On 2 April 2012, a series of new intellectual property laws (Decree Law No's. 290, 291 and 292) on Inventions, Drawings and Industrial Models, on Protection for Vegetal Varieties and for Integrated Circuit Diagrams came into force in Cuba. These new laws have resulted in a number of changes to patents, designs and utility models in Cuba, as outlined below:

1. It is now possible to patent inventions related to microorganisms which have been genetically altered by direct human intervention. However, law 290 still prohibits the patentability of inventions relating to animals and their breeds, plants and their varieties, and diagnostic, therapeutic and surgical methods for the treatment of humans and animals. "Swiss-style" use claims are also still not patentable in Cuba.

2. The term of patent protection in Cuba was formerly 10 years from the filing date, with the possibility of a further 5 year extension of term subject to the filing of a petition at the Patent Office. Under law No. 290, the term of all patents which were in force on, or filed after, 1 January 2005 will now be 20 years counted from the filing date. We understand that there is no longer any need to file a petition for the extension of term after 10 years - simply the payment of each annual maintenance fee will suffice to keep the patent or patent application in force. 

3. In the case of utility models, the term of protection is now 10 years counted from the filing date, subject to the payment of annual maintenance fees.

4. Once a patent application has been published for registration, any interested third parties have a term of 60 days within which to file an opposition and pay the relevant fees. The applicant then has a term of 60 days within which to respond to any oppositions filed.

5. A patent of invention may be transformed into a utility model and vice versa, within a term of 12 months counted from the date of presentation of the application. Conversion is only possible so long as it does not involve the inclusion of new material.

6. It is possible to convert pre-existing patents of invention into utility models by filing a request before the Patent Office within a non-extendable 90 day term of the coming into force of the new law (2 April 2012).

7. It was formerly possible to apply for a Certificates of Authorship in Cuba. These certificates were used to protect material not patentable under the Cuban law, such as inventions covered by method of treatment claims. Certificates of Authorship were granted in the name of the author and provided an acknowledgement of the technical solution of an invention. However, all rights to the invention were granted to the State of Cuba, including the right to exploit the invention. Certificates of Authorship are no longer permissible under law 290. All Certificates of Authorship which were which were in force on, or filed after, 1 January 2005, and where grant has not yet occurred, can be converted into Patents of Invention on filing a petition before the Patent Office and paying an instalment fee within 180 days of 2 April 2012. Thereafter, annual maintenance fees must be paid each year to keep the applications in force, and these fees will fall due on each anniversary of the filing date. Please note that converted cases will be examined by the Patent Office, and those covering material currently excluded from patentability under Cuban law will be denied.

8. According to Article 123 of the law, it is now possible to apply for the restoration of a patent or patent application which has lapsed through failure to meet an official deadline. A petition must be filed within a 60 day term from the removal of the impediment, but will only be admissible within a one year period counted from the expiration date of the missed deadline.

We are expecting to receive a notification from the Cuban Patent Office in respect of each case on our records for which action is required (e.g. for which additional annuities will be payable beyond the original maximum term of 15 years from the filing date), and we will let you know when we receive any such notifications. In the meantime, however, we would recommend that you kindly check your own records in order to identify any cases for which the new patent term and annuity requirements apply, so that all of your cases are accounted for.

Please do no hesitate to contact us if you have any questions in this matter.