In any foreign market, companies should consider several general principles for effective protection of their intellectual property. For background, link to our article on Protecting Intellectual Property and Stopfakes.gov for more resources. U.S. companies should have a comprehensive strategy for managing their intellectual property (IP) in Saudi Arabia and mitigating the risk of IP infringement. IP rights must be registered locally, under the national laws, to be legally enforceable. For example, a U.S. registered trademark or U.S. granted patent will not protect you in Saudi Arabia.
Saudi Arabia has adopted the unified Gulf Cooperation Council (GCC) Trademark Law (effective 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. The GCC Patent Law does not, however, grant GCC-wide patent protection. Patent and trademark rights in Saudi Arabia are granted on a first-to-file basis, therefore, it is essential to secure registrations before launching products or services in the market. It is vital that companies should understand that IP is 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 applicable). Companies are strongly encouraged to consult with local attorneys or IP consultants, with expertise in the Saudi IP laws. U.S. firms should work closelywith 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, located in the UAE, 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 jurisdictions, rights holders who delay enforcing their rights under the mistaken belief that the U.S. government 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 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 defined with your partner and contractually protected. Consider very carefully whether to permit your partner to register your IP rights on your behalf, as this can pose significant risks. In some cases, the partner will list itself as the IP owner and refuse to transfer ownership if the business relationship ends. It is also recommended that small and medium-sized enterprises (SMEs) understand the importance of working closely with industry associations and trade organizations, which can provide valuable resources, advocacy, and support in efforts to safeguard IP. There are several organizations, both Saudi Arabia- and U.S.-based, that can be used as resources, including 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)
In 2017, Saudi Arabia established the “Saudi Authority for Intellectual Property” (SAIP) to consolidate the country’s IP departments under one umbrella and to lead an IP national strategy including the updating of IP laws and regulations; providing IP services in a timely and high-quality manner; promoting IP awareness among all stakeholders – including inventors, creators, entrepreneurs and consumers – and the coordination of IP enforcement efforts with the other Ministries and government Departments.
Saudi Arabia was removed from the U.S. Trade Representative’s Special 301 Report Priority Watch List in April 2022, due to significant steps taken by SAIP. These measures included publishing its IP enforcement procedures; increasing enforcement actions against counterfeit and pirated goods, as well as online pirated content; establishing specialized IP enforcement courts with trained judges and expedited timelines; conducting robust IP awareness campaigns and outreach training programs; and providing support initiatives for stakeholders.
SAIP also set up a centralized committee to coordinate IP enforcement actions across multiple authorities; and trained IP specialists in 76 different authorities to improve government compliance with IP laws. Despite these positive developments, stakeholders continue to raise concerns that the Saudi Food and Drug Authority (SFDA) has granted marketing approval to domestic companies for subsequent versions of registered pharmaceutical products, without requiring the submission of data equivalent to that required from the original applicant, despite the regulatory data protection period granted to the original applicant by Saudi regulations. The United States will continue to closely monitor SFDA’s practices in this area.
IP Resources
For more information:
- Contact ITA’s Office of Standards and Intellectual Property Rights (OSIP) Director, Stevan Mitchell, at Stevan.Mitchell@trade.gov.
- To access the Saudi Arabia Investment Climate Statement, which includes information on the protection and enforcement of IP rights, visit the U.S. Department of State Investment Climate Statement website.
- For 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 the STOPFAKES website.
- To register trademarks and patents (both in the U.S. and in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199 or visit USPTO.
- To register for copyright protection in the United States, contact the U.S. Copyright Office at: 1-202-707-5959, or visit the U.S. Copyright Office website.
- 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.
- To learn more about obtaining and enforcing intellectual property rights and market-specific IP Toolkits, visit the USPTO website. The toolkits contain detailed information on protecting and enforcing IP in specific markets, as well as contact details for local IPR offices abroad and U.S. government officials available to assist SMEs.