- patent applications
- Priority
- Patent claims
- Description
- Abstract
- Amendments to patent applications
- Division and excision
- Publication of patent applications
- Processing of patent applications
- to public inspection
- patent applications
- Register of patents etc.
- Advertisements of the Patent Authority
- Receiving of international applications
- patent applications etc.
- for aircraft
- Entry into force
- Transitional provisions
Legislative Texts
REGULATION 57–4/1991 concerning patent applications
Official Icelandic Title:
Reglugerð varðandi umsóknir um einkaleyfi o.fl.
instituted by the Ministry of Industry in accordance with the Patent Act no. 17/1991
Special issue
Translation from the Icelandic Law and Ministerial Gazette
EINKALEYFASTOFAN
Lindargötu 9 150 Reykjavík Iceland
Contents:
Filing and recording of patent applications9
Abstract18
Abbreviations:
The Patent Office uses the following abbreviations for current law and regulations in the field of patents: PA = Patent Act no. 17/1991 RCPA = Regulation Concerning Patent Applications, etc., no. 574/1991 AICP = Advertisement of Instructions Concerning Patent Applications, no. 575/1991
Legislative Texts
The Icelandic Law and Ministerial Gazette B, no. 574/1991
Regulation concerning patent applications, etc.
Filing and recording of patent applications
Section 1
Icelandic patent applications shall be filed with the Patent Office.
International patent applications designating Iceland shall be filed with an authority or international organization recognized as a receiving office under the Patent Cooperation Treaty. Provisions regarding the Patent Office as a receiving authority are to be found in sections 45–50.
Unless otherwise stated, the provisions of this Regulation shall apply only for the following:
| 1) 2) | Icelandic patent applications and international patent applications which have been proceeded with under section 31 of the Patent Act or processed under section 38 of the Patent Act. |
| Section 2 |
An Icelandic patent application shall consist of a written request (application form) together with accompanying documents. The application form shall be signed by the applicant or his agent and shall indicate: 1) the name and address of the applicant and, if the applicant is represented by an agent, the agent's name and address 2) the name and address of the inventor 3) a short descriptive name for the invention for which protection is claimed 4) if several applicants make a joint application, which of these applicants has power of attorney to receive communications from the Patent Authority 5) to what extent the application involves the deposit of a micro–organism in the manner described in paragraph 6, section 8 of the Patent Act 6) documents accompanying the application. The accompanying documents shall include: 1) a description of the invention, together with drawings if these are necessary for the understanding of the invention, patent claims and abstract 2) power of attorney, if the applicant is represented by an agent and the power of attorney is not granted in the application form 3) if the applicant is not one and the same with the inventor, evidence (in the form of an assignment) of the applicant's title. The prescribed application fee shall accompany the application.
Section 3
The description, patent claims and abstract shall be in Icelandic. Other documents may be in Icelandic, Danish, Norwegian, Swedish or English.
If a document is not in any of the languages specified in paragraph 1, it shall be accompanied by a translation. For documents other than the description, patent claims and abstract and for those parts of the description or patent claims in an Icelandic patent application which, under paragraph 1, section 21 do not count as basic documents, the Patent Office may waive the demand for a translation or accept a translation in
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a language other than Danish, Norwegian, Swedish or English. The Patent Office may require that an authorized translator or other person recognized by the Patent Authority certifies the translation.
Section 4
The description, patent claims and abstract shall be typed or printed in black on white A4 (21x29.7 cm) paper. Drawings shall be produced in dark or black lines on white or light coloured, durable A4 paper.
The description, patent claims, drawings and abstract shall be produced in a form suitable for easy reproduction. The Patent Office shall lay down specific instructions for the format of patent documents and the number of copies required.
Section 5
If the applicant wishes, a novelty search as described under section 9 of the Patent Act, to be performed he shall file a written request at the Patent Office within three months from the filing day or from the day on which the application was deemed to be filed, and he shall pay the prescribed fee. If the patent application is not in any of the languages accepted by the organization which carries out the novelty search, a translation into a language specified by the Patent Office shall accompany the request.
If the applicant wishes for the novelty search referred to in paragraph 1 to be carried out by a particular organization, he shall specify that organization in the request. If the patent application and prescribed translation fail to meet requirements of form demanded of international patent applications, within the period prescribed in paragraph 1, the request shall be dismissed.
Section 6
The Patent Office shall mark the application with the date on which it was filed.
Section 7
The Patent Office shall keep a record of patent applications filed. The record shall be open to the public. The record shall include the following information for each application: 1) the application number 2) the code number for the international classification category to which the application belongs 3) the name and address of the applicant 4) if the applicant is represented by an agent, the agent's name and address 5) the name and address of the inventor 6) the name of the invention 7) whether the application is Icelandic or international 8) filing date, if the application is Icelandic, as well as the effective date of application if this is
different from the filing date 9) if the application is international, the international filing date and the date on which the application was proceeded with under section 31 of the Patent Act, or the date on which the application is deemed to have been filed under section 38 of the Act 10) the name of the state in which an application has previously been filed, if priority is claimed on
the basis of this, together with the filing date and number of that application 11) if the application is a result of division or excision, the parent application number 12) information regarding whether new applications have resulted from division or excision together
with the number of the relevant applications 13) where appropriate, the date from which the application became available to the public under paragraph 3, section 22 of the Patent Act 14) in the case of an international patent application, the international application number
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15) information regarding fees that have been paid in respect of the application
16) where appropriate, information regarding oppositions and opponents to the application
17) information regarding the final outcome of the application.
Section 8
The Patent Office shall prepare, every month or in connection with the publication described under section 44, the following: 1) a list of applications, cf. section 7, including the information stipulated in subsections 1, 3, 5–11 and 14, paragraph 3, section 7,
2) a list of international patent applications designating Iceland and about which the Patent Office
has received information from the World Intellectual Property Organization in Geneva. The list
shall include all the information for each patent application stipulated in article 30(2b) of the
Patent Cooperation Treaty.
The list described under section 8 shall be available from the Patent Office for a fee, where this entails a special issue.
Section 9
If a communication is received indicating that the title of a patent application has changed hands the name of the new applicant shall be added to the record only with evidence in the form of a deed of transfer.
Priority
Section 10
In order to obtain priority under section 6 of the Patent Act, the applicant shall submit a written claim within three months from the filing date in this country, or from the day on which the application was deemed to have been filed (effective date), together with information on where the application which the claim is based on was filed, including its filing date and application number as soon as is practically possible.
In the case of an international application a claim for priority shall be made at the same time that the application is filed. The claim shall be accompanied by information on where the application referred to was filed, together with its filing date and, in the case of an international application, the name of at least one of the designated states. The applicant shall, within 16 months from the priority date, inform the appropriate receiving office or the World Intellectual Property Organization of the number of the application upon which he bases his claim for priority.
If an application is divided, cf. section 22, the claim of priority for the original application shall, without need for further claims, also be valid for any applications resulting from the division.
Section 11
An applicant claiming priority shall, within 16 months from the priority date, provide the Patent Office with a certificate from the patent authority which received the application upon which the claim for priority is based. The certificate shall state the filing date and the name of the applicant. It shall be accompanied by a copy of the application, certified by the patent institution concerned. The Patent Office shall lay down regulations for the format of the copy. In the case of an international application however, such a certificate need not be provided unless the Patent Office requires, cf. paragraph 4. Instead, certification may be sent to the World Intellectual Property Organization, in accordance with Rule 17(1) of the Regulations under the Patent Cooperation Treaty. The Patent Office may exempt an applicant from the need to provide the documents specified in paragraph 1.
If an applicant fails to provide the specified documents within the prescribed time limit his right to priority shall lapse.
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If the World Intellectual Property Organization has been provided with a copy of the application upon which the claim for priority in an international patent application is based, the Patent Office may only require a copy and translation in accordance with Rule 17(2) of the Regulations under the Patent Cooperation Treaty.
Section 12
An application may only be the basis for a claim of priority under section 10 if that application is the first in which the invention is described.
Notwithstanding that the person who filed the first application, or his successor in title, has later filed an application with the same authority relating to the same invention, the later application may be used as the basis for a claim of priority if the first application has been withdrawn upon filing of the later application, or if the first application was shelved or refused before it became available to the public, and on condition that no rights or priority are based on it. If priority has been obtained on the basis of such a later application, a claim for priority based on the first application may no longer be entered.
The provisions of paragraph 2 shall apply to applications whose effective date has been postponed.
Section 13
It is possible to claim priority for part of an application. A claim of priority for one and the same application may be based on more than one application even though they relate to different countries.
Patent claims
Section 14
A patent claim shall contain:
| 1) | the name of the invention |
| 2) | a statement of the art in relation to which the invention constitutes something new (the state of |
| the art), if such information is necessary, and | |
| 3) | a statement of the novel and characteristic features of the invention. A patent claim may only |
| relate to one invention. |
The invention shall, if possible, be referred to one of the following categories: product, apparatus (equipment), process or use.
Nothing may appear in the patent claim which is irrelevant to the invention as it is described in the claim or which is immaterial to the exclusive right applied for.
Section 15
A patent application may contain several patent claims. If several claims are made in the same application they shall be numbered and ordered consecutively.
A patent claim may be independent or dependent. A patent claim is considered dependent if it concerns the embodiment of an invention which is described in another claim and entails all features of that claim. Other patent claims are independent.
Several dependent claims may be attached to a patent claim. A dependent claim may be attached to one or more preceding claims. In such cases, in the preamble to the claim, reference shall be made to the claims concerned and then other characteristic features of the invention shall be described.
Section 16
Several inventions which are included in the same application are considered dependent on each other if there is a technical connection between them in the sense that one or more of the same or equivalent technical characteristic features are common to all of them. The term technical characteristic feature refers to those technical elements in each individual invention which are novel in terms of the state of the art.
The issue of whether inventions are dependent on each other shall be resolved without regard to whether they are mentioned in other patent claims.
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Description
Section 17
The description of an invention shall be limited to subject–matter which provides a clear understanding of the invention. Where new or rare terminology is used its meaning shall be explained. Only symbols and units of measurement generally accepted in the Nordic countries shall be used.
If a patent application involves a deposit of a culture of micro–organism under paragraph 6, section 8 of the Patent Act the application shall, at the date of filing, contain all relevant data known to the applicant on the characteristics of the micro–organism.
Section 17a
Cultures of micro–organisms under paragraph 6, section 8 of the Patent Act shall be deposited with an institution which is an internationally recognized depository under the Treaty done at Budapest 28 April 1977 on the International Recognition of the Deposit of Micro–Organisms for the Purposes of Patent Procedure (the Budapest Treaty).
The deposits shall be made in accordance with the provisions of the Budapest Treaty.
The Patent Authority shall make a list of those institutions which are internationally recognized depositories for micro–organisms under the Budapest Treaty.
Section 17b
If an applicant has deposited a culture of a micro–organism, he shall, within 16 months from the date of filing or if priority is claimed, from the priority date, inform the Patent Authority in writing of the name of the institution where the deposit has been made and which deposit number the institution has allotted the culture. In the case of international applications, the World Intellectual Property Organization shall be provided with the same information within the same time limit.
If, prior to the expiry of the time limit referred to in paragraph 1, the applicant requests that documents relating to the application be made available to the public earlier than is prescribed in paragraphs 1 and 2, section 22 of the Patent Act, he shall provide the information referred to in paragraph 1 at the latest at the same time that the request is made. If, prior to the expiry of the time limit referred to in paragraph 1, a person making an international application requests early publication of the application under Article 21(2b) of the Patent Cooperation Treaty, he shall provide the World Intellectual Property Organization with the said information at the latest at the same time that the request is made.
If a deposited culture of a micro–organism has been transferred from one international depository to another, in accordance with paragraph 1, rule 5 of the Budapest Treaty, the applicant shall, as soon as possible and once he has received a receipt for the transfer of the culture, inform the Patent Authority of the transfer and of the new number allotted to the culture.
As proof that the information referred to in paragraphs 1 and 3 is correct, the Patent Authority may require from the applicant a copy of the receipt which the depository has issued regarding the deposit of the culture.
Section 17c
A new deposit of a culture of a micro–organism referred to in paragraph 7, section 8 of the Patent Act shall be in accordance with the provisions of the Budapest Treaty regarding new deposits.
The new deposit shall be made within 3 months from the date on which the depositor received notification from the depository that provision of a sample of the deposited micro–organism was not possible. If the institution has ceased to be an international depository for the type of micro–organism which the deposit involved, or if it no longer fulfills conditions laid down for depositories under the Budapest Treaty, and if the depositor has not been notified of this within 6 months from date that the World Intellectual Property Organization announced this, then the new deposit may be made within 9 months from the said announcement.
The applicant shall, within 4 months from the date on which the new micro–organism culture was deposited at another institution, provide the Patent Authority with a copy of the receipt of deposit from the
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new depository. If the time limit referred to in paragraphs 1 and 2, section 17b expires later, the copy of the receipt may be provided within that time limit. At the same time that the copy of the receipt is submitted, information shall also be provided regarding the application number or the patent to which the culture relates.
Abstract
Section 18
The abstract for an Icelandic patent application shall relate to the description and patent claim as they are presented in the basic documents, cf. paragraph 1, section 21 and paragraph 1, section 24. The abstract shall contain the name of the invention. The abstract shall also describe clearly the technical problem which the invention relates to, how, in principle, the invention is intended to solve the problem and the main use of the invention. If possible a final version of the abstract shall be submitted before the application is made available to the public under paragraph 2, section 22 of the Patent Act.
If an International Searching Authority has approved the abstract of an international application the said abstract shall be used. When this is not the case, the Patent Authority shall also determine the format of abstracts for these applications in accordance with paragraph 1.
Amendments to patent applications
Section 19
A patent may not be amended in such a way that it contains subject–matter not supported in the basic documents, cf. paragraphs 1 or 2, section 21 and paragraph 1, section 24. If a patent claim is amended by adding new items, the applicant shall state at the same time where in the basic documents the new items have their foundation.
Once the Patent Authority has given an account of the results of the novelty search no new patent claims may be added to the application for inventions which are independent of the inventions for which the claim was previously made.
The results of a novelty search regarding an international patent application may not be made public without the permission of the applicant before the expiry of the time limit specified in section 53.
The applicant may therefore only make amendments or add to descriptions or to drawings to the extent that such changes are considered necessary under section 8 of the Patent Act. Such amendments or additions shall not be made if they result in the patent claims including other subject–matter than or more subject– matter than can be derived from the basic documentation.
Section 20
If amendments are made to patent claims or additional claims added to them a new copy of the claims shall be provided, unless otherwise permitted by the Patent Authority in individual cases. The new copy shall comprise all the maintained claims in consecutive order.
Section 21
The basic documents for an Icelandic patent application or for a patent application to be processed according to section 38 of the Patent Act shall be held to consist of drawings and claims filed in Icelandic, Danish, Norwegian or Swedish on the filing date, or on the date on which the application was deemed to be filed, cf. section 14 of the Patent Act. If these documents are not available within the aforesaid time limit, the description, accompanied by relevant drawings and claims submitted later in an Icelandic translation, shall be considered basic documents to the extent that the contents of the application were clear in those documents which were presented on the filing date.
The basic documents for an international patent application which has been proceeded with under section 31 of the Patent Act shall be held to be a translation of the description, drawings and claims which are filed in accordance with this section with those amendments made to the translation within the time limit
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provided for under section 53. If an international patent application is filed in Icelandic with the receiving authority, copies of the description, drawings and claims filed under section 31 shall be held to be basic documents, together with those amendments done before the expiry of the time limit specified in section 53. If an applicant consents to an international application being processed within the time limit specified in section 53, cf. section 34 of the Patent Act, and a ruling is made to lay the application open to public inspection or to refuse it, then the description, drawings and patent claims for the said application, together with the documents which were available when the ruling was made shall be held to be basic documents.
If, upon filing, a patent application includes a statement to the effect that an application regarding the same invention has been filed in another state and its number and filing date are specified, a subsequently filed certified copy of that application shall be held to have been filed on the date of the filing in Iceland.
Division and excision
Section 22
If several inventions are described in the basic documents, the applicant may divide the application into several applications. If the applicant so requests, a new application regarding an invention based on the original application (the parent application) shall be held to have been filed at the same time as the parent application. In the case of such division the new application shall not relate to other subject–matter than, under paragraph 2, section 19 of the Patent Act, could have been included in the parent application at the time that the new application was filed.
If division of an application is necessary because it relates to two or more independent inventions the new application shall be considered to have been filed at the same time as the parent application if it is filed within 4 months after the corresponding restriction was made to the parent application.
Section 23
If an invention which has no basis in the basic documents is disclosed by an addition to a description or patent claims or in any other way, the applicant may ask that a new application relating to the invention which has been excised from the original application (parent application) be held to have been filed at the same time as the documents disclosing the invention were submitted to the Patent Authority.
Such excision shall only be carried out in accordance with paragraph 2, section 19 of the Patent Act and on condition that the new application only applies for a patent for the subject–matter disclosed in the documents of the parent application as it appeared in the relevant documents upon filing.
Section 24
In the event of division and excision, the description, with accompanying drawings and patent claims filed with a new application shall be considered to be basic documents.
A new application shall only be considered to have resulted from division or excision if this is made clear when the application is filed. The original application shall be identified in applications resulting from division or excision.
Publication of patent applications
Section 25
When a patent application is made available to the public under section 22 of the Patent Act prior to being laid open for public inspection, the abstract shall be printed as soon as its final wording has been determined. The Patent Authority may also have printed with the abstract other parts of the application. Copies of these printed documents shall be available from the Patent Authority for a specified fee.
The advertisement which shall be published when the application is made available to the public shall include the application number and international category, filing date, effective date if this is different from the filing date, the title of the invention and the inventor's and applicant's name and address. If priority is
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claimed the advertisement shall state where the application on which priority is based was filed, as well as the filing date and number of the said application. If the application includes a deposit of a culture of a micro–organism, this shall be stated in the advertisement. If the applicant has requested that, in accordance with paragraph 7, section 22 of the Patent Act, a sample shall be provided only to an expert in the art, this shall also be stated in the advertisement.
If a translation of the description and claims relating an international application has been amended before the expiry of the time limit referred to in section 53 and after the application has been made available to the public, this fact shall also be advertised.
Section 25a
A request for furnishing of a sample of a deposited micro–organism under paragraph 8, section 22 of the Patent Act shall be drawn up in accordance with rule 11 of the Regulations under the Budapest Treaty.
If a request is made, cf. paragraph 1, before a final decision has been made on the application to which the deposited culture relates, the person requesting the sample shall undertake to use the sample solely for research until a final decision has been made on the application. The aforesaid person shall also undertake not to allow any other person access to the sample before a final decision has been taken on the application or, if a patent is granted, not before that patent has ceased to have effect.
If the request referred to under paragraph 1 is made for a sample of a deposited culture of a micro– organism which relates to a patent, the person who makes the request shall undertake vis–à–vis the proprietor of the patent to allow no one else access to the sample until the patent ceases to have effect.
The person requesting the sample shall make the same undertakings in regard to cultures which are derived from the samples and which still exhibit those characteristics important for the use of the invention. A request shall be accompanied by a written declaration that the person requesting the samples undertakes to fulfill the obligations referred to above.
Section 25b
A request under paragraph 7, section 22 of the Patent Act to the effect that samples shall be furnished only to experts in the art, shall be submitted to the Patent Authority no later than the date on which the application is made available to the public under section 22 of the Act.
The Patent Authority shall maintain a list of those individuals who, in the opinion of the Patent Authority, are experts in the art and who have expressed themselves willing to receive samples. In accordance with section 44, the names of individuals entered on the list shall be advertised.
If a sample may only be furnished to an expert in the art, as described in paragraph 1, the request shall state the name of the expert who is to undertake the commission. The request shall be accompanied by a statement from the expert in which he accepts his obligations vis–à–vis the applicant to the extent described in paragraphs 2 and 4, section 25a. In such cases the person who makes the request is not required to make a declaration himself.
Any person entered on the list or any person approved by the applicant in the particular case may be used as an expert.
Section 25c
Notwithstanding any declaration made under sections 25a and b, in the case of a new patent application a culture of a micro–organism which has been derived from a furnished sample may be deposited if it is required for that application.
Section 25d
If a request for a sample has been made, and there is nothing to prevent it being granted according to the Patent Act or this Regulation, the Patent Authority shall issue a certificate to that effect. The Patent Authority shall send the request and the certificate for furnishing of the sample to the institution where the culture is deposited. At the same time the Patent Authority shall send the applicant or the proprietor of the patent copies of the request and the certificate.
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If, in the opinion of the Patent Authority, the certificate referred to in paragraph 1 cannot be issued, the Patent Authority shall notify the person who has requested the sample of this fact. The said person may appeal this decision to the Committee of Appeal within two months from notification by the Patent Authority. Rulings on this subject given by the Committee of Appeal shall not be appealed before the courts.
Processing of patent applications
Section 26
In examining whether conditions are satisfied for granting a patent under section 2 of the Patent Act, the Patent Authority shall take into account everything that comes to its attention.
Novelty searches shall be carried out on the basis of patents, patent applications which have been laid open to public inspection or published patent applications from Iceland, Denmark, Sweden, Finland, Norway, Germany (formerly West Germany), the former German Reich, Great Britain, France, the United States of America, and the European Patent Office, or abstracts thereof, published international applications or abstracts thereof and Icelandic patent applications which have been made available to the public. The search shall also be based on other available documents where this is considered necessary.
The Patent Authority may lay down specific instructions regarding the search. Under special circumstances such instructions may differ from the provisions of paragraph 2.
Section 27
The Patent Office may under section 69 of the Patent Act come to an agreement with a foreign patent institution for assistance with novelty search and examination of patent applications.
The Patent Office may also consult external experts if this is considered necessary in order to come to a decision on a patent application.
Section 28
The Patent Office may require that an applicant submit a model, sample, or the like or that he carry out research or experiments, if this is considered necessary in order to come to a decision on a patent application.
Section 29
An applicant who has applied for a patent abroad at the same time as making an application in Iceland shall, within the limitations specified in subsection 2, paragraph 3, section 69 of the Patent Act, be obliged, if the Patent Authority so requires, to pass on information which the foreign institution has provided regarding novelty or patentability of the application in other respects. If the Patent Authority so requests, the applicant shall be obliged to declare at which patent institution he has applied for a patent for the invention and shall submit a copy or transcript of all communications that he has received in relation to novelty or the patentability of the invention in other respects and of the correspondence with the relevant patent institution or he shall make a declaration that he has received no such communications.
If the examination of an application is carried out by a foreign patent authority in accordance with the provisions of paragraph 3, section 69 of the Patent Act, the Patent Office may, on the basis of an agreement with the said patent authority regarding exchange of information on patentability, postpone discussion of an application which corresponds to an application that has been filed earlier at the said foreign patent authority, until the said application has been processed according to the terms of the agreement.
Documents relating to the application and which have not been made available to the public may be furnished by the Patent Office to the foreign patent authority with which an agreement has been reached under the provisions in the above paragraphs, provided that the said patent authority has undertaken not to make them available to the public.
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Section 30
Specific rules regarding time limits and extensions of time limits relating to the processing of patent applications shall be set by the Patent Authority. Postponement of the laying open of an application to public inspection shall only be granted, however, if a decision on laying open to public inspection has been taken before the application is made available to the public in accordance with paragraphs 2 and 3, section 22 of the Patent Act. Upon request from the applicant, a postponement may then be granted for laying open of an application to public inspection until the application is made available to the public in accordance with the aforesaid provisions.
Laying open of patent applications to public inspection
Section 31
Printing of the description, drawings, patent claims and abstract under section 21 of the Patent Act (specification of the accepted, patent application) shall be effected by the Patent Authority as soon as possible after the application has been accepted for laying open to public inspection. The specification of the accepted patent application shall indicate the date of publication and the following information:
1) the number and international classification categories of the application 2) the name and address of the applicant 3) if the applicant is represented by an agent, the agent’s name and address 4) the name and address of the inventor 5) whether the application is Icelandic or international 6) if the application is Icelandic, the filing date and the effective date of application if this is
different from the filing date 7) if the application is international, the international filing date and the date on which the application was proceeded with under section 31 of the Patent Act, or the date on which the application is deemed to have been filed under section 38 of the Act 8) information regarding priority and information on where the application on which priority is
based was filed, together with the filing date and number of the said application 9) in the case of an international application, the international application number 10) the number of the parent application, if the application results from division or excision 11) whether the application includes the deposit of a culture of a micro–organism 12) cited documents.
Section 32
The advertisement for the laying open to public inspection under section 21 of the Patent Act shall contain the name of the invention together with information indicated in the specification of the accepted patent application under section 31, with the exception of the cited documents.
Section 33
Oppositions filed against patent applications and subsequent correspondence from opponents and applicants concerning oppositions shall be filed in a number of copies determined by the Patent Authority. Oppositions shall be accompanied by reasoned arguments.
Section 34
If the opponent is represented by an agent, a power of attorney for the agent shall be filed.
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Section 35
The applicant shall be sent one copy of all documents submitted by the opponent.
If the applicant files a response to the opposition the Patent Authority shall decide whether further correspondence between the parties is necessary.
Section 36
If, during processing of a patent application but outside the period prescribed for the filing of oppositions, the Patent Authority receives information in writing relevant to the evaluation of the application, the applicant shall be notified of this fact. A person who has provided such information prior to an application being laid open to public inspection shall be notified that an opposition to the application may be filed if the application is laid open to public inspection. This shall not apply however, if the information is in regard to a better title to the invention.
Specific instructions regarding patent applications
Section 37
The Patent Authority shall issue specific instructions for the processing of patent applications.
Register of patents etc.
Section 38
The Patent Authority shall maintain a Register of Patents granted. When a final decision has been made on the granting of a patent this shall be entered in the Register.
Section 39
The Register of Patents shall contain the following information:
| 1) | the number of the patent application and the registration number of the patent and its | ||
|---|---|---|---|
| international classification categories | |||
| 2) | the name and address of the proprietor of the patent | ||
| 3) | if the proprietor is represented by an agent, the agent’s name and address | ||
| 4) | the name and address of the inventor | ||
| 5) | |||
| a) | if the patent is granted on the basis of an Icelandic application, the filing date of the | ||
| application, and the date from which patent protection is effective (effective date), if this | |||
| is a not the same as the filing date | |||
| b) | the international filing date of the application, if the patent is granted on the basis of an | ||
| international application, or the date on which the application is considered to have been | |||
| filed under paragraph 3, section 38 of the Patent Act | |||
| c) | the date on which documents relating to the application were made available to the public | ||
| d) | the date on which the laying open of the patent to public inspection was advertised in | ||
| accordance with section 21 of the Patent Act and | |||
| e) | the date on which the patent was granted. | ||
| 6) | if priority is claimed, information on where the application on which priority is based was filed, | ||
| together with the filing date and number of that application | |||
| 7) | in the case of a patent granted on the basis of an international patent application, the international | ||
| application number | |||
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| 8) 9) | the name of the invention if the patent includes the deposit of a culture of a micro–organism, the name of the institution with which the culture has been deposited and the number allotted to the culture. |
| Section 40 |
The advertisement of the granting of a patent under section 26 of the Patent Act shall indicate the name of the proprietor of the patent, the number of the application and patent and the international classification categories, the name of the invention and the date of laying open to public inspection.
Section 41
When renewal fees have been paid, or a deferment of payment has been granted, an entry to this effect shall be recorded in the Register of Patents or other special register of payments of renewal fees.
When a patent has lapsed under section 51 of the Patent Act, the date from which the patent is deemed to have lapsed shall be entered in the Register of Patents.
If a written request under section 72 of the Patent Act is made to the effect that renewal fees be deemed paid at the right time, this shall be entered in the Register of Patents. The result of such a request shall also be recorded in the Register.
Section 42
If notification is made under paragraph 1, section 63 of the Patent Act that proceedings have been instituted for the revocation of a patent, for the transfer of a patent or for a compulsory licence, an entry shall be made to this effect in the Register of Patents.
When the Patent Authority has received a transcript of a court decision in accordance with section 65 of the Patent Act, an entry to this effect shall be made in the Register of Patents. The main conclusions of the decision shall be entered in the Register of Patents.
If a decision has been made to the effect that a patent has lapsed under section 54 of the Patent Act, an entry to this effect shall be made in the Register of Patents.
Section 43
An entry regarding the transfer of a patent or of the granting of a licence under section 44 of the Patent Act shall contain the name and address of the holder of the right in question, from what date he acquired the said right and the date on which the transfer of the patent took place or the licence was granted. If so requested, any limitations on the right of the proprietor of the patent to grant further licences shall be entered in the Register of Patents. If it is not possible to take an immediate decision on the filing of the transfer of a patent or the granting of a licence, an entry shall be made in the Register of Patents that such a request has been submitted.
A notification of a change of agent or of name or address of the proprietor of the patent shall be entered in the Register of Patents.
If the Patent Authority receives notification that a deposited culture of a micro–organism has been transferred, cf. paragraph 3, section 17b, or the Patent Authority has received a copy of a certificate from the new depository, cf. paragraph 3, section 17c, an entry regarding the transfer or the new deposit shall be made in the Register of Patents.
Advertisements of the Patent Authority
Section 44
Advertisements shall appear in a special publication published by the Patent Authority.
Legislative Texts
Receiving of international applications
Section 45
The Patent Office receives international patent applications from applicants who are Icelandic nationals, or who are resident in Iceland, or who have a commercial establishment in Iceland or who are considered legal entities in Iceland.
The above applies if several applicants file a joint international application and at least one of the applicants fulfills the conditions in paragraph 1.
Section 46
As a receiving authority the Patent Office shall receive, check and transmit international patent applications in accordance with the Patent Cooperation Treaty and its Regulations.
The applicant shall pay the Patent Authority, in its capacity as receiving authority, the following fees in accordance with the Regulations of the Patent Cooperation Treaty:
| 1) | the basic fee as referred to in Rule 15(1) of the aforesaid Regulations, within a month from |
| receipt of the application | |
| 2) | a designation fee as referred to in Rule 15(1) in the aforesaid Regulations, within a year from the |
| international filing date, or from the priority date, if priority is claimed, provided always that in | |
| the latter case the fee may be paid within a month from the receipt of the application | |
| 3) | novelty search fee as referred to in Rule 16(1) of the aforesaid Regulations, within one month |
| from receipt of the application. | |
| 4) | a fee for the Patent Authority’s processing of the application, in its capacity as receiving |
| authority, as referred to in Rule 14 of the aforesaid Regulations, within one month of receipt of | |
| the application | |
| 5) | a fee for the publication and transfer of the priority documents in accordance with Rule 17(1)(b) |
| of the aforesaid Regulation, within the time limit specified in Rule 17(1)(a) of the same | |
| Regulations. |
If the fees referred to in subsections 1–4, paragraph 2 are not paid in full in due time or by the date of deferment granted, the provisions of Rule 16bis. of the Regulations accompanying the Patent Cooperation Treaty shall apply.
Section 47
International patent applications filed with the Patent Authority in this country shall be submitted in one copy. Applications shall be in Icelandic, Danish, Swedish, Norwegian or English. Information on the application form may be in English although other documents are in one of the other above named languages.
Section 48
A separate record shall be kept of international applications which are filed with the Patent Authority. The record shall not be open to the public.
Section 49
An applicant who is not resident in Iceland shall appoint an agent who is resident here and who is able to represent the said applicant before the Patent Authority in matters concerning the application.
Section 50
The Patent Authority shall in accordance with the Patent Cooperation Treaty and its Regulations send international patent applications to the World Intellectual Property Organization.
Legislative Texts
Proceeding with international patent applications etc.
Section 51
When an international application is proceeded with in accordance with section 31 of the Patent Act, the applicant’s name, the international application number, the filing date and, where appropriate, the priority date shall be indicated. The place where the international application was filed shall also be indicated.
Section 52
If an international application is not in Icelandic a translation shall be filed at the same time as the application is proceeded with in accordance with section 31 of the Patent Act, or when a request is received for review of a decision under paragraph 1, section 38 of the Act. The provisions of paragraph 2, section 3 shall also apply.
The Patent Authority may lay down rules for the limitation of the obligation to file a translation where only a part of an international application is proceeded with in this country.
Section 53
The time limit referred to in section 34 of the Patent Act shall expire 4 months after the expiry of the time limit referred to in paragraph 1, section 31 of the Act.
If, however, an applicant makes a declaration under paragraph 2, section 31 of the Patent Act within 19 months from the international filing date, or from the priority date where priority has been claimed, the time limit referred to in section 34 shall expire at the same time as the time limit for proceeding with the application referred to in paragraph 2, section 31 of the Act.
Section 54
If an applicant for an international application has fulfilled all the conditions laid down in the provisions of section 31 of the Patent Act but the Patent Authority has not received notification from the World Intellectual Property Organization of the receipt of the application, the Patent Authority shall notify the World Intellectual Property Organization thereof.
Section 55
Notifications as referred to under paragraphs 1 or 3, sections 36 or 37 of the Patent Act shall be sent to the applicant by registered mail.
Section 56
The time limit in which a review of a decision may be requested under paragraph 2, section 38 of the Patent Act shall expire 2 months after the receiving authority or the World Intellectual Property Organization has notified the applicant of the decision referred to in paragraph 1, section 38 of the Act.
If the applicant is able to prove that more than 7 days have elapsed from the date on which the decision referred to in paragraph 1 was taken until he received notification, the time limit shall be extended by the number of days between the seventh day after the date on which the decision was made to the date on which the applicant received notification to this effect.
Legislative Texts
Spare parts and accessories for aircraft
Section 57
Notwithstanding a granted patent, spare parts and accessories for aircraft may be imported into this country for repairs on aircraft from other states which are members of the Convention of 7 December 1944 on International Civil Aviation (Chicago Convention, cf. Declaration no. 45/1947). The above is conditional on the state concerned being a member of the Paris Convention or having patent legislation which recognizes inventions of the citizens of other states, on it being a signatory to the above mentioned Convention on International Civil Aviation, and on its having legislation which protects this type of invention and which is consistent with the Paris Convention.
Entry into force
Section 58
These Regulations are instituted according to Act no. 17 of 20 March 1991 and shall enter into force 1 January 1992. Provisions regarding examination of international patent applications under the Patent Cooperation Treaty shall enter into force when Iceland ratifies the Treaty. Regulation no. 59/1966, with subsequent amendments, shall apply to applications which are filed prior to the entry into force of Act no. 17/1991 subject to any exceptions attendant on section 78 of the said Act.
As regards access, laying open to public inspection and oppositions to applications, to which the exception clauses in section 78 apply, cf. section 79 of the Patent Act, sections 25 and 31–36 of this Regulation shall apply in these matters mutatis mutandis.
Transitional provisions
1
The provisions of section 3 regarding translation of descriptions, patent claims and abstracts of patent applications shall enter into effect as follows:
a) In applications which are filed during the period 1 January 1992 to 1 January 1996 the description, patent claims and abstract may be in Icelandic, Danish, Norwegian, Swedish or English, cf. however, subsections (b) and (c). If, however, these documents are not submitted in Icelandic the Patent Office may require a translation, if circumstances warrant.
b) In applications which are filed in a foreign language after 1 January 1993, the abstract and patent claims shall be submitted in an Icelandic translation before the application is laid open for public inspection.
c) The provisions of subsection (b) shall also apply to descriptions in applications which are filed after 1 January 1994. The provisions of section 3 shall enter fully into force for applications which are filed after 1 January 1996.
2
The provisions of paragraph 1, section 21 regarding the definition of basic documents shall apply to applications which are filed during the period 1 January 1992 to 1 January 1996, notwithstanding that the description, together with accompanying drawings and patent claims are in English, cf. subsection (a), transitional provision 1 above.
Legislative Texts
The provisions of paragraph 1, section 21 enter fully into force for applications which are filed after 1 January 1996.
The Ministry of Industry,
2 December 1991.
On behalf of the Minister
Björn Friðfinnsson.
Helga Jóna Benediktsdóttir