WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/EST/P/1
11 September 2000
(00-3485)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
ESTONIA
The present document reproduces the text1 of the Patent Act, as notified by Estonia under
Article 63.2 of the Agreement (see document IP/N/1/EST/1).
Conseil des aspects des droits de propriétéintellectuelle qui touchent au commerce
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
ESTONIE
Le présent document contient le texte
1 de la Loi sur les brevets, notifiée par l'Estonie au titre
de l'article 63:2 de l'Accord (voir le document IP/N/1/EST/1).
Consejo de los Aspectos de los Derechos de PropiedadIntelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
ESTONIA
En el presente documento se reproduce el texto
1 de la Ley de Patentes, notificado por Estonia
en virtud del párrafo 2 del artículo 63 de l Acuerdo (véase el documento IP/N/1/EST/1).
                                                     
1 In English only. The text in the original language is available for consultation by interested
Delegations at the WTO Secretariat./En anglais seulemen t.  Les délégations intéressées peuvent consulter le
texte dans sa langue d'origine, au Secrétariat de l'OM C./En inglés solamente.  Las delegaciones interesadas
podrán consultar en la Secretaría de la OMC el texto en su idioma original.IP/N/1/EST/P/1
Page 2
PATENT ACT
Passed on 16 March 1994 (RT I 1994, 25, 406),
entered into force 23 May 1994.
Amended by the following Acts (date the Act was passed, publication in the Riigi Teataja
(State Gazette), date of entering into force):
26.06.1996 (RT I 1996, 49, 953) 26.07.1996
16.06.1998 (RT I 1998, 64/65, 1003) 25.07.1998
25.11.1998 (RT I 1998, 107, 1768) 21.12.1998
The amended section ends with a reference to the Act (date the Act was passed) enforcing the
current wording.
Chapter I
GENERAL PROVISIONS
§ 1. Purpose of the act
This Act regulates relationships arising in connection with legal protection of
patentable inventions (hereinafter patent protection ) in the Republic of Estonia.
§ 2. Legislation providi ng patent protection
Patent protection shall be provided for by this Act, ot her acts, and regulations based
on them and issued for their implementation by the Government of the Republic and the
Ministers.
[26.06.1996]
§ 3. Equality of rights and obligations of natural and legal persons of the
Republic of Estonia and of foreign states
Natural and legal persons of the Republic of Estonia and of  foreign states (hereinafter
persons ) shall exercise the rights and obligati ons prescribed by this Act on equal grounds
unless the legislation of the Republic of Estonia or international agreements ratified by the
Riigikogu provide otherwise.IP/N/1/EST/P/1
Page 3
§ 4. Implementation of international agreements
Where this Act is contrary to an international agreement, the provisions of the
international agreement shall apply.
Chapter II
PATENT PROTECTION AND PATENTABILITY
§ 5. Patent protection
1. (1) An invention shall be protected with  a patent if the invention meets the
conditions for patentability provided for in § 8 of this Act.
(2) An invention is granted patent protecti on by registering it in the State Register of
Patents pursuant to procedure prescribed by th is Act. Registration of the invention in the
State Register of Patent s shall be deemed to be the granting of patent.
[16.06.1998]
§ 6. Subject of invention
(1) The subject of an invention can be equipment, process, material, or
microorganism, or their combination, but also the use of known equipment, process, material
or microorganism for novel purposes.
(2) The following shall not be regarded as the subject of an invention:
1) discoveries, scientific theories and mathematical methods;
2) schemes, rules, instructions a nd methods for performing economic and
mental acts;
3) projects and schemes of struct ures, buildings and territories;
4) conventional signs;
5) algorithms and programs for computers;
6) design solutions;7) mere presentations of information;
8) plant or animal varieties.IP/N/1/EST/P/1
Page 4
§ 7. Inventions not patentable
The following shall not be protected with patents:
1) inventions contrary to ordre public  and morality;
2) methods for treatment of the human or animal body and diagnostic methods
practised on the human or animal body;
3) layout-designs of integrated circuit;
4) [repealed - 16.06.1998]
§ 71. Classification of inventions
Inventions are classified according to th e international patent  classification adopted
under the Strasbourg Agreement establishing the International Pa tent Classification.
[16.06.1998]
§ 8. Conditions for patentability
(1) An invention shall be deemed to be pate ntable if it is new, involves an inventive
step and is industrially applicable.
(2) An invention shall be deemed to be new if it is not anticipated by the prior art. The
state of the art shall be held to comprise everything made available to the public by means of
a written or oral description, by use, or in an y other way prior to the date of filing of the
patent application or, if priority is claimed, prior to the priority date. When determining
novelty, the contents of patent applications f iled earlier with the Pate nt Office and of utility
model registration applicati ons filed pursuant to the Utility Model Act (RT I 1994, 25, 407;
35, statement; 1996, 49, 953) shall be taken into a ccount according to their filing date or, if
priority is claimed, the priority date, provi ded that the patent a pplications have been
published pursuant to § 24 of this Act and the utility model registration applications have
been published pursuant to § 33 of the Utility Model Act.
(3) When determining the state of the art, the information disclosed within 12 months
prior to the filing date of the patent application or, if priority is claimed, prior to the prioritydate by a person having the right to the patent  pursuant to § 12 of this Act, or by another
person having obtained information from the said person according to his will or against it,
shall not be taken into account.IP/N/1/EST/P/1
Page 5
(4) An invention shall be deemed to involve an inventive step if, having regard to the
state of the art, it is not obvious to a person skilled in the art.
(5) An invention shall be considered industr ially applicable if it can be made or used
in economy.
[16.06.1998]
§ 9. Unity of invention
(1) Each patent applicati on shall relate to one inve ntion only or to a group of
invention so linked as to form a single general inventive concept.
(2) Where the patent application contai ns several independe nt inventions, the
applicant may, upon suggestion from the Patent Office or on his own initiative, divide the
application into a number of i ndependent applications  and file them pursuant to §§ 19 and 20
of this Act within a term prescribed by the Patent Office.
§ 10. Extent of patent pr otection and patent claims
(1) The extent of patent prot ection shall be defined by the terms of the patent claims.
The description of the invention, the drawing a nd other illustrative material shall be used to
interpret the patent claims.
(2) The claims shall constitute a clear and concise definition of the subject matter of
the invention for which patent protection is s ought. The subject matter of the invention shall
be presented in the patent claims as a set of  essential features of the invention. The patent
claims consist of one claim or several claims.
§ 11. Priority
(1) Priority shall be the privilege of a pe rson, having first filed a patent application or
a utility model registration application, to appl y for patent protection for an invention. From
the filing date of the first patent application or utility model registra tion application, the said
person shall have privile ge over another person who files a patent application for the same
invention later. The date of filing with the Patent Office of the first patent application or
utility model registration application is deemed to be the priority date.IP/N/1/EST/P/1
Page 6
(2) Where the patent application has been filed with the Patent Office within 12
months after the filing date of the first patent application or utility model registration
application, priority can be establishe d, upon claiming it, in the following cases:
1) according to the date of filing the fi rst patent applica tion or utility model
registration application in any state party to the Paris Convention for the Protection of
Industrial Property (RT II 1994, 4/5, 19) or to the World Trade Organisation;
2) according to the date of filing the fi rst patent applica tion or utility model
registration application in a state not party to the Paris Convention or to the World
Trade Organisation provided that the said state guarantees the same conditions for the
first patent application or utility model registration appli cation filed in the Republic of
Estonia.
(3) If priority is claimed, priority may be established for a patent  application, filed on
the basis of corrections and supplementations to the previous patent application changing the
subject matter of the invention, according to th e date of filing of the said corrections and
supplementations with the Patent Office.
(4) If priority is claimed, priority may be  established for a pate nt application, having
been divided from the previous patent applica tion, according to the priority date of the
previous patent application.
(5) If priority is claimed, priority may be established for a patent application filed
with the Patent Office within 12 months by the same applicant in respect of the same
invention according to the filing date of the previous patent appli cation or utility model
registration application, provided that the pr evious patent applic ation or utility model
registration application has not been published and it has not served as a basis for claiming
priority for any other patent application or utility model registration application. Where the
previous patent applica tion is pending, it shall be  considered withdrawn.
(6) If priority is claimed, priority may be established for a patent application
according to the filing dates of several earlie r filed patent applica tions or utility model
registration applications.
(7) The applicant must claim priority in  the patent application. The documents
certifying the claim for priority shall be presented in the patent application or within four
months from the filing date of the patent application.
[16.06.1998IP/N/1/EST/P/1
Page 7
Chapter III
RIGHT TO APPLY FOR PATENT
§ 12. Right to patent
(1) The right to apply for a patent and to become a patentee shall belong to the author
of the invention and to his successor in title.
(2) Where the invention has been made in the course of fulfilling a contractual or
work assignment, the right to apply for a patent and to become a patentee shall belong to the
author or to another person in pursuance with  the contract or cont ract of employment.
§ 13. Author of invention
(1) The author of an invention (hereinafter author ) shall be the natural person who,
through his inventive activities, has made the invention.
(2) Where the invention has been made through combined inventive activities of
several natural persons, they  shall enjoy co-authorship.
(3) Upon co-authorship the authors shall en joy all the rights conferred by authorship
together, if they have not concluded an agreement in writing regulating otherwise.
(4) Where two or more persons apply for a patent for the same invention
independently of each other and different natu ral persons have been designated as authors,
that natural person shall be considered as the author who has been designated as the author in
an earlier filed patent application or in a patent application with an earlier priority date, if the
said application has not withdr awn or if it has not been rejected by the Patent Office.
(5) Upon patent applications for the same invention with the sa me filing date, or upon
patent applications with the same priority date, all natural persons indicated as authors in the
said patent applications shall be considered as authors upon granting the patent.
(6) Authorship is inalienable and unspecified in term.
(7) The author has the right to the name of the author and he may:
1) demand the disclosure of  his name as the author;
2) prohibit the disclosure of  his name as the author;
3) cancel the prohibition of the disclo sure of his name at any moment.
(8) The author shall be entitled to a fair income from the income received from the
invention.
(9) The author's economic rights  are alienable and inheritable.IP/N/1/EST/P/1
Page 8
Chapter IV
EXCLUSIVE RIGHT OF PATENTEE
§ 14. Patentee
(1) Patentee shall be the person enjoying full legal control (exclusive right) over the
patent. The patentee shall have the right to po ssess, use and dispose the patent as well as to
demand that all other persons avoid the infringement of those rights and eliminate the results
of the infringement.
(2) The person shall be considered as a pa tentee whose name has last been entered
into the State Register of Patents as the patentee.
(3) The exclusive right of a patentee may be limited solely by this Act or by the rights
of other persons.
§ 15. Exclusive right of patentee
(1) The exclusive right of the patentee means that during the term of the patent a third
party shall not be allowed, without the consent of the patentee, to:
1) possess, use or dispose the patent;
2) make, use, distribute, sell or offer for sale patented products, or to obtain
(including the import) those pr oducts for the aforesaid purposes;
3) make, sell or offer for sale essential co mponents of a patented product or to
obtain and to export them with the purpos e of making or assembling the product,
except where components ar e other staple products;
4) use a patented process or to offer it to a third party;
5) use, distribute, sell or offer for sa le a product made according to a patented
process, or to obtain (including the impor t) those products for the aforesaid purposes.
(2) If the process of making a product  has been patented, the making, use,
distribution, selling, offering for sale or obtaining of a similar product for the
aforesaid purposes without the consent of the patentee shall be deemed to be the
infringement of the exclusive right of the patentee, unless it is proved that the similar
product has been made accordin g to a different process.
[16.06.1998]IP/N/1/EST/P/1
Page 9
§ 16. Proceedings non-infringing exclusive right of patentee
The following proceedings shall not be cons idered as infringement of the exclusive
right of a patentee:
1) the use of a patented invention on board (in the body, machinery, tackle,
gear and in other accessories) of vessels of other states if those vessels sojourn in the
territorial waters of the Republic of Estonia temporarily or accidentally, provided that
the invention is used exclusively for the needs of the vessel;
2) the use of a patented invention in  the construction of aircraft and land
vehicles of other states or in their additi onal devices, or in operating the vehicles and
the devices, if those vehicles sojourn in  the Republic of Estonia temporarily or
accidentally;
3) the use of a patented invention in  experiments concerning the invention
itself;
4) the extemporaneous preparation fo r individual cases in a pharmacy of a
medicine containing a patent ed invention in accordance with a medical prescription,
and its use;
5) the private and non-commercial use of a patented invention provided that it
does not infringe the interests of a patentee;
6) the use, distribution, selling or offeri ng for sale of a patented invention by
the patentee or with his consent.
§ 17. Right of prior use
(1) Any person who, before the filing of a pa tent application for the same invention by
another person, industrially used the inventi on in the Republic of Estonia in good faith
independently of the applicant,  may continue to use the invention, retaining the general
character of the use. The use shall be consid ered as done in good faith unless the user knew
or should have known that a pate nt application was intended to  be filed for the invention.
(2) The right of prior use shall also belong to any person having in good faith made
significant arrangements for the industrial use of the invention in the Republic of Estonia.
(3) The right of prior use can only be transf erred to another person together with the
enterprise where the right of prior use has emerged or where it was intended to be used.IP/N/1/EST/P/1
Page 10
§ 18. Provisional protection
(1) The invention shall be given provisional protection from the filing date of the
application until the date of publication of an announcement a bout the grant of the patent.
(2) Any person starting or continuing to us e the invention after the application has
been published pursuant to § 24 of this Act,  shall be deemed, upon the publication of an
announcement about the grant of the patent, to be an infringer of the patentee's exclusive right
if he does not enjoy the right of pr ior use pursuant to § 17 of this Act.
(3) Any person who started to use the invention during the period between the filing
date of the application and the publication date of the applica tion shall not be deemed to be
an infringer of the patentee's exclusive righ t unless he knew or should have known that an
application for the invention had been filed, a nd unless the applicant sent him a notification in
writing about the filing of the app lication before the publication of  the said application by the
Patent Office. A person whom the applicant has notified of filing an application shall be
deemed, after the date of publication of an a nnouncement about the grant of the patent, to be
an infringer of the patentee's exclusive right from the date of receiving the notification about
the filing of an application if he does not enjoy the right of prior use pursuant to § 17 of this
Act.
(4) The extent of provisional protection sha ll be established by the contents of the
patent claims contained in th e published application. After the grant of the patent the extent
of provisional protection shall be adjusted to the patent  claims of the granted patent.
Chapter V
PATENT APPLICATION AND ITS EXAMINATION
§ 19. Patent application
(1) The patent application shall contain the following documents:
1) the request for the grant of a pate nt, containing information about the
applicant and the author, and the title of the invention;
2) the description of the invention disclosing the subject matter of the
invention in a manner sufficiently clear and complete that it may be carried out by a
person skilled in the art;
3) the patent claims contai ning one or more claims;
4) the drawings or other illustrative materials referred to in the description;IP/N/1/EST/P/1
Page 11
5) the document certifying the deposit of a microorganism if the subject of the
invention is a microorganism  or if the invention presumes the use of a new
microorganism;
6) the abstract of the subj ect matter of the invention;
7) the document certifying the payment of the state fee;
8) the authorisation if the patent application is filed through an Estonian patent
attorney.
(2) Formal and substantive requirements fo r the documents contained in the patent
application shall be established by the Govern ment of the Republic or by a Minister on the
authorisation of the Gove rnment of the Republic.
(3) The patent application sha ll be filed in the Estonian language, except the abstract
of the subject matter of the invention that shall be filed in the Estonian and the English
languages.
[16.06.1998]
§ 20. Filing of patent application
(1) The patent application shall be  filed with the Patent Office.
(2) The applicant may independently file a patent application and arrange matters
connected with the applying for and maintain ing of a patent, or it may be done through an
Estonian patent attorney residing in and c itizen of the Republic of Estonia (hereinafter patent
attorney ). The authority of the patent attorney shall be established in the authorisation granted
by the applicant.
(3) Persons residing or located outside th e Republic of Estonia shall arrange matters
connected with the applying for and maintainin g of a patent in the Republic of Estonia only
through patent attorneys, except filing a patent  application. The applicant shall authorise the
patent attorney upon filing the pa tent application or within three months from the date of
receipt of the patent application at the Patent Office.
(4) The state fee shall be paid upon filing th e patent application or within one month
from the date of receipt of the application at the Patent Office.
(5) Upon more than 10 patent claims, a supplem entary state fee shall be paid for every
additional claim commencing with the eleventh.IP/N/1/EST/P/1
Page 12
(6) The procedure for filing patent application is established by the Government of the
Republic or by a Minister on the authoris ation of the Government of the Republic.
[16.06.1998]
§ 21. Examination on filing
(1) After the receipt of the patent appli cation, the Patent Office shall examine the
existence of documents prescribed by § 19 of this Act.
(2) The Patent Office shall refuse to proceed with the examination on filing and return
the patent application  in the following cases:
1) the request for the grant of a patent  is missing, or it does not designate the
applicant, or the request for the grant of a pa tent is not filed in the Estonian language;
2) the description is missing;
3) the description is not in the Estoni an language and the translation of the
description into the Estonian language is missing, and it is not filed within three
months from the date of receipt of the patent application at  the Patent Office;
4) the drawing or other illustrative material referred to in the description is
missing and it is not filed within three months from the date of receipt of the
application at the Patent Office;
5) the document certifying the payment of the state fee is missing and it is not
filed within one month from the date of receipt of the patent application at the Patent
Office;
6) the requirements prescribed by subsection 20(3) of this Act are not
satisfied.
(3) Upon returning the patent applica tion the state fee shall be refunded.
- (4) The Patent Office shall accord a number to a patent application accepted
for processing and notify the applicant in writing of the filing date and the number of
the patent application.
§ 211. Files of patent applications, access to and release of information therefrom
(1) The files of patent applications is a structured body of data concerning patent
application documents accepted for processing  and information on the examination thereof.
Information on a patent application and on the ex amination thereof is stored in the files until
the patent application dossier is closed.IP/N/1/EST/P/1
Page 13
(2) Access to the files and release of information from the files of patent applications
is generally prohibited. It is permitted to release only the following information: the title of
the invention, the index of the International Patent Classification, th e number of the patent
application, the filing date of th e patent application, the priority  data, the name and address of
the applicant and the name of the representative of the applicant.
(3) Access to a patent application dossier shall be granted to the applicant, or to the
person having the written consent of the applicant or notified by the applicant in writing of
the filing of the patent application and of the applicant’s right to apply for the patent and to
become the patentee, to the competent official s of state agencies which have supervisory
authority and the courts.
(4) After the publication of the patent a pplication, anyone may have access to the
patent application dossier.
(5) No information on the author is released  if the author has prohibited the disclosure
of his name.
(6) Information from the files of patent app lications is released upon payment with the
exception of release of information to state agen cies which have supervisory authority or to a
court. A state fee shall be paid for the release of information.
(7) The files of patent applications shall be established by the Government of the
Republic or by a Minister on the authoris ation of the Government of the Republic.
[16.06.1998]
§ 22. Examination as to formal re quirements of patent application
(1) The Patent Office shall examine:
1) the form and substance of  the application documents;
2) the subject of the invention;
3) the unity of the invention.
(2) If priority is claimed, the Pate nt Office shall examine the corresponding
documents certifying it.
(3) Upon deficiencies regarding the form and substance of application documents or
other factors preventing the examination of th e patent application, th e Patent Office shall
notify the applicant of this in writing and shall prescribe a term for removing the deficiencies
or for providing explanations.IP/N/1/EST/P/1
Page 14
(4) The Patent Office shall determine a priority date for the patent application.
(5) The Patent Office shall commence the substantive examination provided that the
patent application meets the provisi ons of §§ 6, 7, 9 and 19 of this Act.
(6) Where the subject of the invention does not comply with the provisions of §§ 6 or
7 of this Act, or where the applicant fails to remove the deficiencies regarding the form and
substance of application documents or to provide  explanations, the Patent Office shall make a
decision on rejecting the application. The Patent  Office shall notify the applicant in writing of
the decision on rejecting the patent application.
§ 23. Substantive examination
(1) In the course of the substantive examination the Patent Office shall examine the
compliance of the invention with the conditions for patentability in pursuance with § 8 of this
Act.
(2) The applicant may, pursuant to Article  15 (5) of the Patent Cooperation Treaty
concluded at Washington on June 19, 1970 (R T II 1994, 6/7, 21), file a request for
international-type sear ch. Upon filing the request the appli cant shall pay the state fee and the
payment for international-type search.
(3) The Patent Office may demand that the applicant provide oral or written
explanations and correct or supplement the claims, the description, the drawing or other
illustrative material and the abstract of the s ubject matter of the invention. The Patent Office
shall prescribe a term of two to six months  for providing explanations or presenting
corrections and supplementations.
(4) The Patent Office shall be entitled to demand that the applicant furnish copies of
decisions made by foreign patent offices re garding his corresponding applications, it shall
also be entitled to exchange information regarding the patent application with patent offices
of other states.
(5) After completing the substantive examina tion of the patent a pplication, the Patent
Office shall make a decision on granting a patent or it shall refuse to grant a patent, making a
decision on rejecting the patent application, and it shall notify th e applicant of this in writing.IP/N/1/EST/P/1
Page 15
§ 24. Publication of patent application
(1) The publication of a patent application within the meaning of this Act is the
publication of the documents of the patent app lication referred to in clauses 2, 3, 4 and 6 of
subsection 19(1) of this Act.
(2) The Patent Office shall publish the patent  application after the lapse of 18 months
from the filing date of the patent application or, if priority is claimed, from the priority date.
(3) Upon request from the applicant, the pate nt application shall be published prior to
the end of the term referred to in subsection 2 of this Section.
(4) The application shall not be published in the following cases:
1) the application has been withdraw n or is deemed to be withdrawn;
2) the application has been rejected;
3) the examination procedure of th e application has been suspended.
(5) The applicant shall be notified in wr iting of the publication of the application.
(6) The Patent Office shall publish an a nnouncement of the publication of the patent
application in its Official Gazette.
(7) The date of publication of the announcem ent referred to in subsection 6 of this
Section shall be considered to be the date of publication of the application.
(8) The procedure for publishing patent a pplications shall be established by the
Government of the Republic or by a Minister on the authorisation of the Government of the
Republic.
[16.06.1998]
§ 25. Corrections and supplementat ions to patent application
(1) The applicant may correct and supplement the patent application in the course of
the examination procedure, without changing th e subject matter of the invention as disclosed
in the patent application at the filing date of the application.
(2) Corrections and supplementations change  the subject matter of the invention if
they contain features of the invention missing in the description, in the drawing or in other
illustrative material at the filing date of the patent application.IP/N/1/EST/P/1
Page 16
(3) Where the corrections and supplementa tions change the subject matter of the
invention, the Patent Office shall make a deci sion on rejecting them, notifying the applicant
of this in writing.
(4) After the publication of the patent application pursuant to § 24 of this Act the
applicant cannot make corrections and supplem entations broadening the extent of patent
protection.
(5) Where the Patent Office makes a d ecision pursuant to subsection 23(5), the
applicant may correct and supplement the applica tion within two months from the date of the
said decision, paying the state fee. The stat e fee shall not be paid when the corrections
involve obvious mathematical or clerical errors. The Patent O ffice shall be entitled to make a
new decision on the grounds of the corrections and supplementations.
(6) In the course of the examination procedure the Patent Office may solely make
editorial corrections in the a pplication documents without consulting with the applicant. The
abstract of the subject matter of invention may be changed without consulting with the
applicant.
§ 26. Withdrawal of patent application
(1) The applicant may file a request for withdrawal of a patent application and
withdraw a patent application under examin ation. Application doc uments shall not be
returned.
(2) Where several persons apply for a patent , the request for withdrawal of the patent
application may be filed with th e consent of all those persons.
(3) The Patent Office shall consider the application withdrawn in the following cases:
1) the applicant has failed, during the ex amination of forma lities, to respond to
the invitation of the Patent Office rega rding the providing of explanations or
correcting or supplementing application doc uments within three months from the
prescribed term pursuant to subsection 22(3) of this Act.
2) the applicant has failed, during the substantive examination, to respond to
the invitation of the Patent Office rega rding the providing of explanations or
correcting or supplementing application doc uments within three months from the
prescribed term pursuant to subsection 23(3) of this Act;IP/N/1/EST/P/1
Page 17
3) the applicant has failed to pay the prescribed state fee by the prescribed
term;
4) in cases provided for in subsection 11(5) of this Act.
§ 27. Suspension of e xamination procedure
(1) Where the applicant fails to respond by the prescribed term during the
examination pursuant to subsection 22(2) of this Act, the Patent Office shall suspend the
examination procedure. The examination procedure shall be resumed if the applicant, within
three months from the said term, provide s the response and pays the state fee.
(2) If  there is a lack of unity of inventi on in the application, the Patent Office shall
suspend the examination procedure until the term prescribed for the applicant for filing
independent patent applications pursuant to s ubsection 9(2) of this Act.
(3) Where the applicant has filed, pursuant to subsection 23(2) of this Act, a request
for international-type search, the Patent Office may suspend the examination procedure until
the receipt of the said search report at the Patent Office.
(4) The applicant shall be notified in writing of the suspension of examination
procedure.
§ 28. Termination of e xamination procedure
(1) The Patent Office shall terminate the examination procedure of an application
being withdrawn or deemed to be withdrawn.
(2) The applicant shall be notified in writing of the termination of examination
procedure.
§ 29. Resuming of examination procedure
(1) The applicant may require the resuming of the examination procedure where the
Patent Office has terminated the examination procedure, deeming the application to be
withdrawn pursuant to clauses 1 or 2 of subs ection 26(3) of this Act, provided that the
transactions cited in the said provisions failed due to force majeure or other impediment
irrespective of the applicant and the patent attorney representing him.IP/N/1/EST/P/1
Page 18
(2) The Patent Office shall resume the examination procedure provided that the
applicant proves the existence of the impediment and performs the prescribed transactions
within two months after the removal of the impediment, paying the state fee.
(3) The request for resuming examination procedure may be submitted within one
year from the term of the failed transaction.
(4) The provisions of subsections 1, 2 and 3 of  this Section shall not extend to cover §
42 of this Act.
§ 30. Appealing against decisions of Patent  Office during examination procedure
(1) The applicant may appeal against the decision of the Patent Office at the Industrial
Property Board of Appeal (hereinafter Board of Appeal ) formed on the basis of the Republic
of Estonia Trademarks Act (RT 1992, 35, 459; RT I 1998, 15, 231), or in court.
(2) The applicant may file an appeal with the Board of Appeal within two months
from the date of making the decision, paying the state fee.
(3) The Board of Appeal shall be entitled to:
1) dismiss the appeal and retain the decision of the Patent Office unchanged;
2) change or revoke the decision of  the Patent Office and make a new
decision;
3) revoke the decision of the Patent O ffice and enjoin the Patent Office to
continue the examination procedure.
(4) Upon the granting of the appeal the state fee shall be refunded.
(5) Upon partial granting of the appeal the Board of Appeal shall prescribe the amount
of the state fee to be refunded.
[16.06.1998]
§ 31. Cessation of e xamination procedure
The examination procedure shall cease with granting a patent or with rejecting the
patent application.
[16.06.1998]IP/N/1/EST/P/1
Page 19
Chapter VI
INTERNATIONAL APPLICATION
§ 32. Definition of international application
(1) International application means a pa tent application f iled under the Patent
Cooperation Treaty done at Washington on J une 19, 1970 (RT II 1994, 6/7, 21) (hereinafter
Patent Cooperation Treaty ).
2. (2) The Patent Office shall act as a receiving office, a designated office and an
elected office as defined in Article  2 of the Patent Cooperation Treaty.
(3) The Patent Office shall act as a receiving office for the international applications
of citizens or residents of  the Republic of Estonia.
(4) An international applica tion shall be drawn up pursuan t to the Patent Cooperation
Treaty and its Implementing Regulations and Administrative Instructions, and it shall be filed
with the Patent Office as the receiving office in the English or German language, paying the
state fee and the payments prescrib ed by the Patent Cooperation Treaty.
(5) The Patent Office shall act as a designat ed office or an elected office for those
international applications in which the Republic  of Estonia has been designated or elected.
(6) An international application in which the Republic of Estonia is designated shall
be deemed to be equivalent to  patent applications  filed pursuant to §§ 19 and 20 of this Act.
(7) An international application in which the Republic of Estonia is designated shall
be deemed to have been filed with the Patent Office at the international filing date accorded
by the receiving office under the Patent Cooperation Treaty.
(8) The Patent Office shall carry out examination of those international patent
applications in which the Republic of Estonia has been designated.
(9) The procedure for payments prescribed  by the Patent Cooperation Treaty shall be
established by the Government of the Republic or by a Minister on the authorisation of the
Government of the Republic.
(10) The procedure for filing international applications with the Patent Office shall be
established by the Government of the Republic or by a Minister on the authorisation of the
Government of the Republic.
[16.06.1998]IP/N/1/EST/P/1
Page 20
§ 33. Specifications of internat ional applicat ion processing
(1) For commencing the examination of an international appli cation, the applicant
shall, within 20 months from the priority date, f ile with the Patent Office a translation of the
international application into the Estonian language and pay the state fee.
(2) Where the applicant has, within 19 months from the priority date, elected the
Republic of Estonia to use the report of in ternational preliminary examination, he shall,
within 30 months from the priority date, file the translation referred to in subsection 1 of this
Section and pay the state fee.
(3) In justified cases the applicant may be given an extension of two months for filing
a translation of an international application referred to in subsection 1 of this Section,
provided that upon the filing of the transla tion he pays a supplementary state fee.
(4) The applicant may, within 6 months from the date of filing the translation of an
international application, supplement and correct  the claims, descrip tion, drawing and other
illustrative material, provided that the supplem entations and corrections do not change the
subject matter of the invention as disclosed in the international application on its filing date.
(5) Where the applicant should be represen ted by a patent attorney pursuant to
subsection 20(3) of this Act, the applicant must  authorise the attorney before the expiration of
6 months from the term provided for in  subsection 1 or 2 of this Section.
(6) An international application shall lose  its effect provided for in subsection 32(6)
and (7) of this Act in the following cases:
1) the provisions of clauses i and ii of Article 24(1) of th e Patent Cooperation
Treaty are applied;
2) the applicant has failed to comply with the provisions of subsection 1, 2 or
3 of this Section;
3) the applicant withdraws the request for international preliminary
examination or the demand for electing the Republic of Estonia after the expiration of
the term provided for in subsection 1 of this Section;
4) the applicant has failed to comply with the requirements of subsection 5 of
this Section.
(7) Where the applicant has elected the Republic of Estonia to use the international
preliminary examination report, the Patent Office shall not be entitled to request that theIP/N/1/EST/P/1
Page 21
applicant furnish examination decisions of pa tent offices of states designated in the
international application.
(8) Where part of the international applica tion has not been subject to international
preliminary examination or international search for the reason of lack of the unity ofinvention in the said applica tion, and the applicant has failed to pay the state fee prescribed
by the Patent Cooperation Treaty for add itional international search or preliminary
examination, the Patent Offi ce shall examine the legitimacy of the decision of the
International Searching Authority or the International Preliminary Examination Authority on
excluding a part of the international application from the international search or international
preliminary examination. If the decision proves  correct, the parts infringing the unity of
invention shall be deemed to be withdrawn fr om the international application. In the opposite
case the Patent Office shall proceed with the examination of the international patent
application in full extent. The Patent Office shall notify the applicant of its decision in
writing.
(9) The Patent Office shall apply the provisions  of subsection 9(2) of this Act to the
parts of the international application infringing the unity of invention if the applicant, within
two months from the date of the decision of th e Patent Office referred to in subsection 8 of
this Section, submits a corresponding request.
(10) Where the receiving office has refused to recognise the international filing date
or has declared that the international application is deemed to be withdrawn, or where the
International Bureau of the World Inte llectual Property Organization (hereinafter
International Bureau ) has made a decision under Article 12(3) of the Patent Cooperation
Treaty, or where the receiving office has declared that the designation of the Republic of
Estonia is deemed to be withdrawn, the applicant shall be entitled to, within two months from
receiving the corresponding notification or decision, request the examination of the
international application in the Republic of Estonia, and request that the International Bureau
transmit a copy of the international application to the Patent Office. The applicant shall file
with the Patent Office the translation of the international application and in prescribed cases
information regarding the patent attorney and pay the prescribed state fee within the term
prescribed by the Patent Office. The Patent Office shall examine the legitimacy of the
decision of the receiving office or the Interna tional Bureau and notify the applicant of theIP/N/1/EST/P/1
Page 22
findings. Where the decision of the receiving office or the International Bureau is not
legitimate, the patent application shall be treated as an international application.
(11) Where the examination of an international application has been terminated for
the reason of the applicant failing, due to force majeure or other impediment irrespective ofhim, to perform, by the prescribed term, any transactions prescribed by the receiving office,
the International Searching Authority, the International Preliminary Examination Authority or
the International Bureau, the Patent Office shall resume the examination of the international
application in the Republic of Estonia, provided that the applicant complies with the
provisions of subsection 29( 2) and (3) of this Act.
§ 33
1. Files concerning international applications, access to and release of
information therefrom
(1) The files concerning international applications and examination of international
applications is a structured body of data concerning internationa l patent application
documents filed with the Patent Office as a recei ving office pursuant to Article 2 of the Patent
Cooperation Treaty, and information on the examination thereof. Information on an
international application and on the examination thereof is stored in the files until the
international application examination is closed.
(2) Access to and release of information from the files concerning international
applications and examination of international patent applications is prohibited until the
publication of the international application pursuant to Article  21 of the Patent Cooperation
Treaty.
(3) After the publication of an international application pursuant to Article 21 of the
Patent Cooperation Treaty, anyone  may have access to the inte rnational patent  application
examination dossier.
(4) Information from the files concerning international patent applications and
examination of international pa tent applications is released upon payment with the exception
of release of information to state agencies with supervisory authority or to a court. A state fee
shall be paid for the release of information.
(5) The files concerning international applications and examination of international
applications are established by the Govern ment of the Republic or a Minister on the
authorisation of the Gove rnment of the Republic. (16.06.1998)IP/N/1/EST/P/1
Page 23
Chapter VII
STATE REGISTER OF PATENTS AND GRANT OF PATENT
§ 34. State Register of Patents
(1) The State Register of Patents (hereinafter Register ) is maintained for inventions
that have been deemed to meet the conditions for patentability.
(2) The Patent Office shall be the chief a nd authorised processor of the Register.
(3) The registry secretary shall arrange maintenance of the Register and make entries
in the Register.
(4) The Register shall be maintained as an entry book on paper carrier. The Register
may be maintained on computer and the entries stored as print-outs.
(5) The language of the Register is Est onian. Foreign language documents shall be
submitted to the authorised processor together with an Estonian translation.
(6) The Register consists of the entr y book, the patent application examination
dossiers and the registry dossiers. The entry book consists of registry cards that are bound
into the volumes of the entry book.
(7) The expenditure for maintenance of the Register shall be covered from the State
Budget through the budget of the Patent Office.
(8) The statutes for maintenance of the Register shall be approved by the Government
of the Republic.
[16.06.1998]
§ 35. Registration of invention in Register
(1) An invention shall be registered in the Register by entering the data of the
registration of invention (hereinafter registration ) in the entry book on the basis of the
decision made by the Patent Office, the Board of Appeal or the court to grant a patent.
(2) The registration data are the following:
1) the number of the registration;
2) the date of registration;
3) the title of the invention;
4) the index of the Interna tional Patent Classification;
5) the given name and surname and ad dress of the author of invention;IP/N/1/EST/P/1
Page 24
6) the given name and surname, residen tial address or address of the seat of
enterprise and zip code of the patentee; wh ere the patentee is a legal person, the name,
address and zip code of th e seat of the patentee;
7) the date of the beginning of the term of registration;8) the date of the end of  the term of registration;
9) where a patent attorney has been appointed, the given name and surname of
the attorney;
10) where the common representative is a natural person, the given name and
surname of the natural person; where the common representative is a legal person, the
name of the legal person;
11) the number of the patent application;
12) the filing date of the patent application;
13) priority data (priority date , state, number of application);
14) the number and filing date of an earlier patent application from which the
patent application has been divided up;
15) the number and filing date of an earlier, continued patent application;
16) the filing date of corrections and supplementations to the earlier patent
application changing the subject of the invention;
17) the data of the international application;
18) the publication date of  the patent application;
19) the date of the disclosure of inform ation referred to in subsection 8(3) of
this Act;
20) the data of the deposit of micro-organism;
21) the data of the payment of the annua l state fee paid for the maintaining of
the patent application;
22) the patent claims;
23) the description of the invention;
24) the drawing or other illustrative material;
(3) The patent claim, the description of  the invention and the drawing or other
illustrative material shall be kept in the registry dossier.
(4) The applicant mentioned in the decision on granting a patent shall be entered in
the Register as a patentee.IP/N/1/EST/P/1
Page 25
(5) The registrations are numbered in the orde r in which the inventions are registered,
starting from number 02932 as a continuation of the Registry numeration which was
discontinued in 1940.
(6) For registering the invention in the Register, the applicant shall pay the state fee
within 3 months from the date of making th e decision referred to in subsection 1 of this
Section. Where the state fee has not been pa id within the specified term, the patent
application shall be d eemed to be withdrawn.
(7) The registration data shall be entered in the Register within 3 months from the
date of paying the state fee specifi ed in subsection 3 of this Section.
(8) The Patent Office shall publish in its Official Gazette an announcement about the
grant of the patent. The date of the publica tion of the announcement about the grant of the
patent shall be entered in the entry book.
(9) The registration shall become valid on the date of the publication of the
announcement about the grant of the patent.
[16.06.1998]
§ 351. Access to and release of data from Register
(1) The Register shall be public. Everyone shall have the right to examine the patent
application examination dossier, the registry dossier and the entry book and to obtain copies
thereof.
(2) Where the author has prohibited the disc losure of his name, no information on the
author shall be released from the Register.
 (3) Written information from the Register shall be released upon payment with the
exception of release of information to state agencies with supervisory authority or to a court.
A state fee shall be paid for the release of information.
[16.06.1998]
§ 352. Maintenance and storage of Register
(1) The Register shall be maintained in the offices of the Patent Office, the removal of
the Register from the offices shall be prohibited.
(2) The Register shall be permanently stored in the Patent Office archives.
[16.06.1998]IP/N/1/EST/P/1
Page 26
§ 353. Liability of chief processor
3. Damage arising from the unlawful actions of the chief processor shall be
compensated for by the State.
[16.06.1998]
§ 354. Patent specification
(1) The patent specification shall contain th e description of the invention, the patent
claims, the drawing and other illustrative materials, the abstract of the subject matter of the
invention and the following information:
1) the name of the agency having  issued the patent specification;
2) the title and number of the document;
3) the title of the invention;
4) the index of the Interna tional Patent Classification;
5) the given name and surname and ad dress of the author of invention;
6) the given name and surname, residen tial address or address of the seat of
enterprise and zip code of the patentee; wh ere the patentee is a legal person, the name,
address and zip code of th e seat of the patentee;
7) where the patent attorney has been  appointed, the given name and surname
and address of the attorney;
8) where the common representative is a natural person, the given name and
surname of the natural person; where the common representative is a legal person, the
name of the legal person;
9) the number and filing date of the patent application;
10) the priority data;
11) the data of the international application;
12) the data of the de posit of microorganism;
13) the date of the publicati on of the patent application;
14) the date of the publication of the patent specification;
15) the date of the beginning of the term of the patent.
(2) After entering the registration data in the Register, the Patent Office shall compile
the patent specification.IP/N/1/EST/P/1
Page 27
(3) The patent specification shall be kept in the registry dossier.
(4) The patent specification shall be publis hed on the date of the publication of the
announcement about the grant of the patent.
(5) The formal requirements and procedure for compilation of the patent specification
shall be established by the Government of the Republic or by a Minister on the authorisation
of the Government of the Republic.
[16.06.1998]
§ 36. Letters patent
(1) The letters patent is a document certifying the registration and the exclusive right
of the patentee to the invention.
(2) The letters patent shall consist of the certificate and the patent specification.
(3) The certificate shall contain:
1) the name of the state - the Republic of Estonia;
2) the coat of arms of the state - the small coat of arms of the Republic of
Estonia;
3) the number of the patent document;
4) the text " The patent has been i ssued under § 5 of the Patent Act that
entered into force on 23 May 1994. The patent is valid for 20 years from the filing
date of the patent applicati on. For maintaining the patent, a state fee shall be paid for
each year of validity. The letters patent certifies the registration and the exclusive
right of the patentee to the invention disclosed in the patent specification.";
5) the data of the agency having issued the letters patent (the name and seat of
the agency, the title, name and signature of the head of the agency, the seal of the
agency);
6) the date of signing the letters patent.
(4) The date of issue of the letters patent sh all be the date when the head of the agency
having issued the letters patent signs it. The date of issue of the letters patent shall be entered
in the entry book.
(5) The number of the letters patent sh all be the number of the registration.
(6) The Patent Office shall issue the letters patent to the patentee within one month
from the date of the publication of the a nnouncement about the grant of the patent.IP/N/1/EST/P/1
Page 28
(7) Only one letters patent shall be issued regardless of the number of patentees.
(8) On a request from the patentee a dupli cate may be issued for him. The duplicate
shall be issued within one month from the receipt at the Patent Office of the request and of
the document certifying the payment of the stat e fee. An announcement about the issue of the
duplicate shall be published in the Offi cial Gazette of the Patent Office.
(9) The formal requirements and the order of compilation and issue of the letters
patent shall be established by the Governme nt of the Republic or by a Minister on the
authorisation of the Gove rnment of the Republic.
[16.06.1998]
Chapter VIII
VALIDITY OF PATENT
§ 37. Term of patent
(1) The term of the patent shall be 20 years from the filing date of the patent
application.
(2) For maintaining the patent application and the patent, a state fee shall be paid for
each year of validity. The filing date of the pa tent application shall be deemed to be the
beginning of the year of validity.
§ 38. Premature lapse of patent
(1) A patent shall lapse prematurely in the following cases:
1) upon failure in paying the annual state fee;
2) upon a corresponding request from the patentee for the invalidation of the
patent;
3) upon liquidation or termin ation of a legal person being the patentee where
the patent rights have not transferred.
(2) The Patent Office shall enter the premature lapse of the patent in the Register and
publish a corresponding announcement in its Official Gazette.
§ 39. Amendments to patent
(1) The patentee shall be entitled, during the whole term of the patent, to request the
amending of the patent. The request for amendments shall be submitted to the Patent Office,
paying the state fee.IP/N/1/EST/P/1
Page 29
(2) The patentee shall be entitled to request amendments that do not change the
subject matter of invention as disclosed in the patent application at the filing date of the
application.
(3) The amendments shall have a retroactive effect.(4) The Patent Office shall publish in its O fficial Gazette an announcement about the
amendments to the patent.
(5) The patentee shall not be entitled to request amendments to the patent claims
which broaden the extent of pa tent protection, except in cases provided for in subsection 6 of
this Section.
(6) For correction of obvious mathematical a nd clerical errors broadening the extent
of patent protection, the pate ntee shall be entitled, within tw o years from the publication of
the announcement about the grant of the pa tent, to submit to the Patent Office a
corresponding request.
(7) The broadening of the extent of patent  protection, provided for in  subsection 6 of
this Section, shall not restrict the rights of persons who, before the publication by the Patent
Office of the announcement about the amendments, had taken into account the original extent
of patent protection in their ec onomic and business transactions.
Chapter IX
STATE FEE
§ 40. State Fee
In cases prescribed by this Act, state fees  shall be levied for effecting transactions,
issuing documents and maintaining a patent application and a patent pursuant to the
provisions of the State Fees Act (RT I 1997, 80, 1344; 86, 1461; 87, 1466 and 1467; 93,
1563; 1998, 2, 47; 4, 63; 23, 321; 36/37, 552 and 553,; 52/53, 771; 57, 859; 59, 941; 60, 951;
61, 979 and 985; 64/65, 1004, 1005 and 1008).
[16.06.1998]IP/N/1/EST/P/1
Page 30
§ 41. Payment of state fees
(1)State fees shall be paid by the applicant, the patentee or by any other person
interested in effecting transactions prescribed by this Act or in the issue of documents or
maintenance of a patent applica tion or a patent. In case another person pays the state fee for
applying for a patent, granting a patent or main taining a patent, the consent of the applicant or
the patentee shall be required.
(2) The state fee shall be deemed to be pa id upon the receipt at the Patent Office, in
case of an appeal at the Board of Appeal, of a document certifying the payment.
(3) The state fee shall not be refunded, ex cept in cases provided for in subsections
21(3) and 30(4) and (5) of this Act.
§ 42. Payment of annual state fees
(1) Annual state fee shall be paid within 6 months before the due date. The due date is
the last day of the calendar month when the corresponding year of validity began.
(2) The annual state fees for the first, the second and the third year of validity shall be
paid simultaneously within 6 months before the due date of the annual state fee for the third
year of validity.
(3) The annual state fee may be paid within 6 months after the expiry of the due date,
paying a supplementary state fee.
(4) The Patent Office may give the applicant or the patentee, if he is also the author,
an extension of time for paying the annual state fees for the first to the fifth year of validity.
The petition for the extension should be s ubmitted to the Patent Office before the
corresponding due date. The decision of the Pate nt Office on the extension for paying the
annual state fee is final.
(5) Where the Patent Office refuses to satisfy the petition for the extension and the
due date has expired, the annual state fee can be  paid, without paying a supplementary state
fee, within two months from the date of the decision of the Patent Office.
[16.06.1998]IP/N/1/EST/P/1
Page 31
Chapter X
TRANSFER OF PATENT RIGHTS
§ 43. Transfer of patent rights to successor in title
Patent rights enjoyed by a patentee or by a person entitled to, pursuant to § 12 of this
Act, apply for a patent, are transferred to the successor in title in the following cases:
1) upon death of a natural person by inheriting;
2) upon reorganisation or liquidation of a legal person on the basis of the
decision of reorganisation or liquidation or  on the basis of a corresponding contract.
§ 44. Assignment of patent application
(1) Any person being, pursuant to § 12 of this Act, entitled to apply for a patent, may
assign the said right to another person by a contract in writing.
(2) Upon assigning a patent application pendi ng in the Patent Office, the applicant
shall present to the Patent Office a statement certified by a notary in respect of the assignment
of the patent application, paying the state fee.
§ 45. Assignment of patent
(1) Assignment of a patent may be effect ed upon the abandonment of patent rights by
a patentee and upon the assignment  of a patent to another pe rson (expropriation of patent):
1) where economic and commercial activities are transferred to another
person;
2) upon giving the patent to entrepreneurship as the capital;
3) for other reasons not contradicting the law.
(2) Upon assignment of a patent in cases pr ovided by subsection 1 of this Section, the
patentee shall submit to the Patent Office a statement certified by a notary in respect of the
assignment of the patent, paying the state fee.
(3) The patentee may compulsorily be depriv ed of the patent and the patent may be
assigned to another person in the following cases:
1) pursuant to subsection 49(1) of th is Act by order of court where the
provisions of § 12 of this Act are infringed;
2) upon bankruptcy of the enterprise, if th e patent is considered to belong to
the bankrupt assets pursuant to the Ba nkruptcy Act (RT 1992, 31, 403; RT I 1997, 18,
302; 1998, 2, 46; 36/37, 552);IP/N/1/EST/P/1
Page 32
3) with a lien upon the patent, where the creditor demands the pawner to
release the pawned patent with the aim of selling it.
(4) Upon assignment of a patent in cases re ferred to in subsection 3 of this Section,
the new patentee shall submit to the Patent Office a transcript of the court order or otherdocument proving the assignment of a patent, paying the state fee.
(5) The patent shall be deemed to be assigned from the date of entering the
assignment in the Register. The assignment shall be entered in the Register on the date of the
receipt at the Patent Office of a document certifying the payment of the state fee.
[16.06.1998]
§ 46. Licence
(1) Patentee (licensor) may transfer, in whole or in part, the right to use or dispose a
patented invention to another person (licensee) by a licence.
(2) Upon granting a licence, a licence agreem ent shall be concluded in writing which
shall be entered in the Register by the Patent Office. An entry shall be made in the Register
upon the receipt at the Patent Office of a documen t certifying the payment of the state fee. An
unregistered licence agreement is invalid.
§ 47. Compulsory licence
(1) Each person interested in using a patented invention and able to use it in the
Republic of Estonia may, upon refusal from the patentee to grant a licence, bring action for
obtaining a compulsory licence, if:
1) the patentee has not used the inve ntion in the Republic of Estonia within
three years from publishing an announcement a bout the grant of the patent or within
four years from filing the patent applica tion, whereby the later date is taken into
account;
2) the extent of the use of the inven tion by the patentee does not comply with
the needs of Estonian domestic market;
3) the patent hinders the use of anot her invention which is technologically
progressive and essential for Estonian economy;
4) the use of the invention is requi red by state defence, environment
protection, public health or ot her important state interests of the Republic of Estonia,IP/N/1/EST/P/1
Page 33
including an urgent necessity to use the invention in connection with nature
catastrophes or other emergencies;
 (11) A compulsory licence shall not be gr anted where the patentee imports, from any
member state of the World Trade Organisati on, a product protected by a patent in the
extent meeting the needs of Estonian domestic market.
(2) In cases provided for in clause 3 of s ubsection 1 of this Section, the patentee shall
be entitled to obtain a compulsory licence for another invention if no agreement is reached
about exchanging licences (reciprocal licence).
(3) Upon granting a compulsory licence, the court shall prescribe the terms of the
compulsory licence, including the extent and dur ation of the use of the invention as well as
the amount and payment procedure of the licence fee. The extent and duration of the use of
the invention are determined on the basis of  the needs of Estonian domestic market.
(4) The right to use the invention under th e compulsory licence may be transferred to
another person solely with the enterprise using the compulsory licence or planning to use it
pursuant to the terms of the compulsory licence.
(5) The grant of a compulsory licence shall not prevent the patentee from using the
invention or from granting licences to other persons.
(6) A compulsory licence shall become effective from the date of entering it in the
Register. The entry in the Register shall be made on the date of receipt at the Patent Office of
a document certifying the payment of the state fee.
(7) Upon a change in the circumstances bot h the licensor and the licensee may file an
action in court for changing the terms of the compulsory licence.
[16.06.1998]
Chapter XI
CONTESTATION AND PROTECTION OF PATENT RIGHTS
§ 48. Contestation of authorship
(1) Disputes concerning authorship shall be resolved in court after the grant of the
patent.
(2) Any natural person who considers his ri ghts provided for in subsection 12(1) or
(2) of this Act to have been infringed, or his successor in title, may file an action in court
against the patentee for certification of the right of authorship.IP/N/1/EST/P/1
Page 34
(3) Authorship may be contested during the term of the patent.
§ 49. Contestation of patentee
(1) Any person who proves that the right to the patent belongs to him may, within one
year from the date of the publication of th e announcement about the grant of the patent, or
upon the transfer of patent rights from the date  it becomes evident, file an action in court
against the patentee for deprivation of the patent.
(2) Where an action filed pursuant to subs ection 1 of this Section is granted, the
respondent, who has used the inve ntion or made notable arrangements for using it, may apply
for the use of the invention for a payment or free of charge after the deprivation of the patent,
provided that the nature of the use is retained.
§ 50. Contestation of patent
(1) Any person may, within nine months  from the date of publication of the
announcement about the grant of the patent, file  with the Board of Appeal an appeal in
writing regarding the legitimacy of the grant of the patent, paying the state fee,or he may file
an action in court.
(2) The appeal may be based on the following statements:
1) the provisions of §§ 6, 7 or 8 of this  Act have been infringed when granting
the patent;
2) the description does not disclose the subject matter of the invention
completely and clearly enough to be carried out by a person skilled in the art;
3) the invention protected by a patent , including the invention divided from
the initial patent application pursuant to subsection 9(2) of this Act, does not
correspond to the subject matter of the i nvention disclosed in  the initial patent
application.
(3) The Board of Appeal shall examine the appeal and make a decision on the
invalidation of the patent in whol e or in part, or on amending th e patent, or it shall dismiss the
appeal.
(4) Upon disagreement with the decision of th e Board of Appeal, the appealant or the
patentee may contest it, filing an action in court within three months from the date of the
decision of the Board of Appeal.IP/N/1/EST/P/1
Page 35
(5) The Patent Office shall make an entry in  the Register based on the decision of the
Board of Appeal or the court, and publish in its Official Gazette an announcement about the
invalidation or amendi ng of the patent.
§ 51. Protection of rights of author
(1) The author of an invention may, without  expiration, file an action in court where
the rights provided for in subsection 13(7) of this Act are infringed, and for settling non-
proprietary disputes arising from authorship.
(2) For settling proprietary disputes arising from the use of the invention the author
may file an action in court within three year s from the day when he became or should have
become aware of the infringement of his rights.
§ 52. Protection of rights of applicant
(1) The applicant may, in compliance with § 30 of this Act, file with the Board of
Appeal an appeal against the decision of the Pate nt Office or he may file an action in court
within two months from the date of the decision.
(2) Upon disagreement with the decision of the Board of Appeal the applicant may
appeal against it, filing an action in court within three months from the day of making the
decision.
(3) The applicant may also file an action in  court upon infringement of exclusive right
that was commenced during provisional pr otection and demand te rmination of the
infringement.
§ 53. Protection of rights of patentee
(1) The patentee may file an action in court:
1) for disposal of the infringement of exclusive right, for preventing its
repetition and for restoring the status quo before the infringement commenced;
2) for compensation for damages caused  by the infringement of exclusive
right;
3) for cancellation of compulsory licence or for changing its terms;
4) for resolving disputes arising from the licence agreement;IP/N/1/EST/P/1
Page 36
5) for appealing against the decisions of the Patent Office and the Board of
Appeal.
(2) Any person having, through his culpable conduct, infringed the patentee's
exclusive right, shall bear administrative or criminal liability in the cases provided by law.
(3) Any person having, through his culpable conduct, infringed the patentee's
exclusive right and caused him property damage, shall be obliged to compensate for the
damage. Upon use of the invention in good faith  the court may adjudicate a compensation for
damage caused within no more than five years prior to the action.
(4) The patentee shall be entitled to file an action in court within three years from the
time when he became aware of the person who had infringed the exclusive right.
(5) Where the infringement of the exclus ive right was commenced during provisional
protection, the action must be filed in court by  the term prescribed in subsection 4 of this
Section, or within one year from the publicati on of the announcement about the grant of the
patent, whereby the later date is taken into consideration.
§ 54. Protection of righ ts of other persons
(1) Any person who, before the filing of the patent application, used the invention in
good faith, may file an action in court against the patentee for certification of the right of
prior use.
(2) Any person interested in using the patented invention may, in cases prescribed by
subsection 47(1) of this Act, file an action in court against the patentee for obtaining
compulsory licence.
(3) Any person using the invention under li cence agreement (licensee) may file an
action in court for resolving a dispute arising from the licence agreement.
(4) The licensee may also file an action in court upon the infringement of the
patentee's exclusive right by other persons , provided that the licence agreement does not
regulate otherwise. The licensee shall be obliged to previously notify the patentee of his wish
to file an action. The obligati on of notification shall be deem ed to be fulfilled where the
notification has been sent to the patentee in a registered letter at an address entered in the
licence agreement or in the Patent Register.IP/N/1/EST/P/1
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(5) Any person may, upon doubt that his activities might infringe the patentee's
exclusive right, file an action in court against the patentee for certifying that the existence of
the patent does not hinder his economic or commercial activities.
§ 55. Procedure for resolution of patent disputes
(1) In cases prescribed by the law patent disputes shall be resolved at the Board of
Appeal and in court.
(2) Actions referred to in this Act fall within the jurisdiction of the court in the
jurisdiction of which the Patent Office is located.
(3) The court shall resolve patent disputes pursuant to procedure prescribed by the
Code of the Civil Procedure (RT I 1998, 43-45, 666), taking into account the specifications
prescribed by this Act.
[25.11.1998]
(4) The court may refuse to proceed with the appeal if it includes solely an appeal to
be resolved, as prescribed by this Act, by th e Board of Appeal, and if the appeal has not been
preliminarily examined by the Board of Appeal.
(5) The Board of Appeal shall examine app eals filed with it on the grounds of this Act
pursuant to procedure prescribed by the Statutes of the Board of Appeal.
§ 551. Burden of proof
4. (1) Where an action has been filed in court under subsection 15(2) of this Act,
the defendant shall be obliged to prove that for making a similar product he has used a
process different from the patented process.
(2) Where the use of a different process is  not proved, the product shall be deemed to
have been made according to the patented process, provided that, despite of reasonable
efforts, the patentee has not succeeded in specifying the process actually used for making this
product and the use of the patented process is probable, or if the product made according to
the patented process is new.
(3) Evidence submitted by the defendant and containing his manufacturing or
business secrets may be disclosed solely  with the consent of the defendant.
[16.06.1998]IP/N/1/EST/P/1
Page 38
§ 56. Court proceedings upon filing action
(1) In case of an action referred to in subs ection 54(4) of this Act, the action should be
accompanied by the copy of the notification sent  to the patentee. Upon its absence the court
shall reject the action and prescribe a term for the plaintiff to fulfil the obligation of
notification.
(2) For the course of discussing an action for termination of the infringement of
exclusive right, the court may, upon request from the plaintiff, order, for preventing
continuous infringement, the product or object pr otected by a patent and made without the
consent of the patentee, the use of which in fringes the patentee's exclusive right, to be
removed from circulation. Upon necessity the cour t may demand the plaintiff to give security
for the damage of the defendant in case of nonsuit.
(3) In cases referred to in subsection 2 of this Section, the court may direct, upon
request from the plaintiff, that the proprieto r of the product or object may, during the
remaining term of the patent or during part of it, continue using it for a fair compensation to
the patentee.
§ 57. Attendance of Patent Office
(1) Upon resolution in court of patent dis putes the Patent Office may become a third
party to the proceeding.
(2) A transcript of a court order passed with regard to patent disputes shall be sent by
the court to the Patent Office for information also in cases where the Patent Office has not
been party to the proceeding.
§ 58. Representative in court upo n resolution of patent disputes
(1) Upon resolving in court of patent disputes , patent attorneys sha ll be allowed to act
in court as representatives.
[25.11.1998]
(2) The authority of the patent attorney shall be certified by the certificate of the
patent attorney and by the aut horisation issued by the client.IP/N/1/EST/P/1
Page 39
(3) Where the plaintiff is a person residing in a foreign state, he shall be obliged to
authorise as his representative a natural pers on residing in the Republic of Estonia for
receiving notifications, invitations and documents from the court.
Chapter XII
PATENTING INVENTIONS IN FOREIGN STATES
§ 59. Procedure of patenting invention
(1) Persons residing or located in the Republic of Estonia is entitled to patent his
invention in foreign states independently of patenting it in the Republic of Estonia.
(2) Any resident of the Republic of Estonia shall patent his invention in foreign states
independently pursuant to the laws of the fore ign states and to inte rnational conventions.
§ 60. Filing of internatio nal patent application
An international patent application shall be  filed pursuant to subsection 32(3) and (4)
of this Act.
Chapter XIII
IMPLEMENTATION OF THE ACT
§ 61. Entry into force of the Act
(1) The Patent Act shall enter into force on 23 May 1994.
(2) The provisions of clause 1 of subsecti on 11(2) of this Act shall apply after the
restoration of the membership of the Republic of Estonia in the Paris Convention for the
Protection of I ndustrial Property.
(3) The provisions of subsection 23(2) and Chap ter VI of this Act shall apply after the
expiry of three months from the acceding of the Republic of Estonia to the Patent
Cooperation Treaty, concluded at Washington on 19 June 1970.
(4) Microorganisms shall be protected with  patents after the acceding of the Republic
of Estonia to the Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure, concluded in 1977 (RT II 1996, 14/15,
49).
(5) Upon filing a patent application within 6 months from the entry into force of this
Act, each priority shall be recognised on the basis of the first patent application or utility
model registration application that is not earlie r than 20 August 1990 and is filed in a state
member to the Paris Convention.IP/N/1/EST/P/1
Page 40
§ 62. Invalidation of prior legal acts
§§ 521 to 523 of Part V and §§ 524 to 530 of Part VI of the Civil Code of the
Estonian SSR shall be repealed.
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