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Applying for a patent
Patentability What are the criteria for patentability in your jurisdiction? A national patent may be granted in respect of an invention that relates to either a new product or a novel process. Under the Patent Law, there are four basic criteria for patentability – the invention must:
- belong to a field of technology;
- be new;
- involve an inventive step; and
- be susceptible of industrial application.
What are the limits on patentability? Although the Patent Law does not define the term ‘invention’, it does contain a non-exhaustive list of what are not considered inventions and are thus excluded from patentability by law – in particular:
- discoveries, scientific theories and mathematical methods;
- aesthetic creations;
- schemes, rules and methods for performing mental acts, playing games or doing business;
- computer programs; and
- presentations of information.
These exclusions apply only to the extent that a patent application or patent relates to excluded subject matter or activities as such. In other words, an invention is not excluded simply because it includes an element that is not patentable.
Further, under the Patent Law, patents cannot be granted in respect of:
- inventions whose exploitation is contrary to public order or morality – including inventions that are harmful to the health or life of humans, animals or plants, and which are likely to cause serious harm to the environment (this exception from patentability is not dependent on whether exploitation is prohibited by a legal provision);
- plant varieties and animal breeds, as well as essentially biological processes for the production of plants or animals. This provision does not apply to microbiological processes or products obtained thereby;
- inventions whose subject matter is the human body in its various stages of formation and development, as well as the mere discovery of one of its elements, including the sequence or partial sequence of a gene; and
- surgical or therapeutic treatment methods concerning humans or animals and methods of diagnosis applied to humans or animals. This does not apply to products – in particular, substances or compositions used in treatment methods.
To what extent can inventions covering software be patented? Inventions covering software are excluded from patentability to the extent that the patent application or patent relates to a computer program. Computer programs are protected by copyright.
Computer-related inventions which involve the use of a computer, a computer network or other programmable apparatus, and which have one or more feature realised wholly or partly by means of a computer program, are patentable.
Further, an invention is patentable when a computer program is the subject matter of the invention and it runs or is loaded on a computer and determines, or is capable of determining, a subsequent technical effect that is more than a normal physical interaction between the program and the computer on which it is executed.
Computer-related inventions are considered to belong to a technological field and can be patented. The Patent Office follows European Patent Office practice, which maintains that non-technical features do not contribute to inventive step.
To what extent can inventions covering business methods be patented? In Romania, business methods are not patentable as such. However, a new method that solves a technical problem – rather than a purely administrative one – may be patented.
To what extent can inventions relating to stem cells be patented? The Patent Office follows the European Patent Office insofar as any invention concerning or based on human stem cells or stem-cell lines and cultures that can be obtained only via the prior destruction of human embryos is not patentable because it:
- is contrary to public order or morality; and
- uses human embryos for industrial or commercial purposes.
Romanian legislation has both a contrary to morality provision and a paragraph that is analogous to Rule 28(c) of the European Patent Convention.
Are there restrictions on any other kinds of invention? No other exceptions from patentability are provided under the Romanian Patent Law, which is fully harmonised with the European Patent Convention.
Grace period Does your jurisdiction have a grace period? If so, how does it work? The Patent Law provides a grace period of six months for two specific cases of non-prejudicial disclosure. Thus, disclosure of an invention before the date of filing of the application is not included in the state of the art when it was due to or in consequence of:
- an evident abuse in relation to the applicant or its legal predecessor; or
- the invention being displayed at an official or officially recognised international exhibition.
Oppositions What types of patent opposition procedure are available in your jurisdiction? Any third party may file a request for revocation of a national patent. Revocation requests must be filed with the Patent Office within six months of publication of grant of the patent. Revocations can be based only on the grounds that:
- the patent’s subject matter is not patentable;
- the invention is not disclosed clearly or completely enough for a person skilled in the art to carry it out; or
- the patent’s subject matter extends beyond the content of the application as filed.
An appeal can be filed against a Patent Office decision before the Bucharest Tribunal and a second-instance appeal can be filed before the Bucharest Court of Appeal.
Apart from oppositions, are there any other ways to challenge a patent outside the courts? No.
How can patent office decisions be appealed in your jurisdiction? Any examination division decision can be appealed within three months of the decision being communicated. An appeal against a patent decision must be lodged before the Patent Office Board of Appeal. Board of Appeal decisions may be appealed before the Bucharest Tribunal. Second-instance appeals take place before the Bucharest Court of Appeal.
Timescale and costs How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for? Patents are granted in between two and a half years and three and a half years from the date of filing the patent application. The official fees for a standard patent application of no more than 20 pages and with no more than five claims is around €1,200. This includes the official fee for the first five years of protection.
Enforcement through the courts
Strategy What are the most effective ways for a patent owner to enforce its rights in your jurisdiction? If a dispute between a patent owner and an alleged infringer cannot be settled amicably, the patent owner must turn to the courts. The patent owner may file a preliminary injunction request followed by an infringement action.
What scope is there for forum selection? Patent owners can enforce their rights through civil proceedings, criminal proceedings and customs actions. Patent owners rarely file criminal complaints because once a criminal action is initiated, civil proceedings are stayed until a decision is reached in the criminal proceedings, thereby delaying the recovery of damages.
Pre-trial What are the stages in the litigation process leading up to a full trial? The legal framework does not provide for a pre-trial phase (during which, for example, discovery might occur), as it does in the common law system. Nevertheless, in cases involving industrial property rights, a party that has presented reasonable evidence to support its claim may request the court – even before the commencement of proceedings on the merits of the case – to order prompt and provisional measures to preserve relevant evidence under the alleged infringer’s control.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Under the Civil Procedure Code, once an infringement or nullity action is filed with the court, it is difficult for defendants to delay proceedings. One of the fundamental principles of the Civil Procedure Code is the principle of good faith. If a party abuses its procedural rights, it may be held liable for material and moral damages caused to the other party. The courts may also impose a court fine on the liable party. The timeframe for filing a defence statement for proposing the means of evidence (eg, for filing objectives for technical experts) are established by law. A party not exercising its procedural rights within the specified timeframe will lose those specific rights.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it? A national patent or European patent with effects in Romania may be nullified at the request of any third party if it can be proven that certain conditions are met (eg, the subject of the patent is not novel, the patent does not involve an inventive step or the patent insufficiently discloses the invention). Nevertheless, under the Civil Procedure Code, the party requesting the nullity of the patent must justify that its interest is:
- actual and existing;
- direct; and
Even if the interest is not actual and existing, a court action may still be filed in order to prevent a violation of right or to prevent imminent damage that could not be repaired.
At trial 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? N/A.
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.
Appeal Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? The legal system is based on the principle of two-tier jurisdiction. As a rule, first-instance decisions can be appealed at the next court level, where the case will be re-analysed both on the merits and from a legal standpoint. In some cases, a second appeal may be filed against the appeal decision, but only with respect to limited grounds related to the lawfulness of the decision – although this is seen as an extraordinary means of appealing an unfavourable decision. Under the new Civil Procedure Code, the first appeal should take no longer than one year, while the second appeal should last no more than six months. In infringement cases, first-instance and second-instance appeals must be filed within 30 days of communication of the decision.
Options away from court Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts? Before filing a court claim, the patent holder or its attorney will send a warning letter to the alleged infringer. While the infringer is not supposed to answer the letter, this could allow the matter to be settled between the two parties before going to court. A considerable number of patent infringement cases are settled amicably.