Saudi Arabia - Protecting Intellectual Property Saudi Arabia - IPR
Several general principles are important for effective management of intellectual property (“IP”) rights in the Kingdom. 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 strongly differ than in the United States. Third, most rights must be registered in country, 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 depends on national laws, and the international IP treaties/ agreements that Saudi Arabia is a member. 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 (affective in 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 basis in Saudi Arabia. Similarly, registering trademarks is based on first-to-file. Therefore, you should consider how to obtain patent and trademark protection before introducing your products or services to the 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 should work through their local law firm and/or IP agent to protect their rights as thoroughly as possible.
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 secure and enforce their IP in a prudent and timely manner. 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 law suit. In no instance should U.S. government advice be considered as 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 competent and reputable partner is an important ally in protecting IP rights and even then your IP rights should be clearly covered with your partner. Consider very carefully 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- and U.S.-based that can be used as resources, these include but 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)
Unfortunately, some challenges do exist for U.S. companies wishing to protect and enforce their intellectual property rights. In April 2019, Saudi Arabia was included on the Priority Watch List in the United States Trade Representative Special 301 Report. The annual Special 301 Report identifies countries where concerns exist about providing adequate and effective protection and enforcement of U.S. IP rights. Saudi Arabia has stated a desire to enhance its IP regime but currently lacks the established infrastructure to do so. American firms are advised to use all precautions in this market.
In recent years, the issues of the fact that Saudi Arabia has granted marketing approvals to domestic companies to produce generic versions of pharmaceutical products in the GCC that are under patent protection in other countries. 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, of 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 the predictability of patent protection in Saudi Arabia. Concerns regarding IP enforcement are increasing, including 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 the 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 an IP national strategy, updating the 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.
IP Resources
A wealth of information on protecting IP is available to U.S. rights holders. Some 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, enforce intellectual property rights, and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website at http://www.stopfakes.gov/resources.
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
Email: Peter.Mehravari@trade.gov