In the course of preliminary 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. Therefore deficiencies are asked to be eliminated. If explanations are not provided or the deficiencies are not eliminated by the due date, the Patent Office will reject the patent application.
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). Until publication the Patent Office will not disclose the essence of the patent application to the public. notices of publication of patent applications are published in the official gazette of the Patent Office. 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 on the spot and obtain copies of patent application documents.
An applicant is notified of the publication of the patent application in writing. 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A patent application shall not be published if:
- the patent application is withdrawn or deemed to be withdrawn earlier than 18 months after the filing date;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 Patent Office shall commence the substantive examination of the application.
During the substantive examination of the application the Patent Office shall assess novelty, inventive step and industrial applicability of the invention (Patents Act § 8).
The novelty of an invention shall be assessed taking into account the concept of absolute 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.
In the beginning of processing an examiner of the Patent Office carries out the state of the art search in field the invention belongs to. The search results are forwarded to the applicant. Taking into account the results of the search the applicant may make amendments to the patent application. Though, the extent to which the 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 (Patents Act § 25).
Corrections and amendments are deemed to alter the subject matter of an invention if they contain essential technical features of the invention or patent claim. Correction or supplementation of drawings is especially sensitive from the viewpoint of altering the subject matter of an invention. The scope of patent protection shall be determined by the wording of the independent patent claim. The scope of definitions contained in the patent claims 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 (Patents Act § 23 (2)).
Substantive examination shall be concluded by the issue of the patent or rejection of the patent application.
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 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 €96 within three months as of the date on which the decision is made (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 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 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).
Last updated: 19.01.2022