The Gulf Cooperation Council economies have grown and diversified in recent decades with an emphasis in shifting from a petroleum-based industry to a diversified economy. The region represents one of the world’s fastest growing markets.
The six-member GCC is composed of the United Arab Emirates, Saudi Arabia, Qatar, Oman, Kuwait, and Bahrain. As a result of this remarkable economic growth, clients have shown increased interest in filing patent applications throughout this region. Filings from Australian applicants have been increasing in the last 20 years throughout this region with mechanical and chemical based technologies forming the majority of the filings.
There are multiple pathways to filing patent applications in the GCC as discussed below.
Filing strategy
i. GCC patent application
One approach to obtaining patent protection across the region was achieved by filing a complete patent application at the Patent Office of the Gulf Cooperation Council (GCC patent office) within 12 months of a priority application. This was necessary because the GCC patent office is not a member of the Patent Cooperation Treaty (PCT).
The advantage of this filing strategy was that one regional application could provide patent protection in all six member countries therefore streamlining prosecution and significantly reducing costs.
Examination would typically proceed relatively quickly and a first Office Action often issued within 12 to 18 months of filing. The objections of the Office Action issued by the GCC patent office often reiterated those raised during the International Phase of a corresponding PCT application. Obtaining a clear written opinion during the International Phase could therefore expedite prosecution and allowance.
Unfortunately, the GCC patent office suspended accepting new filings from January 2021 which closed this option.
However, from the start of 2023, the GCC patent office has resumed GCC patent application filings. However, this is more of a limited role where the GCC patent office handles national patent applications on behalf of the requesting member countries compared to pre-2021 applications.
As of 1 July 2023, Qatar has been confirmed to be referring its national applications to the GCC patent office to handle receiving applications, formality checks, and substantive examination in addition to Kuwait and Bahrain which have previously been confirmed from since start of 2023.
There is still uncertainty whether the remaining member countries will participate in the resumed reformed GCC system and forward national filings to be handled by the GCC patent office.
Given the uncertainty, we do not recommend clients to file patent applications via the GCC route until there is clarification of the filing and prosecution process and its applicability to all member states.
ii. National phase entry
An alternative approach to pursuing patent protection in the GCC is to enter national phase for each individual member country via the PCT filing system because each GCC member country is a member of the PCT.
However, this filing strategy can incur significant costs if all six countries are elected because the requirements for supporting documents can be extremely onerous which will be further discussed below and official fees and annuities would be separately payable for each country.
Filing documents
As highlighted above, the supporting documents for GCC member countries can be rather onerous as a number of countries require legalisation by a consulate or Apostille after a document has been notarised by a notary public.
Apostille Certificate
An Apostille is a special certificate which in Australia is issued by the Department of Foreign Affairs and Trade (DFAT) under the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents. The Apostille confirms that a notary public’s signature and seal on a notarised document is genuine.
Some countries have signed this Convention, which means that once the notary has prepared their certificate, the only other formality required is the affixing of the Apostille to the Notary certificate by DFAT for use in foreign countries which are signatories to The Hague Convention; otherwise legalisation is necessary as discussed below.
Consulate Legalisation
Legalisation by a consulate is a formality requirement confirming the authenticity of a document in a foreign country once a document has been authenticated. Authentication is an official confirmation that the signature and seal of a notary public is genuine. The Authentication Certificate is attached to the notary certificate by a governing body which is then legalised by the receiving country’s consulate. In Australia, authentication is provided by DFAT similar to the Apostille process.
This process is required for countries that are not signatories to The Hague Convention.
The filing formalities for each GCC member country can differ tremendously and the supporting documents that are required are as follows:
- Oman
A Power of Attorney legalised either by the Apostille or by the Consulate of Oman or in its absence by any other Arab country.
An assignment executed by the inventor(s), assigning their patent rights to the Applicant which is legalised by Apostille or by the Consulate of Oman or in its absence any Arab country.
A copy of the Certificate of Incorporation of the Applicant or an extract of their entry in a Commercial Register or any document showing the legal existence of the Applicant. Legalisation is not required for the Certificate of Incorporation.
A scanned copy of the documents is sufficient.
The legalised Power of Attorney must be filed within 60 days while the legalised Assignment and Certificate of Incorporation must be filed within 90 days from the filing date of the patent application.
- Qatar
A Power of Attorney legalised by the Consulate of Qatar.
An original copy of the Power of Attorney is required.
The legalised Power of Attorney should be filed within 90 days although late filing is possible upon payment of late fees.
- Saudi Arabia
A Power of Attorney legalised either by the Apostille or by the Consulate of Saudi Arabia.
The Power of Attorney can be submitted at the time of filing or after the Saudi Arabian Patent Office issues a formality examination report and which point the Power of Attorney should be filed within 90 days of the report.
A scanned copy of the document is sufficient.
- United Arab Emirates
A notarised Power of Attorney.
A notarised assignment executed by the inventor(s), assigning their patent rights to the Applicant.
A copy of the Certificate of Incorporation of the Applicant or an extract of their entry in a Commercial Register or any document showing the legal existence of the Applicant.
Legalisation is not required for these documents.
A scanned copy of the documents is sufficient.
The notarised documents should be filed within 90 days from the filing date of the patent application although late filings can be filed by payment of restoration fees.
- Kuwait
A Power of Attorney legalised by the Consulate of Kuwait.
An assignment executed by the inventor(s), assigning their patent rights to the Applicant.
A copy of the Certificate of Incorporation of the Applicant or an extract of their entry in a Commercial Register or any document showing the legal existence of the Applicant.
A scanned copy of the documents is sufficient.
The documents be filed within 90 days from the filing date of the patent application.
- Bahrain
A Power of Attorney legalised either by the Apostille or by the Consulate of Bahrain.
An assignment executed by the inventor(s), assigning their patent rights to the Applicant which is legalised by Apostille or by the Consulate of Bahrain.
A scanned copy of the documents is sufficient.
The documents be filed within 3 months from the filing date of the patent application.
Given the complexities of the required documents where multiple GCC member states require executed assignments, we recommend executing an assignment as soon as the PCT application is filed. This allows a more streamlined filing process reducing the number of separate documents to be executed because a single assignment can be used for multiple jurisdictions (including those other than GCC member states).
To further minimise costs, a single Arabic translation is all that is required which can be used in the member states.
Whereas obtaining patent protection across the region via the PCT national phase is considerably formality-intensive, it is nonetheless the preferred option in view of the identified uncertainties regarding the scope of the modified GCC patent application process. Should the modified process turn out to have the same scope as its predecessor, this would unquestionably become the preferred route with the PCT national phase route serving as a back-up in case a GCC complete application was not filed within the 12-month priority window.
Spruson & Ferguson’s expert team can handle filing patent applications in the GCC member states for Australian and New Zealand Applicants as well as drafting tailored assignments as required.