Provides advice on IPR protection, including information on the registration of patents and trademarks.
Several general principles are important for effective management of intellectual property (“IP”) rights in the Kingdom of Saudi Arabia. First, it is important to have an overall strategy to protect your IP rights. Second, the availability of IP rights and their scope of protection may be different in Saudi Arabia than in the United States. Third, most rights must be registered in Saudi Arabia, under local laws, in order to be enforced. For example, a U.S. trademark registration or U.S. patent will not protect you in Saudi Arabia. Protection against unauthorized use of copyrights in Saudi Arabia depends on its national laws, and the international IP treaties/ agreements that Saudi Arabia is a member in. However, most countries do offer copyright protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions.
Most recently, Saudi Arabia adopted the unified Gulf Cooperation Council (GCC) Trademark Law (effective from September 2016), and is also a member of the GCC Patent Law and GCC Customs Law which helps to harmonize IP practices in Saudi Arabia, Kuwait, Qatar, Oman, Bahrain and the United Arab Emirates. Patent registration is granted on a first-to-file in Saudi Arabia. Similarly, registering trademarks is based on a first-to-file. Therefore, you should consider how to obtain patent and trademark protection before introducing your products or services to the Saudi Arabia market.
It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government cannot claim rights on behalf of private individuals in Saudi Arabia. It is the responsibility of the rights’ holders to register, protect, and enforce their rights (where relevant), retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in the Saudi Arabia Intellectual Property laws. American firms that wish to sell products in Saudi Arabia should work through their local law firm and/or IP agent to protect their rights.
The U.S. Commercial Service, as well as the regional U.S. IP attaché office can provide a list of local lawyers upon request. While the U.S. government stands ready to assist, there is little that can be done if the rights holders have not taken the fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights in a mistaken belief that the USG can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. government advice be a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider very carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are several organizations, both Saudi Arabia or U.S.-based, that can be tapped as a resource; these include but are not limited to:
The U.S. Chamber and local American Chambers of Commerce
National Association of Manufacturers (NAM)
International Intellectual Property Alliance (IIPA)
International Trademark Association (INTA)
The Coalition Against Counterfeiting and Piracy
International Anti-Counterfeiting Coalition (IACC)
Pharmaceutical Research and Manufacturers of America (PhRMA)
Biotechnology Industry Organization (BIO)
Challenges do exist for U.S. companies wishing to protect and enforce their intellectual property rights. In April 2018, Saudi Arabia was included on the Watch List in the United States Trade Representative Special 301 Report. The annual Special 301 Report identifies countries where concerns exist with regard to providing adequate and effective protection and enforcement of U.S. IP rights.
In recent years, Saudi Arabia has granted marketing approvals to domestic companies to produce generic versions of pharmaceutical products that are under patent protection either in Saudi Arabia or in the GCC. These approvals have been granted based on innovators’ data that is still covered under Saudi Arabia’s system for protecting against the unfair commercial use, as well as the unauthorized disclosure, or undisclosed test or other data generated to obtain marketing approval. These approvals, which may conflict with Saudi Arabia’s domestic law, raise significant questions about the transparency of marketing approvals and predictability of patent protection in Saudi Arabia. Concerns regarding IP enforcement are increasing, including related to difficulty in obtaining information on the status of enforcement actions and investigations, and the lack of seizure and destruction of counterfeit goods. The continued use of unlicensed software by the government, along with the limited number of and training for copyright inspectors, are outstanding concerns.
Saudi Arabia has recently established a new “Saudi Authority for Intellectual Property” (SAIP), which will consolidate all the different IP departments under one umbrella. The intention of this newly established authority is to lead the Saudi Arabia IP national strategy, updating the IP rules and regulations, providing the IP products and services in a timely and high-quality manner, increasing IP awareness for all stakeholders, including inventors, creators, entrepreneurs and consumers; and coordinating IP enforcement efforts with the other Ministries and Departments.
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
For information about patent, trademark, or copyright issues — including enforcement issues in the U.S. and other countries — call the STOP! Hotline: 1-866-999-HALT or visit www.STOPfakes.gov.
For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199, or visit www.uspto.gov.
For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office at: 1-202-707-5959, or visit http://www.copyright.gov/.
For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website at https://www.stopfakes.gov/business-guide-to-intellectual-property-rights.
For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: www.stopfakes.gov/businesss-tools/country- ipr-toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
The U.S. Department of Commerce has positioned IP attachés in key markets around the world. The IP attaché for the Middle East region is based at the U.S. Embassy in Kuwait and can be contacted at the following address:
Mr. Peter Mehravari
Intellectual Property Attaché for the Middle East & North Africa
Embassy of the United States P. O. Box 77
Safat 13001, Kuwait
Office Phone: +965 2259 1455