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.
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.
Conclusion
Compared to the relatively straightforward trademark law, Saudi Arabia’s Patent Law lacks clear guidance on examination periods for invention patents. Patent applicants may benefit from utilizing the PPH or FTE routes to expedite examination. Additionally, the Patent Law does not specify the timeframe for interested parties to raise objections or for applicants to respond. It is advisable for applicants to respond to SAIP notifications within a typical timeframe of three months. The Abdulaziz Bin Ali Law Firm, certified by SAIP, offers services for patent registration and patent infringement dispute resolution.
