UTILITY MODELS ACT
SYNOPSIS
1. PROTECTABLE UTILITY MODELS
Utility models are inventions which are new worldwide, which involve an inventive step and which are susceptible of industrial application. The criterion of the inventive step practically coincides with the respective criterion for the patentable inventions.
An invention is granted legal protection upon registration in the State Register of Utility Models (hereinafter Register).The scope of legal protection of a utility model is determined by the terms of the claims of the utility model.
Equipment, processes and materials can be protected as utility models.
2. EXCLUDED FROM THE PROTECTION
The following do not enjoy the protection as utility models:
1) industrial designs;
2) layout-designs of integrated circuits;
3) discoveries, scientific theories and mathematical methods;
4) schemes, rules and methods for performing mental acts or doing business;
5) design documentation for and plans of constructions, buildings or areas;
6) symbols;
7) algorithms for computers and computer programs;
8) presentations of information;
9) human bodies or parts thereof;
10) plant or animal varieties.
The following inventions shall not be protected as utility models:
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) biotechnological inventions.
A biotechnological invention is an invention concerning biological materials or products which contain such materials or concerning the derivation or use of biological materials
3. APPLICANT
The inventor, assignee or their legal successor. Assignment of the invention from the inventor to the assignee may be executed prior to filing the application.
4. FILING
The applicant may file a utility model application and arrange matters connected with the applying for and maintaining of the registration independently or through a patent attorney.
If the residence or the seat of an applicant is outside Estonia, the application shall be filed by the applicant or through an authorised Estonian patent attorney. The applicant shall perform the procedures related to the registration or continued validity of the registration of a utility model which follow the filing of the registration application through an authorised patent attorney. In other words, foreign applicants are entitled to initialize the filing process themselves but for further prosecution and maintaining of a utility model registration they have to authorize a local attorney.
Applying for a utility model is accompanied with the payment of the state fee. The set of claims can include only one independent claim, the number of dependent claims is not restricted. No extra state fee for dependent claims irrespective of the number of them.
A patent application may be converted to a utility model application maintaining the priority of the patent application. The request for conversion has to be filed by the applicant within ten years of the date of filing the patent application.
5. EXAMINATION
Formal examination - compliance of the utility model 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 of the invention - an application shall relate to one utility model only. Protection of several utility models linked together by a unified inventive concept under one single registration is not provided.
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 is possible at the Board of Appeal or directly in court. The decisions of the Board of Appeal may be contested in court.
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.
6. GRANTING
If the solution applied for belongs to the area of the registrable one and the necessary formal requirements are met, the utility model will be registered in the Register.
7. PROTECTION
Provisional protection - effective from the filing date of the application until the date of publication of the utility model grant announcement. The provisional protection can be implemented if the potential infringer knew or should have known that a utility model application is filed with regard to the invention or the applicant has notified the person in writing of the filing of the application.
Exclusive right of the owner of the registration is effective for four years from the filing date of the application. The renewals for the next four and then for two years accompanied with the payment of the state fee are feasible.
No annuities are provided.
8. EXCLUSIVE RIGHT OF THE OWNER OF THE REGISTRATION
During the term of the utility model registration a third party shall not be allowed, without the consent of the owner of the exclusive right, to:
1) to manufacture, use, sell, offer for sale or import for the aforementioned purposes a product which contains the substance or device protected as a utility model;
2) to use or offer for use the process protected as a utility model and to use, offer for sale, sell or import for the aforementioned purposes a product which is manufactured according to the process protected as a utility model.
In the case of products manufactured according to a process which is protected as a utility model, the manufacture, use, distribution, sale, offering for sale or acquisition (including by importation) for the aforementioned purposes of a similar product without the authorization of the owner is considered an infringement of the exclusive right of the owner of the utility model unless it is proved that the similar product is manufactured according to a different process.
9. THE ACTIONS NOT INFRINGING THE EXCLUSIVE RIGHT
The following acts do not constitute infringement of the exclusive right of the owner of a utility model:
1) the use of the utility model 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 Estonia and the utility model is used solely for the purposes of the ship;
2) the use of the utility model within the construction or auxiliary equipment of aircraft or land vehicles of other states, or in the operation of the vehicles or equipment if such vehicles are temporarily or accidentally in Estonia;
3) the use of the utility model in testing related to the utility model itself;
4) the private non-commercial use of the utility model if such use does not harm the interests of the owner of the utility model;
5) the use in accordance with the right of prior use.
10. EXHAUSTION OF RIGHTS
The owner of the utility model registration shall not be entitled to prohibit further commercial use of a product protected by the registration which has been put on the market by him or with his consent in the territory 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.
11. POST-GRANT ACTIONS
Assignment has to be recorded in the Estonian Register of Utility Models.
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 utility model application for the same invention by another person, industrially used the invention in 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 done in good faith unless the user knew or should have known that a patent application was intended to be filed.
Use of the protected invention is not compulsory. 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. No compulsory licence are provided.
Infringements of the rights of the owner of the registration are handled by Estonian courts. Liability of the infringer may be civil or criminal. Civil liability includes also compensation for damages.
