Protection of Inventions
What is an Invention?
Invention is a technical solution, created to solve a technical problem. The subject of an invention may be a device, process, material, including biological material, or a combination thereof.
Discoveries, schemes, rules and methods for performing mental acts or doing business shall not be regarded as the subject of inventions [Patent Act (PA) § 6 Section 2 and Utility Model Act § 5 and § 6].
Every invention has an author. The author of an invention (i.e. the inventor) is a natural person who has created an invention as a result of his or her inventing activities [PA §13 Section 1]. A legal person can never be the author of an invention. The author's rights are inalienable, and cannot be waived or transferred [PA § 13 Section 6].
An invention may sometimes have several authors.
If an invention is created as a result of joint inventing activities of several natural persons, such persons are joint authors [PA § 13 Section 2]. In the case of joint authorship, all rights arising from the authorship are exercised by the authors jointly, i. e. none of the authors can withdraw his or her authorship. Joint authors may not leave out one of them at the disclosure of their names, but each author may prohibit the disclosure of his or her name as the author [PA §13 Section 7] or waive the proprietary rights of the author on the whole or in favour of somebody [PA §13 Section 9].
Sometimes different people have made the same invention independently at the same time. In very rare cases different people have made the same invention on the same day. As the actual moment of the creation of an invention is very difficult or even impossible to determine, first to file principle in filing a patent application with the Patent Office has been acknowledged worldwide. According to this principle, the author of an invention is considered the person, who has been noted the author in the first filed patent application or application for registration of a utility model. If the application has not been filed, nobody has the right to state his or her authorship. Therefore, without applying for a patent nobody will receive neither moral nor proprietary rights.
Proceeding from the Constitution of the Republic of Estonia (RT 1992, 26, 349; I 2003, 29, 174; 64, 429) § 39, an author has inalienable rights to his or her creation. Therefore, the right to apply for a patent/utility model and become the proprietor of a patent shall belong to the author of the invention. In case of the death of the author, the right to apply for a patent shall be transferred to the inheritors or legal successor(s) of the inventor [PA § 12 Section 1].
On the other hand, most of the inventions for which a patent is applied for are created in scientific research establishments by employed scientists and engineers whose task is to find new technical solutions and, therefore, if an invention is created in the performance of contractual obligations or duties of employment, it is legitimately considered to belong partially or wholly to the employer. In many countries the right to apply for a patent and to become the proprietor of a patent is vested in the author or other person pursuant to the contract or employment contract.
In Estonia the author of the invention has the right to apply for a patent for the invention created in the performance of duties of employment until a separate act shall have been passed. Where the invention has been made in the performance of contractual obligations or duties of employment, the right to become the proprietor of a patent shall belong to the author or to another person pursuant to the contract or contract of employment [PA § 12 Section 2]. Therefore, if such contract has not been concluded, the right to apply for a patent shall belong to the author.
The data concerning the existence of such contract and its kind should be filed in the patent application, although the Patent Office shall not examine the correctness of the data at the receipt of the patent application.
If the patent belongs to the employer or to another person, the author has the right to receive fair proceeds from the profit received from the invention (sometimes from the non-use of the invention) [PA §13 Section 8].
Several applicants (joint applicants), e.g. the author and his or her employer, may file a patent application jointly. Joint applicants should agree upon the conditions of patent ownership and use of the invention before filing of a patent application.
If two or more persons apply for a patent regarding the same invention independently of each other and different natural persons are indicated as the author, the natural person who is indicated as the author in the patent application which has been filed earlier or which has an earlier date of priority is deemed to be the author [PA §12 Section 5].
At the moment, the Estonian Patent Office does not provide analyse the profitability of the invention neither in Estonia nor abroad, but makes both standard and specific patent searches for a fee. All areas of engineering are covered. In case of the appropriate order the patent office will make a comment on the compliance of the invention with the criteria of novelty and inventive step in the results of the search.
The patent examiners of the Patent Department provide free consultations on compilation of a patent application and a utility model application to applicants.
Assistance in preparation of a registration application and filing thereof with the Estonian Patent Office can also be provided by a patent attorney.
A patent attorney a professional qualified in intellectual property law. Only a person who has been awarded the qualification of a patent attorney by the Estonian Patent Office may operate as a patent attorney.
Patent attorneys usually have a degree in engineering or science and specialise in different objects of industrial property or inventions belonging to different technical fields. Most patent attorneys work in patent agencies like lawyers work in law offices.
A patent attorney is a most competent person to assist in the matters concerning the preparation of a patent application and filing of an application with the Estonian Patent Office. A patent attorney is also competent to represent the applicant in court.
A patent applicant may contract with a patent attorney for the attorney to prepare and manage all patent documents. An applicant shall grant authorisation to the attorney to file the application and communicate with the Patent Office. Notarial authentication of authorisation is not required. Unlike in case of law firms, authorisation cannot be granted to patent bureaus.