Implementation of Convention on Grant of European Patents Act
Passed on 17.04.2002
RT 1
I 2002, 38, 233
Entry into force pursuant to § 21.
Amended by the following legislation
Passing Publication Entry into force
17.12.2003 RT I 2003, 88, 594 08.01.2004
10.03.2004 RT I 2004, 20, 141 01.05.2004
17.12.2008 RT I 2009, 4, 24 01.03.2009
§ 1. Scope of application of Act
This Act provides for the legal status of European patents and patent applications in
Estonia and regulates legal relationships arising from the accession of the Republic of
Estonia to the Convention on the Grant of European Patents (European Patent
Convention) which do not fall within the scope of application of the Patents Act, other
Acts or the specified Convention.
§ 2. Definitions
For the purposes of this Act:
1) ‘Convention’ means the Convention on the Grant of European Patents (European
Patent Convention), done at Munich on 5 October 1973;
2) ‘Organisation’ means the European Patent Organisation established in accordance
with the Convention;
3) ‘European Patent Office’ means a body of the Organisation carrying out the task
to grant European patents;
4) ‘Contracting State’ means a contracting state of the Convention;
5) ‘Estonian Patent Office’ means, within the meaning of the Convention, the central
industrial property office in Estonia;
6) ‘European patent’ means a patent granted by the European Patent Office in
accordance with the Convention;
7) ‘European patent application’ means an application for a European patent filed in
accordance with the Convention;
8) ‘applicant’ means a natural or legal person applying for a European patent;
9) ‘proprietor of a patent' means a proprietor of a European patent;
10) ‘national patent’ means a patent granted in accordance with the Patents Act;
11) ‘national patent application’ means an application for a national patent filed in
accordance with the Patents Act;
12) ‘utility model’ means an invention registered in accordance with the Utility
Models Act.
§ 3. Filing of European patent applications
(1) European patent applications may be filed with the European Patent Office or
with the Estonian Patent Office which forwards the applications to the European Patent
Office.
(2) A European divisional application shall be filed directly with the European Patent
Office. For the purposes of this Act, ‘European divisional application’ means a patent
application which is separate from a European patent application.
§ 4. Language of European patent application
A European patent application shall be filed in one of the official languages of the
European Patent Office (English, French, German) or, under the conditions provided for
in the Convention, in any other language.
[RT I 2009, 4, 24 - entered into force 01.03.2009]
§ 5. Legal status of European patent application
A European patent application in which the Republic of Estonia is indicated as the
designated state and the filing date of which has been determined according to the
Convention shall be legally equivalent to a national patent application filed on the same
date, regardless of the outcome of the proceedings. Where the European patent
application enjoys priority of earlier date as compared to the date of filing, such priority
shall also have effect in Estonia.
§ 6. Provisional protection based on European patent application
An invention contained in a published European patent application in which the Republic
of Estonia is indicated as the designated state shall be conferred the provisional
protection provided for in the Patents Act as from the date on which the applicant
forwards the translation of the patent claims of the published European patent application
into the Estonian language to a person who uses the invention in Estonia or the date on
which the Estonian Patent Office publishes the specified translation, if the translation has
been forwarded to the Estonian Patent Office and the state fee payable for the publication
of the translation has been paid.
§ 7. Legal status of European patent
(1) A European patent in which the Republic of Estonia is indicated as the designated
state shall be legally equivalent to a national patent as from the date of the mention of its
grant by the European Patent Office, provided that the proprietor of the patent submits
the translation of the specification of the European patent into the Estonian language to
the Estonian Patent Office within three months as from the date of mention of the grant,
and pays the state fee prescribed for the publication of the translation. The term for the
submission of the translation may be extended by two months, by paying a
supplementary state fee for the extension.
(2) Where the proprietor of a patent fails to submit the translation specified in
subsection (1) of this section by the due date or, upon submission of the translation, fails
to pay the state fee prescribed for the publication of the translation or, upon extension of
the term for submission of the translation, fails to pay the prescribed supplementary state
fee, the European patent shall be deemed to be void ab initio in Estonia.
(3) Where the Contracting States have agreed to replace the requirement of
submission of a translation of a patent specification with the requirement of submission
of a translation of patent claims, the proprietor of the patent shall submit the translation of
the patent claims pursuant to the procedure provided for in subsection (1) of this section.
In this case, the provisions of subsection (2) also apply.
(4) Where the Contracting States have agreed to waive the requirement of submission
of a translation of a patent specification or a translation of patent claims, the proprietor of
the patent shall, in case of an administrative dispute or court action relating to a European
patent, submit the translation of the patent specification into the Estonian language at his
or her own expense at the request of the administrative authority resolving the dispute, a
court or an assumed infringer of patent rights, within three months from the receipt of the
request. Upon failure to submit the translation, the court may declare the European patent
void ab initio in Estonia.
§ 8. Authentic text of European patent application and European patent specification
(1) The text of a European patent application or a European patent specification in the
language of the proceedings before the European Patent Office shall be the authentic text.
(2) Where the extent of legal protection of an invention conferred by a European
patent application or a European patent specification in the translation into the Estonian
language is narrower than that conferred by it in the language of the proceedings before
the European Patent Office, the Estonian translation is deemed to be the authentic text,
except for revocation proceedings regarding a patent in a court. Upon revocation
proceedings regarding a patent, a court may, for the purpose of the proceedings, request a
translation into the Estonian language which is authentic with the text in the language of
the proceedings before the European Patent Office.
§ 9. Correction of translation of European patent application or European patent
specification
(1) An applicant for or a proprietor of a patent may correct the translation of a
European patent application or a European patent specification at any time.
(2) The corrected translation shall take effect as from the date of communication to
the person using the invention in Estonia, or as from the date when the Estonian Patent
Office publishes a notice concerning publication of the corrected translation in its official
publication.
(3) Any person who in good faith is using or has made serious and effective
preparations for using an invention contained in a European patent application or in a
European patent, and the use of the invention would not constitute infringement of the
patent rights in the original translation may, after the corrected translation takes effect,
continue to use the invention in the same manner without payment.
(4) The right to use an invention which is provided for in subsection (3) of this
section may be transferred to another person only with an enterprise or a part thereof,
which is covered by the specified right of use.
§ 10. Maintenance of European patent
(1) For maintaining a European patent valid in Estonia, the proprietor of the patent
shall pay a state fee for maintenance for each year of validity.
(2) A state fee for maintenance shall be paid to the Estonian Patent Office as from the
year of validity following the publication of the mention of the grant of the European
patent by the European Patent Office.
(3) A state fee for maintenance shall be paid on the due date of payment or within six
months before the due date of payment. The last day of the calendar month during which
the year of validity begins is deemed to be the due date of payment. The date of filing a
European patent application is deemed to be the date when the year of validity begins.
(4) A state fee for maintenance may be paid also up to six months after the due date
of payment, by paying a supplementary state fee.
(5) If the period between the date on which the mention of the grant of a European
patent is published by the European Patent Office and the due date of payment of the
state fee for maintenance for the following year of validity is less than two months, the
proprietor of the patent shall be entitled, within two months as from the publication date
of the mention of the grant of the European patent, to pay the state fee for maintenance
for the following year of validity without the supplementary state fee specified in
subsection (4) of this section.
(6) Upon failure to pay the state fee for maintenance in the established amount within
the term provided for in subsections (3) or (4) of this section, the European patent shall
become invalid in Estonia as from the due date of payment specified in subsection (3).
[RT I 2004, 20, 141 - entered into force 01.05.2004]
§ 11. Conversion of European patent application into national patent application and
registration application of utility model
(1) An applicant may request the conversion of a European patent application in
which the Republic of Estonia is indicated as the designated state into a national patent
application or a registration application of a utility model, or both, where the European
patent application is deemed to be withdrawn for the reason that the European patent
application or the translation of the application into the language of the proceedings has
not arrived in the European Patent Office in due time.
(2) An applicant for or a proprietor of a patent may request the conversion of a
European patent application in which the Republic of Estonia is indicated as the
designated state into a registration application of a utility model if the European patent
application is deemed to be withdrawn by the European Patent Office or has been
withdrawn by the applicant or if the European Patent Office has rejected the European
patent application or revoked the European patent.
(3) A European patent application may not be converted into a registration
application of a utility model if the invention contained therein is not included among the
protected inventions provided for in § 6 of the Utility Models Act.
(4) A European patent application containing a group of inventions linked together as
to form a single general inventive concept may be converted into several independent
registration applications of a utility model.
(5) The Estonian Patent Office shall notify the applicant of the receipt of a request for
the conversion of a European patent application into a national patent application or a
registration application of a utility model and of the receipt of a copy of the European
patent application, forwarded by the European Patent Office, and establish a term of three
months for submission of a translation of the European patent application into the
Estonian language. At the request of the applicant, the date for submitting the translation
may be extended by two further months.
(6) Upon submission of the translation specified in subsection (5) of this section, the
applicant shall pay to the Estonian Patent Office the state fee for acceptance of the
European patent application for national proceedings as a national patent application or a
registration application of a utility model.
(7) Where an applicant fails to submit the translation specified in subsection (5) of
this section by the due date or fails to pay the state fee specified in subsection (6) of this
section upon submission of the translation or within one month after submission of the
translation, the request for conversion of a European patent application into a national
patent application or a registration application of a utility model is deemed to be
withdrawn.
§ 12. Prohibition on simultaneous protection
(1) Where a European patent in which the Republic of Estonia is indicated as the
designated state and a national patent having the same filing date or, where priority has
been claimed, the same priority date, have been granted to the same person or his or her
legal successor, the legal effect of the national patent shall cease to exist in the extent that
the invention is covered by the European patent:
1) after the expiry of the term for filing an opposition to the European patent,
provided that the opposition has not been filed to the European patent, or
2) as from the date on which the opposition procedure has resulted in a final decision
to maintain the European patent.
(2) Where, in the Estonian Patent Office, a national patent application is pending
which belongs to a person or his or her legal successor to whom a European patent has
been granted in which the Republic of Estonia is indicated as the designated state and
which has the same filing date or, where priority has been claimed, the same priority date,
the national patent application shall be refused in the extent that the invention is covered
by the European patent.
(3) The prohibition on simultaneous protection does not apply to utility models.
§ 13. Legal consequences of revocation or amendment of European patent
(1) Where, as a result of an opposition procedure before the European Patent Office,
a decision to revoke or amend is made regarding a European patent in which the Republic
of Estonia is indicated as the designated state, the decision is legally binding for the
Republic of Estonia.
(2) Where a European patent is amended, the proprietor of the patent shall, within
three months after the corresponding notice regarding amendment is published in the
official publication of the European Patent Office, submit to the Estonian Patent Office a
translation of the amended specification of the European patent into the Estonian
language and pay the state fee prescribed for the publication of the translation. The term
for the submission of the translation may be extended by two months, by paying a
supplementary state fee for the extension. Subsection 7 (2) of this Act applies to the
translation.
(3) The Estonian Patent Office publishes a notice concerning the revocation or
amendment of a European patent in its official publication.
§ 14. Suspension of national court proceedings
(1) If, simultaneously with national court proceedings in a matter relating to the
validity of a European patent or to the rights of the proprietor of a patent, the European
Patent Office has commenced proceedings regarding an opposition to the European
patent, the national court proceedings shall be suspended until publication of the notice
specified in subsection 13 (3) of this Act.
(2) National court proceedings shall be terminated upon revocation of a European
patent or where a European patent is considered void ab initio pursuant to § 7 or § 13 of
this Act.
§ 15. Representation of proprietor of patent
Upon performance of procedures during national proceedings related to the maintaining
of a European patent in Estonia, other than paying for the procedures relating to the
national proceedings and maintenance of a European patent, the proprietor of the patent
may be represented before the Estonian Patent Office solely by patent agents entered in
the state register of patent agents and specialising on the legal protection of inventions
and layout-designs of integrated circuits.
§ 16. Register of European patents valid in Estonia
(1) A register of European patents valid in Estonia (hereinafter register) shall be
maintained for European patents validated in Estonia in accordance with the provisions of
this Act.
(2) The register is legally equivalent to the register of patents provided for in the
Patents Act.
(3) Upon maintenance of the register, the provisions of the Patents Act apply together
with the specifications arising from this Act.
§ 17. Registry entries
The following are registry entries:
1) an entry regarding data characterising European patents in which the Republic of
Estonia is indicated as the designated state;
2) an entry regarding validation of a European patent in Estonia;
3) an entry regarding maintenance of a European patent;
4) an entry regarding amendment of a European patent;
5) an entry regarding revocation of a European patent;
6) an entry regarding the end of validity of a European patent;
7) other entries with legal significance to a European patent, including entries
regarding the transfer of rights, the registration of a licence or a pledge and
supplementary protection for medicinal products and plant protection products.
§ 18. State fees related to European patents
(1) State fees related to European patents are state fees for the procedures related to
national proceedings regarding European patent applications and European patents, and
for the maintenance of European patents, which are provided for in this Act. State fees
related to European patents shall be used for covering the costs connected with the
fulfilment of the tasks of the Estonian Patent Office arising from the Convention,
including the costs of national proceedings regarding European patent applications and
European patents and development work in information technology connected with the
proceedings.
(2) According to the Convention, the Estonian Patent Office shall transfer to the
European Patent Office a proportion, fixed by the Organisation, of all state fees for the
maintenance of European patents received by the Estonian Patent Office.
(3) The amount received from state fees related to European patents shall, after the
transfer of the proportion of the state fees for maintenance to the European Patent Office
pursuant to subsection (2) of this section, cover the costs of the implementation of the
Convention and of the national proceedings, and the total of the received amounts of the
last three years shall not exceed the total of the specified costs by more than 10 per cent.
(4) If, under the provisions of subsection (3) of this section, the total of the received
state fees for the last three years does not cover the costs or exceeds the total of costs of
the same period by more than 10 per cent, new rates for the state fees shall be established.
§ 19. Legal and administrative co-operation
Arising from the provisions of the Convention and in the accordance with the
implementing regulation to the Convention and § 2 of the Accession to the Convention
on the Grant of European Patents Act (RT II 2002, 10, 40), the Estonian Patent Office
shall communicate with the European Patent Office with regard to the information
exchange and receipt of requests for legal assistance arising from the implementation of
the Convention. In the cases specified in the Convention, courts and other Estonian
administrative agencies shall communicate with the European Patent Office through the
Estonian Patent Office.
§ 20. Application of Act
(1) The following shall be established by a regulation of the Minister of Economic
Affairs and Communications:
1) the procedure for filing European patent applications with the Estonian Patent
Office and forwarding the applications to the European Patent Office;
2) the procedure for the submission of translations specified in § 6, subsection 7 (1)
and subsection 13 (2) of this Act to the Estonian Patent Office and the procedure for
giving notice of their publication in the official publication of the Estonian Patent Office;
3) the procedure for converting European patent applications into national patent
applications and registration applications of a utility model.
(2) The procedure for the transfer of state fees related to European patents to the
account of the Estonian Patent Office and the procedure for the transfer of state fees for
the maintenance of European patents specified in subsection 18 (2) of this Act to the
European Patent Office shall be established by the Minister of Finance.
(3) In matters relating to national proceedings regarding European patents which are
not regulated by this Act or other provisions of national legislation, the Estonian Patent
Office, courts and any other Estonian administrative agencies shall act in accordance with
the decisions of the bodies of the Organisation on same or similar matters.
[RT I 2003, 88, 594 - entered into force 08.01.2004]
§ 21. Entry into force of Act
This Act enters into force on the day when the accession of the Republic of Estonia to the
Convention enters into force.
1 RT = Riigi Teataja = the State Gazette