Managing applications or registrations

The register of utility models contains data of the inventions registered as utility models, starting from the submission of the application until registration. In the register operations related to registered utility models and amendments in the utility model can also be viewed.

The entry in the register of utility models will be made on the basis of the registration decision (Utility Models Act § 21 (4)). Thereafter, the Estonian Patent Office publishes an utility model registration notice in its official publication Estonian Utility Model Gazette and discloses the description of the utility model and a search report (Utility Models Act § 32 (8)). The day of publication of the registration notice is also the day of publication of the utility model application. Unlike the patent application, the utility model application will not be disclosed until registration.

The registration of a utility model will enter into force on the day of publication of the notice of registration (Utility Models Act § 32 (9)). The Estonian Patent Office will issue a certificate to the owner of the utility model containing a description of the utility model.

The management of the utility model registration includes:

  • extension of validity of a registration;
  • amendments to the utility model;
  • transfer of utility model;
  • changes in owner’s details;
  • registering a license;
  • registering a pledge;
  • issue of certified priority document;
  • issue of a duplicate utility model letter.

The operations in the utility model register must be performed on the basis of an application by an interested party (applicant or owner of the utility model) or by a patent attorney representing them. 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 utility models in the Estonian Patent Office and the Board of Appeals, 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 Utility Models Act.

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.
 

A registration is valid for four years as of the filing date of the registration application. The period can be extended initially for four years and thereafter for another two years. The maximum validation period for a utility model is 10 years.

The state fee for extension of validity must be paid within six months of the date of expiry of the registration (Utility Models Act § 34 (4)). By paying 10% of the state fee for extending the validity, the validity can also be extended within six months after the date of expiry. The state fee for the first extension is 195 euros, for the second extension 260 euros.

The state fee is deemed to be paid when the data on the paid state fee are presented to the Patent Office. If the renewal fee is not paid in due time, or if the fee has been transferred to the account of the Ministry of Finance, but the data on the payment of the fee has not been submitted to the Estonian Patent Office, the utility model becomes invalid.

The validity of a registration can be extended if the state fee for the validity of the registration was not paid due to force majeure or due to an impediment beyond the control of the owner of the utility model or their representative. For that, the owner of the utility model, within two months after the cessation of the impediment, files a request to extend the validity of the registration, evidences the existence of force majeure or another impediment, and pays the state fee for the extension of the registration and 10% of the corresponding additional state fee.  (Utility Models Act § 34 (6)).

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

Pursuant to the Utility Models Act § 36 (1) the owner of a utility model may restrict the scope of utility model protection by amending utility model claims and correct any bibliographical data and obvious spelling or calculation errors in the utility model specification during the entire term of validity.

In order to make amendments to a utility model, the owner must submit a claim to the Estonian Patent Office, a new utility model claim and, if necessary, a new description of the invention. A state fee of 45 euros for the notice of making amendments to a utility model claim and publication of the new utility model specification or 32 euros for a notice concerning the amendment of the utility model specification must be paid. 

A notice of making amendments to a utility model will be published in the official gazette of the Estonian Patent Office – The Estonian Utility Model Gazette. If utility model claims are amended, also the new utility model specification will be published.

In order to correct obvious spelling mistakes and calculation errors which restrict the scope of legal protection of a utility model, the owner of the utility model may file a request with the Patent Office within one year after the publication of a registration notice of the utility model. (Utility Models Act § 36(3)).

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 owner of a utility model may transfer the utility model to another person. Upon the death of the owner of the utility model or dissolution of the owner if the owner is a legal person, the utility model transfers to a successor or legal successor.

A free-form application for the transfer must be filed by the utility model owner or the person to whom the utility model is transferred. Information on the paid state fee must be filed together with the application. If the application is filed by the person to whom the utility model is transferred, they must attach documents certifying the transfer to the application.

The transfer application must be filed within one year after the date of transfer of the utility model set in the transaction or after the date of creation of legal succession. If the utility model is transferred pursuant to a court judgment, the application must be filed within one month after the date on which the judgment enters into force. If the terms specified in this subsection are disregarded, the registration is deemed to be invalid. 

A utility model is deemed to be transferred to another person as of the date of transfer of the utility model determined by the transaction or court judgment or the date of creation of legal succession.

A registry entry becomes valid on the date on which it is made. A person to whom a utility model is transferred may commence use of the rights of the owner of the utility model as of the date on which the entry of transfer becomes valid.

A registry entry will have legal effect with regard to a third person as of the date on which a notice of the making of the registry entry is published in the official gazette of the Estonian Patent Office – The Estonian Utility Model Gazette.

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 utility model 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 via e-services portal, 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 utility model owner (licensor) may grant their rights to the utility model, in part or in full, to one or more persons or licensees by means of a written license agreement. The utility model owner may also inform the granting of a public non-exclusive license via the Estonian Patent Office.

The matters relating to license are governed by § 43 and § 431 of the Utility Models Act.

Licenses may be registered in the utility model 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 utility model protection. Upon the transfer of a utility model 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.

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.

Public non-exclusive license

Anyone who pays the owner of the utility model the license fee set by the owner of the utility model is entitled to a public non-exclusive license. A public non-exclusive license can be granted on the condition that no prior valid licenses have been registered in the register regarding the same utility model (Utility Models Act § 431).

The owner of a utility model who wishes to grant a public non-exclusive license must submit to the Estonian Patent Office an application for the registration of a public non-exclusive license in accordance with § 43¹ (3) of the Utility Models Act and pay the state fee. If an application for the registration of a public non-exclusive license complies with the requirements, the Estonian Patent Office will enter the details of the license in the register and publish a respective notice in the official gazette of the Patent Office - The Estonian Utility Model Gazette.

A person who wishes to obtain a public non-exclusive license must submit a written application to the Estonian Patent Office, in accordance with § 431(6) of the Utility Models Act and pay the state fee. The Estonian Patent Office will enter the data of the licensee in the register regarding the grant of the public non-exclusive license, publish a respective notice in the official gazette of the Estonian Patent Office and communicate the data of the licensee to the owner of the utility model in writing.

The utility model owner may pledge their utility model.

There is no precise regulation on the encumbrance of a utility model 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 utility model is encumbered with a pledge on and making an entry concerning the pledge between the owner of the utility model and the pledgee is required. The owner of the utility model 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 utility model 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 utility model applicant by the office that has received the initial application, under which a priority claim can be made in a utility model application submitted to another state or to an international office.

The applicant, the owner of a utility model or their successor will have the right to demand the issue of a priority document as of the acceptance of the utility model application, regardless of the course of the registration application procedure and the decision made on the registration application.

Document certifying priority of the invention consists of a copy of the registration application and the official confirmation by the Estonian Patent Office (Utility Models Act § 33 (3)). Upon the written request of the applicant or the 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.

The duplicate utility model letter replaces the original utility model letter.

To get a duplicate utility model letter the owner 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 utility model application.

A notice of the issue of a duplicate is published in the official gazette of the Estonian Patent Office – The Estonian Utility Model Gazette.

  • Jaga

Last updated: 20.04.2022