SAUDI ARABIA Law and Practice Contributed by: Saud Alromi, Mostafa Ihab, Mohamed Ramadan and Saleh Albadry, Mohammed AlDhabaan & Partners Eversheds Sutherland
Notification of Main Action The notification process for the alleged infringer (in the case of an infringement action) or the patentee (in the case of a nullity action) is as follows. • The notification is typically carried by the court through SMS (if the defendant is located in Saudi Arabia). • The service takes place once the first hearing is scheduled. • The location of the infringing entity can impact the service process. If the entity is located outside Saudi Arabia, international service procedures may apply, potentially causing delays. Usual Time to a First Instance Hearing and Decision The time to a first instance hearing and decision can vary, but it generally takes several months from the filing of the action. 1.6 Requirements to Bring Infringement Action Although the Patent Law does not explicitly specify when an infringement action can first be filed, in prac ‑ tice, a main infringement action can only be filed once the patent has been granted. The patent must be vali ‑ dated, and any necessary translations must be filed before it can be asserted. Important Factors/Difficulties With Asserting Different Types of Patents Process patents Asserting process patents can be particularly chal ‑ lenging due to the difficulty in proving that the infring ‑ ing party is using the patented process. This often requires detailed technical evidence and expert testi ‑ mony to establish infringement. Product patents These are generally easier to enforce as the infring ‑ ing product can be directly compared to the patented invention. Biotechnology and pharmaceutical patents These patents often involve complex scientific data and regulatory considerations, making enforcement more complicated.
Reversal of Burden of Proof for Certain Types of Patents In Saudi Arabia, there is a reversal of the burden of proof for process patents. According to Article 48 of the Patent Law, if the subject matter of a patent is a process for obtaining a product, the defendant must prove that the identical product was not manufactured by this process without the consent of the owner of the patent, under two specific conditions: • when the product obtained through a patented industrial process is a new product; or • when there is a substantial probability that the identical product was manufactured through the patented industrial process and the owner of the patent was unable to determine the method actu ‑ ally used despite reasonable efforts. This provision is designed to address the inherent dif ‑ ficulties in proving infringement of process patents. 1.7 Pre-Action Discovery/Disclosure The Saudi Arabian legal system lacks a formal process for pre-action discovery similar to those found in com ‑ mon law jurisdictions. Instead, the focus remains on the claimant proving their case without obliging the defendant to disclose or build evidence before the commencement of formal proceedings. It is possible to use materials obtained in other juris ‑ dictions in Saudi Arabian legal proceedings. How ‑ ever, there are procedural requirements to ensure the Documents obtained from other jurisdictions must be attested and translated into Arabic to be admissible in Saudi Arabian courts. 1.8 Search and Seizure Orders Seizure orders are available in Saudi Arabia as a form of interim/summary measures under the Law of Com‑ mercial Courts. The main requirements for seeking the issuance of a seizure order are to prove to the court the urgency for issuing the order and specify the items that need to be seized. The main action needs to be filed within seven days as from the date of issuing the seizure order. admissibility of such evidence. Authentication and Translation
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