Annual Technical Report on Patent Information Activities in 2016 submitted by the Estonian Patent Office
I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN PATENT INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE
Outline of main policies and plans aimed at development of patent information activities and expected time frames for their realization
Inventions can be protected as patents or utility models on the grounds of the Patent Act and the Utility Model Act, which entered into force on 23 May 1994.
30 patent applications were filed in 2016, 61 utility models applications and 52 applications for supplementary protection of medicinal products and plant protection products. Estonian applicants filed 29 patent applications and 55 utility model applications. Estonian applicants filed 3 international patent applications for forwarding to WIPO. The Patent Office made 94 examination decisions on patent applications and granted 31 patents. 71 examination decisions on utility model registration applications were made and 47 utility models were registered. The Office made 36 decisions on applications for supplementary protection of medicinal products and plant protection products, and 33 supplementary protection certificates were granted.
On 31 December 2016, the number of pending applications was 60 patent and 67 utility model registration applications.
Due to the fact that Estonia became a full member of the EPO in 2002, the number of filed patent applications has decreased year by year. As in 2003 the number of applications was ~15% less than in 2001 and 2002, in 2016 it was already ~95% less. Another reason why the number of filed applications is smaller is that applicants no longer file the first application with the Estonian Patent Office, but directly with the EPO or the patent office of another country.
Patents
Patent protection is granted to all scientific and technological inventions. Computer programs, plant or animal varieties, and methods for treatment and diagnostic methods are not patentable.
In November 2008, the Estonian Patent Office began electronic reception of patent applications. The address of the portal is http://online.epa.ee/.
The Estonian ID card is required for the entry into the portal. An application can only be filed with the Estonian Patent Office after the applicant or the patent attorney has signed it digitally. Upon request, the Estonian Patent Office issues a notification about the acceptance of the patent application. The notification can be saved or printed. 21 applicants (70%) used the possibility of e-filing of an application in 2016.
From the patent applications received in 2016, 96% were from Estonian applicants and 4% from the member states of the European Union (excluding Estonia).
Most patents were granted for Estonian applicants (18), but Russian, French and Finnish applicants also received a letters patent from Estonia in 2016.
Most of the valid patents in the Estonian patent register are held by residents of Estonia (18), a little less by holders of USA (133) and Sweden (105).
The Patent Office examines the compliance of filed patent applications with the formal requirements and carries out substantive examination of the invention, examining the novelty of the invention worldwide, the inventive step and industrial applicability.
In 2016 the main reasons for rejection or withdrawal of patent applications were the non-compliance of the patent application with the formal requirements (46,5%), the applicant withdrew the application (21,5%) or the non-compliance of the invention with the patentability criteria (17,8%).
The average duration of the examination of a patent application is 2 years. The patent application is published in 18 months from the filing date or priority date. The registration of the invention in the register of patents is deemed the grant of a patent. A traditional letters patent is issued to the patentee.
The term of validity of the patent is 20 years from the filing date of the patent application; a renewal fee must be paid for each year of validity.
Since 1 January 2013, the Patent Department examines applications for supplementary protection for medical products and plant protection products. Supplementary protection for medical products and plant protection products is valid for five years after the patent has expired. Since 2000, the total number of filed applications is 260.
On July 2015 The Estonian Patent Office joined the internatinal pilot program of Global Patent Prosecution Highway ─ GPPH. Under PPH a patent examination system is applied where – upon the request of the applicant – a participating patent office uses the results of other participating offices that have examined the same patent application, thus resulting in faster examination of the application.
Disputes concerning patents are resolved in the Industrial Property Board of Appeal and in court. In 2016, none of the decisions on a patent application made by the Estonian Patent Office was appealed to the Board of Appeal.
European Patents
Inventions can be protected by the European patent in Estonia since 1 July 2002, when Estonia became a full member of the European Patent Organisation (EPO). Starting from that date Estonia can be designated in the European patent application as a state where a European patent is intended to be validated. Moreover, Estonian and foreign applicants can file a European patent application via the Estonian Patent Office to the EPO.
To validate a European patent in Estonia the proprietor should file a translation of the patent specification into Estonian with the Estonian Patent Office and pay the prescribed fee for making it available to the public within 3 months from the date of notification of the grant of the European patent by the EPO. Upon payment of an additional state fee, the term for submitting the translation can be extended by 2 months.
The European patent valid in Estonia is legally equal to the Estonian patent. The Estonian Patent Office keeps the register of the European patents valid in Estonia.
To keep a European patent valid in Estonia the proprietor has to pay a renewal fee for each year of validity, starting from the second year after the EPO has notified of the grant of the European patent. The state fee can be paid up to 6 months before the due date for payment or, in case of paying the supplementary fee, up to 6 months after the due date for payment. The due date for payment is the last day of the calendar month in which the year of validity of the European patent starts.
The first European patents entered into force in Estonia in 2004. In 2016 there were 1,610 European patent applications filed, 1,314 (82%) electronically. Most of the European patents enforced in Estonia in 2016 were from USA (391), Germany (235) and Switzerland (151).
By the end of 2016 there were in total 8,136 European patents valid in Estonia, 1889 of them from USA, 1228 from Germany and 826 from Switzerland. By the end of 2016, no European patent applications to be forwarded to the EPO had been filed with the Estonian Patent Office.
New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks
Main areas of patent information activities and related information and communication technology (ICT) practices which were in the focus of attention last year
http://www.epa.ee/en/additional-info/free-consultations
Statistics: changes in terms of application filings and grants with respect to previous year; trends or areas experiencing rapid changes
http://www.epa.ee/en/additional-info/statistics
Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.
http://www.epa.ee/en/additional-info/statistics
II. SERVICES AND ACTIVITIES RELATED TO PATENT INFORMATION CARRIED OUT BY THE OFFICE
Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) - URLs
http://www.epa.ee/en/general-info/e-services
Availability of the application dossier in electronic form
http://www.epa.ee/en/general-info/e-services
Classification1, preclassification2 (if applicable), reclassification3 activities; classification systems used (e.g., International Patent Classification (IPC)); matters concerning indexing of patent information
http://www.epa.ee/en/patent-information-and-services/patent-information
Abstracting, reviewing, and translation of the information contained in patent documents
http://www.epa.ee/en/databases/inventions-databases
Other activities
http://www.epa.ee/en/patent-information-and-services/patent-information
III. SOURCES OF PATENT INFORMATION PROVIDED BY THE OFFICE
Main types of publications of the Office (patent applications, full text, first pages, abstracts, bibliographic data, granted patents, etc.), medium (on paper, on CDs, online - URLs)
Patent information is available at the Patent Libraries. Estonian Intellectual Property and Technology Transfer Centre provides access to patent information all over the world
Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online - URL), etc.
http://www.epa.ee/en/publications/official-gazettes
The Estonian Patent Office publishes the following official gazettes:
The Estonian Trademark Gazette – published since September 1993;
The Estonian Utility Model Gazette – published since October 1994;
The Estonian Patent Gazette – published since December 1995;
The Estonian Industrial Design Gazette – published since August 1998.
Pursuant to Regulation No 26 of 12 August 2014 of the Minister of Justice, the official gazettes of the Patent Office are published only online since 1 December 2014. The Estonian Trademark Gazette and the Estonian Industrial Design Gazette are published on the first working day of each month and the Estonian Patent Gazette and the Estonian Utility Model Gazette are published on the 15th day (or on the following working day) of each month.
In its official gazettes the Patent Office publishes the decisions on the registration of industrial property objects (trade marks, inventions, industrial designs, layout designs of integrated circuits, geographical indications) and amendments to corresponding registers (the register of trade marks and service marks, the register of utility models, the patent register, the register of industrial designs, the register of layout designs of integrated circuits, the state register of geographical indications and the register of European patents valid in Estonia), and all legal acts on industrial property protection, including the original texts and translations of acts and international agreements.
The bulletins can be downloaded free of charge on the website of the Patent Office.
Information products and patent document collections (coverage, medium, etc.) available to examiners, including external collections and databases
http://www.epa.ee/en/patent-information-and-services/patent-information
Information products and patent document collections (coverage, medium, etc.) available to external users, conditions of access (e.g., free of charge, subscription, etc.)
http://www.epa.ee/en/patent-information-and-services/patent-information
Legal status information (kind of information, coverage, medium, etc.)
http://www.epa.ee/en/patent-information-and-services/patent-information
Other sources
http://www.epa.ee/en/patent-information-and-services/patent-information
IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO PATENT INFORMATION CARRIED OUT BY THE OFFICE
Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements
In 2016, the most important event on the field of IT in the Estonian Patent Office was the introduction of new software package Back Office for trade marks and designs. Said system was developed by the OHIM Cooperation Fund and customized to meet the neeeds of the Estonian Patent Office. Back Office replaces Common Software that was in use since 1996, and enables to carry out electronic examination of trade marks and industrial designs. The system is linked to many IT-interfaces and X-road solutions. The new system enables to send digitally signed documents, to check data in the business register and population register, to use the address register to enter Estonian addresses, to check a person’s data in the European Union and United Nations consolidated list. It is also linked to a financial service which is a subsystem of the register of taxable persons – a register that administers the financial claims of the country and keeps account how these are fulfilled.
The new information system for trade marks and industrial designs is connected to the portal of e-services (teenused.epa.ee), at the portal applications concerning the registration, period of validity, changes in data and transfer of rights and ownership of trade marks and designs can be filed with the Patent Office.
The use of e-services should simplify and encourage people to offer innovational solutions. At the Office’s web page (www.epa.ee), through a portal (online.epa.ee) online applications concerning the enforcement of patents, utility models and European patents can be filled in and filed with the Patent Office. During the next few years we also aim to modernize the information systems of inventions.
Raising publis awareness is extremely important. Services of electronic search databases can be also used on our web page (http://www.epa.ee/en/additional-info/databases). The trade mark database and industrial designs’ database got a modern, mobile-friendly look this year. The trademark database is the most visited, but visits to the inventions’ and industrial designs’ databases are also frequent according to user statistics. We also display the overview of supplementary protection certificates for medicinal products and plant protection products (SPC) on our web page.
The Patent Office is also responsible for forwarding the data concerning the subjects of legal protection of industrial property of Estonia to international databases. Information is available on international trade mark search portal TMView (www.tmdn.org/tmview/welcome) and WIPO database Global Brand (www.wipo.int/branddb); industrial designs can be searched in portal DesignView (www.tmdn.org/tmdsview-web/welcome); patents and utility models in worldwide database of patents Espacenet (worldwide.espacenet.com).
Hardware used to supporting business processes of the Office
Internal databases: coverage, updates, interlinks with external sources
Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file
Administrative management electronic systems (register, legal status, statistics, and administrative support)
http://www.epa.ee/en/databases/inventions-databases
Other matters
V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF PATENT INFORMATION
Patent library: equipment, collection management, network of patent libraries in the country, cooperation with foreign patent libraries
Generally, patent information is information on published patent applications, granted patents and registered utility models. Original information comes from the official publications of the national patent offices. Patent information may later be processed to the level where the patent information of different states is collected into one uniform database to provide more convenient access.
The value of the patent information compared to that of other scientific and engineering information is that it contains the quickest access to the newest information about inventions. As a rule, the inventions are kept top secret before the publication of the patent applications.
Patent information is available at the Patent Libraries. Estonian Intellectual Property and Technology Transfer Centre provides access to patent information all over the world.
There is also a free online patents database Espacenet
Publications related to different business procedures and patent information sources available to users, for example, books, brochures, Internet publications, etc.
In 2016, the Estonian Patent Office continued with the policies that most of the materials will be published electronically and will be accessible and downloadable on our web page. Only a small amount of publications would still be on paper.
http://www.epa.ee/en/publications/methodical-publications
Office's initiatives on providing foreign patent information in the local language(s) (e.g., machine translation tools, translation of abstracts)
The Estonian Patent Office provides for the implementation and public information of the amendments to WIPO guides and regulations and new editions of International classifications, and as far as possible, translates them into Estonian.
Cooperation with universities, research centers, technology and innovation support centers, etc.
In 2016 many meaningful WIPO seminars took place in Estonia (the list of seminars can be seen on our web page). Moreover, the Director Generalof the Estonian Patent Office participated at an intellectual property strategies conference in Tbilisi, organized by WIPO. The Patent Office mediates the WIPO Schoolchildren's Trophy each year. In 2016, WIPO started a Baltic States Pilot Project for the Development of a Regional Pool of IP Commercialization Experts. Part of this project is a capacity building program for regional professionals to develop necessary competences in the area of knowledge transfer and IP commercialization. As a result, a regional pool of experts and a cooperation network between Baltic universities will be established. The project will be carried out by WIPO, in cooperation with the patent offices and universities of Baltic States. From Estonia, Estonian University of Life Sciences, Tallinn University of Applied Sciences, Tallinn University of Technology and University of Tartu take part.
Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.
In 2016, the Estonian Patent Office arranged or helped arrange 27 information events in order to raise the awareness of intellectual property. Regular seminars concerning the protection of inventions, trade marks and industrial designs took place in the classroom of the Patent Office and round table meetings was arranged with the patent attorneys.
In 2016 the cooperation with county development centres (Järva County Development Centre, Rapla County Development Centre, Harju County Entrepreneurship and Development Consultancy, Saaremaa Development Centre) and Tallinn City Enterprise Department became more extensive – joint events were organized where the importance of intellectual property protection was empathized. The products and experience in the field of IP protection of several enterprises (Ulaelu Ltd., Creative Woodworks Ltd., Leisi Lapikoda Ltd. and Digimist Ltd.) were also introduced.
The year 2016 was an exceptionally busy year in terms of international cooperation – two seminars were held for interested people. In October, in collaboration with the United States Patent and Trademark Office and Finnish Patent and Registration Office a seminar was arranged for the users of the Patent Prosecution Highway, and in November, in collaboration with WIPO, a seminar introducing the services of WIPO.
Moreover, in autumn 2016, WIPO started a pilot project called “Baltic States Pilot Project for the Development of a Regional Pool of IP Commercialization Experts” where 17 universities from Latvia, Lithuania and Estonia take part. This is a capacity building program for regional professionals to develop necessary competences in the area of knowledge transfer and IP commercialization. As a result, a regional pool of experts and a cooperation network between Baltic universities will be established. The project will be carried out from 2016 to 2017.
For the second year, we took part in the Estonian Contest for Young Inventors, where the WIPO Schoolchildren’s Trophy was handed over to a clever inventor. Anneli Simmul, chief examiner of the patent department, started working at the evaluation committe of this competition.
Other activities
specialists of the Estonian Patent Office continued to provide free consultations on the compilation of trade mark, industrial design and utility model applications as well as patent applications.
57 people were interested in industrial design consultations (36 in 2015) and they were consulted for 47 hours (25 in 2015). In addition, many more received advice by phone or e-mail. Presentations on legal protection of industrial designs were also given in the Patent Office, but also for example in Kuressaare.
The examiners of trade mark department consulted 116 people for 60 hours in 2016, many more received trade mark advice by phone or e-mail. Presentations on trade marks were given at the regular trainings in the Patent Office, but also in the framework of the intellectual property day and at the seminars in Kuressaare and Rapla. Presentations were also given at the Järva County Development Centre.
238 people received 169 hours of advice on inventions.
VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF PATENT INFORMATION
International exchange and sharing of patent information in machine-readable form, e.g., priority documents, bibliographic data, abstracts, search reports, full text information
The Patent Office is also responsible for forwarding the data concerning the subjects of legal protection of industrial property of Estonia to international databases. Information is available on international trade mark search portal TMView (www.tmdn.org/tmview/welcome) and WIPO database Global Brand (www.wipo.int/branddb); industrial designs can be searched in portal DesignView (www.tmdn.org/tmdsview-web/welcome); patents and utility models in worldwide database of patents Espacenet (worldwide.espacenet.com).
Participation in international or regional activities and projects related to patent information
Assistance to developing countries
Other activities
VII. OTHER RELATED MATTERS
1.Classification is allotting one or more classification symbols (e.g., IPC symbols) to a patent application, either before or during search and examination, which symbols are then published with the patent application.
2. Preclassification is allotting an initial broad classification symbol (e.g., IPC class or subclass, or administrative unit) to a patent application, using human or automated means for internal administrative purposes (e.g., routing an application to the appropriate examiner). Usually preclassification is applied by the administration of an office.
3. Reclassification is the reconsideration and usually the replacement of one or more previously allotted classification symbols to a patent document, following a revision and the entry into force of a new version of the Classification system (e.g., the IPC). The new symbols are available on patent databases.