Legislative Texts
REGULATION 57–4/1991 concerning patent applications
Official Icelandic Title:
Reglugerð varðandi umsóknir um einkaleyfi o.fl.
instituted by the Ministry of Industry in accordance with the Patent Act no. 17/1991
Special issue
Translation from the Icelandic Law and Ministerial Gazette
EINKALEYFASTOFAN
Lindargötu 9 150 Reykjavík Iceland
Contents:
Heading Section no.
Filing and recording of patent applications9
Publication of patent applications............................................................................................. 25 – 25d
10 – 13
Patent claims 16
17 – 17c
Abstract18
Amendments to patent applications 21
Division and excision 24
Processing of patent applications30
Laying open of patent applications to public inspection 36
Specific instructions regarding patent applications37
Register of patents etc43
Advertisements of the Patent Authority 44
Receiving of international applications 50
Proceeding with international patent applications etc. 56
Spare parts and accessories for aircraft57
Entry into force58
1 – 2
Abbreviations:
The Patent Office uses the following abbreviations for current law and regulations in the field of patents: PA = Patent Act no. 17/1991 RCPA = Regulation Concerning Patent Applications, etc., no. 574/1991 AICP = Advertisement of Instructions Concerning Patent Applications, no. 575/1991
Legislative Texts
The Icelandic Law and Ministerial Gazette B, no. 574/1991
Regulation concerning patent applications, etc.
Filing and recording of patent applications
Section 1
Icelandic patent applications shall be filed with the Patent Office.
International patent applications designating Iceland shall be filed with an authority or international organization recognized as a receiving office under the Patent Cooperation Treaty. Provisions regarding the Patent Office as a receiving authority are to be found in sections 45–50.
Unless otherwise stated, the provisions of this Regulation shall apply only for the following: 1) 2) | Icelandic patent applications and international patent applications which have been proceeded with under section 31 of the Patent Act or processed under section 38 of the Patent Act. |
| Section 2 |
An Icelandic patent application shall consist of a written request (application form) together with accompanying documents. The application form shall be signed by the applicant or his agent and shall indicate: 1) the name and address of the applicant and, if the applicant is represented by an agent, the agent's name and address 2) the name and address of the inventor 3) a short descriptive name for the invention for which protection is claimed 4) if several applicants make a joint application, which of these applicants has power of attorney to receive communications from the Patent Authority 5) to what extent the application involves the deposit of a micro–organism in the manner described in paragraph 6, section 8 of the Patent Act 6) documents accompanying the application. The accompanying documents shall include: 1) a description of the invention, together with drawings if these are necessary for the understanding of the invention, patent claims and abstract 2) power of attorney, if the applicant is represented by an agent and the power of attorney is not granted in the application form 3) if the applicant is not one and the same with the inventor, evidence (in the form of an assignment) of the applicant's title. The prescribed application fee shall accompany the application.
Section 3
The description, patent claims and abstract shall be in Icelandic. Other documents may be in Icelandic, Danish, Norwegian, Swedish or English.
If a document is not in any of the languages specified in paragraph 1, it shall be accompanied by a translation. For documents other than the description, patent claims and abstract and for those parts of the description or patent claims in an Icelandic patent application which, under paragraph 1, section 21 do not count as basic documents, the Patent Office may waive the demand for a translation or accept a translation in
Legislative Texts
a language other than Danish, Norwegian, Swedish or English. The Patent Office may require that an authorized translator or other person recognized by the Patent Authority certifies the translation.
Section 4
The description, patent claims and abstract shall be typed or printed in black on white A4 (21x29.7 cm) paper. Drawings shall be produced in dark or black lines on white or light coloured, durable A4 paper.
The description, patent claims, drawings and abstract shall be produced in a form suitable for easy reproduction. The Patent Office shall lay down specific instructions for the format of patent documents and the number of copies required.
Section 5
If the applicant wishes, a novelty search as described under section 9 of the Patent Act, to be performed he shall file a written request at the Patent Office within three months from the filing day or from the day on which the application was deemed to be filed, and he shall pay the prescribed fee. If the patent application is not in any of the languages accepted by the organization which carries out the novelty search, a translation into a language specified by the Patent Office shall accompany the request.
If the applicant wishes for the novelty search referred to in paragraph 1 to be carried out by a particular organization, he shall specify that organization in the request. If the patent application and prescribed translation fail to meet requirements of form demanded of international patent applications, within the period prescribed in paragraph 1, the request shall be dismissed.
Section 6
The Patent Office shall mark the application with the date on which it was filed.
Section 7
The Patent Office shall keep a record of patent applications filed. The record shall be open to the public. The record shall include the following information for each application: 1) the application number 2) the code number for the international classification category to which the application belongs 3) the name and address of the applicant 4) if the applicant is represented by an agent, the agent's name and address 5) the name and address of the inventor 6) the name of the invention 7) whether the application is Icelandic or international 8) filing date, if the application is Icelandic, as well as the effective date of application if this is
different from the filing date 9) if the application is international, the international filing date and the date on which the application was proceeded with under section 31 of the Patent Act, or the date on which the application is deemed to have been filed under section 38 of the Act 10) the name of the state in which an application has previously been filed, if priority is claimed on
the basis of this, together with the filing date and number of that application 11) if the application is a result of division or excision, the parent application number 12) information regarding whether new applications have resulted from division or excision together
with the number of the relevant applications 13) where appropriate, the date from which the application became available to the public under paragraph 3, section 22 of the Patent Act 14) in the case of an international patent application, the international application number
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15) information regarding fees that have been paid in respect of the application
16) where appropriate, information regarding oppositions and opponents to the application
17) information regarding the final outcome of the application.
Section 8
The Patent Office shall prepare, every month or in connection with the publication described under section 44, the following: 1) a list of applications, cf. section 7, including the information stipulated in subsections 1, 3, 5–11 and 14, paragraph 3, section 7,
2) a list of international patent applications designating Iceland and about which the Patent Office
has received information from the World Intellectual Property Organization in Geneva. The list
shall include all the information for each patent application stipulated in article 30(2b) of the
Patent Cooperation Treaty.
The list described under section 8 shall be available from the Patent Office for a fee, where this entails a special issue.
Section 9
If a communication is received indicating that the title of a patent application has changed hands the name of the new applicant shall be added to the record only with evidence in the form of a deed of transfer.
Priority
Section 10
In order to obtain priority under section 6 of the Patent Act, the applicant shall submit a written claim within three months from the filing date in this country, or from the day on which the application was deemed to have been filed (effective date), together with information on where the application which the claim is based on was filed, including its filing date and application number as soon as is practically possible.
In the case of an international application a claim for priority shall be made at the same time that the application is filed. The claim shall be accompanied by information on where the application referred to was filed, together with its filing date and, in the case of an international application, the name of at least one of the designated states. The applicant shall, within 16 months from the priority date, inform the appropriate receiving office or the World Intellectual Property Organization of the number of the application upon which he bases his claim for priority.
If an application is divided, cf. section 22, the claim of priority for the original application shall, without need for further claims, also be valid for any applications resulting from the division.
Section 11
An applicant claiming priority shall, within 16 months from the priority date, provide the Patent Office with a certificate from the patent authority which received the application upon which the claim for priority is based. The certificate shall state the filing date and the name of the applicant. It shall be accompanied by a copy of the application, certified by the patent institution concerned. The Patent Office shall lay down regulations for the format of the copy. In the case of an international application however, such a certificate need not be provided unless the Patent Office requires, cf. paragraph 4. Instead, certification may be sent to the World Intellectual Property Organization, in accordance with Rule 17(1) of the Regulations under the Patent Cooperation Treaty. The Patent Office may exempt an applicant from the need to provide the documents specified in paragraph 1.
If an applicant fails to provide the specified documents within the prescribed time limit his right to priority shall lapse.
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If the World Intellectual Property Organization has been provided with a copy of the application upon which the claim for priority in an international patent application is based, the Patent Office may only require a copy and translation in accordance with Rule 17(2) of the Regulations under the Patent Cooperation Treaty.
Section 12
An application may only be the basis for a claim of priority under section 10 if that application is the first in which the invention is described.
Notwithstanding that the person who filed the first application, or his successor in title, has later filed an application with the same authority relating to the same invention, the later application may be used as the basis for a claim of priority if the first application has been withdrawn upon filing of the later application, or if the first application was shelved or refused before it became available to the public, and on condition that no rights or priority are based on it. If priority has been obtained on the basis of such a later application, a claim for priority based on the first application may no longer be entered.
The provisions of paragraph 2 shall apply to applications whose effective date has been postponed.
Section 13
It is possible to claim priority for part of an application. A claim of priority for one and the same application may be based on more than one application even though they relate to different countries.
Patent claims
Section 14
A patent claim shall contain: 1) | the name of the invention |
2) | a statement of the art in relation to which the invention constitutes something new (the state of |
| the art), if such information is necessary, and |
3) | a statement of the novel and characteristic features of the invention. A patent claim may only |
| relate to one invention. |
The invention shall, if possible, be referred to one of the following categories: product, apparatus (equipment), process or use.
Nothing may appear in the patent claim which is irrelevant to the invention as it is described in the claim or which is immaterial to the exclusive right applied for.
Section 15
A patent application may contain several patent claims. If several claims are made in the same application they shall be numbered and ordered consecutively.
A patent claim may be independent or dependent. A patent claim is considered dependent if it concerns the embodiment of an invention which is described in another claim and entails all features of that claim. Other patent claims are independent.
Several dependent claims may be attached to a patent claim. A dependent claim may be attached to one or more preceding claims. In such cases, in the preamble to the claim, reference shall be made to the claims concerned and then other characteristic features of the invention shall be described.
Section 16
Several inventions which are included in the same application are considered dependent on each other if there is a technical connection between them in the sense that one or more of the same or equivalent technical characteristic features are common to all of them. The term technical characteristic feature refers to those technical elements in each individual invention which are novel in terms of the state of the art.
The issue of whether inventions are dependent on each other shall be resolved without regard to whether they are mentioned in other patent claims.
Legislative Texts
Description
Section 17
The description of an invention shall be limited to subject–matter which provides a clear understanding of the invention. Where new or rare terminology is used its meaning shall be explained. Only symbols and units of measurement generally accepted in the Nordic countries shall be used.
If a patent application involves a deposit of a culture of micro–organism under paragraph 6, section 8 of the Patent Act the application shall, at the date of filing, contain all relevant data known to the applicant on the characteristics of the micro–organism.
Section 17a
Cultures of micro–organisms under paragraph 6, section 8 of the Patent Act shall be deposited with an institution which is an internationally recognized depository under the Treaty done at Budapest 28 April 1977 on the International Recognition of the Deposit of Micro–Organisms for the Purposes of Patent Procedure (the Budapest Treaty).
The deposits shall be made in accordance with the provisions of the Budapest Treaty.
The Patent Authority shall make a list of those institutions which are internationally recognized depositories for micro–organisms under the Budapest Treaty.
Section 17b
If an applicant has deposited a culture of a micro–organism, he shall, within 16 months from the date of filing or if priority is claimed, from the priority date, inform the Patent Authority in writing of the name of the institution where the deposit has been made and which deposit number the institution has allotted the culture. In the case of international applications, the World Intellectual Property Organization shall be provided with the same information within the same time limit.
If, prior to the expiry of the time limit referred to in paragraph 1, the applicant requests that documents relating to the application be made available to the public earlier than is prescribed in paragraphs 1 and 2, section 22 of the Patent Act, he shall provide the information referred to in paragraph 1 at the latest at the same time that the request is made. If, prior to the expiry of the time limit referred to in paragraph 1, a person making an international application requests early publication of the application under Article 21(2b) of the Patent Cooperation Treaty, he shall provide the World Intellectual Property Organization with the said information at the latest at the same time that the request is made.
If a deposited culture of a micro–organism has been transferred from one international depository to another, in accordance with paragraph 1, rule 5 of the Budapest Treaty, the applicant shall, as soon as possible and once he has received a receipt for the transfer of the culture, inform the Patent Authority of the transfer and of the new number allotted to the culture.
As proof that the information referred to in paragraphs 1 and 3 is correct, the Patent Authority may require from the applicant a copy of the receipt which the depository has issued regarding the deposit of the culture.
Section 17c