. The fees for legal entities are as follows:
- Registration application: 800 SAR
- Change or transfer of ownership: 400 SAR
- Amendment or addition to the application: 200 SAR
- Obtaining a copy of the application or certificate: 100 SAR
- Registration of license contracts: 800 SAR
- Grant and publication: 1000 SAR
3.Annual Fees
The protection period for invention patents is 20 years. The initial fee is 500 SAR, increasing by 500 SAR each subsequent year (e.g., 1,000 SAR for the second year, 1,500 SAR for the third year, etc.).
Annual fees must be paid at the beginning of each year, starting from the year after the patent application. Payments can be made within three months after the due date without extra fees. A three-month grace period follows, during which the applicant or patent holder will be warned to pay double the amount. Failure to pay during this period will invalidate the application or protection document. If the annual fee has been paid for three years without the protection document being granted, payment may be deferred until the document is issued.
Fast Track Examination
The patent application process can be lengthy, prompting SAIP to introduce the “Fast Track Examination” (FTE) for invention patents. This initiative aims to address urgent patent protection needs and support Saudi Arabia’s economic diversification by encouraging competitive and valuable products in the market.
The FTE program allows SAIP to conduct substantive examinations within 18 months of application submission. The available FTE quota may change annually based on SAIP’s assessment of current circumstances.
1.Application Criteria
To submit an FTE application, the following criteria shall be met. The FTE is applicable only to specific categories of patents (category requirements), namely:
- Technologies aligned with the “Vision 2030”, including manufacturing, mining, energy, and logistics services;
- Environmentally friendly technologies;
- Products related to the treatment and detection of chronic diseases;
- Technologies for combating the spread of epidemics and infectious diseases;
- Economically valuable products intended for circulation in Saudi Arabia, including those in foreign investment projects, financed products, and those from technology incubators;
- Products related to the pilgrimage sector.
2.When
The FTE application shall be submitted before SAIP commends the formal examination. Otherwise, the patent application shall adhere to the normal process.
3.How
The FTE application must be submitted via email, including a research report to facilitate expedited examination. If an application has already been submitted abroad, the applicant should provide the search materials or examination results from that country.
4.Fee
FTE fees for legal entities are 5,000 SAR.
5.Special Provisions:
- Applicants aged 65 or older or those with chronic illnesses or disabilities are exempt from the category requirements.
- Research institutions, micro-enterprises (49 employees or fewer), or individuals are exempt from the requirement to submit a research report in advance.
- Medium to large-sized enterprise shall have filed a patent application for at least one year. If the product/technology meets the category requirements, the applicant should be the first institution to submit such an FTE application in that category. If the government is likely to benefit from the product/technology, the category requirements do not apply. Applicants from target industries of foreign investment projects who have obtained investment permission may also file an FTE application.
