Réglementation concernant les demandes de brevet, etc n° 574/1991 modifiée par le règlement n° 661/1995, 286/1996, 679/1996, 700/1997, 926/2001, 289/2002, 534/2004, 852/2004 et 536/2006., Islande

Regulation
concerning patent applications, etc.

No. 574/1991 as amended by regulation No. 661/1995, 286/1996,
679/1996, 700/1997, 926/2001, 289/2002, 534/2004, 852/2004 and 536/2006.

Filing and recording of patent applications

Article 1 [Icelandic patent applications shall be filed at the Patent Office. International patent applications designating Iceland shall be filed with an authority or

international organization prescribed as a receiving office according to the Patent Cooperation Treaty. Provisions on the Patent Office as a receiving authority are to be found in articles 65 – 70.

European patent applications designating Iceland shall be filed with an authority or European organization prescribed as a receiving office according to the European Patent Convention. Provisions on the Patent Office as a receiving authority are to be found in Articles 77-78.

Unless otherwise stated, the provisions of this Regulation shall apply only for the following: 1) Icelandic patent applications, 2) international patent applications which have been proceeded with under Article 31 of

the Patents Act or proceeded with under Article 38 of the Patents Act. 3) European patent applications which have been converted into national applications, according to Art. 88 of the Patents Act.]¹⁾

1) Regulation no. 852/2004, Article 1 (Valid from November 1, 2004)

Article 2 An Icelandic patent application shall consist of a written request (application form) together with accompanying documents. The application 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 [biological material]¹⁾ in the manner described in paragraph 6, Aticle 8 of the Patent Act, [6) how the applicant acquired title to the invention, if the applicant is someone other than the inventor.] ²⁾ [7) ] ³⁾ 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 _[]⁴⁾

The prescribed application fee shall accompany the application.

[Where an invention involves biological material from plants or animals or the use of such material, the application shall specify the geographical origin of the material, if it is known. Should the geographical origin of the material not be known, this should be mentioned in the application. If information on the geographical origin of the material is lacking or if the applicant is unaware of the geographical origin, this shall influence neither the processing of the application nor the rights provided for in the patent issued.]⁵⁾

1) Regulation no. 534/2004, Article 1(a) (Valid from June 30, 2004)
2) Regulation no. 534/2004, Article 1(b) (Valid from June 30, 2004)
3) Regulation no. 534/2004, Article 1(c) (Valid from June 30, 2004)
4) Regulation no. 534/2004, Article 1(d) (Valid from June 30, 2004)
5) Regulation no. 534/2004, Article 1(e) (Valid from June 30, 2004)

Article 3

[Application documents may be in Icelandic, Danish, Norwegian, Swedish or English. If the description, patent claims and abstract and text of drawings are not in Icelandic the patent claims, abstract and text of the picture to be published with it, shall be available in Icelandic translation before the application is made accessible to the public. When the Patent Office believes there are material reasons for granting a patent, based on the available documents, notification of this shall be sent to the applicant, requiring him to submit within four months an approved version of the patent claims, the abstract and the drawing texts, translated into Icelandic. By the same time, an approved version of the description shall be available translated into Icelandic or into English. This time limit may be twice extended, becoming a maximum of twelve months. If the time expires, the application shall be invalidated. The provision of the first paragraph on time limits for submitting a translation before a patent is granted also applies to previous applications.]¹⁾

[Documents in languages other than those specified in the first paragraph shall be accompanied by a translation into one of those languages. The Patent Office may, however, waive the translation requirement for documents other than the description, patent claims and abstract and for articles of the description or patent claims in an Icelandic patent application which are not considered as basic documents in the patent application in accordance with the first paragraph of Article 21, or accept a translation in a language other than Icelandic, Danish, Norwegian, Swedish or English. The Patent Office may require an authorised translator, or other party recognised by the patent authorities, to certify the translation. In lieu of such, an applicant or his agent may, provided the documents are in Danish, Norwegian, Swedish, English, German or French, submit a declaration to the effect that the translation corresponds to the foreign language documents.]²⁾

1) Regulation. no. 536/2006, Article 1 (Valid from June 30, 2006)

2) Regulation. no. 661/1995, Article 1 (Valid from June 1, 1996)

Article 4

The description, patent claims and abstract shall be typed or printed in black on white A4 (21x29.7cm) 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.

Article 5

If the applicant wishes, a search as described under Article 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 [ ]¹⁾ 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 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.

1) Regulation. no. 286/1996, Article 3 (Valid from June 1, 1996)

Article 6 The Patent Office shall mark the application with the date on which it was filed.

Article 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 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 Article 31 of the Patent Act, or the date on which the application is deemed to have been filed under Article 38 of the Act

[10) if the application is a European patent application that has been converted into a national application, the number of the European patent application, the date of its filing according to the European Patent Convention, and the date on which the European patent application was converted into a national application in Iceland.]²⁾

[11)]²⁾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

[12)]²⁾if the application is a result of division and excision, the parent application number [13)]²⁾information regarding whether new applications have resulted from division and excision together with the number of the relevant applications [14)]²⁾where appropriate, the date from which the application became available to the public under paragraph 3, Article 22 of the Patent Act

[15)]²⁾in the case of an international patent application, the international application

number

[16)]²⁾information regarding fees that have been paid in respect of the application

[[17)]²⁾information regarding the final outcome of the application.]¹⁾

1) Regulation no. 286/1996, Article 4 (Valid from June 1, 1996)

2)Regulation no. 852/2004, Article 2 (Valid from November 1 2004)

Article 8

[Monthly or in connection with issuing the [Gazette] ²⁾ pursuant to Article 49, the Patent Office shall prepare a summary of applications, cf. Article 7, containing the information mentioned in Points 1, 3, 6-11 and 14 of Paragraph 3 of Article 7, along with the names of the inventors.

This summary shall be available from the Patent Office for a set fee if this requires a special issue.] ¹⁾

1) Regulation no. 286/1996, Article 5, (Valid from June 1, 1996)

2) Regulation no. 534/2004, Article 2, (Valid from June 30, 2004)

Article 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

Article 10

In order to obtain priority under Article 6 of the Patent Act, the applicant shall submit a written claim within three months from the filing date in this country [ ]¹⁾ 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. Article 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.

[Priority, in accordance with Article 6 of the Patent Act may be based on an application for protection which has been filed in a state which is a party to the Agreement on the World Trade Organisation (WTO). Priority may also be based on an application for protection which was filed in a State which is not a party to the Agreement on the World Trade Organisation if Icelandic applications for patents enjoy comparable rights in that State and its legislation complies in general with the Paris Convention.]²⁾

1) Regulation. no. 286/1996, Article 6. a (Valid from June 1, 1996)

2) Regulation. no. 286/1996, Article 6. b (Valid from June 1, 1996)

Article 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 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.]¹⁾

If an applicant fails to provide the specified documents within the prescribed time limit his right to priority shall lapse.

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.

1) Regulation. no. 286/1996, Article 7 (Valid from June 1, 1996)

Article 12 An application may only be the basis for a claim of priority under Article 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 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.

[ ]¹⁾

1) Regulation. no. 286/1996, Article 8 (Valid from June 1, 1996)

Article 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.

Article 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.

Article 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 or 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 other characteristic features of the invention shall be described.

Article 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.

Description

Article 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 stored sample of biological material as provided for in Paragraph 6 of Article 8 of the Patent Act, the application shall, upon filing, contain all information which matters concerning the characteristics of the biological material and which the applicant is aware of.]¹⁾

1) Regulation no. 534/2004, Article 3 (Valid from June 30, 2004)

Article 17a

[Samples of biological material]¹⁾ under paragraph 6, Article 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 [biological material]²⁾ for the Purposes of Patent Procedure (the Budapest Treaty)[or with other depositories recognized by the European Patent Office.]⁴⁾

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 [biological material]³⁾ under the Budapest Treaty.

1) Regulation no. 534/2004, Article 4(a), (Valid from June 30, 2004)
2) Regulation no. 534/2004, Article 4(b), (Valid from June 30, 2004)
3) Regulation no. 534/2004, Article 4(c), (Valid from June 30, 2004)
4) Regulation no. 852/2004, Article 3 (Valid from November 1, 2004)

Article 17b If an applicant has deposited a [sample of biological material]¹⁾, 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 [sample]²⁾. 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, Article 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 [sample of biological material]¹⁾ 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 [sample]³⁾, inform the Patent Authority of the transfer and of the new number allotted to the [sample]³⁾.

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 [sample]³⁾.

1) Regulation no. 534/2004, Article 5(a), (Valid from June 30, 2004)

2) Regulation no. 534/2004, Article 5(b), (Valid from June 30, 2004)

3) Regulation no. 534/2004, Article 5(c), (Valid from June 30, 2004)

Article 17c

[A new deposit of a [sample of a biological material]¹⁾ as referred to in paragraph 7 of Article 8 of the Patents Act. shall conform 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 [biological material]²⁾ was not possible.

If a depository pursuant to the Budapest Treaty has ceased operations as an international depository for the type of [biological material]²⁾ which the deposit involved, or if the depository no longer fulfils the conditions stipulated for depositories, and if the depositor has not obtained knowledge of this within 6 months from when the World Intellectual Property Organization published an announcement of this, then the new deposit may be made within 9 months from the publication of that announcement.

If a depository acknowledged by the European Patent Office has ceased operations as a depository for the type of biological material which the deposit involved, or if the depository no longer fulfils the conditions stipulated for depositories, and if the depositor has not obtained knowledge of this within 6 months from when the European Patent Office published an announcement of this, then the new deposit may be made within 9 months from the publication of that announcement.

The applicant shall, within 4 months from the date on which the new [sample of a biological material]³⁾ was deposited at another institution, provide the Patent Authority with a copy of the receipt of deposit from the new depository. If the time limit referred to in paragraphs 1 and 2 of Article 17b expires later, it shall however suffice to provide a copy of the receipt within that time limit. Information on the number of the application or of the patent to which the sample relates shall be provided at the same time as a copy of the receipt is submitted.]⁴⁾

1) Regulation no. 534/2004, Article 6(a), (Valid from June 30, 2004)
2) Regulation no. 534/2004, Article 6(b), (Valid from June 30, 2004)
3) Regulation no. 534/2004, Article 6(c), (Valid from June 30, 2004)
4) Regulation no. 852/2004, Article 4, (Valid from November 1, 2004)

[Article 17d

Should an application involve amino acid or nucleotide sequences, a sequence listing shall accompany the description. This listing shall be prepared in compliance with the prescribed standard of the World Intellectual Property Organisation.

The Patent Office may decide that a listing pursuant to Paragraph 1 shall also be deposited in electronic form. If a listing is deposited in electronic form, the applicant shall provide a declaration of the electronic information being the same as appears in the listing according to Paragraph 1.

The Patent Office is permitted to decide that a listing pursuant to Paragraph 1 shall be deposited solely in electronic form.]¹⁾

1) Regulation no. 852/2004, Article 5, (Valid from November 1, 2004)

Abstract

Article 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, Article 21 and paragraph 1, Article 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 broad terms, 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, Article 22 of the Patent Act.

[If an International Searching Authority has recognized the abstract of an international application or a European patent application that has been converted into a national application, that abstract shall be taken as the basis.]¹⁾ When this is not the case, the Patent Authority shall also determine the format of abstracts for these applications in accordance with paragraph 1.

1) Regulation no. 852/2004, Article 6, (Valid from November 1, 2004)

Amendments to patent applications

Article 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, Article 21 and paragraph 1, Article 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 Article 53.

The applicant may therefore only make amendments or add descriptions or drawings to the extent that such are considered necessary under Article 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 original documentation.

Article 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.

Article 21

[[In an Icelandic patent application, a patent application being processed according to Article 38 of the Patents Act, or a European patent application for which conversion into a national application has been requested, the basic documents shall be considered the description, drawings and claims which are present in Icelandic, Danish, Norwegian, Swedish or English on the filing date.]⁵⁾ [ ]¹⁾ Should these documents not be available within the aforesaid time limits the description, together with the relevant drawings and claims, which are subsequently submitted in an Icelandic, Danish, Norwegian, Swedish or English translation, shall be considered as basic documents, insofar as the substance of the application is clearly presented in those documents available on the date of filing.

For an application to be proceeded with in accordance with Article 31 of the Patent Act, the Danish, Norwegian, Swedish or English translation of the description, drawings and claims, or an Icelandic translation of the claims, together with any amendments made to the translation within the time limit granted under Article 73, shall be considered as basic documents. [ ]²⁾ If an applicant consents to an international application being processed within the time limit provided for in Article 73, cf. Article 34 of the Patent Act, and a ruling issued [to grant a patent on the basis of the application]³⁾ or refuse it, then the description, drawings and patent claims of the application concerned, as available at the time of said ruling, shall be considered as basic documents.

If a statement is made upon filing, to the effect that an application regarding the same invention has previously been filed in another state, and the number and filing date of such application indicated, a certified copy of that application subsequently filed shall be considered to have been received on the date of the filing of the Icelandic application.]⁴⁾

1) Regulation no. 286/1996, Article 9, point a (Valid from June 1, 1996)

2) Regulation no. 286/1996, Article 9, point b (Valid from June 1, 1996)

3) Regulation no. 286/1996, Article 9, point c (Valid from June 1, 1996)

4) Regulation no. 661/1995, Article 2 (Valid from January 1, 1996)

5) Regulation no. 852/2004, Article 7, (Valid from November 1, 2004)

Division and excision

Article 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, Article 19 of the Patent Act, could have been included in the parent application at the time that the new application was filed.

[ ]¹⁾

1) Regulation. no. 286/1996, Article 10 (Valid from June 1, 1996)

Article 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, Article 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.

Article 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

Article 25

When a patent application is made available to the public under Article 22 of the Patent Act prior to [a patent being awarded]¹⁾, 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 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 [sample of a biological material]²⁾, this shall be stated in the advertisement. If the applicant has requested that, in accordance with paragraph 7, Article 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 Article 53 and after the application has been made available to the public, this fact shall also be advertised.

1) Regulation. no. 286/1996, Article 11, (Valid from June 1, 1996)
2) Regulation no. 534/2004, Article 7, (Valid from June 30, 2004)

Article 25a

A request for furnishing of a sample of a deposited [biological material]¹⁾ under paragraph 8, Article 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 [sample]²⁾ 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 [biological material]³⁾ 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 fulfil the obligations referred to above.

1) Regulation no. 534/2004, Article 8(a), (Valid from June 30, 2004)

2) Regulation no. 534/2004, Article 8(b), (Valid from June 30, 2004)

3) Regulation no. 534/2004, Article 8(c), (Valid from June 30, 2004)

Article 25b

A request under paragraph 7, Article 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 Article 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 Article 49]¹⁾, 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, Article 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.

1) Regulation. no. 286/1996, Article 12 (Valid from June 1, 1996)

Article 25c

[Even though a declaration has been made as referred to in Articles 25 a and b, the deposit for storage of a sample of biological material which is derived from a furnished sample is permitted for a new patent application if storage of the derived sample is necessary for the new application.]¹⁾

1) Regulation no. 534/2004, Article 9, (Valid from June 30, 2004)

Article 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 [biological material]¹⁾ 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.

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.

1) Regulation no. 534/2004, Article 10, (Valid from June 30, 2004)

Processing of patent applications

Article 26 [Patent applications must be examined in respect of novelty and patentability, cf. Art. 2 of the Patents Act.

A novelty search must take everything that is known into consideration, including published patent applications that have been made available to the public, patents, and other available information and documents if thought necessary. It is permissible to rely on results from foreign institutions which have searched for novelty and patentability.]¹⁾

1) Regulation no. 852/2004, Article 8, (Valid from November 1, 2004)

Article 27

The Patent Office may under Article 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.

Article 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.

Article 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 subarticle 2, paragraph 3, Article 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 an 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 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, Article 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.

Article 30

[Special 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 awarding of a patent shall only be granted, however, if a decision on the award has been taken before the application is made available to the public in accordance with the second and third paragraphs of Article 22 of the Patent Act. Upon request from the applicant, a postponement may then be granted for the awarding of the patent until the application is made available to the public in accordance with the afore-mentioned rules.]¹⁾

1) Regulation. no. 286/1996, Article 14 (Valid from June 1, 1996)

[Granting of patents etc.]1) Article 31

[Preparation of the description, together with the drawings, patent claims and abstract, in accordance with Article 20 of the Patent Act (the patent document) for publication shall be effected by the Patent Authority out as soon as possible after the decision has been taken to award a patent and, if applicable, when suitable documents are available in Icelandic translation, in accordance with Article 3 of this Regulation and Articles 38 and 90 of the ARCP. The patent document shall specify the date of publication and the following information:]²⁾

1) [the patent application number and registration number, together with the title

of the invention]⁴⁾ 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) [the international classification categories]⁵⁾ 6) filing date, if the application is Icelandic, as well as 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 Article 31 of the Patent Act, or the date on which the application is deemed to have been filed under Article 38 of the Act

[8) if the application is a European patent application that has been converted into a national application, the number of the European patent application, the date of its filing pursuant to the European Patent Convention, and the date on which the European patent application was converted into a national application in Iceland]⁶⁾

[9)]⁶⁾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

[10)]⁶⁾in the case of an international application, the international application number [11)]⁶⁾the number of the parent application, if the application results from division or excision [12)]⁶⁾[information on the depository and the deposit number of a sample of biological material, if such a sample is stored on account of the patent] ³⁾ [13)]⁶⁾cited documents.

1) Regulation no. 286/1996, Article 15, (Valid from June 1, 1996)
2) Regulation no. 286/1996, Article 16, (Valid from June 1, 1996)
3) Regulation no. 534/2004, Article 11, (Valid from June 30, 2004)
4) Regulation no. 852/2004, Article 9(a) (Valid from November 1, 2004)

5) Regulation no. 852/2004, Article 9(b) (Valid from November 1, 2004)
6) Regulation no. 852/2004, Article 9(c) (Valid from November 1, 2004)

Article 32

[The advertisement of the granting [of a patent] in accordance with Article 20 of the Patent Act shall contain the name of the invention together with the information to be provided in the patent document in accordance with Article 31, with the exception of the documents presented.]1)

1) Regulation. no. 286/1996, Article 17 (Valid from June 1, 1996)

[Opposition.]¹⁾

Article 33

[Oppositions shall be made in writing and shall include: 1) the name and address of the opponent, 2) the registration number (patent number) of the patent which is opposed, the

name of the proprietor of the patent and the name of the invention,

3) the scope of the opposition and the grounds upon which it is based, in addition to an exhaustive account of the facts, the documentary evidence and the circumstances of the case,

4) if an agent is involved, his name and address. The opposition and subsequent comments, together with their accompanying documents from the opponent and the proprietor of a patent, shall be submitted in two copies, unless the Patent Authority decides otherwise in special cases. If the opponent is the proprietor of the patent, his opposition and subsequent comments shall, however, only be submitted in one copy.

If an opponent has an agent, power of attorney shall be attested.]²⁾

1) Regulation. no. 286/1996, Article 18 (Valid from June 1, 1996)
2) Regulation. no. 286/1996, Article 19 (Valid from June 1, 1996)

Article 34

[If the opposition does not fulfil the requirements of point 3 of the first paragraph of Article 33 within the time limit set for opposition, the opposition shall be dismissed. The same applies if the patent, which is opposed, is not specified in the opposition or if it is not possible to verify who is raising the opposition.

If the opposition does not comply in other respects with the provisions of points 1, 2 and 4 of the first paragraph of Article 33 upon the expiry of the time limit for opposition, the Patent Authority shall instruct the opponent to rectify the shortcomings within one month's time. If the opponent fails to comply with these instructions within this time limit, the opposition shall be dismissed.

The opposition shall be recorded in the Register of Patents. The opposition raised shall be advertised in accordance with the provisions of Article 40 after the expiry of the time limit for opposition, if the opposition has not been dismissed.]¹⁾

1) Regulation. no. 286/1996, Article 20 (Valid from June 1, 1996)

Article 35 [Upon the expiry of the time limit for opposition, a copy of the opposition and the accompanying documents shall be sent to the proprietor of the patent, who shall be given the

opportunity of presenting his comments and, if appropriate, submit an altered description, claims or drawings.

If the proprietor of the patent files a response to the opposition, the Patent Authority shall decide whether further correspondence between the parties is necessary.]¹⁾

1) Regulation. no. 286/1996, Article 21 (Valid from June 1, 1996)

Article 36

[If the Patent Authority decides that a patent should be declared invalid the parties shall be notified thereof. The same shall apply if the Patent Authority decides that a patent shall remain valid without alteration.]¹⁾

1) Regulation. no. 286/1996, Article 22 (Valid from June 1, 1996)

Specific instructions regarding patent applications

Article 37

[If the Patent Authority feels that a patent may remain valid with alteration, the parties involved shall be notified thereof. The proprietor of the patent shall be given the opportunity to submit his comments within two months' time, if he cannot accept the proposed alterations to the text of the patent. If the proprietor of the patent agrees to the alterations the Patent Authority shall decide that the patent shall remain valid in this form. The opponent shall be notified of this decision.

If the proprietor of the patent cannot accept the alterations, the handling of the opposition may be continued if the Patent Authority sees reason to do so. Should no reason be seen for continuing the process, it shall be decided that the patent shall remain valid in the altered form. The parties involved shall be notified of this decision.

When a final decision has been taken to the effect that the patent shall remain valid in altered form, the proprietor of the patent shall be instructed to pay the required fee for the issue of a new patent document and, if necessary, to submit documents which are suitable for reproduction. The documents shall be in full accord with the documents which the Patent Authority has accepted and the proprietor of the patent shall provide a declaration to this effect. If the proprietor of the patent has paid the required publication fee he is considered, under all circumstances, to have agreed to the patent remaining valid in altered form. If he fails to pay the required publication fee, the patent shall be declared invalid.

A ruling to the effect that a patent shall continue to be valid in altered form shall include the altered text of the patent.]¹⁾

1) Regulation. no. 286/1996, Article 23 (Valid from June 1, 1996)

Article 38

[The issuance of a new patent document, containing the description, patent claims and drawings in altered form, in accordance with Article 23 of the Patent Act, shall be effected by the Patent Authority and be commenced as soon as possible upon payment of the publication fee. The patent document shall furthermore include the information specified in Article 31.]¹⁾

1) Regulation. no. 286/1996, Article 24 (Valid from June 1, 1996)

Article 39

[A ruling in an opposition case shall be advertised in accordance with the fifth paragraph of Article 23 of the Patent Act once the case has been finally concluded. The ruling shall also be recorded in the Register of Patents.]¹⁾

1) Regulation. no. 286/1996, Article 25 (Valid from June 1, 1996)

Article 40

[The advertisement as to the objection raised and of the ruling in the case shall include the name of the proprietor of the patent, date of filing and application number, registration number and international classifications of the patent, the name of the invention and the date of publication of the patent. The advertisement as to the objection raised shall also include the name of the opponent.]¹⁾

1) Regulation. no. 286/1996, Article 26 (Valid from June 1, 1996)

Article 41

[If the Patent Authority receives, while an application for patent is being processed, information in writing relevant to the assessment of the application, the applicant shall be notified of this fact. A person who has provided such information shall be instructed of the possibility of opposing the patent if it should be awarded. This shall not apply, however, if the information concerns better title to the invention.]¹⁾

1) Regulation. no. 286/1996, Article 27 (Valid from June 1, 1996)

Specific instructions regarding patent applications

[Article 42]¹⁾ The Patent Authority shall issue specific instructions for the processing of patent applications.

1) Regulation. no. 286/1996, Article 28 (Valid from June 1, 1996)

Register of patents etc.

[Article 43]¹⁾ [The Patent Authority shall keep a register of patents issued by the Icelandic Patent Office, as well as of European patents which have entered into force in Iceland.]²⁾

1) Regulation no. 286/1996, Article 28 (Valid from June 1, 1996)

2) Regulation no. 852/2004, Article 10, (Valid from November 1, 2004)

[Article 44]¹⁾ [The Register of Patents shall present the following in conjunction with patents granted by the Patent Office:]⁴⁾ 1) the number of the patent application and the registration number of the patent

and its international 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, Article 38 of the Patent Act

[c) if the application is a European patent application that has been converted

into a national application, the number of the European patent application, the

date of its filing pursuant to the European Patent Convention, and the date on

which the European patent application was converted into a national

application in Iceland]⁵⁾ [d)]⁵⁾ the date on which documents relating to the application were made available to the public [[e)]⁵⁾ the date on which the patent was granted.]²⁾

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 8) the name of the invention 9) [information on the depository and the deposit number of a sample of

biological material, if such a sample is stored on account of the patent.]³⁾

1) Regulation no. 286/1996, Article 29, (Valid from June 1, 1996) 2) Regulation no. 286/1996, Article 29, point a and b (Valid from June 1, 1996) 3) Regulation no. 534/2004, Article 12, (Valid from June 30, 2004) 4) Regulation no. 852/2004, Article 11(a) (Valid from November 1, 2004) 5) Regulation no. 852/2004, Article 11(b) (Valid from November 1, 2004)

[Article 44 a

A European patents designating Iceland shall be entered in the Register of Patents when the European Patent Office has published notification of granting the patent or decided to maintain the patent as amended and the applicant has submitted translations and paid the publication fee according to Paragraph 1 of Art. 77 of the Patents Act.

Upon fulfilling the conditions of Paragraph 1, the following information is entered in the Register of Patents: 1) the date of the European Patent Office's publishing notification of granting the patent, 2) the date on which the Patent Office received the translations and fees according to

Paragraph 1, Art. 77, of the Patents Act, along with the publication date of the advertisement according to Paragraph 3, Art. 77, of the Patents Act, 3) the filing date of the application and, in the case of a divisional application, the date on which the divisional application was filed, and 4) the information mentioned in Points 1-3, Sub-articles b and d of Point 5, and Points 6 and 9 of Art. 44.

If the European Patent Office has published notification of deciding that a European patent designating Iceland is to be maintained as amended, the date of the notification shall be entered in the Register. If the patent holder submits new translations and pays the fee according to Paragraph 1 of Art. 77 of the Patents Act within the time limit provided for in Paragraph 1 of Art. 81, an entry shall be made in the Register of Patents on when this was done and when the Patent Office published an advertisement about this.

If the conditions on translations and fees, provided for in Paragraph 3, have not been fulfilled within the time limit according to Paragraph 1 of Art. 81, information to this effect shall be entered in the Register.

Should the European Patent Office have decided to limit, cancel or revoke a European patent designating Iceland, information to this effect shall be entered in the Register.

If the patent holder submits a corrected translation of a patent and pays the prescribed fee according to Paragraph 1 of Art. 86 of the Patents Act, an entry shall be made in the Register on when the above occurred and when the Patent Office published an advertisement about this.] ¹⁾

1) Regulation no. 852/2004, Article 12 (Valid from November 1, 2004)

[Article 45

An advertisement of the granting of a patent in accordance with Article 20 of the Patent Act shall include the name of the proprietor of a patent, the number of the application and of the patent together with its international classification, the name of the invention and the date of publication.]¹⁾

1) Regulation. no. 286/1996, Article 30 (Valid from June 1, 1996)

[Article 46]¹⁾

When annual 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 annual fees.

When a patent has lapsed under Article 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 Article 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.

1) Regulation. no. 286/1996, Article 31 (Valid from June 1, 1996)

[Article 47]¹⁾

If notification is made under paragraph 1, Article 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 Article 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 Article 54 of the Patent Act, an entry to this effect shall be made in the Register of Patents.

1) Regulation. no. 286/1996, Article 31 (Valid from June 1, 1996)

[Article 48]¹⁾

An entry regarding the transfer of a patent or of the granting of a licence under Article 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 sample of a [biological material]³⁾ has been transferred , cf. paragraph 3, Article 17b, or the Patent Authority has received a copy of a certificate from the new depository, cf. paragraph 3, Article 17c, an entry regarding the transfer or the new deposit shall be made in the Register of Patents.

[Requests for entries in the Register, made in accordance with the first and second paragraphs, shall be made in writing and shall be accompanied by suitable documents concerning the change.]²⁾

1) Regulation. no. 286/1996, Article 32, (Valid from June 1, 1996)

2) Regulation. no. 286/1996, Article 32, (Valid from June 1, 1996)

3) Regulation no. 534/2004, Article 13, (Valid from June 30, 2004)

Advertisements of the Patent Authority

Article 49

[All advertisements and announcements regarding patents or patent applications that should be published for the general public according to laws or regulations shall be published in the Gazette, which shall be published by the Patent Office.

It is permissible to publish and distribute the Gazette electronically, including on the Internet.

Should the publication of the Gazette become solely electronic, those who still wish shall be allowed to buy a printout of the Gazette at the Patent Office by paying the cost of printing and sending it.] ¹⁾

1) Regulation no. 534/2004, Article 14, (Valid from June 30, 2004)

[Supplementary protection for pharmaceuticals and plant protection products.]1)

Article 50 In this Chapter, the following expressions shall have the meanings ascribed to them below : 1) supplementary certificate: a certificate of supplementary protection for pharmaceuticals or plant protection products,

2) EU Regulations: Regulations of the Council of the European Union No. 1768/1992, concerning the creation of a supplementary protection certificate for medicinal products, and No. 1610/1996, concerning the creation of a supplementary protection certificate for plant protection products, as amended and extended by Points 6 and 6a of Annex XVII to the Agreement Establishing a European Economic Area on Intellectual Property, Protocol I on horizontal adaptation and other provisions of the agreement.

1) Regulation. no. 700/1997 (Valid from January 2, 1998)

Article 51 An application for supplementary protection must be submitted in writing to the Patent

Office on forms intended for this purpose available from the Office. The application forms must be signed by the applicant or his agent. In addition to what is specified in Article 8 of the EU Regulations, an application must

contain information on which of the applicants, if more than one are applying jointly for supplementary protection, is empowered to receive notifications from the Patent Authority. At the request of the Patent Authority the applicant must provide the supplementary information on the product necessary for the processing of the application.

The date referred to in Point iv of sub-paragraph a, of Paragraph 1, Article 8, and subparagraph d of Paragraph 2, Article 9, of the EU Regulations, shall be regarded as the date upon which the health authorities sign the marketing authorisation.

If an applicant has an agent, a written power of attorney shall be included.
The application shall be accompanied by the prescribed fee.

Article 52

Notice of the application for supplementary protection shall be published in the [Gazette]¹⁾. The notice shall include the information specified in Paragraph 2 of Article 9 of the EU Regulations, together with the application number and filing date.

1) Regulation no. 534/2004, Article 15, (Valid from June 30, 2004)

Article 53

An application for supplementary protection shall be in Icelandic. If the documentation accompanying an application is in a language other than Icelandic, Danish, Norwegian, Swedish or English, a translation into one of these languages shall be included. The Patent Office may, however, grant an exemption to the demand for translation of the accompanying documents. The Patent Office may demand that an authorised translator, or other party recognised by the Patent Authority, certify the translation.

Article 54

An application for supplementary protection may not be altered so as to apply for supplementary protection for another product than was originally specified in the application or supplementary certificate pursuant to another basic patent.

Article 55 The Patent Office shall keep a journal of applications filed. The following information shall be entered in journal: 1) the information listed in sub-paragraphs a-e of Paragraph 2, Article 9, of the

EU Regulation,

2) the application number and date of filing,

3) if the applicant has an agent, the name and address of the agent,

4) correspondence concerning the application and fees which have been paid,

5) information concerning the processing of the application.The record and the

patent documents shall be accessible to the public.

Article 56 In processing applications the Patent Authority may take into consideration any sort of information to which they have access. The Patent Authority shall examine whether the conditions of sub-paragraph d of Article 3 of the EU Regulations are fulfilled.

Article 57

With regard to the time limits of Paragraph 3, Article 10, of the Regulations, the provisions of the second and third paragraphs of Article 15 and Article 16 of the Act shall apply. The prescribed fee for re-opening a file must be paid.

Article 58

When notice is published of the issuing of a supplementary certificate, in accordance to Paragraph 1 of Article 11 of the Regulations, the number of the application for a supplementary certificate, date of application and registration number of the certificate must be specified in addition to the information referred to there.

The supplementary certificate shall include the information specified in the first paragraph.

Article 59 The Patent Office shall keep a register of supplementary certificates issued. The information listed in Article 58, and any amendments to this, shall be entered in the register.

The information referred to in Articles 47 and 48 shall also be entered into the register of supplementary certificates.

Article 60 If an application for a supplementary certificate is finally rejected or dismissed, a notice of such shall be published, together with the information referred to in Article 4.

Article 61 An annual fee shall be paid for each year commenced after the period of validity of the basic patent has elapsed. The annual fee is payable on the last day of the first calendar month of the year in which it falls due. The annual fee may not be paid until three months prior to the due date. The annual fee may be paid, with the prescribed increase, within six months of the due date.

Article 62

If an application for a supplementary certificate is finally rejected or dismissed, the applicant may refer such decision by the Patent Office to the Patent Board of Appeal within two months of the date he received notice of the decision. If the Patent Board of Appeal confirms the decision of the Patent Office, the applicant may refer the decision to a court. The provisions of Article 25 of the Patent Act shall apply mutatis mutandis to such referrals.

A decision on the issuing of a supplementary certificate may not be referred to the Patent Board of Appeal. Anyone may initiate proceedings for the invalidation of a supplementary certificate.

A person initiating proceedings in accordance with the second paragraph must notify the Patent Office of such when so doing. The provisions of Article 63 of the Patent Act shall apply mutatis mutandis to such cases.

Article 63

[An applicant for a supplementary certificate who is not domiciled in Iceland must have an agent, residing in the European Economic Area, who can represent the applicant in all matters concerning the application. The name and address of the agent shall be entered in the Registry of Patents.]¹⁾

1) Regulation, no. 289/2002, Article 1(Valid from April 9, 2002)

Article 64

The provisions of Article 72 of the Patent Act shall apply mutatis mutandis to any right lost when the time limits of the EU Regulations have not been respected. Re-establishment is also possible in cases where a supplementary certificate has become invalid pursuant to subparagraph c of Article 14 of the EU Regulations.

The prescribed fee for a request for re-establishment must be paid.]¹⁾

1) Regulation. no. 700/1997, Article 16 (Valid from January 2, 1998)

Receiving of international applications

[Article 65]¹⁾²⁾

[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 fulfils the conditions in paragraph 1.

1) Regulation. no. 266/1996, Article 33 (Valid from June 1, 1996)
2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

[Article 66]¹⁾²⁾ 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 transfer fee]³⁾ 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 subarticles 1 4, paragraph 2 are not paid in due time or by the date of deferment granted, the provisions of Rule 16 bis. of the Regulations accompanying the Patent Cooperation Treaty shall apply.

1) Regulation. no. 266/1996, Article 33 (Valid from June 1, 1996)
2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)
3) Advertisement no. 166/1996 (Valid from Marts 23rd, 1995)

[Article 67]¹⁾²⁾

[An international patent application filed with the patent authorities in this country shall be submitted in one copy. The application shall be in Danish, Norwegian, Swedish or English. Information given on the application form may be in English even though the other documents may be in any one of the afore-mentioned languages.]³⁾

1) Regulation. no. 266/1996, Article 33 (Valid from June 1, 1996)
2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)
3) Regulation. no. 661/1995, Article 3 (Valid from January 1, 1996)

[Article 68]¹⁾²⁾ 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.

1) Regulation. no. 266/1996, Article 33 (Valid from June 1, 1996)
2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

[Article 69]¹⁾

An applicant who is not domiciled in Iceland must have an agent, residing in the European Economic Area, who can represent the applicant in all matters concerning the application. The name and address of the agent shall be entered in the Registry of Patents.

1) Regulation. no. 289/2002, Article 2 (Valid from April 9, 2002)

[Article 70]¹⁾²⁾

The Patent Authority shall in accordance with the Patent Cooperation Treaty and its Regulations send international patent applications to the World Intellectual Property Organization.

1) Regulation. no. 266/1996, Article 33 (Valid from June 1, 1996)

2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

Proceeding with international patent applications

[Article 71]¹⁾²⁾

When an international application is proceeded with in accordance with Article 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.

1) Regulation. no. 266/1996, Article 33 (Valid from June 1, 1996)

2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

[Article 72]¹⁾²⁾

[If the description, patent claims, abstract and text of drawings of an international application is not in Icelandic, Danish, Norwegian, Swedish or English a translation of this documentation into one of the above-mentioned languages shall be filed at the same time as the application is proceeded with in accordance with Article 31 of the Patent Act or upon reviewing a decision in accordance with the first paragraph of Article 38 of the Act. If the translation is in a language other than Icelandic, an Icelandic translation must be submitted, in accordance with the provisions of Article 3, which also applies with regard to translations of other application documentation.]³⁾

[The Patent Authority may lay down rules to limit the obligation to provide a translation if only part of an international application is transferred to this country.]⁴⁾

1) Regulation. no. 266/1996, Article 34 (Valid from June 1, 1996)

2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

3) Regulation. no. 679/1996, Article 34 (Valid from January 1, 1997)

4) Regulation. no. 679/1996, Article 2 (Valid from January 1, 1997)

[Article 73]¹⁾

The time limit provided for in Section 34 of the Patent Act shall expire at the same time as the time limit due to proceeding with an application as provided for in the first paragraph of Article 31 of the same Act.

1) Regulation. no. 289/2002, Article 3 (Valid from April 9, 2002)

[Article 74]¹⁾²⁾

If an applicant for an international application has fulfilled all the conditions laid down in the provisions of Article 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.

1) Regulation. no. 266/1996, Article 35 (Valid from June 1, 1996)

2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

[Article 75]¹⁾²⁾ Notifications as referred to under paragraphs 1 or 3, Articles 36 or 37 of the Patent Act shall be sent to the applicant by registered mail.

1) Regulation. no. 266/1996, Article 35 (Valid from June 1, 1996)

2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

[Article 76]¹⁾²⁾

The time limit in which a review of a decision may be requested under paragraph 2, Article 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, Article 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.

1) Regulation. no. 266/1996, Article 35 (Valid from June 1, 1996)

2) Regulation. no. 700/1997, Article 17 (Valid from January 2, 1998)

[European patent applications, patents etc.]¹⁾

1) Regulation no. 852/2004, Article 13, (Valid from November 1, 2004)

[Article 77

When a European patent application is filed with the Icelandic Patent Office, the filing date shall be entered on the documents, a receipt be issued for receiving the documents, and the European Patent Office be informed of the Icelandic Patent Office's having received the application, cf. Paragraphs 2 and 3 of Rule 24 in Implementing Regulations to the Convention on the Grant of European Patents.

The Patent Office shall forward the application to the European Patent Office, in accordance with Article 77 of the European Patent Convention and the relevant provisions of the Implementing Regulations.]¹⁾

1) Regulation no. 852/2004, Article 13(a), (Valid from November 1, 2004)

[Article 78

When in accordance with Paragraph 2 of Art. 136 of the European Patent Convention the Patent Office receives a request from an applicant for a European patent application to be converted into a national application, the Patent Office shall immediately forward the request, along with a copy of the application, to the Patent Authority in the states specified in the request.]¹⁾

1) Regulation no. 852/2004, Article 13(b), (Valid from November 1, 2004)

[Article 79

When a European patent application has been forwarded to the Icelandic Patent Office pursuant to Art. 136 of the European Patent Convention, the Patent Office notifies the applicant of this as soon as possible.

Within three months of the day on which the Icelandic Patent Office sent the notification according to Paragraph 1, the applicant shall pay the prescribed application fee and file a translation of the application in accordance with Paragraph 1 of Article 3.]¹⁾

1) Regulation no. 852/2004, Article 13(c), (Valid from November 1, 2004)

[Article 80

The Patent Office shall keep a separate record of the European patent applications whose translations have been filed in accordance with Art. 83 of the Patents Act. The record shall be accessible to the public.

The following points shall be entered into the record: 1) the number of the application at the European Patent Office, 2) the name and address of the applicant, 3) the date of filing the translation or corrected translation with the Patent Office, 4) the date of publishing a notice on the filing of the translation or corrected translation, 5) the filing date of the application, 6) the information mentioned in Points 4-6, 13 and 16-17 of Paragraph 3 of Article 7, 7) if the application is a divisional application, the date of filing the divisional application.

If a translation is filed and the fee paid according to Paragraph 1 of Art. 77 of the Patents Act, that date and the date of the advertisement according to Paragraph 3 of Art. 77 shall be entered in the record.]¹⁾

1) Regulation no. 852/2004, Article 13(d), (Valid from November 1, 2004)

[Article 81

An applicant shall file translations with the Icelandic Patent Office and pay the publication fee according to Paragraph 1 of Art. 77 of the Patents Act within four months of the day on which the European Patent Office published notification of granting the patent or decided to maintain the patent as amended.

A translation pursuant to Paragraph 1 of Art. 77 of the Patents Act shall be accompanied by information on the patent number and the name and address of the applicant or patent holder. Should this condition not be fulfilled, the translation shall be regarded as not having been filed.

If the conditions according to Paragraph 1 are not fulfilled, the European patent shall not enter into force in Iceland.]¹⁾

1) Regulation no. 852/2004, Article 13(e), (Valid from November 1, 2004)

[Article 82

A translation pursuant to Art. 83 of the Patents Act shall be accompanied by information on the application number and the name and address of the applicant. Should this condition not be fulfilled, the translation shall be regarded as not having been filed.]¹⁾

1) Regulation no. 852/2004, Article 13(f), (Valid from November 1, 2004)

[Article 83

An advertisement published about the submission of translations according to Art. 77 of the Patents Act shall present the information mentioned in Paragraph 2 of Art. 81, in addition to information on the technical classification of the patent, the title of the invention, the filing date of the application, and the date when the European Patent Office published notification of granting the patent or of deciding to maintain the patent as amended. In the event of claiming priority right, it shall be stated where the priority application was filed along with the filing date of that application and the application number for that application.

An advertisement published about the submission of a translation according to Art. 83 of the Patents Act shall present the information mentioned in Art. 82, in addition to information on the technical classification of the application, the title of the invention, and the filing date of the application. In the event of claiming priority right, it shall be stated where the priority application was filed along with the filing date of that application and the application number for that application.]¹⁾

1) Regulation no. 852/2004, Article 13(g), (Valid from November 1, 2004)

[Article 84

If a translation is corrected according to Art. 86, a new copy of the entire translation shall be submitted, showing clearly what is involved in the corrections. The corrected copy must be accompanied by information on the number of the patent or application and on the name and address of the patent holder or applicant.

Should the conditions according to Paragraph 1 not be fulfilled, the corrected translation shall be regarded as not having been filed.

An advertisement published pursuant to Paragraph 1 of Art. 86 of the Patents Act shall present the information mentioned in Art. 82, in addition to information on the technical classification of the application, the title of the invention, and the filing date of the application.

An advertisement published pursuant to Paragraph 2 of Art. 86 of the Patents Act shall present the information mentioned in Art. 82, in addition to information on the technical classification of the application, the title of the invention, and the date on which the Patent Office received the corrected translation.]¹⁾

1) Regulation no. 852/2004, Article 13(h), (Valid from November 1, 2004)

Spare parts and accessories for aircraft

[Article 85]^{1)2) 3)}

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.

1) Regulation no. 266/1996, Article 35 (Valid from June 1, 1996)

2) Regulation no. 700/1997, Article 17 (Valid from January 2, 1998)

3) Regulation no. 852/2004, Article 13 (Valid from November 1, 2004)

Entry into force

[Article 86]^{1)2) 4)} 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 Article 78 of the said Act.

[ ]³⁾

1) Regulation no. 266/1996, Article 35 (Valid from June 1, 1996)
2) Regulation no. 700/1997, Article 17 (Valid from January 2, 1998)
3) Regulation no. 286/1996, Article 36 (Valid from June 1, 1996)
4) Regulation no. 852/2004, Article 13 (Valid from November 1, 2004)

[Article 87]^{1) 3)}

[An application for a patent for a method for preparing pharmaceuticals, which was filed after 1 January 1995, may be altered so as to cover the product as well, cf. the second paragraph of Article 75 of the Patent Act. The change may not, however, cover any aspect which is not supported by the basic documents.

A request for change in accordance with the first paragraph must be filed with the Patent Authority before 1 January 1997.]²⁾

1) Regulation no. 700/1997, Article 17 (Valid from January 2, 1998)
2) Regulation no. 286/1996, Article 37 (Valid from June 1, 1996)
3) Regulation no. 852/2004, Article 13 (Valid from November 1, 2004)

Transitional provisions

1 The provisions of Article 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, subarticles (b) and (c). If, however, these documents are 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 filed.

c) The provisions of subarticle (b) shall also apply to applications which are filed after 1 January 1994. The provisions of Article 3 shall enter fully into force for applications which are filed after 1 January 1996.

2

The provisions of paragraph 1, Article 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. subarticle (a), transitional provision 1 above.

The provisions of paragraph 1, Article 21 enter fully into force for applications which are filed after 1 January 1996.

List
concerning entry into force provisions of regulations

No. 661/1995, 286/1996, 679/1996, 700/1997926/2001, 289/2002, 534/2004, 852/2004 and

536/2006.

Regulation No. 661/1995

Section 11 This Regulation is issued as authorised in Act No. 17/1991, as subsequently amended, and shall come into force on January 1, 1996.

Regulation no. 286/1996

Article 73 This Regulation is set by authority of Act No. 17/1991, as subsequently amended, and shall enter into force 1 June 1996.

Article 74

This Regulation shall apply to patent applications covered by Act No. 17/1991, as subsequently amended, and are undergoing processing by the Patent Authority at the time of its entry into force, with the following exceptions:

If notification that the laying open of an application to the public has been agreed

to has been sent before the entry into force of this Regulation, its processing shall

1)

be in accordance with the provisions of RCPA and ARCP as they were prior to 1 June 1996. Provisions concerning the change in effective date and time limit to file a divided 2) application in RCPA or ARCP, as they were prior to 1 June 1996, shall apply to applications filed before the entry into force of this Regulation.

Article 75

The provisions of Appendix II in Advertisement No. 575/1991 shall continue to apply to applications for pharmaceuticals which were filed or considered to have been filed before 1 January 1995.

Regulation No. 679/1996

Article 7 This Regulation is set by authority of Act No. 17/1991, as subsequently amended, and shall enter into force 1 January 1997.

Regulation No. 700/1997

Article 18 This Regulation, which is set by authority of the Patent Act, No. 17/1991, as subsequently amended, shall enter into force 2 January 1998.

Regulation No. 926/2001

Article 2

This Regulation shall apply to all patent applications which were filed on or from January 1, 2002.

Regulation No. 289/2002

Article 4 This Regulation, which is set by authority of Section 69 of the Patent Act, No. 17/1991, as subsequently amended, shall enter into force immediately.

Regulation No. 534/2004

Article 16 This Regulation, which is set by authority of Section 69 of the Patent Act, No. 17/1991, as subsequently amended, shall enter into force immediately.

Regulation No. 852/2004

Article 14 This regulation, issued under authority of Art. 69 and 90 of the Patents Act, No. 17/1991, as subsequently amended, shall enter into force on 1 November 2004.

Regulation No. 536/2006

Section 2 This Regulation, which is set by authority of Section 69 of the Patent Act, No. 17/1991, as subsequently amended, shall enter into force immediately.

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 ARCP = Announcement on Regulations Concerning Patent Applications, no. 575/1991