1. LEGAL BASIS
- Patents Act No. 17/1991, with Amendments No. 67/1993, No. 36/1996 and No. 91/1996.
- Regulation Concerning Patent Applications etc. No. 574/1991, with Amendments No. 661/1995 and No. 286/1996.
- Advertisement of Instructions Concerning Patent Applications No. 575/1991, with Amendments No. 661/1995 and No. 286/1996.
2. MEMBERSHIP OF INTERNATIONAL CONVENTIONS
- Paris Convention, Stockholm text (1967).
- Budapest Treaty (1977), modified in 1980, concerning deposit of Micro-organisms.
- Patent Cooperation Treaty (PCT).
3. FILING
Applicant: Inventor (one or more persons) or his assignee (one or more persons or companies). A corporate body cannot figure as inventor. Applicants not living in the country must appoint a representative residing in Iceland. Foreigners enjoy the same rights as Icelandic citizens.
Naming of inventor(s): Inventor(s)'s name(s) is/are published. Applicants other than the inventor(s) must prove their claim to the invention.
Notion of the invention: Novel products, chemical and pharmaceutical compounds, methods and uses, showing inventive merit and usefulness in industry. An explanation is required showing how the asserted useful effect, justifying the grant of the patent, is actually obtained.
Novelty: Any prior disclosure of any sort anywhere invalidates novelty. An older Icelandic application which in due time becomes publicly available (18 months after filing date or priority date) may also be a novelty bar to a more recent application. An exception to this is, that a prior publication (within 6 months before filing date) is not a novelty bar, if (1) the invention was made public through evident abuse by a third party, or (2) the invention was displayed at an officially recognised exhibition according to the Paris Convention.
Unpatentable inventions: (1) inventions contrary to morality or public order; (2) plant and animal varieties or essentially biological processes for the production of plants and animals (except, however, microbiological methods and products obtained thereby, which are patentable).
Microbiological processes: If in carrying out the invention a micro-organism is to be used which is neither available to the public nor can be described in the application documents so as to enable a person skilled in the art to carry out the invention with the guidance thereof, a culture of the micro-organism is to be deposited in accordance with regulations given by Parliament. Such a culture of micro-organism shall, when the application documents become accessible, also be made accessible on conditions stipulated by regulation.
Convention priorities: Any number; partial priorities recognised. Priority is to be claimed within 3 months after filing date.
Supplementary Protection Certificates: EU Council Regulation No. 1768/1992 has become part of the Icelandic Patents Act. However, with reference to Article 21 of the Regulation, its provisions will not be enforceable in Iceland until after January 2, 1998.
4. EXAMINATION
Deficiencies in applications: If an application is deficient the applicant is granted a short term to correct the application. In the case of failure to respond to official action, the Patent Office considers the application to have been withdrawn and it is shelved and subsequently deleted from the Patent Register. Retrieval of a shelved application is possible within 4 months thereafter with payment of the stipulated fee.
Amendment of application: Can take place before acceptance
Alteration: An application may not be altered with regard to new matter being introduced which was not in the application as originally filed. New additional matter regarding the invention may, at the request of the applicant, be made the subject of a divisional application having as its effective filing date the date when the new matter was introduced in the basic application.
Interference: Not provided for. First application (filing or priority date) always precedes a later application.
The specification: Should comprise 1) (a) a mention of the known art, (b) a statement of the purpose of the invention, (c) a reference to the main claim, and (d) an explanation as to why the measures of the claim actually do bring about the desired effect; 2) an explanation of how each individual sub-claim, if any, enhances the effect brought about by the measure of the main claim.
Claims: Acceptable types of claims are product, method and use. Product and method claims should be of the "characterised by" type. The main claim should comprise (a) a statement of the known art, (b) normally the words "characterised by", and(c) the measures according to the invention ("the characterising clause"). Any sub-claims should refer back to some preceding claim(s).
Prior user: Anyone who was using the invention in good faith at the time of filing, or had made substantial preparations to that effect, may continue to use it in his business provided he does so in the same manner as before. The user may assign such right with his enterprise.
Disputes about ownership: If anyone, other than the applicant, makes a claim to the ownership of the invention, the Patent Office may request the claimant to take the matter to court. In the meantime, the prosecution of the application may be postponed.
Dispute of novelty: Takes place between the Patent Office and the applicant's Icelandic representative.
Examination: As to form, including unity of invention, novelty and inventive merit. Lack of unity requires restriction or division.
Extent of examination: The Patent Office considers everything brought to its notice by search, opposition, or otherwise. Applicant must inform the Patent Office of the result of novelty search and patentability evaluation in foreign countries.
Division: Since an application may not contain two or more unrelated inventions, independent inventions which are described in an application on filing must be divided out and filed in separate applications. Applicant may also branch one invention out into more than one application. Divided applications may claim the filing and priority date of the parent application.
Application kept secret: Until 18 months from filing or priority date. If withdrawn or rejected within the 18 months period, the application is not made publicly accessible. The secrecy period may be shortened on applicant's request.
Translation of documents: As from January 1, 1996, specification, claims and abstract of Applications filed after that date must be translated into Icelandic in the following manner: a) claims and abstract must be translated within 18 months of the filing/priority date; b) the specification must be translated after the application has been conclusively accepted for granting by the Patent Office, but before it is granted.
Translation of transferred PCT applications: Claims and abstract of transferred PCT applications should be filed translated into Icelandic at the date of transferral to the national phase. However, a two months respite to file this translation is obtainable with payment of stipulated fee therefor. Specification is to be translated into Icelandic when the PCT application has been conclusively accepted for granting by the Patent Office, but before it is granted.
Publication - registration: Application number and filing date, applicant(s)'s and inventor(s)'s names and short title of invention are advertised. Files publicly accessible 18 months after first filing or priority date are also advertised. After being conclusively accepted and the specification has been translated (if necessary), the application is granted as a patent and the granting advertised, at which time the opposition period starts (9 months). After the opposition period has passed and/or an opposition has been overcome, a confirmation of the validity of the Patent is issued.
Opposition to granting: Must be filed within 9 months from the granting date of the patent. Reasons for opposition are lack of novelty or inventive merit.
Applicant is informed of the opposition and granted a term to reply. The Patent Office makes its decision on consideration of applicant's and opponent's argumentations.
Appeal: Both the applicant and opponent have the possibility of appealing against any decision to the Board of Appeals. Such an appeal must be filed within 2 months of the Patent Office's final decision.
5. GRANTING AND PROTECTION
Letter Patent: A patent is granted when the case has been conclusively accepted and the specification has been translated (if necessary). Letter patent is issued. Patent number and granting date, as well as application number and date, International Classification, applicant's and inventor's names and short title of invention are advertised. When the opposition period has passed, 9 months after the granting date, and/or an opposition has been overcome, the validity of the patent is confirmed.
Beginning of protection: Filing date.
Duration - extension: Granted patents which were filed according to the present Patents Act may be kept in force for 20 years from filing date. Granted patents which were filed according to the previous Patents Act, i.e. before 1992, but granted according to the present Act can be kept in force either for 15 years from granting date (15R: filed more than 5 years before granting) or for 20 years from the filing date (20R: filed less than 5 years before granting). There is no possibility of extensions.
Annuities: There are two annuity payment systems valid: 1) the old annuity payment system wherein annuities are paid for five years at a time, the first five years upon granting, the second five years just before the 5th anniversary of the granting date and the last five years just before the 10th anniversary of the granting date. 2) The new annual annuity payment system, wherein annuities always become due on each case's filing date annually, applies to all pending applications as well as 20R patents and of course to all patents filed in accordance with the new Patents Act of 1991. Payment in advance of the due date is maximum 3 months and grace period is 6 months with a 20% fine for late payment.
Marking of patented goods: Not compulsory, but advisable. In the case of alleged infringement of patent or patent application, further information must be given upon request and without delay. The text of marking is as follows: "Islenskt einkaleyfi nr. ...." or "Islensk einkaleyfisumsokn nr. ...." (einkaleyfi = patent, umsokn = application).
Amendment of issued patent: Misleading errors may be corrected.
Assignment: Possible at any time. Recordal is not compulsory but advisable since the patentee according to the Patent Register may always be sued. Assignment document is necessary for recordal purposes.
Licence for exploitation: Possible at any time. Recordal is not compulsory but possible. No specific formal requirements as to documentation. Licencee may assign his licence only if an agreement to that effect has been made.
Working - compulsory licence: If a patent is not worked within 3 years from granting and 4 years from filing, a compulsory licence may be granted to a third party, unless a valid reason for not working the patent exists. A compulsory licence can however only be granted if it has not been possible to negotiate a fair licence with the patentee. It may also be granted under special circumstances, e.g. in the public interest or to an owner of another patent who cannot work his patent without infringing an earlier patent.
Validation of lapsed patents: In the case of lapse due to non-payment of annuities, and provided that there exist excusable circumstances, validation is possible, upon request and payment within 6 months from the end of the grace period, i.e. no later than twelve months after the annuities became due.
Invalidation: A patent may only be declared invalid in a court procedure.
Expropriation: A patent may only be expropriated in times of national emergency.
The content of this article is intended to provide a general guide to Intellectual Property Law in Iceland. Specialist advice should be sought about your specific circumstances.
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This information is based on material published in Katzarov´s Manual on Industrial Property (1996 Edition), prepared and submitted by Faktor Company
