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December 30, 2020

USA and Cuba implement vast IP fee amendments

The US Patent and Trademark Office (USPTO) and the Cuban Intellectual Property Office (OCPI) have both amended their respective fees in relation to intellectual property. The Cuban fees have been altered for the first time since 2012, with the amendments published in the resolution of December 18, 2020 and entering into force on January 1, 2021. The US, on the other hand, has amended its fees as a result of stringent reviews of its fee schedule over the past two years, with the new fees implemented from January 2, 2021.

Trademark fees
The majority of intellectual property fees in Cuba have risen immensely by 24 times, owing to the fact that the costs have remained the same for 8 years. A trademark application previously amounted to 300 CUP for up to 3 classes, and 100 CUP for each additional class. This has inflated to 7200 CUP for up to 3 classes, whilst the cost for each additional class will now be 2400 CUP. A collective trademark application for up to 3 classes has also risen from 350 CUP to 8400 CUP. Standard trademark renewal fees have increased from 300 CUP for up to 3 classes to 7200 CUP, whilst collective trademark renewal will now be 8400 CUP, inflating from 350 CUP.

Patent fees
Patent fees have also increased dramatically by 24 times, with an application in paper form including the first and second annuity previously constituting 460 CUP, and 80 CUP for each independent claim starting from the second. The cost of a patent application will now constitute 11,040 CUP, and each independent claim starting from the second now 1920 CUP. The grant of an invention patent certificate has risen by the same percentage, from 200 CUP to 4800 CUP.

Annuities have been heavily impacted by the fee amendments. The previous fee for the third year annuity was 200 CUP, now, 4800 CUP, whilst the 15th annuity is now 19,200 CUP increasing from 800 CUP. The 20th annuity has sky-rocketed up to 31,200 CUP from 1300 CUP.

Industrial design fees
Industrial design fees have also inflated by 24 times, with the previous filing fee of 200 CUP, inclusive of the first and second annuity, rising to 4800 CUP. Additional designs of the application after the first will now cost 480 CUP, increasing from 20 CUP.

Mirroring patent annuity fees, the 3rd annuity for an industrial design has ballooned from 60 CUP to 1440 CUP, and the 10th annuity will now constitute 2400 CUP as opposed to the initial 100 CUP.

Utility model fees
Utility model applications have followed suit, with the filing fee inclusive of the first and second annuity rising from 350 CUP to 8400 CUP. Each group of up to 5 claims has inflated to 1920 CUP from 80 CUP, whilst the previous grant fee of 150 CUP will now comprise 3600 CUP.
Annuity fees have again been hugely impacted, with the 3rd annuity fee increasing from 150 CUP to 3600 CUP, and the 10th annuity fee now 12,000 CUP, a significant difference from the previous 500 CUP.

Trademark fees
The amendments on the part of the USPTO impact various trademark fees, and constitute several inflated costs. The standard filing fee for a trademark application via the Trademark Electronic Application System (TEAS) has risen by 27% to 350 USD per class from 275 USD per class. An application through TEAS Plus, which has a lower filing fee but more detailed requirements, has increased by 11% from 225 USD per class to 250 USD per class.

A new fee has been introduced for the deletion of goods, services, and/or classes from an registration after the submission of, but prior to the acceptance of, a declaration of use. This new fee applies to those filed through TEAS, and constitutes 250 USD per class if filed online and 350 USD if filed on paper. If the deletion request is filed online and prior to the declaration of use, no fee is charged.

The cost of a declaration of use filed through TEAS has increased by 80% to 225 USD per class from 125 USD per class. Additionally, both the fee for filing a notice of opposition and a petition to cancel have risen to 600 USD per class from 400 USD per class, respectively, comprising a 50% increase.

Filings and submissions through paper form have experienced an increase in fees to offset the higher processing costs. A standard trademark application submitted in paper form, for example, has inflated by 25% from 600 USD per class to 750 USD per class. It is worth noting that during the fiscal year 2019, less than 0.02% of initial trademark applications were filed in paper form, therefore amendments to paper application fees are not likely to impact a vast majority of applicants.

The increase in IP fees for both Cuba and the US demonstrate how the economy and the commercial climate can impact inflation on the intellectual property field. The increased fees are hoped to allow for the IP offices of both countries to invest in resourcing and modernization, which, in turn, will benefit applicants with a more efficient, time-saving and stable service.

Author: Danielle Carvey