Use the Lexology Navigator tool to compare the answers in this article with those from 20+ other jurisdictions.
Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
No specialised patent courts exist in Romania and, as a rule, judges have no technical expertise. Nevertheless, by law, the Bucharest Tribunal is the sole first-instance court with jurisdiction to invalidate patents in Romania. The tribunal also has a specialised section for civil and IP matters. The court of second instance is the Bucharest Court of Appeal. The High Court of Cassation and Justice hears second-instance appeals in invalidity actions. In first-instance patent infringement proceedings, a panel of judges handles the case, since the competent court is chosen according to the general competence rules under the Civil Procedure Code.
Are cases decided by one judge, a panel of judges or a jury?
Cases are decided by a panel of one or more judges, as appropriate under the law. As a rule, one judge oversees first-instance proceedings, two judges oversee first-instance appeals and three judges oversee second-instance appeals.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
What role can and do expert witnesses play in proceedings?
Expert witnesses can be appointed by each party and are heard by the court according to the general rules regarding witnesses. Expert testimony is given the same weight as any other means of evidence. Parties usually submit a technical expert opinion as written evidence. However, the procedural means behind the technical expert’s report are considered more important. A technical judicial expert can be appointed by the court or either party. Technical judicial experts are recognised by the Ministry of Justice and have expertise in patent-related matters and in a specific technical field. When no approved experts in the relevant technical field are available, the court may appoint an independent expert with the relevant technical background. Experts answer court-approved technical and scientific questions. The technical judicial expert’s conclusions can play an important role in the court’s final decision.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
Romanian patent law recognises the doctrine of equivalents. The scope of protection is determined by the patent claims, while the description and drawings must interpret the claims. An element in an alleged infringing product or process is considered equivalent to one specified in the patent claims if it is obvious to a person skilled in the art that by using the element, the same result is substantially obtained as that obtained by using the element specified in the claims. In addition, to determine the scope of patent protection, the law provides that any statement limiting the scope of the patent claims made by an applicant or patent owner during prosecution of the patent application or the proceedings relating to the validity of the patent may be considered. Since the jurisprudence related to patent matters is generally poor in Romania, no general guidelines on how the doctrine should apply exist; however, in specific cases, the courts will nonetheless consider it.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
Preliminary injunctions (ie, requesting a ban on marketing, using, offering for sale, selling or importing the alleged infringing products) can be requested by a patent holder if it can demonstrate that:
- the case is urgent (ie, there is impending irreparable damage or a need to preserve a right, as it may be damaged through delay);
- the judge is not supposed to rule on the merits of the case; and
- the injunction is temporary (a preliminary injunction is valid until adjudication of the merits of the case, but the plaintiff must establish the existence of a valid patent and provide the court with prima facie evidence of infringement).
Preliminary injunctions may be requested in ex parte or inter partes proceedings. As no specific framework sets out what a judge should consider as urgent, this is determined on a case-by-case basis. The court may demand that the plaintiff post a security in an amount fixed by the court under penalty of termination of the provisional measure.
How are issues around infringement and validity treated in your jurisdiction?
Infringement and validity actions are not always analysed together – in part because the Bucharest Tribunal has sole jurisdiction to decide on validity actions at first instance, while infringement actions may be filed with a different competent court. Since final decisions relating to infringement of a patent depend on whether the patent is valid, infringement proceedings may be stayed until a final decision in the nullity action is reached. Alternatively, there are cases where the court, at the request of the interested party, joins the nullity and infringement actions, settling both aspects of the dispute through the same decision. Nevertheless, no established case law addresses this issue.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
It is common practice to submit court decisions from other jurisdictions involving similar issues as written evidence. However, the Romanian legal system does not recognise other case law or judicial precedent as a source of law. Therefore, previous decisions are not binding on local courts and do not create law. However, the judges tend to rely on previous jurisprudence with a similar factual background. Thus, court decisions from other jurisdictions can be considered, but only within the framework of a specific case.
Damages and remedies
Can the successful party obtain costs from the losing party?
Romanian law provides that trial costs are generally recoverable from the losing party. Trial costs usually consist of attorneys’ fees and other expenses. Courts can reduce or increase attorneys’ fees if they consider the fees to be inaccurate with respect to the attorneys’ work and the complexity of the case. However, they cannot modify judicial stamp duty, expert fees or reimbursements for witnesses or other direct expenses.
What are the typical remedies granted to a successful plaintiff?
A successful plaintiff is entitled to damages according to the general civil provisions. In addition, courts will typically prohibit infringers from continuing or repeating the infringing act, and infringing products will be recalled, seized or destroyed. Further, courts may seize and destroy the materials and equipment that were directly used to commit the infringement. If an infringer is held liable under the criminal law provisions, it may face imprisonment or criminal fines.
How are damages awards calculated? Are punitive damages available?
The legal framework provides the following as guidance for determining damages:
- profits lost by the plaintiff as a result of the infringing product entering the market;
- net profits of the defendant resulting from the sale of the infringing product on the market; and
- the lump sum based on the amount of royalties that would have been paid if the defendant had acquired a licence from the plaintiff for the right of use allegedly infringed.
As a rule, the courts will appoint an expert to calculate the amount of damages to be paid; the expert choses the criteria on which this calculation will be based. It is not possible to obtain punitive damages as under common law, but courts will award moral damages.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
As a rule, a patent owner claiming that a third party infringed its rights should seek a temporary preliminary injunction. If the court determines that infringement has taken place, it will order the infringer to stop the infringement (where a preliminary injunction regarding the matter has not previously been issued) and prevent the infringer from further infringement for as long as the patent is valid.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
The new Civil Procedure Code entered into force in February 2013. One of the main objectives of the reform was to accelerate judicial proceedings. Thus, under the new code, first-instance proceedings in patent-related matters are expected to last between one and one and a half years. Nevertheless, since the courts have a high workload, this may be an optimistic estimation.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Costs are estimated on a case-by-case basis, depending on the complexity of the case.
Click here to view the full article.