WIPO Lex

Requirements for Content and Format of Patent Applications and Procedure for Filing of Patent Applications with Patent Office

Requirements for Content and Format of Patent Applications and Procedure for Filing of

Patent Applications with Patent Office

Regulation No. 221 of the Minister of Economic Affairs and Communications of 28

December 2004

(RTL1 2005, 5, 36),

entered into force 14 January 2005.

This Regulation is established on the basis of subsection 19 (4) and subsection 20 (4) of

the Patents Act (RT 2 I 1994, 25, 406; 1998, 74, 1227; 107, 1768; 1999, 84, 764; 2001, 27,

151; 93, 565; 2002, 53, 336; 2003, 18, 106; 2004, 20, 141).

Chapter 1

General Provisions

§ 1. Definition of terms

Terms used in this Regulation which are not defined in the Patents Act are interpreted

pursuant to the definitions specified in the Paris Convention for the Protection of

Industrial Property (RT II 1994, 4/5, 19), the Patent Cooperation Treaty (hereinafter

PCT) (RT II 1994, 6/7, 21), the Convention of the Grant of European Patents Act

(hereinafter EPC) (RT II 2002, 10, 40), the Patent Law Treaty (hereinafter PLT) (RT II

2003, 6, 22), the Implementation of the Convention of the Grant of European Patents Act

(RT I 2002, 38, 233; 2003, 88, 594; 2004, 20, 141), the Principles of Legal Regulation of

Industrial Property Act (RT I 2003, 18, 98; 82, 555; 2004, 20, 141) and in the legislation

of the European Union and in other international agreements concerning legal protection

ratified by the Riigikogu3.

§ 2. Extension of Regulation to international applications

(1) This Regulation shall not apply to international applications filed, pursuant to

Articles 3-12 of the PCT, with the Patent Office as the receiving office according to

Article 2 (xv) of the said Treaty.

(2) This Regulation shall apply to international applications filed pursuant to Article

22 or 39 of the PCT with the Patent Office as the designated office according to Article 2

(xiii) or as the elected office according to Article 2 (xiv) of the said Treaty after they have

been accepted for national processing.

Chapter 2

Subject and Unity of Invention

§ 3. Types of subjects of invention

Pursuant to subsection 6 (1) of the Patents Act, the subject of an invention is a device,

process or material, including biological material. A group of the aforementioned

subjects is also considered to be the subject of an invention.

§ 4. Unity of invention

Pursuant to subsection 9 (1) of the Patents Act, patent protection for only one invention

or a group of inventions so linked as to form a single general inventive concept can be

applied for in a patent application.

Chapter 3

Unpatentable Subjects

§ 5. Subjects which are not inventions

Pursuant to subsection 6 (2) of the Patents Act, the following shall not be the subject of

an invention, inter alia:

1) discoveries, including descriptions of the formation or development of the human

body or sequence or partial sequence of human gene;

2) scientific theories;

3) 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) designs;

9) presentations of information;

10) plant and animal varieties;

11) layout-designs of integrated circuits.

§ 6. Unpatentable inventions

(1) Pursuant to subsection 7 (1) of the Patents Act, 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.

(2) Pursuant to subsection 7 (2) of the Patents Act, 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 (RT I 1997, 51, 824; 2003, 18,

102);

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.

Chapter 4

Patent Application

Division 1

Patent Application Documents

§ 7. Documents submitted

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

1) a request for the grant of a patent;

2) the description of 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 or patent claims;

5) an abstract of the subject matter of the invention.

(2) The following documents shall be annexed to a patent application:

1) an authorisation document if the patent application is filed via a patent agent;

2) documents certifying the priority claim if priority is claimed pursuant to the Paris

Convention for the Protection of Industrial Property or another agreement, unless a

specification specified in the Patents Act applies;

3) 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;

4) a document which sets out the information concerning payment of the state fee

(hereinafter document certifying payment of state fee).

(3) If the patent applicant is not the author, a document containing a declaration

concerning the legal basis for the right of the patent applicant to apply for a patent and to

become the proprietor of a patent shall be annexed to the patent application. The separate

document need not be submitted if the information concerning legal basis is set out in the

request for the grant of a patent specified in clause (1) 1) of this section pursuant to § 16.

(4) The document certifying payment of the state fee need not be submitted if the

information concerning payment of the state fee is set out in the request for the grant of a

patent specified in clause (1) 1) of this section pursuant to § 19.

§ 8. Number of copies of documents

The description of the invention, patent claims and drawings or other illustrative material

are submitted in three copies. An abstract of the subject matter of the invention is

submitted in two copies. The other documents are submitted in a single copy.

§ 9. Language of documents

(1) Patent application documents are filed with the Patent Office in Estonian, except

the name of the invention in the request for the grant of a patent and the abstract of the

subject matter of the invention which are filed in Estonian and English.

(2) The use of language in patent application documents shall be in compliance with

the Estonian Literary Standard within the meaning of the Language Act (RT I 1995, 23,

334; 1996, 37, 739; 40, 773; 1997, 69, 1110; 1998, 98/99, 1618; 1999, 1, 1; 16, 275;

2000, 51, 326; 2001, 58, 354; 65, 375; 93, 565; 2002, 9, 47; 53, 337; 63, 387; 90, 521;

2003, 82, 551).

(3) In case of foreign language documents included in patent applications or

appended thereto, translations thereof into Estonian shall be filed pursuant to the Patents

Act and this Regulation.

Division 2

Requirements for Content and Format of Requests for Grant of Patents

§ 10. Information to be submitted

(1) A request for the grant of a patent shall set out:

1) information concerning the patent applicant or, in the case of several applicants,

all patent applicants (hereinafter patent applicant);

2) information concerning the representative of the patent applicant if the applicant

is represented by a patent agent or a joint representative in the case of several patent

applicants;

3) information concerning the author or, in case of joint authors, all joint authors

(hereinafter author);

4) the name of the invention;

5) priority claim if priority is claimed pursuant to the Paris Convention for the

Protection of Industrial Property or other provisions specified in § 11 of the Patents Act;

6) information concerning correspondence , if the patent applicant is a person whose

residence or seat is in the Republic of Estonia or if patent applicants are represented by a

joint representative;

7) a list of other patent application documents;

8) signature of the patent applicant or the patent agent;

9) signature of the author who has prohibited the disclosure of his or her name.

(2) A request for the grant of a patent shall clearly set out:

1) a request for the grant of a patent;

2) whether the patent applicant is a natural person or a legal person;

3) the residence or seat of the patent applicant;

4) the legal basis of applying for a patent and becoming the proprietor of a patent

pursuant to the provisions of § 12 of the Patents Act;

5) the name of the author who has prohibited the disclosure of his or her name.

(3) If it is not evident from the name of a natural person which part of the name is the

given name and which part is the surname, the surname shall be underlined. The name of

a natural person shall be provided in Latin alphabet pursuant to the rules of capitalisation

in Estonian.

(4) The name of a sole proprietor or legal person shall be provided pursuant to the

requirements provided for in Chapter 2 of the Commercial Code (RT I 1995, 26–28, 355;

1998, 91–93, 1500; 1999, 10, 155; 23, 355; 24, 360; 57, 596; 102, 907; 2000, 29, 172; 49,

303; 55, 365; 57, 373; 2001, 34, 185; 56, 332 and 336; 89, 532; 93, 565; 2002, 3, 6; 35,

214; 53, 336; 61, 375; 63, 387 and 388; 96, 564; 102, 600; 110, 657; 2003, 4, 19; 13, 64;

18, 100; 78, 523; 88, 591) or pursuant to the requirements provided for in § 4 of the Non-

profit Associations Act (RT I 1996, 42, 811; 1998, 96, 1515; 1999, 10, 155; 23, 355; 67,

658; 2000, 55, 365; 88, 576; 2001, 56, 336; 93, 565; 2002, 53, 336; 2003, 88, 591),

respectively. In event of legal persons whose seat is in a foreign country, the law of the

home country may be applied. Names of natural or legal persons shall be written in

compliance with the Estonian Literary Standard according to which the names in the

Latin alphabet are provided in their source language forms. The names in other alphabets

are transcribed into Estonian letters. In the case of a name of a legal person, the rules of

capitalisation in Estonian or in the language of the home country of the legal person

apply.

(5) No titles, honorary titles, academic degrees or anything else shall be added to the

name of a natural person.

(6) No artistic elements of letter design, including calligraphy, shall be employed

upon writing persons’ names. No special elements of design originating, for example,

from the design of the trade mark shall be used in the case of business names.

§ 11. Form of request for grant of patent

(1) Requests for the grant of patents are filed on the standard form provided in the

Annex to this Regulation. The forms can be obtained without charge from the Patent

Office or the website of the Patent Office.

(2) Information which cannot be supplied in the data fields of the request for the grant

of a patent may be provided on one or several additional sheets of paper signed by the

same person who signs the request for the grant of the patent.

(3) Information shall be entered on the form of the request for the grant of a patent in

typewritten form or in typescript, printed or presented using another technical method.

§ 12. Information concerning patent applicant

(1) Information concerning the patent applicant shall be provided in data field 1 of the

request for the grant of a patent.

(2) The given name, surname and full residential address or, if he or she has an

enterprise, the full address of the residence or the seat of the enterprise is the information

concerning a natural person. The residence of a natural person is the place where the

person lives permanently or primarily or the place with which the person is most

connected personally and economically. If places in different countries can

simultaneously be deemed the residence of a natural person, the residence of the person

shall be indicated as the place in the country of the person’s citizenship.

(3) Information concerning a legal person shall consist of the full or abbreviated name

of the legal person which is entered in the commercial register or in the non-profit

associations and foundations register or in another official register pursuant to the law of

the home country of the legal person and the full address of the seat of the legal person.

The seat of a legal person is the place where its management board or a substituting body

thereof is located unless the articles of association prescribe otherwise.

(4) If the residence or seat of a patent applicant is located outside the Republic of

Estonia, the two-letter code of the country pursuant to Standard ST. 3 of the World

Intellectual Property Organization (hereinafter WIPO) for the identification of countries

(hereinafter two-letter code of a country) shall be indicated in addition to the address.

(5) If there are several patent applicants, information concerning all applicants shall

be submitted.

(6) If the patent applicant is a natural or legal person (hereinafter person) of a federal

state, the federated state shall also be indicated in the address and the name of the city or

other settlement shall be underlined or distinguished in some other manner.

(7) The Patent Office shall be immediately informed of any later changes to the

information concerning a patent applicant. In case of change of the name of the patent

applicant (for example, change of the name of a natural person or transformation of a

legal person), the patent applicant shall file a request for amendment of data and a

document certifying the change of name or an officially certified copy thereof. If patent

applicant changes in the case provided for in subsection 44 (1) of the Patents Act in

connection with transfer of a patent application to another person or in connection with

transition of a patent application to a legal successor in the case provided for in

subsection (2) of the same section, the patent applicant or the person to whom the patent

application is transfered or transfers shall file a request for amendment of data which sets

out the information concerning both the former and the new patent applicant to the Patent

Office. A request shall include a document certifying payment of the state fee. If a

request is filed by the person to whom the patent application is transferred or transfers,

the request shall be accompanied by a document certifying the transfer or an officially

certified copy thereof.

§ 13. Information concerning representative of patent applicant

(1) Data field 2 shall be completed only if the patent applicant is represented by a

patent agent in filing the patent application or performing procedures with the Patent

Office, or if several patent applicants are represented by a joint representative.

(2) In the case of a joint representative, only the name of the person shall be entered

in the data field. The name of the joint representative shall be identical with his or her

name as entered in data field 1 as the patent applicant.

(3) Information concerning a patent agent consists of the given name and surname of

the patent agent, full name, address and phone number of the patent agent’s office and the

registration number of the patent agent in the state register of patent agents.

(4) If both the names of a joint representative and a patent agent are provided in data

field 2, the patent agent is deemed to be the representative of the patent applicant.

(5) The Patent Office shall be immediately informed of any later changes to the

information concerning the representative of a patent applicant.

§ 14. Correspondence data

(1) Data field 3 shall be completed if the patent application is filed and the procedures

related to the application for a patent are performed by a patent applicant whose residence

or seat is in the Republic of Estonia or, in the case of several patent applicants, their joint

representative whose residence or seat is in the Republic of Estonia and if the patent

applicant or joint representative prefers to use a postal address of a destination located

within the territory of the Republic of Estonia different from the address provided in data

field 1 in order to ensure more expeditious receiving of written notices. It is

recommended that the contact telephone number be included.

(2) Information concerning the patent applicant or the joint representative shall also

be indicated in data field 3 if the information concerning a patent agent is indicated in

data field 2 but the patent agent is not authorised to accept written communications from

the Patent Office.

(3) If the patent applicant is a legal person or, in the case of several patent applicants,

the joint representative is a legal person, then the head of the legal person, an employee

appointed by the head or a procurator shall be the person who accepts written

communications from the Patent Office indicated in data field 3. On the basis of the

provisions of subsection 13 1 (1) of the Patents Act, third persons or other contractual

representatives in addition to the patent agent may not be authorised to accept written

communications from the Patent Office.

(4) If data field 3 is not completed in the prescribed cases, contains clearly incorrect

information or mistakes, the Patent Office shall send communications to the joint

representative indicated in data field 2 or, in the absence thereof, to the patent applicant

indicated in data field 1, including the person whose residence or seat is in a foreign

country. If, in the case of several patent applicants, a joint representative is not indicated,

communications shall be sent to the applicant indicated first in data field 1 at the address

of the residence or seat of the patent applicant. If there are persons among the patent

applicants whose residence or seat is in the Republic of Estonia and persons whose

residence or seat is in a foreign country, communications shall be sent to the person

whose residence or seat is in the Republic of Estonia and who is indicated first in data

field 1.

(5) The Patent Office shall be immediately notified of any later changes to the

correspondence data.

§ 15. Information concerning author

(1) The given name, surname and full address of the author, together with the two-

letter code of the country added thereto, shall be indicated in data field 4.

(2) If there are several authors, the information specified in subsection (1) concerning

all authors shall be indicated in data field 4.

(3) If the author is also the patent applicant, only the given name and surname of the

author or the word “taotleja” [applicant] may be written in data field 4. In such case,

providing the address is not required.

(4) An author who wishes not to disclose his or her name as the author shall provide a

request for the prohibition of disclosure of name as the author in data field 4 and shall

confirm the request with signature. If it is impossible to obtain the signature of the author

on the request for the grant of a patent, a separate document signed by the author which

contains a request for the prohibition of disclosure of the author’s name or a

corresponding request may be annexed to the patent application. A request for the

prohibition of disclosure of the author’s name may also be submitted later but not later

than one month prior to the publication of the patent application.

(5) If the author is deceased, the given name and surname of the author and the word

“surnud” [deceased] shall be indicated in data field 4.

§ 16. Information concerning right to apply for patent

(1) If the author is not simultaneously the patent applicant, the legal basis of applying

for a patent and becoming the proprietor of a patent shall be declared in data field 5 by

marking the appropriate box. Submission of a contract or any other document certifying

legal succession to confirm the legal basis is not required upon filing the patent

application.

(2) The right to apply for a patent and to become the proprietor of a patent may also

be declared in a separate document which shall be annexed to patent application

documents upon filing a patent application.

(3) The Patent Office may require submission of a contract or a document certifying

legal succession specified in subsection (1) of this section or an officially certified copy

thereof only if the legal basis of applying for a patent and becoming the proprietor of a

patent has not been declared in prescribed cases and the corresponding explanations

requested by the Patent Office are insufficient or give reason to suspect that the

provisions of § 12 of the Patents Act have been ignored upon filing of the patent

application.

§ 17. Name of invention

(1) The name of the invention which shall be identical with the name of the invention

provided in the description of the invention shall be indicated in data field 6.

(2) The translation of the name of the invention into English shall also be indicated in

data field 6.

§ 18. Priority claim

(1) If data field 7 is completed priority is deemed to be claimed.

(2) If priority is claimed, pursuant to subsections 11 (2) of the Patents Act, on the

basis of a first patent application or registration application of a utility model filed in any

State party to the Paris Convention for the Protection of Industrial Property or member of

the World Trade Organisation or on the basis of a first patent application or registration

application of a utility model filed 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, the first box shall be marked in the data field and the

filing date of the first patent application or registration application of the utility model

and the two-letter country code and the number of the patent application or registration

application of the utility model (priority data) shall be entered in the data field after the

INID-code pursuant to Standard ST. 9 of WIPO. If the first patent application or

registration application of the utility model is a regional or international application, the

executive agency of the state or the intergovernmental organisation where the first

application was filed shall be indicated by a two-letter code. If the patent application is

filed on the basis of several first patent applications or registration applications of a utility

model, priority data of all such applications shall be entered in the data field.

(3) If, on the day of filing of a patent application with the Patent Office, the patent

applicant does not yet know the number of the first patent application or registration

application of a utility model, only the filing date and state of the first patent application

or registration application of a utility model in the priority claim shall be indicated.

(4) In event of a patent application separated from an initial patent application

pursuant to subsection 9 (2) or (3) of the Patents Act, the first box on shall be marked in

the data field if priority was claimed in the initial patent application, and the second box,

and priority data of the initial patent application to such extent as applies to the separated

invention shall be entered in the data field on the basis of subsection 11 (4) of the Patents

Act. The filing date of the initial patent application and the number of the patent

application shall be set out on the lower edge of the data field. If the initial patent

application is based on an international application, the international filing date shall be

indicated as the filing date.

(5) In event of a patent application filed with the Patent Office for the same invention

by the same patent applicant within twelve months, the fourth box shall be marked in the

data field and the filing date and number of the earlier patent application or registration

application of a utility model shall be entered in the data field on the basis of subsection

11 (5) of the Patents Act.

(6) In event of a patent application which is filed on the basis of corrections and

amendments to an earlier patent application which alter the subject matter of the

invention, the third box shall be marked in the data field and the date of filing of the

corrections and amendments with the Patent Office and the number of the earlier patent

application shall be entered in the data field on the basis of subsection 11 (3) of the

Patents Act.

§ 19. Information concerning payment of state fee

(1) The first box shall be marked in data field 8 and the amount of state fee for filing

a patent application and the method of payment by which the specified state fee was paid

shall be entered in the data field. Upon payment of the supplementary state fee in case of

patent claims exceeding ten claims, the second box shall also be marked in data field 8

and the amount of the supplementary state fee paid shall be entered in the data field.

Upon payment of the state fee for the issue of copies of patent documents of other printed

material referred to by the Patent Agent, the third box shall be marked in data field 8 and

the amount of state fee paid shall be entered in the data field.

(2) Upon payment of the state fee by payment order, by a cash payment to the bank

account of the Patent Office or in another manner, the number and date of the payment

document shall be indicated in the data field.

(3) The appropriate box shall be marked in the data field depending on whether the

state fee is paid by the patent applicant, patent agent or another person, including the joint

representative. If another person paid the state fee, the name of the payer shall be entered

in the data field.

§ 20. Other information

(1) Data field 9 shall be completed if:

1) information concerning the first patent application or registration application of a

utility model is filed, pursuant to subsection 21 (2) of the Patents Act, instead of filing the

description of the invention,

2) a document certifying the deposit of a biological material, including micro-

organism strain, is to be submitted pursuant to clause 19 (2) 3) of the Patents Act, or

3) disregard of the disclosed information concerning the invention in determining

the state of the art on the basis of subsection 8 (3) of the Patents Act is required.

(2) If information concerning the first patent application or registration application of

a utility model is submitted instead of the description of the invention, the first box shall

be marked in data field 9 and the filing date of the first application, the state or

international organisation where the first application was filed and the number of the first

application shall be entered in the data field. The description of an invention of the first

application and patent claims or translation thereof into Estonian shall be annexed to a

patent application if the first application is in a foreign language. If the description of an

invention of the first application and patent claims are not filed upon filing of a patent

application, it is recommended to file them as soon as possible. If the description of an

invention of the first application and patent claims is not filed on own initiative, it shall

be filed by the due date set by the Patent Office pursuant to subsection 22 (7) of the

Patents Act, but not later than within sixteen months from the filing date of the first

patent application or registration application of a utility model. In addition to the above-

mentioned, a priority claim conforming to subsection 18 (2) of this Regulation shall be

indicated in data field 7, on the basis of the first application, as a rule, and documents

certifying the priority claim shall be filed together with the patent application.

(3) Upon submission of information concerning the deposit of biological material,

including micro-organism, the second box shall be marked in data field 9, and accession

number, date of the deposit and the full or abbreviated name of the international

depositary authority shall be entered in the data field.

(4) Marking of the third box in data field 9 is deemed to be the filing of the request

provided for in subsection 8 (3) of the Patents Act. The date of disclosure of the

information concerning the invention which is desired not to be disclosed in determining

the state of the art, and the specific data concerning the source or event of disclosure as

accurately as possible, including the date of display of the invention as an exhibit at the

exhibition and the name and place of the exhibition shall be entered in the data field.

§ 21. Information concerning annexes

(1) In data field 10, the boxes next to such documents as were actually filed in the

patent application shall be marked in the list of annexes. The number of pages of each

document shall also be indicated.

(2) If a patent application contains a document which is not listed, the list shall be

supplemented by adding the name, number of pages and original copies of the document.

§ 22. Signature

(1) A request for the grant of a patent shall be signed by the patent applicant. If there

are several patent applicants, all of them shall sign.

(2) A signature shall consist of the given name and the surname, be legible or

deciphered in capital letters. If the patent applicant is a legal person, the title of the legal

representative who signed the request shall be added.

(3) When signing a request, the place (city, other settlement, farm) and date of

signing shall be indicated.

(4) A signature on an additional sheet of paper shall be in compliance with the

requirements provided for in subsections (2) and (3) of this section.

(5) A request for the grant of a patent may also be signed by a patent agent or a joint

representative if he or she has authorisation. An authorisation document which complies

with the requirements established in § 47 shall be annexed to a patent application for

certification of authority. If it is impossible to annex an authorisation document to the

patent application at the time of filing the patent application, it shall be forwarded to the

Patent Office at the earliest opportunity but not later than by the due date set by the

Patent Office on the basis of subsection 25 1 (1) of the Patents Act.

Division 3

Requirements for Content and Format of Description of Invention

§ 23. Purpose of description of invention

(1) The purpose of the description of an invention is to disclose the subject matter of

an invention. The subject matter of an invention shall be disclosed to such an extent

which would enable a person skilled in the art to comprehend the nature of the technical

problem and the solution thereof by means of the invention.

(2) The description of an invention shall ensure the precise interpretation of the scope

of patent protection determined by the patent claims.

§ 24. Structure of description of invention

(1) The name of the invention shall be the title of the description of an invention.

(2) The description of an invention consists of the following parts:

1) the technical field;

2) the state of the art;

3) the subject matter of the invention;

4) a list of drawings or other illustrative material;

5) one or several examples of making the invention and other information, as

necessary, which certifies the susceptibility of making the invention, industrial usage

thereof and of obtaining of the technical result presented.

(3) A nucleotide and/or amino acid sequence listing which complies with the

requirements established in § 34 (hereinafter sequence listing) shall also be part of a

description of an invention if nucleotide and/or amino acid sequences are disclosed in the

patent application.

(4) Single parts of the description of an invention or descriptions of the technical

solutions contained therein as well as explanations of the subject matter of an invention

or arguments for obtaining of the prescribed technical result by means of the invention

shall not be replaced by references to sources of literature, other patent application

documents or other sources of information.

(5) The beginning and end of the text of the parts of the description of an invention

specified in subsection (2) of this section shall be distinguishable. The parts may bear

titles which correspond to their names.

§ 25. Name of invention

(1) The name of an invention shall clearly and precisely indicate the technical

purpose of the invention and correspond to the subject matter of the invention. The name

of an invention shall not be narrower or broader than the subject matter of the invention.

The subject of the invention (device, process, material) shall be evident from the name of

the invention.

(2) It is recommended that the terminology of international patent classification be

used in names of inventions.

(3) The name of an invention shall not contain:

1) the name of a natural person, including the name of the author;

2) the business name of an enterprise;

3) place names;

4) a trade mark consisting of words or an element of a trade mark consisting of

words;

5) the word “new” or any advertising appeals or advertising text;

6) slang words and expressions;

7) other words and expressions which do not have a definite meaning as technical

terms.

(4) The name of an invention shall be provided in the singular. The names of

inventions relating to chemical compounds with a common structural formula constitute

an exception.

(5) In the name of an invention relating to an individual chemical compound, the

name of the compound shall be indicated according to a nomenclature used in chemistry,

preferably the IUPAC nomenclature. The specific purpose of the compound and, in the

case of bioactive compounds, the type of biological activity of the compound may be

indicated as well.

(6) In the case of processes for the creation of high-molecular compounds with

unspecified structure, the name of the high-molecular compound and the purpose thereof,

if necessary, shall also be indicated in the name of an invention.

(7) In the case of processes for the creation of substances with unspecified

composition, the purpose or bioactive qualities of the mixture of substances shall be

indicated in the name of an invention.

(8) If a patent application contains a group of inventions so linked as to form a single

general inventive concept, the name of the invention shall include all inventions

belonging to the group and the connection thereof, for example “Material X, process for

the creation thereof and use of the material X”, “Process Y and device for executing the

process”, “Material Z, process for the creation of material Z and device for executing the

process”, etc.

(9) The name of an invention shall not be abbreviated using abbreviations of terms or

the abbreviation “etc.” or other similar abbreviations.

(10) It is recommended that names of inventions be formulated on the basis of

Standard ST. 15 of WIPO.

§ 26. Technical field

The technical field where an invention belongs and the area of application of the

invention shall be indicated in the part of the description of the invention titled

“Technical field”. If there are several such fields and areas, the technical fields and areas

where the invention is intended to be used should be indicated.

§ 27. State of the art

(1) Analogous inventions previously known to the patent applicant and other

technical solutions which may be useful for understanding the subject matter of the

invention and for conducting an examination, preferably with references to documents in

which they are presented, shall be described in the part of the description of an invention

titled “State of the art”.

(2) Upon describing analogous solutions, terminology consistent with the terminology

of the invention to the extent possible shall be used. Common and distinguishing

technical features of analogous solutions and an invention shall be clearly evident from

the description of analogous solutions and such technical features shall also constitute the

basis for the formulation of patent claims.

(3) The solution which provides most similar technical results and is closest to an

invention known to a patent applicant in the state of the art shall be described separately

and the technical problem which renders the solution defective and which is to be

eliminated by the invention shall be indicated.

(4) If a patent application contains a group of inventions, solutions analogous to each

invention and the closest solution shall be described separately and the technical problem

which is to be solved by the corresponding invention contained in the group shall be

indicated in case of the latter.

(5) Bibliographical references to sources of information containing analogous

solutions shall be presented in the text of the description of an invention in such a manner

that locating of the sources according to the references would be as easy as possible.

(6) If a patent or another protection document of an invention is referred to, the name

of the country or the two-letter code of the country, the name of the protection document

or code of the type of the protection document, the number, the index of the international

patent classification and the name of the proprietor or author of the protection document,

and the year of publication of the protection document shall preferably be indicated.

§ 28. Subject matter of invention

(1) The subject matter of an invention is expressed as a set of essential features of an

invention. The set of essential features of an invention includes all features that are

necessary and sufficient to obtain a specific technical result which is the closest to the

invention and which is the purpose of the invention.

(2) This part of the description of an invention shall contain all the features of the

invention presented in patent claims and the technical result which is the purpose of the

invention and explain the causal relation between the features and the technical result.

(3) Upon disclosing the subject matter of an invention, other technical results

provided by the invention, including in individual cases or upon specific forms of

execution or special conditions of use, shall preferably be indicated as well. The technical

result which is the purpose of an invention may be, for example, the reduction of friction

coefficient, prevention of jamming, avoidance of defects from metal casting, increase of

the sensitivity of a measuring instrument, increase of the activity of a medicinal product,

localisation of the effects of a proprietary medicinal product, etc.

(4) In the case of a group of inventions, the subject matter of each invention

belonging to the group and the technical result obtained shall be described separately. For

confirmation of the unity of an invention, it is recommended that the technical connection

between the inventions belonging to the group and their role in the integral contribution

made to the state of the art be explained.

§ 29. List of drawings or other illustrative material

Besides the list of drawings or other illustrative material, a short explanation concerning

the content thereof shall be provided in this part of the description of an invention, for

example: Figure 1 – perspective view of the device, or Drawing fig 1 – perspective view

of the device; Figure 2 – Section on A-A, or Drawing fig 2 – Section on A-A; Figure 3 –

electric circuit of the device, or Drawing fig 3 – electric circuit of the device, etc.

§ 30. General requirements for preparation of examples of making invention

(1) At least one example describing the way in which the invention is capable of

exploitation in industry shall be provided. Generally, such example shall describe the best

way in which the invention is capable of exploitation known to the patent applicant at the

time of preparation of the patent application.

(2) If the industrial exploitation of an invention may potentially cause doubts in a

person skilled in the art or in a patent expert, it is expedient to provide proof and explain

the susceptibility of the invention to industrial exploitation in that part of the description

of the invention in order to dispel the doubts.

§ 31. Example of executing device

(1) In an example of making an invention relating to a device, the device shall first be

described in static state. If a device is described in the form of a scheme (electric,

hydraulic, pneumatic or other scheme), all elements of the schematic shall be listed and

connections between them are described.

(2) Upon describing a device, the drawings shall be referred to. The structural

elements shall be numbered in the course of preparing the description of an invention

according to the order of their first occurrence in the text. The numeration begins with

number one. Other numbering systems may be used as well. For example, independent

details are numbered with one- and two-digit numbers, components and details thereof

with three-digit numbers (“frame 1”, “electric motor 100”, “rotor 110 of electric motor

100”, “terminal plate 111 of rotor 110 of electric motor 100”, “terminal 112 of rotor 110

of electric motor 100”) etc. As the number of a structural element is part of the name of

the structural element in case of an example of making, then the number shall not be in

brackets, as a rule.

(3) After a device is described in static state, the functioning or exploitation thereof

shall be described referring to drawings and other illustrative material (diagrams, time

charts, etc.).

(4) If a device contains a polyfunctional element or device (including computer)

which is to be programmed (adjusted) or presumes the use thereof, information

confirming the possibility of using such element or device specifically in this device shall

be provided. If such information contains algorithms, especially computational

algorithms, such algorithms shall preferably be presented as block schematics or as

corresponding mathematical expressions, if possible.

§ 32. Example of executing process

(1) In an example of making an invention relating to a process, procedures (methods,

operations) performed with a material object, the order thereof, the conditions or

technological regime (temperature, pressure, etc.) of performing a procedure, devices and

materials, including biological materials, used shall be described. If a process is

characterised by using known means (known devices, materials, including biological

materials and micro-organism strains), such devices shall be indicated and knowledge

thereof shall be proven, if necessary. If means unknown from the state of the art are used,

such means shall be characterised. If a biological material is deposited, information

concerning the deposit shall be provided.

(2) If novel materials are used in the process, the process of creation thereof shall be

described to such an extent which would enable a person skilled in the art to prepare

them.

(3) In the case of an invention relating to the creation of a group of novel chemical

compounds with a common structural formula, an example of the process of creation of a

compound belonging to the group shall be provided and, if the group contains compounds

with different chemical radicals, examples of the creation of specific compounds with

different chemical radicals shall be provided. In the case of an homologous series,

examples of the creation of the first and last members and an intermediate member of the

series shall be provided. Structural formulae of the compounds belonging to the group

which are proven (determined) utilising known methods, the physico-chemical

characteristics and bioactive qualities of the compounds shall be provided and the

purpose of the compounds shall be described.

(4) In the case of an invention relating to the process of creating a high-molecular

compound with an unspecified structure, information necessary for the identification of

such compound, information concerning the precursors necessary for the creation thereof

and application characteristics of the compound shall be provided in the examples.

(5) In the case of an invention relating to a process of creating a mixture with a

specific purpose or specific bioactive qualities but with an unspecified composition and

structure, a characterisation of the mixture itself necessary for the identification of the

mixture and the application characteristics of the mixture shall be provided in examples

in addition to a description of the procedures and conditions of the process of creation.

(6) If an object is made of a material with unspecified composition and structure, in

the case of an invention relating to a process of creating such object, information

concerning the characteristics of the material and the application characteristics of the

object shall be provided in such a manner that it allows the identification of the material

and the object.

§ 33. Examples of materials

(1) In the case of a novel individual compound with a specified structure, the

structural formula proven (determined) with known methods, physico-chemical constants

and a description of the process of creation of the compound shall be provided.

Information on the possibility of using the compound for a certain specified purpose and,

in the case of bioactive compounds, quantitative indicators of activity and toxicity and of

selective action, if necessary, and other characteristics shall be provided.

(2) If a novel compound is to be used for medical purposes and clinical trials have

been carried out in connection therewith, data of such trials shall be provided indicating

the dose and intended purpose of the medical product, the process of preparation of the

recipe and the results of toxicity tests.

(3) If a novel individual chemical compound is created by use of a micro-organism

strain, the method of biosynthesis and information concerning the micro-organism strain

and deposit thereof, if necessary, shall be provided.

(4) In the case of a material relating to the creation of a group of novel individual

compounds with a common specified structural formula, the possibility of creation of all

compounds belonging to the group shall be proven on the basis of the common scheme of

the process of creation and an example of creation of a specific compound and, if the

group contains compounds with different chemical radicals, also an example of the

creation of specific compounds with different chemical radicals. Structural formulae of

the compounds created which are proven (determined) utilising known methods, their

physico-chemical constants and evidence demonstrating the possibility of using some

compounds in the group for a specific purpose shall be provided.

(5) If novel compounds are bioactive, indicators of activity and toxicity and of

selective action, if necessary, of such compounds shall be provided.

(6) In the case of an invention relating to an intermediate product, the possibility of

processing such product into a known final product or a novel final product with a

specific intended purpose or bioactive qualities.

(7) In the case of an invention relating to a composition (mixture, solution, alloy,

glass, etc.), ingredients belonging to the composition, characterisation and quantitative

relation of the ingredients and a description of the process of creation of the composition

shall be provided in the examples. If a novel substance is used as an ingredient of a

composition, the process of creation of such substance shall also be described.

(8) In the examples, the content of each ingredient shall be provided as a fixed

amount which is in compliance with the limits provided in patent claims. Upon

expression of the relation of the percentage by mass or volume of ingredients in patent

claims, the sum of the percentage of content of all ingredients shall equal 100 per cent.

(9) In the case of a micro-organism strain, the following information shall be

provided:

1) the name of the type of micro-organism strain in Latin and method of creation

thereof;

2) identifying mark (number, symbols) given to the micro-organism by the patent

applicant;

3) the exact name of the international depositary authority, if the micro-organism is

deposited;

4) the registration number given to the micro-organism by the international

depositary authority, if the micro-organism is deposited;

5) features of the micro-organism strain distinguishing the strain from the original

strain or other related strains;

6) substances obtained by use of the micro-organism strain, or another intended

purpose of the strain, whereupon the stability and lifetime of the products shall be

indicated;

7) assessment of the productivity of the micro-organism strain.

(10) If a micro-organism strain is not known to the public on the filing date of the

patent application or, if priority is claimed, on the date of priority and it is not deposited

pursuant to the Budapest Treaty specified in subsection 61 (4) of the Patents Act, the

micro-organism strain shall be described in the description of the invention in a manner

which enables a person skilled in the art to make the invention.

(11) The methods of determining and identifying a micro-organism strain

(environment, test conditions) shall be presented in the description of an invention which

contains the micro-organism strain.

(12) Upon presenting the features of a micro-organism strain, permissible limits of

variation thereof shall be indicated.

§ 34. Sequence listing

(1) A sequence listing shall be provided if nucleotide and/or amino acid sequences are

disclosed in a patent application.

(2) A sequence listing shall be prepared and filed as a separate document pursuant to

Standard ST. 25 of WIPO.

(3) The sequence listing is separately numbered. The number of the page shall not be

indicated on the first page of the sequence listing.

(4) The sequence listing is placed after patent claims upon filing a patent application;

however, if there are drawings or other illustrative material, it shall be placed after the

latter.

Division 4

Requirements for Content and Format of Patent Applications

§ 35. Purpose and meaning of patent claims

Patent claims determine the object and scope of patent protection. The contents and scope

of a patent protection are interpreted as they result from the wording of patent claims.

The description of the invention, drawings or other illustrative material or other patent

application documents shall not be taken into account upon interpreting patent claims in a

way which restricts or extends the wording thereof. In view of the foregoing, the wording

of patent claims is independent of wordings presented in other documents of a patent

application. Other documents of a patent application have legal effect only if it is possible

to prove and correct any obvious spelling and calculation mistakes in patent claims on the

basis thereof.

§ 36. Structure of and general requirements for patent claims

(1) Patent claims may consist of one or several claims.

(2) Patent claims consist of one independent claim and as many dependent

(subordinate) claims as necessary.

(3) If a patent application contains a group of inventions so linked as to form a single

general inventive concept, patent claims consist of an independent claim characterising

each invention and as many dependent claims as necessary. For example:

1) in addition to an independent claim concerning a material, an independent claim

concerning the process of creating the material and an independent claim concerning the

application of the material;

2) in addition to an independent claim concerning a process, an independent claim

concerning the device or equipment intended to be used in the process;

3) in addition to an independent claim concerning a material, an independent claim

concerning the process of creating the material and an independent claim concerning the

device or equipment necessary to execute the process;

(4) If the patent claims consists of two or more claims, they are numbered in the order

in which they occur (successive numeration).

(5) The independent claim of patent claims shall always be presented at the beginning

of the patent application and numbered number 1.

(6) In the case of a group of inventions, all patent claims concerning one subject of

invention are placed successively starting with the independent claim characterising the

subject, thereafter all patent claims concerning the second subject are presented, etc. The

numeration of claims is successive throughout patent claims.

(7) If the patent claims consist of only one claim, such claim shall not be numbered.

(8) The patent claims are prepared only as a set of essential technical features of an

invention. The wording of the text of the patent claims shall be clear and precise and as

short as possible. References to the description of an invention and the drawings or other

illustrative material may not be used, unless unavoidably necessary. It is prohibited to

replace features with references to the state of the art, description of the invention or

drawings or other illustrative material.

(9) Each independent claim of patent claims shall contain the essential technical

features of an invention and each dependent claim shall specify the essential technical

features of the invention included in the previous claim(s) of the patent claims.

(10) The terminology of patent claims and the description of the invention shall be

consistent.

(11) Upon generalising the features of an invention, it shall be taken into account that

the extent of definitions presented as features of the invention in patent claims shall not

exceed the extent to which such definitions can be interpreted with the help of the

description of the invention and the drawings or other illustrative material. If it is not

possible to use a generalised notion to express a feature of an invention, alternative

features may be used in patent claims. The need to use alternative features shall be

explained in the description of the invention.

(12) A claim of patent claims consists of a single sentence.

(13) In event of a group of inventions, the first claim of patent claims is the main claim

of the patent claims and the invention contained therein is directed at solving of the

technical problem which is necessary from the point of view of the state of the art. The

main claim of the patent application is the basis for definition of the single general

inventive concept. In order for the requirement of unity of invention to be complied with,

other inventions belonging to the group must have technical connection with the

invention contained in the main claim and they shall be subordinated to a single general

inventive concept such that all inventions contained in independent claims of the patent

application together constitute an integrate contribution to the state of the art.

§ 37. Independent claim of patent claims

(1) An independent claim of patent claims consists of a set of essential features, that

is, features which are necessary and sufficient to obtain the specific technical result which

is the purpose of the invention in all cases when patent protection is applied for.

(2) An independent claim of the patent claims consists of a restrictive part and

differentiating part.

(3) A restrictive part begins with the name of an invention. Essential features of an

invention which the invention shares with the closest solution known in the state of the

art (subsection 27 (3)) shall be presented in the restrictive part except in the case when

the invention shares no essential features with solutions known in the state of the art in its

field.

(4) A restrictive part begins with the expression “differs in that ...”, “which is

characterised by ...”, “further contains ...” or another suitable expression. The expressions

“differs”, “characterised by”, “contains”, etc. are printed double-spaced or distinguished

in another manner. The essential features of an invention which are novel compared to

the features of the closest solution known in the state of the art shall be presented in the

differentiating part

(5) An independent claim of patent claims shall be prepared without dividing it into a

restrictive part and differentiating part, if:

1) the invention is an individual compound;

2) a differentiating feature of the invention is the use of a device, process or

material;

3) the invention has no known analogues in the state of the art.

(6) An independent claim of patent claims shall not contain insignificant features,

including negative features, for example, in the form "does not contain element X". If the

set of features presented in the independent claim of patent claims is obtained by merely

omitting a feature of a technical solution known in the state of the art (so-called negative

novelty) without adding any new features, an invention shall be considered not

compatible with the criterion of patentability due to lack of inventive step, as a rule,

because a solution created by omitting an insignificant feature shall be considered, with

regard to the state of the art, obvious to a person skilled in the art.

(7) An independent claim of patent claims may contain alternative features if this is

unavoidable for obtaining of the specific technical result which is the purpose of the

invention in all cases when patent protection is applied for. Alternative features may not

be included in patent claims for the purposes of obtaining of an additional technical result

if unity of the invention is violated thereby.

(8) Patent claims may contain only one independent claim of patent claims with

regard to one invention. As an exception, the subject matter of an invention may be

expressed with more than one independent claim if the character of the invention does not

to allow the subject-matter of the invention to be expressed with one claim. On the basis

of subsection 10 (3) of the Patents Act, there may be more than one independent claim

with regard to one invention in the following cases:

1) the invention consists of several products grouped together, for example, a lock

and a key, a plug connector and a plug-in socket, in some cases, also a radio transmitter

and receiver, etc.;

2) the device or other product is used for various purposes;

3) such alternative solutions to the technical problem exist as not to allow the subject

matter of the invention to be covered by a single claim through alternative features. The

requirement of unity of invention must be met in all abovementioned cases.

(9) In event of a group of inventions, patent claims may contain more than one

independent claim in order to characterise the use of a device or other product, provided

that the requirement of unity of invention is complied with.

(10) In event of a group of inventions, the main claim of the patent claims or the

preceding independent claim is referred to in a following independent claim of the patent

claims.

§ 38. Dependent claim of patent claims

(1) A dependent claim of patent claims is subordinate to an independent claim. A

dependent claim may, at the same time, be subordinate to another dependent claim.

(2) A dependent claim shall consist of a restrictive part and differentiating part as an

independent claim, with the difference that an independent claim and other dependent

claims which the dependent claim is subordinate to are referred to instead of the features

of the restrictive part. The essential features which characterise special cases of making

or using the invention (for example, “3. The device according to claims 1 and 2 which

differs in that the frame is made of copper.”) shall be presented in the differentiating part.

(3) Dependent claims may be subordinate to an independent claim directly or

indirectly, through one or several dependent claims. Direct subordination of a dependent

claim is used if, besides the features presented in such claim, only the features of an

independent claim are necessary to characterise special cases of carrying out or using the

invention. If the features of one or several other dependent claims are necessary to

characterise the said special cases, indirect subordination of a dependent claim to an

independent claim is used.

(4) Technical solutions contained in a dependent claim which specify the essential

technical features of the invention included in the previous claim(s) of the patent claims

may be both technical solutions known in the state of the art and independent inventions.

If an invention contained in an independent claim is patentable, then the non-patentability

of a technical solution contained in a dependent claim or lack of unity shall not be taken

into account.

§ 39. Particulars of patent claims pertaining to device

(1) In patent claims, a device shall be described in static state (subsection 31 (1) also

applies to electric circuits and other schematics). Verbs expressing unfinished activities,

such as “roll”, “pulls”, “descends”, shall not be used in patent claims. If it is necessary to

use an activity as the feature of a device, it shall be presented as a finished activity, for

example “executed”, “attached”, “placed”, “descended”.

(2) In patent claims, the mobility of an element may be indicated (“a disk capable of

rotating”, “a longitudinally movable blade”, etc.) or an element may be characterised

through the function thereof (“a pin for the fixation of the position of the lever”, etc.) on

the condition that a person skilled in the art is capable of making the element

independently.

(3) In patent claims, reference numbers of the elements represented on drawings or, in

case of electric and other schemes, symbols of the elements (for example, symbols of

electric circuit “R1”, “C1”, etc.) may be added to reference numbers in brackets to the

features. However, upon the preparation of patent claims, it shall be taken into account

that the nature of a technical solution shall become evident also without using the

reference numbers. Other references to the description of an invention and the drawings

or other illustrative material shall not be used in patent claims, unless unavoidably

necessary.

§ 40. Particulars of patent claims pertaining to process

Verbs characterising a procedure (method, operation) shall be used in the present tense of

the Indicative Mood using passive voice, for example “is heated”, “is irrigated”, etc.

§ 41. Specifications upon use of known device, process or material

In order to characterise the use for a novel purpose of a known device, process or

material, including micro-organism strain, the novel purpose thereof shall be indicated in

the independent claim of patent claims. In such case, the structure of patent claims is the

following: the word “Using”, a name allowing the identification of the device, process,

material, including micro-organism strain or other biological material and the purpose of

the use.

§ 42. Particulars of patent claims pertaining to material

(1) In the patent claims of any individual compound, the purpose or type of biological

activity of the compound and the name or sign of the compound shall be indicated.

(2) If a composition is characterised by the quantitative composition of the

ingredients in patent claims, the minimum and maximum limits of the content of

ingredients shall be indicated using uniform units.

(3) It is permitted to indicate the content of one ingredient in a composition using

certain units and the content of other ingredients in proportion to the first ingredient (for

example, providing the content of ingredients per 100 mass units of the main ingredient

or per one litre of the solution).

(4) It is permitted to indicate the content of antibiotics, ferments, etc. in a composition

in other units than the content of other components of the composition (for example, in

units of fermentative activity per a unit of mass of the other ingredients of a

composition).

(5) The differentiating part of patent claims of an invention pertaining to a

composition begins with the expression “contains additionally” if the introduction of an

ingredient into the composition is to be emphasised.

(6) If the purpose of a composition is determined only by a novel active component

and other components perform the usual function in a composition of this type, only the

active component and the quantitative content thereof in the composition may be

indicated in patent claims.

(7) If the feature of an invention is a known material with a complicated composition,

the use of a special name of such material is permitted provided that the qualities or

functions of the material and components thereof are indicated. In such case, the

complete composition and manner of creation, if necessary, of the material shall be

provided in the description of the invention.

§ 43. Particulars of patent claims pertaining to biological material, including micro-

organism strain

If the biological material (e.g. gene, micro-organism strain) which is the subject of an

invention is deposited, the following shall be indicated in patent claims:

1) the name of the biological material (the name of the micro-organism strain in

Latin);

2) registration number of the deposit given by the international depositary authority;

3) the name of the international depositary authority;

4) the practical purpose of the use of the material.

Division 5

إستونيا

EE077

Regulation No. 221 of the Minister of Economic Affairs and Communications of December 28, 2004, on Requirements for Content and Format of Patent Applications, and Procedure for Filing of Patent Applications with Patent Office