Instructions concerning Patent Applications No. 575/1991, as amended by regulation No. 661/1995, 286/1996, 679/1996, 290/2002 and 539/2004
of instructions concerning patent applications
No 575/1991 as amended by regulation No. 661/1995, 286/1996, 679/1996, 290/2002 and 539/2004.
The provisions of paragraph 3, Article 1 of the Regulation concerning patent applications (RCPA) regarding the range of application of the said Regulation shall also apply to these instructions.
(No provisions under this article)
Article 3 The [provisions of Article 50-55 of the RCPA]1) shall apply regarding the operating practices of the Patent Office as a receiving authority under the Patent Cooperation Treaty.
[The Swedish Patent Office (PRV) or the European Patent Office (EPO) shall, at the option of the applicant, serve as the international novelty search or preliminary examination institutions for international applications received by the Patent Office. If a request is made that PRV perform a novelty search or preliminary investigation of an international application it must be filed in Danish, Norwegian, Swedish or English. If a request is made that EPO perform these searches of an international application it must be filed in English.]2)
1) Regulation no. 286/1996, Article 38, a (Valid from June 1, 1996)
2) Regulation no. 286/1996, Article 38, b (Valid from June 1, 1996)
The patent application
The application and accompanying documents
Article 4 Patent applications shall be made on the application form printed for this purpose and shall be submitted in duplicate. Two copies of the description as well as of the drawings, patent claims and abstract shall be submitted. Amendments to these documents shall be submitted in duplicate. [The applicant or his agent must confirm applications sent by facsimile or comparable means by forwarding the signed originals within 14 days of the receipt of the facsimile.]1)
If an invention concerns or contains a sequence of 10 or more nucleotides or unbranched sequences with 4 or more aminoacids the application shall be accompanied by a specification of each sequence (fragment).
The specifications shall be submitted as an addition to the description and shall be in accordance with existing standards and shall appear immediately before the claims.
Article 5 [The description shall commence with an unnumbered cover page, giving a short, descriptive name for the invention, and shall otherwise be composed of the following:
1) A General Section specifying the range of use of the invention and the state of the art to which it applies. The explanation of the state of the art shall be supported by references to written texts which deal with the respective technology and which the applicant is aware of. In particular, the benefits of the invention shall be pointed out, considering known technology, and what solutions are necessary in order to achieve the intended result. The discussion just mentioned must be in accordance with what is presented in the claims and in this context may make reference to them. If it is not obvious from the nature of the invention how it might be utilised in the employment sector, this shall be clarified in the description. In the case of an invention respecting genes, the means shall be clearly stated for utilising a genetic nucleotide sequence or portion of a genetic nucleotide sequence in the employment sector. If the invention concerns altering the genetic characteristics of animals, it shall be stated whether the invention might cause suffering to the animal and, if so, whether the invention will bring a significant medical benefit for people or animals.
2) A Specifics Section describing the invention more precisely and in particular mentioning examples of its execution or forms of its execution, referring to drawings if appropriate. Through examples, the invention shall be described well enough to consider the claims sufficiently founded. If drawings are referred to, it will generally be necessary to present a list of them in the introduction to this section of the description.]1)
1) Regulation no. 539/2004, Article 1, (Valid from June 30, 2004)
Micro-organisms [and other organisms]1)which are described in a publication available to the public may be identified by their category names, and if considered necessary for clarity, by reference to the publications in which the systematic analytical process is described.
[Organisms]2) which have not been described before shall be identified distinctively in order to avoid confusion with other [organisms]3).
[Organisms]3) shall generally be described in the style used in recognized specialist publications in this field.
In the case of [organisms]2) available to the public, information shall be given on how a sample of the [organisms]2) may be obtained.
1) Regulation no. 539/2004, Article 2(a) (Valid from June 30, 2004)
2) Regulation no. 539/2004, Article 2(b) (Valid from June 30, 2004)
3) Regulation no. 539/2004, Article 2(c) (Valid from June 30, 2004)
If several independent claims are included in the patent claims, the description shall deal with each invention in the independent claims in the manner indicated in Article 5. Items in dependent claims (execution) for which protection is requested shall also be dealt with in the description to the extent considered necessary for assessment of the claim. It is sufficient that such discussion appear in the characterising section of the description.
Invented names shall not be used.
Trademarks may be used in exceptional circumstances where it is difficult to differentiate a related product with a recognized name. In such cases the fact that the term used is a trademark shall be indicated. If the trademark is registered in Iceland this shall be indicated, where possible, with the symbol "R" in circle. The design and features of the product shall always be clearly described.
Article 8 The description and drawings shall be kept apart on separate sheets of paper. Tables and chemical or mathematical formula may appear in the description.
Where reference is made to published data the instructions under Article 83 shall apply.
A patent claim shall include an introduction in which the items detailed in subarticles 1 and 2, paragraph 1, Article 14 RCPA appear, followed by a characterising section in which items detailed in subarticle 3 of the aforesaid section appear. The characterising section shall begin with the words "Characterised by" or other comparable expression.
Other formats for the patent claims may be permitted in special circumstances, e.g. in the case of use claims.
Article 11 Details shall be given in each patent claim of the technical characteristic features which are necessary to achieve the intended results.
A product shall usually be identified by a description of its composition, and an apparatus or machine by a description of the design features of each component. An invention may further be distinguished by describing the function of individual components if it is not possible to describe the invention effectively in any other way. Products, particularly in the field of chemistry, may, in the case of serious problems of definition, be distinguished by describing the production process ("product-by-process") and if necessary by stating other characteristic features of the product.
Article 12a Micro-organisms [and other organisms]1) which have previously been described shall be identified by their category names.
[Organisms]2) which have not previously been described may be identified in the description by direct or indirect reference to the section of the description which deals with their biological features.
1) Regulation no. 539/2004, Article 3(a) (Valid from June 30, 2004)
2) Regulation no. 539/2004, Article 3(b) (Valid from June 30, 2004)
When a patent application is made for substances or compounds of substances which are considered known as individual substances, and appeal is made to the fact that such a substance or compound of substances is used for the first time in the processes referred to in paragraph 3, Article 1 of the Patent Act, the use shall be explained in the patent claims.
A process shall be identified by describing its prerequisites (e.g. preparations, equipment, etc.) and its full cycle. (See Appendix II for more detail regarding patent applications relating to pharmaceuticals [which were filed prior to 1 January 1995.]1) )
In claims relating to use, specific information shall be provided regarding the particular purpose for which the product, substance, equipment etc. or relevant process is used. If necessary, more specific information shall be provided regarding the product or process.
Several independent claims, unrelated to each other, e.g. a claim relating to a product or a claim relating to a process, may be presented in the same application, notwithstanding that the inventions are explained, according to the presentation of the claims, with descriptions which are comparable in technical respects.
Several independent claims of the same type (which relate to the same claim class) shall only be presented, if there are obvious problems in providing a precise enough description of the invention, e.g with different examples, if they were combined in the same patent claim. An invention of the type "sender-receiver" may also be explained in separate independent patent claims.
An independent claim may be presented parallel to another independent claim. This shall apply in cases where an application contains independent claims which are related to each other in the manner referred to under Article 48. A parallel and independent patent claim shall include a complete description of the invention in question. A parallel and independent patent claim may be linked to another claim. Dependent claims shall be placed immediately following those independent claims to which, directly or by linkage to other dependent claims, they refer.
Dependent claims shall not deal solely with self-evident or simple and obvious solutions regarding design or process technology. An inventory which merely lists examples of obvious items shall not be permitted in the patent claims.
In the introduction and distinguishing features section of a patent claim cross-reference shall be made to drawings (cross-reference symbol in brackets). However, notwithstanding the crossreferences,the claim shall contain a clear explanation of the subject-matter for which protection is requested. Generalised comments such as "as has been described" or "as shown in the drawing" shall not be used in patent claims. In exceptional circumstances reference may be made directly to a graph or similar information presented in a drawing.
Trademarks shall usually not appear in patent claims.
(Paragraph 3, Article 8 PA and Article 18, RCPA)
Article 21 Abstracts shall be produced in such a way as to be of optimum assistance for novelty search in the technical field in question.
The abstract shall contain a short overview of the contents of the description, patent claims and drawings. The abstract shall state the technical field to which the invention relates. An abstract shall be worded in such a way that the following are easily understood: the technical problem the invention relates to, the fundamental features of the solution which the invention entails and in particular the main use of the invention. The abstract shall, where appropriate, contain the chemical formula which, among those contained in the application, best characterises the invention. The abstract shall not discuss the potential advantages of the invention nor make claims as to its value or potential for scientific use.
The abstract shall be intended to aid individuals in deciding whether they need to study the application itself or the patent itself.
The abstract shall not exceed 150 words.
Article 22 If drawings accompany the patent application the applicant shall state in the application form which drawing he wishes to appear with the abstract. If he fails to do this or if the Patent Office deems another drawing to have more explanatory value than the one selected by the applicant, the drawing selected by the Patent Office shall be published with the abstract. If the Patent Office considers it entirely unnecessary to publish a drawing with an abstract, no drawing need be included. Where technical characteristic features are explained in the abstract and also appear in the drawing, a cross-reference shall be provided in brackets after each main feature.
Drawings shall be executed on A4 paper. If there are more illustrations than can be fitted on one sheet, further sheets shall be used. To aid reprinting or duplication, e.g. offset printing, one copy shall be on strong, white, matt, opaque paper or other durable material. The area covered by drawings shall not exceed 26.2x17.0cm. There shall be no frame or boarder around the paper. The minimum margins shall be 2.5cm top and left, 1.5cm right, and 1.0cm at the bottom.
Drawings shall not be folded or fixed together.
The drawing shall include those items which are necessary for the understanding of individual parts of the description and these parts shall be identified with the same letters of the alphabet or numbers in both the description and the drawing. No reference signs other than appear in the description shall be used in the drawing and signs shall not be used to a greater extent than is necessary for the clarity of the description. The drawing shall not contain explanatory comments, except for brief explanations such as "water", "steam", "section A-B" or "closed". In charts or graphs which show a production cycle or in diagrams of electrical circuits descriptive symbols shall be used which are immediately comprehensible.
Article 25 The illustrations and text of the drawings shall be executed on durable paper, in clear black lines without colour.
All cross-sections shall be hatched. All printed symbols (numerals or letters of the alphabet) on the drawings shall be clear and printed in an easily readable script. Illustrations and printed symbols shall be suitable for offset printing and for reduction in size by 15%. In the case of complex illustrations, detail shall not be such that the drawing becomes unclear. Illustrations shall be separated from each other by a suitable space. Illustrations shall, regardless of the number of pages, be numbered consecutively, or if deemed convenient, with letters of the alphabet or both letters and numerals, preferably in the same order as the illustrations appear in the drawing. Identical items of the same type shall be labelled with the same symbol in all the illustrations.
Specific provisions concerning the description, claims and abstract (Article 4, RCPA) and accompanying documents
The description, claims and abstract shall be submitted in black print on strong, opaque, white A4 paper suitable for offset printing with 15% reduction. The text shall have line spacing of 1 1/2, a 2.5-4 cm left margin and 2-4 cm top margin. The text shall be justified with a right margin of 2-3 cm. There shall be a similar space at the bottom of the page. Only one side of the paper shall be printed. The text shall have a uniform appearance and individual characters shall be clear and distinct. Hand-written symbols or formulæ shall be in black.
The expression "characterised by" or other comparable expressions shall be printed as shown (with spaced type).
Pages for the description, claims and abstract shall be numbered consecutively with Arabic numerals. Page numbers shall be centred at least 2 cm from the upper edge of the page without full points or dashes before or after. Every fifth line of the description and claims shall be numbered at least 2.5 cm from the left edge. The patent claims may be printed on a separate sheet. The abstract shall be printed on a separate sheet.
If amendments are made to [a particular copy of the description, together with the claims and drawings, which is intended for the award of a patent]1) the said amendments shall be executed in such a way (e.g. by pasting over or erasing text) that they are not visible in the offset printed version.
1) Regulation no. 286/1996, Article 41 (Valid from June 1, 1996)
All units of measurement shall be metric (SI) or, where measurements are provided in other units the SI equivalent shall be given in addition. Temperature shall be indicated in degrees Celsius or, if appropriate, in degrees Kelvin. Density (specific gravity) shall also be indicated in metric units. International norms shall be adhered to when indicating mathematical formulæ and units for the measurement of electricity, heat, sound, light and magnetism. In the field of chemistry generally recognised symbols shall be used for atomic weight, molecular and/or structural formulæ. In other respects, only technical terminology, signs and symbols which are generally used in the field in question shall be employed.
Article 28 Letters to the Patent Office shall be executed on white paper of a size not larger than A4. The application number shall be indicated on the first page of the letter.
Article 29 Models and any samples shall only be submitted if such is considered essential for the understanding of the description. Accompanying items of this sort shall usually not be returned.
Authorisation of professional representatives
[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. An applicant domiciled in Iceland, can choose to have an agent. The name and address of the agent shall be entered in the Registry of Patents.]1)
1) Advertisement, no. 290/2002, Article 1(Valid from April 9, 2002)
A professional representative shall be granted authorisation either through the filing of a special document (deed of authorisation) signed by the applicant or by including the authorisation in the application form (subarticle 2, paragraph 3, Article 2 RCPA). The deed of authorisation shall contain information on the name, home and postal address of the applicant and of the person to whom authorisation is granted, as well as the name of the invention and/or the application number.
Where general authorisation is granted this shall be referred to in every application to which it applies.
Article 32 If a representative is also empowered to receive a summons or other notifications relating to a possible patent, cf. Article 66 PA, this shall be stated in the authorisation.
Priority claim and its implications
A claim of priority (cf. Article 6 PA) which is made after an application has been filed shall be made by special request. The request shall be submitted within 3 months after the effective date of the application and shall include the information referred to in Article 10 RCPA.
If a certificate and copy as referred to under paragraph 1, Article 11 RCPA is filed with the Patent Office together with a previously or simultaneously filed patent application, and the applicant refers to these documents or requests priority on the basis of an application which was filed in this country, the said certificate or copy shall only be filed if the Patent Office so requests.
If a valid claim of priority is in process when the application becomes available to the public in accordance with Article 22 PA, the content of the application shall be considered known to the extent that the content appears in the priority document (cf. paragraph 2, Article 2 PA) as of the priority date.
The withdrawal of a priority claim shall be filed in writing.
International novelty search
Article 37 The requirements of format which apply for international patent applications also apply, mutatis mutandis, for patent applications for which an international novelty search is requested.
[If a patent application is not in a language recognised by the international institution handling the novelty search (i.e. the Swedish Patent Office or the European Patent Office) a translation into a specified language shall accompany the claim for an international novelty search, cf. Article 3.]1)
1) Regulation no. 286/1996, Article 42 (Valid from June 1, 1996)
Translation of documents accompanying the patent application [(Articles 3 and 57 RCPA)]1)
1) Regulation no. 679/1996, Article 3 (Valid from January 1, 1997)
[(No provisions under this Article.)]1)
1) Regulation no. 679/1996, Article 4 (Valid from January 1, 1997)
Article 39 [The Patent Office may require the certification of a translation of the description, patent claims, abstract and text of drawings, as referred to in Article 31 of the Patent Act.]1) It shall not be necessary to translate that part of the application which an international searching authority deems to relate to another independent invention, except where the Patent
Authority requests such translation, provided the applicant has not paid additional fees for the application to the international authority in question (Article 17(3a) PCT). The translation may further be limited to that part of the application which has been proceeded with after amendment instituted by the International Bureau (Article 19(2) PCT). It shall not be necessary to translate any part of an international application which is not proceeded with after amendment by the International Bureau (Rule 66 PCT) or due to the exception provisions in paragraphs 2-4, Article 1 PA or paragraph 2, Article 75 PA.
If an applicant wishes to avail himself of the opportunity referred to above to except a particular part of the application from translation, he shall make a declaration clearly detailing which part of the application is excluded in the translation. The declaration shall also include a statement of the reasons for exclusion.
1) Regulation no. 679/1996, Article 5 (Valid from January 1, 1997)
Documents relating to patent applications and filed with the Patent Office (e.g. application form, opposition and responses) may be received notwithstanding that they are in English, French or German if there are significant reasons and if there is no objection from other parties to the case.
If other documents accompanying a patent application (namely, deed of authorisation, document of transfer of title and priority document) are in English, French, German, Danish, Norwegian or Swedish, a translation into Icelandic shall not be required unless considered essential in individual cases. If the said documents are in a language other than the languages referred to here above, an Icelandic translation shall be filed unless the Patent Authority deems it possible to make an exception in this case.
Translations requested under Articles [39-40]1) shall be certified by the translator or by those responsible for the translation, unless the Patent Authority decides in individual cases that another form of certification shall be filed.
1) Regulation no. 679/1996, Article 6 (Valid from January 1, 1997)
The processing of patent applications
Errors subject to immediate rectification
Applicants shall be required by letter (notification of error in format) to rectify the following errors:
1) The signature is missing from the application.
2) The application fee has not been paid in full.
3) The special fee for application by telefax has not been paid.
4) The name(s) of the inventor(s) is not indicated.
[5) The name and address of the professional representative is not indicated.]1)
6) [The description, patent claims or abstract are missing from the documents
originally filed, or a translation of these documents has not been filed within the specified time limit, cf. Article 3 of Regulation accompanying the Patent Act]2)); or a drawing referred to in the description, patent claims or abstract is missing; or similarly, the format or presentation of the aforementioned documents is such that a novelty search clearly cannot be commenced.
Notifications of formal errors are to be communicated as quickly as possible after the application has been filed and prior to the application becoming subject to novelty search. The notification shall indicate that the application may be shelved or refused if the errors are not rectified (paragraph 2, Article 15 and Article 16 PA).
If accompanying documents which the applicant has inventoried are missing the said applicant shall be notified immediately. The same applies if the applicant has failed to provide documentary proof of his title to the invention or in the case of formal errors in the deed of transfer.
1) Advertisement, no. 290/2002, Article 2(Valid from April 9, 2002)
2) Regulation no. 661/1995, Article 9 (Valid from June1, 1996)
[(No provisions under this Article.)]1)
1) Regulation no. 286/1996, Article 44 (Valid from June 1, 1996)
Article 44 Applicants shall be advised to consult specialists if the presentation of the documents is such that assistance appears necessary.
If a communication is received indicating that the application has not been withdrawn and, in addition, the errors referred to in paragraph 1, Article 42 have not been rectified, a decision on the issue shall be taken as quickly as possible, unless there is considered to be reason to send the applicant a new notification.
Unity of invention
(No provisions under this Article)
Inventions based on a single type of claim
In addition to the subject-matter dealt with in an independent claim it is possible in a dependent claim (cf. subarticle 2, paragraph 2, Article 15 PA) to bring to attention more specific explanations and emphases designed to increase the technical influence of the invention or other further effects related to the invention according to such an independent claim. The additional information shall however be in accordance with the provisions of Article 10 PA. In the case of combined inventions only dependent claims relating to particular forms of the components from which the invention is made shall be made if such form is important in order to bring the combination to work.
Inventions based on several types of claim
Article 48 The requirement for unity of inventions under Article 16 RCPA shall always be considered fulfilled if the application contains the following:
1) in addition to an independent claim which states a product, an independent claim
relating to a particular process for production of the product, and an independent
claim which designates the use of the product, or
2) in addition to a an independent claim which states a process, an independent claim
relating to specially developed equipment for the execution of the process, or
3) in addition to an independent claim which states the product, an independent claim
relating to a particular process for production of the product and an independent
claim relating to specially developed equipment for the execution of the process.
The processing of applications in relation to unity of invention
If the subject-matter of an application is obviously deficient in the sense that it does not fulfil the requirements of unity of invention, the applicant shall wherever possible be notified and the application corrected prior to the commencement of the novelty search.
If the Patent Office issues a notification to the effect that the application, for example, covers two inventions, A and B, which are independent of each other, the applicant shall not limit his application first to A and later, when it transpires that the said invention is already known, change the application so that it applies to B. In addition, an applicant shall not, in order to keep such a possibility open, align the application equally with A and B.
When an applicant has limited the claims at the request of the Patent Office concerning the unity of the invention, it shall be held that he has once and for all withdrawn that invention or those inventions which have been excised from the claims through the limitation.
If no international novelty search or international preliminary examination has been carried out on the patentability of part of an international patent application due to the fact that the application is deemed to relate to independent inventions, and if the applicant has failed within the prescribed time limit to pay the surcharge prescribed in Articles 17(3a) or 34(3a) of the Patent Cooperation Treaty, the Patent Office shall examine whether the application designates inventions which are independent of each other. If such is the case, the part of the application which has not been subject to novelty search shall be considered withdrawn as far as Iceland is concerned unless the applicant pays the prescribed surcharge within 2 months from the time that the authority notified the applicant of the conclusion of the examination. If the authority considers that the application does not designate inventions which are independent of each other, the application shall be proceeded with (Article 36 PA).
If an applicant requests protection for an independent invention in an international patent application, the application shall be divided (Article 22 RCPA) and the applicant shall pay a new application fee notwithstanding that the surcharge referred to in paragraph 1 has been paid.
Amendments to an application
Patent claims (Article 19 RCPA)
Numerical data and other symbols intended to explain the invention substantively may only be added to the claims if it is possible to show technically that such have foundation in the basic documents. Amendments may, however, be made to claims if such amendments regard corrections of printing errors or obvious translation errors, on condition that such amendments are likely to describe that which was initially intended (e.g. in respect of understanding of the subject-matter of the original text or the content of a possible priority document or the like).
In applying paragraph 2, Article 19 RCPA, the technical relationship rather than the formal relationship, i.e. the unity of the invention in light of the problem in question and its solution, shall be the principal criterion. Amendments regarding variants of the claims may be approved provided that there is a technical relationship and that such amendments have foundation in the basic documents.
Claims which are amended in violation of the provisions of paragraph 2, Article 19 RCPA shall be separated from the application through division or excision.
An applicant may only make amendments and additions to the description and accompanying drawings, including the addition of further examples of the carrying out of the invention, if such amendments and additions are considered essential for more precise explanation or correction or in order to bring a description into line with new or amended patent claims. Such amendments and additions shall not be so made that they suggest that the patent claims are more extensive or relate to something other than that which has foundation in the basic documents.
When an applicant files a new copy of a description he shall also file a declaration indicating in what respect the wording of the description is different from that of the earlier description and specifying the filing date of the earlier description. In addition the declaration shall also indicate to what extent the said amendments have resulted in the addition of new subject-matter. Such a declaration may, in most circumstances, be approved without further investigation.
Article 55 Minor amendments of the description, together with the date of the amendment and the author of the amendment shall be stated in the margin of the new copy.
Postponement of the effective date
[(No provisions under this Article.)]1)
1) Regulation no. 286/1996, Article 45 (Valid from June 1, 1996)
[(No provisions under this Article.)]1)
1) Regulation no. 286/1996, Article 46 (Valid from June 1, 1996)
Division and excision
Division occurs when a part of the basic documents (cf. Article 21 RCPA and Article 11 PA) of an application (parent application) is submitted as the basis for a new independent application (Article 22 RCPA).
Excision occurs when material which has no foundation in the basic documents of an application is added to a description, claims or in some other way and this is submitted as the basis for a new independent application (Article 23 RCPA).
There must be an unbroken continuity between a parent application and an application which results from division or excision. A new application may not, therefore, be filed after a final decision has been taken regarding the parent application. Division and excision shall therefore proceed prior to the granting of a patent on grounds of the parent application. If the parent application is refused or shelved, division or excision may proceed within the time limit for appeal or request for reopening of the case, regardless of whether the conclusion is appealed or the case reopened.
[(No provisions under this Article.)]1)
1) Regulation no. 286/1996, Article 47 (Valid from June 1, 1996)
In an application resulting from division or excision, the description together with accompanying drawings and patent claims which were filed on the same date as the application form for the new application shall be considered the basic documents of the application (Article 24 RCPA). Once such basic documents for the application, as described above, have been filed, data from the parent application shall not be added to the said application (cf. Article 19 RCPA).
Article 63 In the case of division or excision the applicant shall state on which part of the parent application the claims in the new application are based (cf. paragraph 1, Article 19 RCPA). Furthermore, the applicant shall state in the parent application that division or excision has taken place.
If a priority document refers to an invention which is not disclosed in the basic documents (cf. Article 21 RCPA) the applicant shall be deemed to have withdrawn that invention of his own free will. The application shall not extend to such an invention and thus division and excision shall not be applicable. This shall apply regardless of whether the priority document is filed prior to, at the same time as or after the filing of the basic documents.
Authorisations regarding division or excision
If an applicant has a professional representative, a deed of authorisation shall be filed with each new application in the case of division or excision. In lieu of a new deed, a photocopy or duplicate of the authorisation accompanying the parent application may be filed.
General accessibility of applications
[An 18 month period of secrecy, in accordance with the second paragraph of Article 22 of the Patent Act, shall commence on the filing date, or on the effective date if this is different from the filing date (i.e. in the case of division or excision), or on the priority date when priority is claimed in part or in full.]1) If priority is requested on the basis of several applications the period during which the application shall be kept secret shall be deemed to commence from the first day of priority. The period of secrecy shall terminate at closing time of the Patent Office on the calendar date corresponding to the first day of the period of secrecy. If the said calendar date does not occur in the month in question the last day of that month shall be the day of termination.
1) Regulation no. 286/1996, Article 48 (Valid from June 1, 1996)
(No provisions under this Article)
Substantive processing of an application
Independent claims shall be examined both for novelty and for patentability in other respects. Dependent claims shall usually only be examined in this way when circumstances put in question the patentability of the subject-matter stated in them or in independent claims which the dependent claims relate to.
Information on the results of the examination of an invention's patentability in another country
When the Patent Office requests information regarding examination of the patentability of an invention in another country, the applicant shall be granted a period in which to provide such information. At the request of the Patent Office the applicant shall also submit, within the prescribed time limit, a certified copy of the notification from the foreign authority regarding novelty of the invention and patentability in other respects or a declaration that he has received no notification in this regard (Article 29 RCPA).
If the applicant fails to submit the result of the examination as required or to submit the said declaration, the application shall be shelved in accordance with Article 15 PA. If an applicant refuses to file the result of the examination, the application shall be refused in accordance with Article 16 PA.
If the subject-matter for which the applicant requests protection is not clearly indicated in the application documents, or the invention is insufficiently described, the applicant shall be encouraged to file a new and clearer description together with claims prior to the commencement of the novelty search [(cf. paragraph 2, Article 8 PA)]1)
1) Regulation no. 286/1996, Article 49 (Valid from June 1, 1996)
Article 71 A novelty search shall be carried out on the basis of the material referred to in Article 26 RCPA.
The initial search shall be sufficient to enable a decision to be made as to novelty. It shall not always be necessary to examine all available material and the search may be terminated when sufficient evidence is considered to have been acquired for assessment of the patentability of the invention. (Execution of the novelty search is further dealt with in Appendix I.)
Article 72 The novelty search shall extend to the date on which the application is filed. This also applies when priority is claimed.
If the result of a novelty search carried out abroad has been communicated this shall result in limitation of the novelty search in this country with reference to the following: If the result of a novelty search originates from another Nordic state it shall usually be sufficient in addition to examine Icelandic material. If an international search report is available, including a novelty search of an international nature, the result of a novelty search done at EPO (European Patent Organization), from France, Germany, the Netherlands or Austria, the search shall usually be deemed sufficient when, in addition, Nordic material has been examined. If a result of a novelty search originates from the United Kingdom or the United States of America, in normal circumstances it shall be sufficient for the search to cover other material for which a search is obligatory (Article 71).
Novelty search with reference to earlier applications which have not been made available to the public
If an invention which is the subject of a patent application is not new in regard to material in an earlier Icelandic application which has not been made available to the public, and if the application has not been refused on other grounds, the general rule shall be that the final processing of the application shall be suspended until the earlier application has become available to the public in accordance with Article 22 PA, or until a final decision has been taken in regard to the said application within the time limit prescribed in that Article.
The same shall apply in respect of material in an earlier international patent application which shall become valid in Iceland if the authorities are aware of the subject-matter of such an
application. The final processing of the later application shall be continued when the
international application, after transfer to Iceland, becomes available to the public in accordance with Article 22 PA or lapses in respect of Iceland.
In both the above mentioned cases the applicant shall be informed of the possibility of an overlap.
The basic documents in a patent application (Article 21 RCPA) are considered novelty destroying according to subarticle 2, paragraph 2, Article 2 PA from the priority date, to the extent that their subject-matter has a basis in the priority document, or otherwise from the filing date.
The abstract and other application documents (additions to the description, written responses, priority documents) are novelty destroying from and including the date on which the documents became available to the public, cf. Article 22 PA.
The aforesaid also applies to international patent applications proceeded with in this country.
If the proprietor of an application upon which priority is based applies for a patent with other parties there shall be no requirement of confirmation that the latter enjoy priority. If the applicant for a patent in Iceland is an applicant with others in an application on which the priority of the Icelandic application is based, evidence of title shall be required from the latter.
The scope of an application may be extended in respect of the subject-matter of the priority document (partial priority) without cancelling the priority. Priority shall extend to all subject-matter indicated in the priority document, regardless of whether this is indicated in the claims or not. If an application and claims subsequently filed by the same applicant extend to matter which is disclosed only in the description (drawings) of the earlier application, the said application shall not be considered the first filed application in the Convention state, except with the fulfilment of the conditions under paragraph 2, Article 12 RCPA.
The basic documents shall also be used as a basis in the processing of an application for which priority is claimed. It shall therefore not be possible to add new matter to an Icelandic application by appealing to the priority document (cf. Article 64). Obvious errors and printing errors may, however, be corrected for the sake of consistency with the priority document.
[Examination of the application description prior to the approval of the awarding of a patent 1)]
Once it seems possible to approve the patent claims the description shall be checked [before notice is sent that a patent may be awarded.]2) This shall entail a check of whether the description fulfils requirements of form, whether it is consistent with the claims and whether it includes necessary examples of the carrying out of the invention. Other changes or corrections of the description and drawings shall not be required except in so far as they are necessary to enable a specialist to understand the invention (inventions) with the aid of the aforementioned
documents. Comments shall not therefore be made regarding wording, technical concepts, etc. except in order to avoid misunderstanding. Furthermore, it shall not be necessary to check whether all symbols in the drawings have been explained in the description. 1) Regulation.no. 286/1996, Article 50 (Valid from June 1, 1996) 2) Regulation.no. 286/1996, Article 51 (Valid from June 1, 1996) Classification Article 79 Patent applications shall be classified. Classification shall be according to the edition of The International Patent Classification current at the time and in accordance with The Guide. The edition is marked by a numeral after the abbreviation "Int.Cl.", which [from 1 January 1995 is as follows: "Alþj.fl.6" ("Int. Cl.6")] 1) 1) Regulation.no. 286/1996, Article 52 (Valid from June 1, 1996) Article 80 An invention or inventions which are disclosed in patent claims shall be classified. If, in a patent application, new technical data are disclosed which are not part of the invention itself but which are considered worth conserving, such data may also be classified (optional classification). In a number of technical fields the classification system has been improved either by the appending of a list of identification codes or by the use of classification codes as identification codes (hybrid system). Identification codes are intended to be a kind of supplement to the classification and are intended to give more complete information, e.g. by indicating the principal components, process stages and areas of use of the item which is classified. Article 81 The following applies for obligatory classification: An invention shall, if possible, be classified as a unified whole and individual parts shall not be classified separately. If it proves impossible to classify an invention (inventions) in one of the categories of the classification system further categories shall be used, so called multi-classification. The following are examples of cases in which multi-classification should be used: 1) when several independent claims are concerned which relate to inventions in different categories 2) when an independent claim relates to an invention which cannot be classified in one particular category, or 3) when claims relate to an invention which has potential for general use and can be used in one or more specialist fields, provided that the classification system contains both a general category and categories for specialist use. Multi-classification shall be avoided in the case of subcategories which belong to the same superordinate category. In the case of multi-classification the classification code of the division to which the invention mainly belongs shall appear first. Article 82
A satisfactory classification code shall contain a code for the field, category, subcategory or division (main division or subdivision). A division code consists of two numerals separated by a slash. When an identification code is used a colon shall replace the slash.
The code for an obligatory classification shall be indicated first. After a double slash a suggested code for an optional classification shall be printed. Identification codes linked to the classification code shall follow in brackets and finally identification codes which have no such links.
In other respects the codes shall be separated from each other by commas or by brackets around the linked pairs of classification codes and identification codes.
If more than one classification/identification code relating to the same subcategory follow each other, the subcategory shall only be indicated once.
Examples of presentation and order of classification codes and identification codes (cf. Part 87 in the manual to the IPC system (The Guide)):
C 08 F 210/16, 255/04 // A 61 K 47/00, C 09 J 151/06
(C 08 F 210/16, 214:06) (C 08 F 255/04, 214:06)
- B 29 C 65/08// B 29 K 83:00, B 29 L 23:18.
References to sources
In reports novelty destroying documents shall be indicated in the following manner:
1) Patent documents:
The international code letters for the countries (WIPO/ICIREPAT), the nature of the document or possibly the document code indicated in the document, the number of the document, reference to relevant part of the document when appropriate.
Applications which have been made available to the public shall be listed with their application numbers as well as the number of the document which the application has referred to, where such is the case.
DE B2 2 124 745, column 7, lines 15-36.
FR patent document 985 216, pp.2, left hand column, lines 9-13.
IS application no.2462, cf. patent no.1119.
2) Journals, series and abstracts: Full title or generally cited abbreviation, volume (year of issue), number or issue, publication date and place, author, title of article, number of pages and, when appropriate, more precise location of the relevant extract.
Example: Phys., Rev. 75, 891-2(1949)
Melliand, Textilberichte, 1969, bind 50, Heidelberg, R. Grösser,
"Jacquardeinrichtungen an Grossrundstrickmaschinen",
pp.1436-1445, especially pp. 1443, line 1 in column 1-line 18 in column 2;
illustration 19, 20.
CA 43, 2447 g.
3) Books and other publications, such as reports etc. which are not part of a series: Name of the author or editor, title of the publication, edition and volume, publisher, publication place and year, information on relevant pages.
H. Walton, "Microwave Quantum Theory", volume 2, Sweet and Maxwell, 1973, London, pp.138-192, especially pp. 146-148.
4) publications produced by companies: Information shall be as detailed as possible, preferably the name of the company and its address, title of the publication, place and year of publication and number of pages.
Record of documents used in oppositions
[Prior to the awarding of a patent]1) an inventory shall be compiled of the documents which the Patent Authority has presented and used in opposition to the application in its processing (record of hostile evidence). Documents shall be listed in the record of documents used in oppositions in the same manner as in the reports. In addition the relevant classification code for the patent document which has been presented may be indicated, though only the first shall be indicated if there are several classification codes on the patent document.
Under exceptional circumstances and when there are special grounds for doing so, a particular document may be excluded from the record or a document may be added which was not used against the application. E.g. documents which have been presented erroneously and/or have been deemed irrelevant shall not be included; conversely, documents referred to in written replies from an applicant or in an application from which the application involved originates through division or excision may be included.
If, due to a printing error, a case is proceeded with incorrectly in respect of e.g. country or number of the patent document, or number or page number of a journal cited,the error shall be corrected in the record of oppositions provided that the applicant is notified of the correction while the application is being processed. If such is not the case, the source may not be cited in the record.
Sources shall be cited in the following order in the record: First, Icelandic patent applications which are available to the public shall be cited, applications which have been laid open to public inspection and granted patents, then published international and European patent applications or abstracts from them and finally patent applications, applications which have been laid open to public inspection and granted patents from other countries in alphabetical order of country. Patent applications, documents for the laying open to public inspection and granted patents from the same country shall be cited in numerical order. Other sources shall be cited at the end of the record.
Patent applications which have been presented in accordance with subarticles 2 and 3, paragraph 2, Article 2 PA shall be indicated separately by the addition of »(PA Article 2.2.3)« after the application number.
[When a patent is awarded the aforesaid record shall be printed in the patent document under the heading "Documents presented". If new documents of opposition are presented as the result of opposition after the awarding, they shall be added to the record if the patent is to remain valid in altered or unaltered form.]1)
If no sources have been used this shall be indicated by a dash after the aforementioned heading.
1) Regulation no. 286/1996, Article 54 (Valid from June 1, 1996)
[Awarding of a patent]1)
[When the awarding of a patent has been approved documents relating to the application shall not be amended without prior notification to the applicant, except as regards obvious corrections of form in the description, claims or drawings or as regards information which is otherwise clearly unnecessary.]2)
1) Regulation no. 286/1996, Article 55 (Valid from June 1, 1996)
2) Regulation no. 286/1996, Article 56 (Valid from June 1, 1996)
[If the Patent Authority is of the opinion that a patent may be awarded, but the applicant has not yet indicated his approval of the text of the proposed patent, the provisions of the second and third paragraphs shall apply.
The Patent Authority shall give the applicant the opportunity to express himself, within two months' time, on the text of the proposed patent. If the applicant agrees to the text the provisions of Article 19 of the Patent Act shall apply.
If the applicant does not agree to the text, the processing of the application may continue. If the Patent Authority sees no reason to continue the processing the application shall be dismissed. Notification, cf. the first and second paragraphs, shall indicate that the application may be dismissed if the applicant does not agree with the text.]1)
1) Regulation no. 286/1996, Article 57 (Valid from June 1, 1996)
[If documents suitable for purposes of reproduction are not available when notification in accordance with the first paragraph of Article 19 of the Patent Act is sent, the applicant shall provide such documents within two months of the notification.
If the approved text of these documents has to be translated into Icelandic the four month time limit from the notification shall apply, [cf. Article 3 of RCPA]2)]1)
1) Regulation no. 286/1996, Article 58 (Valid from June 1, 1996)
2) Regulation no. 697/1996, Article 6 (Valid from January 1, 1997)
[Opposition shall be immediately entered in the Register of Patents and include the following:
1) the name and address of the opponent,
2) the name and address of the agent if there is one.
3) the date the opposition was received.
Rulings in an opposition case shall be recorded in the Register of Patents, cf. Article 39 of RCPA. The entry shall include the result and the date the result was published.]1)
1) Regulation no. 286/1996, Article 59 (Valid from June 1, 1996)
[If all opposition to a patent has been unequivocally withdrawn the Patent Authority shall investigate whether there is reason to proceed with the opposition case, cf. the second paragraph of Article 23 of the Patent Act. If the Patent Authority sees reason to make a substantial examination of the opposition, the proprietor of the patent shall be notified of the decision and the reasons explained. If such notification has not reached the proprietor of a patent within two months after the withdrawal of the final opposition the decision on the awarding of a patent shall remain unchanged.]1)
1) Regulation no. 286/1996, Article 60 (Valid from June 1, 1996)
[(No provisions under this Article.)]1)
1) Regulation no. 286/1996, Article 61 (Valid from June 1, 1996)
The [proprietor of the patent]1) shall receive copies of all correspondence and documents received from the opponent (Article 35 RCPA). Correspondence with the opponent shall, however, be restricted to matter deemed indispensable and essential to the investigation of the case. The opponent shall only be given the opportunity to comment on the first reaction of the applicant regarding the opposition if circumstances warrant. The opponent shall not be given an opportunity to comment further unless special circumstances warrant (paragraph 2, Article 35 RCPA).
When oppositions based on alleged public use are sent to an applicant the said [proprietor of the patent]1) shall be requested to state to what extent he recognises or rejects the justice of such information regarding public use received from the opponent.
The opponent shall be sent copies of correspondence to the [proprietor of the patent]1) regarding the substantive examination of the case at the same time as they are sent to the applicant.
Copies of filed documents which a party to the case has not previously been aware of shall accompany such copies and the final decision in the case.
1) Regulation no. 286/1996, Article 62 (Valid from June 1, 1996)
Article 95 If a verbal presentation is considered necessary for the processing of the opposition case, both [proprietor of the patent]1) and opponent shall be summoned.
1) Regulation no. 286/1996, Article 63 (Valid from June 1, 1996)
[(No provisions under this Article.)]1)
1) Regulation no. 286/1996, Article 64 (Valid from June 1, 1996)
Article 97 [If an opponent unequivocally withdraws his opposition or declares in writing that he no longer has any objection to the patent remaining unaltered, the said opponent shall be deemed to have forfeited his right to appeal any decision as to whether the patent shall remain unaltered.]1)
1) Regulation no. 286/1996, Article 65 (Valid from June 1, 1996)
Observation by a third party against the granting of a patent application
If, in information submitted in writing [in accordance with Article 41 of the RCPA,]1) reference is made to novelty destroying material other than public use the person responsible for the case shall immediately investigate whether there are grounds for commissioning a report on the case.
If the information relates to public use the main rule shall be that the case shall not be proceeded with prior to the expiry of the time limit for oppositions and only then if, in the letter of opposition, the information is explained.
1) Regulation no. 286/1996, Article 66 (Valid from June 1, 1996)
Article 99 Time limits granted under Articles 100-103 shall commence from the date on which the letter in question is received.
Article 100 The applicant has the following time periods [before notice is sent that a patent may be awarded]1):
1. Errors in format of the application (cf. Article 42)
if the application fee has not been paid 1 month if the application fee has been paid 3 months If errors in respect of the application fee relate only to the surcharge the latter time limit shall apply. The surcharge shall be according to the rate in force at the expiry of the time limit.
- First report regarding substantive examination 8 months
- New report including new evidence against 6 months
- Other reports 2-4 months
- Request for laying open to public inspection of the result of an examination of patentability carried out abroad 3-6 months.
1) Regulation no. 286/1996, Article 67 (Valid from June 1, 1996)
Time limits for responses in opposition cases:
[1. Oppositions—the applicant's first response 6 months
- Subsequent comments from the parties to the case 3 months
- Possible measures by the Patent Office 2-4 months]1)
1) Regulation no. 286/1996, Article 68 (Valid from June 1, 1996)
Time limit in which a case must be proceeded with under Article 17 PA 2 months
Article 103 When special circumstances warrant other time limits than are described above in Article 100-102 may be granted. Time limits granted under Article 100-102 shall only be extended if special circumstances warrant.
Entry into force
This advertisement is published in accordance with Article 37 of Regulation no. 574/1991 Concerning Patent Applications etc. accompanying Act no.17/1991. The Advertisement enters into force 1 January 1992 with the limitations referred to in Article 58 of the aforementioned Regulation and its transitional provisions.
Execution of novelty searches
The Patent Office shall sign an agreement with the Danish Patent Office (Patentdirektoratet) concerning assistance with examination and novelty search of applications, cf. paragraph 1, Article 27 RCPA.
The agreement shall inter alia prescribe the time that shall usually elapse between the Danish institution's receipt of a request and the making of a decision.
[The provisions of Article 26 RCPA, Articles 68 and 71-73 of AICP and instructions provided by the Patent Office to the Danish Patent Institution shall apply to the execution of the examination.]1)
In addition the Patent Office shall examine Icelandic material and other aspects within the scope of the Patent Act and accompanying Regulation, and shall take a decision on applications in the light of the results of the examination from the Danish Patent Institution.
1) Regulation no. 286/1996, Article 69 (Valid from June 1, 1996)
All patent applications filed in this country shall usually be examined by the Danish Patent Office. An exception may be made, however, if the same or similar application has been filed at one or more of the Patent Offices in the other Nordic countries. In such a case the applicant shall, within 6 months from the filing date or effective date (cf. Article 56 of the instructions), submit a declaration to that effect. The declaration shall also contain an undertaking to file the final result of the examination or novelty search regarding the application and, where appropriate, a certified copy of the granted patent.
1) Regulation no. 286/1996, Article 70 (Valid from June 1, 1996)
4 For the purpose of examination in Denmark the applicant shall file a translation of the description, patent claims and abstract in Danish, Norwegian, Swedish or English:
a) within three months from the filing date or effective date (cf. 56 of these
instructions) if the application has not at the same time been filed in another
country (basic application), or
b) within six months from the filing date or effective date (cf. Article 56 of these
instructions) if in the said application priority is claimed on the basis of a foreign
[Special provisions regarding the processing of patent applications for
pharmaceuticals which were filed, or are deemed to have been filed, prior to
1 January 1995.]1)
1) Regulation no. 286/1996, Article 71 (Valid from June 1, 1996)
[In accordance with the second paragraph of Article 75 of the Patent Act, No. 17/1991, prior to its amendment by Act No. 36/1996, patents may only be granted for particular production processes and not for the product as such.]1)
1) Regulation no. 286/1996, Article 72 (Valid from June 1, 1996)
If the novelty of the invention is considered to lie in the production process of the substance, the usual instructions for novelty search and examination of inventive step and unity of invention shall apply.
If the novelty of an invention is considered to relate only to the product, the claims shall be directed to an "analogous process". It shall then be possible to grant a patent for the production of a substance by chemical process even though there is nothing novel in the process as such that can be deemed patentable (i.e. is analogous to previously known chemical processes). The prerequisites for this are that the substance shall be new and that it contains, according to the description, unexpected and valuable features. The effectiveness of the substance and its use as a pharmaceutical shall be stated in the claims.
Other decisions regarding the unity of the invention shall not prevent the explication in the first independent claim of internally related diverse analogous processes (main reaction and by-reaction) for the production of one and the same pharmaceutical product. This product may be a chemical compound or group of chemical compounds with closely related chemical structure, i.e their general formula is the same and the unexpected and valuable features are the same.
5 Claims shall usually only cover those analogous processes for which there are examples in the description.
The following are examples of by-reactions which may be included in the same patent as the main reaction:
a) esterification from carboxylic acid
b) salt formation from carboxylic acid
c) etherisation of alcohols
d) acylation of alcohols
e) alkylation of amines
f) acylation of amines
g) salt formation of amines and formation of quarternary amino compounds
h) hydrogen saturation of aliphatic double bonds
i) oxidation of R-S groups for the formation of R-SO2
j) reduction of carboxylic groups to aldehydes
k) reduction of nitrogen groups to amino groups
l) conversion of racemic mixtures to chiral isomers
7 Where conditions for the unity of invention are concerned, an application shall refer either exclusively to process or exclusively to analogous process. Prior to the execution of a novelty
search the applicant, if necessary, shall state whether he is applying for protection of the invention as an analogous process or not.
Once the first novelty search report has been made, the applicant shall not alter a patent claim from an analogous process to a process unless this is done in a divided or excised application. If it transpires that the product is already known or that it has no unexpected or valuable properties the application shall be refused. However, alteration from a process to an analogous process may be made after the expiry of the above mentioned time limit.
concerning entry into force provisions of regulations
No. 661/1995, 286/1996 and 679/1996.
Regulation No. 661/1995
Article 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 come into force 1 January 1996.
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:
1) 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 be in accordance with the provisions of RCPA and ARCP as they were prior to 1 June 1996.
2) Provisions concerning the change in effective date and time limit to file a divided 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.
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. 290/2002
This Advertisement is set by authority of Section 69 of the Patent Act, No. 17/1991, as subsequently amended, cf. Article 42 of the Regulation concerning patent applications, etc. No. 574/1991, shall enter into force immediately.
Regulation No. 539/2004
This Advertisement is set by authority of Article 42 of the Regulation concerning Patent Applications, etc. No. 574/1991, as subsequently amended, cf. Section 69 of the Patent Act, No. 17/1991. This Advertisement shall enter into force immediately.
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