Patents of Invention

– Royal Decree No. M/27 dated 29/5/1425 A.H. (The Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Models), in force since September 6, 2004.
– Implementing Regulations, effective as of December 26, 2004, as amended and effective as of December 20, 2015.

The Supreme Council of the Gulf Cooperation Council (GCC) in its 13th session held in Abu-Dhabi on December 21-23, 1992, approved the patent regulation for GCC member States, with amendments of November 27-29, 1999, and its Implementing Bylaws of April 8-9, 2000, in force since August 16, 2000. (see article covering the “Gulf Cooperation Council“).

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since May 22, 1982.
– Paris Convention for the Protection of Industrial Property, Stockholm Act (Royal Decree No. M/48 dated September 9, 2003), since March 11, 2004.
– WTO’s TRIPS Agreement, since December 11, 2005.
– Patent Cooperation Treaty (PCT), since August 3, 2013.
– Patent Law Treaty, since August 3, 2013.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since January 16, 2021.
– Strasbourg Agreement Concerning the International Patent Classification, since January 16, 2021.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 7, 2022.
– Saudi Arabia is a member of the Patent Regulation of the Gulf Cooperation Council.

Filing

Applicant: the inventor or his assignee; in the latter case, the inventor’s name must be cited.

Foreigners and nationals not living in the country: the name, surname and place of residence of the authorized agent of the applicant in the Kingdom should be mentioned.

Naming of the inventor: compulsory. If the applicant is different from the inventor, an assignment deed from the inventor to the applicant is to be submitted.

Types of patents: patents of invention.

Notion of the invention: the definition of an invention includes any new product, method of manufacture, or an improvement in either of them.

Novelty: absolute universal novelty is required. An invention is new only if it is not anticipated by the prior art, which covers anything disclosed to the public anywhere and at any time, by means of a written or oral disclosure, by use or in any other way before the relevant filing date or the priority date validly claimed. There is no novelty grace period.

Exceptions to protection: the following are not considered to be inventions: (a) discoveries, scientific theories and mathematical methods; (b) principles, rules and techniques of doing business; performing purely mental acts or practicing any game; (c) varieties of plants, animal species or biological processes used to produce plants or animals. Sophisticated biological operations and the results of these operations are excluded; (d) methods of treatment of the human or animal body, whether surgical or clinical, and methods of diagnosis applicable to the human or animal body. However, this does not apply to the products used in any of these processes. Also, a patent is not granted if the invention itself or its application is contrary to the Islamic concepts.

Utility models: currently, there is no Utility Model Law in Saudi Arabia, but all utility model applications are treated as regular patent applications and such models shall meet all patentability requirements.

Priority: based on the Paris Convention.

Territory covered: the Kingdom of Saudi Arabia.

Filing requirements for an application for a national patent (to be sent to resident registered agent):
1. 1 e-copy of a power of attorney showing legalization; in case the Saudi Patent Office requests such original, they shall issue a Formality Examination Report requesting the same;
2. 1 e-copy of a deed of assignment, executed by the inventors, assigning the patent rights to the applicant, also notarized and legalized up to the Saudi Arabian Consulate abroad. As the Saudi Patent Office introduced an e-filing facility, only e-copies of the documents (full copy showing the Consulate legalization stamp) are required; accordingly, it is suggested to maintain the originals, and the applicant or his associate shall be notified if any Office action requesting the same is issued by the Saudi Patent Office;
3. 1 e-copy of the specification in English and Arabic, prepared strictly in the following order:
(i) The first page shall contain the title of the invention at the top-middle and below it the abstract. The abstract shall not exceed one page. The title should be precise and not exceeding 7 words;
(ii) The specification shall contain the following: (a) background of the invention; (b) summary description of the invention; (c) summary description of the drawings; (d) full description of the invention;
(iii) Claims (typed on separate sheets);
4. 1 e-copy of the formal drawings;

5. General information required:
(A) Inventor(s): name(s) and address(es) of the inventor(s);
(B) 1. The particulars of the home or foreign application(s) such as the application number(s) and filing date(s), and so forth;
2. Whether or not the application has been submitted to the Saudi Patent Office before;
3. Whether or not the invention has been disclosed to the public anywhere before. If yes, the following information is required:
(i) Country of filing;
(ii) Filing date;
(iii) Publication number and publication date or the number and date of the Letters Patent, if already granted;
(iv) International class of the patent (if known).

Note: documents 1 and 2 must be electronically filed within three months from the application filing date. In case to the contrary, the Saudi Patent Office issues a Formality Examination Report requesting the same.

Electronic filing: available. 

Electronic signatures: are accepted as long as the documents are duly legalized by a Saudi Consulate.

For a change of name:
1. A certified copy of the change of name document, legalized up to the Saudi Arabian Consulate, along with a simple English translation;
2. Power of attorney reflecting the new name, legalized up to the Saudi Arabian Consulate.

For a change of address:
1. Power of attorney reflecting the new address, legalized up to the Saudi Arabian Consulate.

PCT applications: to be filed in accordance with the provisions of the Patent Cooperation Treaty and the Regulations made thereunder. The Saudi Patent Office has started accepting PCT national phase applications as of February 3, 2015. Time limits for entering national phase: 30 months for both Chapters I and II. Requirements (to be fulfilled within sixty days from the filing date): the documents required at the time of filing are the patent text in English and Arabic in addition to the details of the PCT application. The requirements, annuity due dates, and fees remain the same as for national filings.

Examination

Examination: the Department of Patents examines the applications as to form. If it is found that certain conditions prescribed under the regulations are not fulfilled, the applicant will be notified of it and will be given a period of ninety days to complete the application. Upon fulfillment of the formal examination, the publication fees must be paid within three months of the official notification date and the application is submitted to the competent authority for substantial examination.

Type of claims: process and product claims are acceptable. When a patent is granted for a process, any product made directly by such a process is also protected.

Amendments: it is possible to make a voluntary amendment providing that the proposed amendments shall not introduce an essential matter not disclosed in the original application.

Divisional patent application: provided for. A divisional application should be filed before the issuance of the final decision against the original application, whether allowance or rejection.

Objections of the Office: any objection raised by the Patent Office shall be reported in official Office action and a response should be filed before the lapse of three months from the Office action’s issuance date.

Secrecy: the Saudi Patent Office publishes the granted patents only, and the pending applications are confidential.

Publication: the patent applications are published within eighteen months of the filing date. The decisions of granting patents are also published in the Official Gazette.

Opposition: any interested party may appeal against a decision within three months as from the date of publication of the grant decision and demand total or partial revocations.

Granting

Beginning of protection: if it is found through substantial examination that an invention fulfills the prescribed conditions, the patent is granted, with protection validity as from the local filing date or from the priority date (if claimed).

Delivery of document: the Letters Patent is issued in electronic format.

Duration of protection: a patent is valid for twenty years from the application filing date.

Annuities: have to be paid, starting from the year following the application filing date. The fees are payable within the first three months of each year (January through March) regardless of the filing or priority date.

Annuity grace period: a late payment with fine is allowed within another three months ending on June 30 of each year.

Amendment of issued patents: are limited to the bibliographical page only.

Inventor’s rights: naming the inventor is compulsory, and the rights to a patent belong solely to the inventor; such rights can be assigned with or without consideration.

Employee’s rights: the ownership of a patent belongs to the employer if the invention is made in execution of a contract or a commitment for the execution of inventive efforts or if the employer proves that the inventor would not have achieved such an invention had he not used the facilities, means or information made available by the employer. The employee has the right to receive a remuneration to be agreed upon either amicably or to be assessed by a committee in the light of the various circumstances of the employment contract and the economic significance of the invention. Any particular agreement that prevents such rights from the employee is invalid. Also, the preceding provisions apply to the employees of government departments. A patent application submitted by the employee-inventor within two years following the termination of his services is deemed made during his service.

Marking: legally not required.

Working requirements: the patentee has to exploit the invention covered by the patent on a sufficient industrial scale in the country within four years from the filing date or three years from the date of grant, whichever expires later. (see: “Compulsory license” below).

Modification of Protection after Registration

Rights of prior user: despite the grant of a patent, an establishment that, in good faith, manufactures, uses an industrial manufacturing process of a product, or makes serious preparations therefor, before the filing date of an application by another person, or before the priority date of the application pertaining to the same product or process, shall have the right to continue such acts. Assignment or transfer of the said right is only permitted with the other elements of the establishment.

Assignment: possible. The assignment must be made in writing and duly notarized and legalized by the competent authority. It should be recorded and published in the Bulletin.

License: possible; must be registered.

Multiple licensing: the granting of a license does not prevent the patentee from utilizing the patent or from granting a license on the same patent to another person, unless otherwise restricted in the original license agreement. The licensee may not assign the rights and privileges conferred on him unless such right is expressly stipulated in the license agreement.

Compulsory license: if a patent has not been exploited on a sufficient scale in the country within four years from the filing date or three years from the date of grant, whichever expires later, the Patent Office may grant a compulsory license for exploiting the patent to any person upon application, provided that the applicant proves his capability to exploit the patent fully. No compulsory license can be issued as long as the patented product is sufficiently available.

Patent exploitation by the government: upon the request of the competent authority, the head of the Patent Office may take a decision to have the invention exploited by a government authority in the Kingdom if the public interest requires so. The patentee will be reimbursed a fair remuneration.

Nullification: an invalidation request can be filed before the Grievance Committee.

Infringement: the patentee may sue, before the Grievance Committee (nominated to hear all disputes and appeals against decisions relating to patents), any person who exploits his invention without his consent inside the Kingdom. The exploitation of a product is embodied in the making, importing, offering for sale, or using the product as well as stocking such product for the purposes of offering it for sale, selling it or using it. Where the patent is granted in respect of a process, the patentee is entitled to the same right in respect of any product made directly by such a process.