ORGANISATION MONDIALE 
D-U COMMERCE 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce IP/N/1/ISL/1/1 
14 octobre 1996 
(96-4227) 
Original: anglais 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
Islande 
Le présent document contient le texte1 des lois et réglementations ci-après, notifiées par l'Islande 
au titre de l'article 63:2 del' Accord (voir le document IP/N/l/lSL/1): 
Loin· 36/1996 portant modification de la Loi sur les brevets 
(n° 17/1991), telle que modifiée ultérieurement, de la Loi sur 
les marques (n° 47/1968), telle que modifiée ultérieurement, 
et de la Loi sur la protection des dessins et modèles 
(n • 48/1993) 2 
Loi n • 91/1996 portant modification de la Loi n • 36/1996 portant 
modification de la Loi sur les brevets (n • l 7 /1991), telle que 
modifiée ultérieurement, de la Loi sur les marques (n • 47 /1968), 
telle que modifiée ultérieurement, et de la Loi sur la protection 
des dessins et modèles {n° 48/1993) 11 
1 Anglais seulement. JP 1Nl lIJSL/l/l 
Page 2 
English translation 
No. 36 10 May 1996 
Act 
amending the Patents Act, No. 17/1991, as subsequently amended, 
the Trade Marks Act, No. 47/1968, as subsequently amended, 
and the Design Protection Act, No. 48/1993 
THE PRESIDENT OF ICELAND 
makes known: The Althing has passed this Act, and I have confinned it with 
my approval: 
PART I 
Amendments to the Patents Act 
Section 1 
The third sentence of the first paragraph of Section 6 of the Act shall read 
as follows: The Minister of Industry may decide that applications, filed in 
States which are not members of the Paris Convention, may form the basis for 
priority in accordance with this Section. 
Section 2 
The second paragraph of Section 6 of the Act shall be deleted. 
Section 3 
Section 13 of the Act shall read as follows: 
The application for a patent must not be amended so as to claim protection 
for subject matter which did not appear in the application at the time when it 
was filed. 
Section 4 
Section 14 of the Act shall be deleted. 
Section 5 
Section 19 of the Act shall read as follows: 
If the application is in accordance with applicable rules and no obstacles to 
the grant of a patent are found, and the applicant has given his approval to the 
text of the forthcoming patent, the Patent Authority shall notify the applicant 
that the patent will be awarded upon payment of the fee prescribed for the 
issuance of the patent. 
After the Patent Authority has sent the notification provided for in 
Paragraph 1, the patent claims may not be altered so as to broaden the scope of 
the protection accorded by the patent. 
The issuing fee shall be paid within two months of the date of notification 
of the Patent Authority provided for in Paragraph 1. In default thereof, the 
application shall be dismissed. The processing of such application shall be IP IN IlIISL/IIl 
Page 3 
resumed, however, if within four months after the expiration of this period of 
time the applicant pays the publication fee and the prescribed resumption fee. 
An inventor applying for a patent himself may, within the time specified in 
Paragraph 3, request exemption from payment of the issuing fee. The Patent 
Authority may grant such exemption if the applicant may be regarded as having 
considerable difficulties in paying the fee. If such a request is refused, a fee 
paid within two months of the date of refusal shall be considered to have been 
paid within the proper time limit. 
Section 6 
Section 20 of the Act shall read as follows: 
When the conditions of Section 19 have been fulfilled the Patent Authority 
shall grant the patent and prepare the patent document. The granting of the 
patent shall be advertised at the same time. 
After the granting of the patent has been advertised the Patent Authority 
shall make available upon request copies of its description, patent claims and 
abstract. These documents shall indicate who the inventor is and who the 
applicant is. 
Section 7 
Section 21 of the Act shall read as follows: 
Anyone may file an opposition against the patent granted with the Patent 
Authority. Opposition shall be made in writing and reasoned and must be filed 
with the Patent Authority within nine months from the date the granting of the 
patent was advertised. 
Opposition may only be based on the contention that the patent was 
granted despite the following: 
1. the conditions of Sections 1 and 2 were not fulfilled, 
2. the invention is not described clearly enough to enable a person skilled in 
the art to carry out the invention with the guidance thereof, 
3. the subject of the patent is more extensive than the application in the fonn 
in which it was filed. 
The Patent Authority shall advertise that an opposition has been filed. 
Section 8 
The following amendments shall be made to Section 22 of the Act: 
a. The first and second paragraphs shall read as follows: 
As from the date the patent is granted, the application documents in the 
case shall be available to any person. 
When 18 months have elapsed from the date of filing, or from the day 
when priority is claimed, cf. Section 6, the documents shall be available 
toany person, even though a patent has not been granted. If a decision has 
been made to dismiss or to refuse the application, the files shall, however,· 
not be available unless the applicant requests resumption of the 
proceedings, appeals against the refusal or requests re-establishment of 
rights under Sections 72 or 73. 
b. The fifth paragraph shall read as follows: IP/NIllISL/II1 
Page 4 
If a document contains business secrets which do not concern an invention 
for which a patent is sought or granted, the Patent AuthoritY may, on 
request and in special circumstances, decide that the document, in whole 
or in part, shall not be made available to the public. If such a request has 
been filed, the document shall not be made available until a decision to this 
effect has been made or until the period during which the decision may be 
appealed has passed. An appeal shall have the effect of suspending the 
implementation of such decision. 
c. The seventh paragraph shall read as follows: 
Notwithstanding Paragraph 6 an applicant may request that a sample of a 
microorganism culture shall only be provided to an expert until such time 
as a patent has been granted or a final decision taken concerning an 
application which has not resulted in a patent. The Minister of Industry 
shall set rules governing the time limit for the submission of such a request 
and prescribing who may be considered an expert in this context. 
Section 9 
Section 23 of the Act shall read as follows: 
The Patent Authority shall notify the patent holder of opposition filed and 
allow him an opportunity to submit his arguments. 
The Patent Authority may accept opposition for processing even though a 
patent has lapsed or will cease to have effect, as referred to in Sections 51 or 
54, the opposition has been withdrawn or the opponent is deceased or has lost 
the right to proceed with such a case. 
The Patent Authority may declare the patent null and void or decide that it 
shall continue to be valid, in the same or altered form. If the Patent Authority 
agrees that the Patent should be altered and the patent holder has indicated his 
agreement, the patent document shall be altered in accordance with the 
subsequent amendments after the patent holder has paid the required fee for the 
reissuing of the patent. The Patent Authority shall make available copies of the 
final version of the Patent. 
If the patent holder fails to agree to the altering of the patent or fails to pay 
the fee prescribed for the issuing of a new patent document, the patent shall be 
considered to have lapsed. 
When a final decision has been reached in an opposition case, such 
decision shall be advertised. 
Section 10 
Section 24 of the Act shall read as follows: 
An appeal against the final decision of the Patent Office concerning a 
patent application may be filed by the applicant to the Patent Board of Appeal. 
If a patent has been declared invalid or if the Patent Office considers that the 
patent may continue to be valid in an altered fonn following the decision in an 
opposition case, the patent holder may refer this decision to the Patent Board of 
Appeal. If the patent is to continue to be valid without alteration, or the Patent 
Office considers that the patent may continue to be valid in an altered form, 
despite legally submitted opposition, the opponent may refer this decision to IP/Nll/lSL/l/l 
Page 5 
the Patent Board of Appeal. Should the opponent withdraw his appeal the case 
may nonetheless be examined if special circumstances advocate 'so doing. 
Decisions rejecting a request for resumption under Paragraph 3, Section 15 
or Paragraph 1, Section 20 or complying with a request for transfer under 
Section 18 may be appealed against by the applicant. Decisions rejecting a 
request for the transfer of the application may be appealed against by the 
person making the request. 
Decisions rejecting a request under Paragraphs 5 and 8, Section 22 may be 
appealed to the Patent Board of Appeal by the person making the request. 
Section 11 
The following amendments shall be made to Section 25 of the Act: 
a. The first paragraph shall read as follows: 
Appeals in accordance with Section 24 shall be filed with the Patent Board 
of Appeal not later than two months after the date on which the party 
concerned was notified of the decision by the Patent Authority. The 
prescribed appeal fee shall be paid within the same time limit. Failure to 
do so shall result in rejection of the appeal as inadmissible. 
b. The third paragraph shall read as follows: 
Proceedings concerning decisions of the Patent Office which may be 
appealed against to the Patent Board of Appeal may not be brought before 
the courts until the decision of the Patent Board of Appeal has been given, 
cf., however, Sections 52 and 53. Proceedings concerning decisions of the 
Patent Board of Appeal to refuse an application for a patent or have a 
patent declared invalid shall be brought before the courts within two 
months of the date on which the party concerned was notified of the 
decision. 
Section 12 
Section 26 of the Act shall read as follows: 
If an application which has been made available to the public is finally 
refused or dismissed, the refusal or dismissal shall be advertised. 
Section 13 
The following amendments shall be made to Section 31 of the Act: 
a. The first paragraph shall read as follows: 
If the applicant wishes to proceed with an international application with 
respect to Iceland, he shall within 2 months from the international date of 
filing, or if priority is claimed, from the priority date pay the prescribed fee 
to the Patent Authority and in addition submit a translation of the 
application to the extent prescribed in a regulation. 
b. The third paragraph shall read as follows: 
If the applicant has paid the prescribed fee within the time limits fixed in 
the first and second paragraphs, the prescribed translation may be filed 
within a further period of two months, provided that additional fee as 
prescribed is paid prior to the expiry of the further period. IP/N/1/ISL/I/l 
Page 6 
Section 14 
The third paragraph of Section 33 of the Act shall read as follows: 
The provisions of Section 22 shall apply as soon as an applicant has 
complied with his obligations under Section 31 to file a translation of the 
application with the Patent Authority even though the application has not yet 
been proceeded with. 
Section 15 
Section 34 of the Act shall read as follows: 
A patent shall not be granted nor refused on the basis of an international 
application until the time limit prescribed in a Regulation has expired, unless 
the applicant has consented to the application being decided upon prior to such 
expiration. 
Section 16 
Section 35 of the Act shall read as follows: 
Without the consent of the applicant the Patent Authority may not grant a 
patent on the basis of an international application nor lay it open to public 
inspection prior to its publication by the International Bureau of the World 
Intellectual Property Organization (WIPO) or prior to the expiry of 20 months 
from the international filing date or, if priority is claimed, from the priority 
date. 
Section 17 
Section 46 of the Act shall read as follows: 
The proprietor of a patent for an invention, the exploitation of which is 
dependent on a patent held by another person, may obtain a compulsory license 
to exploit the invention protected by the latter patent if the former invention is 
considered to represent an important technical advance, which has considerable 
economic significance. 
In the event of a compulsory license being granted to exploit a patented 
invention in pursuance of Paragraph 1, the proprietor of that invention shall be 
entiteled to obtain, upon resonable terms, a compulsory license to exploit the 
other invention. 
Section 18 
Section 49 of the Act shall read as follows: 
A compulsory license may only be granted to a person who has not been 
able to reach agreement to obtain a licence on reasonable terms and may be 
presumed to be capable of exploiting the invention in a reasonable and 
acceptable way and in accordance with the terms of the license. 
A compulsory license shall not prevent the proprietor of the patent from 
exploiting the invention himself or from granting licenses to others. 
A compulsory licence may only be transferred to others together with the 
business in which it is exploited or in which the exploitation was intended. 
Furthermore, where a compulsory licence has been granted as provided for in 
Paragraph 1 of Section 46, transfer of a compulsory licence may only occur IP IN I lIISL/II 1 
Page 7 
concurrent with transfer of the patent which was dependent upon a patent held 
by another party. 
A compulsory licence concerning semi-conductor technology may only be 
granted for public exploitation which is not of a commercial nature, or to 
prevent behaviour which a court or government authority has regarded as anti­
competitive. 
Section 19 
Section 50 of the Act shall read as follows: 
The Reykjavik City Court shall decide whether a compulsory license shall 
be granted, to what extent the invention may be exploited, the amount of 
compensation to be paid to the patent proprietor and other conditions of the 
compulsory license. If circumstances should change significantly, the Court 
may, at the request of either party, cancel the license or lay down new 
conditions. 
Section 20 
Point 4 of the first paragraph of Section 52 of the Act shall read as follows: 
4. the scope of protection conferred by the patent has been extended after the 
Patent Authority notified the applicant, in accordance with Section 19, that 
a patent could be granted. 
Section 21 
Section 60 of the Act shall read as follows: 
If any person exploits an invention commercially without permission after 
the application documents have been made available to the public, and the 
application results in a patent, the provisions concerning patent infringement, 
with the exception of the provisions of Section 57, shall apply mutatis 
mutandis. The patent protection conferred prior to the granting of a patent 
shall, however, only extend to subject matter which may be derived both from 
the claims as worded at the time when the application was made available to 
the public and from the patent as granted or as altered, as referred to in 
Paragraph 3 of Section 23. 
A party, exploiting an invention in accordance with Paragraph 1, shall only 
be liable to the extent referred to in Paragraph 2 of Section 58 to pay damages 
for injury caused by infringement committed prior to advertisement of the 
granting of the patent in accordance with Section 20. 
Section 22 
The first sentence of the first paragraph of Section 63 of the Act shall read 
as follows: Any person who institutes proceedings for the invalidation of a 
patent, for the transfer of right to a patent or for the grant of a compulsory 
license shall notify the Patent Authority thereof. IP IN I lIISL/II 1 
Page 8 
Section 23 
A new Section 64a is added following Section 64 of the Act, which shall 
read as follows: 
Should a patent involve a method for producing a novel product, then if 
this same product is produced by a person other than the holder of the patent, it 
shall be considered as having been produced by means of the patented method 
unless proved otherwise. 
In presenting proof of the contrary, the legitimate interests of the parties to 
protect production and commercial secrets shall be respected. 
Section 24 
A new Part IXa, Supplementary protection, is added following Part IX, 
consisting of one new section, Section 65a, which shall read as follows: 
European Council Regulation 1768/1992, concerning a supplementary 
protection certificate for medicinal products, which is Point 6 of Annex 17 of 
the Treaty Establishing a European Economic Area, is annexed to this Act and 
shall be considered as part of it. The provisions of the Regulation shall have 
the force of law in this country. 
An application for supplementary protection shall be submitted in writing 
to the Patent Authority. The applicant shall pay the prescribed application fee. 
An annual fee shall be paid for each fee year commencing after the patent 
has lapsed. The same rules which apply to annual fees for patents shall apply 
in other respects these annual fees. 
More detailed rules concerning applications for supplementary protection, 
their processing and research, the registration of supplementary protection, etc. 
shall be set in a Regulation. 
The penalty provisions of Sections 57 and 62 shall also apply to 
supplementary protection. 
Section 25 
The first paragraph of Section 67 of the Act shall read as follows: 
An applicant, proprietor of a patent or person demanding the invalidation 
of a patent may appeal the final decisions of the Patent Office in addition to 
those referred to in Section 24 to the Patent Board of Appeal not later than two 
months after the date on which he was notified of the decision. The same shall 
apply for decisions in pursuance of Section 42, or the first and second 
paragraphs of Section 72, and Section 73. Other parties with interests at stake 
may, in the same manner, refer the decisions in question to the Patent Board of 
Appeal not later than two months after the publication of the decision. 
Section 26 
The first sentence of the first paragraph of Section 69 of the Act shall read 
as follows: The Minister of Industry shall lay down detailed rules concerning 
patent applications and their processing, the processing of opposition, the 
arrangement and keeping of the Register of Patents, the publication and 
contents of the Patent Gazette, the organisation and procedures of the Patent IP/NIlIISLIIIl 
Page 9 
Office and the Patent Board of Appeal, and the implementation of this Act in 
general. . 
Section 27 
The second paragraph of Section 75 of the Act shall read as follows: 
After 1 June 1996, patents for pharmaceuticals may be granted on the basis 
of applications filed after 1 January 1995. 
PARTll 
Amendments to the Trade Marks Act 
Section 28 
Article 30 of the Act shall read as follows: 
The Minister of Industry may decide that any person who has applied for 
the registration of a trade mark in another State may, within a precribed time 
limit, file an application for the registration of the same mark in this country 
with the effect that the applications shall be considered, with regard to marks 
for which other persons have applied for registration or taken into use, to have 
been filed simultaneously to the filing of the application in the foreign State. 
PART III 
Amendments to the Design Protection Act 
Section 29 
The second sentence of Article 7 of the Act shall read as follows: The 
Minister of Industry may decide that applications, filed in States which are not 
members of the Paris Convention, may form the basis for priority in accordance 
with this Section. 
PART IV 
Provisions on Entry into Force 
Section 30 
This Act shall enter into force on June 1, 1996. 
Section 31 
This Act shall apply to patent applications which are covered by Act 
No.17/1991 and are being processed by Patent Authorities at the time of entry 
into force of this Act. If notification indicating that the laying open to public 
inspection of an application was accepted has been sent prior to the entry into 
force of this Act, the processing of such application shall be in accordance with 
the provisions of the Act prior to amendment. 
The provision of Section 7 of this Act shall not apply to patents granted 
prior to the entry into force of this Act. 
The provisions of Sections 13 and 14 and of the second paragraph of 
Section 19 of Act No. 17/1991 shall apply to applications filed prior to the 
entry into force of this Act. 
The provisions of Section 22 of this Act shall not enter into force until 2 
January 1998. IP/NIl/ISL/II 1 
Page 10 
[Annex] 
Done in Reykjavik, May 10 1996. 
Vigdis Finnbogad6ttir 
(L.S.) 
Finnur Ing61fsson No. 91 
Act IP/N/lIISL/I/l 
Page 11 
English translation 
29 May 1996 
amending Act No 36/1996, amending the Patents Act, No. 17/1991, as 
subsequently amended, the Trade Marks Act, No. 47/1968, as subsequently 
amended, and the Design Protection Act, No. 48/1993 
THE PRESIDENT OF ICELAND 
makes known: The Althing has passed this Act, and I have confirmed it with 
my approval: 
Section 1 
The third and fourth paragraphs of Section 31 of the Act shall read as 
follows: 
The provisions of Sections 13 and 14 and of the second paragraph of 
Section 19 of Act No. 17/1991, as they were prior to the entry into force of this 
Act, shall apply to applications filed prior to 1 June 1996. 
The provisions of Section 24 of this Act shall not enter into force until 2 
January 1998. 
Section 2 
This Act shall enter into force immediately. 
Done in Reykjavik, June 12 1996. 
Vigdis Finnbogad6ttir 
(L.S.) 
Finnur Ingolfsson 