Market growth may support expansion from a “default” Middle Eastern patent filing strategy

The Gulf Cooperation Council (GCC) countries—the United Arab Emirates, Saudi Arabia, Oman, Qatar, Kuwait, and Bahrain—reported strong economic growth in 2022. As we move through 2024, applicants identifying significant market potential in this region for their commerce are wise to consider the advantages of a modified patent filing regimen as part of the wider Middle Eastern strategy. The Middle East has seen a steady increase in patent filings, particularly in the medical science sector. However, Saudi Arabia has grown particularly rapidly in the last ten years, accounting for 5% of all Middle Eastern patent filings. The majority of Middle Eastern patents are filed as part of a default strategy with Turkey and Israel, holding the lion’s share at 40% a piece.

Additionally, relatively recent legal improvements bring options for those seeking protection for inventions. Here, we briefly consider and advise on those filing routes:

PCT -> NPE (National Phase Entry) to an individual GCC country

Each member of the GCC is now party to several treaties, which better facilitates registered IP acquisition in this part of the world – in particular, the central PCT (WIPO) system can be used to file directly in one or more of these territories 2.5 years after the original priority date of the application. Although a regional GCC office exists, that office is not a member, so protection of the GCC as a “collective” group of territories via the PCT, as permitted in other regional offices such as the EPO, remains unavailable to date. Due to crime prevention, it remains noteworthy that the legal requirements for filing in most GCC members are more onerous than the rest of the world (ROW), with mandatory translation and slightly different administrative criteria being specified amongst the GCC group offices. Several require supporting documents (Power of Attorney and Assignment) to be legalised (by consulate or apostille) after notarisation (by a notary public), although, in Saudia Arabia, minimum legal requirements are now easier to facilitate.

We advise that, if relevant, lucrative markets within the GCC are identified. Market justification should be verified before expenditure of filing and a focused NPE selection made to ensure costs can be managed effectively. It is likely that Saudi Arabia, especially if selected alone, will offer a relatively attractive option in the region given the specific market growth and modern administration system adopted. Proceeding in multiple GCC members will likely remain an expensive strategy for attaining patent assets, relative to the ROW until a reliable region entry is an option.

Priority -> GCC regional Patent Office

Direct filing to a regional “GCC patent office” within 12 months from a priority application (such as the UK) is possible. However, after a period of inactivity, this office only began accepting filings again as recently as January 2023. Despite the potential for good value geographic coverage via a streamlined filing and prosecution process, this route is riddled with uncertainty, most prominently because there remains doubt over whether such action is legally effective (and when) in all GCC members.

Once there is clarity about the regional office and proposed advantages from its use can be verified, this route may offer a useful mechanism to applicants, but we do not presently recommend it. Direct priority can be used to file into individual members, but unless there is specific reason to do so – swift grant/assertion required, for example, we recommend delaying cost and action by using the PCT route.

If you have any questions or for IP advice, please contact us at mail@stratagemipm.co.uk