Romania: Patents

The purpose of the first part of this document is to set the legal framework, the second part provides short answers to frequently asked questions about patents, whereas the third provides more detailed information on the Romanian Patent Law such as the criteria for an Invention to be patentable. Section four provides hints on whether a European Patent may or may not be extended to Romania.

1. Patent Law No. 64/1991, published on October, 21, 1991, effective since January 21, 1992.

2. Implementing Regulation to the Patent Law No. 64/1991, approved by Governmental Decree no. 152/27 March 1992.

3. Law on repression of the unfair competition, No. 11 of January 30, 1991.

4. Law No. 32/12 March 1997 on the ratification of the Agreement between European Patent Organization on the Extension of European Patents to Romania.

5. Governmental Ordinance No. 41/30 January 1998 on Official Fees related to Industrial Property Rights effective 1 March 1998.

b) International Conventions

1. Paris Convention for the Protection of Industrial Property

Romania is a State party to Paris Convention since October 6, 1920.

Patent Cooperation Treaty concluded in Washington on 19 June 1970 was ratified by Romania by the Decree No. 81 of March 2, 1979, effective since July 1979.

3. Strasbourg Agreement concerning International Patent Classification shall enter into force on March 31, 1999.

In terms of Article 34 of the Patent Law, the patent confers to its owner the right to prevent third parties to carry out the following acts without the its acquiescence, that are considered infringement:

a) for products: to manufacture, to offer to put on the market, to use to introduce in Romania or to store in order to commercialize the good or object of the patent;

b) to use the method, object of the patent, or to offer to use the said method.

The following non prejudicial uses of an invention are stipulated by Article 37 of the Patent Law:

a) the utilization on board of a car, a ship or plane belonging to the countries that are members of the conventions of which Romania is a party, which pass, temporarily or accidentally, on Romania's territory;

b) the practice of a prior and personal ownership right;

c) the production and utilization of an experimental aim;

d) the offer for sale or sale of samples of a patented product previously sold by the patent owner.

Inventions that are new, involve inventive activity and are susceptible of industrial application are patentable. The patents may have as its subject matter:

• products, such as chemical, pharmaceutical, biochemical products, or food substances and in general any kind of products;
• processes or methods;
• methods of treatment of human or animal body and products consisting of a substance or composition invented for use in any such methods;
• a new variety of plant, a hybrid or a new animal breed provided that the variety is new distinct, homogenous and stable;
• newly created microorganisms or those isolated by selections, analysis;

The right to a patent belongs to the inventor or his successor in title. It belongs to the person(s) who filed the application with the earliest date of priority, as long as no final proof of the contrary is produced.

Foreign applicants and patentees have to be represented in all patent matters, including payment of official fees, by an authorized patent attorney having residence in Romania. The representative has to file with the PTO, a Power of Attorney duly signed by the applicant. General Power of Attorney is accepted. Late filing of Power of Attorney is possible.

The duration of a patent of invention is 20 years as from the date of filing.

Documents required to obtain a filing date

• Order Letter containing the following information:
• the full name, complete postal address and nationality (or state of incorporation of the/each applicant; full name and complete postal address of the inventor(s);
• title of the invention;
• instructions as to whether priority is to be claimed from any earlier application in a Paris Convention country, specifying : the date and country, the official number and applicant of each such earlier application from which priority is to be claimed;
• The proposed description of the invention (with drawings where appropriate), together with at least one claim, and abstract. An indication should be given as to whether the claim(s) or description and claim(s) should be revised by us prior to filing. The proposed description and claims may be filed with the Patent and Trademark Office in English, French or German, but in this case the translation into Romanian must be lodged within two months from the filing date.
• International Publication, copy in the case of PCT Applications

Power of Attorney simply signed by each of the applicants, deadline: two months from the filing date. General Power of Attorney is admitted.

Assignment document(s) from the inventor(s) to the applicant(s), legalized by a Notary Public, deadline: three months from the filing date;

Certificate(s) of Priority (for Convention Patent Applications) must be filed within 16 month from the priority date. If the document is not in English, French or German a translation in of any these languages will be required.

The translation into Romanian , deadline: two months from the filing date.

International Preliminary Examination Report, and International Search Report in the case of PCT Applications

Yes, provided that two conditions are simultaneously fulfilled: the international application was filed on or after 15 October 1996 and both the designations EP (regional patent) and RO (national patent) are made in the international application.

In Romania transitory ("pipeline") patent protection has been possible to be requested on the basis on a foreign patent granted if all requirements have been fulfilled. The last day of filing an application for pipeline protection was November 20, 1998. Thus no applications for pipeline protection can be filed today. (please delete both hyperlink and file "Transitory/Pipeline Protection).

Whoever performs an act of infringement of the rights of a patent either willfully or by oversight or imprudence may be bond to pay damages to the injured party.

The action for damages may be introduced anytime during the validity of the patent, but the decision of the Court shall be applicable only after the granting the patent. Damages may be claimed from the time at which the defendant became aware of the content of the patent application. In the case of patent granted after preliminary examination it shall be possible, in all cases, to demand redress for damages caused by the defendant after publication of patent application.

Determining infringement is a fact and law question. As a fact question is whether the defendant has performed acts which fall within the claims of the patent. As a legal question concerns the drafting of the patent claims. The scope of protection is not always limited to the literal language of the claims. The Doctrine of equivalents cannot be used to obtain a claim scope that not has been obtained during prosecution before the PTO.

The doctrine of equivalents is applicable on a case by-case basis, depending upon fact situation.

The most complete and comprehensive legislative framework for governing inventions in Romania was enacted in January 1906. Since 1967, for over thirty years, according the Patent Law nr. 62/1967, Romania's policy has been to deny patents for products such as for chemical, pharmaceutical products as well as for foodstuff. In 1992, following major political and economical changes, there have been significant changes in the Patent Law, so that adequate protection is now granted.

The Romanian Patent Law nr. 64 came into force in 1992 and the Decree of Implementation Regulation nr. 152 has been enforced in 1992 as well as the Law nr. 120 regarding the fees due for patent applications and patents.

As Romania is a member of Paris Convention, WIPO and PCT, the Patent Law nr.64 is in full compliance with the provisions of these International Conventions.

Also this Patent Act is thought in harmonization as much as possible with European Patent Convention, being lost some significant differences. However, an agreement of extension of effects of European patent to Romania has been concluded in September 1994. With effect from 15 October 1996 the extension of a European patent to Romania is in force. The extension is only possible in respect of international applications filed on or after 15 October 1996, provided that both the designations EP (regional patent) and RO (national patent) are made in the international application.

Here are some characteristic features of this Law:

1. Patentable Inventions: Scope Of Protection

2. Non-Prejudicial Disclosures

3. Limitation Of Patent Protection

4. Compulsory License

5. Languages and Translations

6. Amendments and Division

7. Unity of the Invention

8. Appeal

A definition of a "patentable invention" is not given in Patent Law No. 64/1991, merely the condition for granting a patent, namely "any invention which is new, which involves an inventive step and is susceptible of industrial application" (Art. 7-1).

According to Article 7-2 of the Law, the patentable invention may have as object a product, a process or a method. Complementary rule 11(3) details the meaning of "methods" as being "those activities having qualitative results such are measurements, analysis, control, diagnosis or medical treatment. The methods of diagnosis or medical treatment are defined by the specific mode of intervention to the body, namely: the nature, the used means (apparatus, medicine, physical and chemical agents, disinfectants, etc.), the technical parameters (doses, gap time, duration, temperatures, concentrations, the parameter of physical or technological agents), the manner of action or of administration.

According to Article 7-3 of the Law, the invention of a new variety of plant, a new hybrid or a new animal breed is patentable provided that they are new, distinct, homogenous and stable.

The rules state that the claims shall determine the extent of the protection conferred by the patent. The description and the drawings must be the support for interpretation of the claims. The disclosure of the invention must be sufficient to enable the whole width of the claims to be performed. The patentee may make amendments, cancel or narrow or draft new claims added in place of, or in concert with. All amendments must be based on the specification of the application as filed.

a) First Requirement For An Invention To Be Patentable : Novelty

According to Article 8 of the Law, an invention is considered new if it is not comprised in the state of the art. The state of the art comprises all knowledge available to the public anywhere in the world before the filing or the priority date, provided that the date of the disclosure to the public has to be identified. The complementary rule 32(4) specifies that the state of the art comprise the content of patent applications as filed and made available to the public, before or after the date of the subsequent application.

The "exhibition priority" has in the Romanian Patent Law and Regulation, the same meaning as in Paris Convention provisions.

b) Second Requirement For An Invention To Be Patentable : Inventive Step

Article 9 stipulates that "an invention is considered as involving an inventive step if, it does not obviously result from the state of the art for a person skilled in the art." According to rule 32B(2), the filed patent applications made available to the public after the filing date of the examined application are not taken into consideration even if their filing date is prior to the examined application.

c) Third Requirement For An Invention To Be Patentable : Industrial Application

The Law rules that " an invention is considered suitable for industrial application if its object can be used in one industrial field, in agriculture or in any activity and can be reproduced with the same characteristics as often as necessary.

c) Fourth Requirement For An Invention To Be Patentable : Technical Solution

The Law rules that the disclosure of an invention must be drafted in a sufficiently clear and complete manner that a person skilled in the art can carry it into effect without involving an inventive activity; this is so called "technical solution of the invention".

The Patent Law rules that "the disclosure of the invention is not taken into consideration if it came from the inventor or his successor in title during the period of 12 months before the filing date of patent application or of the recognized priority"(Article 8-2). Rule 30(4b), states that "The PTO does not take into consideration the disclosure of the invention if these was made by a third party and the inventor or his successor in title confirms in writing at the PTO that the information was obtained directly or indirectly from him. In addition Rule 30(5) stipulates that the PTO does not take into consideration the disclosure by publishing the patent of invention according to art. 23 and 24 of the Law, if the inventor claims in a new patent application some parts unclaimed in his first published patent application within 12 months from the date of publishing.

According to Article 37, the followings prior use are permitted:

• A right of prior use shall belong to any person who, in good faith, before the date of priority, had begun to make or use the subject matter of invention;
• Patent protection shall have no effect against a prior user in relation to the extent of making, using or preparation existing at the priority date;
• A right of continued use shall belong to any person who, in the period between a declaration of lapse of patent protection and restoration thereof, has started to make or use the subject matter of the invention or has made serious preparation for that purpose;
• Subject to the reciprocity, patent protection shall have no effect with respect to means of communication and transport which are in transit in the territory of the country or to foreign goods which are not intended to be put on the market in the country.

Working is not prescribed especially by the Patent Law. Failure of working the patent cannot lead to loss of patent protection. After the grant of a patent, a compulsory license can be granted upon request, if the patentee refuses to grant a license to a person who has applied for one and agrees to reasonable compensation and security, if such a compulsory license is in the public interest.

The grant of compulsory license is subject to the following conditions:

• the party requesting the license must have used its best effort to obtain a voluntary license on reasonable commercial terms;
• the compulsory license must be terminate if the circumstance leading to its grant have ceased and are unlikely to recur;
• the holder of the compulsory license must pay adequate compensation for the right use to the inventor;
• the determination of the amount of adequate compensation must be subject to independent review.

The languages of patent procedures shall be Romanian. The description may be filed in English, German or French. A certified translation of the patent specification and claims, the abstract and the drawings, into Romanian has to be filed within two months following the date of filing. Failure in filing the translation into Romanian results in the application being deemed to be withdrawn.

The applicant may amend the description, claims and drawings until the final Decision of Granting the patent. New matter added by the amendments are not allowed. If more inventions have been claimed in one application, the applicant may divide the application voluntary or at the request of the Examiner.

In a patent application, patent protection may be sought only for one invention, or a group of inventions so linked as to form a single inventive concept.

An appeal may be filed with the Municipal Court of Bucharest against the decision of the Romanian Patent and Trademark Office within three months from the notification thereof.

Any interested party may file a cancellation (total or partial) action of a patent whenever, at the date of filing the patent application the legal conditions concerning the existence of a patentable invention has not been fulfilled. The action may be entered during the whole duration of the validity patent term and falls under the jurisdiction of the Municipal Court of Bucharest.

NOTE: This article provides general information about this subject matter. Please remember that no attorney-client relationship is reached between CABINET M. OPROIU and the user of this information, until an initial consultation.