Pages 192-198

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

EE Estonia

Impact of the European Patent Convention on national law

On 1 July 2002, Estonia became a contracting state to the EPC. Provisions implementing the EPC and bringing Estonian law into line with the EPC and CPC are contained in an Implementation of the Convention on the Grant of European Patents Act of 17 April 2002.

A. National legal bases

1. Patent Act 1994 ("PA")

2. Implementation of the Convention on the Grant of European Patents Act 2002

(Implementation Act - "IA")

3. State Fees Act 1997 ("FA")

4. Regulation No. 69 of the Minister of Economic Affairs of 30 December 1999 ("RNP")

5. Regulation No. 89 of the Minister of Finance of 11 July 2002 ("RFI")

6. Regulation No. 46 of the Minister of Economic Affairs of 24 July 2002 ("REP")

B. Application of the EPC in Estonia

The main provisions relating to the application of the EPC in Estonia are summarised below:

The information is structured in the same way as in the EPO brochure "National Law relating to the EPC". This summary may therefore be used as a supplement to the brochure until a revised edition is published.

I. Filing of European patent applications (Article 75 EPC, § 3 IA, § 3 to 10 REP)

European patent applications may be filed either with the EPO or with the Estonian Patent Office:

Estonian Patent Office

Toompuiestee 7

15041 Tallinn

Estonia

European divisional applications must always be filed directly with the EPO (Article 76(1) EPC).

Filing of documents by facsimile is not permitted. European patent applications filed with the Estonian Patent Office may be drawn up in Estonian, English, French or German. Applicants with neither a residence nor principal place of business in Estonia may file European patent applications in one of the languages under Article 14(1) and (2) EPC.

II. A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC, § 6 IA)

Under § 6 IA, a published European patent application designating Estonia enjoys provisional protection as from the date on which a translation of the claims of the published European patent application into the Estonian language has been communicated by the applicant to the person using the invention in Estonia (alleged infringer), or as from the date on which the said translation has been made available to the public by the Estonian Patent Office.

II. B. Filing a translation of the claims (Article 67(3) EPC, § 6 and 9(1) IA, § 19 to 22 REP)

The translation of the claims must be filed with the Estonian Patent Office in duplicate, and the appropriate fee paid. The Estonian Patent Office accepts documents meeting the formal requirements of Rule 35(3) to (14) EPC. The translation may be corrected without payment of a fee. The translation must be accompanied with a request for publication containing the following details: European patent application number, European filing date, priority date, the IPC class, the title of the invention, the name(s) and address(es) of the applicant(s).

For applicants with neither a residence nor principal place of business in Estonia, the translation may be filed by the applicant himself or a professional representative authorised to act before the EPO or by an appointed Estonian patent attorney. If the translation does not comply with the requirements, an Estonian patent attorney must be appointed to submit the corrections.

III. Filing a translation of the patent specification (Article 65 EPC, § 7 and 9(1) IA, § 24 to 28 REP)

A European patent designating Estonia has effect only if an Estonian translation of the text in which the EPO intends to grant the patent, or decides to maintain it as amended, is filed in duplicate with the Estonian Patent Office and the prescribed fee paid. If this requirement is not met, the European patent shall be deemed to be void ab initio. The translation must be filed and the appropriate fee paid within three months of the date on which the mention of the grant or the decision to maintain the patent as amended is published in the European Patent Bulletin. Translation may still be filed within a period of grace of two months from the end of the three-month period, provided that a surcharge is paid.

The Estonian Patent Office accepts translations meeting the formal requirements of Rules 32 and 35(3) to (14) EPC. The translation must be accompanied by the following details: European patent number, European filing date, the title of the invention, the name(s) and address(es) of the applicant(s). If the EPO maintains the patent in an amended form, an Estonian translation of the amended text must be filed.

The translation may be corrected subject to payment of a fee.

For applicants with neither a residence nor principal place of business in Estonia, the translation may be filed by the applicant itself or an appointed Estonian patent attorney. The corrections to the translation should be submitted through an appointed Estonian patent attorney.

IV. Authentic text of a European patent application or European patent (Article 70 EPC, §8 IA and § 24 to 28 REP)

The translation is the authentic text of the European patent application or patent if the scope of protection is narrower than in the language of proceedings. This does not apply, however, in revocation proceedings. Regarding the rights of a prior user where a translation is corrected, § 9(3) IA provides for the safeguards mentioned in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC, § 10 IA, § 144(1) FA)

Renewal fees are payable to the Estonian Patent Office for the years following that in which the European Patent Bulletin mentions the grant of the European patent. Failure to pay the renewal fee will result in the lapse of the patent as from the start of the patent year for which the fee has not been paid.

Renewal fees fall due on the anniversary of the date of filing, but the first such fee does not fall due until two months after the date on which the patent is granted. They may also be paid within a grace period of up to six months of the due date, subject to a surcharge of 10% of the prescribed amount.

Restitutio in integrum is not possible.

The lapse of a patent due to non-payment of renewal fees is published in the Official Gazette and entered in the Register of Patents.

The Estonian Patent Office does not issue reminders in case of non-payment.

Renewal fees are currently as follows:

VI. Conversion of European patent applications into national patent applications (Articles  35 to 137 EPC, § 11 IA, § 31 to 34 REP)

Under Estonian law, conversion occurs at the applicant's request in the case of deemed withdrawal under Article 77(5) EPC or under Article 90(3) EPC (where the translation in the language of proceedings was not filed in time). A European patent application may also be converted into a national application for a utility model, except where under Estonian law the invention may not be protected as a utility model.

In all cases referred to in Article 135(1)(b) EPC, the European patent application may be converted into a national application for a utility model, except where under Estonian law the invention may not be protected as a utility model.

The request for conversion must be filed within three months of the owner of the European patent application being notified of the withdrawal of the application (Article 135(2) EPC). An Estonian translation of the application must be filed and the appropriate fee paid within three months of the notification of the receipt of the request for conversion. At the request of the applicant, the deadline for submitting the translation may be extended by an additional two months (§ 11(5) IA).

VII. Payment of fees

Payments may be made by paying or transferring money to the Estonian Patent Office bank account No.10052032122004 with the Eesti Ühispank AS, Tallinn. Payments must be made in Estonian Kroon (EEK).

VIII. Miscellaneous

1. Simultaneous protection

(Article 139(3) EPC, § 12 IA)

Where a national patent relates to an invention for which a European patent has been granted to the same inventor or his successor in title, with the same date of filing or priority, the national patent shall be ineffective from either the date on which the period for filing an opposition to the European patent has expired without any opposition being filed or the date on which the opposition proceedings are concluded with a decision to maintain the European patent. A national patent granted at a date later than either of the two just mentioned will take no effect.

The exclusion of simultaneous protection shall not apply to utility models (§ 12(3) IA).

2. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies in the territory of the Republic of Estonia.

C. Other international treaties

The Paris Convention entered into force for Estonia on 24 August 1994. The 12-month priority period under the Paris Convention may be claimed for patents and utility models.

The Patent Cooperation Treaty (PCT) entered into force for Estonia on 24 August 1994.

Since 14 September 1996, Estonia has been a contracting state to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

On 27 February 1997 Estonia acceded to the Strasbourg Agreement concerning the International Patent Classification (IPC).

Estonia has been a contracting party to the TRIPs Agreement since 19 November 1999.