IP Enforcement in Romania

Margareta Oproiu of inovia agent Cabinet M Oproiu recently shared important information regarding IP enforcement in Romania for Intellectual Asset Management magazine.  Below are some highlights from the article:

What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction?

The owners of European patents validated in Romania enjoy full and exclusive rights of exploitation over their patents during the term of validity – that is, they can prohibit third parties from performing the following acts without their consent:

  • • For product inventions, the manufacture, marketing, offering for sale, use, import or storage for the purposes of selling, offering for sale or use.
  • • For process invention, the use of the process.

If the subject matter of the European patent validated in Romania is a process, the protection conferred by the patent shall extend to products directly obtained by such process.

Infringement proceedings may be instituted by the patent owner. However, the beneficiary of an exclusive right to work the patent, may, unless the licensing agreement prevents it, institute infringement proceedings if the patent owner does not.

In a patent infringement case, the burden of proof rests with the claimant. However, if the patent subject matter is a process to obtain a new product, the burden of proof is reversed and, in the absence of proof to the contrary, any identical product produced without the consent of the patent owner shall be deemed to have been obtained by the patented process in at least one of the following circumstances:

  • • The product obtained by the patented process is new.
  • • There is a substantial likelihood that the identical product was made by the process and the patent owner has been unable through reasonable efforts to determine the process actually used.

What level of expertise can a patent owner expect from the courts in your jurisdiction?

In civil proceedings, three levels of court have jurisdiction. Currently, there are IP specialist divisions of the courts in which specialist IP judges have jurisdiction for all IP-related cases. However, in patent litigation the court usually appoints a technical expert in order to clarify the technical aspects under consideration. The recent decisions of specialist divisions show a good level of expertise from the judges.

Are certain types of patent right (eg those relating to business methods, software and biotechnology) more difficult to enforce than others?

No one type of patent right is harder to enforce. All patents enjoy the same protection and are equally enforceable.

How much should a litigant plan to pay to take a case through to a decision at first instance?

The costs largely depend on the subject matter, the volume of work and the evidence available or to be found. Usually, for a reasonable level of representation and to prepare a claim, assistance for the first three hearings costs between €10,000 and €15,000, and between €1,500 and €2,000 for each further hearing. For advanced matters – for example, in the pharmaceutical field, where related matters may be considered (eg, the incidence of data exclusivity or the existence of a SPC) – the costs are higher.

When claiming damages, an official fee of 1% of total damages is payable.

How long does it take to obtain a decision at first instance and it is possible to expedite this process?

First instance proceedings for patent infringement may take from 12 to 18 months if no counterclaim for cancellation of the patent is filed. There is no way to expedite these proceedings.

In broad terms, how pro-patentee are the courts in your jurisdiction?

The Romanian courts are considered to be pro-patentee. In the past two years, the courts have reversed around 10 Patent Office decisions to reject SPC requests based on a better understanding of the SPC regulation.

Click here to read the full article.

About the author

Margareta Oproiu is the founding partner of Cabinet M Oproiu and a qualified European patent attorney. She graduated from the University of Bucharest with a PhD in physics, and until 1990 worked as a researcher for technologies using plasma physics. She now has vast experience in all aspects of domestic and foreign IP counselling. Ms Oproiu is particularly strong in patent and trademark litigation, with an in-depth knowledge of both patent matters and the legal aspects of patent infringement and unfair competition, and is involved in cancellation and infringement actions. According to a global annual survey conducted by Managing Intellectual Property magazine, for the past six years the firm has been ranked on the first tier in the patent and trademark fields.

Ms Oproiu is a member of the National Chamber of Romanian Industrial Property Attorneys Association, EPI, ECTA, AIPPI and INTA.


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