Pages 531-538

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

RO Romania

Impact of the European Patent Convention on national law

On 1 March 2003, Romania became the 27th contracting state to the EPC. Provisions implementing the EPC and bringing Romanian patent law into line with the EPC are contained in Patent Law No. 64 of 11 October 1991, as last amended and completed by law No. 203 of 19 April 2002, Law No. 611 of 13 November 2002 on Romania's Accession to the EPC and the implementing regulations to these acts.

A. National legal bases

1. Patent Law No. 64 of 11 October 1991 (published in Monitorul Oficial [Romanian Official Journal] No. 212 of 21 October 1991), amended and completed by Law No. 203 of 19 April 2002 (published in Monitorul Oficial No. 340 of 22 May 2002), re-published in Monitorul Oficial No. 752 of 15 October 2002 (PL)

2. Government Decision No. 499 of 18 April 2003 (published in Monitorul Oficial No. 348 of 22 May 2002) for the approval of the Regulations for implementing the Patent Law

3. Ordinance No. 41 of 30 January 1998 (published in Monitorul Oficial No. 43/1998) on industrial property fees approved and amended by Law No. 383 of 13 June 2002 (published in Monitorul Oficial No. 471 of 2 July 2002) (Fees Law)

4. Law No. 611 of 13 November 2002 (published in Monitorul Oficial No. 844 of 22 November 2002) on Romania's Accession to the Convention on the Grant of European Patents of 5 October 1973, and to the Act Revising the Convention of 29 November 2000 (AccEPCLaw)

B. Application of the EPC in Romania

The main provisions relating to the application of the EPC in Romania are summarised below:

The information is structured in the same way as in the EPO brochure "National Law relating to the EPC". This summary may therefore be used as a supplement to the brochure until a revised edition is published.

I. Filing of European patent applications (Article 75 EPC; Article 4 AccEPCLaw)

European patent applications may be filed either with the EPO or with the Romanian Patent Office (OSIM):1

State Office for Inventions and Trademarks (OSIM)

5, Ion Ghica Street

Sector 3,

70018 Bucharest

B.P. 52

Romania

European patent applications for inventions made in Romania and with subject-matter of significance for national security must be filed with the OSIM. Filing of documents by facsimile is not permitted. European patent applications filed with the OSIM may be drawn up in Romanian, English, French or German. Applicants with neither a residence nor principal place of business in Romania may file European patent applications in one of the languages under Article 14 (1) and (2) EPC, but must give an address for service in Romania.

II.A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC; Article 5 (2) AccEPCLaw)

Under Article 5 (2) AccEPCLaw, a published European patent application designating Romania enjoys provisional protection as from the date on which a translation of the claims as submitted by the applicant has been published by the OSIM. As of that date, the applicant may claim a compensation reasonable in the circumstances; this claim is enforceable only after the grant of the patent.

II.B. Filing a translation of the claims (Article 67 (3) EPC; Article 1, Annex 1, No. 5(c) Fees Law)

The translation of the claims must be filed in triplicate, and the appropriate fee paid. The OSIM accepts documents meeting the formal requirements of Rule 35 (3) to (14) EPC. The translation may be corrected, Article 7(2) AccEPCLaw subject to payment of a fee.

The translation must be accompanied by the following details: the European patent application's filing and publication numbers and dates, the name(s) and address(es) of the applicant(s), the inventor, the title of the invention, the abstract and any drawings.

For applicants with neither a residence nor principal place of business in Romania, the translation must be filed by a representative authorised to act before the OSIM.

III. Filing a translation of the patent specification (Article 65 EPC; Article 6 AccEPCLaw; Article 1, Annex 1, No. 12-13 Fees Law).

A European patent designating Romania has effect only if a Romanian translation of the text in which the EPO intends to grant the patent, or decides to maintain it as amended, is filed with the OSIM and the prescribed fee paid. If this requirement is not met, the European patent will be regarded as void ab initio.

The translation must be filed and the appropriate fee paid within three months of the date on which the mention of the grant or the decision to maintain the patent as amended is published in the European Patent Bulletin. The period can be extended by three months if a surcharge is paid within this additional three-months period.

The OSIM accepts translations meeting the formal requirements of Rules 32 and 35 (3) to (14) EPC. The translation must be accompanied by the following details: the European patent application's filing and publication numbers and dates, the number and date of the European Patent Bulletin in which the mention of grant was published, the name(s) and address(es) of the applicant(s), the inventor the title of the invention, any drawings, and a signed declaration stating that the translation corresponds to the original text of the patent specification. If the EPO maintains the patent in an amended form, a Romanian translation of the amended text must be filed.

The translation may be corrected subject to payment of a fee; the issue date and number of the original publication of the translation in the Patent Bulletin must be clearly indicated.

For applicants with neither a residence nor principal place of business in Romania, the translation must be filed by a representative authorised to act before the OSIM.

IV. Authentic text of a European patent application or European patent (Article 70 EPC; Article 7 AccEPCLaw)

The translation is the authentic text of the European patent application or patent if the scope of protection is narrower than in the language of proceedings. This does not apply, however, in revocation proceedings. Regarding the rights of a prior user where a translation is corrected, Article 7(3) AccEPCLaw provides for the safeguards mentioned in Article 70 (4) b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC; Article 8 AccEPCLaw; Articles 12, 13 Fees Law and Article 1, Annex 1, No. 21 Fees Law)

Renewal fees are payable to the OSIM for the years following that in which the European Patent Bulletin mentions the grant of the European patent. Failure to pay the renewal fee will result in the lapse of the patent as from the start of the patent year for which the fee has not been paid - each patent year starting with the anniversary of the filing date.

Renewal fees fall due on the anniversary of the filing date. They may also be paid within a grace period of up to six months after the due date, subject to a surcharge of 50% of the unpaid fee.

No surcharge is levied for the first year in which national renewal fees are payable, if the due date of the renewal fee is within a period of three months as of the date of publication by the EPO of the mention of the grant of the European patent.

Restitutio in integrum is possible. The request must be submitted within six months of publication, in the Patent Bulletin, of the patent's lapse due to non-payment of renewal fees. In the proceedings in respect of restitutio in integrum, the patent owners must be represented by a representative authorised to act before OSIM.

For applicants with neither a residence nor their principal place of business in Romania, the renewal fees may be paid by a representative authorised to act before OSIM.

The OSIM does not issue reminders in case of non-payment.

Renewal fees are established under the Fees Law as follows:

Pursuant to the Fees Law renewal fees are payable either in USD of in Euros.

OSIM shall transfer to the EPO's account 50% of the fees in the amount and currency received. When the renewal fees are by by Romanian patent owners in the national currency (ROL), 50% of the fee will be changed in EUR on the same day on which this fee is transferred to the EPO's account.

VI. Conversion of European patent applications into national patent applications (Articles 135 to 137 EPC; Article 9 AccEPCLaw)

Under Romanian law, conversion occurs at the applicant's request in the case of deemed withdrawal under Article 77 (5) EPC (Article 9(1) AccEPCLaw) or if the translation under Article 14 (2) EPC was not filed in due time under Article 90 (3) EPC. The request for conversion must be filed within three months of the owner of the European patent application being notified of the withdrawal of the application (Article 135 (2) EPC). A Romanian translation of the European patent application and, where appropriate, of the text as amended in proceedings before the EPO, must be filed and the appropriate fee paid within two months of the invitation by OSIM to do so.

VII. Payment of fees

Payment to the OSIM may be made by bank transfer to account no. 2511.1-774.8/EUR (IBAN: RO61 RNCB 5025 0000 0774 0003) with the bank "Banca Comerciala Romana, Sucursala Doamnei, nr. 14-16, sect. 3, Bucharest" (BIC: RNCBROBUXXX). For payment in ROL: Trezoreria Municipiului Bucureşti, Splaiul Uirii nr.8, sector 3, Bucureşti, Romania, account no. 50.25.42.66.081, cod cont 5025, cod fiscal OSIM 4266081.

VIII. Miscellaneous

1.Simultaneous protection (Article 139 (3) EPC; Article 10 AccEPCLaw)

Where a national patent relates to an invention for which an European patent has been granted to the same proprietor or his successor in title, with the same date of filing or priority, the national patent shall be ineffective from either the date on which the period for filing an opposition to the European patent has expired without any opposition having been filed or as of the date on which the opposition proceedings have been are concluded with a decision to maintain the European patent.

2. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies in the territory of the Republic of Romania.

C. Amendment of Romanian patent law

1. Patentability

The Patentability criteria (concept of invention, novelty, inventive step, industrial application) are fully consistent with those of the EPC (Articles 52 to 57 EPC).

2. Term of the patent

A patent is granted for a term of 20 years, as from the date of filing the application.

3. Rights conferred by the patent

The rights conferred by the patent reflect the provisions of the Community Patent Convention (see Article 25 et seq. CPC 1989)

4. Extent of protection

The extent of protection conferred by the patent is determined by the claims. The description may serve as a guide to interpreting the claims.

D. Termination of the extension agreement between Romania and the EPO

The extension agreement concluded between the European Patent Organisation and the Romania was terminated with effect as of 1 March 2003. However, the extension system still applies to European and international patent applications with a filing date up to 28 February 2003 and to European patents granted on the basis of such applications, subject to the payment of the extension fee in due time (Article 12(2) AccEPCLaw; Article 10(2) Ordinance No. 32/1996).

E. Other international treaties

The Paris Convention entered into force for Romania in 1920. The 12-month priority period under the Paris Convention may be claimed for patents.

The Patent Cooperation Treaty (PCT) entered into force for Romania on 23 July 1979.

On 31 March 1999, Romania acceded to the Strasbourg Agreement concerning the International Patent Classification (IPC).

Since 25 September 1999, Romania has been a contracting state to the Budapest Treaty on the International Recognition of the Deposit of Microorganismen for the Purposes of Patent Procedure.

Romania is a contracting party to the TRIPs Agreement since 1 January 1995. Patent Law No. 64 of 11 October 1991 corresponds to the said agreement, and to the other international agreements referred to above.