Road to COP26
The 26th Conference of the Parties to the United Nations Framework Convention on Climate Change (UNFCCC), COP26 will take place November 9-19, 2020, in Glasgow, UK.
During an informal announcement following the 41st meeting of the Supreme Council of the GCC, which was held on January 5, 2021 in Al-Ula, Saudi Arabia, the GCC Patent Office has stopped accepting new patent applications as of January 6, 2021. For over 20 years, the GCC Patent Office has been the regional office for acquiring patent protection in all GCC Member States comprising the Kingdom of Saudi Arabia, the United Arab Emirates, the Sultanate of Oman, the State of Kuwait, the State of Qatar and the Kingdom of Bahrain (the GCC Member States). While awaiting formal communication from the GCC Supreme Council with further details regarding this recent decision, clients with current or future interest in patent protection in GCC Member States are advised to proceed as follows:
A) Filing a patent application in each of the individual GCC Member States of interest through a direct, Paris Convention application within the 12 month priority period, including a priority claim back to the priority application; or
B) Filing a national stage application in each of the individual GCC Member States of interest within the 30 month priority period using the Patent Cooperation Treaty (PCT), including a priority claim back to the priority application.
Before making a decision, clients should consider the 18 months of additional time that the PCT route provides in selecting which countries to file as compared to a direct, Paris Convention application.
At least in the short term, it appears that the GCC Patent Office will continue processing, examining and granting pending GCC patent applications filed on or before January 5. 2021. Under the GCC Patent Office system, certificates of patents granted by the GCC Patent Office secure legal protection of the inventor's rights in all GCC Member States. A patent is validated in the Member States as of the date of grant in the GCC Patent Office.
Based on information available at this time, the GCC Patent Office will continue to operate until the expiration of the last pending GCC patent application or GCC patent that was filed on or before January 5, 2021. By way of example, for a GCC patent application filed with the GCC Patent Office on January 5, 2021, that is later granted and has all the annuities paid, the GCC Patent Office may continue operations until January 4, 2041. This may change as additional information becomes available.
For a GCC patent application that was recently filed (i.e., on or before January 5, 2021) from a still pending, priority patent application of particular importance or value, it may be advisable to file a direct, Paris Convention application in one or more of the GCC Member States as well. Notwithstanding the duplicative filing costs, these additional filings may act as a backstop considering the uncertainty surrounding this recent decision regarding the GCC Patent Office.
Additional counsel will be provided following formal communication from the GCC Supreme Council regarding this decision and as additional information becomes available.
Special thanks to senior associate Zachary Wegmann (Austin), who works under the supervision of Mike Krawzsenek, for his assistance in preparing this content.
© Norton Rose Fulbright LLP 2021