Patents and Trademarks
A structured legal guide about Patents & Trademarks in Estonia. Prepared in association with TGS Baltic, a leading law firm in Estonia, this is an extract from The Pharma Legal Handbook: Baltics, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
There are three ways to obtain patent protection in the Republic of Estonia:
- National route: by filing an application directly with the Estonian Patent Office (hereinafter the EPO) (under the Patents Act),
- International route: (under the Patent Cooperation Treaty), and
- Regional route: (under the European Patent Convention).
There are three ways to get exclusive rights to a trademark in the Republic of Estonia:
- National route: by filing applications directly with the EPO (under the Trade Marks Act of the Republic of Estonia,
- International route: whereby the protection provided by the international trademark registration is extended to the Republic of Estonia (under the Protocol of the Madrid Agreement Concerning the International Registration of Marks), and
- European Union trademark protection route: whereby any trademark, registered as European Union trademark with the Register of European Union trademarks, is protected in Estonia (under EU Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark).
2. What agencies or bodies regulate patents and trademarks?
In Estonia, patents and trademarks are regulated by the Estonian Patent Office.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
Patents are available for any inventions in all fields of technology, provided that they are new, involve an inventive step, and are capable of industrial application. The subject of an invention may be a device, process, material, including biological material, or a combination thereof.
The law establishes the list of what shall not be protected by a patent:
- inventions which are contrary to public order and morality;
- methods of treatment and diagnostic methods practiced for treatment or diagnosis of diseases of humans or animals;
- processes for cloning human beings;
- processes for modifying the germ line genetic identity of human beings;
- uses of human embryos for commercial purposes, including processes prohibited by the Artificial Insemination and Embryo Protection Act;
- processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial benefit to health protection of humans or animals, and animals resulting from such processes;
- essentially biological processes for the derivation of biological materials, plants or animals, except microbiological processes for the derivation of micro-organisms;
- inventions the application of which is confined to a single plant or animal variety.
A trade mark is a sign used to distinguish the goods or services of a person from other similar types of goods or services of other persons and capable of being represented graphically.
Legal protection is not granted to the following signs:
- that are not capable of being represented graphically;
- signs which are devoid of any distinctive character, including single letters in non-stylised form, single numbers in non-stylised form and single colours;
- signs which consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services, or which describe the goods or services in another manner, or which consist of the above-mentioned signs or indications which are not considerably altered;
- signs which consist exclusively of signs or indications which have become customary in current language or in bona fide business practices;
- signs which consist exclusively of the shape which results from the nature of the goods, is necessary to obtain a technical result or gives substantial value to the goods;
- signs which are of such a nature as to mislead the consumer as to the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services;
- signs which are contrary to public order or accepted principles of morality;
- signs the registration of which must be refused on the basis of Article 6ter of the Paris Convention for the Protection of Industrial Property, unless the competent authorities or officials give written consent for the registration;
- signs which include a flag, armorial bearings or another symbol other than those covered by Article 6ter of the Paris Convention for the Protection of Industrial Property the registration of which is contrary to public interest, unless the competent authorities or officials give written consent for the registration;
- signs the application for the registration of which was filed in bad faith by the person applying for registration (hereinafter applicant) or the use of which has commenced in bad faith;
- signs which contain a registered geographical indication or are confusingly similar thereto if it may result in unlawful use of the geographical indication pursuant to the provisions of the Geographical Indications Protection Act;
- signs the use of which is prohibited pursuant to other Acts or an international agreement.
4. How can patents and trademarks be revoked?
The owner of the patent may surrender the patent by a written declaration to the EPO.
Any person may file a revocation application with the Board of Appeal and request the revocation of a patent within nine months from the publication date of the notice of grant of the patent. The Board of Appeal has the right:
- if the revocation application is granted, to require the Patent Office to revoke the patent provided that the facts set out in the revocation application preclude the maintenance of the patent,
- to reject the revocation application if the facts set out therein do not preclude the maintenance of the patent unamended, or
- if the revocation application is granted in part, to require the Patent Office to maintain the patent as amended provided that, during the processing of the revocation application, the proprietor of the patent files a request for making such amendments to the patent which are not contrary to the provisions of the Patents Act and which eliminate the facts set out in the revocation application which preclude the maintenance of the patent.
The Patent Office shall make an entry in the register on the basis of a decision of the Board of Appeal and shall publish a notice concerning the revocation of a patent or making of amendments to a patent in the official gazette of the Patent Office. The person who filed a revocation application or the proprietor of a patent may contest a decision of the Board of Appeal in proceedings on petition in court within three months from the publication date of the decision.
Any person who finds that an invention protected by a patent does not comply with the provisions of the Patents Act, may file an action with a court against the proprietor of the patent for the revocation of the patent in part or in full. The proprietor of the patent may restrict the scope of patent protection in the course of the action if this will result in the invention complying with the provisions of the Patents Act. A request for making of a register entry together with a copy of the court judgment and, in the prescribed cases, information on payment of the state fee shall be filed with the EPO within one month after entry into force of the court judgment.
The owner of the trademark may surrender the trademark by a written declaration to the EPO.
An interested person may contest an applicant’s right to a trade mark at the Industrial Property Board of Appeal if circumstances specified in the Trade Marks Act preclude legal protection. The term for filing a revocation application is two months from the publication of the notice of the decision to register a trade mark. In case an appeal or revocation application is granted in whole or in part, the Board of Appeal shall annul the decision of the Patent Office and require the Patent Office to continue the processing taking into account the facts set out in the decision of the Board of Appeal. A participant in a processing concerning a revocation application who is not satisfied with a decision of the Board of Appeal regarding the legal protection of a trade mark, may file an action, within the term provided for in the Principles of Legal Regulation of Industrial Property Act, against another participant in the processing to establish the circumstances which preclude the legal protection of the trade mark or non-existence of such circumstances. After the entry into force of a court decision made as a result of the action, the Patent Office shall continue the processing of the application on the basis of the circumstances established by the court decision.
5. Are foreign patents and trademarks recognized and under what circumstances?
The register of European patents is valid in Estonia and is maintained on the basis of and pursuant to the procedure specified in the Patents Act, the Implementation of Convention on Grant of European Patents Act and the Principles of Legal Regulation of Industrial Property Act. Estonia is part of the Patent Cooperation Treaty entered into on 19 June 1970 in Washington (hereinafter Patent Cooperation Treaty). Pursuant to the definition of Article 2 of the Patent Cooperation Treaty, the Patent Office is the receiving office, the designated office and the elected office.
All European Union trademarks registered in the Register of European Union trademarks are also valid in Estonia. Estonia has acceded to the Madrid Protocol. EPO is the Office of Origin and the Office of the Contracting Party within the meaning of the Protocol.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
There are additional barriers for receiving a marketing authorization for a generic (similar) medicinal product without performing full clinical testing.
Referenced (original) medicinal products are being granted:
- a data exclusivity period of eight years from the initial authorization;
- additional two years of market exclusivity;
- additional one year in the case of certain new indications.
Therefore, the marketing authorization for a generic (similar) medicinal product can enter into force at the earliest ten years after the grant of the marketing authorization for the reference (original) medicinal product.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
No, there are no restrictions explicitly stated in laws on the types of medicines or devices that can be granted patent and trademark protection, except for the general restrictions as provided in question No. 60.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
The licensor may, pursuant to a written license agreement (hereinafter by way of a license), grant the use of the rights of the proprietor of the patent to another person or persons (licensee(s)) in part or in full. Licenses may be registered in the register of patents which is maintained. A written request of the licensor or the licensee together with a copy of the license agreement or an extract from the license agreement which contains information necessary for the registration shall be the basis for making an entry concerning a license. A state fee shall be paid for an entry concerning a license. An unregistered license has no legal effect with respect to third persons. If there is a conflict of rights granted by different licenses to several licensees, preference is given to the licensee whose license is registered.
A licensee may transfer the rights acquired from the proprietor of a trade mark by way of a license to third persons only with the permission of the proprietor of the trade mark. The transfer of a trade mark or a license issued later shall not affect the validity of a license issued earlier. An entry shall be made in the register concerning a license if a party to the license agreement so requests.