PATENT LITIGATION

DEFENSE OF RIGHTS IN INVENTIONS

The patent shall confer on its owner an exclusive right of exploitation throughout its entire duration. It is prohibited to perform the following acts without the owner’s consent:
a) manufacturing, using, offering for sale, selling or importing for the purpose of using, offering for sale or selling, where the subject-matter of the patent is a product;
b) using the process and using, offering for sale, selling or importing for those puposes the product directly obtained by the patented process, where the subject matter of the patent is a process.

The extent of the protection conferred by the patent or the patent application shall be determined by the content of the claims. At the same time, the invention description and drawings shall be used to interpret the claims.
Throughout the period of time up to grant, the extent of the protection conferred by the patent application shall be determined by the published claims
The patent, as granted or as amended during the revocation or cancellation in part, shall retroactively determine the protection conferred by the patent application, in so far as such protection is not thereby extended.
To determine the extent of the protection conferred by the patent, due account shall be taken of any element equivalent to an element specified in the claims. Where the subject-matter of the patent is a process, the protection conferred by the patent shall be extended to the product obtained directly by the patented process.

The protection conferred by a patent relating to a biological material having specific characteristics shall be extended to any material derived by reproduction or multiplication from the patented material, in an identical form or differentiated, and having the same characteristics.

The protection conferred by a patent to a product containing genetic information or consisting of genetic information shall be extended to any other material incorporating the product and wherein the genetic information is contained and exercises its function, except for the human body in the various stages of its formation or development.

The protection referred to in above paragraphs 1 shall not extend to the biologic material derived by reproduction or multiplication from a biologic material sold or offered for sale on the territory of Romania by the patent owner or with his consent, where the reproduction or multiplication necessarily results from the utilization for which the biological material was put on the market, provided that the obtained material has not been used subsequently for other reproductions and multiplications.
Starting from the date of its publication the patent application shall provisionally confer on the applicant the protection laid down pursuant the above paragraphs.

The following acts shall not constitute infringements of the rights provided in above paragraphs 1 :

a) exploitation of inventions in the construction and the operation of land vehicles or aircrafts and aboard vessels or in devices used in the operation thereof that belong to states party to international treaties and conventions concerning inventions to which Romania is also a party, when the vehicles, crafts or vessels enter the territory of Romania, either temporarily or accidentally, provided that such exploitation is exclusively for the needs of the vehicles, crafts or vessels;

b) performing any of the acts referred below by a person who has applied the subject-matter of the patent or that of the patent application, as published, or has taken real and effective steps towards producing or exploiting said subject-matter in good faith on the territory of Romania, independently of the owner of the patent and before the regular national filing concerning the invention has been effected or before the recognized priority date; in that case the invention may continue to be exploited by that person to the same extent as on the date of te regular national filing or recognized priority, but the right of use may not be transferred otherwise than with the assets of that person or the part of the said assets assigned to the exploitation of the invention.

c) performing any of the acts referred below exclusively privately and for non-commercial purposes; production or, as the case may be, use the invention exclusively privately and for non-commercial purposes;

d) marketing or offering for sale within the territory of the European Union of specimens of the product constituting the subject-matter of the invention that have been previously sold by the patent owner or with his express consent;

e) use of the subject-matter of the patented invention for exclusively noncommercial experimental purposes;

f) exploitation in good faith or taking real and effective steps towards exploiting the invention by third parties in the interval between the patent owner’s loss of rights and the reinstatement of the patent; in that case, the invention may continue to be exploited by that person to the same extent as on the date of publication of the mention of reestablishment of rights, but the right of use may not be transferred otherwise than with the assets of the person exploiting the invention or the part of said assets assigned to the exploitation of the invention;

g) exploitation by third parties of the invention or part of the invention in respect of which protection has been renounced.

Any person who, in good faith, exploits the invention or has taken real and effective steps to exploit the invention, in so far as the rights conferred by a patent application or a European patent in its original translation are not thereby infringed upon, may continue to exploit the invention, after the correct translation becomes effective, within his enterprise or for its necessities, without payment and not exceeding the extent existing on the date on which the original translation became effective.

Any decision made by the Examination Board may be appealed against with OSIM (Romanian Patent Office for Invention and Trademarks) within 3 months from communication.
The object of the appeal may be a limitation of the patent, under the conditions laid down by the Implementing Regulations to this Law.

Any interested person is entitled to apply with OSIM, in writing, on valid grounds, for the revocation of the patent, within 6 months of the publication of the mention of granting the patent, provided that:
a) the subject-matter of the patent is not patentable ;
b) the subject-matter of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
c) the subject-matter of the patent exceeds the content of the patent application,
as filed.
Where the grounds for revocation only relate to a part of the patent, the patent shall be revoked in part.

The appeal or the application for revocation, as the case may be, shall be settled within 3 months of registration thereof with OSIM, by a Board of Appeal within the Appeal Department of OSIM.

Patents granted by OSIM, as well as European patents with effects in Romania, may be cancelled upon request, provided that it is ascertained that:

a) the subject-matter of the patent is not patentable;
b) the subject-matter of the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person skilled in the art;
c) the subject-matter of the patent exceeds the content of the patent application,
as filed;
d) the protection conferred by the patent has been extended;
e) the patent owner is not the person entitled to the grant of the patent.
Where the grounds for cancellation only relate to a part of the patent, the patent
shall be cancelled in part.
The cancellation of the patent shall have retroactive effects, starting from the
filing date.

The cancellation of the patent may be requested after the time limit of six months or throughout the entire duration of the patent when the express legal conditions are met and the requests shall be ruled upon by the Court of Bucharest. The decisions of the Court of Bucharest may be appealed against before the Court of Appeal of Bucharest within 30 days from communication.
The final and irrevocable decisions to cancel the patent shall be registered with OSIM by the interested person.
Mention of the decision to cancel the patent shall be published in the Official Industrial Property Bulletin within 60 days of the registration of the decision with OSIM.

Failure to meet one or more of the formal requirements concerning the patent application shall only constitute grounds for revocation or cancellation of the patent, either wholly or in part, where said failure resulted from fraudulent intentions.

A patent shall not be revoked or cancelled, either wholly or in part, without giving the owner the possibility to present observations concerning the revocation or cancellation and to make, in a reasonable period of time, amendments or corrections allowed by the Law and the corresponding Implementing Regulations.

The substantiated decision of the Board of Appeal shall be communicated to the parties within 15 days from pronouncement and may be appealed against before the Court of Bucharest within 30 days from communication.

Within 15 days from communication, the decisions of the Court of Bucharest may be appealed against before the Court of Appeal of Bucharest.

The enacting terms of the decision to grant the patent made by the Board of Appeal, as well as those of the final and irrevocable decision made by a judicial authority, shall be entered into the National Registers and shall be published in the Official Industrial Property Bulletin within 60 days from the date of registration with OSIM by the interested person.

OSIM shall enter the modifications pursuant to final and irrevocable Court decisions into the National Registres and shall publish them in the Official Industrial Property Bulletin within 60 days from the date of registration with OSIM by the interested person. Criminal proceedings shall be initiated ex officio.

For prejudice caused to him, the patent owner or licensee shall be entitled to damages, as provided for by civil law, and may request to the competent law court to order the infringing products to be confiscated or destroyed, as the case may be.

The same provisions shall be applied to materials and equipments that directly served to the perpetration of the infringement offence. Infringement of the rights referred on above paragraph 1 by third parties, after the publication of the patent application shall make the infringers liable for damages under civil law, and the entitlement to the payment of damages shall be enforceable after the grant of the patent.

Where the acts referred above paragraph 1 continue to be done after summoning or publication of the patent application, the law court may, upon request, order such acts be discontinued until OSIM makes a decision on the patent application. Said measure may be ordered subject to payment by the applicant of a security fixed by the law court.

In case of infringement on the right of a process patent owner, referred above the burden of proof in establishing the fact that the process used to obtain an identical product is different from the patented process shall be incumbent upon to the alleged infringer of said right.

In applying of the above provisions any identical product made without the consent of the patent owner shall, in the absence of the proof to the contrary, be deemed to have been obtained by the patented process in at least one of the following
circumstances:
a) if the product obtained by the patented process is new;
b) if there is a substantial likelihood that the identical product was made by that
process and the patent owner has been unable, trough reasonable efforts, to determine the process actually used.
Upon presentation of the proof to the contrary by the patent owner, the legitimate interests related to the manufacturing and trade secrets of the alleged infringer shall be taken into account.

The patent owner, as well as the licensee authorized to use the rights arising from the patent may request the law court:
a) to order withholding measures when there exists the risk of infringing on the
rights arising from a patent and if said infringement risks to cause irreparable prejudice or if there exists the risk of destroying the probative elements;
b) to order, after the grant of the customs clearance, certain measures for stopping the acts of infringement on the rights arising from a patent, performed by a third party on the occasion of putting certain imported goods into the commercial circuit, causing thus damages to such rights.

The law court may decide that the infringer of the rights arising from the patent should inform the patent owner on the identity of the third parties who took part in producing and distributing the goods concerned, as well as on the distribution circuits.
The withholding measures may be ordered subject to payment by the plaintiff of a security established by the law court. To order the withholding measures, the provisions of the civil law shall be applicable.

The law court may demand the plaintiff to provide any probative elements available to him in order to prove himself to be the owner of the infringed patent or of a patent the infringement of which is unavoidable.

Customs authority may order, either ex officio or upon request by the patent owner that customs clearance operations be suspended for the import or export of counterfeited goods or to place such goods under a suppressive customs status.

Where a court decision has established that a person other than the one mentioned in the patent is entitled to the grant of the patent, OSIM shall issue the patent to the entitled person and shall publish the change of ownership.