Decoding Cabinet Decision No 112 of 2023: Understanding the Latest Fee Adjustments for Patent Applications in the UAE

The recent amendments to service fees, introduced by Cabinet Decision No 112 of 2023 and published in the UAE Gazette 763 on 15 November 2023, are set to reshape the landscape of patent applications and utility model registration in the United Arab Emirates. Scheduled to take effect on 15 January 2024, two months from the date of publication, these changes mark a significant evolution in the intellectual property domain.

The main features of these fee adjustments are:

1. Substantive Examination Based on Claim Categories:

A notable change is the restructuring of substantive examination fees based on the number of claims. Divided into three categories (1-10 claims, 11-30 claims, and 31-50 claims), this approach aims to streamline the examination process, setting a maximum limit of 50 claims per application.

2. Fees Based on Applicant Status:

The fees are now classified according to the applicant’s status, categorizing them into four groups: natural persons, companies, academic institutions, and small and medium enterprises (SMEs). This differentiation ensures a tailored fee structure that considers the diverse entities engaging in intellectual property services.

One surprising aspect is the continued privilege for natural persons, enjoying a 50% discount in patent filing fees at AED 1000 compared to companies. However, this advantage is balanced by substantive examination fees comparable to those of companies, e.g., AED 9,000 for 31-50 claims. In our belief, natural persons with limited resources should enjoy the same privileges all the way through the examination process similar to SMEs unless this is a strategic push for a natural person to register as an SME.

3. Introduction of Annual Maintenance Fees:

A significant addition is the introduction of annual maintenance fees (which used to be for zero dirhams), increasing every five years over the patent’s 20-year duration. This mechanism aims to ensure a continuous commitment to the upkeep of intellectual property rights.

4. Introduction of New Services:

Cabinet Decision 112/2023 also introduces fee adjustments for new services stated in the UAE Patent Law 11/2021 such as express examination, amendments of minor errors (instead of issuing a new examination report), amendments after grant, and re-examination after grant. These additions aim to enhance the flexibility and efficiency in the patent prosecution process.

5. Time Constraints for Revival of Lapsed Applications:

Lapsed patent applications can now be restored or revived only within nine months from the date of lapsing, contingent on the payment of specified fees. This time limit encourages prompt action to reinstate lapsed applications. The Cabinet Decision introduces fee adjustments for a request for restoration of an application after lapsing, which used to be free.

6. Monthly Penalties for Delay in Fee Payments:

A novel approach involves the introduction of monthly penalties for delays in the payment of fees due for any industrial property service. The penalties are capped at the equivalent of 10 months, providing a structured framework for timely compliance.

Conclusion:

In conjunction with the recent changes in the UAE Patent Law 11/2021 and its Implementing Regulations (Cabinet Decision 6/2022), the fee adjustments outlined in Cabinet Decision No 112 of 2023 represent a pivotal step towards streamlining and harmonizing patent examination and prosecution in the UAE. These changes align the UAE’s intellectual property ecosystem with international standards, fostering a conducive environment for innovation and growth in the region. As these adjustments take effect, stakeholders can anticipate a more efficient and globally competitive intellectual property framework in the United Arab Emirates.