Introduction
The Government of UAE has issued Federal Law No. (11) of 2021 quashing the previous law of Federal Law No. 17 of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs.
Objectives
The new law aims to protect industrial property and regulate the procedures for its registration, use, exploitation, and assignment, to ensure support for knowledge and innovation in the state and to enhance the state’s competitiveness in the field of industrial property rights by observing best international practices and standards. The legislation contains Eighty articles and Seven chapters governing the registration and protection of the Industrial Property rights.
Application of the Law
The law shall be applied to patents, industrial designs, integrated circuits, undisclosed information, and utility certificates registered in the state, including free zones. The provisions of this law do not prejudice what is stipulated in international agreements and treaties to which the state is a party. If he/she holds the nationality of a state, the state shall be treated reciprocally.
Major Amendments
The most notable additions are as follows
1- According to the new law, the utility certificate can be converted into a patent application or vice versa by complying with the conditions set out by law’s executive regulations
This helps facilitate and accelerate the process of obtaining a license for the person claiming the patent rights for his invention.
2- Article No. 11 of the law focuses on the inventions developed during the execution of the contract . It specifies conditions related to compensating a worker who invents something new while performing his duty and to whom the ownership of the invention made during work will reside. This strengthens the position of the worker and enhances the right of an employee to get fair compensation in this scenario.
3- The list of conditions stipulated by law in regards to the terms of the industrial design are as follows:
A) It must be new.
B) It must not violate any public order or public morals, in that case it will not be permitted to be used commercially.
C) An industrial design is considered new only when it has not been disclosed to the public, whether by publication, use, or any other method, prior to the filing date of the application.
D), However, the design shall not be deemed to have been disclosed to the public whenever such disclosure is made within one year from the date of submitting the application.
4- With regards to the period of protection for the industrial design, the new law increased the time period to twenty (20) years starting from the date of submission of the application , as mentioned in Article No. 45 of the law.
5- With regards to penalties, , the penalty has been significantly increased in the new law in order to provide greater protection for a patent, a utility certificate, an industrial design or an integrated circuit diagram, as stated in Article No. 69 that “Without prejudice to any severer penalty stipulated in any other law, he shall be punished by imprisonment and a fine of no less than AED 100,000 (one hundred thousand dirhams) and not more than AED 1,000,000 (One million dirhams)” or either of these two penalties for anyone who submits documents or provides incorrect or forged information to obtain a patent, a utility certificate, an industrial design, or a layout drawing of an integrated circuit, as well as anyone who imitates an invention or a manufacturing method, or willfully infringes any right protected by this Law".
6- With regards to compensation for damages to the holder of the patent or the protection deed, the law in Article No. 67 states that “the owner of the protection deed or his licensee may in the event of a violation of any of his rights conferred upon him by the protection deed may ask the court to award him compensation for the damage he sustained as a result of the acts that violated the provisions of this law”.
7- In the rights that do not apply to a patent or a utility certificate; a new paragraph has been added in the law as stated in Article No. 22, paragraph 3 “3- The combination of two or more medicines for the purpose of medical treatment by a licensed pharmacist”.
8- The new law added in Chapter Five “the layout designs of integrated circuits” in Articles 55 to 57. Article 55 lists down few conditions to protect the layout designs of integrated circuits, which are as follows; they must be original and they must be the result of an intellectual effort made by the owner of the idea and provided that they were not among the general knowledge that is common to masters of the relevant industrial art. The law states that the schematic design is considered original if its components and their connection to each other are original, even if the components that makeup fall within the common knowledge.
The law also stipulates in Article 56, few exceptions that do not enjoy legal protection, namely “any concept, method, technical system, or encrypted information that may be included in the layout design of integrated circuits”.
Additionally, the law specifies in Article 57 that it is prohibited to use the layout designs of integrated circuits without a prior written permission from the holder of the right to the protected layout design for any natural or legal person to perform any of the following:
(A) Plagiarizing the entire layout-design or an original part of it, whether it is copied by incorporation into an integrated circuit or in any other form.
(B) Importing, selling or distributing a layout-design for the purpose of trade, whether it is individually or as integrated into an integrated circuit or is one of the components of a commodity.
Conclusion
The new law revoked the Federal Law No. 17 of 2002 as stated in Article No. 78. The new law states in Article 77 , the issuance of the executive regulations of this law by the Council of Ministers within a period of six (6) months from the date of publication of this law. The new law also stipulates in Article 79, the regulations and decisions issued in implementation of the provisions of Federal Law No. 17 of 2002 shall continue until the necessary decisions are issued to implement the provisions of the new law, but in a manner that does not conflict with the provisions of the new law.
For further details about the law, please contact our office on 02 6399198.