The Dubai International Financial Centre Authority has enacted a new IP law aimed at fostering innovation and improving the protection and enforcement of IP rights. On 21 November 2019, His Highness Sheikh Mohammed Bin Rashid Al Maktoum, Vice President and Prime Minister of the UAE and Ruler of Dubai, enacted a new Intellectual Property Law (Law No. 4 of 2019, the DIFC IP Law). The key aspects of the new DIFC IP law, which has been drafted to align closely with international treaties, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), are highlighted below.

1. Wide-ranging intellectual property law

The DIFC IP Law supplements existing federal IP laws already in force in the UAE and aims to unify the enforcement of IP rights in the DIFC. The law covers all aspects of IP enforcement and introduces enforcement channels for all IP circuits. The overall goal of the law is to increase the protection for IP rights owners in the DIFC, and the UAE more generally, and to create a safe environment for creativity and innovation within the free zone.  The law further clarifies the specific routes of enforcement accorded to the various IP rights and sets out how these differ creating increased legal certainty and predictability.

2. Recognition of UAE IP rights

Notably the new law does not create any new IP Offices but instead provides for the recognition of UAE registered IP rights in the DIFC, including recognition of UAE registered patents, utility certificates, industrial designs and drawings, copyrights, trademarks, trade names and trade secrets.

3. Employee creations and inventions

Reflecting its aim to foster innovation, the new law helpfully clarifies the legal position concerning the ownership of copyright and inventions created by employees.

The DIFC IP Law presumes employer ownership of copyright in respect of works created by an employee within the scope of their employment or while using the employer’s knowhow and resources. This is in contrast to the position under the UAE Federal Copyright Law where the employer’s ownership of copyright is not presumed and ability to assign ownership in future works is also restricted.

Similarly, the DIFC IP Law also provides for employer ownership of patents subject to the invention being created within the scope of an employee’s employment.

In the event that an invention is created outside the scope of employment but relates to the employer’s business and is created using the employer’s knowhow and resources, the invention will still belong to the employer. However, in this case, employers should be aware that the employee may be entitled to “fair compensation” for the invention, taking into account the employee’s remuneration, the invention’s economic value and the benefits to be gained by the employer from the invention.

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Author

Tarek Saad is the Head of the Maritime practice at Baker McKenzie Habib Al Mulla, based in Dubai. He is seasoned in maritime and insurance law, with over 22 years' experience in the Middle East, and more than 10 years in the UAE, and is also involved in the drafting and review of the new UAE Maritime Law. Tarek has extensive experience in general litigation including civil, commercial, real estate, criminal, intellectual property and labor litigation in the UAE.

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Mona Matouri is a paralegal in the UAE Intellectual Property Practice Group of Baker McKenzie Habib Al Mulla based in Dubai. She specializes in trademarks portfolio management and brand protection and has over 6 years' experience in the MENA region in a wide range of industry sectors.

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Kellie Blyth is a Counsel and Head of the UAE Data and Technology practice of Baker McKenzie Habib Al Mulla, based in Dubai. An experienced technology and privacy lawyer, Kellie has been advising local and multinational clients in the technology, telecoms, financial services, insurance and automotive sectors, on their strategic IT projects, helping them develop, commercialise and implement digital and technology solutions whilst managing legal and regulatory risk.

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Joanna Matthews-Taylor is the UAE Head of the Employment practice of Baker McKenzie Habib Al Mulla, based in Dubai. She is experienced in the full spectrum of employment law issues, including recruitment, employment contracts, benefits, protection of confidential information and termination. She has also advised clients on the employment aspects of corporate transactions, cross-border secondments and the mobility of employees in the Middle East.

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