UAE: Legalization No Longer Required for Patent and Design Registration

The International Centre for Patent Registration (ICPR) at the Ministry of Economy in the United Arab Emirates (UAE) held a workshop to discuss changes pursuant to the introduction and publication of the new Industrial Property Law (Federal Law No. 11/2021) and Implementing Regulations (Federal Law No. 6/2022).

Some key takeaways from the workshop that affect applicants at the time of filing and during prosecution are the following:

• Supporting documents such as powers of attorney (POAs), assignment documents, and commercial extracts can be notarized only; this means that legalization is no longer required
• The supporting documents no longer need to be translated into Arabic, unless expressly requested by the ICPR
• Patent applications must be limited to 50 claims, whereas utility models must be limited to 10 claims
• It is now possible to convert a patent application into a utility model application and vice versa
• The official reexamination fee for minor changes requested by the examiner is expected to be dropped substantially
• The new law allows for post-grant amendments if the scope of the claims remains within the allowed scope.

Industrial design patents will be awarded for a 20-year period instead of the 10-year period previously granted. This update will apply to applications filed as of December 2021. It is worth noting that there was no specific discussion on annuity payments, but pursuant to the law, these are paid annually or in advance for the term of the patent.

The workshop provided for a platform to address several changes to expect under the new law and regulations but also to confirm some of the procedures that were being implemented albeit not clearly recited in the previous law.

Many of these changes will become apparent with filing, examination, and prosecution with upcoming cases.