Amendments to Patent Regulations in Saudi Arabia

March 2016

The Saudi Arabian Patent Office has issued amended Implementing Regulations to the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Design.  The Implementing Regulations came into effect on 19 December 2015, and they include a number of significant changes including:

•     Annuity fees are to be calculated from PCT filing date, rather than national phase entry date:

 Article 65 of the amended Implementing Regulations states that:

"Upon the designation of the Kingdom of Saudi Arabia for protection and after the application reaches the National Phase, an annual fee shall be payable for the applications as from the international filing date and the applicant must pay the said fee for the previous years on the maturity date of the first fee. In case the applicant failed to pay the same within the prescribed deadline, a doubled annual fee shall be payable for all the payable years."

In practice, this means that all back dated annuities must be paid on the maturity date, which is taken as 1 January of each calendar year.  Outstanding fees should be paid prior to 31 March 2016 in order to avoid late penalties.

If the fees are not paid by 31 March 2016, there is a grace period until 30 June 2016 to pay the fees with penalties.

Moving forward, for all new PCT national phase filings, the back-dated annuity fees will be due from the next calendar year of filing the National Phase application.

 

•     The deadline for submitting supporting documents to patent applications is reduced from 90 days to 60 days (however, extensions are available):

All supporting documents (Power of Attorney and Deed of Assignment) must now be filed within 60 days of the date of filing.  However, all deadlines (excluding annuity fees) can now be extended by two months upon payment of an official fee. In effect, this extends the original 90 days to 120 days (upon payment of the applicable fee).

 

•     Lapsed patents may now be restored:

The amended Implementing Regulations allow for lapsed patents to be restored if there are "compelling reasons" as to why the applicable deadline was missed and / or the lapse of the patent was outside of the applicant's control.  The restoration action must be filed within 2 months of the lapsed deadline, or within 12 months of the date of refusal (whichever is the earlier).

 

•     Period for claiming priority extended:

Applicants may now add or amend a priority claim within 2 months of the expiry of the 12 months priority period (i.e. a total of 14 months from the priority founding date). The applicant must pay the required official fees and provide reasons as to why the priority claim was not added / supported / correct at the time of filing. 

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