Sunday, 27 July 2014

Without Notice Injunctions in Dubai

Part 25.1 of The Rules of the Dubai International Financial Centre Courts 2011("RDC 2011") confer wide powers on the Dubai International Financial Centre ("DIFC") courts to make "without notice" orders including search and freezing order.

A "without notice" order is an order that has been made in the absence of the person against whom it is made ("the respondent"). Such orders are made either because a matter is so urgent that the person seeking the order ("the applicant") has insufficient time to serve the respondent or because there is a danger that the respondent will frustrate justice by for example hiding or destroying evidence or removing from the court's reach or dissipating assets that could otherwise have been used to satisfy a judgment if he or she learns about them. A "search order" is a "without notice" order "requiring a party to admit another party to premises for the purpose of preserving evidence" (RDC 2011 25.1 (8)). A model search order is at Schedule B to RDC 2011 Part 25. A "freezing order" is a "without notice" order
"(a)  restraining a party from removing from the jurisdiction assets located there; or
(b)  restraining a party from dealing with any assets whether located within the jurisdiction or not."
A model of such an order is at Schedule A.   The rules and practice relating to without notice orders set out in RDCC 2011 Part 25 are based on the provisions of Part 25 of the English Civil Procedure Rules and the Part 25A Practice Direction. The model orders in Sched A and B are adapted from the model orders in the Annex to PD25A.

A search order and freezing order were made by Sir John Chadwick in GFH Capital Ltd v Haigh on 3 June 2014 and sealed on the 12th. The parties were due to return to court on the 17th June 2014 ("the return day"). I have not yet been able to ascertain what happened on the return day.

To be served with one of those orders - particularly a "search order" - is an alarming experience and one that is likely to unsettle respondents. Yet respondents have to make important decisions within a very short time. To assist parties who have been served with such orders in England I have written a step by step guide on
"What to do if you are served with a Freezing Injunction or Search Order" (20 July 2014 JD Supra). Most of the advice set out in the guide applies to Dubai as it does to England. However, legal advice and representation should be sought from one of the law firms in Part I of the Register of Practitioners of the DIFC Courts.

Should anybody wish to discuss this article or any other topic he or she can contact me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. He or she can also send me a tweet, write on my wall or contact me through G+, Linkedin or Xing.

Saturday, 26 July 2014

Information in English on Saudi Patent Law

Because of the massive and rapidly increasing importance of Asia to the world economy the European Patent Office offers a range of Asian patent information services some of which are chargeable and others of which are free. Among the free services are virtual helpdesks on a number of countries including Saudi Arabia.

The Saudi virtual helpdesk consists of a series of FAQs.  Visitors who fail to find a solution to their problems among the FAQs are invited to complete an enquiry form. Those who want more specific answers to an FAQ are invited to email the International Legal Affairs team at the EPO.  Before reading the FAQs it is perhaps worth reading my articles:  "Patents: Gulf Co-operation Council" 23 Jan 2011 and "Saudi Arabia: Overview of Intellectual Property Law" 22 May 2011.  It will be recalled that patents can be granted either for Saudi Arabia alone by the Saudi Patent Office which is in the King Abdulaziz City for Science and Technology or for all the Gulf Co-operation Council states including Saudi Arabia by the GCC Patent Office. The EPO helpdesk provides information on patents granted by the Saudi Patent Office.

The EPO's FAQs are quire comprehensive. Here are some of the bits of information that I learned from the FAQs:-
"Computer programs as such are not patentable, but may be protected by copyright. Computer-related inventions may be patentable in Saudi Arabia if the requirements for patentability are met."
"All non-residents wishing to apply for a patent require an authorised Saudi Arabian representative. Applicants have to file a power of attorney which has been duly notarised and legalised by the consulate of Saudi Arabia."
"It is not possible at present to file a provisional application in order to get an early filing date in Saudi Arabia."
"It is not possible to submit third-party observations."
"The Saudi Arabian Patent Law does not include any provisions on patent term extensions or supplementary protection certificates (SPCs).
"Within 90 days from publication of the decision to grant, any interested party may apply for partial or total revocation of the patent.

Invalidation is possible for a third party at any time after grant and must be raised before a separate governmental body (Appeals Committee)."
The Saudi Patent Office also publishes FAQs on intellectual property, patents, industrial designs, plant varieties and integrated circuits and statistics on patents, designs and plant varieties.

Should anybody wish to discuss this article or any other topic he or she can contact me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. He or she can also send me a tweet, write on my wall or contact me through G+, Linkedin or Xing.

Monday, 14 July 2014

Saudi Arabia - Riyadh Workshop to train Advisers to Saudi SME on Effective Intellectual Asset Management

Between the 16 and 18 Sept 2014 a training workshop will take place in Riyadh on effective intellectual asset management for small and medium enterprises ("SME"). It will be organized by the World Intellectual Property Organization (the UN specialist agency for intellectual property ("IP")) in conjunction with the Standing Committee on Intellectual Property of the Ministry of Commerce and Industry of Saudi Arabia,

The importance of IP to SME is explained on the front page of the WIPO portal on SME:
"Regardless of what product your enterprise makes or what service it provides, it is likely that it is regularly using and creating a great deal of intellectual property. This being the case, you should systematically consider the steps required for protecting, managing and enforcing it, so as to get the best possible commercial results from its ownership. If you are using intellectual property that belongs to others, then you should consider buying it or acquiring the rights to use it by taking a license in order to avoid a dispute and consequent expensive litigation.

Almost every SME has a trade name or one or more trademarks and should consider protecting them. Most SMEs will have valuable confidential business information, from customers' lists to sales tactics that they may wish to protect. A large number would have developed creative original designs. Many would have produced, or assisted in the publication, dissemination or retailing of a copyrighted work. Some may have invented or improved a product or service.
In all such cases, your SME should consider how best to use the IP system to its own benefit. Remember that IP may assist your SME in almost every aspect of your business development and competitive strategy: from product development to product design, from service delivery to marketing, and from raising financial resources to exporting or expanding your business abroad through licensing or franchising."
The development of an understanding of IP by Saudi SME will be vital for the growth and diversification of the economy of that country. The object of the workshop is to train those who will train Saudi businesses in effective intellectual asset management.

The course will be delivered in English and a provisional programme has already been published which may be downloaded from the WIPO website.  After an introduction to WIPO by Siyoung Park of WIPO's SME section and an overview of IP and the role of effective intellectual asset management in enhancing SME competitiveness there will be talks on trade marks, designs, patents and utility models, copyright and confidentiality by Prof. Al-Khoury of La Sagesse University in Lebanon, Prof Damodaran of the Indian Institute of Management and Mr Park on the 16 Sept.  The next day there will be discussions and exercises on shaping IP strategy, IP in the digital economy and in international business, licensing and other matters. The speakers will be joined by the chair of the Standing Committee on IP who will outline IP Law and administration and IP support services for SMEs in Saudi Arabia.  On the last day there will be talks on accounting and valuation of intellectual assets, IP audits and due diligence and an overview of the role of SME in the Saudi economy by a speaker to be arranged.  After round table discussions which will include a view of IP support in Brunei there will be a short open book written test for the participants.

This seems a useful introduction to IP which could well be emulated even in advanced countries such as the UK where the difficulties of SME in obtaining relevant and comprehensive advice on IP were highlighted by Prof Hargreaves in his report in May 2011.

Tuesday, 22 April 2014

World Intellectual Property Day in the Gulf

On 26 April 1970 the Convention Establishing the World Intellectual Property Organization came into force. The anniversary of that event is celebrated throughout the world as World Intellectual Property Day. A different theme is selected for the event each year. This year it is "The Movies - A Global Passion."

The WIPO enters details of the celebrations on a special Facebook page. So far the WIPO appears to be aware of three events in the GCC region:

Should any other events in the region to mark World Intellectual Property Day appear on the WIPO Facebook page between now and Saturday I shall mention them here.

None of those events relates to film which may be explained by the fact that film making and distribution in the GCC countries is quite small. According to Wikepedia there are no cinemas at all in Saudi Arabia though films are seen in that country on television, over the internet and on DVD and at least one Saudi film has been made though it was shot abroad and the lead female actor was Jordanian (see Cinema of Saudi Arabia). Kuwait seems to be the only state in the region with a highly developed film industry and local cinemas (see cinema of Kuwait) and the industry is growing in the United Arab Emirates (see Cinema of the UAE). Initiatives like the incentives offered by the Abu Dhabi Film Commission upon which I reported in 
Abu Dhabi: An Offer to Film Makers that will be hard to refuse 31 May 2012 should certainly help.

World Intellectual Property Day falls on a Saturday this year so it is difficult to mark the day. Over the next few weeks or so I shall be writing about copyright and rights in performances, the intellectual property rights that protect film makers, distributors and actors, as my contribution to the day. In the meantime, as the greeting "Happy World Intellectual Property Day" is something of a mouthful I wish all my readers around the world a good weekend (whether they celebrate it on Friday and Saturday or Saturday and Sunday). I hope they take in some of their local events to mark World IP day and that at the very least that they get to see a good movie or some other show.

Saturday, 5 April 2014

Intellectual Property and its Role in Economic Development, Kuwait 30-31 March 2014

On the 30 and 31 March 2014 a conference and exhibition on Intellectual Property and its Role in Economic Development at the Kuwait Marriott. The event was organized by the Ministry of Commerce and Industry of Kuwait in collaboration with the University and the Gulf Co-operation Council.

The event's objective was
"to activate the community partnership between the official bodies concerned with intellectual property and private sector business represented by the owners of the trademarks authorized in the local market and regional and international experts concerned with the implementation of IPRs laws highlighting the importance of providing adequate protection to the production and services companies, as well as safeguarding human health, safety and environment from the damages resulting from trading in counterfeited goods and their impacts on countries' economies."
The organizers set out to achieve those objectives by
  • promoting avenues for activating the role of the intellectual property in economic development;
  • encouraging and motivating inventors and individuals with creative thoughts;
  • highlighting the official efforts exerted by the State of Kuwait in enacting IP regulatory laws and legislations and implementation thereof;
  • highlighting the damages caused by counterfeited trade marks and raising consumers' awareness of such damages;
  • exchanging expertise and experiences of the GCC States, the other Arab countries and international organizations.
Four topics were discussed:
  • counterfeit trade marks, their damage to the national economy and how to combat and control them;
  • the economic and industrial importance of patents;
  • Kuwait's national IP legislation; and
  • the role of chambers of commerce and other private sector organizations in suppressing counterfeiting.
Speakers included the Kuwaiti Deputy Prime Minister and Minister of Commerce and Industry, the GCC Secretary General, the Assistant Undersecretary for International Trade and Intellectual Property Affairs in Kuwait, the Dean of the Law Faculty of Kuwait University and the Chair of the Intellectual Property Training Centre.

Friday, 7 February 2014

Middlesex University's Dubai Campus

One of the members of the audience at the Arab-British Chamber of Commerce seminar on combating IP crime on the 12 Dec 2013 was Dr. Elvira Domínguez-Redondo of Middlesex University. Dr. Dominquez-Redondo invited me to give a talk on IP to some of her LLM and LLB students on 3 Feb 2014 an you will find a report of my talk and subsequent discussions with the Dean of the Law School in "Working With Middlesex" 7 Feb 2014 London IP.

In addition to its main campus in London Middlesex University has campuses in Dubai, Malta and Mauritius. The Dubai campus is located in the Dubai Knowledge Village which is "the world’s only free zone area dedicated to human resource management and learning excellence." The  campus offers a variety of courses for undergraduates and graduate students and a variety of services for local businesses through the Centre for Innovation in Management.

Although those courses do not yet include law there may still be ways in which we can help. Anything that we may accomplish in Hendon could be replicated at the other Middlesex University campuses. The Dubai International Financial Centre has its own English speaking common law legal system and the recent extension of the jurisdiction of the DIFC courts should facilitate licensing and other knowledge and technology transfer transactions (see "DIFC Courts Spread Their Wings" 7 Dec 2011 and "DIFC Courts: Choice of Jurisdiction Clauses" 28 Dec 2012).

Should anybody wish to discuss this article, my slides or any other topic he or she can contact me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. He or she can also send me a tweet, write on my wall or contact me through G+, Linkedin or Xing.

Friday, 13 December 2013

Arab-British Chamber of Commerce International Intellectual Property Conference "Combating Transnational Intellectual Property Crime"

Yesterday I was one of the speakers at the Intellectual Property Conference on "Combating Transnational Intellectual Property Crime" which was held at The Langham Hotel in London. The conference was chaired by The Rt. Hon. Baroness Symons of Vernham Dean who had been Minister for the Middle East, Minister for International Trade and Minister for Defence Procurement, and the Prime Minister’s envoy to the Gulf in the last Labour Government in the United Kingdom.  She is now Chair of the Arab-British Chamber of Commerce.

Lady Symons introduced Dr Muhammed bin Abdul-Kareem Al-Issa and Dr Bassam Al-Talhouni, the Ministers of Justice of Saudi Arabia and Jordan, and Lord McNally, Minister of State for Justice in England and Wales.  All three ministers fulminated against counterfeiting and piracy (though none of them actually defined those terms) and outlined some of the measures that they had taken in their respective jurisdictions to suppress those activities. The Minister from Jordan was the most specific and he was able to report a fall in reported instances which Lady Symons noted.  Lord McNally spoke about cyber security. Each of those ministers was presented with a "certificate of appreciation" after their presentations. Lord McNally remarked that he felt like the Tin Man in the Wizard of Oz  as he and Lady Symons solemnly displayed the certificate for the cameras.

The next session "Strategic Dialogue on Changing Public Perceptions on Counterfeiting and Intellectual Property Theft" was chaired by Miss. Cherie Booth QC of Matrix Chambers and Omnia Strategy LLP who is perhaps better known as Mrs. Tony Blair. Miss Booth hinted at the temptations in a typical household to download pirated music and buy fake handbags. She spoke of the cost of intellectual property infringement globally and the need to change public behaviour in the way that speed cameras had forced motorists to drive more slowly.

Miss Booth introduced two speakers from Saudi Arabia, Sheikh Nasser Bin Ibrahium Al Mohammed, Head of Judicial Inspection and Member of the Supreme Judicial Council, and Sheikh Ibrahim Bin Abdel Aziz Al Ghossn, President of the National Committee of Lawyers.  Sheikh Al Mohammed gave the most moderate presentation up to that point observing that developing countries can be expected to do only so much in enforcing intellectual property rights and that more should be done by developed countries. He also castigated greedy rights holders as well as greedy infringers. Interestingly he seemed to suggest that an owner of any kind of property who failed to take care of it had only himself to blame and that the need to eat was a partial defence or at least a strong mitigating factor in Saudi law. Even though he is president of a body which presumably includes defendants as well as claimants' lawyers, Sheikh Al Ghossn was implacable in his condemnation of pirates and counterfeiters.  He argued that IP infringement was not just a wrong or even a crime but a sin in Islam.

Perhaps the most interesting speaker of the whole conference was Mr Adil El Maliki who is Director General of OMPIC (Office Marocain de la Propriété Industrielle et Commerciale) the Moroccan intellectual property office. He outlined the comprehensive intellectual property legislation that Morocco had enacted and the treaties to which it had acceded.  He quoted statistics to show that Moroccans were applying for more patents and trade marks which he attributed to those measures.

The last speaker of this session was Mr Robert Bond of Speechly Birham who had been very kind to us when I set up NIPC in 1997 and he was at Hobson Audley. He urged co-operation between rights owners, individuals and businesses in safeguarding intellectual property rights. Public awareness of the importance of intellectual property had to be raised - even in law firms. In that regard he told an alarming story about how an internee was about to post details of a confidential meeting onto Facebook before someone twigged what she was up to and intervened.

There was time for three questions. A barrister who was clearly interested in theology asked Sheikh Al Ghossn exactly what sort of sin was constituted by infringement. Being a Quaker and not a Muslim I must confess that I did not quite understand either the question or answer. I pointed out that IP rights confer monopolies which are not necessarily a good thing. "And your question?" interjected Miss. Booth. "My question is how does Saudi and Moroccan law deal with abuses of such monopolies which can arise either because the rights should never have been granted in the first place or they are used to suppress legitimate competition?" It was clear from the very brief reply that I had not put my question with sufficient clarity.

The last session was "Coordinating Law Enforcement, Government and Business Institutions Actions against Counterfeiters."  Viscount Younger of Leckie, Parliamentary Under Secretary of State for Intellectual Property, summarized comprehensively the measures that had been taken by trading standards officers, the police and the IPO to suppress IP crime. He also announced that he would call a conference on IP enforcement in London shortly,  Before the session I had a brief chat with Lord Younger about St Andrews, where we were both students, and my objection and that of the Intellectual Property Bar Association, Sir Robin Jacob and other leading academics, the IP Federation and just about everybody to criminalizing registered design infringement which I set out in more detail in  my article on the Intellectual Property Bill in my NIPC law blog of the 28 May 2013.

There was a short and in parts amusing presentation from Mr Majed bin Mohammed bin Garoub who is Secretary General of the Union of Lawyers in the GCC Countries about enforcement in those countries. He explained that he acts for a lot of claimants and he is so diligent in pursuing infringers that he has a name for it.

Our chair, Mr Mike Pullen of DLA Piper, developed Lord McNally's observations on cyber security and data protection. Although an expert on competition law with experience of some leading cases he said very little on the subject which was a pity because he would have had a lot to say on the abuse of dominant positions, contracts in restraint of trade and concerted practices.

David Meldrum, a partner of D Young & Co, spoke of the research and development work that was taking place in such places as the free zones of Dubai like Internet City and the Qatar Science and Technology Park.  Inventors and creatives in those places would require a lot of advice on protecting their intellectual assets which is why his firm had opened an office in Dubai.

Eventually it was my turn and to my great horror no slides appeared.  Inwardly panicking I said the first thing that came into my head which was a weak joke that nobody was likely to counterfeit my CHF71 Swatch watch. I think I made that quip because someone had speculated that there were probably a lot of fake Rolexes in the room. For the next 10 minutes I ad libbed and I hope that I said something sensible in  that time. The presentation that I had intended to give is above.

I was more comfortable dealing with questions. Through my experience of running inventors' clubs and IP clinics and having participated briefly in one of the sessions on the implementation of Sir Richard Lambert's review on business and university co-operation I was able to field a question on ownership of graduate students and academics' inventions.  Pertinently Mr Mohammed bin Garoub pointed out that not all academic work leads to patentable inventions.  I also answered a question on remedies against states pointing out that in addition to the dispute settlement procedures under the WTO agreement nationals of countries that were party to bilateral investment treaties might have the option of claiming compensation at the International Centre for the Settlement of Investment Disputes (see "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection"  27 July 2013 NIPC Law and "The UAE's Bilateral Investment Treaties" 28 July 2013).

We then broke for lunch during which time I met some remarkable people including Irina Bragin who supplies lovely handbags made out of carpets and one of the first ladies to be called to the Saudi Arabia bar. Having written recently about the topic in "Saudi Women can now practise Law" 14 Oct 2013 I was delighted to meet her. I told her how good it was to see her country's athletes at the London Olympics and how womankind around the world (and no doubt most men) will rejoice when our Saudi sisters are allowed to drive.

It was a very good meeting and I thank the Arab-British Chamber of Commerce for the invitation to speak. Should anybody wish to discuss this article, my slides or any other topic he or she can contact me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. He or she can also send me a tweet, write on my wall or contact me through G+, Linkedin or Xing.