SAUDI ARABIA Law and Practice Contributed by: Saud Alromi, Mostafa Ihab, Mohamed Ramadan and Saleh Albadry, Mohammed AlDhabaan & Partners Eversheds Sutherland
Mohammed Al Dhabaan & Partners Eversheds Sutherland Offices No 9-10-11 Home Offices PO Box 245555
Riyadh 11312 Saudi Arabia
Tel: +966 11 277 9800 Fax: +966 11 281 6611 Email: DAPESprojects@aldhabaan-es.com Web: www.aldhabaan-es.com
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action Infringement Actions In an action for patent infringement in Saudi Arabia, the primary parties involved are: • the patentee – the owner of the patent who holds the exclusive rights to the invention; and • the alleged infringer – the party accused of infring ‑ ing the patent rights. If a patent is co-owned, each co-owner has the right to use the patent independently. However, co-owners must agree to bring an infringement action jointly. An exclusive licensee, who has been granted the exclu ‑ sive rights to use the patent within a specific territory or field, can bring an infringement action. The licence must be registered with the Saudi Arabian Authority for Intellectual Property (SAIP) to be enforceable. Generally speaking, non-exclusive licensees do not have the standing to bring an infringement action unless explicitly granted this right in the licence agree ‑ ment. If the patentee does not consent to being a claimant/plaintiff, they must be joined as a defendant in the action brought by an exclusive licensee. Nullity/Revocation Actions To file a nullity/revocation action, the plaintiff must have legitimate interest. This typically applies to:
• alleged infringers – parties accused of infringement who seek to invalidate the patent as a defence; and • other interested parties – any party that can demonstrate a direct and legitimate interest in the invalidation of the patent. The SAIP can provide opinions on infringement. How ‑ ever, these opinions are not binding and serve as guid ‑ ance. Actions for revocation can be brought before the Committee for Reviewing Patent Disputes, which has the authority to issue binding decisions. 1.2 Defendants/Other Parties to an Action The parties who are usually sued in infringement actions are: • manufacturers – they are often the primary target in infringement cases due to their role in producing the patented product; • suppliers and importers – they can be sued for distributing or importing infringing products; and • local distributors/wholesalers – they are frequently involved in the supply chain and can be held liable for selling infringing products. Revocation actions are usually filed against patentees. In Saudi Arabia, healthcare regulatory authorities and intellectual property offices are not required to be noti ‑ fied of or given an option to join infringement and nul ‑ lity proceedings. However, the SAIP will be notified,
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