Managing applications or registrations

The patent register contains data concerning the procedure of the legal protection of inventions starting from applying for patent protection to the grant of patent. The register also includes fees for years of validity paid for the maintenance of the patent, changes in the legal status of the patent and other changes in the registration data.

Upon acceptance of a patent application, the data of the patent application will be entered in the register. Subsequently, information concerning procedural acts, received and issued documents, terms provided by law and terms specified by the Estonian Patent Office will be entered in the register.

The entry in the register will be made on the basis of the decision to grant a patent. The patent applicant must pay a state fee of 96 euros for the registration of the invention in the patent register within three months from the date of the decision. If the state fee is not paid by the due date, the patent application will be deemed to be withdrawn.

The registration of inventions is being deemed to constitute the grant of a patent. The registration is evidenced by a patent letter issued to the patent owner consisting of a certificate and a patent description.

The management of the patent registration includes:

  • validity of the patent and patent application;
  • amendments to the patent;
  • changes in applicant’s or owner’s details;
  • transfer of patent;
  • registering a license;
  • registering a pledge;
  • issue of certified priority document;
  • issue of a duplicate patent letter;
  • access to the register and releasing information.

    The operations in the patent register must be performed on the basis of an application by an interested party (applicant or owner of the patent) or by a patent attorney representing them. An application may be submitted as an e-mail with a digitally signed attachment (free-form letter) sent to [email protected], by post, or delivered to the address itself.

    The applicant or the owner may be represented by a patent attorney who is established in the national register of patent attorneys and who can act in the field of patents. The list of patent attorneys operating in Estonia can be found on the Estonian Patent Office’s website.

    A person who does not have a place of residence or seat in Estonia must authorize a patent attorney to perform procedures related to patents, except the filing of an application, filing of a request for acceptance of an international application for national processing and payment of all state fees specified in the Patents Act.

    If several persons jointly conduct patent protection activities in the Estonian Patent Office and in the Board of Appeals, they may authorize a patent attorney or appoint from among themselves a joint representative who has a place of residence or seat in Estonia. The joint representative has the right to perform all acts relating to patent protection, subject to the authorization granted to him/her.

    The applicant will be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.

    A state fee must be paid for each year of validity in order to maintain the patent application and patent as well as the supplementary protection of the medical protection and plant protection product.

    A patent is valid for 20 years from the filing date of the patent application. Supplementary protection of medicinal products and plant protection products will be valid up to five years from the expiry of the basic patent. The filing date of a patent application is deemed to be the date of the beginning of a year of validity (Patents Act § 37).

    The state fee is deemed to be paid when the information concerning the payment of the fee has been submitted to the Estonian Patent Office. If the fee for the year of validity is not paid in due time or the fee has been transferred to the account of the Ministry of Finance on time, but the information concerning the paid fee has not been filed with the Estonian Patent Office, the patent becomes invalid.

    The state fee for a year of validity must be paid on the due date of payment or within six months before the due date of payment. The last day of the calendar month during which the year of validity begins (e.g. if the patent application was filed on 10 January 2010, the due date of payment for the 3rd year of validity would be 31 January 2012) is deemed to be the due date of payment (Patents Act § 42 Subsection 1).

    Only the state fees for the first, second and third year of validity must be paid at the same time on the due date of payment for the third year of validity or within six months before the due date of payment of the state fee for the third year of validity (Patents Act § 42 Subsection 2). For all subsequent years, the validity fee must be paid annually.

    The state fee for a year of validity may be paid within six months after the due date of payment if a supplementary fee of 10% from the fee of the given year of validity is paid (Patents Act § 42 Subsection 3).

    The due date of payment of the state fee for the first year of validity of supplementary protection is deemed to be the last day of the calendar during which the term of validity of the basic patent ends. The state fee may be paid within six months before the due date of payment (Patents Act § 42 Subsection 6).

    The state fee for each following year of validity of supplementary protection and for extension of the period of validity of supplementary protection for medicinal products for pediatric use must be paid on due date of payment which is the last day of the calendar month during which the year of validity of supplementary protection begins or, in the case of medicinal products for pediatric use, the last day of the calendar month during which the extended period of validity of supplementary protection begins. The mentioned fees may be paid within six months before the due date of payment (Patents Act § 42 Subsection 7). The state fee for a year of validity of supplementary protection may be paid within six months after the due date of payment has passed, if a supplementary state fee is also paid (Patents Act § 42 Subsection 8). But this is not valid for the extension of the validity of supplementary protection.

    If failure to pay the state fee occurred due to force majeure or some other impediment beyond the control of the applicant, owner of the patent, owner of supplementary protection or their representative, the Estonian Patent Office can resume the processing of a patent application or the validity of protection. Therefore the applicant, owner of the patent or owner of supplementary protection has to file a relevant request with the Patent Office the within two months after the impediment ceases to exist. Besides that the existence of force majeure or some other impediment should be proved, the state fee for the year of validity or the resumption of the validity of protection should be paid. The resumption request can be filed within one year from the due date prescribed in the Patents Act § 42. In case a supplementary state fee is paid, the above mentioned request can be submitted after the end of the due date prescribed in subsections (3), (8) or (10) of this section.

    The Estonian Patent Office will notify the applicant of the renewal or refusal of the patent no later than 20 working days from the date of receipt of the claim and the necessary documents.

    The owner may make amendments to the patent, but the amendments may not extend the scope of patent protection or change the nature of the invention opened in the application.

    Pursuant to the Patents Act § 39 the owner of a patent may restrict the scope of patent protection by amending patent claims and correct any bibliographical data and obvious spelling or calculation errors in the patent specification during the entire term of validity of the patent. At making amendments it should be taken into account that these do not alter the subject matter of the invention which was disclosed in the patent application on the filing date of the patent application. A notice of making amendments to a patent shall be published in the official gazette of the Estonian Patent Office. If patent claims are amended, also the new patent specification shall be published.

    In order to make amendments to a patent, the owner must submit a claim to the Estonian Patent Office, a new patent claim and, if necessary, a new description of the invention. A state fee of 45 euros for the notice of making amendments to a patent claim and publication of the new patent specification or 32 euros for a notice concerning the amendment of the patent specification shall be paid. Data on the payment of the state fee shall be submitted to the Estonian Patent Office together with a request for amendments.

    The applicant shall be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.

    The owner of a patent may transfer the patent to another person and patent applicant may transfer the patent application to another person. Upon the death of the applicant, the owner of the patent or dissolution of the owner if the owner is a legal person, the patent transfers to a successor or legal successor.

    An application for the transfer must be filed by the patent applicant, the patent owner, the owner of the supplementary protection or the person to whom the patent application, patent or supplementary protection is transferred. State fee for the transfer is 32 euros. Information on the paid state fee must be filed together with the application. If the application is filed by the person to whom the patent application, patent or supplementary protection is transferred, they must attach documents certifying the transfer to the application.

    The request for the transfer of the patent must be filed within one year from the date of transfer of the patent determined by the transaction or from the date of creation of legal succession. If a patent is transferred pursuant to a court judgement, the request must be filed within one month from the date on which the court judgement enters into force.

    The entry on transfer of the patent will enter into force on the publication date in the official gazette of the Estonian Patent Office – The Estonian Patent Gazette.

    A patent is deemed to be transferred to another person from the date of transfer pursuant to a transaction or court judgement, or from the date of creation of legal succession.

    A person to whom a patent is transferred, may commence to use of the rights of the owner of the patent as of the date on which the entry of the transfer of the patent becomes valid, i.e. since the publication date in the Estonian Patent Gazette (Patents Act § 45).

    Upon dissolution of the legal person who is the patent owner and the rights have not been transferred, the patent becomes invalid.

    The applicant will be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.
     

    It is in the interest of the owner of the patent to keep the information up-to-date and correct in the register. This facilitates communication between the Estonian Patent Office and the owner and helps to avoid misunderstandings.

    In the event of a change in the name, address or other contact information of the applicant or the owner, the applicant or owner must submit a written application to the Estonian Patent Office. There is no need to pay a state fee. An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself.

    The applicant will be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.
     

    The patent owner (licensor) may grant their rights to the patent, in part or in full, to one or more persons or licensees by means of a written license agreement.

    The matters relating to license are governed by § 46 of the Patents Act.
    Licenses may be registered in the patent register, but it is not mandatory. A written request of the licensor or the licensee together with a copy of the license agreement or an extract from the license agreement which contains information necessary for the registration must be filed with the Estonian Patent Office. A state fee of 32 euros must be paid for an entry concerning a license.

    The licensee may, with the permission of the licensor, grant the rights deriving from the license to a third party with a sub-license.

    The term of the license may not exceed the term of the patent protection, but in the case of supplementary protection of medicinal products and plant protection products, it may not exceed the term of the supplementary protection.

    Upon the transfer of a patent to another person, the rights and obligations deriving from the license are also transferred to the said person.

    Unregistered license does not have the legal power upon the third persons. In case of the collision of rights given by different licenses to several licensees the licensee whose license is registered enjoys an advantage.

    Upon refusal of the owner of the patent to grant a license, a person who is interested in using a patented invention and is capable of doing so in the Republic of Estonia, may file an action with a court for acquiring a compulsory license pursuant to the Patents Act § 47.

    The applicant will be notified of the entry of the license no later than on the 20th working day from the date of receipt of the required application and the necessary documents.
     

    The patent owner may pledge their patent.

    There is no precise regulation on the encumbrance of a patent with a pledge. Therefore, the provisions of the Trade Marks Act apply to the registration of a pledge (§ 24–26 of the Trade Marks Act and § 30-34 of the Trade Mark Regulation).  

    For creation of a registered pledge an agreement that the patent is encumbered with a pledge on and making an entry concerning the pledge between the owner of the patent and the pledgee is required.

    The owner of the patent or the pledgee must submit an application for registration of the pledge. An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself. A written agreement on the establishment of the pledge must be appended to the application. 

    The registration of a patent pledge is not precisely regulated by law. However, in the interest of the parties to the pledge agreement, in order to ensure that all the information is unambiguous and in the light of the principle of harmonization of industrial property laws, the Estonian Patent Office considers it necessary to submit a notarised pledge agreement, as is the case with the trade mark pledge. This requirement is also mentioned in the Guidelines for the Processing of Patent Applications and Patents, which were approved on July 1st, 2020.

    At registration of a pledge a state fee in the amount of the full state fee rate set out in Annex 2 to the State Fees Act must be paid. The transaction value upon registration of a pledge contract is the amount of the pledge. 

    Pursuant to the Principles of Legal Regulation of Industrial Property Act § 31 in case of the object of the industrial property is encumbered with a pledge the data concerning the pledgee, the amount of the monetary value of the pledge and completion deadline are entered in the register. A pledge is deleted upon termination of the claim secured by the pledge or if the pledgee waives the pledge.

    The applicant will be notified of the entry within 20 working days from the date of receipt of the required application and the necessary documents.

    A document certifying priority is a document issued to the patent applicant by the office that has received the initial patent application, under which a priority claim can be made in a patent application submitted to another state or to an international office.

    Upon the written request of the patent applicant or the patent owner and upon payment of a state fee of 16 euros, the Estonian Patent Office will issue a document certifying the priority of the invention, which consists of a copy of the patent application and an official confirmation of the Estonian Patent Office.

    See also § 351 (4) of the Patents Act.

    The duplicate patent letter replaces the original patent letter.

    To get a duplicate patent letter the owner of the patent must file a request and information concerning the paid state fee (16 euros) with the Estonian Patent Office. An application may be submitted as an e-mail with a digitally signed attachment (free-form letter) sent to [email protected], by post, or delivered to the address itself.

    A duplicate will be issued within one month from the date of receipt of the request and information concerning payment of the state fee (16 euros) at the Estonian Patent Office. The word “duplicate” will be marked in the upper right-hand corner of the front cover of the duplicate patent application.

    A notice of the issue of a duplicate is published in the official gazette of the Estonian Patent Office (Patents Act § 36 Subsection 8).
     

    The register is public after the publication of the patent application. Anyone has the right to view the data of the patent application registry file and record in the register, to obtain copies or printouts from the registry.

    Following publication of a patent application pursuant to § 24 of the PA, the register is public, but the restrictions laid down in the same section and the author’s right to prohibit the disclosure of his name (§ 13 of PA) must be taken into account.

    Data concerning business secrets or know-how classified as secret, as well as data concerning a classified patent application, must not be released from the register (§ 351 (2) of the PA). Only patent applications filed for classified defence inventions of the Ministry of Defence or the relevant foreign office will be classified.

    In order to examine the registry file, obtain copies or printouts from the register, a written application must be submitted to the Estonian Patent Office, together with information on the payment of the state fee for each registry file, document copy and printout. An application may be submitted as an e-mail with a digitally signed attachment sent to [email protected], by post, or delivered to the address itself.

    The applicant, the owner and the author of the patent have access to the registration file free of charge. Upon the authorization of said persons, it is also free of charge for them.

    • Jaga

    Last updated: 20.04.2022