WORLD TRADE
ORGANIZATIONIP/C/W/291/Add. 3
24 June 2002
(02-3461)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from the United Arab Emirates to questions posed by the European Communities and their
member States, Switzerland and the United States
Addendum
By means of a communication from the Permanent Mission of the United Arab Emirates
received on 18 June 2002, the Secretariat has received the following responses to questions posed by
the European Communities and their member States, Switzerland and the United States, as circulatedin documents IP/C/W/274, 263, 268 and 268/Add.2, respec tively, together with responses to follow-
up questions posed by Switzerland, as circ ulated in document IP/C/W/263/Add.1.
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EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
D. G
EOGRAPHICAL INDICATIONS
18. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in
your jurisdiction. Please provide examples of the use of the exceptions by courts or lists of
names considered as generic in your jurisdiction.
Article 3 of the trademarks Law includes among marks which may not be validly registered
marks that are composed merely of the appellation commonly used for goods, products, services,
familiar drawings of ordinary pictures of goods and services.
E. I NDUSTRIAL DESIGNS
37. Please explain how your legislation provide s for the enhanced patent protection of
patents or patent applications pending on 1 January 1995.
Article 66 of the Patent and Designs Law states that the inventions dealing with the chemistry
of drugs or pharmaceutical compounds shall be protected by letters patents or utility certificates ifthey meet the conditions provided for in this law and its implementing regulations as of 1 January
2002.  The same Article provides that the Administration shall continue to receive the patent
applications for pharmaceutical and agricultural chemical products and register them. The applicant
shall have the right of exclusive marketing for the invention in pursuance of Article 70 of the TRIPS
Agreement.
The pending patent applications are, thus, deal ing with in full conformity with Article 70
paragraph 8 of the TRIPS Agreement.  The Ministry of Finance and Industry, since the entry into
force of the Agreement for the UAE, had open a Register in which patents applications for inventionsIP/C/W/291/Add. 3
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concerning pharmaceutical and agricultural chemical products can be filed and enjoyed all rights
stipulated in Article 70 paragraph 8 of the TRIPS Agreement.
G. L AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
42. Please explain how your legislation provi des for the derogation from Article 36 as
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonablegrounds to know when acquiring an integrated circuit or an article incorporating such an
integrated circuit that it contains an unlawful topography.
The Copyrights and Neighboring rights does not provide for clear provisions to deal with
such situations.  However, the principles of the Code  Civil, which is considered to be the cornerstone
of the legal system in the UAE and constitutes a basic reference for the judicial system, could be used
in such situations.
46. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
The Patent and designs Law defines in its Article (1) know-how as follows:
“The information, data or knowledge as a result of acquired expertise in the applicable,
technical, or professional field”.
The Bylaw of the Patent Law as well as the annexes of the 1985 Ministerial Decision No. 870
adopted by the Minister of Health provide for more detailed explanation.  Copies of this regulations
and administrative notes can be provided if requested.
54. Please quote what provisions of your legislation authorize  judges to indemnify a
defendant in the event of abuse by the plaintiff.
Article 59 of the Patent and Designs Law states that the applicant of the precautionary seizure
should deposit a bail evaluated by the court prior to issuing its order for seizure and the seizer should
file the relevant action within eight days as from the date of the issuance of the court’s order
otherwise the matter shall be deemed null and void.
 Moreover, it is permissible for the attached person to file an action for compensation within
sixty days as from the date of the termination of the previous term or from the date of issuing the final
decision of refusing the relevant action, which the seizor preferred.
 Furthermore, it isn’t permissible to cash the bail referred thereto except after the issuance of a
final decision in the seizor’s action or the claim of compensation which the attached person filed.
Also the Trademarks Law provides in its Arti cle 43 for provision aimed at indemnifying the
defendant through a judicial decision.
59. Please indicate whether or not your legislation provides for a de minimis  import
exception.
There is no indication in the three intellectual property federal laws of the  de minimis  imports
exception.IP/C/W/291/Add. 3
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SWITZERLAND
A. P ATENTS
Ad response to question 4:4. Please explain how your legislation implements the conditions set out in Article 31 (a) to
(l) of the TRIPS Agreement. Please cite the relevant provisions of your law.
Articles 23-24-25 of the Patent and Design s Law as recently amended state out that:
If the owner of a patent or a utility certificate have not used the invention or have used it in an
insufficient manner, any interested party may apply for a compulsory licence pursuant to the
procedures indicated in article (29) of the law herein, according to the following conditions:
- the lapse of at least three years after granting the patent;
- the applicant for licensing should prove that he exerted, within a reasonable period of
time, efforts for obtaining a licence from the patent owner with a reasonablecompensation and under reasonable commercial conditions;
- the licence shall be non-exclusive;
- the licence should be basically for the purp ose of fulfilling the demands of the local
market;
- the licensing decision should determine the scope and period of licensing pursuant to
the purpose for which it was granted;
- if the invention is related to semiconductors technology the licensing should only be
granted for public and non-commercial use or to remedy a practice determined after
Judicial or administrative process to be anti-competitive;
- the granting of a compulsory licence shall not preclude granting of other compulsory
licences.  The competent court shall decide pursuant to the request of the interestedparties, either to prevent the owner of the letters patent or the utility certificate, from
using the invention itself, or otherwise grant him other licences for using thereof;
- the competent court may not disregard the first and second item if the compulsory
licence was granted as a result of public emergency, the dire need of the public forsuch, or for public and non-commercial uses;
- a compulsory licence for exploiting the patent may be issued if the invention is
important for the public interest;
- pursuant to a decree by the Minister, a compulsory licence for exploiting the patent or
utility certificate protected invention may be issued if the invention is important forthe public interest;IP/C/W/291/Add. 3
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- the licensee shall have the right to use the civil and penal rights of the owner of the
patent or the utility certificate to protect or to use the invention if such owner hadomitted such use in spite of notifying or informing him of any illegal action;
- article 25 of the above-mentioned Law provides that if it is impossible to use an
invention protected by a patent or a utility certificate in the United Arab Emirates
without violating rights derived from a patent or a utility certificate granted by virtueof a previous application, then it is permissible to grant the owner of the letters patent
or the utility certificate a compulsory licence according to the conditions set forth in
article (28) of such law to the degree necessary to use his invention if such invention
serves industrial purposes different from such purposes related to the invention of the
former patent or utility certificate or represents a marked technical advance in relation
thereto;
- if the two inventions serve the same industrial purpose, the compulsory licence shall
be granted to the subsequent patent or utility certificate while keeping the right for the
owner of the former patent or utility certificate to obtain a licence for the subsequent
patent or utility certificate, if he applies for such;
- the two parties may also agree in writing between them and notify the Administration
of their agreement to record it in the related register.
Article 29 of the same Law states out the following:
- the application for the compulsory licence shall be submitted to the competent court
in the form of an action filed against the owner of the patent or utility certificate, andthe Administration shall be informed to arrange for the attendance of an
administration representative.  The court may grant the two parties a period of time it
determines for them to come to an agreement and it is permissible to extend the
period if the court recognizes a reason to do so.  Upon the termination of the period,
the court shall examine the application for either rejecting or granting the compulsory
licence.  If granted the court shall define the conditions and the scope thereof and
determine the compensation for the owner of the patent or the utility certificateaccording to the provision of article (23) of such act, and the judgment shall be served
to the other party and to the Administration to register it in the related register and to
be published in the official gazette after paying the fixed fee, and the judgment shall
have no impact concerning the third party except from the date of publication.
Ad response to question 7:
7. In your answer, you mention that "in defending its position, the owner of the patent
cannot introduce imported product as a valid ground. It does not present a legitimate reason for
avoiding compulsory licensing [...]".  Please confirm whether, according to your legislation,importation is considered as working the patent and satisf ies therefore the requirement of
use/exploitation of the patent.  If this should not be the case, please explain how this complies
with the obligations contained in Article 27.1 of the TRIPS Agreement, requiring patent rights
to be enjoyable without discrimination as to whether products are imported or locally
produced.
The Patent and Designs Law does not provid e for any provision aimed at discriminating
patents on the basis of the place of invention, the field of technology and whether the products are
imported or locally produced.  The approved amendment of the Article 23 of the Patent and DesignsIP/C/W/291/Add. 3
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Law doesn’t stipulate any more that the importation of the product is not considered legal justification
for the owner to avoid compulsory licence.  Theref ore, the Patent law related provisions are now in
conformity with Article 27 and 31 of the TRIPS Agreement.
B. P ROTECTION OF UNDISCLOSED INFORMATION
Ad response to question 10:
10. Referring to the issue of unfair commercial use of data submitted by an applicant to the
responsible authorities in the procedure for market authorization of a pharmaceutical or of an
agricultural chemical product, please explain in detail if your legislation explicitly prohibits a
second applicant from relying on, or from referring to the original data of the first applicant,
when applying subsequently for market authorization for his own product.  Does the
responsible State Agency require the same amount of data from the second applicant as fromthe first applicant?
The 1992 Patent and Industrial Designs law No. 44 defines in its Article 1 "know-how" as the
technical information, data or knowledge that result from professional experience and are applicable
in practice.  Article 39 states that know-how shall be protected against any unlawful use, disclosure or
communication by third parties unless it has been published or made available to the public.  The
same Article states clearly that in order to enjoy protection, the owner of the know-how shall take the
necessary steps to preserve the confidentiality of its elements.
Article 42 of the above-mentioned Law provides for a provision ensuring that a third party
will not be allowed to use disclose or communicate any element of know-how without consent of its
owner.  The same Article states that any of these acts shall be deemed an unlawful act, provided that
the person committing the act was aware of the confidential nature of the know-how or could not have
ignored such nature.
Furthermore, the Bylaws of the 1992 Patent Law (The 1993 Decision No. 11 of the
Ministerial Council) lays down procedures required to ensure the protection of know-how as well as
its contracting aspects.
As regards pharmaceutical products specifically, the Law No. 4 of 1983 related to
pharmaceutical institutions and pharmacy profession and its Bylaws provide for establishment of a
Committee in charge of pharmaceutical registration and pricing.  All the confidential informationsubmitted to it must be kept confidential, provided that it is confidential and the owner has undertaken
the necessary steps to keep it confidential.
UNITED STATES
L. S
TATISTICAL QUESTIONS
36. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated-circuit layout design, and trade secret
enforcement for 2000, including the number of cases filed; injunctions issued; infringing product
seized; infringing equipment seized; cases resolved (including settlement); and the amount of
damages awarded.
37. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringeme nt for 2000, including the number of raids,
prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fineswere paid and whether the jail term was actually served or was suspended) and any otherIP/C/W/291/Add. 3
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information establishing that criminal system oper ates effectively to deter copyright piracy and
trademark counterfeiting.
The Ministry of Information and Culture, which is responsible for copyrights, has received
during the biennium (2000-2001) 128 claims categorized as follows:
- vendors: 23 cases
- video films : 33 cases
- computer programs: 18 cases
- smart cards concerning TV broadcasting by satellite: 8 cases
- electronic games: 6 cases
In addition to the natural persons, the claimants were from various concerned parties such as
the Arab Union for Anti-Piracy, the Union of Com puter Programs Producers, International Union for
Audio products, etc.
The procedure followed in dealing with such cl aims use to start with verifying the claimed
cases by the Inspection Division in the Ministry of Information and Culture in order to ensure aminimum of certainty of the elements being claimed.  After the inspection action, coordination is
made with the police authorities in order to engage necessary raids and seizure.  The case is then
presented before the competent court.  The Ministry of Information and Culture has also the
competency to decide the closing of the establishments taking part in infringement and piracy under
the Law.
As far as the trademarks infringement is concerned, there is a few cases received in the
Ministry of Economy and Commerce to date (35 claims) since 1992, which are dealt with in the same
way explained for the Copyrights infringement.
The United Arab Emirates will provide the US delegation with further statistics very soon
regarding civil and criminal enforcement.
H. P
ROTECTION OF UNDISCLOSED INFORMATION
Follow-up question
3. Please indicate how many grants of marketing approval for unauthorized copies of
patented pharmaceutical products have been reversed  in the last five years.  Please address any
ongoing efforts to reverse marketing approva ls for unauthorized copies of patented
pharmaceutical products and to prevent any further registrations of such products .
On March 27, the UAE engage very fruitful consultations with the US officials with the aim
of exploring ways and means of enhancing protection of patented pharmaceutical.  Following these
consultations, the UAE made written commitments to provide comprehensive protection for US
pharmaceuticals including extending data exclusivity protection.  These commitments, which confirm
the UAE obligations under the TRIPS Agreement, will be implemented on an MFN basis as stipulated
by the Agreement.
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