- International conventions and treaties ratified by Romania in the field of patents
- Other agreements
- Patent legislation in force in the field of patents
- Patentable invention
- Exceptions to patentability
- Subjects – matters of patentable inventions: product, process, method
- Disclosure of invention
- Unity of invention
- Who may apply for a patent for invention
- Language of application
- Confidentiality. Secrecy
- Patent application documents
- Date of filing
- Prescribed form of request for grant
- Drawing up the patent application documents
- Where to file a patent application and how
- Who may apply for a patent for invention
- Language of application
- Confidentiality. Secrecy
- Patent application documents
- Date of filing
I. GENERAL INFORMATION
The first Romanian industrial property law was the Trademark Law, adopted by the Parliament in 1879. It was on the occasion of its adoption that the question of a patent law was also raised.
In 1880 the Parliament was presented the draft of a patent law; said draft was not adopted. The first Patent Law entered into force on January 17, 1906.
1. International conventions and treaties ratified by Romania
Romania is a party to the following international conventions and treaties in the field of industrial property:
Paris Convention (1883) for the Protection of Industrial Property. Romania accessed to it in 1920 and ratified all the revised texts.
Convention Establishing the World Intellectual Property Organization (1967). Romania ratified it in 1968.
“PCT” Patent Cooperation Treaty (1970). Romania ratified it in 1979.
2. Other agreements
After 1990, Romania also concluded other agreements which comprise provisions relating to industrial property:
Agreement Concerning the Association of Romania to the European Economic Communities and Interim Agreement between Romania and the European Communities (comprising provisions on industrial property).
Romania – United States Trade Agreement, concluded in October 1993, which was the basis for the grant of the Most Favoured Nation Clause and which also contains provisions on copyright, protection of industrial property and trade secrets. The Agreement also provides for the accession of Romania to the Geneva Convention Concerning the Protection of Phonograms Producers and for a legal framework for the enforcement of industrial property rights.
Agreement on Cooperation between Romania and the EFTA countries, signed in 1993; it also contains provisions concerning the protection of industrial property.
Marrakech Agreement Establishing the World Trade Organisation;
3. Patent legislation in force
Law no.64 of 1991 on patents for invention;
Government decree no. 125/1992 concerning the Implementing Regulations of Law no. 64/1991
Government ordinance no. 41/1998 concerning the fees in the field of industrial property protection and the use thereof;
Buletinul Oficial de Proprietate Industriala (BOPI) (Official Industrial Property Bulletin) comprising three sections: patents, marks, designs.
Specifications of patents for invention granted in Romania.
Revista Româna de Proprietate Industrial (The Romanian Industrial Property Review) comprising articles, surveys, statistics.
The term of the patent is 20 years and starts on the date of the regular national filing of the application;
The right to the patent for invention belongs to the inventor or to his successor in title; in the case of the employee-inventors, the right to a patent belongs either to the inventor or to the employer, according to Article 5 of the Patent Law;
The definitions of the patentability conditions are harmonized with the international regulations in force;
The patent applications are published immediately after the 18 – month term from the date of regular national filing or from the claimed date of priority.
The published patent applications benefit of provisional protection until the patent is issued.
The examination of patent applications may be requested in maximum 30 months since the date of filing;
The patent is subject to public opposition during a six-month term from the publication of the decision for grant.
1. An invention shall be patentable if it is new, involves an inventive step and is susceptible of industrial application.
An invention shall be taken to be new if it is not comprised in the state of the art.
The state of the art comprises all the knowledge that has been made available to the public before the date of the claimed and recognized priority. The state of the art for establishing novelty comprises the content of the patent applications as filed with the State Office for Inventions and Trademarks, having a regular date of filing or an earlier priority and having become public before or after the date of filing of a subsequent application.
The invention is not deemed disclosed if the inventor or his successor in title disclosed it in a twelve-month period prior to the date of filing of the patent application or to the date of the claimed and recognized priority.
An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art from that matter comprised in the state of the art.
An invention shall be taken to be capable of industrial application if its subject-matter can be used in at least one field of activity and if it can be reproduced as often as necessary while maintaining its characteristics.
2. Exceptions to patentability
Inventions contrary to public order or morality.
Ideas, discoveries, scientific theories, mathematical methods, programs for computers per se, economic or organizational solutions, flow charts, educational and training methods, city planning systems, plans and methods, physical phenomena per se, culinary recipes, aesthetic creations (they shall not be regarded as inventions).
3. Subject-matters of patentable inventions: product, process, method.
The concept of product is a generic one and includes:
– machines, apparatus, tools, devices, mechanisms, machine parts, assemblies, installations, circuits, building elements, furniture, household goods, toys, instruments etc.;
– chemical and biological substances, except those which already exist in nature and which were not subjected to actions involving creative effort;
– physical or physical and chemical mixtures;
– microorganisms which were created or isolated by means of selection involving mutations;
– plant varieties;
– animal breeds.
Activity resulting in making or in modifying a product (biological or genetical processes included).
4. Disclosure of invention
An invention shall be disclosed in the description, drawings and claims in a manner which is clear and complete enough as well as correct from the scientific and technical points of view for the invention to be performed by a person skilled in the art without involving an inventive step.
5. Unity of invention
The patent application shall relate to one invention only or to a group of inventions which are so linked as to form a single inventive general concept.
Where the application fails to meet the requirement of unity, it may be divided by the applicant or his succesor in title, upon his own initiative or upon the request of the patent office, until a decision on the patent application is taken.
Where the applicant has not divided the application, said application is published in its non-unitary form.
IV. FILING A PATENT APPLICATION
1. Who may apply for a patent for invention
- Romanian natural and legal persons;
- Foreign natural persons having their domicile in Romania;
- Foreign legal persons having their headquarters in Romania;
- Foreign natural or legal persons having their domicile or business headquarters outside Romania, within the framework of the international conventions on inventions where Romania is a party ( Paris Convention, PCT ) or within the framework of mutual agreements.
2. Language of application
The patent application and the related mail shall be drawn up and filed at the State Office for Inventions and Trademarks in Romanian.
3. Confidentiality. Secrecy
Information comprised in the patent application will be kept confidential until the application is published by the State Office for Inventions and Trademarks. Disclosure of said information without the consent of the applicant or of his successor in title is forbidden, regardless of the manner in which a person came to know it and regardless of its capacity.
Descriptions of inventions in the field of national defense and state security made on the territory of Romania shall be kept secret where declared such by the competent authorities.
Where the applicant or his successor in title is a foreign citizen, he may be represented only by an authorized industrial property attorney (professional representative). The list of authorized industrial property attorneys entered in the National Register is published in the Official Industrial Property Bulletin regularly.
The professional representative is empowered by the applicant by means of an individual power of attorney for every patent application filed at the State Office for Inventions and Trademarks.
5. Patent application documents
The application shall contain:
- the prescribed form of the request for grant (filled in);
- a description of the invention;
- drawings, referred to in the description.
6. Date of filing
The date of regular national filing is that date on which all the above-mentioned documents, drawn up in Romanian, are filed at the State Office for Inventions and Trademarks.
Foreign applicants who have filed the description, the claims and the drawings in a foreign language shall file a Romanian translation of the above-mentioned documents within two months of filing. The recognized date of filing is the date of the initial filing.
7. Prescribed form of request for grant
The prescribed form of request for grant is standard and is made available by the State Office for Inventions and Trademarks, free of charge. The patent application shall be signed by the applicant or by his professional representative.
Designation of the inventor
The patent application shall designate the inventor. The designation shall be made on filing or later, within a fifteen-month period from filing or from the claimed priority date.
Conventional priority or exhibition priority may be claimed in the patent application. In order to have priority recognized, the application shall be filed at the State Office for Inventions and Trademarks within twelve months from the date of the earliest priority or within six months from the date on which the invention has been exhibited in an official or officially recognized exhibition.
Where the applicant failed to claim the right of priority upon filing his patent application, he may claim it within two months from the date of filing.
Claimed priorities shall be proved by priority documents filed within three months from the date of the regular national filing.
8. Drawing up the patent application documents
The requirements to be met by the description, the claims and the drawings are as a general rule similar to those used at international level.
9. Where to file a patent application and how
The patent application shall be filed by the applicant himself or by his authorized representative having his domicile or his business headquarters in Romania, directly at the Registry of the State Office for Inventions and Trademarks or by mail.
V. PATENT GRANT PROCEDURE
- preliminary examination
- substantive examination
- publication of the decision to grant a patent
- public opposition
- issue of patent
1. Preliminary examination
The date of filing is granted after having checked the existence of a patent application comprising an explicit request for grant of a patent and identifying data of the applicant, the existence of the description of the invention, of the claims as well as of the drawings, where appropriate, everything having to be drawn up in Romanian.
Where a date of filing was granted, the office further checks whether the requirements concerning representation, formalities of application, right to a patent, right of priority, payment of prescribed fees, drawing up of the description, the claims and the drawings have been met.
Where certain documents are missing, the applicant shall be informed of the lack and shall be given a time period to respond.
2. Publication of a patent application
Where a regular national filing of a patent application was made, the patent fees were paid and no decision for grant, refusal or withdrawal was taken, the patent application shall be published immediately after the expiry of an eighteen-month period from the date of filing or from the claimed date of priority.
Upon applicant’s request, subject to payment of an additional fee, publication may occur within a time shorter than 18 months or on later date.
The publication of a patent application may be accompanied by that of a search report, subject to payment of an adequate fee. The search report may be published at the same time with the application or subsequently.
3. Substantive examination
Request for examination
- may be made upon the date of filing or within thirty months from filing.
- shall be accompanied by the fee for substantive examination ( where the fee has not been paid within thirty months from filing, the patent application shall be deemed surrendered and shall be refused).
Term of examination
The patent application shall be examined within an eighteen-month term from the date when examination was requested.
The examination fee is not refunded when the application is withdrawn after the beginning of the examination procedure.
Development of examination procedure
During the examination procedure, one checks whether:
- the invention is patentable;
- the patent application is unitary;
- the priority is claimed appropriately;
- the invention complies with the patentability conditions.
Where there are objections to the application, the applicant is requested, by a motivated notification, to send his remarks and, where appropriate, to amend the description, the claims and the drawings. The amendments shall not extend beyond the content of the disclosure made in the patent application upon filing.
The decision to grant a patent for invention or to refuse the grant is taken by an examining board of the patent office on the basis of the examination report drawn up by the examiner.
All the decisions taken by the office are motivated and are written in the National Register of Patent Applications; they are communicated to the applicant or to his successor in tittle within 30 days from decision making.
The motivation of the decision is based only on facts which the applicant was able to comment.
The decisions of the State Office for Inventions and Trademarks may be appealed within three months of notification thereof.
The notice of appeal is examined by a Reexamination Board of the State Office for Inventions and Trademarks. The decisions of the board are notified to the parties. These decisions may be appealed for at the Municipal Court of Bucharest.
4. Publication of the decision to grant a patent
The decisions to grant patents for invention shall be published in the Official Industrial Property Bulletin within thirty days; the description, the claims and the drawings shall be published in maximum three months.
5. Public opposition
A third party may request the Patent Office to revoke a decision to grant wholly or in part; the request may be submitted within six months from the publication of the decision in the Official Bulletin.
The request for revocation is considered as having been made if the adequate fee has been paid.
The request for revocation shall be made in writing and shall be motivated.
The grounds for revocation shall refer only to the failure to comply with the patentability conditions: novelty, inventive step, industrial application.
After the expiry of the opposition term, the request for revocation is judged by the Reexamination Board of the Office, which has a different componence than the board which took the decision to grant. An appeal against its decision can be made at the Municipal Court of Bucharest within three months from the communication.
6. Issue of patent
After the expiry of the opposition term, the Director General of the State Office for Inventions and Trademarks issues a patent for invention based on the decision to grant, if said decision was not revoked by the Reexamination Board.
Where the patent has been amended as a result of the opposition procedure, it shall be issued in its amended version.
The issue fee shall be paid by the proprietor of the patent within 12 months from the date of the publication of the decision to grant in the Official Bulletin.
Upon issuance, the proprietor of the patent is obliged to pay renewal fees for the years that passed from the date of filing till the date when the patent is issued, the year of issue included.
The patent grant procedure is presented in the attached diagram.
VI. RIGHTS AND DUTIES OF PATENTEES
- for products: manufacture, commercialisation, offer for sale, use, importation or storage meant for commercialisation, offer for sale or use thereof;
- for processes or methods: use thereof.
The extent of the protection conferred by patent depends on the content of the claims which are interpreted while taking into account the description and the explanatory drawings.
Where the patent applications are published, the natural or legal persons entitled to the grant of a patent benefit of the rights conferred by a patent, temporarily, starting from the date of national regular filing until the issuance of the patent.
Lack of payment of renewal fees will result in the loss of the rights conferred by the patent for invention.
VII. DEFENCE OF RIGHTS RELATED TO INVENTIONS
A patent for invention issued by the State Office for Inventions and Trademarks may be revoked, wholly or in part, by the Municipal Court of Bucharest, upon the request of a third party wherever the requirements of patentability were not met. The request for revocation may be filed during the whole term of patent.
Misappropriation of inventorship is an offence and is punished by the Criminal Code.
Manufacture, illegal use or commercialisation of the subject – matter of a patent or any other infringement of the rights conferred by a patent is deemed an infringement and is punished by the Criminal Code.
Disputes relating to inventorship, patent property or other rights conferred by the patent, patrimonial rights included, are settled by the law courts.
VIII. EXPLOITATION OF PATENTS IN ROMANIA
The proprietor of a patent may exploit his invention in Romania, freely, sole or in cooperation with Romanian or foreign companies; he may transfer his rights by assignment, by licensing or by testamentary succession.
In case of amendments to previous inventions, the patent can only be exploited with the consent of the proprietor of the patent for the invention that was amended.
According to the principles of the Paris Convention, failure to work or insufficient working of an invention is punished by law by grant of non-voluntary licences or ex officio licences.
Filing, publication and examination of a patent application, priority claiming, issue of a patent for invention and maintenance in force of said patent are subject to the payment of the fees, in the amounts and on the time limits provided in the Ordinance no. 41/1998 of the Governement of Romania; presented in Annex no. 1.
State Office for Inventions and Trademarks
ROMANIA, Bucharest, 5, Ion Ghica St., sector 3, code 70018, P.O. Box 152;
tel. 3151966; fax. 3123819