Cuba's pace of U.S. patent filings picks up

Posted on Tuesday, 09.22.09
Cuba's pace of U.S. patent filings picks up
BY JUAN O. TAMAYO | jtamayo@ElNuevoHerald.com

Itwas a brief item in a newsletter that tracks U.S. government
activities: U.S. Patent No. 7,556,726 was awarded on July 7 to the
National Center for Scientific Investigations in Havana.

Yes, Havana, Cuba.

Indeed, throughout 50 years of hostility across the Florida Straits,
Havana has been obtaining U.S. patents -- regularly, quietly and with
little of the acrimony that has laced battles over trademarks such as
Havana Club and Cohiba.

Records of the U.S. Patent and Trademark Office show that since 1975
when PTO records went digital and could be searched by country of
origin, Cubans have been awarded 74 patents, covering everything from
harvest combines to pharmaceuticals and medical procedures.

That number is low compared to other countries -- ``just short of North
Korea,'' joked Werner Stemer, senior patent attorney with the Hollywood
firm of Lerner Greenberg Stemer. But Cuba's filings have been on a
``steep curve'' up since 2000 as its biotech industry blossomed.

Stemer said Cuba files for patents in Washington for a simple reason:
Patents only protect inventors in the country where they are filed. So
Cuba is wisely trying to protect its inventions -- and its potential
profits -- in the world's single largest market.

There's no way to figure out whether any of the patents have, in fact,
produced profits, several patent experts said.

Currently, however, clinical trials are underway for nimotuzumab, a
Cuban-developed drug designed to target cancer cells. In the past other
U.S. companies have received permission to test Cuban drugs, but this is
the first time since the Cuban revolution that a trial has actually gone
forward in the United States.

PATENT RIGHTS

While the Cuban patents credit the individual inventors who worked on
the developments, the rights to the patents are virtually always
assigned to government entities. Patent 7,556,726 was assigned to the
National Center for Scientific Investigations, an agency of the Ministry
of Higher Education.

Havana has retained the right to file for U.S. patents and trademarks
because President John F. Kennedy exempted intellectual property when he
tightened the trade embargo on Cuba in 1962.

That was likely because such property rights are protected by
international treaties, said Marvin Feldman, a patent specialist and
partner in the Lackenbach Siegel law firm in Scarsdale, N.Y. It has
handled several Cuban cases.

The exemption also allows Cuba to pay the U.S. law firms that handle the
often-complicated applications -- about $4,000 to $5,000 for simple
products, $8,000 to $12,000 for more complex scientific products or
procedures, according to four patent lawyers contacted by El Nuevo Herald.

PTO records show the firm of Hoffmann & Baron in Syosset, N.Y., handled
a large number of the Cuban cases. A telephone call to the firm seeking
comment was not returned.

Cuba's patents cover a broad range of products and procedures, from
rotary engine improvements to a new process for the rotation of fetal
heads during birth, a sugar cane harvester, surgical orthopedics and
various vaccine and biotech developments.

Many of its patents from the '70s and '80s covered agricultural
advancements, but the majority of the later patents are for
pharmaceuticals, medical procedures and biotechnology advances. Patent
7,556,726 covered ``equipment used in electrophoresis'' -- defined as
``the motion of dispersed particles relative to a fluid under the
influence of a spatially uniform electric field.''

PTO records from 1790 to 1975 are available online as digital images
searchable only by issue date, patent number and classification -- not
by country of origin.

TRADEMARK FIGHTS

U.S. and Cuban interests have clashed bitterly and often over some
trademarks, especially for well-known products such as Havana Club rum
and Cohiba cigars -- produced by both Cuba and rivals that sell in the
U.S. market.

U.S. companies have registered some 7,000 brands with the Cuban Office
of Industrial Property in Havana, said Washington lawyer Robert Muse, an
expert on Cuba embargo laws. A list of the registries runs from Dockers
to Aunt Jemima, Velveeta and Goya, the Hispanic food products firm, and
dates as far back as 1918. Cuba is believed to have registered far fewer
brands with the PTO in Washington.

But the issue of patents has been free of controversy with one glaring
exception -- Fidel Castro's very public boast in 2001 that Cuba had
joined Brazil in producing its own versions of HIV/AIDS drugs already
patented in the United States.

DRUG COMPANIES

In reply, two patent attorneys consulted by El Nuevo said, some U.S.
pharmaceutical companies have been trying to register some of their
U.S.-patented drugs in Havana so that they can at least claim that they
tried to protect their intellectual property. President Clinton amended
the embargo in 1995 to permit U.S. companies for the first time since
1962 to pay the costs of registering patents and trademarks in Cuba.

A check of the Cuban Office for Industrial Property's website showed
several mentions of ``applications for patent certificates'' by U.S.
companies such as Pfizer and Wyeth. Several El Nuevo Herald telephone
calls to COIP for details went unanswered.

In his 2001 statement, Castro accused U.S. manufacturers of trying to
make too much profit from their drugs while thousands died from AIDS in
poor countries such as South Africa, and added that Cuba's use of the
U.S. drugs was a response to American companies' alleged violations of
Cuban trademarks.

Cuba's pace of U.S. patent filings picks up - Cuba - MiamiHerald.com (22
September 2009)
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