Business brief 2011: Cuba
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Inventions are regulated in Cuba by Decree Law 68 ‘Of Inventions, Scientific Discoveries, Industrial Models, Trademarks and Denominations of Origin’, of May 14, 1983. At the moment, trademarks and other distinctive signs are regulated by Decree Law 203.
In Cuba, inventions are protected by means of a Certificate of Patent of Invention and a Certificate of Author of Invention.
A Certificate of Patent of Invention lasts 10 years, starting from the filing date, and may be extended by five years. Payment of annuity fees from the filing date is mandatory in order to keep the patent in force.
The Author of Invention Certificate is a sui generis protection form. It recognises the author of an invention’s contribution to it, but the exclusive rights belong to the Cuban state, their validity is limitless and it is exempt from official payments. This form of protection is granted exclusively to the inventions consisting of: vegetable varieties and animal breeds, strains of micro-organisms, methods of treatment and diagnoses, new use, and pharmaceutical products and substances obtained by the chemical experimentation.
However, on June 10, 1995, Decree Law No.160 was promulgated, allowing applications for invention patents for pharmaceutical and agricultural chemical products.
To register or secure patent rights, the owner of an invention must file a patent application at the Cuban Industrial Property Office (CIPO). CIPO provides protection in Cuban territory. If the owner of the invention wishes to protect it in other countries, he/she can use the traditional route or the PCT route (for the countries that form part of the Patent Cooperation Treaty).
What are the costs for registering a patent, and what are the costs of defending it?
The basic cost for filing a patent application is $1,026 (including attorney and official fees), but it could be increased depending on: priority claims; pages of the application documents in excess of 30; and independent, dependent and multi-dependent claims. Also, it is necessary to pay a grant fee of $324 (including attorney and official fees). The cost for defending a patent at the Cuban courts is $1,900.
Is there anything unusual about the patent law that companies should be aware of? What are the most common mistakes businesses make?
The Cuban pharmaceutical industry has developed substantially in recent years and most of the patent applications filed with CIPO are related to the pharmaceutical and medical sectors. However, the current Cuban Patent Law does not give protection to treatment methods or to uses generally associated with pharmaceutical patents.
Patent applicants’ most common mistake is to try and claim method of treatment and/or second use under an Author Certificate of Invention, but this kind of protection gives all rights over the invention to the Cuban state, and it does not represent any advantage to private and/or foreign companies.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
The principal threat that exists for the patent owners is unauthorised exploitation (fabrication, use, sale, etc.) of the invention. The best strategy for dealing with infringement is to try to give a licence to the infringer, and if it is not possible, to file a demand at the Cuban court.
Trademarks
How do you register or secure trademark rights, and what protection does it grant?
Trademarks and other distinctive signs are regulated in Cuba by Decree Law 203-99, of Trademarks and other Distinctive Signs, of December 24, 1999, which came into force on May 5, 2000. Its Regulations, dated May 22 of the same year, were subsequently enacted under Resolution No. 63/2000.
“The Cuban patent regime must be adapted to the TRIPS agreement. This new legislation will permit patent protection for any kind of invention in any branch of technology. The duration of the patent protection will be 20 years.”
Under this legislation, and since registration and priority use principles coexist, there is a combined system. In that sense, in the case of trademarks and commercial slogans, registration is binding and confers exclusive rights. In the case of trade names, signs for establishments and company emblems, registration is implemented only as a declaration of rights, which are then acquired by the first use of the sign in the trade practice. Nevertheless, the registration principle had an exception in the case of well-known trademarks, since for granting of special protection regulated by TRIPS, an effective registration is not required.
In Cuba, a person interested in obtaining a trademark registration should file a trademark application with the Cuban Industrial Property Office. The application for registration will be published by the office in the Official Industrial Property Gazette within 180 days, counted from the filing date. This enables any third party to submit grounds against granting the trademark.
This is to be done within 60 days of publication. It grants both the applicant and the third parties concerned the power to defend their rights via an administrative action, through both the observation and opposition system and the recourse of appeal, prior to resorting to legal actions.
The granting of a trademark gives the owner two principal rights: to use the trademark to distinguish and to promote and publicise its products.
What are the costs for registering a trademark, and what are the costs of defending it?
The cost for registering a trademark is $701 (including the official fees, attorney fees and other charges). The costs for defending a trademark with CIPO is $577, and with the Cuban court, $1,900.
What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?
The key threats are: the use by another person of an identical or similar trademark, counterfeiting, passing off or online infringement. The best strategy is to register your trademark and obtain exclusive rights, because these make it easier to avoid and combat infractions.
What are the most common mistakes trademark owners make?
The most common mistake is to request a trademark that is generic and descriptive of the products or services, and to file the trademark application without requesting an interference search previously. Also sometimes owners obtain the registration and then don’t use the trademark in commerce, allowing others to file a cancellation action for non-use.
Counterfeiting and online piracy
In Cuba, there is no legislation covering unfair competition and lack of statistical data to value what industries are particularly at threat.
General
Are there any legislative changes to the IP regime that would make businesses' life easier?
Probably the imminent patent law changes. The Cuban patent regime must be adapted to the TRIPS agreement. This new legislation will permit patent protection for any kind of invention in any branch of technology. The duration of the patent protection will be 20 years.
Also, the patent prosecution will require a period for oppositions and third-party observations that will be considered in the exam decision; the new legislation incorporates the utility model as a protection form for small inventions that are not covered in current legislation.
María Lourdes Ruíz Sotolongo is the general manager of Claim SA. She can be contacted at: presidencia@claim.com.cu
