PATENT ACT
SYNOPSIS
1. INVENTION
The subject of an invention can be equipment, process, material, including biological material, or their combination. A biological material is any material, including microorganisms, which contains genetic information and is capable of reproducing itself or being reproduced in a biological system.
The following shall not be regarded as the subject of an invention:
1) discoveries, including the description of the formation or development of the human body or the sequence of a human gene or part of it, scientific theories and mathematical methods;
2) schemes, rules, instructions and methods for performing economic and mental acts;
3) projects and schemes of structures, buildings and territories;
4) conventional signs;
5) algorithms and programs for computers;
6) design solutions;
7)mere presentations of information;
8) plant or animal varieties.
2. PATENTABLE INVENTION
A patentable invention is new worldwide, involves inventive step and is industrially applicable.
3. EXCLUDED FROM THE PROTECTION
The following do not enjoy the patent protection:
1)inventions contrary to ordre public and morality;
2)methods for treatment of the human or animal body and diagnostic methods practised on the human or animal body;
3) layout-designs of integrated circuit.
The following biotechnological inventions do not enjoy the patent protection:
1) processes for cloning human beings;
2) processes 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 (RT I 1997, 51, 824);
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 processes;
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 that can be used solely for one particular plant or animal variety.
4. APPLICANT
The inventor or his legal successor. Foreign applicants are entitled to initialize the filing process but for further prosecution and maintaining of the patent they have to authorize a local attorney.
5. FILING
The applicant may file a patent application and arrange matters connected with the applying for and maintaining of a patent independently or through a patent attorney.
An applicant having a residence or seat outside Estonia shall arrange matters connected with the applying for and maintaining of a patent in Estonia only through patent attorneys. The applicant shall authorize the patent attorney upon filing the patent application or within three months from the date of receipt of the patent application at the Patent Office. In other words, foreign applicants are entitled to initialize the filing process themselves but for further prosecution and maintaining of a patent they have to authorize a local attorney.
Applying for a patent is accompanied with the payment of the state fee. An extra state fee has to be paid for every claim exceeding ten.
PCT APPLICATION
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.
Term for entering the national phase is within 31 months from the priority date. The term missed can be reinstated only if caused by force majeure circumstances.
7. EXAMINATION
Formal examination - compliance of the patent application with the formal requirements (presence of all the obligatory documents, payment of the state fee, presence of the necessary signatures, unity of the invention, etc.). Unity - an application shall relate to one invention only or to a combination of objects of invention linked together by a unified inventive concept.
Substantial examination - compliance of the solution applied for with the criteria of patentability.
Amendments are possible in the process of examination provided they do not change the nature of the initial application and do not go beyond the initial scope of the invention.
Contesting of the decisions of the Examiner are possible either at the Board of Appeal (an independent Governmental body) or directly in court. The decisions of the Board of Appeal may be contested in court.
Publication of an application - after eighteen months from the filing date or from the priority date.
The Patent Office can on certain conditions suspend the examination procedure. The procedure will be reinstated upon request of the applicant provided the grounds of the suspension have been eliminated and an extra state fee has been paid.
8. GRANTING
If the solution applied for belongs to the area of the patentable ones and meets the criteria of patentability, the patent will be granted and the invention recorded in the State Patent Register.
Opposition against a granted patent is possible within nine months from the date of publication of the patent grant announcement. The complaint shall be applied for with the Board of Appeal or an action before court shall be brought. The decision of the Board of Appeal may be contested in court.
9. PROTECTION
Provisional protection - effective from the filing date of the application until the date of publication of the patent grant announcement.
Any person starting or continuing to use the invention after the patent application has been published, shall be deemed, after the publication of the patent grant announcement, to be an infringer of the patentee's exclusive right if he does not enjoy the right of prior use.
Duration of protection is twenty years from the date of filing the application provided the annuities are paid.
Annuities have to be paid each year within six months before the due date. The annuities for the first, the second and the third years shall be paid simultaneously within 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
10. EXCLUSIVE RIGHT OF A PATENTEE
During the term of the patent a third party shall not be allowed, without the consent of the patentee, to:
1) make, use, distribute, sell or offer for sale patented products, or obtain (including the import) those products for the aforesaid purposes;
2) make, sell or offer for sale essential components of a patented product or obtain and export them with the purpose of making or assembling the product, except where components are other staple products;
3) use a patented process or to offer it for use to a third party;
4) use, distribute, sell or offer for sale a product made according to a patented process, or obtain (including the import) those products for the aforesaid purposes.
If the process of making a product has been patented, the making, use, distribution, selling, offering for sale or obtaining (including the import) of a similar product for the aforesaid purposes without the consent of the patentee shall be deemed to be the infringement of the exclusive right of the patentee, unless it is proved that the similar product has been made according to a different process
11. EXTENSION OF EXCLUSIVE RIGHT
If the biological material has been patented, the exclusive right of the patentee shall extend to any other biological material with the same qualities which has been derived from that biological material through propagation or multiplication in an identical or divergent form.
If the process of obtaining of the biological material has been patented, the exclusive right of the patentee shall extend 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.
If an invention contains genetic information, the exclusive right of the patentee shall extend to the entire biological material containing this invention and functioning according to this genetic information, except the human body and parts of it.
12. THE ACTIONS NOT INFRINGING EXCLUSIVE RIGHT
1) the use of a patented invention on board (in the body, machinery, tackle, gear and in other accessories) of vessels of other states if those vessels sojourn in the territorial waters of the Republic of Estonia temporarily or accidentally, provided that the invention is used exclusively for the needs of the vessel;
2) the use of a patented invention in the construction of aircraft and land vehicles of other states or in their additional devices, or in operating the vehicles and the devices, if those vehicles sojourn in the Republic of Estonia temporarily or accidentally;
3) the use of a patented invention in experiments concerning the invention itself;
4) the extemporaneous preparation for individual cases in a pharmacy of a medicine containing a patented invention in accordance with a medical prescription, and its use;
5) the private and non-commercial use of a patented invention provided that it does not infringe the interests of a patentee;
6) the use, distribution, selling or offering for sale of a patented invention by the patentee or with his consent in the Republic of Estonia;
7) the propagation or multiplication of a biological material put on the market by the patentee or with his consent if this propagation or multiplication is necessary for the use of the biological material and the biological material derived from such propagation or multiplication is not multiplied for any other purposes.
8) the use in accordance with the right of prior use.
13. EXHAUSTION OF RIGHTS
The patentee shall not be entitled to prohibit further commercial use of a product protected by a patent which has been put on the market by him or with his consent in the territory of the Republic of Estonia or of any member state of the Agreement on the European Economic Area. In other words, the principle of a partial International exhaustion is legalized
14. SUPPLEMENTARY PROTECTION FOR MEDICINAL AND PLANT PROTECTION PRODUCTS
Supplementary protection shall be granted for a medicinal or plant protection product by extending the term of rights conferred by the basic patent upon the expiration of the term of the basic patent.
Basic patent is a patent projecting the active substance or their combination, a process of manufacture or use of the active substance of a medicinal or plant protection product.
Application for the supplementary protection shall be filed within six months from the date of entry into force of the registration of the medicinal or plant protection product.
Duration of supplementary protection is fixed up to five years from the date of expiration of the basic patent, but no longer than fifteen years from the date of issue of the basic patent.
For maintenance of the supplementary protection the state fee has to be paid for each year of validity.
15. POST-GRANT ACTIONS
Assignment has to be recorded in the Estonian Patent Register.
Recordal of a licence agreement is not obligatory but recommendable whereas the unregistered licence agreement is not valid against third parties.
Prior user right: any person who, before the filing of a patent application for the same invention by another person, industrially used the invention in the Republic of Estonia in good faith independently of the applicant, may continue to use the invention, retaining the general character of the use. The use shall be considered as done in good faith unless the user knew or should have known that a patent application was intended to be filed for the invention.
Use of the protected invention is compulsory in principle. Use conditions are producing, importation, exportation, sale, offering for sale, using the patented technology. Publication of an advertisement or an offer to license do not meet the requirement of use.
No sanctions ex officio in the case of non-use but a compulsory licence may be granted through court action upon request of an interested party. Grounds for a compulsory licence:
1) the patentee has not used the invention in Estonia within three years from the publication date of patent grant announcement or within four years from filing the patent application, whereby the term with a later expiration date is taken into account;
2) the extent of the use of the invention by the patentee does not comply with the needs of Estonian domestic market;
3) the patent hinders the use of another invention which is technologically progressive and essential for Estonian economy;
4) the use of the invention is required by state defence, environment protection, public health or other important state interests of the Republic of Estonia, including an urgent necessity to use the invention in connection with nature catastrophes or other emergencies;
5) the patent prevents the grant of protection to a plant variety under the Plant Variety Rights Act or the use of a plant variety that has been granted legal protection.
Infringements of patentee=s rights are handled by Estonian courts. Liability of the infringer may be civil or criminal or both the kinds of liability simultaneously. Civil liability includes also compensation for damages.
