Utility Models

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Strasbourg Agreement Concerning the International Patent Classification.
– Agreement for the Legal Protection of Inventions, Industrial Models and Utility Models and Trade Marks in the fulfillment of Economic and Technical-Scientific Collaboration, signed in Moscow (1973).
– Agreement on the unification of requirements for the preparation and filing of invention applications (1975).
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 27, 1975.
– Agreement for mutual recognition of authorship certificates and other protecting documents for inventions, signed in Havana (1975).
Budapest Treaty on the International Recognition of the Deposit of Microorganisms, since February 19, 1994.
– WTO's TRIPS Agreement, since April 20, 1995.
– Patent Cooperation Treaty (PCT), since July 16, 1996.

Filing

Applicant: inventors; their successors; a representative. 

Foreigners and nationals not living in the country: must appoint a local agent. 

Protection of foreigners: the same as for nationals. 

Naming of inventor(s): obligatory. 

Notion of invention: the technical solution in any technology field enjoying novelty, inventive activity and industrial applicability, consisting in a configuration or structure of a product or its parts with a functional improvement. 

Novelty: international. 

Exceptions to protection: not considered as utility models the procedures, the chemical or biotechnology products and the unpatentable inventions: (a) animals and animal breeds; (b) plants and plant varieties; (c)  methods for treatment of the human or animal body; (d) surgical, therapeutic and diagnostic methods for treatment of humans or animals; (e) inventions the commercial exploitation of which shall be necessary forbidden to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by any law in force; (f) inventions the commercial exploitation of which shall be necessary forbidden to protect social interest, public order or morality; (g) processes for cloning human beings, organs, tissues, and parts or elements thereof; (h) processes for modifying the genetic identity of the human being; (i) the uses of human embryos for industrial or commercial purposes; (j) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to humans or animals, and also animals resulting from such processes. 

Kinds of protection: Utility Models Registry. 

Confirmation or importation patents: not provided for. 

Secret patents: applicants may not apply for secret patents of their own accord, but the Cuban government may decide to keep any application for a patent secret in the interest of national defense or public order. 

Priorities: single or multiple priorities, partial priorities. 

Unity of the invention: each application should be related to one object of invention only. Should there be no unity of invention, the author must file an independent application for each of the objects of invention. 

Territory covered: the territory of the Republic of Cuba.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney or letter of authorization, not legalized;
2. Specification in Spanish, in duplicate;
3. Drawings in duplicate;
4. If priority is claimed, a certified (not legalized) copy of the foreign application supporting the claim for priority, with a Spanish translation.

Filing without one or more requirements: possible. 

Filing of priority certificate: this document must be submitted not later than three months after the date of the Cuban application. A Spanish translation of the document is required.

Electronic signatures: are not accepted.

PCT applications: time limit for entering national phase: the translation into Spanish must be filed within 30 months (for both Chapters I and II).

Special requirements of the Cuban Office: instrument of assignment or transfer where the applicant is not the inventor; instrument of assignment of the priority right where the applicants are not identical; evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time; verified translation of the international application to be furnished in one paper copy; verified translation of the priority document.

Examination

Amendment of application: possible only if the essence of the initial application is not changed. 

Examination: formal and substantive examination with regard to all the previous art related. 

Division: possible. 

Opposition to application filed: possible. 

Provisional registration: not provided for. 

Publication: after a formal examination will be published after eighteen months starting from the filing date or from the priority date if it is claimed. 

Dispute about ownership: must be brought before the courts. 

Dispute about novelty: a nullity action can be filed before the Cuban Patent Office based on violation of the requirements established by the patent law. A judicial procedure can be filed against the final Resolution before the Provincial Court, within the term of thirty days counted from the date following the notification of the Resolution.

Granting, Protection

Delivery of document: about three years after filing the application. 

Beginning of protection: from the date of granting of the application. 

Duration: for a utility model the validity period is ten years, starting from the date of filing. 

Annuities: the payment of an annual fee, of increasing amount, starting from the date of filing of the application up to the termination of its life, is obligatory. 

Annuity grace period: six months at double the cost. 

Marking of patented goods: not obligatory but advisable. 

Amendment of issued patents: not possible. 

Assignment: possible, must be recorded at the Cuban Patent Office. Filing the assignment document, duly signed by both parties. 

License of exploitation: possible. The contract or relevant document granting a license should be recorded at the Cuban Patent Office with a copy of the original document. 

Working: compulsory. An obligatory license may be granted at the request of a third party by the Director of the Office if the patent has not been worked during a period of three years after the grant or four years counted from the application date. The exploitation of a utility model must be the utilization or continuous manufacture of this model in Cuba.

Modification of Protection after Registration

Right of prior user: any physical person or legal entity who has used a similar utility model in Cuba before the filing of the application, or has taken substantial steps for its utilization, will keep gratuitously the right to utilize it. Said right should be registered in the application filed at the Patent Office by the interested party. 

Opposition to granted patent: possible before the Patent Office with a nullity action. A procedure can be filed against the final Resolution before the Provincial Court of Havana City, within the term of thirty days counted from the date following the notification of the Resolution. 

Compulsory licenses: the Director of the Office, at the request of a third party, has the right to grant an obligatory license for the exploitation of a utility model if it is not being exploited, if it is important for the national economy, and if it has not been possible to arrive at an agreement with its owner. No use will be made of the obligatory license before the three-year period following the date of grant or the four-year period following the application date, whichever expires last. 

Nullity: when: (1) the utility model was granted for a solution that is not an invention or for an invention that is not patentable or for an invention not having novelty, inventive step or industrial applicability, or for an invention that is not sufficiently disclosed; (2) there has been a violation of the prerequisites established by the Law; (3) the patent was granted with false, inexact or omitted elements. 

Cancellation: two years after the granting of a compulsory license, if the abuse remains. 

Infringement and penalties: usurpation is regarded as infringement of patent rights and is sanctioned with privation of liberty for three to nine months or a fine up to two hundred and seventy quotas, or both.