Know your intellectual property rights
To many UAE-based business owners who have a limited knowledge of the protections afforded by intellectual property rights, Irina Heaver, managing director of AdRem Legal, explains how to use patents, copyright and trademarks as strategic business tools.
Innovation is a key element of the UAE national agenda, which is firmly set on growing its knowledge and technology based economy. However, it will not come as a surprise to anyone that innovation requires a lot of financial investment and is very labour intensive.
Start-ups, especially those that involve technology development, spend a lot of effort and resources on an innovative product or service that is somehow unique, or at least different, from anything else available on the market.
In order to maintain this competitive advantage founders have to consider how to leverage the use of intellectual property (‘IP’) rights from the outset, to be able to fully exploit the value of their creations.
A patent is an exclusive right to prevent others from making, using or selling a patented invention in the jurisdiction that granted such patent.
In the UAE patents are protected through registration with the Intellectual Property Protection Department under the Ministry of Economy (‘IPPD’), or through the GCC Patent Office of the Gulf Co-Operation Council located in Riyadh, Saudi Arabia.
To be patentable, an invention must be:
• containing an inventive step – must be non-obvious.
• able of industrial application – must be practically useful in a specific industry.
Length of protection
Patents in the UAE have a duration of 20 years from their filing date, subject to payment of renewal fees and not being annulled.
Reasons for seeking patent protection
There are a variety of reasons for seeking patent protection for an invention, such as:
• to protect a start-up’s ability to manufacture and/or sell its product or service;
• to deter others from pursuing manufacturing a similar product/services, thus inhibiting competition;
• to create additional sources of revenue through licensing;
• to add value to a start-up when raising funds from investors or at an exit.
A registered trademark gives the owner the statutory right to the exclusive use of such mark in connection with the products or services for which it is registered. It allows the end customers to distinguish the brand from its competitors and facilitates promotion of brand loyalty.
A trade mark may be in a form of a word or phrase, a picture or label, a shape or packaging, or even a colour, as long as it takes a distinctive form and is capable of distinguishing products and services from the products and services of others. The IPPD registers trademarks.
Length of protection
A trade mark registration is valid for ten years from the date of filing and can be renewed.
Copyright is a form of protection that is granted to an author of an original work, comprised of separate and independent rights such as the sole right to produce, reproduce or perform the work or any substantial portion of the work.
In order to be protected a work must be original and creative, in the literary, artistic or scientific fields and be expressed in writing, photographs or drawings. Registration is not required to obtain the protections of copyright, however, it is available through the IPPD.
Length of protection
A copyright is protected for the duration of the author’s life plus 50 years after the calendar year of his or her death and arises upon the creation of the work.
Documents required for patent application
• 2 copies of specifications, claims and an abstract of an invention in English and Arabic;
• 2 sets of formal drawings (if any) in English and Arabic;
• 1 copy of a priority application in English and Arabic (if applicable);
• 1 copy of an international search report and preliminary examination report (if available) in English and Arabic;
• If the applicant is a legal entity – legalised copy of the corporate constituent documents and a power of attorney.
• Costs can and will vary greatly depending on the case and the amount of professional support required to draft the application, respond to authorities throughout the process and deal with opposition claims brought by third parties.
• For the UAE national patent registration budget between AED 25,000 to AED 32,000.
Top ten brands
Nowadays, ‘trademarks’ or ‘brands’ are more sophisticated in design and appearance, but they perform a rather simple task – they communicate a basic message ‘I made this!’.
Brands sometimes account for a majority of a company’s assets. The value of the below top ten brands range between US$43 billion and US$178 billion:
*Interbrand Best Global Brands 2016, October 2016
Documents required for trade mark application
• name and address of the applicant, copy of the trade license, legalized power of attorney and passport copy of the person representing the company,
• soft copy of the trade mark;
• details of the products or services for which protection is sought.
Budget approximately between AED 16,500 AED to AED 19,500.
Although, strictly speaking, no marking are required, it is advisable to mark your work with the © symbol or the word “copyright” followed by year of first publication and the name of the copyright owner.
Work done by contractors / freelancers
It is extremely rare that a start-up is able to develop all of the technology required for its business in-house. Contractors and freelancers are often engaged to develop it for them. In such cases it is always a matter of a contractual arrangement as to who will own the IP rights in the newly developed technology products or services. In the absence of express contractual provisions various jurisdictions deal with IP ownership differently.
The preferred legal position for a start-up is to agree in writing from the outset that all IP rights created or arising out of the work will vest in the party that is paying for the work to be done.
What happens if IP has already been created by contractors or freelancers? Such potential rights can be transferred to you contractually.