Changes to the Patent Act and fees as of 1 June 2018

08/06/2018

On 1 June 2018 changes to the Patent Act No. 17/1991 entered into force with Act No. 40/2018. The changes also entail changes to the Regulation on Fees No. 818/2016.

The main change concerns the implementation of two EU Regulations on Supplementary Protection Certificates (SPC) No. 469/2009 and the so-called Paediatric Extension Regulation No. 1901/2006. The regulations are now legally binding cf. Article 65. a. PA. Since it has taken some time to implement the Paediatric extension in Iceland, some flexibility with regard to already granted SPCs is provided, cf. the EEA Joint Committee Decision No. 92/2017. According to the adaptation text,  an extension must be filed for SPCs that will expire less than 7 months from entering into force before 1 July 2018. For SPCs that expired less than 6 months prior to entering into force, an extension will only take effect with respect to the time following both the entry into force and the date of publication of the application for the extension.

Other changes of the Patent Act concern e.g..:

  • Clarifications to the provision on division and excision
  • Possibility for granting of a patent with an English specification
  • Introduction of a fee for opposition and clarifications on the provision on opposition
  • Effect from the outset of a patent limitation
  • Clarifications to the provision on re-establishment of rights

Changes in the fee regulation concern:

  • for correction of patent claims and reissuing: 27.600 ISK
  • for filing an opposition: 41.400 ISK
  • for filing an SPC Paediatric extension: 47.800 ISK

Changes to the Patent Regulation will be introduced shortly.

The Icelandic Patent Office is working on updates on forms and English versions of the legal instruments concerned. These will be available here. The Icelandic site for Acts and Regulations is updated and available here.