A&E

A&E is a company which deals exclusively with Intellectual Property Rights and covers a full range of services in this field throughout Latin American countries with a distinctive orientation, experience and knowledge of Cuban and Mexican legislations and practice.

A&E is a modern, dynamic and flexible company which counts with a dedicated and enthusiastic team of Mexican and Cuban engineers and lawyers working in accordance with our philosophy and always sharing the common interest of the clients, particularly high standard services, responsiveness and cost-effective services.

We are dedicated to placing our priority and resources on resolving the specific needs of our clients efficiently so that our client may acquire legal protection and solutions for their I.P. issues with the minimal of fuss. There are not hidden fees or hourly rates in our services, so we avoid you to be involved in the additional administrative burden of being checking and approving a never ending chain of invoices. You pay one time the amount we charge for a particular service. We are strategically situated to one block from the Mexican Institute of Industrial Property (IMPI) and our aim is to reply our client's requests with a sense of urgency at all time.

Our patent engineers, coming from other Cuban and Mexican I.P. Law Firms, two of the oldest PCT members in our region, with a deep knowledge of PCT filing process as well as nationalizing international PCT applications are involved not only in entering National Phase applications in Mexico and Cuba, but also in other L.A. countries recently becoming members of the PCT. This allows you to be in contact with some of the most PCT experienced personnel in the region. We also count with a very qualified pool of patent translators making translations of PCT and Conventional applications into Spanish language at one of the most competitive price in the region. All the translations are verified by our patent attorneys, involved with the particular technical subject matter, before their delivering to the clients.

A&E occupies a niche in Latin American Intellectual Property profession and comes to solve a longstanding need of foreign companies and its representative firms for dealing with I.P. matters to Cuba in an efficient and safe way, thereby helping you to save pressure on your resources, money and time.

The above facts place A&E in an excellent position to offer you one of the most advanced and promising I.P. services in Latin American region, particularly for Mexico and Cuba .

Thank you for your attention.

Filing of I.P Rights-Mexico Patents

Application for registration

Patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. Essentially biological processes for the reproduction of plants and animals, biological material as found in nature, the human body and parts thereof, animal varieties and surgical, therapeutic or diagnostic methods of treatments for human or animals are not considered patentable inventions. Programs for computers and plant varieties do not constitute patentable subject matter either; however they may be protected by copyright and under the Federal Law of Plant Varieties respectively.

The law allows product, process, device and use claims. Product by process claims are also accepted. The number of independent, dependent and multi-dependent claims is not limited provided there is unity of invention and it does not affect the application costs.

Priority must be claimed when filing the application and it is necessary to specify the date, application number and country where the original application was filed at the moment of filing. The certify copy of the application may be filed within three months after filing and it should be translated into Spanish language.

The documents and information needed for filing an application are the following:

- Applicants' name.

- Applicants' address.

- Inventors' name.

- Inventors' address.

- Title of the invention.

- Patent specification, claims and drawings, if any, in Spanish language.

- Abstract.

- Certified priority document and its Spanish translation.

- Details of claiming priority.

- POA.

- Dead of Inventors' Assignment (DOA).

National phase of a PCT application should be filed on or before the term of 30 months from priority date. In case of PCT applications the certified priority document is not needed and the application may be filed in any PCT language provided the Spanish translation is submitted within 60 days paying a late filing surcharge.

The DOA and POA do not require legalization but they must be executed by the power grantor and by two witnesses (and the inventors in DOA case), mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA and DOA may be filed latter provided a surcharge is paid.

Although the priority document, the POA and the DOA might be filed at a later stage, it is recommended to file all documents with the application to avoid delays in the registration process and additional cost.

Examination

The examination of the application is made automatically. It is requested and paid upon filing. The application is published after 18 months counted from the application/priority date. The law does not provide for opposition proceedings.

During formal and substantive examination one or two Official Actions may arise. The term to reply the Official Actions is two months from the notification date extendable for another two months provided an extension of term fee is paid.

A patent application may be converted into an utility model application or an industrial model application within a period of three months from the application date or within the period of three months following the date the Office requires the applicant to convert the application.

Unity of invention is required. If the patent application does not fulfil this requirement a divisional application may be filed. If the filing of a divisional application is requested by the Office the time limit to file it is two months from the Office's action notification date. A voluntary divisional application may be filed at any time before a notice of allowance is issued.

The approximate time from the application to registration is between 3-4 years provided all documents were filed at the moment of Filing and no objection was issued during the examination. The patent is published after being granted. The lifetime of a patent is 20 years from the application date.

Cancellation actions and appeals

Cancellation proceedings can be initiated by any interested party before the Office against a patent that has been registered contrary to the grounds specified in the law, for example, unpatentable inventions, unclarity, in case of errors or if the patent was granted to a person different to the actual owner, etc.

Office's final decisions may be appealed before the Office (administrative appeal) in a term of 30 days from the decision's notification date. An appeal against a final decision in an administrative appeal proceeding must be filed with the Federal Court of Administrative and Tax Justice (FCATJ) within 15 days from receipt of the notice.

Filing of I.P Rights-Mexico Utility Model

Application for registration

Utility model patents shall be granted for any object, utensil, device or tool which are susceptible of industrial application and are new.

The number of independent, dependent and multi-dependent claims is not limited provided there is unity of invention and it does not affect application costs.

Priority must be claimed when filing the application and it is necessary to specify the date, application number and country where the original application was filed at the moment of filing. The certify copy of the application may be filed within three months after filing and it should be translated into Spanish language.

The documents and information needed for filing an application are the following:

- Applicants' name.

- Applicants' address.

- Inventors' name.

- Inventors' address.

- Title of the invention.

- Patent specification, claims and drawings in Spanish language.

- Abstract.

- Certified priority document and its Spanish translation.

- Details of claiming priority.

- POA.

- Dead of Inventors' Assignment (DOA).

National phase of a PCT application should be filed on or before the term of 30 months from priority date. In case of PCT applications the certified priority document is not needed and the application may be filed in any PCT language provided the Spanish translation is submitted within 60 days paying a late filing surcharge.

The DOA and POA do not require legalization but they must be executed by the power grantor and by two witnesses (and the inventors in DOA case), mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA and DOA may be filed latter provided a surcharge is paid.

Although the priority document, the POA and the DOA might be filed at a later stage, it is recommended to file all documents with the application to avoid delays in the registration process and additional cost.

Examination

The examination of the application is made automatically. It is requested and paid upon filing. Utility model applications are not published. The law does not provide for opposition proceedings.

During formal and substantive examination one or two Official Actions may arise. The term to reply the Official Actions is two months from the notification date extendable for another two months provided an extension of term fee is paid.

A utility model application may be converted into a patent application or an industrial model application within a period of three months from the application date or within the period of three months following the date the Office requires the applicant to convert the application.

Unity of invention is required. If the utility model application does not fulfil this requirement a divisional application may be filed. If the filing of a divisional application is requested by the Office the time limit to file it is two months from the Office's action notification date. A voluntary divisional application may be filed at any time before a notice of allowance is issued.

The approximate time from the application to registration is between 10-12 months provided all documents were filed at the moment of Filing and no objection was issued during the examination. The patent is published after being granted. The lifetime of a patent is 10 years from the application date.

Cancellation actions and appeals

Cancellation proceedings can be initiated by any interested party before the Office against a patent that has been registered contrary to the grounds specified in the law, for example, unpatentable inventions, unclarity, in case of errors or if the patent was granted to a person different to the actual owner, etc.

Office's final decisions may be appealed before the Office (administrative appeal) in a term of 30 days from the decision's notification date. An appeal against a final decision in an administrative appeal proceeding must be filed with the Federal Court of Administrative and Tax Justice (FCATJ) within 15 days from receipt of the notice.

Filing of I.P Rights-Mexico Industrial Model

Application for registration

Industrial model patents shall be granted for an industrial design (any combination of figures, lines, colours) or an industrial model (three-dimensional configurations) giving to an industrial product a special appearance which are susceptible of industrial application and are new.

In general, according to the Mexican legislation it is not possible to include multiple designs in one application unless the differences between the included designs are not essentials.

Priority must be claimed when filing the application and it is necessary to specify the date, application number and country where the original application was filed at the moment of filing. The certify copy of the application may be filed within three months after filing and it should be translated into Spanish language.

The documents and information needed for filing an application are the following:

- Applicants' name.

- Applicants' address.

- Inventors' name.

- Inventors' address.

- Title of the industrial model.

- Drawings/pictures and brief reference to the drawings/pictures describing which view is represented in each one in Spanish language.

- Certified priority document and its Spanish translation.

- Details of claiming priority.

- POA.

- Dead of Inventors' Assignment (DOA).

The DOA and POA do not require legalization but the must be executed by the power grantor and by two witnesses (and the inventors in DOA case), mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA and DOA may be filed latter provided a surcharge is paid.

Although the priority document, the POA and the DOA might be filed at a later stage, it is recommended to file all documents with the application to avoid delays in the registration process and additional cost.

Examination

The examination of the application is made automatically. It is requested and paid upon filing. Industrial model applications are not published. The law does not provide for opposition proceedings.

During formal and substantive examination one or two Official Actions may arise. The term to reply the Official Actions is two months from the notification date extendable for another two months provided an extension of term fee is paid.

A industrial model application may be converted into a utility model application or a patent application within a period of three months from the application date or within the period of three months following the date the Office requires the applicant to convert the application.

The approximate time from the application to registration is between 10-12 months provided all documents were filed at the moment of Filing and no objection was issued during the examination. The patent is published after being granted. The lifetime of a industrial model patent is 15 years from the application date.

Cancellation actions and appeals

Cancellation proceedings can be initiated by any interested party before the Office against an industrial model that has been registered contrary to the grounds specified in the law, for example, unpatentable designs or industrial models, in case of errors or if the patent was granted to a person different to the actual owner, etc.

Office's final decisions may be appealed before the Office (administrative appeal) in a term of 30 days from the decision's notification date. An appeal against a final decision in an administrative appeal proceeding must be filed with the Federal Court of Administrative and Tax Justice (FCATJ) within 15 days from receipt of the notice.

Filing of I.P Rights-Mexico Trademarks

Application for registration

A registrable mark is any visible sign that may serve to identify goods and/or services of the same class in the market. A single letter, a single digit/number, a specific shade of colour or combinations of colours, a sound/audible or smell mark, a geographical name which may create confusion as to the place of origin of the goods/services are not registrable as a trademark.

Trademark protection is available through application/registration. Use does not grant the right to exclusive use but grants a preferential right to register.

Priority must be claimed when filing the application and it is necessary to specify the date, application number and country where the original application was filed at the moment of filing. The certify copy of the application may be filed within three months after filing and it should be translated into Spanish language.

The International Classification according to Nice Agreement is used. Only one class is allowed per application. It is not requested the translation into Spanish language of trademark with a meaning in a foreign language. A disclaimer can be filed for generic or descriptive legends in a trademark label.

The registration can be obtained for class heading or general wording of the goods and/or services; however, it is advisable to include also a specific wording of them. It is not possible to specify the wording "all goods in class.." in the application form either.

The applicant may claim a first use in the application form specifying the exact date of the first use, but it is not required. If a third party has registered a trademark and the new applicant want to remove the earlier trademark from the registry base on prior use either in Mexico or abroad such use must be claimed when filing a cancellation action provided the earlier use has been continuous.

The documents and information needed for filing an application are the following:

- App licants' name.

- Applicants' address.

- Mark

- International Class of Goods & Services.

- Colours claimed.

- Description of goods & services.

- Priority details

- Certified priority document and its Spanish translation.

Although the priority document might be filed at a later stage, it is recommended to file all documents with the application to avoid delays in the registration process and additional cost.

Examination

The Office carries out at its own initiative a formal examination and an examination on absolute and relative grounds. During examination Official Actions might be issued by the Office. A trademark can not be modified during examination but a disclaimer is accepted. Letters of Consent are accepted provided the public is not being misled.

The application is not published for opposition purpose. After registration the trademark is published in the Official Gazette.

The approximate time from the application to registration is between 3-4 months provided all documents were filed at the moment of Filing and no objection was issued during the examination.

Use after registration

Use of a registered trademark is required to maintain the rights to the mark and specially to prevent the trademark from being vulnerable to a cancellation action. After registration date the trademark use must take place within a period of three years. The use can not be interrupted for a period longer than three years. The merely trademark advertising, without putting the goods/services on the market, does not constitute valid use.

If the trademark has not met the use requirements any subsequent use will restore rights if a cancellation action has not been initiated before the mark is reused.

Cancellation actions and appeals

Cancellation proceedings can be initiated by any interested party before the Office against a mark that has been registered contrary to the grounds specified in the law that would render a mark unregistrable (absolute grounds), based on prior rights (relative grounds), against a bad faith registration, and due to non-use.

An interested party starting a cancellation action must show that it has "legal interest" to request the cancellation. "Legal interest" may be proven for instance, by filing an application to register a trademark and a previously registered trademark is cited as anticipation.

Office's final decisions may be appealed before the Office itself (administrative appeal) or before the Federal Court of Administrative and Tax Justice (FCATJ). If the appellant chooses to file the administrative appeal, the decision of this action may be appealed at the FCATJ.

Filing of I.P Rights-Cuba Patents

The duration of patents of invention is twenty years from the application date.

The law defines a patentable invention as a technical solution in any technological field which is new, involves an inventive step and can be applied industrially.

A patent application should be filed in Spanish language.

The time limit for entering a PCT National Phase is 30 months from the priority date.

In order to obtain a valid filing date for a PCT National Phase application, the filed documents should meet the regular filing requirements. However, the PCT application as filed can be submitted in any of the authorized PCT languages. This document requires a Spanish translation to be lodged in addition to the power of attorney and the Deed of Inventor's Assignment.

Annual fees are due and must be paid in advance prior to the anniversary of the filing date. There is a grace period of six months, with payment of a fine of twice the annual fee due. The first two annual fees are due upon filing of the patent application. The third annual fee will be due on the third year, and an annual fee is due each subsequent year calculated from the date of filing.

The law makes a distinction between subject matters unpatentable by reason of not being an invention and statutory exclusions to patentability.

The following are not considered inventions:

a) schemes, rules or methods of doing business, performing purely mental acts or playing games,

b) projects, diagrams and plans of buildings,

c) scientific and mathematical theories,

d) existing materials discovered or isolated from nature with the exception of microorganisms as defined in the patent law,

e) mere presentations of information,

f) layout designs of integrated circuits,

g) computer programs,

h) essential biological processes,

i) the human body and the different stages of its formation and development,

j) new uses of patented products and processes belonging to the state of the art,

k) anything that contradicts scientific principles and laws governing phenomena and properties set in sciences;

l) the change in shape, size, proportions of ​​an object, unless this essentially modifies its properties,

m) the juxtaposition of known inventions or mixtures of known products, unless a new industrial result is obtained which cannot be derived from the separate application of juxtaposed inventions,

n) the uses of products and processes,

o) products and process characterized by their use

The following are not patentable:

a) plant or animal varieties

b) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,

c) solutions whose commercial exploitation must be prevented to protect the health or life of humans, plants or animals or to preserve the environment,

d) solutions whose commercial exploitation must be prevented to protect the social interests, public order and morality,

e) human cloning and cloning of organs, tissues and their parts or elements,

f) the procedure for modifying the germ line genetic identity of human beings,

g) the uses of human embryos for industrial or commercial purposes,

h) procedures modifying the genetic identity of animals which are likely to cause them suffering without medical benefits to man and animals.

Foreigners not having a residence or establishment in Cuba must appoint an agent.

The power of attorney need not be legalized.

Fees must be paid upon filing of the application. The fees payable include an application fee, a publication fee, a fee for the number of independent, multi-dependent or dependent claims, a fee for each page of specification in excess of 30 pages, a fee if priority is claimed, and a fee for the first and second annuities.

A patent application may be converted into a utility model application within twelve months from the filing date of the patent application.

A utility model application resulting from the conversion of a patent application is deemed to have been filed on the filing date of the original patent application.

Applications are examined as to form. If objections are raised, the applicant will be informed thereof and be given a term within which to reply. The normal term for answering an official action is sixty calendar days, an extension of thirty calendar days in principle being allowed provided a fee is paid before expiration of the initial term.

When a patent application is accepted after formal examination, it is published for opposition purposes after eighteen months of the application date. A sixty day opposition period begins from the publication date of the patent application and “any person interested” can file observations. An observation cannot be filed after the expiration of the opposition period. A person who files an observation becomes part of the registration process. The applicant will be notified of filed observations who can submit arguments within a term of sixty days from the notification date.

Applications are examined as to novelty and non-obviousness. If objections are raised, the applicant will be informed thereof and be given a term within which to reply. The normal term for answering an official action is sixty calendar days, an extension of thirty calendar days in principle being allowed provided a fee is paid before expiration of the initial term.

A conclusive report of examination with the Office's preliminary decision is issued and notified to the applicant and the opponent, if any. The conclusive report of examination may be appealed before the Office by the applicant or the opponent, if any, in a term of thirty days counted from the notification date.

If after examination, it shall appear that the applicant is entitled to a patent, a notice of allowance will be sent to him or his agent. Within thirty days from the notice of allowance notification a granting fee must be paid. If the fee is not paid within said period, the application will be regarded as abandoned.

Office's final decisions may be appealed within thirty days from the day following the notification of the decision with the Civil and Administrative Chamber of the People's Provincial Tribunal of the City of Havana. Further appeal with the Supreme Court is to be lodged within five days.

Filing of I.P Rights-Cuba Utility Model

The duration of utility model patents is ten years from the application date.

The law defines a patentable utility model as an invention which is new, involves an inventive step and can be applied industrially and which consists of a configuration, structure or constitution of a product or its parts resulting in a functional improvement. Processes, biotechnological or chemical products are not registrable as a utility model.

A utility model patent application should be filed in Spanish language.

The time limit for entering a PCT National Phase is 30 months from the priority date.

Annual fees are due and must be paid in advance prior to the anniversary of the filing date. There is a grace period of six months, with payment of a fine of twice the annual fee due. The first two annual fees are due upon filing of the patent application. The third annual fee will be due on the third year, and an annual fee is due each subsequent year calculated from the date of filing.

Foreigners not having a residence or establishment in Cuba must appoint an agent.

The power of attorney need not be legalized.

Fees must be paid upon filing of the application. The fees payable include an application fee, a publication fee, a fee for the number of independent, multi-dependent or dependent claims, a fee for each page of specification in excess of 30 pages, a fee if priority is claimed, and a fee for the first and second annuities.

A utility model application may be converted into a patent application within twelve months from the filing date of the utility model application.

A patent application resulting from the conversion of a utility model application is deemed to have been filed on the filing date of the original utility model application.

Applications are examined as to form. If objections are raised, the applicant will be informed thereof and be given a term within which to reply. The normal term for answering an official action is sixty calendar days, an extension of thirty calendar days in principle being allowed provided a fee is paid before expiration of the initial term.

When a utility model application is accepted after formal examination, it is published for opposition purposes after eighteen months of the application date. A sixty day opposition period begins from the publication date of the utility model application and “any person interested” can file observations. An observation cannot be filed after the expiration of the opposition period. A person who files an observation becomes part of the registration process. The applicant will be notified of filed observations who can submit arguments within a term of sixty days from the notification date.

Applications are examined as to novelty and non-obviousness. If objections are raised, the applicant will be informed thereof and be given a term within which to reply. The normal term for answering an official action is sixty calendar days, an extension of thirty calendar days in principle being allowed provided a fee is paid before expiration of the initial term.

A conclusive report of examination with the Office's preliminary decision is issued and notified to the applicant and the opponent, if any. The conclusive report of examination may be appealed before the Office by the applicant or the opponent, if any, in a term of thirty days counted from the notification date.

If after examination, it shall appear that the applicant is entitled to a patent, a notice of allowance will be sent to him or his agent. Within thirty days from the notice of allowance notification a granting fee must be paid. If the fee is not paid within said period, the application will be regarded as abandoned.

Office's final decisions may be appealed within thirty days from the day following the notification of the decision with the Civil and Administrative Chamber of the People's Provincial Tribunal of the City of Havana. Further appeal with the Supreme Court is to be lodged within five days.

Filing of I.P Rights-Cuba Industrial Model

The duration of industrial model/design patents is ten years from the application date.

A design is defined as a two-dimensional form which is destined to give a special outer appearance to an industrial or handicraft product, provided that such form may serve as a prototype for industrial or handicraft manufacture and differs from the designs already known in its shape, configuration or ornamentation in such way as to render it novel and to make it constitute a progress in comparison to the designs already known.

An industrial model is defined as a three-dimensional form which is destined to give a special outer appearance to an industrial or handicraft product, provided that such form may serve as a prototype for industrial or handicraft manufacture and differs from the designs already known in its shape, configuration or ornamentation in such way as to render it novel and to make it constitute a progress in comparison to the designs already known.

Industrial model/design patent applications should be filed in Spanish language.

Annual fees are due and must be paid in advance prior to the anniversary of the filing date. There is a grace period of six months, with payment of a fine of twice the annual fee due. The first two annual fees are due upon filing of the patent application. The third annual fee will be due on the third year, and an annual fee is due each subsequent year calculated from the date of filing.

Foreigners not having a residence or establishment in Cuba must appoint an agent.

The power of attorney need not be legalized.

The following may not be protected as designs or industrial models:

a) a component embodied in a product which is not visible;

b) a design for the exact shape or configuration which allows the mechanical coupling to another product for performing a function;

c) designs created for achieving a technical function;

d) designs embodying a distinctive sign applied or registered in the name of other person the application date of which is prior to the design application date;

e) works protected by copyright in the name of another person; and

f) designs being contrary to social interests, public order and morality.

The design or industrial model should be represented by drawings, figures, photographs, and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design or industrial model. Up to one hundred designs or industrial models corresponding to the same class can be filed in one application.

Applications are examined as to form. If objections are raised, the applicant will be informed thereof and be given a term within which to reply. The normal term for answering an official action is sixty calendar days, an extension of thirty calendar days in principle being allowed provided a fee is paid before expiration of the initial term.

When an industrial model/design application is accepted after formal examination, it is published for opposition purposes after eighteen months of the application date. A sixty day opposition period begins from the publication date of the industrial model/design application and “any person interested” can file observations. An observation cannot be filed after the expiration of the opposition period. A person who files an observation becomes part of the registration process. The applicant will be notified of filed observations who can submit arguments within a term of sixty days from the notification date.

Applications are examined as to novelty. If objections are raised, the applicant will be informed thereof and be given a term within which to reply. The normal term for answering an official action is sixty calendar days, an extension of thirty calendar days in principle being allowed provided a fee is paid before expiration of the initial term.

A conclusive report of examination with the Office's preliminary decision is issued and notified to the applicant and the opponent, if any. The conclusive report of examination may be appealed before the Office by the applicant or the opponent, if any, in a term of thirty days counted from the notification date.

If after examination, it shall appear that the applicant is entitled to a patent, a notice of allowance will be sent to him or his agent. Within thirty days from the notice of allowance notification a granting fee must be paid. If the fee is not paid within said period, the application will be regarded as abandoned.

Office's final decisions may be appealed within thirty days from the day following the notification of the decision with the Civil and Administrative Chamber of the People's Provincial Tribunal of the City of Havana. Further appeal with the Supreme Court is to be lodged within five days.

Filing of I.P Rights-Cuba Trademarks

Application for registration

Names, designs, numbers, letters, form of products or of packaging, shade of colors and any other sign or combination of signs serving to distinguish the goods and/or services of business shall be considered as a trademark. A sound/audible or smell mark, a geographical name which may create confusion as to the place of origin of the goods/services are not registrable as a trademark.

Trademark protection is available through application/registration. Use does not grant the right to exclusive use. It does not grant a preferential right to register either.

Priority must be claimed when filing the application and it is necessary to specify the date, application number and country where the original application was filed at the moment of filing. The certify copy of the application may be filed within three months after filing and it should be translated into Spanish language.

The International Classification according to Nice Agreement is used. Multiclass system is available. It is requested the translation into Spanish language of trademark with a meaning in a foreign language. A disclaimer can be filed for generic or descriptive legends in a trademark label.

A registration can be obtained for class heading or a general wording; however an additional specific wording of the goods and/or services to be covered is strongly advisable. Description of the goods/services in the way of "All goods/services in class..." is not accepted.

It is not required that the applicant indicates if the trademark is in use of it is an "intent to use" application.

The documents and information needed for filing an application are the following:

- Applicants' name.

- Applicants' address.

- Mark

- International Class of Goods & Services.

- Colours claimed.

- Description of goods & services.

- Priority details

- Certified priority document and its Spanish translation.

- POA.

The POA does not required legalization, it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

Examination

The Office carries out at its own initiative a formal examination. After formal examination the application is published for a 60 day opposition period. Opponents become parties of the registration process. Then the Office carries out at its own initiative an examination on absolute and relative grounds, taking into account the oppositions filed, if any. During examination Official Actions might be issued by the Office. A conclusive report of examination with the Office's preliminary decision is issued and notified to the applicant and the opponent, if any.

A trademark can not be modified during examination but a disclaimer is accepted. Letters of Consent are accepted provided the trademarks involved are not identical. For some goods like pharmaceuticals the rules to accept letter of consent are stricter in order to avoid the public being misled.

The approximate time from the application to registration is between 18-24 months provided no objection or oppositions were made during the examination.

Use after registration

Use of a registered trademark is required to maintain the rights to the mark and specially to prevent the trademark from being vulnerable to a cancellation action. After registration date the trademark use must take place within a period of three years. The use can not be interrupted for a period longer than three years. The trademark advertising constitute valid use provided that an actual and effective use of the trademark in the market is performed within a term of two months counted from the beginning of the advertisement campaign.

If the trademark has not met the use requirements any subsequent use will restore rights if a cancellation action has not been initiated before the mark is reused.

Cancellation actions and appeals

Cancellation proceedings can be initiated by any interested party before the Office against a mark that has been registered contrary to the grounds specified in the law that would render a mark unregistrable (absolute grounds), based on prior rights (relative grounds), against a bad faith registration, and due to non-use.

The conclusive report of examination with the Office's preliminary decision may be appealed before the Office by the applicant or the opponent, if any, in a term of 30 days counted from the notification date. Office's final decisions may be appealed before the Havana Provincial Court in a term of 30 days counted from the notification date.

Our Team

  • Rogelio Valdés Pila

    Patent and Trademark Attorney

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    Mechanical Engineer

    Mr. Valdés Pila has been practicing as an IP attorney since 1987. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with mechanical technology, construction, medical device, etc fields. He is a member of AIPPI, INTA and ASIPI.
    Email: r.valdespila@aldecoaelias.com

  • Annia Rodríguez Sarraff

    Patent and Trademark Attorney

    X

    Chemical Engineer

    Ms. Rodríguez Sarraff has been practicing as an IP attorney since 1984. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with chemistry, organic chemistry, biochemical, biotechnology, pharmaceutical chemistry and formulation, etc fields. He is a member of AIPPI, INTA and ASIPI.
    Email: a.rodriguez@aldecoaelias.com

  • Roger Valdés Fernández

    Patent and Trademark Attorney

    X

    Electronic Engineer

    Mr. Valdés Fernández has been practicing as an IP attorney since 2009. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with electronics, computer, telecomunication, medical device fields. He is a member of AIPPI, INTA and ASIPI.
    Email: r.valdesfdez@aldecoaelias.com

  • Raymi Valdés Fernández

    Patent and Trademark Attorney

    X

    Computer Engineer

    Mr. Valdés Fernández has been practicing as an IP attorney since 2012. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with electronics, computer, telecomunication, medical device fields.
    Email: r.valdes@aldecoaelias.com

  • Alejandro Fumero Rodríguez

    Patent and Trademark Attorney

    X

    Telecommunications Engineer

    Mr. Fumero Rodríguez has been practicing as an IP attorney since 2012. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with electronics, computer, telecomunication, medical device fields.
    Email: a.rodriguez@aldecoaelias.com

  • Jessica Rosete Carvajal

    Patent and Trademark Attorney

    X

    Telecommunications Engineer

    Ms. Rosete has been practicing as an IP attorney since 2015. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with electronics, computer, telecomunication, medical device fields.
    Email: j.rosete@aldecoaelias.com

  • Nelvys Subiros Martínez

    Patent and Trademark Attorney

    X

    Biologist (MSc Neuroscience)

    Ms. Subiros Martínez has been practicing as an IP attorney since 2006. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with biology, agrochemical, biochemical, biotechnology, pharmaceutical, etc fields.
    Email: n.subiros@aldecoaelias.com

  • Liset Valdés González

    Patent and Trademark Attorney

    X

    Computer Engineer

    Ms. Valdés González has been practicing as an IP attorney since 2015. He has extensive expertise in trademarks and drafting, prosecuting and litigating patents worldwide. He deals with electronics, computer, telecomunication, medical device fields.
    Email l.valdes@aldecoaelias.com

Administration of I.P Rights-Mexico Recordals

Assignment/Merger

An assignment/merger can be recorded for a trademark registration or application. Partial assignments or assignments limited to part of the countries are not accepted. It is not required that the assignment deed includes the transfer of the related business y/o goodwill.

The assignment deed is not subject to an examination by the Office. It is not subject to any approval by public authorities either.

There is not time limit for recording an assignment/merger after the assignment/merger has occurred. However, the recordal is important to be able to enforce a trademark/patent application/registration, to prevent the trademark from being cited by the Office against a new application for a similar mark filed by the assignee and to be able to show evidences of use on behalf of the assignee in a cancellation action for non-use.

The documents and information needed for recording an assignment/merger are the following:

- Assignor's name.

- Assignor's address.

- Assignee's name.

- Assignee's address.

- Registration/Application number.

- Mark/Title of the invention.

- POA signed by a representative person of the assignee's company.

- Original assignment deed / merger agreement or certified copy thereof. A simplified assignment deed or declaration signed by both parties is accepted.

The assignment deed should be translated into Spanish and legalized with an apostille or up to the nearest Mexican Consulate.

The POA does not required legalization but it must be executed by the power grantor and by two witnesses, mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA may be filed latter provided a surcharge is paid.

Change of Name

A change of name can be recorded for a trademark registration or application.

There is not time limit for recording a change of name after the change has taken place. However, the recordal is important to prevent the trademark from being cited by the Office against a new application for a similar mark filed by the same owner.

The documents and information needed for recording a change of name are the following:

- Current applicant's/owner's name.

- Current applicant's/owner's address.

- New applicant's/owner's name.

- Registration/Application number.

- Mark/Title of the invention.

- POA signed by a representative person of the new applicant/owner.

- Original extracts from the Commercial Registry / Official Journal or certified copy thereof.

The documents should be translated into Spanish and legalized with an apostille or up to the nearest Mexican Consulate.

The POA does not required legalization but it must be executed by the power grantor and by two witnesses, mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA may be filed latter provided a surcharge is paid.

Change of Address

A change of address can be recorded for a trademark registration or application.

There is not time limit for recording a change of address after the change has taken place.

The documents and information needed for recording a change of address are the following:

- Applicant's/owner's name.

- Current applicant's/owner's address.

- New applicant's/owner's address.

- Registration/Application number.

- Mark/Title of the invention.

- POA (in case the representative person is not the agent of record).

- A declaration by the agent is sufficient.

The POA does not required legalization but it must be executed by the power grantor and by two witnesses, mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA may be filed latter provided a surcharge is paid.

Licenses

A license can be exclusive or non-exclusive, sub-licences are also allowed. A license can be recorded for a trademark registration or application. A license for only part of the registered goods and/or services or only part of the scope of the patent protection or limited to part of the country's territory can be recorded. The license agreement is not subject to any approval by public authorities.

There is not time limit for recording a license after its effective conclusion. However, the recordal is important for a licensee to be a party in any proceedings against third parties, for a licensee to institute proceedings solely against third parties and to be able to show evidences of use on behalf of the licensee in a cancellation action for non-use, use by a non registered user does not benefit the owner.

The documents and information needed for recording a license are the following:

- Licensor's name.

- Licensor's address.

- Licensee's name.

- Licensee's address.

- Registration/Application number.

- Mark/Title of the invention.

- Description of goods & services involved (in case of partial license).

- POA (in case the representative person is not the agent of record).

- Original or certified copy of the license agreement.

The license agreement should be translated into Spanish and legalized with an apostille or up to the nearest Mexican Consulate.

The POA does not required legalization but it must be executed by the power grantor and by two witnesses, mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA may be filed latter provided a surcharge is paid.

Administration of I.P Rights-Mexico Renewals

The term of registration is 10 years counted from de application date. The additional term from any renewal until the next renewal is 10 years. A renewal can be filed 6 months prior the due date. A six months grace period is provided for filing a renewal application, no surcharge is applied. After this grace period the rights over the trademark registration can not be reinstated if the renewal has been missed.

There is not any kind of examination during the renewal procedure. It is not required to file an affidavit of use, a declaration of intention to use or evidences of use in order to renew the registration for an additional term of 10 years. However, it is included in the renewal application form a statement under oath that use has not been suspended for three or more consecutive years.

The list of goods and/or services can be limited but not extended on renewals.

If the assignment or change of name/address has not been recorded with the office, renewal must be filed in the name/address of the owner of record. It is advisable to perform the recordals before filing the renewal application in order to obtain the Certificate of Registration, issue by the Office, in the name of the new owner. On the other hand, in the case of assignments, the trademark rights might be put at risk of cancellation by any interested party since the renewal was made by a legal entity which, at the time of renewal, was not the actual owner of the mark.

The documents and information needed for filing a renewal application are the following:

- Applicants' name.

- Applicants' address.

- Registration number.

- Mark.

- International Class of Goods & Services.

- Description of goods & services.

- POA (in case the representative person is not the agent of record).

The POA does not required legalization but it must be executed by the power grantor and by two witnesses, mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution, whereby the signer was given authority to grant Powers of Attorney. The original POA may be filed latter provided a surcharge is paid.

Administration of I.P Rights-Mexico Annuities

Maintenance fees are payable from the date of filing, however, fees are not due during the pending period of the application. Fist maintenance fees are payable upon granting. Fees are payable in five years increments to a maximum of 20 years (10 years in the case of utility models) from the date of application. It is not acceptable to paid maintenance fees yearly.

Patent annuities for the first up to the fifth year should be paid upon grant. The remaining patent annuities are payable in advance by three instalments (by one instalment in the case of utility model patents), each instalment covers a period of five years . Six-month grace period is allowed provided a surcharge is paid. A further six month period is given provided the surcharge and a fee for restoration of the patent rights is paid.

The maintenance fees in connection to industrial model patents can be paid yearly or in several instalments.

The documents and information needed for carrying out the payment of annuities are the following:

- Particulars of the owner.

- Patent number.

- Application date.

- POA (in case the representative person is not the agent of record).

The POA does not required legalization but it must be executed by the power grantor and by two witnesses, mentioning their names and domiciles. If the applicant is a company it must be indicated the Corporation Resolution, its date and place of execution whereby the signer was given authority to grant Powers of Attorney. The original POA may be filed latter provided a surcharge is paid.

Administration of I.P Rights-Cuba Recordals

Assignment/Merger

An assignment/merger can be recorded for a paten/trademark registration or application. Partial assignments are accepted for trademarks provided a divisional application/registration is requested before the recording. Assignments limited to part of the countries are not accepted. It is not required that the assignment deed includes the transfer of the related business y/o goodwill.

The assignment deed is subject to an examination by the Office, which requires the applicant to fulfil the requirements in case of any omission or irregularity. It is not subject to any approval by public authorities either.

There is not time limit for recording an assignment/merger after the assignment/merger has occurred. However, the recordal is important to be able to enforce a trademark/patent application/registration, to prevent the trademark from being cited by the Office against a new application for a similar mark filed by the assignee and to be able to show evidences of use on behalf of the assignee in a cancellation action for non-use.

The documents and information needed for recording an assignment/merger are the following:

- Assignor's name.

- Assignor's address.

- Assignee's name.

- Assignee's address.

- Registration/Application number.

- Mark/Title of the invention.

- POA signed by a representative person of the assignee's company.

- Original assignment deed / merger agreement or certified copy thereof. A simplified assignment deed or declaration signed by both parties is accepted.

The assignment deed should be translated into Spanish. It does not require any kind of legalization for trademark cases. In patent cases the documents should be legalized up to the nearest Cuban Consulate.

The POA does not required legalization; it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

Change of Name

A change of name can be recorded for a trademark registration or application.

There is not time limit for recording a change of name after the change has taken place. However, the recordal is important to be able to enforce a trademark/patent application/registration, to prevent the trademark from being cited by the Office against a new application for a similar mark filed by the same owner and to be able to show evidences of use on behalf of the new owner in a cancellation action for non-use.

The documents and information needed for recording a change of name are the following:

- Current applicant's/owner's name.

- Current applicant's/owner's address.

- New applicant's/owner's name.

- Registration/Application number.

- Mark/Title of the invention.

- POA signed by a representative person of the new applicant/owner.

- Original extracts from the Commercial Registry / Official Journal or certified copy thereof. In trademark cases a simple declaration of the agent is sufficient.

The documents should be translated into Spanish. In patent cases the documents should be legalized up to the nearest Cuban Consulate.

The POA does not required legalization; it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

Change of Address

A change of address can be recorded for a trademark registration or application.

There is not time limit for recording a change of address after the change has taken place. However, the recordal is important to be able to enforce a trademark/patent application/registration, to prevent the trademark from being cited by the Office against a new application for a similar mark filed by the same owner but with different address and to be able to show evidences of use on behalf of the owner with the new address in a cancellation action for non-use.

The documents and information needed for recording a change of address are the following:

- Applicant's/owner's name.

- Current applicant's/owner's address.

- New applicant's/owner's address.

- Registration/Application number.

- Mark/Title of the invention.

- POA signed by a representative person of the new applicant/owner with the new address.

- Original extracts from the Commercial Registry / Official Journal or certified copy thereof. In trademark cases a simple declaration of the agent is sufficient.

The documents should be translated into Spanish. In patent cases the documents should be legalized up to the nearest Cuban Consulate.

The POA does not required legalization; it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

Licenses

A license can be exclusive or non-exclusive, sub-licences are also allowed. A license can be recorded for a patent/trademark registration or application. A license for only part of the registered goods and/or services or only part of the scope of the patent protection or limited to part of the country's territory can be recorded.

License agreements which could be detrimental to national economy can not be recorded. The license agreement is not subject to any approval by public authorities.

There is not time limit for recording a license after its effective conclusion. However, the recordal is important for a licensee to be a party in any proceedings against third parties, for a licensee to institute proceedings, with the licensor's consent, solely against third parties and to be able to show evidences of use on behalf of the licensee in a cancellation action for non-use, use by a non registered user does not benefit the owner.

The documents and information needed for recording a license are the following:

- Licensor's name.

- Licensor's address.

- Licensee's name.

- Licensee's address.

- Registration/Application number.

- Mark/Title of the invention.

- Description of goods & services involved (in case of partial license) .

- POA (in case the representative person is not the agent of record) .

- Original or certified copy of the license agreement.

The license agreement should be translated into Spanish. It does not require any kind of legalization for trademark cases. In patent cases the document should be legalized up to the nearest Cuban Consulate.

The POA does not required legalization; it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

Administration of I.P Rights-Cuba Renewals

The term of registration is 10 years counted from de application date. The additional term from any renewal until the next renewal is 10 years. A renewal can be filed 6 months prior the due date. A six months grace period is provided for filing a renewal application provided a surcharge is paid.

There is not any kind of examination during the renewal procedure. It is not required to file an affidavit of use, a declaration of intention to use or evidences of use in order to renew the registration for an additional term of 10 years.

The list of goods and/or services can be limited but not extended on renewals.

If the assignment or change of name/address has not been recorded with the office, renewal must be filed in the name/address of the owner of record. It is advisable to perform the recordals before filing the renewal application in order to obtain the Certificate of Registration, issue by the Office, in the name of the new owner.

The documents and information needed for filing a renewal application are the following:

- App licants' name.

- Applicants' address.

- Registration number.

- Mark.

- International Class of Goods & Services.

- Description of goods & services.

- POA (in case the representative person is not the agent of record).

The POA does not required legalization it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

Administration of I.P Rights-Cuba Annunities

Patent annuities should be paid yearly. Annuities are payable from the date of filing. The first two annuities have to be paid at the moment of filing of the application. The first maintenance fee is due for the third year. The maintenance fees shall be due in respect of the third year and each subsequent year to a maximum of 15 years from the application date.

Maintenance fees for a patent/patent application in respect to the corresponding coming year are due on or before the day of the anniversary of the date of filing of the application. A fee for an extension of protection term for another 5 years should be paid along with the maintenance fee for the 11 th year. Six-month grace period is allowed provided a surcharge is paid. No restoration of the patent rights is possible if the payment of annuity is missed.

The industrial model patents are granted for a period of 5 years extendable for another 5 years and it is not required to pay maintenance fees.

The documents and information needed for carrying out the payment of annuities are the following:

- Particulars of the applicant/owner.

- Application/Patent number.

- Application date.

- POA (in case the representative person is not the agent of record).

The POA does not required legalization it must be simply signed by a representative person of the applicant company. The original POA may be filed latter provided a surcharge is paid.

PCT National Phase Quotation

The quotation you will obtain here is based on preferential fees given for a package of applications in several countries (at least in two of them). Therefore you need to select more than one country to get a quotation (if you would like to obtain a quotation for only one of the below countries please contact us). The system is an excellent tool which will allow you to get, in a few seconds, the total cost involved in entering a PCT national phase application in countries of our region. At the end of the process a report is issued which you can print and forward us for confirmation in case you decide to use our services. The system is regularly updated; however the quotation is not intended to constitute a commercial offer until our confirmation is given. Any fees are subject to change without notice.

First of all you will be asked on the number of conventional priorities the application is based and then you should select the countries of interest. Please note that for some countries additional information is needed. Translation costs are also available selecting the source language and providing the number of words in the source document.

If you have any additional question or need our assistance please contact us.

No. of priorities to be claimed



No. of Pages (Specification, Claims and Drawins)   


No. of Independent Claims   


No. of Multi-dependent Claims   


No. of Dependent Claims  




Total No. of Claims   




Total No. of Claims  














No. of words of the source document


Select the source language  




No. of words of the source document  


Select the source language  





Philosophy

Nowadays I.P. plays a central role in most commercial transactions. As our economy becomes more and more international and competition increases the importance of I.P. Rights becomes ever clearer, therefore to be successful in the market companies need to have a well thought-out I.P. strategy as a part of their business strategy.

However I.P. Rights are an increasing cost factor; they are time consuming and difficult to obtain, enforce and maintain. All the above require professional, precise, cost-effective and fast I.P. services.

From our side in order to be successful in today's world, we must distinguish ourselves from our competitors, be unique, and must concentrate on our strengths. Our philosophy encourages an entrepreneurial spirit, proactive, creative problem solving and the highest levels of client services by combining big firm ability and experience with small firm creativity, responsiveness and cost-effectiveness.

Individual Attention

A&E is a company large enough to cover all fields of I.P. protection but small enough to give individual and careful attention to every client/case.

Because we are small and a specialized practice firm we are able to provide dedicated personalized service to all our clients from individual persons to large corporations. We treat all our clients with the same level of courtesy, honesty and respect they expect and deserve from us. All the clients receive the attention and direct involvement of one of the partners, each of whom has more than twenty years of experience with I.P. counselling.

A&E is a flexible and manageable company lacking of internal bureaucracy which allows us to be more focused on our clients and to be better equipped to service their needs personally.

Fees

Obtaining, maintaining and enforcing I.P. Rights is an extremely expensive proposition in today's competitive business environment. In this context every service must be worth its cost.

The traditional hourly fee-for-service billing arrangement is impractical and excessive burdensome for companies clients. We work on flat fees, thereby allowing the client to make an exact budgetary planning before sending an order instruction.

Our staff has the background and qualification of attorneys in large firms but handles clients matter based on a fixed schedule of fees without the attendant fees and overhead of those large firms. We operate efficiently and effectively which allows us to maintain a small technical and administrative staff and consequently to keep a reasonable fee structure.

Our billing procedures are transparent and we are flexible on billing arrangements and always able to provide you with offers and discounts on a volume basis.

Quality and Proactive Approach

Nowadays business and companies are not expected to receive a conservative method of practice from their I.P. advisers, they require a proactive and innovative I.P. law firm. Our philosophy is to help our clients in a proactive manner to anticipate future needs and to advise them the better way to safeguard their I.P. Rights al the lowest cost possible. We are expert at anticipating potential problems and recognizing opportunities to solve these problems to our client's advantage. We are committed to save our client's time in a way they do not even have to think of the right question to ask.

We pride ourselves on finding the most efficient and cost effective way to achieve the best possible result. Our philosophy is avoiding costly process whenever possible. We work to develop alternative creative solutions to avoid costly and time consuming prosecutions.

All our professionals are experienced in their respective areas. When clients contact us they deal with an experienced lawyer or engineer, not a junior associate or other person of our technical staff.

We work to become the natural choice for clients seeking I.P. assistance for Mexico and Cuba and to meet or exceed the needs and expectations of our clients. A&E recognizes that the success of every client is a success indirectly shared by our firm.

Responsiveness

Time is extremely important when dealing with I.P. matters. A small firm like A&E does not have a large organization hierarchy and can act very quickly in response to the needs of a client.

We strive to return all communications (fax, e-mail, mail) promptly within the next hour from the moment they are received in our office. Our organization's commitment is to make all the necessary arrangement to avoid our clients sending reminders thereby helping our clients companies to save time and pressure on their resources.

Our staff is available for any need our clients might have at virtually any time. Thanks to this around the clock access our clients in other regions (Asia, Europe ) are able to receive the same high level of responsiveness as the clients of our region.

Technology

Technology has levelled the playing field in many respects, and a small company like ours can now compete on the same stage as large I.P. law firms.

We place a high priority on system reliability and network accessibility which support us to respond with immediacy and maximum efficiency to our clients.

We use technology to coordinate our work, administer our client's I.P. Rights and share documents electronically. Part of our vision is to become a paperless office, therefore all our communications are sent via e-mail with the exception of Certificates of Registrations and other original-needed documents which are sent by accelerated courier.

The firm benefits from an advanced computer and telecommunications network with access to the most important patent and trademark databases. We count with a flexible and powerful software for the administration of our clients I.P. Rights providing us with a reliable and cost efficient system for the surveillance of renewals, patent annuities, etc.

Contact us

Contact via form below and we will be get in touch with you within 24 hours.

Tel: (52 55) 5335 3871
Fax: (52 55) 5424 2856
aldecoaelias@aldecoaelias.com
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