1 Patent Enforcement
1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and would influence a claimant’s choice?
Under the Saudi national patent system, a patent infringement action is initiated by submitting a statement of claim before a special quasi-judicial committee, “The Committee for Reviewing Patent Disputes”, established for this purpose by nominations from King Abdul-Aziz City for Science & Technology (KACST) pursuant to Article 35 pf the Law of Patents, Layout-Designs of Integrated Circuits, Plant Varieties and Industrial Models. The claimant does not have a choice between tribunals. The decisions of the Committee for Reviewing Patent Disputes are subject to appeal before the Administrative Court in Riyadh, and its judgments are also subject to appeal before the Administrative Court of Appeal are final unless the judgment:
(a) Violates Islamic principles or any codified regulations or is based on incorrect application or interpretation of the same, including the judicial precedents established by the Administrative Supreme Court;
(b) Is issued by a non-competent court;
(c) Is issued by a court not duly formed according to the law;
(d) Is based on incorrect characterisation or description of facts;
or
(e) Contradicts a previous judgement between the same parties.
If any of the above causes exist, the judgement of the Administrative Court of Appeal will be subject to a further stage of cassation before the Administrative Supreme Court.
1.2 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
Adjudication before the Committee for Reviewing Patent Disputes is free. There are no pre-trial procedural stages. The interested party has to directly file its statement of claim to the defendant in order to submit its reply within a specific period determined by Committee and can be extended upon reasonable request from the defendant. There are no hearings unless the Committee decides otherwise. The Committee usually takes 16 to 24 months to issue a decision.
1.3 Can a party be compelled top disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
There is no codified evidence law applicable in Saudi Arabia. Therefore, there are no provisions regulating the disclosure of relevant documents. The Saudi courts, including the Committee, apply in the absence of a provision governing the dispute or a specific issue, the general rules and Islamic principles observed in Saudi Arabia. It can be inferred from general rules and the general understanding of existing of existing regulations that the Committee can compel a party to disclose relevant documents or materials unless such disclosure violates the right of said party to protect its trade secrets and other protectable information.
1.4 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?
There are no specific pre-trial steps or requirements. Production of technical evidence is optional, and a party may obtain technical evidence to support its claims and position in the case. Nevertheless, such produced technical evidence does not bind the Committee which is entitled to seek the assistance of different expert bodies for whatever it deems necessary of the technical matters referred to it and to determine the party liable for the expenses incurred.
1.5 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?
In Saudi Arabia, there is no independent law of evidence, though more weight tends to be given to documentary and independent evidence.
There is no prohibition on the parties to an infringement action to change their arguments in the course of the trial.
1.6 How long does the trial generally last and how long is it before a judgement is made available?
The Committee for Reviewing Patent Disputes is composed of three lawyers and two technical experts nominated by the President of KACST under Article 35 of the Law of Patents, Layout-Designs of Integrated Circuits, Plants Varieties and industrial Models.
Decisions of the Committee are taken by a majority vote; the grounds for the decision have to be stated in writing. The Committee shall notify KACST of its decisions. The first instance before the Committee takes approximately 16 to 24 months until the decision is issued. The time depends on the workload before the Committee itself, as it is formed every three years by a resolution of the Council of Ministers.
1.7 Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?
According to Article 168 of the Saudi Civil Procedures Law, only the party in whose favour the judgment is issued is entitled to request and receive an executable copy of the judgment. In case that the judgment is issued in favour of more than a party, each party will be provided with an executable copy of the judgment. If the judgment is intended to be executed outside Saudi Arabia, the applicable treaties and covenants will be recognised as regards the number of copies of judgment and the persons entitled to request such copies.
Third parties cannot request copies of the judgment. However, the Ministry of Justice selects and publishes some of the final judgments in periodical journals without mentioning the names of parties to the case. The purpose of publication is educational and recordation of recognised precedents.
1.8 Are there specialist judges or hearing officers, and if so, do they have a technical background?
The Committee is composed of three lawyers and two technical experts nominated by the President of KACST.
In addition, the Committee may seek the assistance of different expert bodies with respect to the technical matters of the dispute.
1.9 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?
The party initiating an infringement action should establish its personal interest in the action by proving its ownership of a valid and effective document of protection, or its right of exploitation of the subject matter of protection, under a duly recorded licence.
In a revocation action, the plaintiff is not required to prove an actual personal interest in the action, because any person having a constructive interest is entitled to file an invalidation action in case the patent in issue violates any of the legal requirements. Declaratory proceedings are not recognised in Saudi Arabia.
1.10 If declarations are available, can they address (i) non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?
Declaration proceedings are not available in Saudi Arabia. The Committee for Reviewing Patent Disputes or appellate court will adjudicate the issue of dispute upon submission of an infringement claim against the defendant.
1.11 Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of, but not all of, the infringing product or process?
Contributory infringement is not recognised. Nevertheless, nothing prohibits a patent owner from suing infringers jointly in an infringement action, in case their collective efforts resulted in the infringement of its patented rights.
1.12 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?
Yes, it can. Importation of infringing products would be an infringement of the patent in Saudi Arabia irrespective of the place of manufacture.
1.13 Does the scope of protection of a patent claim extend to non-literal equivalents?
There is no case law which supports the doctrine of equivalents. Case law to date has dealt with literal infringements.
1.14 Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence e.g. where there is a pending opposition?
In practice, defence of patent invalidity is allowed in Saudi Arabia. The defendant should raise such defence during an earlier stage of infringement proceedings. The Patent Committee has jurisdiction to decide the invalidity issue. Therefore, in response to patent infringement proceedings, it is recommended for the defendant to initiate a counterclaim or an independent invalidation action.
1.15 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?
Apart from the lack of novelty and inventive step, a patent may be invalidated on the following grounds:
(a) The invention is not industrially applicable.
(b) The subject matter of a patent is hit by exclusionary subject matters; i.e., the subject matter is not an invention.
(c) Commercial exploitation of the invention violates Islamic principles.
(d) Commercial exploitation is harmful to life, to human, an animal or plant health, or is substantially harmful to the environment.
(e) Lack of enablement and/or insufficiency of description.
1.16 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?
The invalidity and infringement actions both fall within the jurisdiction of the Committee for Reviewing Patent Disputes, and separate invalidity proceedings may be initiated simultaneously with existing infringement proceedings. The infringer may request the Committee to review and decide jointly on the two actions or to stay the infringement action until it decides on the patent invalidity action.
1.17 What other grounds of defence can be raised in addition to non-infringement or invalidity?
The other grounds of defence against an infringement allegation are:
(a) In case the subject matter of protection is a process, to allege that the products are produced using a process different from the protected process.
(b) The illegality of the subject matter of protection in light of Islamic principles, the codified regulations and the established judicial precedents.
(c) The unsafe exploitation of the subject matter of protection in light of its impact on human or animal health and the environment.
1.18 Are (i) preliminary, and (ii) final injunctions available, and if so, on what basis in each case? Is there a requirement for a bond?
Only preliminary injunction is available in Saudi Arabia, in theory.
It is based on the following conditions:
(a) There must be an infringement action already filed before the Committee, and in the absence of such action, the application, an infringement action before the Committee.
(b) Submitting a surety or guarantee bond as requested by the Committee.
(c) Prima facie evidence that the original infringement action is likely to be decided in favour of the applicant.
The law authorises the Committee for Reviewing Patent Disputes to issue preliminary injunctions; however, preliminary injunctions are rarely awarded. Request for an injunction can be filed along with prima facie evidence of a claimant’s registered patent rights and an infringing act by the defendant. A surety or guarantee bond is required.
1.19 On what basis are damages or an account of profits assessed?
Although it is theoretically possible for the aggrieved party to claim damages, the Saudi courts are generally reluctant in this regard. In order for a claim of damages to be acceptable in Saudi Arabia, the relevant damage, loss of profit, or damage likely to occur, are not acceptable according to Islamic principles. Damages awards are very rare in practice. Under Islamic law, the strict evidentiary requirement – in particular, the cause and effect relationship between infringement and damages – makes it difficult to prove actual damage as per standards of Islamic law. It is very unlikely that damages or account of profit will be awarded in Saudi Arabia.
1.20 How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?
A law of Execution issued under Royal Decree No. M/53 is in force. This law applies only to the judgments issued by commercial courts. According to this law, the Court of Execution is entitled to enforce the judgment against the judgment-debtor even by force.
Criminal and administrative judgments are exempted from the scope of jurisdiction of the Court of Execution, and they are enforceable through the governor.
1.21 What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross-border relief?
Other possible forms of reliefs for patent infringement are:
(a) Confiscation and destruction of infringing products;
(b) Confiscation and destruction of all material and tools used by the infringer in producing the infringing products; or
(c) Prohibition of importation of infringing products.
1.22 How common is settlement of infringement proceedings prior to trial?
The parties to a dispute can make a settlement before the trial of infringement proceedings and at any time during infringement proceedings. The settlement has to be submitted in the form of a written agreement to the Committee for Reviewing Patent Disputes in case that the agreement and issue a decision without adjudicating issues in dispute.
1.23 After what period is a claim for patent infringement time-barred?
Claims for patent infringement can be forced after the patent is granted. There is no time-bar for a claim for patent infringement.
1.24 Is there a right of appeal from a first instance judgment, and if so, is it a right to contest all aspects of the judgment?
Yes, the first instance judgment issued by the Committee for Reviewing Patent Disputes is subject to appeal before the Administrative Court in Riyadh, and its judgments are also subject to appeal before the Administrative Court of Appeal. The judgments of the Administrative Court of Appeal are final unless the judgment:
(a) violates Islamic principles or any codified regulations or is based on incorrect application or interpretation of the same, including judicial precedents established by the Administrative Supreme Court;
(b) Is issued by a non-competent court;
(c) Is issued by a court not duly formed according to the law;
(d) Is based on incorrect characterisation or description of facts; or
(e) Contradicts a previous judgement between the same parties.
If any of the above causes exist, the judgement of Administrative Court of Appeal will be subject to a further stage of cassation before the Administrative Supreme Court.
1.25 What are the typical costs of proceedings to first instance judgment on (i) infringement and (ii) validity; how much of such costs are recoverable from the losing party?
Litigants usually pay the legal and professional costs. There are no official adjudication costs. Costs awards are generally subject to the discretion of the Committee.
1.26 For jurisdictions within the European Union: What steps are being taken in your jurisdiction towards ratifying the Agreement on a Unified Patent Court, implementing the Unitary Patent Regulation (EU Regulation No. 1257/2012) and preparing for the unitary patent package? For jurisdictions outside of the European Union: Are there any mutual recognition of judgments arrangements relating to patents, whether formal or informal, that apply in your jurisdiction?
The Enforcement Law provides that foreign judgments may be enforced on the basis of reciprocity if the following conditions are present:
(1) The Saudi courts are not competent to consider the dispute, and the foreign court is competent in accordance with its own rules.
(2) The parties to the dispute have been summoned and represented.
(3) The judgment does not contradict a judgment or order on the same subject issued by a competent judicial authority in Saudi Arabia.
(4) The judgment does not violate or contradict Shari’ah law.
Furthermore, Saudi Arabia is a party to the Riyadh Arab Agreement for Judicial Cooperation, which provides for recognition and enforcement of judgments of the courts of the member states. There are presently 16 member states, including UAE.
2 .Patent Amendment
2.1 Can a patent be amended ex parte after grant, and if so, how?
No, a patent cannot be amended ex parte after being granted.
2.2 Can a patent be amended in inter partes revocation/invalidity proceedings?
No, once a protection document is issued it will not be amended unless the amendment relates to the ownership of the protection document.
2.3 Are there any constraints upon the amendments that may be made?
No amendment is allowed after issuance of the protection document.
3. Licensing
3.1 Are there any laws which limit the terms upon which parties may agree a patent licence?
The parties have freedom to agree the terms of the licence agreement. The licences may relate to all or some of the acts of exploitation of the patent and shall not exceed the period of protection. The licence should be recorded with the Patent Office. It shall not deprive the owner from exploiting the invention or granting another licence. The licensee cannot assign the rights licensed to him unless otherwise stated in the licence agreement.
The Patent Office has discretionary power to instruct the parties to amend the licence in order to prevent abuse of the patent rights, negative effect on competition, or acquisition of technology and its dissemination.
3.2 Can a patent be the subject of a compulsory licence, and if so, how are the terms settled and how common is this type of licence?
Yes, a patent can be the subject of a compulsory licence after four years from the date of filing of the application, or three years from the grant of the patent (whichever expires later), provided that the patent has not been exploited or its exploitation has not met the public interest with no legitimate reason. The prospective licensee must have made reasonable efforts to secure a licence on reasonable commercial terms and financial compensation.
Compulsory licences shall not be exclusive and are granted to make the invention available in the local market against fair compensation for the patentee. However, such type of compulsory licence is not common.
An application for a compulsory licence is filed with the King Abdulaziz City for Science and Technology. It has jurisdiction to grant, amend, reject or cancel a compulsory licence.
4. Patent Term Extension
4.1 Can the term of a patent be extended, and if so, (i) on what grounds, and (ii) for how long?
The term of a patent is 20 years commencing as of the date of filing the patent application. Patent terms cannot be extended, and there are no provisions on patent term extensions or supplementary protection certificates.
5. Patent Prosecution and Opposition
5.1 Are all types of subject matter patentable, and if not, what types are excluded?
The following subject matter is excluded from patent protection:
(a) Discoveries, scientific theories and mathematical methods;
(b) Schemes, rules and methods of conducting commercial activities, exercising pure mental activities or playing a game;
(c) Plant, animals and processes – which are mostly biological – used for the production of plants or animals, with the exception of micro-organisms, non-biological and microbiological processes; and
(d) Methods of surgical or therapeutic treatment of the human or animal body and methods of diagnosis applied to human or animal bodies, with the exception of products used in any of these methods.
In addition, patent protection will not be granted if the commercial exploitation of the invention contradicts the Shari’ah law or is harmful to life, human, animal or public health or is substantially harmful to the environment.
5.2 Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents? If so, what are the consequences of failure to comply with the duty?
If the invention has been previously disclosed, the documents showing the date of disclosure and the reasons for the disclosure shall be provided to the Patent Office. The Patent Office is under legal duty to disclose, upon demand from the Committee for reviewing Patent Disputes, any document it has relating to the patent in issue.
5.3 May the grant of a patent by the Patent office be opposed by a third party, and if so, when can this be done?
The grant of a patent may be opposed by any interested party, and partial and total revocation may be sought provided that the provisions for grant of a patent have been violated. The opposition shall be filed with the Committee for reviewing Patent Disputes within 90 days as of the date of publishing the decision of grant in the Official Gazette.
5.4 Is there a right of appeal from a decision of the Patent Office, and if so, to whom?
The decision of the Saudi Patent Office is subject to appeal before the Committee for Reviewing Patent Disputes. The decisions of the Committee are subject to appeal before the Administrative Court in Riyadh, and its judgments are also subject to appeal before the Administrative Court of Appeal. The judgments of the Administrative Court of Appeal are final unless the judgment:
(a) violates Islamic principles or any codified regulations or is based on incorrect application or interpretation of the same, including the judicial precedents established by the Administrative Supreme Court;
(b) is issued by a non-competent court;
(c) is issued by a court not duly formed according to the law;
(d) is based on incorrect characterisation or description of facts; or
(e) contradicts a previous judgement between the same parties.
If any of the above causes exist, the judgement of the Administrative Court of Appeal will be subject to a further stage of cassation before the Administrative Supreme Court.
5.5 How are disputes over entitlement to priority and ownership of the invention resolved?
Disputes over entitlement to priority and ownership of the invention are resolved by the Committee for Reviewing Patent Disputes. The interested party has to initiate the action before the Committee within five years from the date of grant of the patent subject of dispute; otherwise, it will lose its right of adjudication in this regard.
A patent is a personal right of the person who created the invention and may be transferred by inheritance. If two or more people participated in the creation of the invention, they shall have equal rights to the invention. The first-to-file approach is used to resolve disputes with regard to priority, where two or more people have created the same invention.
With respect to inventions created during the course of employment, the employer shall own the invention, unless otherwise provided in the employment contract. Any patent filed in the period two years after the employment has been terminated shall belong to the employer.
5.6 Is there a “grace period” in your country, and if so, how long is it?
No, there is no “grace period”.
5.7 What is the term of a patent?
The term of a patent is 20 years from date of filing or deemed date of filing or the international filing date.
6. Border Control Measures
6.1 Is there any mechanism for seizing or preventing the importation of infringing products, and if so, how quickly are such measures resolved?
The GCC Customs Law provides a unified law relating to customs matters in the six GCC countries – Bahrain, Kuwait, Qatar, Oman, Saudi Arabia and the United Arab Emirates.
The GCC Customs law “prohibits admission, transit or exit of prohibited or infringing goods…”. Goods that violate intellectual property rights are considered “prohibited goods”.
Therefore, in theory, patent infringements may be stopped at the border, both imported and exported. However, in practice, there is no ex officio action available (this is restricted to trade mark infringements and certain types of copyright infringements at this time), and in order to prevent importation of a patent infringement, a court order would be required.
7. Antitrust Law and Inequitable Conduct
7.1 Can antitrust law be deployed to prevent relief for patent infringement being granted?
The Saudi law of competition is new and, in its current scope, does not include any provision which may affect the grant of relief for patent infringement.
7.2 What limitations are put on patent licensing due to antitrust law?
No specific limitations exist.
8. Current Developments
8.1 What have been the significant developments in relation to patents in the last year?
On 3 August 2013, Saudi Arabia acceded to the Patent Cooperation Treaty (PCT). Therefore, any international patent applications filed on or after this date can designate Saudi Arabia. The priority period for a national phase entry is 30 months from the earliest priority date. Recently, patent regulations were amended, and restoration procedure was adopted.
8.1 Are there any significant developments expected in the next year?
There is a proposal to amend the Saudi Law of Patents, layout-Designs of Integrated Circuits, Plant Varieties and Industrial Models:
(a) The draft law proposes to abolish the Patent Dispute Committee.
(b) Provisions related to compulsory licence may be amended.
(c) Jurisdiction to hear invalidity proceedings may be changed.
(d) An amendment may also introduce utility model protection in Saudi Arabia
Discussions with respect to the accession of the GCC Patent Office (located in Saudi Arabia) to the PCT are ongoing. At this stage, however, there are no clear indications as to when the GCC patent Office would become a PCT member. All GCC states are now members of PCT. The GCC Patent Office allows for the granting of a regional patent that is automatically valid in the six member states. If the GCC patent office becomes party to the PCT, it is likely that some applicants may prefer to obtain a regional patent rather than individual national patents.
8.2 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
Of the six GCC member states, Saudi Arabia appears to have the highest established standards with regard to patent protection. The decisions of the Committee are published in the Official Gazette, which is not yet the practice in the other GCC members.
This is an extract from the International Comparative Legal Guide for Patents 2018.
