Patents of Invention
– Patent Law, in force since May 23, 1994, amended in 1999, 2003, 2004, 2008, 2011, 2014 and 2019; last amendments in force since April 1, 2019.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since February 5, 1994.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 24, 1994.
– Patent Cooperation Treaty (PCT), since August 24, 1994.
– Budapest Treaty Regarding the Deposit of Microorganisms, since September 14, 1996.
– Strasbourg Agreement Concerning the International Patent Classification, since February 27, 1997.
– WTO’s TRIPS Agreement, since November 13, 1999.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 30, 2001.
– European Patent Convention, since July 1, 2002.
– Patent Law Treaty, since April 28, 2005.
Applicant: the inventor(s) or the legal successor(s).
Foreign applicants: must elect and authorize a local registered patent attorney.
Criteria of patentability: worldwide novelty, inventive step, and industrial applicability.
Grace period for an inventor: twelve months.
Exceptions to protection: (1) inventions contrary to public order and morality; (2) methods for treatment of the human or animal body and the respective diagnostic methods; (3) layout designs of integrated circuits.
Exceptions to protection concerning biotechnological inventions: (1) process for cloning human beings; (2) process for modifying the genetic identity of human beings; (3) processes for using human embryos for commercial purposes, including processes prohibited by the Artificial Insemination and Embryo Protection Act; (4) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to the health care of human beings or animals, and also animals resulting from the use of such process; (5) processes which are biological in essence and are used for deriving biological materials, producing plant or animal varieties, except microbiological processes for deriving microorganisms; (6) biotechnological inventions which can be used solely for one particular plant or animal variety.
Priority: according to the Paris Convention.
Filing requirements for an application (to be sent to local attorney):
1. Power of attorney (only upon request), signed by the applicant. The full name of the applicant and his address, the full name and the title (position) of the signatory must be typed. Notarization or legalization is not required;
2. Patent specification comprising claims;
3. Formal drawings, if any;
5. Priority document(s), if any;
6. The document proving the deposit of a microorganism strain, if the subject of the invention is a microorganism strain or if the invention presumes the use of a new microorganism strain;
7. If the inventor(s) is not the applicant(s), information to show the right of the applicant to apply for the patent (as legal successor of the inventor(s), by virtue of contract of employment, or a contract other than contract of employment);
8. Deed of assignment (if priority is claimed, and the applicant in the patent application differs from the one shown in the priority document).
Notes: (1) the patent specification comprising claims, may be filed in a foreign language, but full translation into Estonian must be filed within three months from the filing date; (2) grace period for filing a power: approximately two months from the filing date (will be fixed by the Patent Office); for priority documents: four months.
Electronic filing: available.
For a change of name or address: an official document certifying the change e.g. an extract from the Commercial Register. It is sufficient to provide a good quality copy (PDF copy) with the relevant parts translated into English, if not in English (normally translation into Estonian is not required); legalization is also not required.
Patent Cooperation Treaty
The Estonian Patent Office acts as a receiving Office for PCT applications filed by citizens or residents of Estonia as well as a designated or elected Office for PCT applications in which Estonia has been designated or elected.
Time limit for entering the national phase: within 31 months (the term mentioned is also effective when the applicant has not requested the Chapter II of the PCT Route).
Filing requirements for an application for entering the national phase (to be sent to local attorney):
1. Power of attorney (only upon request);
2. WO publication and copies of all amended documents if any;
3. If the inventor(s) is not the applicant(s), a document attesting to the right of the applicant to apply for the patent (as legal successor of the inventor(s), by virtue of contract of employment, or a contract other than contract of employment).
Note: the Estonian translation of the patent specification has to be filed simultaneously with the request or, upon payment of an extra fee, within thirty-three months from the priority date. Extension of the above term is possible only if the request is filed within two months prior to the end of the 31-month time limit.
Formal examination: whether a patent application satisfies the formal requirements and substantial examination: whether the invention satisfies the criteria of patentability are carried out.
Unity: an application has to relate to one invention or a group of inventions that have a common inventive idea (concept).
Amendments: possible after filing, but they must not change the nature of the initial application.
Opposition to the decision of the Patent Office: handled by the Board of Appeal.
Complaints against the decision of the Board of Appeal: handled by court.
Publication: an application is published after eighteen months from the date of filing or from the priority date.
Provisional protection: effective from the filing date of the application up to the date of publication of a patent grant announcement. Infringements commenced during provisional protection can be attacked after the patent has been granted.
Granting: if the application complies with the statutory requirements, the patent is granted and recorded in the State Patent Register.
Opposition to granted patent: possible within nine months of the date of publication of the patent grant announcement. The complaint has to be lodged with the Board of Appeal. The decision of the Board of Appeal may be contested in court.
Cancellation after opposition period: directly through court.
Reason for cancellation: lack of patentability.
Delivery of document: the Letters Patent is issued in paper format only.
Duration of protection: twenty years from the date of filing the application.
Annuities: to be paid each year within the six months before the due date. The annuities for the first, the second and the third years shall be paid simultaneously within the six months before the due date of the third year. Late payment accompanied with payment of an extra fee is accepted within six months after the due date.
Exclusive rights of a patentee: to use and enforce the patent, as well as to demand that all third persons avoid the infringement of these rights (making, using, distributing, selling or offering for sale the patented product or using the patented technology).
Extension of exclusive right of a patentee: (1) if the biological material has been patented, the exclusive right of the patentee extends to any other biological material with the same qualities which has been derived from the biological material through propagation or multiplication in an identical or divergent form; (2) if the process of obtaining the biological material has been patented, the exclusive right of the patentee extends to any other biological material with the same qualities which has been derived from the biological material produced by the patented process through propagation or multiplication in an identical or divergent form; (3) if an invention contains genetic information, the exclusive right of the patentee extends to the entire biological material containing this invention and functioning according to this genetic information, except the human body and parts of it.
Restriction of exclusive right of a patentee: in exceptional cases (epidemic, etc.) the State is entitled to arrange a non-commercial use of a patented invention, accompanied with the payment of a compensation to the patentee.
Classifiable inventions: (a) inventions belonging to topics the list of which is compiled by the Ministry of Defense; (b) inventions the classification of which is required by a foreign competent authority.
Classification: an invention can be classified either by a decision of the Ministry of Defense or on the basis of a respective request from a foreign competent authority enclosed with a filed patent application.
Examination: according to the customary rules, but with exceptions derived from the laws regulating the handling of secret documents.
Use: only with the acceptance of the Ministry of Defense.
Remuneration to the patentee: compensation due to the restricted possibilities to use the invention. The sum is to be specified by the Minister of Defense.
Restrictions: an independent creation and use of a patented secret invention by a third party does not involve any sanctions.
Supplementary Protection for Medicinal and Plant Protection Products
Grant of, applying for and duration of the supplementary protection: consonant with Council Regulation (EEC) No. 1768/92 of June 18, 1992 concerning the creation of a supplementary protection certificate for medicinal products and Regulation (EC) No. 1610/96 of the European Parliament and of the Council of July 23, 1996 concerning the creation of supplementary protection certificate for plant protection products.
Maintaining the supplementary protection: upon payment of the State fee for each year of validity.
Paediatric extension: available.
Modification of Protection after Granting
Assignments and licenses: recording of a license agreement in the Estonian Patent Register is not obligatory, but an unregistered license agreement is not valid against third parties. Therefore, registration is recommenced.
Right of prior user: a person who, before the date of filing the application, was industrially using the invention or had done serious preparations for using the invention in good faith and irrespective of the patentee, has the right to continue such use retaining the general character of the use.
Working of a patent: compulsory in principle.
Working conditions: producing, importation, exportation, sale, offering for sale, using the patented technology. Publication of an advertisement or an offer to license does not meet the requirement of working.
Sanctions for lack of working: no sanctions ex officio but a compulsory license may be granted through court action on request of an interested party.
Conditions for a compulsory license: (1) the patentee has not worked the invention within three years of publication of the patent grant announcement or within four years of the date of filing the application; (2) the extent of use does not comply with domestic market needs; (3) the patent is a bar to the working of another invention progressive and essential for domestic economy; (4) working the invention is required by State defense, environment protection, public health or other important State interests.
Infringements: handled by the Estonian court.
Liability of an infringer: civil or criminal. Compensation for damages is possible.
Validation of European Patents
The inventions applied with EPO on July 1, 2002 or later can have provisional protection as well as be validated in Estonia after the decision of EPO on allowance.
Appointment of a national professional representative: is required.
Provisional protection: possible during the European application stage. For enacting of the protection, a translation of the published claims into Estonian has to be either filed with the Estonian Patent Office (accompanied with payment of the State fee) or handed to the potential infringer (no fee provided). In the latter case, the provisional protection is effective only against the potential infringer.
Validation: a European Patent designating Estonia takes effect of an Estonian Patent from the date of the mention of the grant of the European Patent provided that the translation into Estonian of the full patent specification and all the textual parts of the drawings are filed with the Estonian Patent Office within three months from the date of the mention. The subject deadline can be extended for two more months provided that an extra fee has been paid.
Publication: the Estonian Patent Office does not print the Estonian translation. The translation is published as filed with the Patent Office, therefore no printing fee is provided.
Annuities: according to the annuity schedule for the national patents. If the period between the date on which the grant of a European patent is mentioned by the EPO and the due date of payment of the State fee for maintenance for the following year of validity is less than two months, the proprietor of the patent is entitled, within two months as of the mention of the grant of the European patent, to pay the State fee for maintenance for the following year of validity without the supplementary State fee.
Scope of protection: in infringement cases the scope of a patent is determined according to the Estonian translation of the patent claims.