The Current Legislation For Inventions & Drawings & Industrial Models In The Republic of Cuba

By Maria Lourdes Ruiz Sotolongo

Posted: 16th December 2013 08:41

Cuba, as member of the WTO, must apply the provisions of the Agreement on the ADPIC which contain a framework of minimum juridical norms regarding patents that require implementation within national legislation.
 
Therefore, on 20 November 2011, Decree-Laws 290, 291 and 292, on Inventions and Drawings and Industrial Models, on Protection for Vegetal Varieties and for Integrated Circuit Diagrams, respectively, were passed; they entered into force as of 2 April 2012 and aim to unify the growing development of trade relations in the new conditions of the country’s economic and social technical development and changes in these matters in the international legal system.
 
For those reasons, dear colleagues, and taking into account its great importance and impact, we would now like to share with you the main innovations introduced in our laws as a result of legislative reform approved under Decree-Law 290 About Inventions and Drawings and Industrial Models; this piece of legislation essentially looks after the procedural system of registering and acquiring rights and deals with the utility model as a new form of protection for inventions, with no intent other than to guarantee that our clients may enjoy the rights and terms granted by the above-mentioned legislation.
 
Patentable Inventions
 
In its Article 21, Decree-Law 290 established that an invention may only refer to products and procedures, describing in a broader manner those objects that are not considered to be inventions; among them are those noted for use of products and procedures and new uses for already-known products and procedures, integrated circuit diagrams, computer programs, scientific, artistic and literary work and aesthetic creations, essentially biological procedures, the human body, discovery  of its parts and replicas including total or partial gene sequences and their genetic identity, cloning procedures for human beings, organs and tissues, to mention a few.
 
Just like Decree-Law 68, in Article 22 of the current Decree-Law, we do not consider as patentable the following:  animals and their breeds, plants and their varieties, diagnostic, therapeutic and surgical methods for treatment of persons and animals and including other exclusions to patentability as the cloning of human beings, organs and tissues and their parts or elements, procedures to modify germinal genetic identities of the human being and animal genetic modification which presupposes suffering with no substantial medical utility for humans and animals, resulting from such procedures.  Also excluded from patentability are solutions whose commercial exploitation in the country ought to be prevented in order to protect the health of persons and animals, to preserve plants and to avoid harming the environment.
 
Nevertheless, the new Law makes an exception from excluding from protection by patents, thereby allowing those micro-organisms transformed by direct human intervention in their genetic composition by an exogenous genetic material to be protected to express characteristics that normally the species would not attain under natural conditions.
 
Scope Of The Rights
 
The rights bestowed via invention patents and utility models, drawing and industrial model registration are exercised from the concession of same; in other words, there is no provisional protection.
Its term of validity is now extended for a period of 20 years, from the date the application is presented, after payment of the corresponding annual fees.
 
In the cases of Utility Model, Drawing and Industrial Model Registrations, validity extends for a period of 10 years from the date the application is presented, now after payment of the corresponding annual fees.
 
Procedural Systems For Registration
 
As we explained at the beginning, amendment of procedures for registration and paper-work for applications to the CIPO, constitute the most important legal reform since it bestows on the applicant and interested third parties the jurisdiction to defend their rights by administrative means, through the System Of Opposition and The Appeal Resource, subject to judicial process.
 
In this way, once the term established for filing of documents regarding the patent application has expired, the Office carries out a formal examination. 
 
Once formal examination has been concluded, the CIPO will publish the information in the Industrial Property Official Bulletin within the term of no less than 18 months from the date of its filing, so that any third party can file their opposition to the granting of the published patent application; there is a term of 60 days to file an opposition.
 
The opposition and evidences filed are transferred to the applicant who, if they so wish, may reply to allegations made within a term of 60 days from the date of notification.  Once the applicant’s allegations have been received or the term established by law has expired, the Office will carry out the substantive examination. 
 
The substantive examination concludes with the issuance of a justified resolution dictated by the Department Head, thereby bestowing or refusing the patent on grounds of the requirements established in the Decree-Law; notification is sent to the parties so that the applicant, or the opponent in the event of opposition, can file an Appeal Resource before the Office Director within a term of 30 days from the date of notification.  
 
If the patent is granted, the applicant must pay a concession fee within the term of
30 days from the date of notification of the Resolution; in that case, the Office issues the corresponding certificate, registers the patent and publishes the granted patent document. 
 
The final resolution granting or denying the patent may be challenged administratively before the competent Chamber of the Provincial Peoples’ Court of the City of Havana within a term of 30 working days from the day following notification. 
 
In the event of examination proceedings of the Utility Models, this shall take place according to the provisions regarding patent applications wherever applicable, except in the fact that the utility model application has to cover one single product and that the substantive examination be done within the term of 12 months.   
The applicant may chose the form of protection of a technical solution by Patent or Utility Model, as long as the requisites established for each form are followed and an Invention Patent application may be changed to a Utility Model application or vice versa within the term of 12 months following the filing of the application, after payment of the established fee, as long as said conversion does not involve inclusion of new material regarding the initial application.
 
In the case of the examination procedure for drawings and industrial models, these are carried out according to provisions regarding Patent applications wherever applicable, except the fact that the application is published in the Official Bulletin within a term of no less than 6 months from the date of filing, although at the petition of the applicant said publication may be postponed for a term of no longer than 12 months from the date of filing, after payment of the established fee.
 
To be noted as a brand new aspect, the new Law foresees payment of annual fees for maintaining the validity of drawings and industrial models; these must be paid from the third annual instalment since, as with invention patents and utility model registration, the application filing fee for registering drawings and industrial models includes payment of the first and second annual instalment. 

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