Patent application procedures at the Estonian Patent Office
The Estonian Patent Office (Eesti Patendiamet – EPA; hereinafter: Office) is a government agency that operates in the area of government of the Ministry of Justice and implements national economic policy in the field of legal protection of industrial property.
The Office provides legal protection to patents, trade marks, utility models, industrial designs, geographical indications and integrated circuits.
The Estonian Patent Office is a small Office. The number of staff working in the Office is 64. The staff of the Patent Department is 15.
The Patent Department carries out examination of patent applications and utility model applications. The Patent Department consists of the Preliminary Examination and Documentation Division and three technical divisions: Physics and Electricity Examination Division, Chemistry, Medicine and Foodstuffs Examination Division and Construction, Mechanics and Technological Processes Examination Division.
The Patent Department carries out examination of formal and substantive requirements. The Recgistry Department (Reception) checks the compliance of the applications with the minimum filing requirements.
Legal acts and guidelines
Examination of patent applications is carried out on the basis of the Estonian Patent Act (PA). Besides that, the Minister of Justice has issued several regulations, which are unfortunately available only in the Estonian language. Estonia has acceded to all main international agreements concerning patents. In practice the patent examiners use also the Guidelines for Examination in the European Patent Office, the main parts concerning search and examination have been translated into the Estonian language.
A patent application can be filed with the Reception of the Estonian Patent Office either on paper or electronically via the portal of electronic filing.
The Reception shall establish as the filing date of a patent application the date on which at least the following elements of the patent application are included in a set of documents received by the Office (PA § 21(1)):
- 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.
Formalities Examination is carried out by the Preliminary Examination and Documentation Division of the Patent Department (PA § 22).
In the course of formalities examination attention is mainly paid to the requirements relating to the formal requirements, sufficient data concerning the patent applicant, the letter of authorisation, priority documents, payment of the fees in due time etc. If any deficiencies or ambiguities occur, the applicant shall be notified thereof and explanations will be asked for. Special attention is drawn to the compliance of the application documents with requirements relating to the formal requirements (sheet size, margins, legibility of the text, and compliance of the drawings with the technical drawing requirements). Non-compliance with the formal requirements is an obstacle and technically hinders the publication of the patent application.
Formalities examiner checks whether there is an obvious lack of unity in the application and whether the subject matter is obviously non-patentable.
If the claims are sufficiently explicit, the formalities examiner forwards the application to the patent examiner of the technical division for carrying out a search. The results of the search are documented as a search report with a written opinion (EPA Vorm 12-107, EPA Vorm 12-108, EPA Vorm 12-110; see Annex I). The search report is sent to the applicant, who may make amendments in the application on the basis of the report. The search report is completed on the average during 6-10 months after the filing date.
The mentioned afore search report EPA Forms are similar to the forms used by PCT and the European Patent Office (EPO). Categories of the cited documents (X, Y, P, A, D, etc.) are the same used in PCT and the EPO search reports.
Estonia is a member state of the European Patent Convention (EPC) and belongs together with the EPO to the European Patent Network. Therefore the patent examiners of the Office can use the same search tools and methodology used by the EPO examiners.
In Annex II the list of main search databases used by the examiners of the Office for making searches have been given.
The Office shall publish a patent application not earlier than eighteen months after the date of filing or, if priority is claimed, the date of priority (PA § 24). Notice of the publication of the patent application published in the Patent Gazette of the Office. At the same time the Office publishes the patent application as “A” document. An applicant may request the prior publication of a patent application, but not the delay of the publication.
A patent application shall not be published if:
- the patent application is withdrawn or deemed to be withdrawn earlier than 18 months after the filing date;
- the patent application is rejected earlier than 18 months after the filing date;
- the publication of the patent application is hindered due to deficiencies in the form or contents of patent application documents;
- the patent application is classified.
After the publication the Office shall commence the substantive examination of the application.
During the substantive examination the 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 novelty. The state of the art is held to comprise all the technical information made available to the public by means of written or oral description, by use, or in any other way, in any part of the world before the filing date of a patent application or before the date of priority, if priority is claimed. In determining novelty, the contents of patent applications and the contents of registration applications of utility models, which were filed with the Patent Office earlier pursuant to the Utility Models Act, shall also be taken into consideration according to their filing dates or, if priority is claimed, dates of priority provided that the patent applications are published or deemed to be published. Pursuant to PA § 8(3) there is a grace period 12 months and declaration requirement in Estonia. An invention is considered to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Concerning industrial applicability an invention is considered as susceptible to industrial application, if it can be manufactured or used in economy.
In the beginning of examination an examiner may carry out supplementary search in case an applicant has made any corrections or amendments in the application after receiving the search report.
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 invention complies with the requirements of novelty, inventive step and industrial applicability, and the form of the patent application documents complies with the requirements relating to the form of documents, the Office shall make according PA § 23 (4) a decision to grant the patent (Annex III).
For an invention to be registered in the Patent Register, the applicant shall pay a fee for the grant and publication of the patent description within three months from the date of decision (PA § 35 (4)). If the state fee is not paid within the prescribed term, a patent application is deemed to be withdrawn.
If an invention fails to comply with the requirements of novelty, inventive step or industrial applicability, or the applicant fails to eliminate deficiencies from the application, the Patent Office shall reject the patent application (PA § 23 (5)). The decision of the Patent Office may be appealed to the Board of Appeal (PA § 30).
After the granting fee is paid the Office shall publish a notice of the issue of a patent in the Patent Gazette. At the same time the Office publishes “B” document and issues the letters patent to the patent owner (PA § 36).
Patent Application Processing Timeline
On the below given graph the average duration of patent application examination in case of the first filed national application.