Validation of European patents

10.01.2006

For validation of a European Patent no other papers but the mentioned below are needed:
i) an order identifying the number of the respective patent;
ii) a duly executed Power of Attorney. After receiving the order we can prepare the Power draft for signature and send it back via e-mail for printout and signing (free of extra charge)

Decrease in IP state fees as of 1 May 2004

05.04.2004

As of 1 May 2004 a great number of amendments to our Industrial Property legislation will be put into force.

The most important changes occur in filing fee matters. Namely, the state filing fees for national patent, utility model and industrial design applications are decreased 4 times against the regular ones when only individual(s) (natural person(s)) is (are) the applicant(s).

For example, in the situation described above the state filing fee for a patent application is 56 EUR (instead of the regular 224 EUR), further assignment (if needed) of the application involves state fee of 32 EUR.

National Phase of PCT applications

13.10.2003

The amendments to our Patent Act put into force as of 1 April 2003 have fixed the 31 months term for initiating the National Phase of PCT applications. The term mentioned is effective also when the applicant has not requested the Chapter II of the PCT Route (International Preliminary Examination) and use of this term does not depend on the date of International filing of PCT application.

Consonant with our Statutory Regulations, the entry into the National Phase prior to the term explained is accepted only if simultaneously with the Request also the full translation of the Patent Specification is filed. Therefore, the entry without the respective translations will be rejected without any exceptions.

The extension for lodging then translations is accepted only if the Request is filed a couple of days prior to the 31 months term and the necessity for the extension is substantiated.

Our European Patent Attorneys

02.10.2003

All the IP Attorneys at LASVET, except for Ms. Martina Böckler who is active in trademark matters, have been recorded in the List of European Patent Attorneys held by EPO.

The amendments to the Patent Act adopted

14.03.2003

On 29 January 2003 the Estonian Parliament adopted the Bill on amendments to the Patent Act (see: our previous news) which will be put into force as of April 1, 2003. The effective wording of the Patent Act will be put on our web site as soon as the English translation is available.

The Bill on Amendments to the Patent Act

10.12.2002

The Estonian Parliament is processing the Bill on amendments to the Patent Act effective at present which we expect to be passed in 2003.

Pursuant to the information available, the overwhelming majority of the alterations itemizes the provisions of the Act valid at present, at the same time some rather significant developments are provided:

1. The Act in force provides the grace period of 12 months for the disclosure of an invention. Whereas the subject provision has been a source for ambiguous interpretations in practice, the Bill provides a clearer and stronger wording. The Bill prescribes expressis verbis that the disclosure of an invention will enjoy the grace period advantage only when all the following requirements are met:
a) the disclosure is made within 12 months prior to the filing date of the first patent application (i.e. either abroad or in Estonia). In other words, for the patent application first filed abroad and subsequently continued in Estonia, the filing date in Estonia is irrelevant with respect to the grace period advantage;
b) the disclosure is made by the person having the right to apply for the patent or by another person having obtained the subject information from the person mentioned first;
c) the disclosure is declared in the patent application filed in Estonia. It is provided that the Patent Application Form is amended accordingly.

2. The term for entering of a PCT Application into National Phase in Estonia will be 31 months counted from the priority date of the respective application. If the term for payment of the 1-3 annuities is earlier than the above-indicated term, the respective annuities have to be paid within two months from the date of entering the National Phase.

3. The present Act does not stipulate expressis verbis how many independent claims may be in the set of claims. The interpretation of the Patent Office in the matter so far is that only one independent claim of each type (device, process, composition) is allowed. The Bill foresees a “softer” approach not excluding the plurality of independent claims of the same kind (e.g. the alternative technical solutions which cannot be covered by one common claim, a device which is used for different purposes, etc.).

Estonia is a member of the European Patent Convention

29.07.2002

On 1 July 2002 Estonia became a full member of the European Patent Organization. As a result:
a) an invention applied for EP on 1 July 2002 and later can have the provisional protection as well as be validated in Estonia after the decision on allowance.

Provisional protection - Possible during the European application stage. For the protection to take effect, a translation of the published claims into Estonian has to be submitted to the potential infringer (no fee provided) or filed with the Estonian Patent Office (accompanied with the payment of the state fee). In the first case the 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 its grant provided that the translation of the Patent Specification is 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 - The annuities for a European Patent validated in Estonia are paid according to the annuity schedule for the national Patents.

b) from the subject date the Estonian citizens and residents can file international (PCT) applications either with the National Patent Office or with the European Patent Office. If an international application filed on 1 July or later includes the European Patent Office as a designated one, this designation automatically applies to Estonia. The applicant of an international application retains the right to designate Estonia separately.
c) from the subject date the Estonian citizens and residents can file European patent applications either via the Estonian Patent Office or directly with the European Patent Office.

The state fees:
1. Publication fee for the claims in Estonian for the provisional protection - 32 EUR.
2. Publication fee for the Specification in Estonian for validation of a European Patent - 45 EUR.
3. Extension of the term for the Estonian translation - 32 EUR.
4. Recording of a change in a European Patent in the Estonian Patent Register - 96 EUR.
5. Recording of an assignment or licence for a European Patent in the Estonian Patent Register - 39 EUR.
6. Transforming of a European Patent Application to a national Patent Applicationn - 224 EUR.
7. Transforming of a European Patent Application to a national Utility Model Application - 102 EUR

More thorough information including also our charges is being prepared and will be forwarded to our associates in due course.

Estonia accessed to the TLT

01.07.2002

On 22 May 2002 the Estonian Parliament adopted the Act on accession of Estonia to the Trademark Law Treaty. According to the information available, the new Estonian Trademark Act (adopted also on 22 May 2002 and to take effect as of 1 January 2003) is in full compliance with the subject Treaty.

The new Trademark Act adopted

28.05.2002

On 22 May 2002 the Estonian Parliament adopted the new version of our Trademark Act. The new wording will be put into force from 1 January 2003.

The more thorough comments appear on the present web site as soon as the official text of the Act is made available for the public.

The new Trade Mark Act draft

06.02.2002

The Estonian Parliament is processing a new Trade Mark Act draft. It is expected to be adopted this year and put into effect as of 1 January 2003.
The new Act provides, inter alia, more detailed provisions for determining the well-known status of a trademark as well as for protection of rights of the owners of such trademarks. Some amendments will be introduced also with respect to contesting the decisions of the Patent Office.