SAUDI ARABIA Law and Practice Contributed by: Saud Alromi, Mostafa Ihab, Mohamed Ramadan and Saleh Albadry, Mohammed AlDhabaan & Partners Eversheds Sutherland
with the final decisions issued by the Committee for Reviewing Patent Disputes. 1.3 Preliminary Injunction Proceedings Preliminary Injunctions Key details In Saudi Arabia, preliminary injunctions (PIs), includ ‑ ing ex parte injunctions, are available under the Law of Commercial Courts. The key details are as follows. PIs Both ex parte and inter partes PIs are available. Ex parte injunctions can be granted without notifying the opposing party, typically in urgent situations where immediate action is necessary to prevent irreparable harm. A PI is to be decided on by the court within three working days as from the date it was filed. Practical considerations When deciding whether to grant a PI, Saudi Arabian courts consider: • balance of convenience – the court assesses whether the benefits to the plaintiff outweigh the potential harm to the defendant; • adequacy of damages – the court evaluates wheth ‑ er monetary compensation would be sufficient to remedy the plaintiff’s harm and, if not, an injunction is more likely to be granted; • validity – the court considers the likelihood of the plaintiff’s success on the merits of the case; and • urgency: the plaintiff must demonstrate that there is an urgent need for the injunction to prevent irreparable harm. There are special requirements for an applicant to file a PI. Practically speaking, a quia timet relief is avail ‑ able in Saudi Arabia. For example, it might apply to acts that amount to a threat to infringe, including any preparatory steps that indicate an imminent infringe ‑ ment, such as manufacturing or marketing prepara ‑ tions. There is no consideration specific to patent liti ‑ gation in life sciences cases in Saudi Arabia. Court notifications are sent by the court via SMS to the mobile phone of the addressee. The alleged infringer is given an opportunity to file evidence and submis ‑
sions in defence of a PI. In ex parte requests, the right of the defence will be considered at the appeal stage. Protective letters are not recognised in Saudi Arabian law. Recent procedural practice developments include the mandatory use of the Ministry of Justice’s Najiz electronic litigation platform for filing urgent applica ‑ tions, including PI requests. Courts now require elec ‑ tronic submission of pleadings and supporting evi ‑ dence through Najiz, which has resulted in faster case management and stricter documentary requirements at the filing stage. 1.4 Structure of Main Proceedings on Infringement/Validity Practically speaking, infringement and validity pro ‑ ceedings are to be bifurcated. An infringement pro ‑ ceeding will usually be stayed until a validity proceed ‑ ing is concluded. Filing Nullity Proceedings It is possible to file nullity proceedings while there are ongoing patent office opposition proceedings in Saudi Arabia. The legal framework allows for both types of actions to be pursued simultaneously. This means that a party can challenge the validity of a patent through opposition proceedings at the SAIP while also initiat ‑ ing nullity proceedings in court. 1.5 Timing for Main Proceedings on Infringement/Validity Article 7 of the Patent Law Under Article 7 of the Saudi Arabian Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs (the “Patent Law”): “If the sub ‑ ject matter claimed in the application or in the pro ‑ tection document is derived from a subject matter owned by a person other than the applicant or the owner of the protection document, then this person may request the Committee to transfer the ownership of the application or protection document to him. The case for the transfer application shall not be heard after the lapse of five years of granting the protec ‑ tion unless bad faith on the part of the applicant is established”.
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