Features of patenting inventions and utility models in the UAE by Russian individuals and legal entities

In recent years, the United Arab Emirates has become one of the most attractive markets for Russian technology companies. The region actively invests in the development of high technology, medicine, artificial intelligence, petrochemistry, and industry, and the presence of a patent in the UAE is often a prerequisite for attracting investment, licensing technologies, or entering the local market.

However, the procedure for obtaining a patent in the UAE is significantly different from the Russian one. When planning foreign patenting, it is important to take into account the requirements of both Russian legislation and the legislation of the Emirates. Mistakes made at the initial stage can lead to the loss of the opportunity to obtain a patent, regardless of the technical value of the development.

Let's analyze the main features of patenting inventions and utility models in the UAE.

Compliance with Russian legislation

If the invention or utility model was created on the territory of the Russian Federation, the first stage should be compliance with the requirements of Article 1395 of the Civil Code of the Russian Federation.

As a general rule, an application may be filed abroad after the expiration of six months from the date of filing the Russian application, if Rospatent has not notified the applicant of the existence of information constituting a state secret. At the same time, the law allows for the possibility of an earlier foreign filing if Rospatent has confirmed the absence of information constituting a state secret before the expiration of the six-month period. Violation of this procedure may entail administrative liability under Article 7.28 of the Code of Administrative Offenses of the Russian Federation.

In addition, for individual technologies, the requirements of export control legislation should be taken into account. This is especially true for developments in the field of artificial intelligence, unmanned systems, materials science, microelectronics, telecommunications, and biotechnology.

The legislation of the UAE, as well as the Russian Federation, provides for a limited 12-month grace period for certain cases of disclosure of information by the author himself or by a person who received information directly from him.

However, the UAE should take a much more conservative approach. Although the legislation provides for certain exceptions related to certain cases of disclosure, in practice Russian applicants are advised to proceed from the principle of absolute world novelty and file an application before any public disclosure of the development.

That is why it is desirable to form an international patenting strategy even before the publication of research results or the start of negotiations with potential partners.

Is it necessary to involve a local patent attorney?

Foreign applicants do not interact with the UAE Ministry of Economy on their own. All actions for filing an application, correspondence with the Office, responding to examination requests, and obtaining a patent are carried out through a registered patent attorney; therefore, even before preparing documents, it is advisable to choose a local representative and agree with him on the requirements for the preparation of materials.

Power of attorney: requirements must be clarified before submission

Previously, the execution of a power of attorney for the UAE was a lengthy procedure of consular legalization and apostille. In recent years, the requirements of the Ministry of Economy have changed several times due to the digitalization of procedures and changes in international document management rules.

In practice, in many cases, it is allowed to submit a notarized power of attorney in electronic form with the subsequent provision of the original. However, the requirements are subject to change. Therefore, before preparing the documents, it is recommended to clarify the current procedure for issuing a power of attorney with a local patent attorney. This approach avoids delays at the stage of formal examination.

Main ways to obtain a patent in the UAE

1. National Phase of the PCT International Application

For most Russian companies, this route is the most convenient.

After filing an international application under the PCT procedure, the applicant gets the opportunity to postpone the main costs and decide to enter the UAE market at a later date. The period for entry into the national phase in the UAE is 30 months from the priority date. For comparison, in the Russian Federation, the national phase of the PCT opens within 31 months. In some cases, the legislation provides for the possibility of restoring missed deadlines, but one should not count on such a possibility when planning a strategy.

2. Filing under the Paris Convention

If no PCT international application has been filed, a patent can be obtained by filing a national application claiming conventional priority. In this case, the application must be submitted no later than 12 months from the date of filing the first application.

Features of expertise in the UAE

After filing the application, the examination procedure begins, which has several important features.

As a rule, documents are submitted in English. At the same time, for certain documents, including the claims, the preparation of an official Arabic translation is required. It should be borne in mind that it is the Arabic text of the patent that can be of decisive importance in resolving litigation in the UAE. Therefore, the translation of claims should be carried out by a specialist with experience in working with patent terminology.

The UAE Ministry of Economy makes extensive use of the results of the examination carried out by foreign patent offices. Therefore, the presence of positive decisions on the relevant applications in the European Patent Office, the USA, Japan, South Korea or other leading jurisdictions often significantly increases the likelihood of a successful patent in the UAE.

For PCT applicants, the results of the international search and the international preliminary report on patentability are of great importance. The UAE participates in Patent Prosecution Highway (PPH) programs with a number of overseas patent offices. If the relevant application has already received a positive decision in one of the participating offices, the processing of the application in the UAE can be significantly expedited.

At the same time, Rospatent does not participate in the existing PPH programs with the UAE.

What cannot be patented in the UAE?

Like most modern patent systems, the UAE legislation provides for a list of objects that are not recognized as patentable.

In particular, the restrictions may apply to:

• scientific discoveries and mathematical methods;
• methods of treatment and diagnostics of humans and animals;
• individual biological objects;
• decisions that are contrary to public order, morality or the requirements of UAE law.

Before preparing an application, it is recommended to preliminarily assess the compliance of the development with the requirements of local legislation. A patent for an invention is valid for 20 years; a patent for a utility model is valid for 10 years from the date of filing the application, subject to timely payment of annual fees.

It should be borne in mind that maintaining a patent requires regular payment of government fees. In case of violation of the established deadlines, the legislation provides for additional payments, and in some cases - termination of the patent.

How much does patenting cost?

The total budget depends on the complexity of the technical solution and the chosen patenting route. As a rule, the costs include: state fees; services of a local patent attorney; preparation of translations; payment of annual patent maintenance fees. The possible costs of responding to examination requests may range from US$15,000 to US$20,000. Therefore, it is advisable to assess the cost of foreign patenting at the stage of choosing countries for filing an application.

The main differences between patenting in Russia and the UAE

Russia:

• Application language: Russian
• Prosecution: Documents may be submitted in simple written form (if the representative is a Russian patent attorney) or in standard notarized form.
• Assignment of rights from the author to the applicant: No assignment deed is required.
• PCT national phase: 31 months
• Examination: Conducted by the same Office with which the application is filed - Rospatent.
• Processing time: 11-14 months

UAE:

• Application language: English, with an Arabic translation of certain documents.
• Prosecution: In July 2023, the UAE Ministry of Economy significantly simplified the requirements: consular legalization of documents at UAE embassies abroad for patent registration was abolished. Notarization by a government notary in the applicant’s country of origin is required.
• Assignment of rights from the author to the applicant: An assignment deed signed by the author(s) and applicant(s) is required.
• PCT national phase: 30 months
• Examination: The results of examination and searches conducted by foreign patent offices (e.g., the Korean Patent Office) are used.
• Processing time: 2 to 4–5 years

Practical recommendations

Successful patenting in the UAE begins long before the application itself is filed. It is advisable to develop an optimal strategy even before publishing research results, participating in exhibitions, or starting negotiations with potential partners.

In practice, it is recommended:

1. Conduct a preliminary patent search;
2. Determine the optimal filing route (Paris Convention or PCT);
3. Comply with the requirements of Article 1395 of the Civil Code of the Russian Federation when patenting abroad;
4. If possible, do not disclose the technical solution in detail before the date of filing the application;
5. Agree on the requirements for the power of attorney and translations with the local patent attorney in advance.

A comprehensive approach can significantly reduce the risks of patent refusal, reduce costs, and ensure reliable legal protection of the technology in one of the most promising markets in the Middle East.