International Patent Litigation in Romania

The proprietor of a patent may bring proceedings for patent infringement. If the patent belongs to more than one proprietor, each one of them may bring infringement proceedings, provided that they notify the other proprietors.

Exclusive licensees have the right to bring proceedings for patent infringement in respect of any infringements of the patent committed after the date of the licence, and only in relation to infringements that are within the scope of their licence.

In some cases, depending on the terms of the licence, a non-exclusive licensee may be added as a party to proceedings.

Any assignee of the patent may commence infringement proceedings only for acts that have occurred after the assignment and only if the assignment agreement was registered with the National Patents Registry.

Yes, several persons may be joined as claimant or defendant, whenever the case involves a joint obligation or a common right.

Yes, it is possible to involve suppliers or other third parties in the proceedings. If the outcome of the litigation could party with a third-party notice. The third-party notice has the effect that the legal and factual findings in the judgment are established with a binding effect between the defendant and the third party and the defendant may hold these findings against the third party in potential recourse proceedings.

The third-party has the right to intervene in the proceedings and assert its own means of attack and defence and conduct all procedural actions unless these actions contradict those of the main party.

Yes. A claim for infringement may be filed within the general time limit of three years from when the person entitled to file it knew or had reason to know of both the existence of the infringement and the identity of the person responsible.

No.

In Romania there is no special court or division within a court that would settle patent litigation proceedings. Thus, civil claims related to patent infringement are ruled upon by common civil courts.

Nonetheless, since infringement is a criminal offence, criminal courts also have jurisdiction over patent infringement matters.

Criminal proceedings are commenced ex officio every time an infringement occurs. The plaintiff (the patent’s proprietor, licensee or assignee) may then seek to obtain damages in a claim for damages ‘attached’ to the criminal proceedings or the plaintiff may seek damages by means of separate parallel proceedings through the civil courts. Therefore, the plaintiff may seek damages through both the civil and criminal courts.

A claim to revoke a pending patent registration should be initially filed with the State Office for Inventions and Trademarks (OSIM) and will be settled by a review committee of the Appeals Department within OSIM. Such committee decision may be reviewed on appeal  by the Tribunal, and on final appeal by the Court of Appeal.

Patent invalidity claims are to be filed with the Bucharest Tribunal, and the Tribunal’s decision may be appealed before the Court of Appeal, while a final appeal may be filed with the Supreme Court.

Although the UPC Agreement was signed by Romania, it has not yet been ratified.

No.

It usually takes between three to five months from the moment the claim is filed with the civil court. As of  15 February 2013, Romania introduced a New Civil Procedure Code that has shortened the amount of  time between filing a claim and the first hearing.

Unlike the setting of a first hearing date, rendering a first instance decision is not bound by any procedural deadline. However, on average, it takes ten months since the claim is submitted for a decision to be reached in first instance.

The judges do not have technical expertise, but they are permitted to use experts who will present a technical report.

The courts are allowed to stay the proceedings pending the outcome of a related opposition at the EPO if the case at hand depends, totally or partially, on the existence or non-existence of a right which is the subject matter of the opposition at the EPO.

Yes. However, the plaintiff must demonstrate and prove a legal interest in a judgment on the patent’s validity. Such an interest is usually assumed if patent infringement proceedings are pending.

FRAND licenses are not yet regulated by law in Romania and have not been encountered within national case law.

As far as compulsory licenses are concerned, yes, a party can file a request with the Bucharest Tribunal, on the expiry of four years from the date of filing of the patent application or three years from the granting of the patent, whichever is the later.

FRAND licenses are not yet regulated by law in Romania and have not been encountered within national case law.

Parties may submit extra-judicial expert reports as evidence, but judges have discretion whether to admit the reports as evidence or not. Furthermore, they are not in any way bound by the results of such report. When an expert report is ordered by the court, the court appoints its own expert, while parties are allowed to request the appointment of their own expert which would assist the court-appointed expert.

Yes. If a judge decides that a document must be disclosed, and asks a party to do so, the party has an obligation to disclose the document, regardless of its confidentiality. Indeed, the judge has an active role in deciding which documents (or part thereof) are relevant to the case and must be disclosed by the parties.

The interested party may request preliminary discovery by way of an injunction or the party may apply to the court for seizure of evidence if there is a legitimate danger that such evidence may not exist in the future or would become difficult to obtain.

All patent related claims may be appealed, with no limits as to the possible grounds for appeal. Also, final appeals are available (except for patent revoking claim) but are subject to specific procedural grounds.

An appeal may be brought on both factual and legal grounds. However, a final appeal may be brought only based on specific legal grounds, and such grounds are strictly defined by law:

• when the court was not constituted according to the applicable legal provisions;
• if the decision was rendered by a judge different than the one who took part at the hearing on the merits or by a different panel of judges than the one randomly established to settle the case or whose composition was changed, in violation of the law;
• when the judgment was given in breach of the jurisdiction of another court;
• when the court exceeded its competence;
• when, by its judgment, the court breached procedural rules which entail the sanction of nullity;
• when the judgment does not refer to the grounds upon which it is based or contains contradictory reasoning or grounds not related to the case;
• when the res judicata authority has been infringed;
• when the judgment was given in breach or misapplication of the rules of substantive law.

Six to nine months from the date of filing the appeal (for both the first and final appeal).

In general, an appeal has a suspensive effect and thus prevents the decision from being final and binding.

The costs of any specific patent litigation will vary depending on various aspects such as the number of hearings, necessity of experts, the type of claim filed etc. As a very rough estimate, the first instance proceeding may cost around fifty thousand euros (50,00 EUR) to seventy five thousand euros (75,000 EUR) or even more  for very complex disputes.

As in the case above, it is difficult to estimate the legal costs as these will depend on the circumstances of the case. Note should be made that costs in the appeal phase are usually reduced to 50% of the amount spent before the first instance courts, thus may vary between twenty five thousand euros (25,000 EUR) to thirty seven thousand euros (37,000 EUR) or higher for very complex disputes.

Yes, the losing party must bear both court costs and opposing counsel’s fees. There is no limitation provided by law, but upon request or ex officio judges are empowered to reduce the amount of litigation costs considered too high in comparison with the case complexity and duration.

Options include mediation and negotiation. ADR is not commonly used by parties in patent litigation.

The parties may consider mediation or conciliation at any stage of the proceedings, but they are not required to do so by the court.

The court will first try to restore the parties to their position before the infringement took place. However, usually this is not possible and instead the court will award damages. Automatic injunctions are never available in civil court claims.

Damages are calculated to cover in full the damage suffered by the claimant, including the effective losses and the unachieved benefits (i.e. loss of profits). The court will only grant the amount of damages that the claimant is able to provide evidence for. The court must be certain that the party suffered or would have suffered this damage.

If requested, the amount of damages needs to be proven by factual evidence. Courts are allowed to order claimants to bring additional evidence or give further explanations in support thereof, but within the same proceedings. There are no separate proceedings envisaged by Romanian law for such inquiry.

No.

Yes, the patentee / beneficiary has a right to request recall and removal of infringing products from the sales channels. The recall claims are subject to statutory limitation periods (depending on whether such remedy is requested before or during the litigation proceedings). However, they may also be excluded when it can be expected that the products which the infringer distributed are no longer in the sales channels.

Yes. The patent holder or any other person exercising the right with the patent holder’s consent may request a preliminary injunction from the court if they provide credible evidence that their rights are the subject of an actual or imminent unlawful act and that this act is likely to cause them damage which it would be difficult to remedy.

Yes. In case of particular urgency, provisional measures may be taken without the need for the defendant to be heard. In this case, the parties will be immediately informed of the measures taken by the court.

One to three months from submission.

Yes, it is possible to file an appeal against a preliminary injunction within five days from the date the decision was rendered by the court or from the date such decision was notified to the interested person. The appeal does not automatically suspend the effect of the preliminary injunction. However, provided that the appellant provides security, the court may order a temporary suspension of the effect of the injunction.

No. The party awarded an injunction is not liable to provide security.

As a general rule, the Romanian courts will grant a preliminary injunction if the claimant proves that it has commenced proceedings on the merits prior to filing such a request. However, there is no explicit law requiring this and there are differing legal opinions as to whether a preliminary injunction is available regardless of the existence of any proceedings on the merits of the case.

Cross-border injunctions are not available.

Romanian Civil Procedure Code contains no provisions that would allow the courts’ intervention in this respect.