Thursday, 5 May 2016

Saudi - amended Implementing Regulations for the Law for Patents relating to PCT applications

Following earlier reports (here and here) of the accession of Saudi Arabia to the PCT, news from good friends SMAS, Saba, and AGIP of the amendments to the implementing regulations relating to the implementation of the PCT in Saudi.

SMAS report in a circular sent by email in January 2016 that:

"King Abdulaziz City for Science and Technology (The Saudi patent office ) has issued the amended Implementing Regulations of the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs, the Regulations included new provisions regarding patent applications filed under the PCT scheme. This came in line with accession of Saudi Arabia to the PCT. The major amendments could be outlined as follows:

  • The Saudi patent office became receiving office of international PCT applications.
  • The Patent Office shall consider the international filing date of the PCT application as the date of filing the national phase application. 
  • The annuity fees for national phase applications shall be based on the international filing date of the PCT application starting from the 1st annuity and shall be paid at the beginning of each Calendar year, starting with the year following the filing of the international application, where the said fees are paid , together with accumulated annuity fees.
  • All the formal requirements, including the legalized Power of Attorney, Deed Of Assignment and Priority documents, shall be fulfilled within 60 days from the filing date.
  • Correction of priority claim or addition of priority is possible through request submitted to the Patent Office provided that the conditions pertinent thereto, as stipulated by the Regulations, are fulfilled and the prescribed fees are paid .
  • Restoration of patent application which was rejected or abandoned due to reasons beyond applicant will, is possible through request submitted to the Patent Office provided the conditions pertinent thereto as detailed by Regulations are fulfilled and the prescribed fees are paid. 
  • In case applicant has not been able to comply with the request(s) of the Patent Office within the specified grace period it would be possible to request further two months extension prior to expiry of initial deadline provided the conditions pertinent thereto are fulfilled and the prescribed fees are paid . Annuity fees are exempted from such extension and should be paid within the prescribed grace period.
  • Multiple design applications are not acceptable in Saudi Arabia , and a design application should not incorporate more than 7 drawings.
The aforesaid new Implementing Regulations are effective as of 19 December 2015.

Should you need any assistance and/or information in respect of the above matter, please do not hesitate to contact us at"

Saba's February newsletter (here) contained this report:

"Saudi Arabia recently published new Implementing Regulations of the Patent Law to include provisions concerning the national stage entry of PCT patent applications. These regulations entered into force starting December 19, 2015.

Revisions to the Implementing Regulations include the possibility of requesting extensions of time during prosecution, and the possibility to restore abandoned or canceled patent applications.

According to the new regulations, the international filing date will be the filing date of a PCT national entry and the base year for calculating annuities. Annuity fees for applications will still be due between January 1 and March 31 of each year, starting with the first payment that will include any back payments the year following the entry date. The usual grace period with a late fee will still apply through June 30 of the same year.

Should you have any questions, or require any additional information, please contact us at"

AGIP's January newsletter contained this report:

"The Patent office has implemented a new calculation of PCT National Phase annuity years as from January 1, 2016. The new calculation stipulates that the annuity year starts from the international filing date of the corresponding PCT application.

According to the Patent Office, all pending annuities are due for payment during the period from January 1st till March 31st, 2016.

The patent term of the Saudi Patents through PCT applications is 20 years calculated from the international filing date."

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