The transitional protection is granted to the patent owners pursuant to the provisions of Law 93/1998 concerning the transitional protection of the patents of invention, there being observed the international conventions, treaties and agreements to which Romania is a party.
The Romanian State recognizes a transitional protection to the owners of the patents of invention whose subject-matter are substances obtained by nuclear, chemical methods, pharmaceutical products, diagnosing and medical treatment methods, disinfectants, food products and spices, as well as new plant varieties, bacteria and fungi strains, new animal breeds, silkworms, for which, according to the Law no. 62/1974 concerning the inventions and innovations, the patent of invention is granted only to the state enterprises from Romania, law that was in force till January 21 1992.
After the date of January 21 1992, pursuant to the Patent Law no. 64/1991, the applicants, natural or legal persons, had the right to file a patent application having one of the above referenced subject-matters, with or without claiming the conventional priority, in the case of claiming the priority, the conventional priority date cannot be prior to January 21 1991, with the exception of international applications wherein Romania was a designated state.
The present norms issued pursuant to Art. 7 para (2) from Law 93/1998 by the State Office for Inventions and Trademarks (ROPTO), with the notice of the Ministry of Finances, establish the manner of implementing thereof.
The terms used within these norms having the important meaning:
- country of origin - the country wherein, on the basis of the patent application, there was constituted a national regular filing, which resulted in a priority right and according to which, the patent of invention was or could have been granted by the national administration, or the country, wherein a patent application, in which this conventional priority is claimed and recognized, has the same effects as those of a national application according to which the patent of invention is granted by the national administration, or the patent of invention is granted by an intergovernmental administration and has the effects of a national patent of invention; this country is one of the countries member of the Union for the Industrial Property Protection from Paris, or of the World Trade Organization, this having also the possibility of being a party to bilateral and multilateral treaties concluded between the countries of the union;
- application - an application in writing containing the express request for the grant of the transitional protection, the name or denomination and signature of the patent owner or of the authorized representative, the name of the reference patent of invention and the title of the invention/inventions, the period for which it was granted and the country that granted it, or wherein it has the effects of a unique national patent of invention;
- reference patent of invention - granted patent of invention, diploma or another certifying document, description, claims and drawings - which is in force in the country of origin at the date of filing the application with ROPTO, or which is in force in another country, if, in the country of origin, there was not granted a patent of invention, or the granted patent of invention lapsed;
- applicant - natural or legal person expressly requesting the grant of transitional protection on the basis of the reference patent of invention;
- owner of the patent of invention - the person whom the rights conferred by the reference patent of invention belong to;
- successor - any natural or legal person who was assigned, in the country of origin, either the right of claiming the priority or the right to be granted the patent of invention, or all the rights deriving from the patent of invention;
- subject-matter/matters of the invention/inventions contained in the reference patent of invention-the substances obtained by nuclear, chemical methods, pharmaceutical products, diagnosing and medical treatment methods, disinfectants, food products and spices, as well as new plant varieties, bacteria and fungi strains, new animal breeds and silkworms;
- transitional protection - recognition in the owner's favour, under the conditions provided for by the law, of the protection by patent of invention in Romania, only for the invention/inventions which has/have as a subject-matter/subject-matters the ones provided for by Art. 1 from the law, included in the reference patent of invention, and, the transitional protection period spans from the date of filing the application with ROPTO to the date of expiry of the patent of invention validity in the country of origin;
- validity of the reference patent of invention - the fact that on the date of filing the application with ROPTO, the patent is in force in the country of origin according to the national law concerning the payment and manner of paying the fees for maintenance in force of the patents of invention in this country, fact confirmed by the office in the country of origin by the issuance of an attestation;
- priority - the date of the first national regular filing constituted, or the date of a filing constituted on the basis of an application which has the same effects as the ones of a national application, either on the basis of the patent application, or on the basis of an application for the grant of a breeder´s right, in the case of a plant variety, and the priority date shall be confirmed by a copy of the first filing in the country of origin, or, in the case of the first filing constituted after exhibiting the object/objects in an official or officially recognized international exhibition, the date shall be confirmed by a copy of the guarantee certificate from the country of origin, in all cases, this proved priority date shall be prior to January 21 1991;
- authenticated statement of the reference patent owner - authenticated statement wherein the owner declares that the subject-matter/subject-matters of the invention/group of inventions has(have)/has not(have not) been marketed according to the registration certificate of the medicament, or according to another document which allows that trade acts and facts should be committed in Romania prior to December 31, 1993.
PRELIMINARY EXAMINATION OF THE APPLICATION
The examiner from the Invention Examination Division II subjects the application to an examination with regard to the requirement of form for constituting the filing and to the lawfulness of the transitional protection requested, by analysing the fulfilment of the conditions prescribed for the application, and checks if the country of origin is a member of Union for the Industrial Property Protection from Paris or of the World Trade Organization, the form of presentation and the contents of the documents which shall be appended to the application and which are provided for by Art. 4 para (2) and Art. 5 para (2) from the law, or the ones confirming the conventional priority earlier than the date of January 21 1991, according to Art. 3 letter a) from the law, or ascertains the absence of one or more documents.
These documents are :
- a copy of the reference patent of invention;
- the patent fascicle;
- the proof concerning the reference patent of invention validity;
- authenticated statement;
- power of attorney of the authorized representative;
- the document of payment of the fees for filing, subsequent submitting the patent fascicle, if the patent fascicle is submitted subsequent to filing the request for examining the application and, if the case may be, for the additional pages or claims and, respectively of the fees for the issuance of the certificate for maintenance into force for the year/years of protection of the patent of invention in the country of origin, and wherein the application is filed and the certificate was issued.
If the applicant is another person than the reference patent owner or if he has another address or social headquarters than the one written in that patent, this shall present, as the case may be, a copy of the act by which he took possession of the right to the patent of invention or a copy of the document attesting the change of the address or of the social headquarters.
If the invention from the reference patent of invention has as a subject-matter a new micro-organism, there shall be filed with ROPTO, within two months from the date of filing the application, a document attesting that the micro-organism deposit was constituted in an officially recognized national or international collection, from which the following shall ensue:
- denomination and address of the officially recognized national or international collection, where the micro-organism was deposited;
- date of depositing the micro-organism into the officially recognized national or international collection;
- denomination of the micro-organism;
- number of the micro-organism deposit;
- the morphological, taxonomic and biochemical characteristics of the registered micro-organism.
In the conditions when the above mentioned documents were not filed together with the application, these shall be filed within two months from the application filing date.
The fees, which were not paid at the time of filing the application, may be paid within two months from the date of filing thereof, except the fees for maintenance in force of the patent of invention.
If after examining the application and the appended documents, ROPTO ascertains disorders regarding the fulfilment of the conditions provided for by the law and by the present norms, the applicant shall be notified about this and shall be given a period for preparing the answer.
Failure to submit one or more above mentioned documents provided for within the time limit and/or failure to pay de fee for the subsequent filing of the patent fascicle within two months, or the fee for the additional pages and claims, ROPTO decides the rejection of the application.
In case when the title of the group of inventions and the claims from the reference patent also refer to other subject matters except the ones stipulated in Art. 1 from the law, ROPTO notifies this to the applicant and asks him to redraft the title and to keep or redraft only those claims which refer to the subject-matters provided for by Art. 1 from the law and which will keep the same numbering as that from the reference patent and for the other claims there will be maintained only the space allotted for their printing and their number from this patent.
In the case the applicant fails to submit, within the given time period, his agreement with reference to those notified concerning the provisions of para (3) and to redraft the patent fascicle with ROPTO, in the conditions in which the filing and examination fees were paid, there shall be examined only the claim/claims the subject-matter/subject-matters of which fulfil the provisions of Art. 1 from the law and meet the provisions above mentioned, and the title shall adequately be amended, and the other claims are rejected on justified reasons within the examination.
EXAMINATION CONCERNING THE FULFILMENT OF THE SUBSTANTIVE CONDITIONS FOR THE GRANT OF THE TRANSITIONAL PROTECTION
PRIOR ART
The prior art, against which the invention is compared for establishing the novelty, contains the knowledge accessible to the public, anywhere in the world, prior to the date of the regular filing or of the recognized priority, provided that the date of rendering accessible to the public can be identifiable.
The patent applications as filed with ROPTO, having a prior regular filing date or an earlier priority, and which become accessible to the public prior to or after the date of filing the application, constitute the prior art.
If an application is withdrawn, abandoned or rejected prior to its publication, this is not considered as part of the prior art.
If for a patent application belonging to the applicant or to which the applicant is the successor in title, and which contains the same invention/group of inventions as the one from the reference patent, ROPTO took the decision of rejection for failure to fulfil cumulatively the conditions for the grant of the patent, the reference patent owner is not recognized a transitional protection according to the provisions of Art. 1 from the law.
PATENTABILITY CONDITIONS
Novelty of an invention from the reference patent is established in connection with the content of the claims and with that of the application field specified in the description only for the subject-matter /subject-matters provided for by Art. 1 from the law.
The materials from the prior art, whose content cover the extent of the protection requested by the applicant through the claims contained in the reference patent of invention, are deemed to be pertinent materials.
The inventive activity is evaluated in connection with the claims and with the technical problem solved by the invention/group of inventions from the reference patent of invention, the subject-matter /subject-matters of which fulfil(s) the provisions of Art.1 from the law.
In order that the invention/group of inventions from the reference patent of invention whose subject-matter/subject-matters fulfil(s) the provisions of Art.1 from the law, have industrial application, there shall result from the description that the subject-matter/subject-matters can be used in at least one field of activity in industry, agriculture or in any activity and can be reproduced with the same characteristics whenever necessary.
The owner of the reference patent of invention, which in the country of origin is dependent on a patent of invention, can request the grant of the transitional protection, and ROPTO can take a decision of accepting the grant of the transitional protection, on the basis of which, only if, on the date of filing the application, in Romania there is in force a patent of invention to which reference is made; otherwise, ROPTO enters the application into a register and proceeds to the publication thereof, if the conditions provided for by the Norms are fulfilled.
For failure to fulfil the provisions for patentability conditions, ROPTO notifies the applicant, and, if the case may be, shall send to the applicant, in copy, the pertinent material/materials, indicating a time period for preparing the answer.
ROPTO cannot take decisions prior to the expiration of the time period given to the applicant for preparing an answer.
If within the given time period the applicant does not answer and did not ask for an extension of the time period for the answer, ROPTO takes the decision of rejecting for failure to fulfil any of the patentability conditions.
In the case the applicant sent to ROPTO, within maximum two months from filing the application, a new form of the patent fascicle, from which references to another patent of invention from the country of origin are eliminated, the filed application shall be subjected to the examination procedure, provided that the stipulations of the law and of the present norms are fulfilled.
Following to examining the patent application according to the provisions of the law and of the present norms, the state examiner from the Invention Examination Divisions II draws up an examination report and according to this takes:
- either a decision of accepting this application only on the basis of the claim/claims which has/have as a subject-matter one of those provided for by Art.1 from the law, and for other subject-matter/subject-matters contained in other claim/claims from the same reference patent of invention takes the decision of refusing the grant of the transitional protection. In this case, there is decided the modification of the title of the group of inventions and there indicated the claim from the reference patent of invention that shall be published in the form of the patent fascicle, as well as entering the title and the numbers of these claims from the reference patent into the register, in the appendix to the National register of the patents of invention and in the certificate;
- or a decision of rejecting the application for failure to fulfil the patentability conditions;
- or to take act of the withdrawal of the application.
All the decisions taken are communicated to the applicant or to his successor in title, within 30 days from the date they have been taken, and shall be entered into the register.
The grant of transitional protection is published within 3 months from filing the application, according to the provisions of the law and of the present norms.
The persons concerned can oppose the ROPTO decisions to the Re-examination Board, within 30 days from the communication thereof, in case of rejection, or from publishing the grant of the transitional protection, and the decisions of the Re-examination Board can be appealed against in the Municipal Court of Bucharest, within 30 days from communication.
OBJECT OF PAYMENT, TERM OF PAYMENT AND THE AMOUNT OF FEES FOR THE PROCEDURES TO WHICH THE APPLICATIONS ARE SUBJECTED AND FOR MAINTENANCE IN FORCE OF THE PATENT OF INVENTION
Within the meaning of Art. 47 from the Patent Law no. 64/1991, of Art. 1 from the Government Ordinance no. 41/1998 concerning the fees from the field of industrial property and the conditions for the use thereof, of Art. 5 para (2) and Art. 7 from the law, for the procedures concerning the grant of transitional protection, the following fees are paid:
1. Filing the application two months from 30
the filing date
2. Examination of the two months from 600
application the filing date
a) when the description,claims 600
and drawings do not exceed
20 pages, and the number of
claims is not greater than 10
b)for each page from the des- 8
cription, claims and drawings
in addition to the ones
provided for at letter a)
c) for each claim in addition
to those provided for at letter a) 15
3. Opposition at the time of 150
filing the
opposition
4. Maintenance in "non-public at the time of 50
status"of the inventors for requesting
unlimited time this status
5. Completing the application by at the time of 100
filing,within two months from filing the translation
filing the application, of the
translation in Romanian of the
description and/or the claims
and/or the drawings
6. Filing the modification at the time of filing 100
in the legal status of the the document
of the patent of invention
7. Filing other modification at the time of filing 25
such as those referring to the document from which
name, denomination, address, the newly-created
social headquarters or change situation is obvious
of the authorized
representative
8. Printing the fascicle two months from filing 100
in Romanian which does the application
not exceed 10 pages and
issuance of the certificate
- for each additional page 5
9. Publication of an erratum for at the time of filing the 15
eliminating the errors due to request
the applicant
10. Certifying and issuing at the time of filing the 10
an official document, request
attestation such as:
duplicate, copy
11. Revalidation of the patent at the time of filing the 300
application of revalidation
The fee for maintenance in force is due, accordingly, for the year of protection in which the patent of invention is in the country of origin, for the year in which the transitional protection was requested, without exceeding 20 days from the date when there starts the protection of the patent of invention in the country of origin, and it is paid within the meaning of Art. 47 from the Patent Law no. 64/1991 in the quantum provided for in the Government Ordinance nr. 41/1998, as it follows:
Crt. Object of payment Terms of payment Quantum (USA dollars) 1. Maintenance in force According to Art.35 of the patent of invention and 36 from the present norms for each year of protection, starting with the year when the application was filed: - year 6 200 - year 7 220 - year 8 240 - year 9 260 - year 10 280 - year 11 300 - year 12 320 - year 13 340 - year 14 370 - year 15 400 - year 16 500 - year 17 500 - year 18 500 - year 19 500 - year 20 500
The fees for maintenance in force for the year of protection when the application was filed and for the year of protection when the certificate is issued - are paid within two months from filing the application, and failure to pay these fees for a case or the other, within the stipulated time period, results in the lapse of the owner's rights deriving from the patent.
For each year following to the year of issuing the certificate, the fee for maintenance in force of the patent is paid annually till the beginning of the respective year of protection.
The fees for maintenance in force of the patent of invention not paid within the time periods provided for above can be paid subsequently, within 6 months, with an increase of 50 %.
Failure to pay these fees up to the expiry of the time period provided for above results in the lapse of the owner's rights deriving from the patent. The lapse is published in O.B.I.P.
At the same time with the payment of the patent revalidation fee, the owner thereof shall pay the fee for maintenance in force, with an increase of 50%, due for the period for which the payment was not made. Revalidation shall be published in O.B.I.P.
At the same time with the payment of the fee for maintenance in force, the owner shall also submit to ROPTO the proof issued by the national administration in the country of origin, from which it shall result that the reference patent of invention is in force. This document may be requested by ROPTO any time if necessary.
RIGHTS
The extent of protection in the case of the transitional protection according to a reference patent of invention is given by the claims for the subject-matters provided for in Art.1 from the law, interpreted on the basis of the description and drawings of the patent of invention.
In case of the transitional protection, the duration thereof starts from the date of filing the application with ROPTO and ends on the date of expiry of the reference patent of invention validity, or on the date of lapse of the owner´s rights in the country of origin of the reference patent of invention, without having the possibility to exceed 20 years from the date of regular filing in the country of origin, and in case of cancellation of the reference patent of invention, the transitional protection certificate is canceled.
The use by another person of the subject-matter/subject-matters of the invention/group of inventions from the patents of invention, which confer rights to the owner of the transitional protection under the conditions provided for by Art. 37 and Art. 40 para (2) from the Patent Law no. 64/1991, does not constitute an infringement of these rights.
For other procedures, for the rights conferred to the owner by the transitional protection, assignment, protection and maintenance in force thereof, the provisions of the legislation in force concerning the patents of invention and the fees in the field of Industrial Property Protection are applied.
The transitional protection applications filed under the incidence of the Government Ordinance no. 25/1998 and not solved, are deemed to be validly filed and registered and are subjected to the procedures provided for by the law.
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