Patents Act

 
Chapter I

General Provisions

§ 1. Purpose of Act

This Act regulates the relations which arise in connection with the legal protection of patentable inventions (hereinafter patent protection) in the Republic of Estonia.

§ 2. Legislation providing for patent protection

Patent protection is provided for by this Act, other Acts and regulations issued by the Government of the Republic or Ministers on the basis of and for the implementation of such Acts.

§ 3. Equality of rights and obligations of natural and legal persons of the Republic of Estonia and of foreign states

The rights and obligations prescribed in this Act apply equally to natural and legal persons of the Republic of Estonia and of foreign states (hereinafter persons) unless the legislation of the Republic of Estonia or international agreements ratified by the Riigikogu provide otherwise.

§ 4. Application of international agreements

If this Act is contrary to an international agreement, the provisions of the international agreement apply.

Chapter II

Patent Protection and Patentability

§ 5. Patent protection

(1) Inventions of any field of technology may be protected by a patent if the invention complies with the criteria of patentability provided for in § 8 of this Act and is considered to be unpatentable pursuant to the provisions of § 7.

(2) An invention is granted patent protection upon registration of the invention in the state register of patents pursuant to the procedure provided for in this Act. The registration of an invention in the state register of patents is deemed to be the issue of a patent.

(3) Medicinal products and plant protection products which contain an active substance protected by a patent may be granted supplementary legal protection (hereinafter supplementary protection) under the conditions and pursuant to the procedure provided for in Chapter VIII1 of this Act.

§ 6. Subject of invention

(1) The subject of an invention may be a device, process, material, including biological material, or a combination thereof.

(2) The following shall not be regarded as the subject of inventions:

1) discoveries, including descriptions of the formation or development of the human body or sequence or partial sequence of human gene, scientific theories and mathematical methods;

2) schemes, rules and methods for performing mental acts or doing business;

3) design documentation for and plans of constructions, buildings or areas;

4) symbols;

5) algorithms for computers and computer programs;

6) designs;

7) presentations of information;

8) plant and animal varieties.

(3) For the purposes of this Act, "biological material" means any material, including micro-organisms, which contains genetic information and is capable of reproducing itself or being reproduced in a biological system.

§ 7. Unpatentable inventions

(1) The following shall not be protected by a patent:

1) inventions which are contrary to public order and morality;

2) methods of treatment and diagnostic methods practised on the human or animal body;

3) layout-designs of integrated circuits;

4) (repealed)

(2) The following biotechnological inventions shall not be protected by a patent:

1) processes for cloning human beings;

2) processes for modifying the germ line genetic identity of human beings;

3) uses of 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 benefit to man or animal, and animals resulting from such processes;

5) essentially biological processes for the derivation of biological materials or the production of plant or animal varieties, except microbiological processes for the derivation of micro-organisms;

6) inventions the application of which is confined to a single plant or animal variety.

(3) For the purposes of this Act, "essentially biological process for the derivation of a biological material or production of plant or animal varieties" means a process which consists entirely of natural phenomena, including crossing and selection.

(4) For the purposes of this Act, "microbiological process" means any process involving or performed upon or resulting in microbiological material.

§ 71. Classification of inventions

Inventions are classified according to the international patent classification adopted under the Strasbourg Agreement concerning the International Patent Classification.

§ 8. Criteria of patentability

(1) An invention is patentable if it is new, involves an inventive step and is susceptible to industrial application.

(2) An invention shall be considered to be new if it does not form part of the state of the art. The state of the art shall be held to comprise everything made available to the public by means of written or oral description, by use, or in any other way, before the filing date of the patent application or before the date of priority if priority is claimed. In determining novelty, the content of patent applications and the content 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 pursuant to § 24 of this Act and registration applications of utility models are published pursuant to § 33 of the Utility Models Act.

(3) In determining the state of the art, no such information is taken into consideration which is disclosed within twelve months before the filing date of a patent application or, if priority is claimed, before the date of priority, by a person who is entitled to the patent pursuant to § 12 of this Act, or by any other person who has received the information from such person against or according to the will of the person.

(4) An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

(5) An invention shall be considered as susceptible to industrial application if it can be manufactured or used in economy.

§ 9. Unity of invention

(1) A patent application may contain only one invention or a group of inventions so linked as to form a single general inventive concept.

(2) If a patent application contains several inventions which are independent of each other, the applicant may separate the inventions from each other at the proposal of the Patent Office or on the applicant?s own initiative and file separate patent applications pursuant to §§ 19 and 20 of this Act during the term determined by the Patent Office.

§ 10. Scope of patent protection and patent claims

(1) The scope of patent protection shall be determined by the terms of patent claims. The description, drawings and other illustrative material shall be used to interpret patent claims.

(2) Patent claims shall define the subject matter of the invention, for which patent protection is applied, in words in a clear, concise and short manner. In patent claims, the subject matter of an invention shall be presented as a set of essential features of the invention. Patent claims consist of one or several claims.

§ 11. Priority

(1) Priority is the preferential right of the person who files the first patent application or registration application of a utility model to apply for patent protection for an invention. As of the filing date of the first patent application or registration application of a utility model, the aforementioned person takes preference over another person who files a patent application with regard to the same invention later. The date when the first patent application or registration application of a utility model is filed with the Patent Office shall be considered the date of priority.

(2) If a patent application is filed with the Patent Office within twelve months after the filing date of the first patent application or registration application of a utility model and priority is claimed, priority may be established:

1) on the basis of the filing date of the first patent application or registration application of a utility model in any State party to the Paris Convention of the Protection of Industrial Property or member of the World Trade Organisation;

2) on the basis of the filing date of the first patent application or registration application of a utility model in a state which is not a State party to the Paris Convention for the Protection of Industrial Property or in a state which is not member of the World Trade Organisation if such state guarantees equivalent conditions for first patent applications and registration applications of utility models filed in the Republic of Estonia.

(3) Priority for a patent application filed on the basis of corrections and amendments to an earlier patent application which alter the subject matter of the invention may be established, if priority is claimed, based on the filing date of such corrections and amendments with the Patent Office.

(4) Priority for a patent application which is separated from an earlier patent application may be established, if priority is claimed, on the basis of the date of priority of the earlier patent application.

(5) If priority is claimed, priority may be established for a patent application filed with the Patent Office within twelve months by the same applicant for the same invention on the basis of the filing date of an earlier patent application or registration application of a utility model, provided that the earlier patent application or registration application of a utility model has not been published and priority has not been claimed on the basis thereof for some other patent application or registration application of a utility model. If an earlier patent application is being processed, the earlier patent application is deemed to be withdrawn.

(6) If priority is claimed, priority may be established for a patent application on the basis of the filing dates of several patent applications or registration applications of utility models filed earlier.

(7) Priority shall be claimed in a patent application. Documents certifying the priority claim shall be filed together with the patent application or within sixteen months as of the date of priority. Documents certifying the priority claim need not be submitted if priority is claimed on the basis of a first patent application or registration application of a utility model in the Republic of Estonia.

Chapter III

Right to Apply for Patent

§ 12. Right to patent

(1) The right to apply for a patent and to become the proprietor of a patent is vested in the author of the invention and a legal successor of the author.

(2) If an invention is created in the performance of contractual obligations or duties of employment, the right to apply for a patent and to become the proprietor of the patent is vested in the author or other person pursuant to the contract or employment contract.

§ 13. Author of invention

(1) The author of an invention (hereinafter author) is a natural person who has created an invention as a result of his or her inventing activities.

(2) If an invention is created as a result of the joint inventing activities of several natural persons, such persons are joint authors.

(3) In the case of joint authorship, all rights arising from the authorship are exercised by the authors jointly, unless they have entered into a written agreement which prescribes otherwise.

(4) If two or more persons apply for a patent regarding the same invention independently of each other and different natural persons are indicated as the author, the natural person who is indicated as the author in the patent application which has been filed earlier or which has an earlier date of priority is deemed to be the author provided that such patent application has not been withdrawn prior to publication pursuant to this Act or the Patent Office has not rejected the patent application or deemed the patent application to be withdrawn.

(5) In the case of patent applications regarding the same invention filed on the same date or bearing the same date of priority, the natural persons indicated as the authors in these patent applications are deemed to be the authors upon the grant of the patent.

(6) Authorship is inalienable and unspecified in term.

(7) An author has the right to a pseudonym and he or she may:

1) request the disclosure of his or her name as the author;

2) prohibit the disclosure of his or her name as the author;

3) revoke at any time the prohibition to disclose his or her name.

(8) An author has the right to receive fair proceeds from the profit received from the invention.

(9) The proprietary rights of an author are transferable and inheritable.

Chapter IV

Exclusive right of proprietor of patent

§ 14. Proprietor of patent

(1) The proprietor of a patent is the person to whom the invention protected by the patent belongs. The proprietor of a patent has the exclusive right to possess, use and dispose of the invention and to demand the prevention of infringement of these rights and elimination of the consequences of such infringements from all other persons

(2) The proprietor of a patent is the person in respect of whom the last entry as the proprietor of the patent has been made in the state register of patents.

(3) The exclusive right of the proprietor of a patent may only be restricted by this Act or the rights of other persons.

§ 15. Exclusive right of proprietor of patent

(1) The exclusive right of the proprietor of a patent means that during the period of validity of the patent and without the permission of the proprietor of the patent no person shall:

1) (repealed)

2) manufacture, use, distribute, sell or offer for sale products protected by the patent or acquire (incl. by way of importation) such products for the aforementioned purposes;

3) manufacture, sell or offer for sale components which form a significant part of the product protected by the patent or acquire and export such components for the manufacture or preparation of the product, except if the components are other independent products;

4) use or offer for use to third persons the patented process;

5) use, distribute, sell or offer for sale a product manufactured according to the patented process or to acquire (including by way of importation) such products for the aforementioned purposes.

(2) In the case of products manufactured according to a patented process, the manufacture, use, distribution, sale, offering for sale or acquisition (including by way of importation) for the aforementioned purposes of a similar product without the authorisation of the proprietor of the patent is considered an infringement of the exclusive right of the proprietor of the patent unless it is proved that the similar product is manufactured according to a different process.

§ 151. Extension of exclusive right of proprietor of patent

(1) In the case of a patented biological material, the exclusive right of the proprietor of the patent shall extend to any biological material derived from that biological material through propagation or multiplication in an identical or divergent form and possessing the same characteristics.

(2) In the case of a biological material produced according to a patented process, the exclusive right of the proprietor of the patent shall extend to any biological material derived from the biological material obtained through the patented process through propagation or multiplication in an identical or divergent form and possessing the same characteristics.

(3) In the case of an invention containing genetic information, the exclusive right of the proprietor of the patent shall extend to all biological material in which the invention is incorporated and which performs its function according to the said genetic information, except the human body and parts thereof.

§ 16. Acts which do not constitute infringement of exclusive right of proprietor of patent

The following acts do not constitute infringement of the exclusive right of the proprietor of a patent:

1) the use of the patented invention on board of ships of other states (within the hull, machinery, rigging, radio-navigation equipment or other equipment) if such ships are temporarily or accidentally in the waters of the Republic of Estonia and the invention is used solely for the purposes of the ship;

2) the use of the patented invention within the construction or auxiliary equipment of aircraft or land vehicles of other countries, or in the operation of the vehicles or equipment if such vehicles are temporarily or accidentally in the Republic of Estonia;

3) the use of the patented invention in testing related to the invention itself;

4) the single preparation of a medicinal product containing the patented invention on the basis of a prescription in a pharmacy and the use of such medicinal product;

5) the private non-commercial use of the patented invention if such use does not harm the interests of the proprietor of the patent;

6) the use, distribution, sale or offer for sale in the Republic of Estonia of the patented invention by the proprietor of the patent or with the proprietor?s consent;

7) the propagation or multiplication of biological material placed on the market by the proprietor of the patent or with the proprietor?s consent, where the multiplication or propagation necessarily results from the application for which the biological material was marketed, provided that the biological material obtained is not subsequently used for other propagation or multiplication.

§ 17. Right of prior use

(1) A person who, prior to the filing of a patent application for an invention by another person, has, in good faith and independently of the applicant, used the same invention for industrial application in the Republic of Estonia, may continue to use the invention retaining the same general nature of application. Use is in good faith unless the user knew or should have known that the filing of a patent application for the invention was intended.

(2) The right of prior use also belongs to a person who has, in good faith, made serious preparations for the industrial application of an invention in the Republic in Estonia.

(3) The right of prior use can only be transferred to another person together with the enterprise with regard to which the right of prior use is established or in which it was intended to be used.

§ 171. Exhaustion of rights

The proprietor of a patent has no right to prohibit further use for commercial purposes of a product protected by a patent when the product has been put on the market in the territory of the Republic of Estonia or a State party to the Agreement of the European Economic Area by the proprietor of the patent or with the proprietor?s consent.

§ 18. Provisional protection

(1) An invention shall be granted provisional protection as of the filing date of a patent application until the publication date of the notice of issue of the patent.

(2) Other persons who commence or continue use of an invention after the publication of a patent application prescribed in § 24 of this Act are deemed, after the publication date of the notice of issue of the patent, to infringe the exclusive right of the proprietor of the patent unless such persons have right of prior use pursuant to § 17 of this Act.

(3) Other persons who commence use of an invention during the period between the filing date of the patent application and the publication date of the patent application are not deemed to infringe the exclusive right of the proprietor of the patent unless the person knew or should have known that a patent application is filed with regard to the invention or the applicant notified the person in writing of the filing of the patent application before the publication of the patent application by the Patent Office. Other persons whom an applicant notifies of the filing of the patent application are deemed, after the publication date of the notice of issue of the patent, to infringe the exclusive right of the proprietor of the patent as of the date of receipt of the notice concerning the filing of patent application unless such persons have the right of prior use pursuant to § 17 of this Act.

(4) The scope of provisional protection shall be determined by the terms of patent claims included in a published patent application. After the issue of a patent, the scope of provisional protection shall be specified according to the patent claims of the patent issued.

Chapter V

Patent Application and Processing Thereof

§ 19. Patent application

(1) A patent application shall include the following documents:

1) a request for the grant of a patent which contains information concerning the applicant and author and the name of the invention;

2) the description of the invention in which the invention is disclosed in a sufficiently clear and concise manner which enables a person skilled in the art to make the invention;

3) patent claims consisting of one or several claims;

4) drawings or other illustrative material referred to in the description of the invention;

5) a document certifying the deposit of a biological material, including micro-organism strain, if the subject of the invention is a biological material or the invention requires the use of a biological material and if the said biological material is not available to the public and it cannot be described in the description of the invention in a manner which would enable a person skilled in the art to make the invention;

6) an abstract of the subject matter of the invention;

7) a document certifying payment of the state fee;

8) an authorisation document if the patent application is filed via an Estonian patent agent.

(2) The formal and substantive requirements for documents included in patent applications shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

(3) Patent applications are filed in Estonian, except abstracts of the subject matter of the invention which are filed in Estonian and English.

§ 20. Filing of patent application

(1) Patent applications shall be filed with the Patent Office.

(2) An applicant may file a patent application and perform procedures related to the application for and continued validity of the patent independently or through a patent agent.

(3) Persons whose residence or seat is outside the Republic of Estonia shall perform procedures related to the application for and continued validity of a patent in the Republic of Estonia only through a patent agent. The applicant shall authorise the patent agent upon filing the patent application or within three months as of the date of receipt of the patent application in the Patent Office.

(4) The state fee shall be paid upon filing the patent application or within one month as of the date of receipt of the patent application in the Patent Office.

(5) In the case of patent claims which contain more than ten claims, a supplementary state fee shall be paid for each claim starting with the eleventh claim.

(6) The procedure for filing patent applications shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

§ 21. Acceptance of patent applications for processing

(1) Upon receipt of a patent application, the Patent Office shall verify the existence of documents prescribed by § 19 of this Act.

(2) The Patent Office shall refuse to accept a patent application for processing if:

1) the request for the grant of a patent is missing or the applicant is not specified therein, or the request for the grant of a patent is not filed in Estonian;

2) the description of the invention is missing;

3) the description of the invention is not in Estonian and a translation is missing and is not filed within three months after receipt of the patent application in the Patent Office;

4) (repealed)

5) the document certifying payment of the state fee is missing and is not filed within one month after the date of receipt of the patent application;

6) the requirements provided for in subsection 20 (3) of this Act are not complied with.

(3) The state fee is refunded upon refusal to accept a patent application for processing.

(4) The Patent Office shall assign a number to a patent application accepted for processing and shall notify the applicant in writing of the filing date of the patent application and the patent application number.

(5) The date of receipt of the patent application in the Patent Office is deemed to be the filing date of a patent application accepted for processing, except if a significant drawing or other illustrative material referred to in the description of the invention is missing from the received documents. If a drawing or other illustrative material is missing, the Patent Office shall propose to the applicant that the missing drawing or material be filed within one month. If the missing drawing or other illustrative material is filed during the term, the date of receipt of the drawing or other illustrative material in the Patent Office is deemed to be the filing date of the patent application. If a missing drawing or other illustrative material is not filed during the term or upon refusal to file such missing drawings or material, all references to the said document in the patent application are deemed invalid and the date of receipt of the patent application in the Patent Office is deemed to be the filing date of the patent application.

§ 211. Files of patent applications and processing of patent applications, access to and release of information therefrom

(1) The files of patent applications and processing of patent applications form a structured body of data concerning patent application documents accepted for processing and information on the processing thereof. Information on a patent application and on the processing thereof is stored in the files until the processing file is closed.

(2) Access to the files of patent applications and processing of patent applications, and release of information from the files is generally prohibited. Only the name and index of the International Patent Classification of an invention, the patent application number, filing date of the patent application, priority data, the name and address of the applicant and the name of the representative of the applicant may be released from the files.

(3) Access to a file containing information on the processing of a patent application is granted to the applicant, persons who have the written consent of the applicant and persons whom the applicant has informed in writing of the filing of a patent application and has warned of the applicant?s right to apply for a patent and to become the proprietor of the patent.

(4) After the publication of a patent application, all persons may have access to the patent application processing file.

(5) No information on the author is released from a patent application processing file if the author has prohibited disclosure of the author?s name.

(6) A fee is charged for the release of information from the files of patent applications and processing of patent applications with the exception of the release of information to state agencies with supervisory authority or to a court. A state fee is charged for the release of information.

(7) The files of patent applications and processing of patent applications are established by the Government of the Republic or a minister authorised by the Government of the Republic.

§ 22. Preliminary processing of patent applications

(1) The Patent Office shall verify:

1) the format and content of the documents of a patent application;

2) the subject of the invention;

3) the unity of the invention.

(2) If priority is claimed, the Patent Office shall verify the documents certifying the claim.

(3) The Patent Office shall inform the applicant in writing of formal or substantive deficiencies of the patent application documents or of any other circumstances which hinder the examination thereof, and shall establish a due date for the elimination of deficiencies or provision of explanations.

(4) The Patent Office shall determine the date of priority of a patent application.

(5) The Patent Office shall commence examination if a patent application complies with the provisions of §§ 6, 7, 9 and 19 of this Act.

(6) The Patent Office shall make a decision to reject a patent application if the subject of the invention does not comply with the provisions of §§ 6 or 7 of this Act or if the applicant fails to eliminate the formal or substantive deficiencies of the patent application documents or to provide explanations. The Patent Office shall notify an applicant in writing of a decision to reject the patent application.

§ 23. Examination of patent applications

(1) During an examination, the Patent Office shall verify the compliance of an invention with the criteria of patentability in accordance with § 8 of this Act.

(2) Pursuant to Article 15(5) of the Patent Cooperation Treaty entered into on 19 June 1970 in Washington, an applicant may file a request with the Patent Office to perform an international search. Upon the filing of a request, the applicant shall pay a state fee and a fee for the international search.

(3) The Patent Office may request from an applicant oral or written explanations and correction or amendment of the patent claims, description of the invention, drawings or other illustrative material and the abstract of the subject matter of the invention. The Patent Office shall determine a term of two months to six months for the provision of explanations or submission of corrections and amendments.

(4) The Patent Office has the right to request from an applicant copies of decisions of patent offices of other countries regarding the applicant?s analogous patent applications and to exchange information regarding the patent application with patent offices of other countries.

(5) If the Patent Office finds that the subject of the invention can be protected by a patent pursuant to the provisions of §§ 6 and 7 of this Act and the subject matter of the invention as expressed in the patent claims complies, when compared to the state of the art, with the criteria of patentability established in § 8 of this Act and that the format and content of the patent application documents complies with the formal and substantive requirements established on the basis of subsection 19 (2) of this Act, the Patent Office shall terminate the examination of the patent application, make a decision to issue the patent and shall notify the applicant thereof in writing.

(6) If the Patent Office finds that the subject of the invention cannot be protected by a patent pursuant to the provisions of §§ 6 and 7 of this Act or the subject matter of the invention as expressed in the patent claims does not comply, when compared to the state of the art, with the criteria of patentability established in § 8 of this Act or that the format and content of the patent application documents does not comply with the formal and substantive requirements established on the basis of subsection 19 (2) of this Act, the Patent Office shall terminate the examination of the patent application, make a decision to reject the patent application and shall notify the applicant thereof in writing.

§ 24. Publication of patent applications

(1) For the purposes of this Act, "publication of a patent application" means the publication of patent application documents specified in clauses 19 (1) 2), 3), 4) and 6).

(2) 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.

(3) At the request of the applicant, a patent application shall be published before expiry of the term specified in subsection (2) of this section.

(4) A patent application shall not be published if:

1) the patent application is withdrawn or deemed to be withdrawn;

2) the patent application is rejected;

3) the patent application cannot be published due to formal or substantive deficiencies in the patent application documents.

(5) The applicant is notified of the publication of the patent application in writing.

(6) Notices of the publication of patent applications are published in the official gazette of the Patent Office.

(7) The publication date of the notice specified in subsection (6) of this section is deemed to be the publication date of the patent application.

(8) The procedure for the publication of patent applications shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

§ 25. Correction and amendment of patent application

(1) An applicant may correct and amend a patent application during processing such that no alterations are made to the subject matter of the invention which was disclosed in the patent application on the filing date of the patent application.

(2) Corrections and amendments are deemed to alter the subject matter of an invention if they contain essential features of the invention which were not included in the description of the invention, drawings or other illustrative material on the filing date of the patent application.

(3) In the case of corrections and amendments which alter the subject matter of an invention, the Patent Office shall make a decision to reject such amendments and shall notify the applicant thereof in writing.

(4) After the publication of a patent application made pursuant to § 24 of this Act, the applicant shall not make such corrections or amendments which extend the scope of patent protection.

(5) After the Patent Office has made a decision pursuant to subsection 23 (5) or (6) of this Act, the applicant may correct and amend the patent application once within two months as of the date of the decision and shall pay a state fee therefor. The state fee shall not be paid if obvious spelling and calculation mistakes are corrected. The Patent Office has the right to make a new decision on the basis of the corrections and amendments submitted.

(6) During processing, the Patent Office may, without obtaining the approval of the applicant, only edit the documents of a patent application. The abstract of the subject matter of an invention may be amended without obtaining the approval of the applicant.

§ 26. Withdrawal of patent applications

(1) An applicant may file a request for the withdrawal of a patent application and may withdraw a patent application which is being processed. Patent application documents are not returned.

(2) If several persons apply for a patent, a request for the withdrawal of the patent application shall be filed with the consent of all such persons.

(3) The Patent Office deems a patent application to be withdrawn:

1) if, during preliminary processing, the applicant has not responded to the demand of the Patent Office to provide explanations or to correct or amend the documents of the patent application within three months after the due date determined pursuant to subsection 22 (3) of this Act;

2) if, during examination, the applicant has not responded to the demand of the Patent Office to provide explanations or to correct or amend the documents of the patent application within three months after the due date determined pursuant to subsection 23 (3) of this Act;

3) if the applicant fails to pay the state fee on time;

4) in the case specified in subsection 11 (5) of this Act.

§ 27. Suspension of processing of patent application

(1) If, during processing, an applicant does not respond by the due date determined pursuant to subsection 22 (3) or 23 (3) of this Act, the Patent Office shall suspend the processing of the patent application. The processing of a patent application shall be resumed if the applicant responds within three months as of the specified due date and pays the state fee.

(2) If the unity of the invention is violated in a patent application, the Patent Office shall suspend the processing of the patent application until the due date determined pursuant to subsection 9 (2) of this Act for the applicant to file separate patent applications.

(3) If an applicant files, pursuant to subsection 23 (2) of this Act, a request for an international search to be performed, the Patent Office may suspend the processing of the patent application until the Patent Office receives the results of the search.



(4) The applicant shall be notified of the suspension of the processing of a patent application in writing.

§ 28. Termination of processing of patent application

(1) The Patent Office shall terminate the processing of a patent application which is withdrawn or deemed to be withdrawn.

(2) The applicant shall be notified of the termination of the processing of a patent application in writing.

§ 29. Resumption of processing of patent application

(1) An applicant may request resumption of the processing of a patent application if the Patent Office has terminated the processing of the patent application by having deemed the patent application to be withdrawn pursuant to clause 26 (3) 1), 2) or 3) of this Act, provided that the failure to perform the acts specified in such provisions occurred due to force majeure or some other impediment independent of the applicant or the patent agent representing the applicant.

(2) The Patent Office shall resume the processing of a patent application if the applicant proves the existence of an impediment and performs the prescribed acts within two months after the impediment ceases to exist, and pays a state fee.

(3) A request for resumption of the processing of a patent application may be filed within one year after the due date for the act which was not performed.

(4) The provisions of subsections (1), (2) and (3) of this section do not extend to subsections 9 (2), 35 (6) and § 42 of this Act.

§ 30. Appeal against decisions of Patent Office during processing of patent application

(1) An applicant may appeal against a decision of the Patent Office pursuant to the procedure provided for in §§ 41-54 of the Industrial Design Protection Act to the Industrial Property Board of Appeal (hereinafter Board of Appeal), formed pursuant to the Republic of Estonia Trade Marks Act or in a court.

(2) An applicant may file an appeal with the Board of Appeal within two months as of the date on which the decision is made and shall pay a state fee.

(3) The Board of Appeal has the right to:

1) dismiss an appeal and not to amend the decision of the Patent Office;

2) amend or annul a decision of the Patent Office and make a new decision;

3) annul a decision of the Patent Office and require the Patent Office to resume processing.

(4) The state fee is refunded upon grant of appeal.

(5) If an appeal is partially granted, the Board of Appeal shall determine the amount of state fee refunded.

§ 31. Completion of processing of patent application

The processing of a patent application is completed by the issue of a patent or by the rejection of the patent application.

Chapter VI

International application

§ 32. Definition of international application

(1) International application is a patent application filed on the basis of the Patent Cooperation Treaty entered into on 19 June 1970 in Washington (hereinafter Patent Cooperation Treaty).

(2) Pursuant to the definition of Article 2 of the Patent Cooperation Treaty, the Patent Office is the receiving office, the designated office and the elected office.

(3) The Patent Office is the receiving office for international applications of Estonian citizens or of persons whose residence or seat is in the Republic of Estonia.

(4) An international application shall be prepared pursuant to the Patent Cooperation Treaty and the implementing regulations and administrative instructions thereof, and filed with the Patent Office, which is the receiving office, in English or German; a state fee and fees prescribed by the Patent Cooperation Treaty shall be paid.

(5) The Patent Office is the designated or elected office for such international applications in which the Republic of Estonia is indicated as the designated or elected state.

(6) International applications in which the Republic of Estonia is indicated as the designated state are deemed equal to patent applications filed pursuant to §§ 19 and 20 of this Act.

(7) An international application in which the Republic of Estonia is indicated as the designated state is deemed to be filed with the Patent Office on the international filing date which is determined by the receiving office, as specified in the Patent Cooperation Treaty.

(8) The Patent Office shall examine such international registration applications in which the Republic of Estonia is indicated as the designated state.

(9) The procedure for the payment of fees prescribed by the Patent Cooperation Treaty shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

(10) The procedure for filing international applications with the Patent Office shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

§ 33. Specifications of processing of international applications

(1) For an international application to be accepted for processing, an applicant shall file an Estonian translation of the international application with the Patent Office and pay a state fee not later than within twenty months as of the date of priority.



(2) If an applicant has chosen, within nineteen months as of the date of priority, the Republic of Estonia to be the state which uses the results of the international preliminary examination, the applicant shall file the translation specified in subsection (1) of this section and pay a state fee within thirty months as of the date of priority.

(3) In justified cases, an applicant may be granted an additional period of two months for filing the translation of an international application specified in subsection (1) of this section if the applicant pays an additional state fee upon filing the translation.

(4) An applicant may correct and amend the patent claims, the description of the invention, drawings and other illustrative material within six months as of the filing date of the translation of an international application, provided that no alterations are made to the subject matter of the invention which was disclosed in the international application on the filing date thereof.

(5) If an applicant is required to be represented by a patent agent pursuant to subsection 20 (3) of this Act, the applicant shall authorise a patent agent not later than within six months after the due date calculated pursuant to the provisions of subsection (1) or (2) of this section.

(6) An international application shall lose the effect specified in subsections 32 (6) and (7) of this Act if:

1) the provisions of Article 24 (1) (i) and (ii) of the Patent Cooperation Treaty apply;

2) the applicant fails to comply with the requirements provided for in subsections (1), (2) or (3) of this section;

3) the applicant withdraws the request for international preliminary examination or the request for choosing the Republic of Estonia after expiry of the term provided for in subsection (1) of this section;

4) the applicant fails to comply with the requirement established in subsection (5) of this section.

(7) The Patent Office has no right to request that an applicant file examination results of patent offices of the states designated in an international application if the applicant has chosen the Republic of Estonia to be the state which uses the results of the international preliminary examination.

(8) If international preliminary examination or international search is not performed with respect to a part of an international application on the grounds that the application is not in compliance with the requirement of unity of invention and the applicant has not paid the fee prescribed by the Patent Cooperation Treaty for additional international search or international preliminary examination, the Patent Office shall verify the correctness of the decision of the International Searching Authority or the International Preliminary Examining Authority not to perform international search or preliminary examination with respect to the part of the patent application. If the decision is correct, such parts of the international application which are not in compliance with the requirement of unity of invention are deemed to be withdrawn. Otherwise, the Patent Office shall continue the processing of the international application in full. The Patent Office shall notify the applicant of its decision in writing.

(9) The Patent Office shall apply the provisions of subsection 9 (2) of this Act to such parts of an international application which violate the unity of the invention if the applicant files a corresponding request within two months as of the date of the decision of the Patent Office specified in subsection (8) of this section.

(10) If the receiving office refuses to accept an international filing date or reports that an international application is deemed to be withdrawn, or if the International Bureau of the World Intellectual Property Organization (hereinafter International Bureau) has made a decision pursuant to Article 12 (3) of the Patent Cooperation Treaty, or if the receiving office reports that the designation of the Republic of Estonia is deemed to be withdrawn, the applicant may, within two months after receipt of the corresponding report or decision, request the review of the international application in the Republic of Estonia and request that the International Bureau send a copy of the international application to the Patent Office. The applicant shall file a translation of the international application with the Patent Office and, in the cases prescribed, information concerning the patent agent, and pay a state fee during the term determined by the Patent Office. The Patent Office shall verify the correctness of the decision of the receiving office or the International Bureau and notify the applicant of the results. If the decision of the receiving office or the International Bureau is incorrect, the application shall be reviewed as an international application.

(11) If the processing of an international application is terminated on the grounds that an applicant has failed to perform an act prescribed by the receiving office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau or an act provided for in subsections (1) and (2) of this section on time due to force majeure or some other impediment independent of the applicant, the Patent Office shall restore the processing of the international application in the Republic of Estonia, provided that the applicant adheres to the provisions of subsections 29 (2) and (3) of this Act.

§ 331. Files of international (patent) applications and processing of international applications, access to and release of information therefrom

(1) The files of international applications and processing of international applications form a structured body of data concerning international application documents filed with the Patent Office as the receiving office pursuant to Article 2 of the Patent Cooperation Treaty and information on the processing thereof. Information on an international application and on the processing thereof is stored in the files until the processing file is closed.

(2) Access to the files of international applications and processing of international applications and release of information from the files prior to the publication of the international application pursuant to Article 21 of the Patent Cooperation Treaty is prohibited.

(3) After an international application is published pursuant to Article 21 of the Patent Cooperation Treaty, all persons may have access to the international application file.

(4) A fee is charged for the release of information from the files of international applications and processing of international applications with the exception of the release of information to state agencies with supervisory authority or to a court. A state fee is charged for the release of information.

(5) The files of international applications and processing of international applications shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

Chapter VII

State Register of Patents and Issue of Patent

§ 34. State register of patents

(1) The state register of patents (hereinafter register) is maintained concerning inventions which are deemed to be in compliance with the criteria of patentability.

(2) The Patent Office is the chief and authorised processor of the register.

(3) The registry secretary arranges maintenance of the register and makes entries in the register.

(4) The register is maintained as an entry book on paper or as a computer database with the entries stored as print-outs.

(5) The language of the register is Estonian. Documents in foreign languages shall be submitted to the authorised processor together with an Estonian translation.

(6) The register comprises the entry book, patent application processing file and registry file. The entry book consists of registry cards which are stored in the volumes of the entry book.

(7) The expenditure for maintenance of the register is covered from the state budget through the budget of the Patent Office.

(8) The statutes for maintenance of the register shall be approved by the Government of the Republic.

§ 35. Registration of invention in register

(1) An invention shall be registered in the register by entry of registration data (hereinafter registration) in the entry book on the basis of a decision to issue a patent made by the Patent Office, the Board of Appeal or a court.

(2) Registration data are:

1) the registration number;

2) the registration date;

3) the name of the invention;

4) the index of the international patent classification;

5) the given name, surname and address of the author of the invention;

6) the given name, surname and the address and country code of the residence or seat of the enterprise of the proprietor of the patent, in the case of a legal person, the name, address of the seat and the country code;

7) the date of beginning of the period of validity of the patent;

8) the date of expiry of the patent;

9) in the case of a patent agent, the given name and surname of the patent agent;

10) in the case of a joint representative, the given name and surname of the joint representative, in the case of a joint representative who is a legal person, the name of the legal person;

11) the patent application number;

12) the filing date of the patent application;

13) priority data (date of priority, country, application number);

14) the number and filing date of an earlier patent application from which the patent application is separated;

15) number and filing date of an earlier, continued patent application;

16) the filing date of corrections and amendments to an earlier patent application which alter the subject matter of the invention;

17) international application data;

18) publication date of the patent application;

19) the date of disclosure of information specified in subsection 8 (3) of this Act;

20) data concerning the deposit of the biotechnological material, including micro-organism strain;

21) data concerning payment of the state fee paid in respect of the year of continued validity of the patent application;

22) patent claims;

23) the description of the invention;

24) drawings or other illustrative material;

25) data concerning the supplementary protection of the medicinal product;

26) data concerning the supplementary protection of the plant protection product.

(3) Patent claims, description of the invention and the drawings or other illustrative material shall be kept in the registry file.

(4) The applicant specified in a decision to issue a patent is entered in the register as the proprietor of the patent.

(5) Registrations are numbered in the order in which the inventions are registered starting from number 02932 as a continuation of the registry numeration which was discontinued in 1940.

(6) For an invention to be registered in the register, the applicant shall pay a state fee within three months as of the date on which the decision specified in subsection (1) of this section is made. If the state fee is not paid within the prescribed term, the patent application is deemed to be withdrawn.

(7) Registration data shall be entered in the register within three months as of the date of payment of a state fee specified in subsection (6) of this section.

(8) The Patent Office shall publish a notice of the issue of a patent in the official gazette of the Patent Office. The publication date of the notice of the issue of a patent shall be entered in the entry book.

(9) A registration shall enter into force on the publication date of a notice of the issue of a patent in the official gazette of the Patent Office.

§ 351. Access to and release of data from register

(1) The register is public. Everyone has the right to examine the processing file of a patent application, the registry file and entry book and to obtain copies thereof.

(2) No information is released from the register concerning an author if the author has prohibited disclosure of the author?s name.

(21) Information containing a business secret not subject to disclosure shall not be released from the register if the applicant for supplementary protection defines the business secret pursuant to subsection 395 (6) of this Act.

(3) Fees are charged for the release of information from the register with the exception of release of information to state agencies with supervisory authority or to a court. A state fee is charged for the release of information.

§ 352. Maintenance and storage of register

(1) The register is maintained in the offices of the Patent Office, and it is prohibited to remove the register from the offices.

(2) The register is permanently stored in the Patent Office archives.

§ 353. Liability of chief processor

Damage arising from the unlawful actions of the chief processor is compensated for by the state.

§ 354. Patent specification

(1) A patent specification contains the description of the invention, patent claims, drawings or other illustrative material, an abstract of the subject matter of the invention and the following information:

1) the name of the agency which issued the patent specification;

2) the name and number of the document;

3) the name of the invention;

4) the index of the international patent classification;

5) the given name, surname and address of the author of the invention;

6) the given name, surname and the address and country code of the residence or seat of the enterprise of the proprietor of the patent, in the case of a legal person, the name, address of the seat and the country code;

7) in the case of a patent agent, given name, surname and address of the patent agent;

8) in the case of a joint representative, the given name and surname of the joint representative, in the case of a joint representative who is a legal person, the name of the legal person;

9) the number and filing date of the patent application;

10) priority data;

11) international application data;

12) data concerning the deposit of the biological material, including micro-organism strain;

13) publication date of the patent application;

14) publication date of the patent specification;

15) the date of beginning of the period of validity of the patent.

(2) After the entry of registration data in the register, the Patent Office prepares the patent specification.

(3) The patent specification shall be kept in the registry file.

(4) A patent specification shall be published on the publication date of the notice of issue of the patent.

(5) Requirements for the format and procedure for the completion of patent specifications shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

§ 36. Letters patent

(1) The letters patent is a document which certifies the registration and the exclusive right of the proprietor of a patent to an invention.

(2) A letters patent consists of a certificate and a patent specification.

(3) A certificate contains the following:

1) the name of the country - the Republic of Estonia;

2) the coat of arms of the country - small national coat of arms of Estonia ;

3) the number of the letters patent;

4) the text "The patent is issued on the basis of § 5 of the Patents Act which entered into force 23 May 1994. A patent shall be valid for twenty years as of the filing date of the patent application. A state fee shall be paid each year for the continued validity of the patent. The letters patent certifies the registration and the exclusive right of the proprietor of the patent to the invention.";

5) information on issuing agency (name and location of the agency, title, name and signature of the head of the agency, seal of the agency);

6) the date of signing the letters patent.

(4) The date on which a letters patent is signed by the head of the agency which issues the document is deemed to be the date of issue of the letters patent. The date of issue of a letters patent is entered in the entry book.

(5) The registration number is also the number of the letters patent.

(6) The Patent Office shall issue a letters patent to the proprietor of a patent within one month as of the publication date of the notice of issue of the patent.

(7) Only one letters patent is issued regardless of the number of proprietors of a patent.

(8) A duplicate of a letters patent may be issued on the basis of a request from the proprietor of the patent. A duplicate shall be issued within one month after the date of receipt of a request and a document certifying payment of the state fee at the Patent Office. A notice of the issue of a duplicate is published in the official gazette of the Patent Office.

(9) The requirements for the format and procedure for the completion and issue of letters patents shall be established by the Government of the Republic or a minister authorised by the Government of the Republic.

Chapter VIII

Validity of Patents

§ 37. Term of validity of patents

(1) A patent shall be valid for twenty years as of the filing date of the patent application.

(2) A state fee shall be paid each year for the continued validity of a patent application and patent. The filing date of a patent application is deemed to be the beginning of the year of validity.

§ 38. Premature termination of validity of patent

(1) A patent becomes prematurely invalid if:

1) a state fee is not paid for the year of validity;

2) the proprietor of the patent files a request for termination of the validity of the patent;

3) a legal person which is the proprietor of a patent is liquidated, or its activities are terminated and the patent rights have not been transferred.

(2) The Patent Office shall make an entry in the register concerning the premature termination of the validity of a patent and shall publish a notice thereof in the official gazette of the Patent Office.

§ 39. Amendments to patents

(1) The proprietor of a patent may request the amendment of the patent during the entire period of validity of the patent. A request for making amendments shall be filed with the Patent Office and a state fee shall be paid.

(2) The proprietor of a patent may request the making of such amendments to the patent which do not alter the subject matter of the invention which was disclosed in the patent application on the filing date of the patent application.

(3) Amendments have retroactive effect.

(4) The Patent Office shall publish a notice of making amendments to a patent in the official gazette of the Patent Office.

(5) The proprietor of a patent cannot request such amendment of patent claims which extend the scope of patent protection, except in the cases provided for in subsection (6) of this section.

(6) The proprietor of a patent may file a request with the Patent Office for the making of amendments to correct obvious spelling mistakes and calculation errors which restrict the scope of patent protection within two years after the publication of the notice of issue of the patent.

(7) The extension of the scope of patent protection provided for in subsection (6) of this section shall not restrict the rights of persons who had, prior to the publication of the notice concerning the making of amendments, taken into consideration the initial scope of patent protection in their economic and commercial activities.

Chapter VIII1

Supplementary Protection of Medicinal products and Plant Protection Products which Contain Active Substances Protected by Patents

§ 391. Definition of medicinal product

For the purposes of this Act, "medicinal product" means a product which contains at least one active substance protected by a patent and which is used for:

1) treating or preventing disease in human beings or animals;

2) making a medical diagnosis of human beings or animals;

3) restoring, correcting or modifying physiological functions in humans or in animals.

§ 392. Definition of plant protection product

(1) For the purposes of this Act, "plant protection product" means a product which contains at least one active substance protected by a patent and which is used for:

1) protecting plants or parts of plants, including fresh fruits and seeds, against harmful organisms or preventing the action of such organisms;

2) protecting plant products which have undergone simple preparation (milling, drying, pressing and other methods of simple preparation) against harmful organisms or preventing the action of such organisms;

3) influencing the life processes of plants or parts of plants, other than as nutrients;

4) preserving plant products which have undergone simple preparation;

5) destroying undesirable plants;

6) destroying undesirable parts of plants or checking and preventing undesirable growth of plants.

(2) For the purposes of t