September 8th, 2016IP protection in Cuba

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

I want to do business in Cuba – can I get patent and trademark protection there?
Short answer – yes!

Let’s start with patents.
In order to file patent applications in other countries, a U.S. inventor must first file in the U.S., then they may file, or ‘nationalize’ in other countries. There is a way to hold your filing date in a number of foreign countries (148 as of today) while you decide which ones are the best to pursue nationalization in for your product, and that is to file a ‘PCT’ application once your U.S. patent application is filed. Once the PCT application is on file, you have 18 months to decide which countries you want to do business in.

PCT is short for Patent Cooperation Treaty, which is a treaty that countries sign on to, with a set of rules for filing in each others’ countries. The U.S. joined the PCT in 1978. For a list of member countries, click here. Using the PCT saves entrepreneurs a lot of money.

Is Cuba part of the Patent Cooperation Treaty (PCT)?
Yes, Cuba joined the PCT in 1996. That means that if you’ve filed a PCT application for your patent, you can choose to nationalize the patent in Cuba and keep your original filing date (very important for ‘first to file’ countries such as Cuba!). Nationalization means that you go through all the steps in Cuba that you would in the U.S., with a patent examiner, office actions, etc. It’s expensive, so most people choose their nationalization countries after having tested their product in the markets there while their product has ‘patent pending’ status.

What about Trademarks?
A system similar to the PCT exists for trademarks. It’s called the ‘Madrid Protocol’ and has 97 contracting countries. You can see the list here.

Is Cuba part of the Madrid Protocol?
Yes, Cuba joined the Madrid Protocol in 1995, and is a ‘first to file’ country for trademarks as well as patents.

How do I get started doing business in Cuba?
There are already some big businesses operating in Cuba, and more ready to go.  Airbnb is ready to help American Tourists visit the country as soon as possible, and cruise ships are adding Cuba as a port of call. There are people who are experts in dealing with business in Cuba, I would contact one of them if I were considering doing business there, after I got my PCT and Madrid Protocol applications filed. And I’d brush up on my Spanish!

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