A patent is a form of legal protection for inventions (patent protection). Although the nature of an invention is not defined in legal acts, an invention can be defined as a technical solution to technical problems. Therefore, discoveries and management or business ideas are not regarded inventions and are not patentable [see Patents Act (hereinafter PA) § 6 Section 2].
A utility model is another form of legal protection for the invention.
Upon the grant of a patent, the proprietor of a patent has exclusive right to use the invention protected by the patent [Exclusive right of proprietor of patent- PA § 15].
The legal philosophical basis for the grant of patent protection is a social agreement: in return for the inventor's input into the general development of science and engineering, the society will give the author of the invention exclusive right to use the invention for a specified term to get profit from it. So the term of the patent is limited.
In the Republic of Estonia, as in most other countries, a patent shall be valid for twenty years [Term of validity of patents - PA § 37].
The state shall protect the exclusive right of the proprietor of a patent - like all property rights - through the administrative agencies (police, executive agencies, customs authorities) by implementing judicial and executive powers [PA § 53].
An invention is granted patent protection upon registration of the invention in the register of patents [PA §5 Section 2].
A patent application has to be prepared and filed with the Estonian Patent Office for the registration of an invention and grant of patent protection. When determining the patentability of an invention, the Patent Office shall examine if it is new, involves an inventive step and is industrially applicable [Criteria of patentability - PA § 8]. Inventions that shall be deemed to meet the criteria of patentability shall be registered in the register of patents [PA § 34]. The registration of an invention in the register of patents is deemed to be the issue of a patent. The person who applied for a patent (the applicant) shall automatically become the proprietor of a patent upon the registration of an invention. A letters patent (in Latin litterae patentes) is issued to the proprietor of a patent - a document which certifies the registration and the exclusive right of the proprietor [PA § 36].
The need for a patent may be looked upon from several viewpoints.
A patent is one of the most efficient ways to be competitive. A patent provides a legal means for the entrepreneurs to establish a monopoly for the production and marketing of their goods under free market conditions.
Large sums are spent on research and development. Introduction of new products always requires significant investments. Without patent protection, the competitors can copy your new products without spending any money on product development and sell them cheaper. The monopoly granted by patent protection over the use of inventions will prevent the competitors from producing the same products and enable to dictate prices to cover the expenditures and get the necessary income from the sales of the product.
Having a patent helps to find cooperation partners and even sponsors for start of production.
A patent is a means of ensuring a market position and occupying new markets. Harmonisation of patent policy helps to establish the single market in the unions of states.
Besides, a patent can be a matter of honour and a means for the proprietor of a patent to record his or her name in the history of technology.
A patent application is a set of documents prepared according to certain rules that shall be filed with the Patent Office by the author of the invention or the person who has the right to apply for a patent.
The formal and substantive requirements for the documents contained in the patent application and the procedure for filing patent applications are established by the Patents Act [PA § 19 and § 20] and the regulation by the Minister of Economic Affairs and Communications The Formal and Substantive Requirements for the Documents Contained in the Patent Application and the Procedure for Filing Patent Applications (hereinafter Regulation) (in the Estonian language) (RTL, 11.01.2005, 5, 36).
Documents Contained in the Patent Application
A patent application shall contain the following fundamental documents:
- a request for the grant of a patent (one copy);
- a description of the invention (three copies);
- a patent claim (three copies);
- drawings or other illustrative material, if required (three copies);
- an abstract of the subject matter of the invention (two copies).
In addition to fundamental documents, a patent application should contain the following documents:
- a document certifying the payment of a state fee;
- a document certifying the deposit of biological material if the subject of the invention is a biological material and if the description of the invention does not disclose the subject matter in a manner sufficiently clear and complete;
- an authorisation document if the patent application is filed via a patent attorney;
- documents certifying the priority claim if priority is claimed on the basis of a first patent application or registration application of a utility model in the member state of the Paris Union or WTO;
- an application of keeping the patent application secret and a certificate on keeping the invention in secret of the Ministry of Defence or a competent agency of a foreign country if the patent application contains either an invention under state defence kept in secret by the Ministry of Defence or an invention kept in secret in a foreign country an application for patenting of which has been filed on the basis of the foreign contract;
- a permission of a competent agency of the foreign country for patenting the invention in the Republic of Estonia in case of an invention kept in secret in a foreign country and in case a patent applicant instead of the competent agency of a foreign country files the application.
Documents shall be filed in Estonian. In case of foreign applicants the original additional documents are in a foreign language. The translation into Estonian shall be added to the documents in a foreign language.
A patent application should be filed using a special application form available from the Estonian Patent Office or at the application forms page on the Internet. A patent application shall be filed only in Estonian. Patent applications in foreign languages are not accepted.
The text of the fundamental documents (including patent applications) should be typed. Handwritten documents are not accepted.
Filing of a Patent Application
A patent application may be filed with the Estonian Patent Office either by post (ordinary or courier mail) at the address of the Estonian Patent Office or brought to the Patent Office personally. A patent application can be electronically filed via the portal of electronic filing.
A patent application can be submitted to the Receiving Department or put into a twenty-four-hour mailbox.
A patent application shall be accorded a filing date as of the date of actual receipt (receiving date) of the documents by the Estonian Patent Office.
The receiving date of a patent application received by ordinary post is the date of the actual arrival of mail to the Estonian Patent Office. The receiving date of a patent application received on rest days and holidays is considered the first workday after the holiday.
The date of posting of a patent application is not taken into account in determining the receiving or filing date.
The receiving date of a patent application delivered by courier mail is the date on which the courier gave the patent application to the Estonian Patent Office.
In case of filing a patent application with the Estonian Patent Office using the twenty-four-hour mailbox, the receiving date is considered the date of posting of a patent application into the said mailbox. The mailbox is emptied daily at midnight.
The procedure for filing patent applications and special cases concerning joint applicants, and national and foreign applicants, have been laid down in §§ 66-69 of the Regulation.
Filing Date of a Patent Application
The filing date of a patent application shall be the date of receipt (receiving date) by the Estonian Patent Office of a set of documents that contains at least the following elements of a patent application:
- a request for the grant of a patent or other proof that the submitted documents should be treated as a patent application filed in Estonian;
- name and address of the applicant or data necessary to deliver notices from the Estonian Patent Office to the applicant;
- a document which on the face of it appears to be a description of the invention.
Where, upon review of the documents received, the Patent Office finds that an element of the patent application listed above is missing from the set of documents, the Patent Office shall notify the person who filed the patent application. Missing elements shall be delivered within two months from the date of the Office note. The Patent Office shall establish the date on which the applicant has eliminated all the deficiencies in the initially submitted documents as listed by the Patent Office as the filing date of the patent application.
Fee for Filing a Patent Application
A state fee of 223.69 EUR shall be paid upon filing a patent application to the Ministry of Finance of the Republic of Estonia bank account:
- SEB - IBAN EE 89 1010 2200 3479 6011 ; BIC / SWIFT code – EEUHEE2X ; Tornimäe 2, Tallinn
- Swedbank - IBAN EE93 2200 2210 2377 8606 ; BIC / SWIFT code – HABAEE2X ; Liivalaia 8, Tallinn
- Danske Bank - IBAN EE 40 3300 3334 1611 0002 ; BIC / SWIFT code – FOREEE2X ; Narva str 11, Tallinn
- Nordea Bank Finland PLC - IBAN EE 701 7000 1700 1577 198 ; BIC / SWIFT code – NDEAEE2X ; Liivalaia 45, Tallinn
Reference number of the Estonian Patent Office 2900082362, reference number of the Board of Appeal 2900074422.
55.92 EUR shall be paid where the applicant is a natural person or the applicants are solely natural persons.
A state fee for the filing of a patent application shall be paid within two months as of the filing date of the patent application. The specified term for the payment of the state fee shall not be extended [PA §20 Section 2].
If patent claims containing more than ten claims are filed, a supplementary fee shall be paid for each claim starting with the eleventh claim [PA §20 Section 3].
Activities taken by patent applicants to continue the examination of international patent applications filed under Patent Cooperation Treaty (PCT) in the Republic of Estonia is considered the entry of the international application into in the national phase. It mainly concerns patent applications filed by foreign applicants.
The procedure for entry of international applications into the national phase has been laid down in Articles 22 and 39 of the PCT and § 33 of the Patents Act. The procedure for filing international patent applications into the national phase is established by the Regulation of the Ministry of Economic Affairs and Communications The procedure for filing international applications with the Patent Office (in the Estonian language). Detailed guidelines have been provided in Volume II of the PCT Applicant's Guide published by WIPO.
The main requirement is that the applicant shall file a corresponding request together with the Estonian translation of an international application with the Estonian Patent Office within the time limit prescribed in § 33 Sections 1 or 3 of the Patents Act and pay a fee of 223.69 EUR. In justified cases the applicant may be given an extension for filing a translation of the international application of thirty-three months as of the date of priority, provided that upon filing of the translation the applicant pays an additional fee of 31.95 EUR.
More resources on the WIPO Internet:
Upon receipt of a patent application, the Estonian Patent Office shall examine the compliance of an application with the minimum requirements for applications [PA § 21]. If the application meets the requirements, the Patent Office shall notify the applicant of the number and filing date of the patent application. If the requirements prescribed by § 21 of the Patents Act are not satisfied, the Patent Office shall not treat the filed documents as a patent application and shall not process the application.
After the patent application has been accepted for processing, the Patent Office shall continue the examination of application documents [PA § 22 - preliminary processing of patent applications]. The Patent Office shall examine the compliance of the documents contained in the patent application with the formal and substantive requirements established by the regulation of the Minister of Economic Affairs and Communications The Formal and Substantive Requirements for the Documents Contained in the Patent Application and the Procedure for Filing Patent Applications (in the Estonian language).
In the course of preliminary processing, the Patent Office shall verify the following: compliance of patent application documents with the requirements relating to the form of documents, information on the author, an authorisation document, priority documents, payment of the state fees, etc. Where, upon review of the documents received, the Patent Office finds deficiencies in the patent application, the Patent Office shall notify the person who filed the patent application. Special attention is drawn to the compliance of the application documents with the formal requirements (size of the paper, margins, legibility of the text, compliance of the drawings with the requirements of technical drawing). Deficiencies in the patent application documents prevent the publication of a patent application and the applicant is asked to remove the deficiencies. The Patent Office shall make a decision to reject the patent application if the applicant fails to provide explanations or eliminate the deficiencies by the due date.
The Patent Office shall publish a patent application not earlier than eighteen months after the filing date or, if priority is claimed, the date of priority of the patent application [PA § 24]. The Patent Office shall disclose the subject matter of an invention to the public as from the date of publication of the patent application. After the publication, the patent application and the processing of the patent application shall be public. Anyone may have access to the patent application file and obtain copies of patent application documents.
The applicant may request the prior publication of a patent application, but not the delay of the publication.
After the publication the Patent Office shall commence the substantive examination of the application.
The date of priority shall be taken as the basis for determining the order of examination of applications. As the examination is carried out as to the novelty of the invention, the processing of applications belonging to the same technical field shall be commenced in the order in which the applications are received depending on the filing date or the date of priority of the applications.
During the substantive examination of the application, the Patent Office shall assess novelty, inventive step and industrial applicability of the invention [PA § 8].
The novelty of an invention shall be assessed taking into account the concept of absolute (worldwide) novelty. According to this principle, the novelty is determined on the basis of worldwide patent information and information provided in reference books in science and technology and product catalogues. Likewise, information disseminated by the press or broadcasted by a radio, TV or the Internet, and public use and display at an exhibition of the invention, shall be taken into account. The same principles also apply to the determination of inventive step. The requirement of industrial applicability is met when the use of the invention does not depend on the individual abilities of the user, on random factors or undetermined conditions.
Processing of a patent application starts by carrying out the state of the art search in field the invention belongs to. The results of the search shall be reported to the applicant. The patent applicant may make amendments to the patent application by taking into account the results of the search, though, the extent to which to amendments can be made, is limited. The applicant should not change the subject matter of an invention nor the scope of patent protection as disclosed in the original application [PA § 24, § 25].
Corrections and amendments are deemed to alter the subject matter of an invention if they contain essential technical features of the invention which were not included in the original description of the invention or patent claim, especially the drawings. The scope of patent protection shall be determined by the wording of the independent patent claim. The scope of definitions contained in the patent claim should not be extended after the publication of the patent application.
The examiner shall inform the applicant of circumstances which hinder the processing of the application and shall require the elimination of deficiencies or provision of explanations [PA § 23 (2)].
If the Estonian Patent Office finds that the invention complies with the requirements of novelty, inventive step and industrial applicability, and that the form of the patent application documents complies with the requirements relating to the form of documents, the Patent Office shall make a decision to issue a patent [PA § 23 (4)]. For an invention to be registered in the register, the applicant shall pay a state fee of 95.86 EUR within three months as of the date on which the decision is made. If the state fee is not paid within the prescribed term, a patent application is deemed to be withdrawn [PA § 35 (4)]. This deadline is final.
If an invention fails to comply with the requirements of novelty, inventive step or industrial applicability, or the applicant fails to provide explanations or eliminate deficiencies from the application, the Patent Office shall make a decision to reject the patent application [PA § 23 (5)]. The decision of the Patent Office may be appealed to the Industrial Property Board of Appeal [PA § 30].
The Patent Office shall publish a notice of the issue of a patent in the Estonian Patent Gazette. As of the publication date of the notice, the patent applicant shall become the proprietor of a patent who has exclusive right to use the invention. It should also be noted that the right shall take effect as of the filing of the application. The letters patent shall be issued to the proprietor of a patent to certify the registration of the invention in the register of patents and the exclusive right of the proprietor of a patent to the invention [PA § 36].
The aim of patenting the invention in a foreign state is the same as in the Republic of Estonia: the inventor wishes to have the exclusive right to possess and use the invention in a foreign state.
Anyone can patent an invention in a foreign state. The state shall not intervene in the patenting abroad. An inventor should consider patenting abroad a valuable tool in achieving business objectives.
Unfortunately, two misunderstandings concerning patenting are widespread: first, that a patent obtained in one country will protect the invention in countries all over the world; and, secondly, that by filing a single patent application under the Patent Cooperation Treaty a person will obtain a patent that is valid all over the world.
However, a patent is only obtained by seeking protection separately in each country designated in the application or, if making use of the international agreements and treaties, in a group of states.
When an application is filed separately in each foreign state, a patent application should be prepared and filed pursuant to the procedure established by the patent law of a corresponding state. As a rule, a patent application shall be drawn up in the official language or languages of the state. Also, there are statutory requirements to use a local patent attorney to represent the applicant before the patent office.
The multilateral treaties and agreements concluded in the field of patents are the following: the Patent Cooperation Treaty, the European Patent Convention and the Eurasian Patent Convention.
* Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty sets up a system for filing patent applications using a uniform application form for obtaining patents in many states. Majority of the developed and developing countries in all parts of the world are party to the PCT.
To file an international patent application an applicant shall file an application in the form prescribed by the PCT with the national patent office of the contracting states of which the applicant is a national or resident or with the International Bureau of WIPO in Geneva. All countries where protection is sought should be designated in the international application. The International Bureau notifies each country that has been designated in the international application and sends these offices copies of international applications by the due date prescribed by the PCT. The role of the International Bureau ends here. From now on, the applicant communicates directly with the patent offices of the designated states. As a rule, there are requirements to use a local patent attorney to represent the applicant. A decision to grant or refuse to grant a patent is made independently by each designated country.
The Estonian Patent Office is the receiving office for international applications of Estonian inventors. Application forms are available for free at the Receiving Department of the Estonian Patent Office or can be can be downloaded from the "Application forms" page. International applications shall be filed either in English or German.
Detailed guidelines for filing an international application are also available in the manual PCT Applicant's Guide (Volume I) published by WIPO.
* European Patent Convention (EPC)
38 States are currently Parties to the European Patent Convention.
The European Patent Convention enables to apply for a patent simultaneously in several contracting states by using a uniform application form. As is the case with international applications, the states where a patent is applied for should be designated in the application. The difference lies in the fact that the decision whether to grant a patent or not shall be made by the European Patent Office. A patent granted by the European Patent Office shall be valid in all designated states if the applicant has submitted the required translations and paid the fees in due time.
A European patent application may be filed either with the European Patent Office or with the patent offices of the contracting states.
* Eurasian Patent Convention (EAPC)
The Eurasian Patent Convention consists mostly of the states party to the Commonwealth of Independent States (CIS). The Eurasian Patent Convention is the only international agreement that enables to obtain a Eurasian patent that is valid in all contracting states.
In case of international applications, please turn to the Estonian patent attorneys. They can assist you in contacting a patent attorney in a foreign state.
Patents Act and Regulations of the government of the Republic and Regulations of the Minister of Economic Affairs and Subacts are only in the Estonian language.
Estonia has become party to the following international treaties: