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Romania—recent developments in industrial property
World Patent Information 24 (2002) 35–40 www.elsevier.com/locate/worpatin
Romania—recent developments in industrial property Alexandru Cristian Strenc Romanian State Office for Inventions and Trademarks (OSIM), 5 Ion Ghica Street, Sector 3, Bucharest, Romania
Abstract Industrial property law in Romania has undergone far-reaching changes over the last decade. This article outlines the changes following (i) the collapse of the communist government, (ii) the need to enforce various regional and international treaties and agreements, such as TRIPS, the European Directives on Biotechnological Inventions, on Trademarks and Geographical Indications, and on SPCs, the Trademark Law Treaty, the Patent Law Treaty, and the European Regulation on the Community Trademark, and (iii) the need to harmonize domestic patent law with the EPC (preparatory to joining in July 2002) and—in due course—with the European Union. These changes cover virtually every aspect of IP law in Romania, including patents, trademarks, industrial designs, and integrated circuit topographies. The revised patent law provisions for patentable subject matter, patentability criteria, filing date, scope of protection and infringement are summarized. Similarly the revised trademark and industrial design laws are also summarized and the enforcement measures described. 2002 Published by Elsevier Science Ltd. Keywords: Industrial property; Romania; OSIM; Patents; Trademarks; Industrial designs; Integrated circuit topographies; SPC; Patent Law Treaty; Trademark Law Treaty; TRIPS; EPC; Community trademarks
1. Introduction
2.1. In the field of patents for invention
Romania has a long tradition in the protection of industrial property. The first patent granted to a Romanian was in France in 1827 and the first Romanian Patent was granted by a Royal Decree in 1864. In 1879, the first Trademark Law was promulgated, at that time the 7th country to enact trademark laws. In 1906 the first Patent Law was promulgated. 1906 was also the year when the Romanian Office for Industrial Property (now the Romanian State Office for Inventions and Trademarks—OSIM) was founded. After the collapse of the communist regime, in December 1989, Romania changed its legislation completely in the field of industrial property, which is now based on the mechanisms of the market economy and, generally speaking, harmonized with main international treaties and conventions.
The Patent Law no. 64/1991, entered into force on 21 January 1992 and its Implementing Regulations were provided in the Government Decision no. 152 of 27 March 1992; The Law no. 32/1996 on Ratification of the ‘‘Extension Agreement’’ between the Government of Romania and the European Patent Organization. This agreement enables, starting with 15 October 1996, the extension of the effects of the European patents granted by the European Patent Office to Romania, for those applicants who paid the legal ‘‘extension fees’’; The Law on Pipe-Line Protection no. 93/1998, which provides the legal basis for recognition, in well-determined conditions, of a special protection for some categories of patents granted abroad, called ‘‘pipe-line protection’’. According to this law, Romania recognizes a transitional protection for owners of patents having priority before 21 January 1991 in a State Member of the Paris Union for the Protection of Industrial Property or of the World Trade Organization, for inventions having as subject-matter substances obtained by nuclear and chemical methods and medical treatment, disinfectants, food stuffs and spices and new plant varieties, bacteria and fungi strains, new animal
2. Summary of current IP legislation The basic national legislation in the field of industrial property now comprises: E-mail address: [email protected] (A.C. Strenc). 0172-2190/02/$ - see front matter 2002 Published by Elsevier Science Ltd. PII: S 0 1 7 2 - 2 1 9 0 ( 0 1 ) 0 0 0 4 7 - 3
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breeds and silkworms and which meet the following conditions: • the patent is still in force; • the subject matter of the invention has not been patented in Romania and belongs to the above-mentioned categories; • the product to which the patent for invention relates has not been marketed in Romania before 31 December 1993; • the application for the grant of transitional protection was filed within a six-month period, starting with date on which this law entered into force. The Law no. 255/1998 on the Protection of new Plant Varieties, which entered into force on 31 March 1999. 2.2. In the field of trademarks The Law no. 84/1998 on Trademarks and Geographical indications, entered into force on 23 July 1998 and its Implementing Regulations were provided in the Governmental Decision no. 833 of 19 November 1998.
• Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure—2000; • UPOV Convention—2001; • Geneva Act of the Hague Agreement—2001. In addition, Romania has been a member of the World Trade Organization since 1994. Romanian industrial property law has thus changed extensively, not only to adapt to a modern market economy, but also to meet the obligations of these many international and European treaties to which it is party. Moreover, in a rapidly developing area of the law worldwide, Romania is additionally taking steps to harmonize its laws with the EPC and, more generally, with the European Union. In this latter context, Romania has taken the major political decision to join the European Union, in the medium term time horizon. The objective of this paper now is to present the main features of these changes.
4. Amendments to the patent law
2.3. In the field of industrial designs 4.1. Context The Law no. 129/192 on the Protection of Industrial Designs, entered into force on 8 January 1992. 2.4. In the field of topographies of integrated circuits The Law no. 16/1995 on the Protection of Topographies of Integrated Circuits, entered into force on 9 March 1995 and its Implementing Regulations, provided by the Governmental Decision no. 535 of 4 July 1996.
3. International treaties, conventions and agreements Starting with the indicated year, Romania is party to the following important treaties, conventions and agreements: • Paris Convention for the Protection of Industrial Property—1920; • WIPO Convention—1970; • Patent Cooperation Treaty—1978; • Madrid Agreement Concerning the International Registration of Marks—1927; • Protocol Relating to the Madrid Agreement—1998; • Hague Agreement Concerning the International Deposit of Industrial Designs—1992; • Strasbourg, Nice, Vienna and Locarno Agreements on Classifications—1998; • Trademark Law Treaty—1998;
In the preamble of the ‘‘Extension Agreement’’ mentioned previously, the significant fact is recognized that ‘‘the Romanian Patent Law provides for a level of protection similar to that existing in the Member States of the European Patent Organization’’. This means that as regards the patentable subject matter, the definitions and the conceptualization of the patentability criteria, the overall granting procedure and the term of protection, the rights conferred by a patent, there is a close similarity of concepts between the Romanian Law and the European law. Although this was appropriate when implemented in 1994, much has changed in the world of industrial property. The law therefore needed to be amended to allow for: • enforcing of the TRIPS Agreement—1994; • European Directive no. 98/84 in the field of bio-technological inventions; • European Regulations no. 1768/92 and 1610/98 on the supplementary protection certificate for pharmaceuticals and plant protection products; • Patent Law Treaty (PLT)—signed by Romania in June 2000; • European Patent Convention, as revised in Munich, in November 2000. Referring to the European Patent Convention, Romania applied for full accession in December 1997 and
A.C. Strenc / World Patent Information 24 (2002) 35–40
received in 1999 an invitation to join the Organization with effect from 1 July 2002. As a result, the Romanian Patent Law has recently 1 been revised in a significant manner and some of the most important points of the amendments will be briefly presented. 4.2. Patentable subject matter
37
4.3. Patentability criteria The amendments to the patent law introduced similar requirements to those provided in Articles 54(1) and 55 of the EPC, namely: • addition of a new provision regarding a non-prejudicial disclosure produced within six months before the filing of the patent application and ‘‘which was due or in consequence of an evident abuse in relation to the applicant or his legal predecessor’’; • introduction of the patentability of the first and further medical use of a known substance or composition, if its use is not comprised in the state of the art.
(a) exclusion from the patentability of those invention the commercial exploitation of which is contrary to the public order and morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment; (b) exclusion from patentability, fully in line with European Directive no. 98/84 on bio-technological invention, of:
4.4. Filing date
• plant varieties and animal breeds; • essentially biological processes for plant varieties or animal breeds, excepting those inventions having as their object microbiological processes or other technical processes or the product obtained by this process;
The PLT introduced a series of major simplifications in the procedure of obtaining a filing date. These have been taken ‘‘on board’’. Thus, the filing date of a patent application will be the date on which the office has received all of the following elements, filed on paper or by other means:
(c) explicit mentioning in the category of patentable objects of:
• an express or implicit indication to the effect that the elements are intended to be an application; • an indication allowing the establishment of the identity of the applicant or allowing the applicant to be contacted by the office; • a part which on the face of it appears to be a description; the drawings and the claims may be filed within two months from the filing date.
• plant or animals, if the possibility of technical achievement of that invention is not limited to a particular plant variety or animal breed; • products made from biological material or containing a biological material; • biological materials isolated from their natural environment or obtained through a technical process; (d) identical list with that of European Patent Convention, of the categories of creations which shall not be regarded as inventions within the meaning of the patentability criteria, namely: • discoveries, scientific theories and mathematical methods; • aesthetic creations; • schemes, rules and methods for performing mental acts, playing games or doing business and computer programs; • presentation of information.
1
At the time that this article was written (May 2001), the Romanian Parliament was discussing the amendments to the Patent Law on the basis of the draft law presented by the Government. This draft law comprises the main features as presented here. No major changes are expected for the final text of the amended Law.
Where a missing part of the description is filed with the office within two months from the filing date, that part of the description shall be included in the application and the filing date being the date on which the office has received that part of the description, or the date on which all the requirements of the filing date are complied with, whichever is later. 4.5. Scope of protection An important amendment regarding the exact meaning of the scope of protection has been adopted in order to bring the law in line with the EPC, as was amended in November 2000, in Munich. Directly derived from the Protocol on the Interpretation of Article 69, it provides that ‘‘for the purpose of determining the extent of protection conferred by a patent of invention, due account shall be taken of any element which is equivalent to an element specified in the claims’’. This provision is in fact a first step towards a broader approach to the theory of equivalents.
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A.C. Strenc / World Patent Information 24 (2002) 35–40
As far as the limitations in the scope of protection are concerned, where the actual law provided both compulsory licences and ex officio licence, the amended Law provides, in full line with the TRIPS Agreement, only compulsory licences, with a very rigorous enunciation of the exceptionality of the granting conditions. At the same time, the concept of ‘‘dependent patents’’ has been introduced, similar to the TRIPS provisions. 4.6. Infringement In the amended form, the concept of the extension of the protection conferred by a process patent on the product directly obtained by that process has been introduced and a first consequence is the provision of the so-called ‘‘reversal of the burden of proof’’. This supposes that for the purpose of civil proceeding in respect of the infringement of the right of a process patent, the burden of proof that the process used to obtain an identical product is different from the patented process shall be on the defendant. In applying such a provision, any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process, in at least one of the following circumstances: • if the product obtained by the patented process is new; • if there is a substantial probability that the identical product was made by that process and the owner of the patent has been unable through reasonable effort to determine the process actually used.
5. Trademarks 5.1. Context The Romanian Trademark Law that entered into force in 1998 is harmonized in substance with the European Regulation on Community Trademark, the European Directives on trademarks and on geographical indications, as well as with the Trademark Law Treaty and the TRIPS Agreement. This means that the definition and the concept of a mark and of a geographical indication, relative and absolute grounds of refusal to the registration, the rights conferred by the registration of a mark and in general the procedure of substantive examination of a mark and geographical indication for the purpose of the granting of a registration certificate are similar or in some cases even identical to that used in European developed countries. A particular importance is given in the law to the ‘‘well-known’’ marks, it being considered that, in order
to prove the reputation of a mark, it is sufficient that this mark be well-known: • in the territory of Romania; • for the segment of the public from Romania to which the goods and services represented by the mark are destined. The law provides important enforcement procedures. The owner of a mark may require the infringer to provide recent information regarding the origin and distribution channel of merchandise to which marks are unlawfully affixed and information on the identity of the manufacturer or merchant and on the quantity of merchandise manufactured, delivered, received or ordered. At the same time, in specific situation provided for in the law, the customs authorities may order, ex officio or at the request of the right holder, the suspension of customs clearance on import or export of goods on which the marks or geographical indications are affixed. The General Directorate of Custom shall have the authority to enforce the rights to marks and protected geographical indications, at the borders, in accordance with the law. 5.2. Customs enforcement The very important problem of customs enforcement has been enacted by the Law no. 202/2001 ‘‘on specific measures for the enforcement of intellectual property rights in customs clearance operations’’. The law provides for a system of supervision, control and intervention of customs bodies within the framework of procedures of customs clearance of goods, for the purpose of suspending the customs clearance procedure and retaining the goods liable to infringe an intellectual property right. By far, the most frequent customs enforcement cases are those where trademark counterfeited goods are involved. Shortly, the legal procedures are as follows: • the holder of the intellectual property right makes an application to Customs General Office, requiring the customs clearance procedures to be suspended and the goods liable to infringement be suspended; • within 10 days, the Customs General Office informs in writing the claimant about the approval or rejection of his application; • in the case of approval, the Customs Authority suspends the customs clearance procedure and retains the suspected goods and informs in writing the claimant about the measures taken; • within 10 days from the date the information was received, the claimant must prove the complaint was
A.C. Strenc / World Patent Information 24 (2002) 35–40
brought to the Court, with the payment of a guarantee fee; • if the mentioned proof was produced, the customs authority will retain the goods until the Court case has been finalized; • when the Court’s decision of approval becomes final, the customs authorities levy a substantial fine on the importer, owner or addressee of goods; • the seized goods are destroyed.
6. Industrial designs 6.1. Context According to Law 129/92, the new appearance of a product having a utilitarian function may be registered as an industrial design. The protection of industrial designs is not allowed if the appearance of the industrial design is determined by a technical function or if the purpose or appearance is contrary to morality or public policy. The granting of a registration certificate or the rejection of the application follows a substantive examination procedure where, after checking of the formal requirements, the meeting of the registration criteria are examined. The rights on industrial designs, as well as the rights derived from the registration of industrial designs are similar to those provided in the legislation of most European countries. Nevertheless, in the time interval from the enacting of the law, 1992, some important developments imposed the necessity to amend the law, 2 namely: • TRIPS Agreement; • European Directive 98/71 EC on designs; • Geneva Act of the Hague Agreement, signed by Romania at the Diplomatic Conference of 1999, in Geneva, and ratified by the Law no. 15/2001. 6.2. Amendments to the industrial designs law Briefly, some of the most important changes made to the law are: • introduction of the concept of ‘‘independent designs’’, according to Article 25 TRIPS;
2 At the time that this article was written (May 2001), the Romanian Parliament was discussing the amendments to the Industrial Designs Law on the basis of the draft law presented by the Government. This draft law comprises the main features as presented here. No major changes are expected for the final text of the amended Law.
39
• recognition that the rights mentioned in the law do not prejudice and do not exclude the protection granted by other intellectual and industrial property rights, in particular: copyright, patents trademarks, utility models, typographic characters, topographies of integrated circuits and unfair competition laws; • according to Article 3, 4, 5 and 6 of the European Directive 98/71, an exact definition of the novelty when the designs is incorporated in a complex product as well as a more precise provision of the concept of ‘‘made available to the public’’; • definition of the filing date according to the Geneva Act of the Hague Agreement, and in particular the opportunity to request the postponing of the publication and to replace the graphical representations with specimens; • special provisions regarding the necessity for a multiple filing to satisfy the requirement of unity of design, unity of production or unity of use, or belong to the same set or composition of items; • provision of an explicit possibility for revalidation in certain legal conditions; • according to Article 9 of the European Directive, the exact definition of the scope of protection as being determined by the graphical representations of the registered designs; • inclusion of the TRIPs requirements regarding enforcement of these rights; including customs enforcement.
7. An evolving developments
situation:
objectives
and
future
As already mentioned, the main political goal of Romania to accede to the European Union drives the important task of a rapid approximation of the legislation, including that in the field of industrial and intellectual property. It is moving firmly towards this goal, in providing a more or less similar level of protection to that of developed countries, based on a long tradition of legislation and substantive examination for all aspects of industrial property. Probably one of the most important events on this road is the accession to the European Patent Convention, expected to take place immediately after the 1st of July 2002. The mentioned amendments to the Patent Law, bringing it completely in line with the EPC, together with an Accession Law providing the exact date of accession and the interdependency mechanisms between national and European patent applications and patents, will be the cornerstones of the accession mechanism. Also in the field of patents, special attention will be given to the implementation of Supplementary
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A.C. Strenc / World Patent Information 24 (2002) 35–40
Protection Certificates for pharmaceuticals and plant protection products and a draft law is accordingly under preparation within the Patent Office. Recently, a Cooperation Agreement between the State Office for Inventions and Trademarks (OSIM) and the Office for Harmonization in the Internal Market
(OHIM) has been signed which provides the necessary requirements for exchanging information in order to have, at the time of Romania’s accession to the European Union, a suitable system of recognition of the registered marks, bearing in mind the unity character of the Community Trade Marks.
Romania—recent developments in industrial property Alexandru Cristian Strenc Romanian State Office for Inventions and Trademarks (OSIM), 5 Ion Ghica Street, Sector 3, Bucharest, Romania
Abstract Industrial property law in Romania has undergone far-reaching changes over the last decade. This article outlines the changes following (i) the collapse of the communist government, (ii) the need to enforce various regional and international treaties and agreements, such as TRIPS, the European Directives on Biotechnological Inventions, on Trademarks and Geographical Indications, and on SPCs, the Trademark Law Treaty, the Patent Law Treaty, and the European Regulation on the Community Trademark, and (iii) the need to harmonize domestic patent law with the EPC (preparatory to joining in July 2002) and—in due course—with the European Union. These changes cover virtually every aspect of IP law in Romania, including patents, trademarks, industrial designs, and integrated circuit topographies. The revised patent law provisions for patentable subject matter, patentability criteria, filing date, scope of protection and infringement are summarized. Similarly the revised trademark and industrial design laws are also summarized and the enforcement measures described. 2002 Published by Elsevier Science Ltd. Keywords: Industrial property; Romania; OSIM; Patents; Trademarks; Industrial designs; Integrated circuit topographies; SPC; Patent Law Treaty; Trademark Law Treaty; TRIPS; EPC; Community trademarks
1. Introduction
2.1. In the field of patents for invention
Romania has a long tradition in the protection of industrial property. The first patent granted to a Romanian was in France in 1827 and the first Romanian Patent was granted by a Royal Decree in 1864. In 1879, the first Trademark Law was promulgated, at that time the 7th country to enact trademark laws. In 1906 the first Patent Law was promulgated. 1906 was also the year when the Romanian Office for Industrial Property (now the Romanian State Office for Inventions and Trademarks—OSIM) was founded. After the collapse of the communist regime, in December 1989, Romania changed its legislation completely in the field of industrial property, which is now based on the mechanisms of the market economy and, generally speaking, harmonized with main international treaties and conventions.
The Patent Law no. 64/1991, entered into force on 21 January 1992 and its Implementing Regulations were provided in the Government Decision no. 152 of 27 March 1992; The Law no. 32/1996 on Ratification of the ‘‘Extension Agreement’’ between the Government of Romania and the European Patent Organization. This agreement enables, starting with 15 October 1996, the extension of the effects of the European patents granted by the European Patent Office to Romania, for those applicants who paid the legal ‘‘extension fees’’; The Law on Pipe-Line Protection no. 93/1998, which provides the legal basis for recognition, in well-determined conditions, of a special protection for some categories of patents granted abroad, called ‘‘pipe-line protection’’. According to this law, Romania recognizes a transitional protection for owners of patents having priority before 21 January 1991 in a State Member of the Paris Union for the Protection of Industrial Property or of the World Trade Organization, for inventions having as subject-matter substances obtained by nuclear and chemical methods and medical treatment, disinfectants, food stuffs and spices and new plant varieties, bacteria and fungi strains, new animal
2. Summary of current IP legislation The basic national legislation in the field of industrial property now comprises: E-mail address: [email protected] (A.C. Strenc). 0172-2190/02/$ - see front matter 2002 Published by Elsevier Science Ltd. PII: S 0 1 7 2 - 2 1 9 0 ( 0 1 ) 0 0 0 4 7 - 3
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A.C. Strenc / World Patent Information 24 (2002) 35–40
breeds and silkworms and which meet the following conditions: • the patent is still in force; • the subject matter of the invention has not been patented in Romania and belongs to the above-mentioned categories; • the product to which the patent for invention relates has not been marketed in Romania before 31 December 1993; • the application for the grant of transitional protection was filed within a six-month period, starting with date on which this law entered into force. The Law no. 255/1998 on the Protection of new Plant Varieties, which entered into force on 31 March 1999. 2.2. In the field of trademarks The Law no. 84/1998 on Trademarks and Geographical indications, entered into force on 23 July 1998 and its Implementing Regulations were provided in the Governmental Decision no. 833 of 19 November 1998.
• Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure—2000; • UPOV Convention—2001; • Geneva Act of the Hague Agreement—2001. In addition, Romania has been a member of the World Trade Organization since 1994. Romanian industrial property law has thus changed extensively, not only to adapt to a modern market economy, but also to meet the obligations of these many international and European treaties to which it is party. Moreover, in a rapidly developing area of the law worldwide, Romania is additionally taking steps to harmonize its laws with the EPC and, more generally, with the European Union. In this latter context, Romania has taken the major political decision to join the European Union, in the medium term time horizon. The objective of this paper now is to present the main features of these changes.
4. Amendments to the patent law
2.3. In the field of industrial designs 4.1. Context The Law no. 129/192 on the Protection of Industrial Designs, entered into force on 8 January 1992. 2.4. In the field of topographies of integrated circuits The Law no. 16/1995 on the Protection of Topographies of Integrated Circuits, entered into force on 9 March 1995 and its Implementing Regulations, provided by the Governmental Decision no. 535 of 4 July 1996.
3. International treaties, conventions and agreements Starting with the indicated year, Romania is party to the following important treaties, conventions and agreements: • Paris Convention for the Protection of Industrial Property—1920; • WIPO Convention—1970; • Patent Cooperation Treaty—1978; • Madrid Agreement Concerning the International Registration of Marks—1927; • Protocol Relating to the Madrid Agreement—1998; • Hague Agreement Concerning the International Deposit of Industrial Designs—1992; • Strasbourg, Nice, Vienna and Locarno Agreements on Classifications—1998; • Trademark Law Treaty—1998;
In the preamble of the ‘‘Extension Agreement’’ mentioned previously, the significant fact is recognized that ‘‘the Romanian Patent Law provides for a level of protection similar to that existing in the Member States of the European Patent Organization’’. This means that as regards the patentable subject matter, the definitions and the conceptualization of the patentability criteria, the overall granting procedure and the term of protection, the rights conferred by a patent, there is a close similarity of concepts between the Romanian Law and the European law. Although this was appropriate when implemented in 1994, much has changed in the world of industrial property. The law therefore needed to be amended to allow for: • enforcing of the TRIPS Agreement—1994; • European Directive no. 98/84 in the field of bio-technological inventions; • European Regulations no. 1768/92 and 1610/98 on the supplementary protection certificate for pharmaceuticals and plant protection products; • Patent Law Treaty (PLT)—signed by Romania in June 2000; • European Patent Convention, as revised in Munich, in November 2000. Referring to the European Patent Convention, Romania applied for full accession in December 1997 and
A.C. Strenc / World Patent Information 24 (2002) 35–40
received in 1999 an invitation to join the Organization with effect from 1 July 2002. As a result, the Romanian Patent Law has recently 1 been revised in a significant manner and some of the most important points of the amendments will be briefly presented. 4.2. Patentable subject matter
37
4.3. Patentability criteria The amendments to the patent law introduced similar requirements to those provided in Articles 54(1) and 55 of the EPC, namely: • addition of a new provision regarding a non-prejudicial disclosure produced within six months before the filing of the patent application and ‘‘which was due or in consequence of an evident abuse in relation to the applicant or his legal predecessor’’; • introduction of the patentability of the first and further medical use of a known substance or composition, if its use is not comprised in the state of the art.
(a) exclusion from the patentability of those invention the commercial exploitation of which is contrary to the public order and morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment; (b) exclusion from patentability, fully in line with European Directive no. 98/84 on bio-technological invention, of:
4.4. Filing date
• plant varieties and animal breeds; • essentially biological processes for plant varieties or animal breeds, excepting those inventions having as their object microbiological processes or other technical processes or the product obtained by this process;
The PLT introduced a series of major simplifications in the procedure of obtaining a filing date. These have been taken ‘‘on board’’. Thus, the filing date of a patent application will be the date on which the office has received all of the following elements, filed on paper or by other means:
(c) explicit mentioning in the category of patentable objects of:
• an express or implicit indication to the effect that the elements are intended to be an application; • an indication allowing the establishment of the identity of the applicant or allowing the applicant to be contacted by the office; • a part which on the face of it appears to be a description; the drawings and the claims may be filed within two months from the filing date.
• plant or animals, if the possibility of technical achievement of that invention is not limited to a particular plant variety or animal breed; • products made from biological material or containing a biological material; • biological materials isolated from their natural environment or obtained through a technical process; (d) identical list with that of European Patent Convention, of the categories of creations which shall not be regarded as inventions within the meaning of the patentability criteria, namely: • discoveries, scientific theories and mathematical methods; • aesthetic creations; • schemes, rules and methods for performing mental acts, playing games or doing business and computer programs; • presentation of information.
1
At the time that this article was written (May 2001), the Romanian Parliament was discussing the amendments to the Patent Law on the basis of the draft law presented by the Government. This draft law comprises the main features as presented here. No major changes are expected for the final text of the amended Law.
Where a missing part of the description is filed with the office within two months from the filing date, that part of the description shall be included in the application and the filing date being the date on which the office has received that part of the description, or the date on which all the requirements of the filing date are complied with, whichever is later. 4.5. Scope of protection An important amendment regarding the exact meaning of the scope of protection has been adopted in order to bring the law in line with the EPC, as was amended in November 2000, in Munich. Directly derived from the Protocol on the Interpretation of Article 69, it provides that ‘‘for the purpose of determining the extent of protection conferred by a patent of invention, due account shall be taken of any element which is equivalent to an element specified in the claims’’. This provision is in fact a first step towards a broader approach to the theory of equivalents.
38
A.C. Strenc / World Patent Information 24 (2002) 35–40
As far as the limitations in the scope of protection are concerned, where the actual law provided both compulsory licences and ex officio licence, the amended Law provides, in full line with the TRIPS Agreement, only compulsory licences, with a very rigorous enunciation of the exceptionality of the granting conditions. At the same time, the concept of ‘‘dependent patents’’ has been introduced, similar to the TRIPS provisions. 4.6. Infringement In the amended form, the concept of the extension of the protection conferred by a process patent on the product directly obtained by that process has been introduced and a first consequence is the provision of the so-called ‘‘reversal of the burden of proof’’. This supposes that for the purpose of civil proceeding in respect of the infringement of the right of a process patent, the burden of proof that the process used to obtain an identical product is different from the patented process shall be on the defendant. In applying such a provision, any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process, in at least one of the following circumstances: • if the product obtained by the patented process is new; • if there is a substantial probability that the identical product was made by that process and the owner of the patent has been unable through reasonable effort to determine the process actually used.
5. Trademarks 5.1. Context The Romanian Trademark Law that entered into force in 1998 is harmonized in substance with the European Regulation on Community Trademark, the European Directives on trademarks and on geographical indications, as well as with the Trademark Law Treaty and the TRIPS Agreement. This means that the definition and the concept of a mark and of a geographical indication, relative and absolute grounds of refusal to the registration, the rights conferred by the registration of a mark and in general the procedure of substantive examination of a mark and geographical indication for the purpose of the granting of a registration certificate are similar or in some cases even identical to that used in European developed countries. A particular importance is given in the law to the ‘‘well-known’’ marks, it being considered that, in order
to prove the reputation of a mark, it is sufficient that this mark be well-known: • in the territory of Romania; • for the segment of the public from Romania to which the goods and services represented by the mark are destined. The law provides important enforcement procedures. The owner of a mark may require the infringer to provide recent information regarding the origin and distribution channel of merchandise to which marks are unlawfully affixed and information on the identity of the manufacturer or merchant and on the quantity of merchandise manufactured, delivered, received or ordered. At the same time, in specific situation provided for in the law, the customs authorities may order, ex officio or at the request of the right holder, the suspension of customs clearance on import or export of goods on which the marks or geographical indications are affixed. The General Directorate of Custom shall have the authority to enforce the rights to marks and protected geographical indications, at the borders, in accordance with the law. 5.2. Customs enforcement The very important problem of customs enforcement has been enacted by the Law no. 202/2001 ‘‘on specific measures for the enforcement of intellectual property rights in customs clearance operations’’. The law provides for a system of supervision, control and intervention of customs bodies within the framework of procedures of customs clearance of goods, for the purpose of suspending the customs clearance procedure and retaining the goods liable to infringe an intellectual property right. By far, the most frequent customs enforcement cases are those where trademark counterfeited goods are involved. Shortly, the legal procedures are as follows: • the holder of the intellectual property right makes an application to Customs General Office, requiring the customs clearance procedures to be suspended and the goods liable to infringement be suspended; • within 10 days, the Customs General Office informs in writing the claimant about the approval or rejection of his application; • in the case of approval, the Customs Authority suspends the customs clearance procedure and retains the suspected goods and informs in writing the claimant about the measures taken; • within 10 days from the date the information was received, the claimant must prove the complaint was
A.C. Strenc / World Patent Information 24 (2002) 35–40
brought to the Court, with the payment of a guarantee fee; • if the mentioned proof was produced, the customs authority will retain the goods until the Court case has been finalized; • when the Court’s decision of approval becomes final, the customs authorities levy a substantial fine on the importer, owner or addressee of goods; • the seized goods are destroyed.
6. Industrial designs 6.1. Context According to Law 129/92, the new appearance of a product having a utilitarian function may be registered as an industrial design. The protection of industrial designs is not allowed if the appearance of the industrial design is determined by a technical function or if the purpose or appearance is contrary to morality or public policy. The granting of a registration certificate or the rejection of the application follows a substantive examination procedure where, after checking of the formal requirements, the meeting of the registration criteria are examined. The rights on industrial designs, as well as the rights derived from the registration of industrial designs are similar to those provided in the legislation of most European countries. Nevertheless, in the time interval from the enacting of the law, 1992, some important developments imposed the necessity to amend the law, 2 namely: • TRIPS Agreement; • European Directive 98/71 EC on designs; • Geneva Act of the Hague Agreement, signed by Romania at the Diplomatic Conference of 1999, in Geneva, and ratified by the Law no. 15/2001. 6.2. Amendments to the industrial designs law Briefly, some of the most important changes made to the law are: • introduction of the concept of ‘‘independent designs’’, according to Article 25 TRIPS;
2 At the time that this article was written (May 2001), the Romanian Parliament was discussing the amendments to the Industrial Designs Law on the basis of the draft law presented by the Government. This draft law comprises the main features as presented here. No major changes are expected for the final text of the amended Law.
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• recognition that the rights mentioned in the law do not prejudice and do not exclude the protection granted by other intellectual and industrial property rights, in particular: copyright, patents trademarks, utility models, typographic characters, topographies of integrated circuits and unfair competition laws; • according to Article 3, 4, 5 and 6 of the European Directive 98/71, an exact definition of the novelty when the designs is incorporated in a complex product as well as a more precise provision of the concept of ‘‘made available to the public’’; • definition of the filing date according to the Geneva Act of the Hague Agreement, and in particular the opportunity to request the postponing of the publication and to replace the graphical representations with specimens; • special provisions regarding the necessity for a multiple filing to satisfy the requirement of unity of design, unity of production or unity of use, or belong to the same set or composition of items; • provision of an explicit possibility for revalidation in certain legal conditions; • according to Article 9 of the European Directive, the exact definition of the scope of protection as being determined by the graphical representations of the registered designs; • inclusion of the TRIPs requirements regarding enforcement of these rights; including customs enforcement.
7. An evolving developments
situation:
objectives
and
future
As already mentioned, the main political goal of Romania to accede to the European Union drives the important task of a rapid approximation of the legislation, including that in the field of industrial and intellectual property. It is moving firmly towards this goal, in providing a more or less similar level of protection to that of developed countries, based on a long tradition of legislation and substantive examination for all aspects of industrial property. Probably one of the most important events on this road is the accession to the European Patent Convention, expected to take place immediately after the 1st of July 2002. The mentioned amendments to the Patent Law, bringing it completely in line with the EPC, together with an Accession Law providing the exact date of accession and the interdependency mechanisms between national and European patent applications and patents, will be the cornerstones of the accession mechanism. Also in the field of patents, special attention will be given to the implementation of Supplementary
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Protection Certificates for pharmaceuticals and plant protection products and a draft law is accordingly under preparation within the Patent Office. Recently, a Cooperation Agreement between the State Office for Inventions and Trademarks (OSIM) and the Office for Harmonization in the Internal Market
(OHIM) has been signed which provides the necessary requirements for exchanging information in order to have, at the time of Romania’s accession to the European Union, a suitable system of recognition of the registered marks, bearing in mind the unity character of the Community Trade Marks.