Islandia

Regulation on Patents No. 477/2012, with amendments

according to Regulation No. 938/2013 (Valid from 11 October 2013)

CHAPTER I Scope and definitions

Art. 1 Scope

Provisions of this Regulation apply to patent applications, patents and other rights granted on the basis of the Patents Act, No. 17/1991, as subsequently amended.

Art. 2 Definitions

For the purposes of this Regulation, the following terms shall have these meanings: 1. national patent application

a. a patent application filed with the Icelandic Patent Office as provided for in Art. 8 of the Patents Act;

b. an international patent application which is proceeded with in Iceland, as provided for in Art. 31 of the Patents Act, or accepted for processing, as provided for in Art. 38 of the Act; or

c. a European patent application which has been converted into a national patent application in Iceland, as provided for in Art. 88 of the Act.

2. national patent: a patent which is granted in Iceland as provided for in Art. 20 of the Patents Act in accordance with a national patent application;

3. international patent application: an application as provided for in the Patent Cooperation Treaty (PCT), cf. Art. 28 of the Patents Act;

4. Patent Cooperation Treaty (PCT): a treaty signed in Washington on 19 June 1970, under the auspices of the World Intellectual Property Organization (WIPO) concerning a harmonised international patent application process;

5. World Intellectual Property Organization (WIPO): a specialised UN organisation entrusted with the role of promoting protection of intellectual property worldwide;

6. European patent application: an application which is processed by the European Patent Office. The Icelandic Patent Office receives such applications as a receiving office, as provided for in Art. 75(3) of the Patents Act;

7. European patent: a patent granted by the European Patent Office. Such patents are validated in Iceland following a request for their validation, as provided for in Art. 77 of the Patents Act;

8. European Patent Convention (EPC): a convention on the granting of European Patents signed in Munich in 1973 which lays the foundation for the European Patent Office;

9. Implementing Regulations to the Convention on the Grant of European Patents (of 5 October 1973, as subsequently amended);

10. European Patent Office (EPO): an office established in 1977 on the basis of the EPC; 11. application for supplementary protection: an application based on Council Regulation (EEC) No.

1768/92 or Regulation (EC) No. 1610/96, cf. Art. 65 a of the Patents Act; 12. supplementary protection certificate: a certificate granted following an application for

supplementary protection for medicinal products or plant protection products; 13. accepted languages: Icelandic, Danish, Norwegian, Swedish and English; 14. biological material: material containing genetic information and capable of reproducing itself or

being reproduced in a biological system, cf. Art. 1 of the Patents Act; 15. sequence listing: a list of amino acid or nucleotide sequences, part of the application's description; 16. application documents: an application form together with a description, claims, abstract and

drawings if applicable; 17. effective date: the actual date of application if other than the filing date of an application in

Iceland. Payment of annuities is based on this date; 18. division: when part of the material in the basic documentation of an application is used as a basis

for a new, independent application, cf. Art. 11 of the Patents Act and Art. 6 of this Regulation;

19. excision: when material, which is not part of the basic documentation of an application but has subsequently been added to the description or claims, or added by other means, is used as a basis for a new, independent application;

20. priority document: a certificate from the patent authority which received the application upon which the applicant bases his/her right for priority, together with a copy of the application, certified by the authority in question; and

21. technical classification of an application: assignment of an application to a specific class by technical sector in accordance with a recognised international standard, cf. Art. 22.

CHAPTER II National patent application

Art. 3 Contents of a patent application

A national patent application shall be filed with the Icelandic Patent Office, together with an application form provided by the Icelandic Patent Office, providing the following information:

1. the applicant, his/her name and address, plus Id. No. if the applicant is Icelandic; if an applicant does not have an agent, the applicant's telephone number or e-mail address shall be specified. An applicant may be either an individual or a legal entity;

2. the contact person, and how he/she may be contacted if the applicant is a legal entity or there is more than one applicant. If no one is specified, the applicant listed first will be regarded as contact person and authorised to receive notifications from the Icelandic Patent Office;

3. the name and address of the inventors. Inventors may only be individuals; 4. the agent, if appropriate, and how this party was granted authorisation, together with the agent's

name, address and telephone number and/or e-mail address; 5. the title of the invention in Icelandic; 6. priority right, if applicable; 7. international filing date and application number if the application is an international application

proceeded with in Iceland; 8. information concerning biological material, if applicable, cf. Art. 4; 9. the applicant's right to the invention, if the applicant is not the inventor; and 10. documents accompanying the application. The accompanying documents shall be as follows: 1. a description of the invention, patent claims and abstract; and 2. as appropriate:

a. any drawings necessary for the understanding of the invention; b. sequence listing, cf. Art. 14; c. power of attorney, cf. Art. 95; and d. a priority document, cf. Art. 8.

The application form must be signed by the applicant or his/her agent. The prescribed application fee, according to the Regulation on fees, must be paid when an application is filed.

Art. 4 Information on biological material

If a patent application involves preserved samples of biological material, as referred to in Art. 8(6) of the Patents Act, cf. Chapter V of this Regulation, the application, when filed, must include all information of significance concerning the characteristics of the biological material known to the applicant.

If an invention is based on biological material originating from the human body, or if such material is used in the invention, the person from whom the material originates must have been given an opportunity to grant voluntary consent for its usage in accordance with currently applicable legislation. Information on consent shall neither affect the processing of a patent application nor the rights arising from a patent granted.

If an invention involves biological material of plants or animals, or the use of such material, the application must specify the geographical origin of the material, if known. If the geographical origin of the material is not known, this must 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 of the material, this shall not affect the processing of the application nor the rights arising from a patent granted.

Art. 5 Language of application and translation of documentation

Documentation of a national patent application must be in an accepted language as listed in Point 13 of Art. 2. If application documentation is in a language other than one of the accepted languages, the applicant must submit a translation into one of the accepted languages within two months of the filing date.

If an international application is proceeded with in Iceland, as referred to in Art. 31 of the Patents Act, a translation into an accepted language must be made available when it is proceeded with. An additional time limit of two months is allowed for submission of a translation in an accepted language, as referred to in Art. 31(2) of the Patents Act upon payment of the prescribed fee.

An applicant must translate the patent claims and abstract into Icelandic, if such documentation is not already available, within 14 months of the filing date or priority date, if priority has been claimed.

If an international patent application is proceeded with after the expiration of a fourteen-month interval from the filing date or priority date, if priority has been claimed, an Icelandic translation of the patent claims and abstract must be provided when it is proceeded with. If such a translation is not available, a three-month time limit will be granted to rectify this.

If the Icelandic Patent Office decides that an application, submitted in Icelandic, shall be subject to a search abroad, the applicant must, at the request of the Icelandic Patent Office, translate the application documents into English or the language accepted by the relevant search authority within three months. The same applies to other documentation concerning the search, such as alterations to the description and patent claims or an applicant's counterarguments.

If documents, other than the basic documents, accompanying a patent application (such as a power of attorney, assignment and priority document) are submitted in any of the accepted foreign languages or in French or German, a translation into Icelandic shall only be required if deemed necessary.

The Patent Office may require that a certified translator or other party recognised by the Patent Office, including the applicant or his/her agent, certify the translation or submit a statement to the effect that the translation is equivalent to the foreign documentation.

If the Patent Office considers there to be a substantial basis for granting a patent, based on the available documentation, an approved version of the patent claims, abstract and text of drawings shall be available in Icelandic translation within eight months from the date of notification. Within that same time limit an approved version of the description must be available in Icelandic translation or in English.

The provisions of Art. 15(1)-(3) and Art. 16 of the Patents Act shall apply concerning time limits for translation.

Art. 6 Basic documentation

Basic documentation in a national patent application, cf. however the second paragraph, includes the description, claims and drawings submitted in an accepted language on the filing date.

If the basic documents referred to in the first paragraph are submitted in a language other than an accepted language, the description, together with the relevant claims and drawings, submitted later in an translation into an accepted language, shall be considered basic documents insofar as the substance of the application is clearly indicated in those documents available on the filing date.

If an applicant has consented to having an international application processed within the time limit provided for in Art. 54 of this Regulation, cf. Art. 34 of the Patents Act, and a decision is taken on its basis to grant or refuse a patent, the description, claims and drawings of the application in question, as of the time when the said decision was taken, shall be basic documents.

When an application contains, on its filing date, a reference to a corresponding previous foreign application, cf. subparagraph c of Point 3 of Art. 8(1) of the Patents Act, a copy subsequently submitted of that application shall be considered part of the basic documents, if it is in an accepted language; otherwise the second paragraph shall apply.

Priority

Art. 7 Documentation on which priority may be based

In addition to what is stated in Art. 6 of the Patents Act, priority may be based on an application for protection which has been filed in a state which is a member of the World Trade Organisation (WTO). Priority may also be based on an application for protection filed in a state which is not a member of the

WTO if Icelandic patent applications enjoy similar rights in that state and its legislation in general complies with the Paris Convention for the Protection of Industrial Property.

An application can only serve as the basis for claiming priority if it is the first in which the invention is described. Priority can be claimed 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 derive from different countries.

If the applicant of the first application or his/her assignee subsequently files an application at the same location concerning the same invention, the latter application may, however, serve as the basis for claiming priority if the former application has been withdrawn upon the filing of the latter application, or if it was dismissed or rejected before it became available to the public, provided that no rights or priority are based upon it. If priority has been established based on such a subsequent application, no claim for priority can be based any longer on the previous application.

Art. 8 Claiming priority

A claim for an application to be based on priority must be received by the Icelandic Patent Office in writing within three months of the filing date in Iceland. In addition, the applicant must provide information as to where the application on which the claim for priority is based was filed, the filing date and application number.

Within 16 months after the priority date the Icelandic Patent Office must receive a priority document, cf. Point 20 of Art. 2. Delivery of a priority document to the Icelandic Patent Office is not required in the case of an international application proceeded with in Iceland. A priority document for international applications is to be delivered to WIPO, cf. the rules of the Patent Cooperation Treaty. If an applicant fails to send the said documents at the prescribed time, his/her right to priority is cancelled.

A claim for priority can be withdrawn right up until a final decision has been taken on the application as provided for in Art. 20 of the Patents Act.

Art. 9 Scope of priority

The substance of a patent application may be more extensive than the content of the priority document without priority being lost. The right to priority shall include everything specified in the priority document, regardless of whether it is mentioned in the claims or not. If claims of a subsequent application include anything which is only specified in the description or drawings of a former application, that application cannot be considered the first application filed unless the former application is cancelled, as referred to in Art. 7(3).

Basic documents, cf. Art. 6, shall also be used as basis in processing applications for which priority is claimed. It is therefore not possible to add anything new to an application by referring to a priority document, cf. the third paragraph. Obvious mistakes or printing errors, however, may be corrected to accord with the priority document.

If a priority document concerns an invention which is not found in the basic documents, cf. Art. 6, the applicant shall be assumed to have voluntarily abandoned that invention.

If a valid claim for priority is available when an application is made available to the public, as provided for in Art. 22 of the Patents Act, the substance of the application shall be deemed to be known, cf. Art. 2(2) of the Act, from the priority date to the extent this is stated in the priority document.

Form and presentation Art. 10

Form and presentation of application documents Application documents must be sufficiently clear and legible to be duplicated. The typeface must be

black and drawings in black lines on a white ground on A4 (21 x 29.7 cm) paper with lines with 1 1/2 spacing. Coloured drawings cannot be submitted. If an application is submitted in hard copy, the text must be on one side of each page only.

Margins and gutters shall be sufficient to enable duplication of pages. The pages may not have borders or any irrelevant markings, e.g. in a header or footer.

Every fifth line in the description and claims shall be numbered. Pages shall be numbered in order in Arabic numerals centred at the top or bottom of each page of the description, claims and drawings. The abstract shall be on a separate, unnumbered page.

The description, claims and drawings shall begin on a new page.

Art. 11 Units of measurement, formulae, names and concepts

Units of measurement and formulae shall be stated in accordance with international standards (such as the International System of Units (SI)) or in accordance with recognised practice in the field in question.

Made-up names may not be used in a patent application. Trade marks may, in exceptional instances, be used in a description if it is difficult to identify a product with a recognised name.

If rare concepts are used, their meaning must be explained in a description. Reference to written works must comply with general style guidelines for scholarly works.

Art. 12 Identification of microorganisms and living organisms

Microorganisms and other living organisms, which have previously been described in a work which is available to the public, must be identified in application documents by their classification name and, if considered necessary for the sake of clarity, the description shall make reference to a work describing the systematic method of classification.

Living organisms which have not previously been described must be identified in sufficient detail to prevent their being confused with other organisms. Living organisms shall generally be described in the manner used in recognised expert publications in this field.

Art. 13 Description

The description shall contain all necessary information on the invention and in addition include: 1. an introduction with the name of the invention, together with information on the technical field

and area of use; 2. a discussion of known technology in the field in question, with references to relevant works; 3. the objective of the invention, i.e. what problem the invention solves, the main aspects of how it is

solved, and how the invention can be utilised commercially, if this is not obvious; 4. a detailed description of the invention with references to drawings as appropriate; 5. a list of drawings together with explanations of them if appropriate; and 6. examples of the more detailed embodiment of the invention sufficient to support the patent

claims, with reference to drawings as appropriate. The description must be consistent with the patent claims and may refer to them as necessary. If there is more than one independent patent claim, the description must discuss each invention in the

independent claims in accordance with the first and second paragraph. Aspects for which protection is requested in dependent claims must also be discussed, to the extent considered necessary for it to be possible to assess the claim.

If an invention concerns a gene, how the nucleotide sequence or part of the sequence can be utilised commercially must be specified.

If an application concerns generally available living organisms, how samples of them can be obtained must be stated.

If an invention concerns a genetically modified animal, cf. Art. 1 b of the Patents Act, it must be stated whether the invention could cause the animal to suffer and, if so, whether the invention comprises a significant medical benefit for men or animals.

The description and drawings shall be kept separate, but tables and chemical and mathematical formulae may be included in the description.

Art. 14 Sequence listing

If an application includes a sequence listing, i.e. a list of amino acids or nucleotide sequences, the list must accompany the description. The list shall be compiled in accordance with the WIPO standard and directly precede the claims.

If the Icelandic Patent Office considers it necessary, the list referred to in the first paragraph shall also be submitted in electronic format. If the list is submitted in electronic format the applicant must declare that the information is the same as that in the application documentation.

The Icelandic Patent Office may decide that the list referred to in the first paragraph shall be submitted only in electronic format.

Art. 15 Patent claims

A patent claim must explain clearly what protection is being sought for and what technology is necessary to achieve the functioning of what is to be protected.

The patent claim shall have an introduction, stating the title of the invention and the technological field on which the novelty of the invention is based. The claim must include an identifying section, beginning with the words “characterised by” or a similar phrase identified in the text, as well as information on what is new and characteristic of the invention. A different presentation of patent claims is only authorised if special circumstances exist, e.g. in the case of use claims.

Each patent claim may only concern one invention. The invention shall, if possible, be categorised as one of the following types: a product, tool/equipment, process or use.

If it facilitates comprehension, reference shall be made in the introduction and identification section to drawings, preferably with referential symbols in brackets. In exceptional instances direct reference may be made to charts or similar information provided in a drawing.

A patent claim may not contain anything which is irrelevant to the invention. When a patent is sought for known substances or compositions of substances, cf. Art. 2(5) of the

Patents Act, for a specific new use in applying methods as referred to in Art. 1(3) of the Act, an account must be given of the new use in the patent claims.

Art. 16 Independent and dependent patent claims

A patent application may contain more than one patent claim. If more than one claim is included in the same application they must be numbered and arranged in numerical order.

A patent claim may be independent or dependent. Claims are considered dependent if they relate to embodiments of an invention described in another patent claim which comprises all the characteristic features of that claim. Other patent claims are considered independent.

One or more dependent patent claims may be related to each independent claim and, in such case, shall follow directly the independent claim to which they directly, or indirectly through another dependent claim, refer. A dependent claim may be related to one or more claims which have previously been presented. In such case, reference shall be made in the introduction to the relevant claims and the characteristics of the invention described further.

A dependent patent claim may not concern exclusively self-evident, simple or obvious solutions concerning design or method. Detailed explanations and emphases may be placed in a dependent patent claim if they are conducive to explaining further technical effects of the invention or other functions connected to it, in accordance with an independent claim. It is, however, a condition that the addition accord with provisions of Art. 10 of the Patents Act.

Art. 17. Unity of invention

Each patent application may only concern a patent for a single invention or inventions which are mutually dependent, cf. Art. 10 of the Patents Act. If an application concerns a number of inventions they are considered mutually dependent, i.e. to comprise a unified whole, if there is a technical relationship between them, i.e. that they share one or more identical or similar technical features. The concept of a technical feature refers to those aspects of each individual invention which differ from prior art.

An assessment as to whether inventions are mutually dependent is made without regard to whether they are mentioned in one or more patent claims.

Many independent claims of the same type can only be proposed if the technical relationship between them is clear and the inventions cannot be described with sufficient precision if they are combined in a single patent claim.

The requirement of unity is considered satisfied, even if an application includes many independent claims, each of its own type, if one of the following applies to them:

1. they are independent claims concerning a product, the method of its production and its use; 2. they are independent claims concerning a method and specially developed equipment to

implement the method; or

3. they are independent claims on a product, the method of its production and specially developed equipment to implement the method.

Art. 18 Abstract

An abstract shall contain a brief summary of the description, patent claims and [drawings]1) of the basic documents, cf. Art. 6 and Art. 35(4). The abstract shall include the title of the invention. It shall also describe clearly the technical problem which the invention relates to, in broad terms how the invention is intended to solve the problem and the main field of use of the invention.

The abstract shall, if appropriate, specify the chemical formula from the application which best identifies the invention. The abstract shall not discuss the advantages of the invention nor make statements concerning its value or theoretical possibilities of use.

The abstract shall be a maximum of 150 words of continuous text and must be submitted before the application is made available to the public, as provided for in Art. 22(2) of the Patents Act.

If drawings accompany a patent application, the applicant must specify on the application form, cf. Art. 3, what drawing he/she requests be published with the abstract on the front page of the patent. If this is not done, or if the Icelandic Patent Office is of the opinion that a drawing other than the one requested by the applicant is better suited to describe the invention, that drawing shall be published with the abstract. If the Icelandic Patent Office considers it unnecessary to publish a drawing with the abstract it may be omitted.

Reg. No. 938/2013, Art. 1 (Valid from 11 October 2013).

Art. 19 Drawings

Drawings shall illustrate those aspects necessary to understand individual parts of the invention, and shall be identified in the description and claims with the corresponding letters or numbers. Only brief comments or descriptive symbols may be used for explanation in drawings.

Formal processing of an application Art. 20.

Determination of filing date The Icelandic Patent Office assigns a filing date to applications submitted, cf. Art. 8 a of the Patents

Act. If a description accompanies the application but part of it is missing, or if an application refers to

drawings which are missing, the Icelandic Patent Office shall request that the applicant rectify this within two months of the date of notification. If the applicant rectifies the defects within the time limit, the filing date shall be the date the required documentation was received by the Icelandic Patent Office.

When an application includes, on its filing date, reference to a previous application in one of the accepted languages, this reference shall, with regard to the filing date, replace the description and drawings.

If the Icelandic Patent Office is of the opinion that an application has not been filed, cf. Art. 8 a(2) of the Patents Act, the applicant shall be notified of this conclusion.

Art. 21 Application defects

The applicant shall pay the application fee, if such has not been paid in full on the filing date, within one month of the filing of an application. If information is missing on the application form, the applicant must rectify this within the same time limit.

When the application fee has been paid in full and the patent application is available in an acceptable language, cf. Art. 5, the applicant must rectify the application within three months if it has any of the following defects:

1. a power of attorney, a priority document or other documents are missing; 2. the format and presentation of the application does not comply with the provisions of the

Regulation; or 3. the invention is not described clearly enough for a novelty search to be carried out. An application may be dismissed, cf. Art. 15(2) of the Patents Act, if the defects referred to in the [first

and second]1) paragraphs are not rectified within the prescribed time limit.

Reg. No. 938/2013, Art. 2 (Valid from 11 October 2013).

Substantial processing of an application

Art. 22 Technical classification of an application:

The Icelandic Patent Office shall classify applications in accordance with the International Patent Classification system and its relevant rules. The currently valid version of the system shall be used as a basis.

Classification is based on the patent claims. An application shall, if possible, be classified as a single whole.

Art. 23 Examination

A patent application must be examined for novelty and patentability, cf. Art. 2 of the Patents Act. According to the authorisation in Art. 69 of the Patents Act, the Icelandic Patent Office may conclude

an agreement with a foreign search authority to examine the novelty and patentability of applications. The Icelandic Patent Office may also seek the opinion of outside experts if deemed necessary to take a decision on a patent application.

An applicant shall be notified when an application is sent for a search and examination. Following the examination, the applicant shall have a time limit of eight months to respond to the first opinion and six months to respond to the next one. The time limit for responding to other opinions is 2-4 months.

If an invention, for which a patent is sought, is not novel with respect to the contents of an older national application, cf. Art. 24, its final processing shall be put on hold until the older application is available to the public or is cancelled or until a final decision is available in other respects on the older application within those time limits. The same applies with respect to an older international patent application which designates Iceland, if the authorities are aware of its contents. When an international application becomes available to the public or is cancelled with respect to Iceland, after it is proceeded with in Iceland, the final processing of the more recent application shall continue. The risk of overlap in such instances shall be explained to the applicant.

Art. 24. Obstacle to novelty

The novelty search shall cover the period up until the filing date of the application. This shall also apply if priority is claimed.

The novelty search shall have regard to all prior art, including patent applications which have been made available to the public and patents, as well as other available information and documentation, cf. Art. 2(2) of the Patents Act. A novelty search may be suspended even if all the available material has not been examined, when sufficient evidence has been obtained to assess the patentability of the invention.

In a novelty search, the basic documents of a patent application, cf. Art. 6 of this Regulation, are considered an obstacle to novelty as referred to in the second sentence of Art. 2(2) of the Patents Act, from the filing date or from the priority date, to the extent that their contents are supported by priority documents and the patent application has been made available to the public. An abstract and other application documents, such as additions to the description, written replies or priority documents, are obstacles to novelty from the date that the documentation is made available to the public, cf. Art. 22 of the Patents Act.

Art. 25 International novelty search

If an applicant requests an international novelty search, as referred to in Art. 9 of the Patents Act, he/she must submit a written request to this effect to the Icelandic Patent Office within three months of the filing date and pay the prescribed fee. In the request the applicant shall specify the authority, cf. Art. 53, which he/she wishes to have carry out the search.

The request must be accompanied by a translation of the patent application into one of those languages which the searching authority recognises, if it is in a different language.

If the patent application and required translation do not fulfil the formal requirements made of an international patent application, within the time limit stated in the first paragraph, the request shall be dismissed.

Art. 26 Examination concerning a corresponding application

In assessing the novelty and patentability of an application, the Icelandic Patent Office may, in accordance with Art. 69 of the Patents Act, base its decision on the results of a foreign authority which has examined the novelty and patentability of a corresponding application e.g. search and examination reports or granted patents.

If the applicant has filed a corresponding application for a patent in another country, the applicant must, within the limits laid down in the second sentence of Art. 69(3) of the Patents Act, at the request of the Icelandic Patent Office, furnish information within three months as to where the application was filed, and provide information on the results of the examination of novelty and patentability when available.

If the applicant has not received the information referred to in the second paragraph he/she shall submit a statement to this effect.

If the applicant fails to provide the information specified in the second paragraph, the application will be dismissed, as provided for in Art. 15 of the Patents Act. If the applicant refuses to submit the results of the examination the application will be rejected as provided for in Art. 16 of the Act.

The Icelandic Patent Office may decide to postpone processing an application if it is corresponding to an application which has previously been filed with a foreign patent office until the latter application has been suitably processed.

The Icelandic Patent Office may deliver to foreign patent authorities, with which an agreement has been concluded, documentation concerning an application which has not been made available to the public if the authorities concerned have obliged themselves not to make this available to the public.

Art. 27 Models and additional documentation in connection with examination

The Icelandic Patent Office may require that an applicant submit a model, sample, or the like, or have research or experiments carried out, if this is considered necessary in order to assess the novelty and patentability of an application. Models or samples will not as a rule be returned.

Art. 28 Co-operation in processing applications

The Icelandic Patent Office may, as provided for in Art. 69 of the Patents Act, co-operate with other patent authorities for the purpose of obtaining an accelerated procedure for an application filed in a co- operating state.

An applicant's request for accelerated procedure must fulfil the conditions set as a basis for the said co- operation.

An accelerated procedure as referred to in the first paragraph is only possible for patent claims which have been assessed as patentable in a co-operating member state.

Art. 29. Third-party observation against a patent application

Anyone may submit a written observation against a patent application of significance for assessment of a patent application being processed. Reasons must be provided for the observation and its contents clearly stated.

If the Icelandic Patent Office receives an observation against a patent application as referred to in the first paragraph, the applicant shall be notified thereof. The Icelandic Patent Office shall have regard for the observation in processing the application, but the party submitting the observation shall be informed that he/she is not a party to the case but may file an opposition to the patent if it is granted.

In the case of an observation concerning a better right to the invention, processing shall continue as provided for in Art. 17 of the Patents Act.

Amendments to a patent application

Art. 30 Limitation of an application

If examination by the Icelandic Patent Office reveals that an application covers two or more inventions which lack unity, cf. Art. 17, the applicant shall be notified of this conclusion and given the opportunity to limit the claims of the application within three months or informed that he/she may request the division of the application, cf. Articles 33 and 35.

An applicant may not first limit the application to a specific invention and subsequently, when it is revealed to be known, amend the application to apply to another invention. Nor may an applicant, in order to have such an option, include more than one invention in the application at the same time.

If an applicant limits the claims, it shall be concluded that in so doing he/she has withdrawn the inventions excluded by the limitation.

Art. 31 Amendments to patent claims

A patent claim may not be amended to cover any element for which no basis is provided in the basic documents, cf. Art. 6 and Art. 35(4). If additional claims are made or a patent claim is amended by adding new aspects, the applicant must concurrently explain in writing where the basis for such is provided in the basic documents. Furthermore, the applicant must submit a new version of the application claims. In this new version all the claims must be ordered by number.

Changes may be made to claims which concern typographical errors and obvious mistakes in translation, provided that the changes reflect the original intent.

If the number of claims following the amendments exceeds that which was stated in the basic documents, a fee shall be paid for additional claims in accordance with the tariff.

After the Icelandic Patent Office has given notice of the result of the novelty search, no claims may be added to the application for an invention which is considered independent of the inventions to which the previously submitted claims applied.

Art. 32. Amendments to the description or drawings

The applicant may only make amendments or additions to the description and/or drawings if this is considered necessary, pursuant to Art. 8 of the Patents Act, for the purpose of more detailed explanation or correction, or to adapt the description to new or amended patent claims. Any amendments or additions to the description and/or drawings may not indicate that the patent claims are more extensive or comprise anything which was not specified in the basic documents.

If amendments are made, the applicant must file a new copy of the description and/or drawings. If amendments are made to the description, the applicant must concurrently explain in writing where the wording differs from the previous description and to what extent the said changes have resulted in additions to its substance.

The right to priority shall not be lost when amendments are made to the contents of an application if they have a basis in the priority documents.

Art. 33. Division of an application

If more than one invention is described in the basic documents of a basic application, cf. Art. 6, the applicant may, upon payment of the prescribed fee, divide the application into several independent applications. At the applicant's request the new application may be considered to have been filed on the same date as the basic application.

The claims made in a divisional application may not be identical to the claims of the basic application. Upon division, the scope of an application may not extend beyond that of the basic documents of the basic application. The divisional application retains the priority of the basic application.

If an applicant requests protection for an unrelated invention in an international patent application proceeded with in Iceland, cf. Art. 36 of the Patents Act, the application must be divided and a new application fee paid, even if the additional fee prescribed in subparagraph a of Art. 17(3) or subparagraph a of Art. 34(3) of the PCT has been paid.

Art. 34 Excision of an application

If an applicant amends an application so that an invention, which was not included in the basic documents of the application, is added to the description or patent claims or by other means, the applicant may request that the invention be excised from the basic application and serve as the basis for a new application. The new application is considered to have been filed on the date the document disclosing the invention was first received by the Icelandic Patent Office.

The claims of an application which is created by excision may not be identical to the claims of the basic application. Furthermore, the patent applied for must accord with the contents of the documents of the basic application on the date the document referred to in the first paragraph was filed with the Icelandic Patent Office.

Art. 35 Further on division and excision

Division or excision may only take place until a final decision, cf. Art. 20 of the Patents Act, is available on the basic application. If a decision by the Icelandic Patent Office to reject or dismiss the basic application is appealed, division or excision may be carried out right up until a final decision is available.

Division or excision cannot be considered for an invention which an applicant has previously abandoned in a priority document. This applies regardless of whether the priority document is filed prior to, concurrent to or after the basic documents.

Upon division or excision, the applicant must specify on what part of the basic application the claims in the new application are based and explain in what respects the basic application has been amended.

The description filed with a new application, together with drawings and patent claims, shall be considered basic documents, cf. Art 6. After such basic documents have been filed, no additional information from the basic application may be added to the latter application.

An application fee as prescribed in the Regulation on fees must be paid for an application resulting from division or excision.

A new application shall only be considered to have resulted from division or excision if this is stated when the application is filed. Reference must be made to the original application in those applications resulting from division or excision.

Accessibility of applications

Art. 36 Access to application documents

According to Art. 22(2) of the Patents Act, an application will be made available to the public after 18 months have elapsed from the filing date, or effective date if this differs from the filing date, or from the priority date if priority is claimed in full or in part.

If priority is claimed on the basis of a number of applications, an application shall be considered available after 18 months have elapsed from the first priority date.

If that day of the month when an application is to become available, does not occur in the month concerned, the last day of the month shall be substituted.

If, as provided for in Art. 22(3) of the Patents Act, an applicant requests that an application be made available earlier than provided for in the first to third paragraphs, it shall be made available from the date a request to this effect is received by the Icelandic Patent Office, or later if the applicant specifies a certain date.

Once the application is made available to the public all documents of the application will be available with the exception of the statement of a party who has granted consent for the use of biological material in a patent application, cf. Art. 4(2), if such a statement exists. Furthermore, documents which according to other legislation or administrative provisions should remain secret are also excluded.

CHAPTER III Granting of a national patent

Art. 37 Contents of a patent

When the Icelandic Patent Office decides that, based on the available documentation, a substantive basis exists to grant a patent, the applicant shall be notified thereof. If the application documents approved are not in an accepted language, the applicant must provide a translation in accordance with [Art. 5(8)]1).

Once the documentation referred to in the first paragraph is available, but it has not been confirmed that the applicant accepts the text of the proposed patent, the applicant shall be granted a time limit of two months to express him-/herself concerning the wording. The notification shall state that the application may be rejected if the applicant does not accept the text.

If the applicant accepts the text, the provisions of Art. 19 of the Patents Act shall apply. If the applicant does not accept the text and the Icelandic Patent Office sees no reason to continue

processing the application, the application shall be rejected with reference to Art. 16 of the Patents Act.

Reg. No. 938/2013, Art. 3 (Valid from 11 October 2013).

Art. 38 Patent document

A patent document as referred to in Art. 20 of the Patents Act, including a front page, abstract, description, patent claims and drawings, as applicable, shall be prepared after the applicant has accepted the text of the proposed patent, as referred to in Art. 37 of this Regulation.

The front page of the patent document shall specify the following details: 1. registration number of the patent; 2. technical classification (international classification); 3. date of grant of the patent; 4. application number of a national application; 5. filing date of a national patent application together with the effective date, if this differs from the

filing date; 6. international application number and international filing date, if the application is proceeded with

in Iceland, as provided for in Art. 31 of the Patents Act, or is considered to have been filed pursuant to Art. 38 of the same Act;

7. if the application is a European patent application that has been converted into a national application as provided for in Art. 88 of the Patents Act, 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 ;

8. information regarding priority and information on where the application on which priority is based was filed, the filing date and number of that application;

9. name and address of the patentee; 10. names and addresses of the inventors; 11. name and address of an agent, if applicable; 12. number of the basic application, if the application resulted from division or excision; 13. date upon which the application became available to the public, as provided for in Art. 22 of the

Patents Act; 14. 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; 15. title of the invention; 16. an abstract with drawings, cf. Art. 18, as applicable; and 17. documents cited in the examination procedure and used against the application.

Art. 39 Limitation of patent protection

If a patent holder wishes to substantially limit the scope of protection of a patent granted, as provided for in Art. 40 a, he/she must file a new version of the patent claims with the Icelandic Patent Office, together with an amended description, as appropriate. A clear explanation must be provided as to how the new claims differ from the previous claims. The claims and description may not be amended solely to explain in more detail and the description may not be amended without amendments to the claims. With the exception of such changes as can be made in opposition proceedings, no limitation can be requested to the scope of patent protection until the time limit for opposition has expired.

A request for limitation shall, in addition to the information referred to in the first paragraph, be accompanied by information on the patent number and patent holder. The request must be signed by the patent holder or his/her agent and shall be accompanied by the prescribed fee.

If the request for limitation does not satisfy the conditions of the first paragraph, cf. the conditions of Art. 40 b of the Patents Act, the patent holder shall be granted a time limit of two months to rectify any defects.

The limitation of a patent as provided for in the first paragraph shall take effect when notice thereof is published in the Gazette “ELS-tíðindi”, as provided for in Art. 40 b of the Patents Act, cf. Point 9 of Art. 93 of this Regulation.

CHAPTER IV Opposition

Art. 40 Form and contents of opposition

An opposition to a patent granted, as referred to in Art. 21 of the Patents Act, must be made in writing in duplicate and include the following:

1. the name and address of the opponent and his/her agent, if one has been appointed; 2. the registration number of the patent opposed, the name of the patent holder and the name of the

invention; and 3. the scope of the opposition, the main grounds upon which the opposition is based and an

exhaustive account of the facts, evidence and circumstances of the case. The opposition and accompanying documentation must be in Icelandic, cf. Art. 94. If written

documents are submitted in any of the foreign languages accepted according to Point 13 of Art. 2, these may be accepted if there are material grounds for so doing and the counterparty does not object.

If the above-mentioned conditions are not satisfied by the end of the time limit for opposition, the Icelandic Patent Office shall instruct the opponent to rectify any flaws within one month, if it is clear what patent is being opposed and who the opponent is can be verified. If the opponent fails to comply with such instructions the opposition shall be dismissed.

Opposition must be mentioned in the Register of Patents referred to in Point 1 of Art. 83 and a notice published in the Gazette “ELS-tíðindi”, as provided for in Art. 87, following the expiration of the time limit for filing opposition if the opposition has not been dismissed.

Art. 41 Processing of opposition

The Icelandic Patent Office shall, in accordance with Art. 23 of the Patents Act, notify the patent holder of opposition filed upon the expiration of the time limit for filing opposition, and provide the patent holder with an opportunity to submit comments on the opponent's documentation and/or an amended description, claims and drawings within a time limit of six months. The time limit for subsequent comments from the parties to the case is three months.

If the patent holder expresses comments, the opponent shall be sent a copy of this together with accompanying documents. Both parties are given the opportunity to express themselves twice.

If oral proceedings are deemed necessary in processing opposition, both the patent holder and opponents shall be summoned.

Art. 42 Decision on processing opposition

The Icelandic Patent Office shall examine whether there is cause to accept opposition for processing, cf. Art. 23(2) of the Patents Act, if the conditions stipulated in the provision exist. If the Icelandic Patent Office sees cause to accept the opposition for substantial processing, such a decision shall be taken within two months of the verifiable withdrawal of the last opposition or from the date of notification of lapse of the patent. The patent holder shall be notified of the decision and grounds given. If the Icelandic Patent Office sees no cause for further processing of opposition after a patent is considered to have lapsed, the parties to the case shall be notified of such decision.

Art. 43 Outcome of opposition

If the Icelandic Patent Office decides that a patent should be revoked the parties to the case shall be notified thereof. The same applies if the Patent Office decides that the patent shall be maintained.

If the Icelandic Patent Office deems that the patent can be maintained with amendments, the parties to the case shall be notified thereof. The patent holder shall be given an opportunity to express his/her comments within two months.

If the patent holder accepts the amendments, the Icelandic Patent Office shall decide that the patent shall be valid as amended. The opponent shall be notified of this decision.

If the patent holder does not accept the amendments, the patent is considered to have lapsed, cf. Art. 23(4) of the Patents Act. The parties to the case shall be notified of this decision.

When a final decision has been taken that a patent shall continue to be maintained with amendments, the patent holder shall pay a fee for the reissue of the patent and submit the text of the patent with

amendments. The text must be fully consistent with the documents approved by the Icelandic Patent Office and the patent holder must confirm this to be the case. Should the patent holder fail to submit the above- mentioned documents or pay the prescribed fee the patent shall be declared invalid.

CHAPTER V Biological material

Art. 44 Deposit of samples of biological material

Samples of biological material as referred to in Art. 8(6) of the Patents Act must 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 for the Purposes of Patent Procedure (the Budapest Treaty) or with other depositories recognized by the European Patent Office.

Deposits shall be in accordance with the provisions of the Budapest Treaty. WIPO publishes a list of those institutions which are internationally recognized depositories for

biological material under the Budapest Treaty.

Art. 45 Information on deposit of samples

If an applicant has deposited a sample of biological material, he/she shall, within 16 months from the date of filing or, if priority is claimed, from the priority date, inform the Icelandic Patent Office in writing of the institution where the deposit has been made and which deposit number the institution has allotted the sample. In the case of international applications, WIPO shall be provided with this information within the same time limit.

If, prior to the expiry of the time limit referred to in the first paragraph, the applicant requests that documents relating to the application be made available to the public earlier than prescribed in Art. 22(1) and (2) of the Patents Act, the applicant shall provide the information referred to in the first paragraph at the latest when the request is submitted. If, prior to the expiry of the time limit referred to in the first paragraph, the applicant of an international application requests early publication of the application under Art. 21(2)b of the PCT, the applicant shall provide WIPO with the said information at the latest when the request is submitted.

If a deposited sample of biological material has been transferred from one international depository to another, as provided for in Rule 5.1 of the Regulation to the Budapest Treaty, the applicant shall, as soon as possible after receiving a receipt for the transfer of the sample, inform the Icelandic Patent Office of the new deposit number and the depository.

The Icelandic Patent Office may require the applicant to submit a copy of the receipt issued by the depository for deposit of a sample as referred to in the first or third paragraph.

Art. 46 New deposit of a sample

A new deposit of a sample of a biological material, as referred to in Art. 8(7) of the Patents Act, must comply with the provisions of the Budapest Treaty and the Regulation to the treaty regarding new deposits. The new deposit shall be made within three months from the date on which the depositor received notification from the depository that provision of a sample of the deposited biological material was not possible.

If a depository recognised under the Budapest Treaty or by the European Patent Office has ceased operations as an international depository for the type of biological material which the deposit involved, or if the depository no longer fulfils the requirements stipulated for depositories, and if the depositor has not obtained knowledge of this within 6 months of WIPO publishing an announcement thereof, the new deposit may be made within nine months of the publication of that announcement.

The applicant shall, within four months of the date on which the new sample of biological material was deposited with another institution, provide the Icelandic Patent Office with information on the deposit with the new depository. If the time limit provided for in Art. 45(1) and (2) expires later, however, it will suffice to provide the information within that time limit.

Art. 47 Request for provision of a specimen of deposited biological material

A request for provision of a specimen of deposited biological material as referred to in the first sentence of Art. 22(8) of the Patents Act shall be presented in accordance with Rule 11 of the Regulation to the Budapest Treaty.

If a request is made, cf. the first paragraph, before a final decision has been made on the application to which the deposited sample relates, the person requesting the specimen shall undertake to use the specimen solely for research until a final decision has been made on the application. The person concerned shall also undertake not to allow any other person access to the specimen until a final decision has been taken on the application or, if a patent is granted, until that patent has ceased to have effect. The above shall also apply to specimens of deposited samples which relate to a patent granted.

The person requesting the specimen shall make the same undertakings in regard to cultures which are derived from the specimen and which still exhibit those characteristics important for the use of the invention.

A request for a specimen shall be accompanied by a written declaration that the person requesting the specimen undertakes to fulfil the obligations above.

Art. 48 Provision of specimens to independent experts

An applicant's request pursuant to Art. 22(7) of the Patents Act, to the effect that specimens be provided only to independent experts, must be submitted to the Icelandic Patent Office no later than the date on which the application is made available to the public as provided for in Art. 22 of the Act.

The Icelandic Patent Office shall lay down requirements as to who are to be considered independent experts. Only those persons who satisfy the requirements or who are approved by an applicant or patent holder in each instance may be provided with specimens.

A request for provision of a specimen as referred to in Art. 22(7) of the Patents Act shall be presented in accordance with Rule 11 of the Regulation to the Budapest Treaty. If a specimen may only be provided to an expert, the request shall state the name of the expert who is requested to undertake examination of the specimen. Furthermore, the request shall be accompanied by a statement from the expert obliging him- /herself towards the applicant to the extent described in Art. 47(2) and (3) of this Regulation.

Art. 49 Deposit of derived samples

In spite of the issuance of a statement, as referred to in Articles 47 and 48, the deposit of a sample of biological material, which is derived from a specimen provided, is permitted for a new patent application if deposit of the derived sample is necessary for the new application.

Art. 50 Statement on provision of specimens

If a request for a specimen has been submitted, and nothing in the Patents Act or this Regulation prevents it being granted, the Icelandic Patent Office shall issue a statement to that effect. The Icelandic Patent Office shall send the request for provision of the specimen and the statement to the institution where the biological material is deposited, with a copy to the applicant or patent holder.

If the Icelandic Patent Office is of the opinion that the statement referred to in the first paragraph cannot be issued, the party requesting provision of the specimen shall be notified thereof. Such a decision may be referred to the Board of Appeal for Industrial Intellectual Property Rights within two months of the notification by the Icelandic Patent Office.

CHAPTER VI Receiving of international patent applications

Art. 51 The Icelandic Patent Office as a receiving authority

As a receiving authority, as provided for in Art. 28 of the Patents Act, the Icelandic Patent Office receives international patent applications, checks the formal requirements and forwards them to WIPO and the international searching authority and international preliminary examining authority in accordance with the provisions of the PCT and its Regulations.

The Icelandic Patent Office keeps a special register of international applications filed with the office. The register is not available to the public.

In order for an application as referred to in the first paragraph to be accepted, the applicant must be an Icelandic citizen, resident in Iceland, or pursue business operations in or be considered a legal entity in Iceland. If there is more than one applicant, at least one of them must satisfy the above-mentioned conditions.

If an applicant is not domiciled in Iceland, he/she must have an agent, as provided for in Art. 12 of the Patents Act. Information on the agent must be entered in the registry of international applications.

Art. 52 International patent applications

An international patent application must fulfil the requirements set in the PCT. Its rules shall furthermore apply concerning priority and other aspects of the application.

The application must be in English, Icelandic, Danish, Norwegian or Swedish. Information on the application form must be in English even if other documents are in one of the above-mentioned languages.

The applicant must pay the Icelandic Patent Office, as the receiving authority, the following fees in accordance with the Regulation of the PCT:

1. the international filing fee, as provided for in Rule 15(1) of the above-mentioned Regulation within one month of receipt of the application;

2. a search fee, as provided for in Rule 16(1) of the above-mentioned Regulation within one month of receipt of the application;

3. an administration fee for the Icelandic Patent Office, as receiving authority, as provided for in Rule 14 of the above-mentioned Regulation within one month of receipt of the application; and

4. a fee for the preparation and forwarding of 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 Regulation if priority is requested based on a national patent application.

If the fees referred to in Points 1-3 of the third paragraph are not paid by the due date or by the date of the time limit granted, the provisions of Rule 16 bis of the Regulation of the PCT shall apply.

Art. 53 Examination of international patent applications

The Nordic Patent Institute, the European Patent Office and the Swedish Patent Office (Patent- och registreringsverket) are international search and preliminary examining authorities for international applications received by the Icelandic Patent Office.

If it is requested that the Nordic Patent Institute handle examination of an international application, the application must be filed in Danish, English, Icelandic, Norwegian or Swedish. If it is requested that the European Patent Office handle examination of an international application, the application must be filed in English. If it is requested that the Swedish Patent Office handle the examination, the application must be submitted in Danish, Norwegian, Swedish or English.

A time limit is provided in accordance with Rules 12(3) and 12(4) of the PCT Regulation, to submit a translation in a prescribed language if an application has been filed in a language other than the language of the examination or publication.

Art. 54 Time limits for proceeding with or reviewing international applications

The time limit provided for in Art. 34 of the Patents Act shall expire four months later than the time limit for proceeding with an application provided for in Art. 31(1) of the same Act.

The time limit for requesting a decision be reviewed, as provided for in Art. 38(2) of the Patents Act, shall expire two months after the receiving authority or WIPO has notified the applicant of the decision referred to in the first paragraph of Art. 38 of the Act. When a request for a review is submitted the required fee must be paid.

If an applicant can prove that more than seven days elapsed from the date of the decision referred to in the second paragraph until he/she received it, the time limit shall be extended by the number of days in excess of seven which elapsed from the date of the decision until its receipt.

CHAPTER VII European patent applications and patents

Art. 55 The Icelandic Patent Office as a receiving authority

The Icelandic Patent Office receives applications for a European patent as provided for in Art. 75 of the Patents Act.

When a European patent application is filed with the Icelandic Patent Office the filing date is entered on the application documents, a receipt for reception of documents is issued and the European Patent Office is informed that the Icelandic Patent Office has received the application, cf. Art. 35(2) and (3) of the Implementing Regulation to the Convention on the Grant of European Patents

The Icelandic Patent Office forwards the application to the European Patent Office, as provided for in Art. 77 of the European Patent Convention and the relevant provisions of the Implementing Regulation.

Art. 56 Validity of European patents in Iceland

If an applicant wishes that a European patent take effect in Iceland, as provided for in Art. 77 of the Patents Act, he/she must submit translations to the Icelandic Patent Office and pay the publication fee, as referred to in of Art. 77(1) of the Act, within four months of the date the European Patent Office published a notification on the grant of the patent or decided on maintaining the patent in an amended version.

A translation as referred to in Art. 77(1) of the Patents Act shall be accompanied by information on the patent number and the name and address of applicant or patent holder. If this condition is not satisfied, the translation will be considered to have not been submitted.

If the conditions in the first and second paragraph are not satisfied the European patent will not take effect in Iceland.

Art. 57 Translation of the claims of European patent applications

The translation as referred to in Art. 83 of the Patents Act must be accompanied by the number of the application and the applicant's name and address. If this condition is not satisfied, the translation will be considered to have not been submitted.

Art. 58 Corrections to a translation

If a translation is corrected as provided for in Art. 86 of the Patents Act, a new version of the entire translation shall be submitted, showing clearly what each correction consisted of. The corrected version must be accompanied by information on the number of the patent or application and the name and address of the patent holder or applicant.

If the conditions of the first paragraph are not satisfied, the corrected translation will be considered to have not been submitted.

Art. 59 European patent application changed to a national application

If the Icelandic Patent Office receives a request from an applicant as provided for in Art. 135(2) of the European Patent Convention, cf. Art 88 of the Patents Act, that a European patent application be changed to a national patent application, the Icelandic Patent Office will immediately forward the request, together with a copy of the application to patent authorities in those countries designated in the request.

If a European Patent application has been forwarded to the Icelandic Patent Office as provided for in Art. 135(2) of the European Patent Convention, the Icelandic Patent Office shall notify the applicant as soon as possible that the application has been received.

Within three months of the date the Icelandic Patent Office sends the notification referred to in the second paragraph, the applicant must pay the prescribed application fee and submit a translation of the application, in accordance with Art. 5 of this Regulation, cf. also Point 3 of Art. 88(1) of the Patents Act.

Art. 60 Limitation of a European patent

A patent holder may, as referred to in Art. 40 a of the Patents Act, submit a request to limit the scope of protection of a European patent. The request and its processing shall comply with the requirements laid down in Art. 39 of this Regulation.

If the patent holder previously submitted a comparable request to the European Patent Office based on Articles 105a-c of the European Patent Convention, the Icelandic Patent Office shall postpone processing the case as referred to in the first paragraph until the conclusion of the European Patent Office is available. The patent holder shall be notified of the postponement.

The case shall be accepted for processing anew if the request referred to in the first paragraph is not identical to the conclusion of the European Patent Office. If the request submitted in Iceland complies with the conclusion of the European Patent Office the provisions of Art. 80 of the Patents Act shall apply, cf. Art. 77 of the Act.

Art. 61 Supplementary protection

Supplementary protection based on a European patent can be requested pursuant to the rules which apply to such certificates, as referred to in Art. 65 a of the Patents Act, cf. Chapter VIII of this Regulation.

CHAPTER VIII Supplementary protection for medicinal products and plant protection products

Art. 62 General

In addition to those provisions listed in this Chapter, the provisions of the following Regulations of the European Parliament and of the Council shall apply on conditions for application for supplementary protection and the subsequent issue of a supplementary protection certificate, as appropriate, with amendments and supplements deriving from the European Economic Area Agreement, Points 6 and 6 a of Annex XVII on Intellectual Property, Protocol I on horizontal adaptation and other provisions of the Agreement:

1. Council Regulation (EEC) No. 1768/92, concerning the creation of a supplementary protection certificate for medicinal products; and

2. European Parliament and Council Regulation (EEC) No. 1610/96, concerning the creation of a supplementary protection certificate for plant protection products.

The above-mentioned Regulations have the force of law in Iceland, cf. Art. 65 a of the Patents Act, No. 17/1991, as subsequently amended.

Art. 63 Time limits for applications for supplementary protection

An application for supplementary protection may be filed: 1. up to six months after the granting of a marketing authorisation, cf. Art. 7(1) of EU Regulations

Nos. 1768/92 or 1610/96; or 2. up to six months after the granting of a basic patent, cf. Art. 7(2) of the same Regulations, if

granted later.

Art. 64 Application for supplementary protection

An application for supplementary protection shall be filed with the Icelandic Patent Office on a form for this purpose. The application must be in Icelandic.

The application form must be signed by the applicant or his/her agent. In addition to what is specified in subparagraph a of Art. 8 of EU Regulations No. 1768/92 and

1610/96, the application must include information as to which applicant, if more than one apply jointly for supplementary protection, is authorised to receive notifications from the Icelandic Patent Office.

The date which is named in point iv of subparagraph a of Art. 8(1) and subparagraph d of Art. 9(2) of EU Regulations Nos. 1768/92 and 1610/96, shall be considered to be the date when the health authorities sign the marketing authorisation.

The application must be accompanied by the prescribed application fee.

Art. 65 Documents accompanying the application

The following documentation must accompany an application for supplementary protection: 1. a copy of the marketing authorisation from the Icelandic Medicines Control Agency, together with

a description of the product and its characteristics, cf. subparagraph b of Art. 8 of EU Regulations Nos. 1768/92 and 1610/96;

2. a copy of a the official notice of the marketing authorisation, if the authorisation in Iceland is not the first marketing authorisation which has been obtained for the medicinal product or plant protection product in the EEA, cf. subparagraph c of Art. 8 of EU Regulations Nos. 1768/92 and 1610/96;

3. translations, cf. the second paragraph; and 4. references to the patent documents concerning the product. If the accompanying documentation is in a language other than the accepted languages listed in Point

13 of Art. 2 of this Regulation, it must be accompanied by a translation into one of the accepted languages. The Icelandic Patent Office may, however, waive the requirement for a translation of accompanying documents. The Icelandic Patent Office may require that an accredited translator or other party recognised by the patent authority certify the translation.

Art. 66 Processing of applications for supplementary protection

In processing an application for supplementary protection the Icelandic Patent Office may take into consideration any sort of information which is accessible.

At the request of the Icelandic Patent Office, an applicant must provide any additional information on the product necessary for the processing of the application. 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 a product specified in another basic patent.

The Icelandic Patent Office does not examine whether the requirements of subparagraph d of Art. 3 of EU Regulations Nos. 1768/92 and 1610/96 are satisfied.

If an application for supplementary protection does not fulfil the requirements of EU Regulations Nos. 1768/92 or 1610/96, the application shall be rejected with reference to Art. 10(2) of the same Regulations.

Art. 67 Application defects

If an application does not fulfil the formal requirements of Art. 8 of EU Regulations Nos. 1768/92 or 1610/96 the applicant shall, in accordance with Art. 10(3) of the same Regulations, be granted a time limit of three months to rectify the application. The prescribed fees must be paid within one month of the receipt of an application. Reinstatement, as provided for in Art. 15 of the Patents Act, shall apply in those instances where time limits have not been respected.

If a defect is not rectified within the prescribed time limit, the application for supplementary protection shall be rejected, with reference to Art. 10(4) of EU Regulations No. 1768/92 or 1610/96.

Art. 68 Supplementary protection certificate

The Icelandic Patent Office shall issue a supplementary protection certificate, as provided for in Art. 10(1) of EU Regulations Nos. 1768/92 or 1610/96, once all requirements have been satisfied.

The document granting the supplementary certificate shall specify the following details: 1. filing date and application number of the certificate; 2. registration date and registration number of the certificate; 3. period of validity of the certificate; 4. registration No. of the basic patent; 5. technical classification; 6. number and date of the first marketing authorisation for a medicinal product in Iceland; 7. number and date of the first marketing authorisation in the European Economic Area; 8. name and address of the holder of the supplementary certificate; 9. name and address of the agent, as applicable; 10. the title of the invention; and 11. name of the approved product.

Art. 69 Annuities for a supplementary protection certificate

Annuities shall be paid for each year commenced after the period of validity of the basic patent has elapsed.

The annuity is due on the last day of the first calendar month of the relevant year. The annuity may be paid at the earliest three months prior to the due date. The annuity may, with the prescribed additional fee, be paid up to six months after the due date.

Art. 70 Re-establishment of rights, appeal

The provisions of Art. 72 of the Patents Act, cf. Art. 97 of this Regulation, on re-establishment of rights, shall also apply when rights provided for in EU Regulations Nos. 1768/92 and 1910/1996 have lapsed.

If an application for supplementary protection is dismissed or finally rejected, the applicant may refer such a decision by the Icelandic Patent Office to the Board of Appeal for Industrial Intellectual Property Rights within two months of receiving notification of the decision.

If the Board of Appeal upholds the decision of the Icelandic Patent Office, the applicant may refer this decision to the courts. The provisions of Art. 25 of the Patents Act shall apply as appropriate to such referrals.

A decision to grant a supplementary protection certificate cannot be referred to the Board of Appeal. Any person may bring legal action for the invalidation of a supplementary protection certificate.

A party bringing an action as referred to in the third paragraph must simultaneously notify the Icelandic Patent Office thereof. The provisions of Art. 63 of the Patents Act shall apply to such cases as appropriate.

CHAPTER IX Change of applicant or patent holder

Art. 71 Notification of transfer

If notification of a transfer of a patent application or a patent granted, cf. Art. 44 of the Patents Act, is submitted, the name of the new applicant or owner shall only be entered into the Register of Patents and a confirmation thereof issued if proof is provided of the transfer, cf. Articles 72, 73 or 77 of this Regulation, and the prescribed fee has been paid.

If documentation or information in connection with a transfer is lacking, a time limit of two months shall be granted to rectify such. If the information has not been received after the time limit has expired, the Icelandic Patent Office will send notification that information concerning the transfer will not be entered into the Register of Patents.

Art. 72 Assignment

The assignment document must be original. If the original assignment document cannot be provided, a copy certified by a public authority, such as a notary, shall be submitted.

The assignment document must specify the title of the invention together with the filing or patent number as appropriate. Furthermore, the name and address of the assignor and the assignee must be stated. The document shall be dated on the day the assignment takes place and signed by the assignor. If the assignor is a legal entity, the name and position of the person signing shall be stated.

If an assignor's signature is unclear, his/her name must be clearly stated.

Art. 73 Transfer through a contract or merger

If a transfer takes place through a contract or a merger, if no assignment document exists, a copy of the contract or merger document shall be submitted, attested to by a public authority such as a notary. It is sufficient to submit those pages of the contract or merger document concerning the transfer of intellectual property rights. Confidential information may be blacked out. Furthermore, a certified copy from the Registrar of Companies of the country concerned may be submitted if information on the merger appears in such documentation. It is sufficient to submit a copy of documentation from Icelandic authorities showing that a merger has taken place.

If a transfer occurs for other reasons, e.g. due to a change in legislation or a court order, a confirmation to thereof must be submitted.

If a transfer of an application or issued patent takes place more than once, the history of ownership shall be stated and proof provided for each transfer of ownership which has taken place.

Art. 74 Changes to a name or address

To change the name of a legal entity, a certificate or transcript from the Registrar of Companies in the country concerned shall be submitted in confirmation. It is sufficient to submit a copy of such a document.

If an applicant or patent holder merely changes his/her address, it is sufficient to send the Office a notification thereof.

Art. 75 Notification of the grant of a license

A notification of the grant of a license, as referred to in Art. 44 of the Patents Act, must state the name and address of the right holder and when the license was granted. The notification must be accompanied by the confirmation of the patent holder of the granting of a license.

Art. 76 Certified translation of assignment or license documents

The Icelandic Patent Office may require a certified translation of documents submitted to confirm a transfer of ownership or granting of a license.

Art. 77 Transfer of ownership of European patents

In the case of a European patent which has taken effect in Iceland, as referred to in Art. 77 of the Patents Act, the Icelandic Patent Office can accept as valid confirmation from the European Patent Office of transfer of ownership, license or other changes concerning the owner of a patent, if the patent holder submits such documentation before the expiration of the nine-month time limit for opposition to a European patent or before processing of opposition concludes if such was filed. Following the expiration of the time limit for opposition or once processing of opposition concludes, the provisions of Articles 72-76 of this Regulation shall apply.

CHAPTER X Register of Patents

Art. 78 Register of Patents

The Icelandic Patent Office keeps a register of national patent applications filed with the Icelandic Patent Office, national patents granted by the Office, European patents which have taken effect in Iceland, European applications as referred to in Art. 83 of the Patents Act and supplementary protection certificates.

Information in the Register of Patents is available to the public, having regard to those exceptions listed in Art. 22 of the Patents Act and Art. 36 of this Regulation.

Art. 79 Information on patent applications and patents

The Register of Patents shall include the following information for national patent applications: 1. application number; 2. filing date, i.e. for a national application this is the date the application is considered to have been

filed while in the case of an international application this is the date the application was proceeded with in Iceland as referred to in Art. 31 of the Patents Act, or the date it is considered to have been filed according to Art. 38 of the Act;

3. effective date; 4. international filing date and application number if the application is an international application

proceeded with in Iceland; 5. 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. title of the invention; 7. names and addresses of applicants or patent holders and, as applicable, the name of the contact

person if different from the applicant; 8. names and addresses of the inventors; 9. name and address of an agent, if applicable; 10. receiving country of a previous application, as well as the filing date and application number of

such application if priority is claimed; 11. number of the basic application if the application has been created by division or excision; 12. information as to whether new applications have been created by division or excision and the

numbers of the relevant applications; 13. the date a deposit began, the depository and the deposit number of a sample of biological material,

if such a sample is stored on account of the application; 14. as of what date the application was available to the public as referred to in Art. 22 of the Patents

Act and the date notification thereof was published; 15. information concerning fees which have been paid in connection with the application; 16. technical classification of the application, cf. Art. 22 of this Regulation; and 17. the status of the application, i.e. whether the application is in effect or not and, if so, for what

reasons. If a patent has been granted as provided for in Art. 20 of the Patents Act, the following additional

information shall be recorded in the Register of Patents: 1. registration number of the patent; 2. date the patent was granted; 3. the status of the patent, i.e. whether the patent is in effect or not and, if so, for what reasons; and 4. information as to whether a supplementary protection certificate has been granted based on the

patent.

Art. 80 Information on European patents

European patents, which designate Iceland, shall be entered in the Register of Patents when the European Patent Office has published a notification of the grant of patent or taken a decision on maintaining the patent in an amended version, and the applicant has submitted translations and paid the publication fee as prescribed in Art. 77(1) of the Patents Act. The following information shall be specified in the Register of Patents:

1. the date the European Patent Office published a notification of the grant of a European patent; 2. the date the Icelandic Patent Office received translations and fees as provided for in Art. 77(1) of

the Patents Act; 3. the publication date of the advertisement of validation of the patent in Iceland, as provided for in

Art. 77(3) of the Patents Act; 4. the filing date, as well as the filing date of a divisional application, if division has occurred; 5. the date the patent holder submitted a corrected translation of the patent and paid the prescribed

fee referred to in Art. 86(1) of the Patents Act and the date of the Icelandic Patent Office's advertisement to this effect; and

6. information on the status of the patent, as referred to in Point 3 of Art. 79(2) of this Regulation, and other information referred to in Art. 79(1) or (2) as appropriate.

When applicable, the following information shall be recorded on the status of the patent in the Register of Patents:

1. date of notification, if the European Patent Office published a notification of its decision to maintain a European patent, which applies in Iceland, in an amended version;

2. information that the requirements for translations and fees, as referred to in Art. 77(1) of the Patents Act, have not been satisfied within the specified time limit referred to in Art. 56(1) of this Regulation, if a request to validate the patent has been submitted; and

3. any decision by the European Patent Office to limit, cancel or invalidate a European patent which has effect in Iceland.

Art. 81 Information on European patent applications

The Icelandic Patent Office shall keep a register of European patent applications for which a translation has been submitted as provided for in Art. 83 of the Patents Act. The register is accessible to the public.

The register shall include the following details: 1. number of the application for a European patent; 2. name and address of the applicant; 3. the date a translation or corrected translation was submitted to the Icelandic Patent Office; 4. the date of publication of a notification of submission of a translation or corrected translation; 5. filing date of the application; 6. the information referred to in Art. 79 of this Regulation as appropriate; and 7. if the application is a divisional application, the date the divisional application was filed. If the corresponding European patent takes effect in Iceland, as provided for in Art. 77(1) of the

Patents Act, the information specified in Art. 80 of this Regulation shall be recorded in the register.

Art. 82 Information on supplementary protection certificates

The following information shall be recorded in the Register of Patents concerning applications for supplementary protection and supplementary protection certificates issued:

1. information listed in subparagraphs a-e of Art. 9(2) of EU Regulations No. 1768/92 and 1610/96; 2. application number and filing date; 3. name and address of the agent, if applicable; and 4. information on the status of the application. Following the publication of the issuance of a certificate as provided for in Point 2 of Art. 89(1) of this

Regulation, the following information shall be recorded in addition: 1. information concerning the period of validity of the certificate, cf. Art. 96(2) of this Regulation; 2. information concerning the status of the certificate, cf. Point 3 of Art. 79(2) of this Regulation;

and 3. information as referred to in Points 3-5 of Art. 83(1) of this Regulation as applicable.

Art. 83 Other information if applicable

The following information shall be entered in the Register of Patents if applicable: 1. if a patent has been opposed, as provided for in Art. 21 of the Patents Act, the name and address

of the opponent; name and address of his/her agent, if applicable, date of the opposition and outcome of an opposition;

2. information on appeal of a decision by the Icelandic Patent Office to the Board of Appeal for Industrial Intellectual Property Rights as well as the Board's conclusion;

3. notification of an action brought due to a decision by the Board of Appeal to reject a patent application or declare a patent invalid, as provided for in Art. 25(3) of the Patents Act;

4. notification of an action brought to invalidate a patent, for the transfer of a patent or in connection with a compulsory license as provided for in Art. 63(1) of the Patents Act; and

5. the date the Icelandic Patent Office received a transcript of a verdict as referred to in Art. 65 of the Patents Act, as well as the main conclusions of the final verdict.

The above also applies to information concerning validated European patents, requests for supplementary protection and supplementary protection certificates issued, as applicable and in accordance with the provisions of EU Regulations Nos. 1768/92 and 1610/96.

Art. 84 Information recorded at owner's request

The following information will be entered in the Register of Patents at the request of the applicant, patent holder or agent upon payment of the prescribed fee:

1. information on a new applicant or patent holder, if a transfer of ownership of a patent has taken place, as provided for in Art. 44 of the Patents Act, cf. also Art. 71 of this Regulation, as of what date the party acquired the right and when the transfer of ownership took place;

2. changes to information on the agent;

3. changes to information on the inventors; 4. information on licensees if a license has been granted as provided for in Art. 44 of the Patents Act,

cf. also Art. 75 of this Regulation, and as of what date the license was granted and what right the patent holder or licensee has to grant further licenses; and

5. information on any pledging. A request as referred to in the first paragraph shall be made in writing and shall be accompanied by

relevant documentation.

CHAPTER XI Notifications from the Icelandic Patent Office

Art. 85 The Gazette “ELS-tíðindi”

All advertisements and notifications regarding patents or patent applications, which are to be made public according to Acts and Regulations, are published in the Gazette “ELS-tíðindi” of the Icelandic Patent Office, cf. Art. 69 a of the Patents Act.

The Gazette is only published electronically. Hard copies of the Gazette may be purchased from the Icelandic Patent Office.

Art. 86 Notifications concerning patent applications and patents granted

The Icelandic Patent Office publishes notifications of the following in connection with national patent applications and national patents granted:

1. Patent applications which have been made available to the public as provided for in Art. 22(2) of the Patents Act: The advertisement must include the details specified in Points 1-4, 6, 8, 11 and 16 of Art. 79(1) of this Regulation. Furthermore, it must include the information listed in Points 5 and 7 of Art. 79 if this information is available. It must also be specified whether the application involves a preserved sample of biological material and whether the applicant has requested that specimens only be provided to independent experts.

2. Patents granted as provided for in Art. 20 of the Patents Act: The advertisement must include the information specified on the front page of the patent document, cf. Art. 38 of this Regulation, with the exception of documents cited in the examination procedure.

Art. 87 Notifications in connection with opposition

The Icelandic Patent Office shall publish notifications of the following in connection with opposition: 1. Opposition to a patent granted as provided for in Art. 21 of the Patents Act: Oppositions are

advertised following the expiration of the time limit for opposition if they have not been dismissed. The advertisement must specify the name of the opponent and the patent holder, the filing date and application number, patent registration number and technical classification, title of the invention and date of issue of the patent, as well as the principal arguments of the opponent.

2. Ruling in an opposition case as provided for in Art. 23 of the Patents Act: The advertisement must include the information specified in Point 1 plus information on the outcome of the ruling.

Art. 88 Notifications in connection with European patents and applications

The Icelandic Patent Office shall publish the following notifications in connection with European patent applications and European patents granted:

1. Validation of a European patent in Iceland as provided for in Art. 77 of the Patents Act: The advertisement must include the information specified in Art. 81(2) of this Regulation plus information on the technical classification of the patent, the title of the invention, the filing date and the date the European patent office published a notification on the grant of a patent. If priority is claimed, it must be stated where an application for priority was filed and the filing date and application number of such application.

2. Amended version of a European patent in effect in Iceland, as provided for in Art. 77 of the Patents Act: The advertisement must include the information specified in Art. 81(2) of this Regulation, together with information on the technical classification of the patent, title of the invention, filing date and the date the European Patent Office published a notification of the decision to maintain

the patent in an amended version. If priority is claimed, it must be stated where an application for priority was filed and the filing date and application number of such application.

3. Submission of a translation of the claims of a European patent application, as provided for in Art. 83 of the Patents Act: The advertisement must include the information specified in Art. 57 of this Regulation, in addition to information on the technical classification of the application, the title of the invention and the filing date. If priority is claimed, it must be stated where an application for priority was filed and the filing date and application number of such application.

4. Corrected translation of a European patent validated as provided for in Art. 86(1) of the Patents Act: The advertisement must include the information specified in Art. 56(2) of this Regulation plus information on the technical classification of the patent, the title of the invention and the date the Icelandic Patent Office received the corrected translation.

5. Corrected translation of the claims of a patent application as provided for in Art. 86(2) of the Patents Act: The advertisement must include the information specified in Art. 58 of this Regulation, in addition to information on the technical classification of the application, the title of the invention and the date the Icelandic Patent Office received the corrected translation.

Art. 89 Notifications in connection with supplementary protection

The Icelandic Patent Office shall publish the following notifications in connection with applications for and certificates of supplementary protection, cf. Art. 65 a of the Patents Act:

1. Application for supplementary protection: The advertisement must include the information specified in Art. 9(2) of EU Regulations No. 1768/92 and 1610/96, together with the application number and filing date.

2. Supplementary protection certificate issued: The advertisement must include, in addition to the information specified in Art. 11(1) of EU Regulations No. 1768/92 and 1610/96, the number of the application for supplementary protection, filing date and registration number of the certificate.

3. Refusal to issue a supplementary protection certificate: The advertisement of a refusal to issue a supplementary protection certificate, with reference to Art. 10(2) or (4) of EU Regulations No. 1768/92 and 1610/96, must include the information specified in Art. 9(2) of the same Regulations.

4. Supplementary certificate becomes invalid: The advertisement that a supplementary protection certificate has become invalid, for reasons specified in Articles 14 or 15 of EU Regulations Nos. 1768/92 and 1610/96, must include the information specified in Art. 9(2) of the same Regulations.

Art. 90 Notifications in connection with re-establishment of rights

The Icelandic Patent Office shall publish a notification in the Gazette that a request for re- establishment of rights has been received and the result of a decision on re-establishment of rights as provided for in Articles 72, 73 or 78 of the Patents Act, cf. Art. 74(1) of the Act. The advertisement shall include the information specified in Art. 79 of this Regulation, as applicable.

Art. 91 Notifications in connection with appeal

When the conclusion of the Board of Appeal for Industrial Intellectual Property Rights is available a notification to this effect shall be published in the Gazette together with an excerpt of the ruling.

Art. 92 Notifications in connection with licenses

If a request has been made to record a license in the Register of Patents, as provided for in Art. 44 of the Patents Act, cf. Art. 75 of this Regulation, a notification to this effect shall be published in the Gazette.

Art. 93 Notifications of changes to information previously published

The Icelandic Patent Office shall publish notification of the following changes to information previously published:

1. changes to information on applicants, patent holders, inventors and agents; 2. applications which have been dismissed, according to Art. 15(2) and (4) of the Patents Act, cf. Art.

26 of the Act;

3. re-instatement of an application previously dismissed, according to Art. 15(3) of the Patents Act; 4. refusal of a patent application, according to Art. 16 of the Patents Act, cf. Art. 26 of the Act; 5. republication of a patent, according to Art. 23 of the Patents Act; 6. patents which have lapsed due to unpaid annuities, according to Art. 51 or Art. 81(2) of the Patents

Act; 7. patents which have been revoked, cancelled or limited by a court verdict, as provided for in

Articles 52 or 79 of the Patents Act; 8. withdrawal of applications and patents, according to Articles 54 or 84 of the Patents Act; and 9. limitation of a patent as provided for in Art. 40 a or Art. 80 of the Patents Act. The above also applies to information concerning requests for supplementary protection and

supplementary protection certificates granted, as applicable, and in accordance with the provisions of EU Regulations Nos. 1768/92 and 1610/96.

Notifications concerning amendments to European patent applications designating Iceland are handled by the European Patent Office.

XII. CHAPTER Miscellaneous provisions

Art. 94 Language and mode of communication

Communications with the Icelandic Patent Office are carried out in Icelandic. All documentation and correspondence received by the Icelandic Patent Office should as a rule be in Icelandic, although the Icelandic Patent Office may, in exceptional circumstances, waive this requirement.

The Icelandic Patent Office may decide that documentation may be submitted in electronic format only.

Art. 95 Power of attorney

If an applicant or patent holder has granted power of attorney to an agent in a specific document, cf. Articles 12 or 66 of the Patents Act, the original document must accompany the application when filed. When a general power of attorney is provided, reference shall be made to this in each application for which it applies.

The Icelandic Patent Office may decide to waive the requirement of an original power of attorney or specific document.

No requirement is made for the original power of attorney in division or excision where the agent is the same as for the basic application.

The Icelandic Patent Office may always request provision of a power of attorney if it deems this necessary.

Art. 96 Validity of a patent

According Art. 40 of the Patents Act, a granted patent may be maintained for up until 20 years from its filing date by paying annuities, as referred to in Art. 41 of the Act. The final date of the protection period is the day of the month which precedes the day corresponding to the effective date.

The protection period for part of a patent can be extended by up to five years with a supplementary protection certificate. [The initial date of protection corresponds to the effective date of the basic patent but the final date of protection to the number of days the certificate is valid]1).

Reg. No. 938/2013, Art. 4 (Valid from 11 October 2013).

Art. 97 Re-establishment of rights

A request for re-establishment of rights must be filed with the Icelandic Patent Office within the time limits specified in Art. 72 of the Patents Act. The prescribed fee must accompany the request.

The provisions of Art. 72 of the Patents Act shall apply to lost rights when time limits of the Patents Act or EU Regulations Nos. 1768/92 and 1610/96 have not been respected, as applicable.

Re-establishment of rights can also take place when a supplementary protection certificate has lapsed according to subparagraph c of Art. 14 of EU Regulations Nos. 1768/92 and 1610/96.

If the request is due to:

1. annuities not being paid on time, the annuities which are in arrears must be paid; 2. an application for a supplementary protection certificate being submitted after the specified time

limits, the specified application fee must be paid; or 3. an application for the validation of a European patent being submitted after the specified time

limits, the specified publication fee must be paid and translations submitted. A refusal to grant re-establishment rights may be referred to the Board of Appeal for Industrial

Intellectual Property Rights within two months of notification of the decision of the Icelandic Patent Office. A positive decision cannot be referred to the Board of Appeal.

If the Board of Appeal upholds the decision of the Icelandic Patent Office on refusal, the applicant may refer this decision to the courts. The provisions of Art. 25 of the Patents Act shall apply as appropriate to such referrals.

Art. 98 Import of spare parts and equipment for aircraft

Spare parts and equipment for aircraft may be imported to Iceland without regard for patents, cf. Art. 5(2) of the Patents Act, for repair of aircraft from other states which are members of the International Civil Aviation Convention of 7 December 1944 (the Chicago Convention, cf. the advertisement of the Ministry of Foreign Affairs in Section A of the Official Journal of Iceland (Stjórnartíðindi), 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 who are signatories to the above mentioned Convention and have legislation which protects this type of invention and is consistent with the Paris Convention.

Art. 99 Time limits

The time limits to reply, granted by the Icelandic Patent Office pursuant to this Regulation and the Patents Act, shall begin on the date of the letter concerned from the Patent Office.

The time limit for bring suit, as provided for in Art. 17 of the Patents Act, is two months.

Final provisions

Art. 100 Entry into force

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

As of that same date Regulation No. 574/1991, concerning patent applications etc., as subsequently amended, and Advertisement No. 575/1991, of instructions concerning patent applications, shall be repealed.

Ministry of Economic Affairs, 21 May 2012

Steingrímur J. Sigfússon

Þóra M. Hjaltested. __________

B Section - Date of publication: 5 June 2012

Article on entry into force of Regulation No. 938/2013

Art. 5 This Regulation, which is set by authority of Art. 69 of the Patents Act, No. 17/1991, as subsequently

amended, shall enter into force immediately.

Ministry of Industries and Innovation, 11 October 2013

Valgerður Rún Benediktsdóttir.

_____________________

Brynhildur Pálmarsdóttir. __________

B Section - Date of publication: 25 October 2013