INFRINGEMENT

It is an infringement of a patent to make, to offer, to put on the market or to use a product which is the subject of a patent or to import or to stock the product for these purposes.

Infringement is assessed by reference to the claims of the patent, which have to be interpreted in the light of the description and the drawings.

THE PROCEDURE IN CIVIL COURTS

A) PARTIES IN LITIGATION

The plaintiff can be the patent holder or a person having an exclusive licence to the right.

The defendant is the person who is responsible for the infringing actions. The defendant may be either a natural person or a legal entity. If the defendant is a legal entity it might be advisable to include in the complaint as second defendant the responsible manager, in order to prevent him bypassing a judgement against the legal entity by continuing the infringing actions in his own name.

The defendant can be: the underlying company, the retailer and/or the importer/or the entity from which the product originates.

B) WARNING LETTER

The Law does not require the sending of a warning letter before the filing of a complaint. However, it might be useful to send a warning letter if there is a realistic chance that the infringer would comply with the request or that the infringer would reveal in his response details of facts and/or arguments which it might be useful to know before starting litigation.

C) REMEDIES

The patentee has available the following civil remedies:

  1. damages;
  2. injunction to cease infringement;
  3. destruction of the infringing products;
  4. publication of the decision in the newspapers;
  5. part of legal costs.

D) REQUIREMENTS FOR PRELIMINARY INJUNCTIONS

The patent holder may apply for a preliminary injunction from the Municipal Court of Bucharest. If an injunction is issued, a subsequent action on the merits of the case to confirm interlocutory injunction shall be instituted. During the subsequent procedure on the merits of the case the plaintiff may claim compensation from the use of the patent and compensation for any and all damage that the infringer's actions may have caused, provided such actions were either intentional or negligent.

Two requirements govern the grant of preliminary injunctions:

  1. the plaintiff has to present satisfactory proof (not full proof) of the infringement of a valid properly right;
  2. the case must be urgent and timely and the restraint order has to be necessary and appropriate to save the plaintiff from unnecessary disadvantages.

Basically, the preliminary injunction procedure is independent of the full trial. It is commenced by filing a brief with a motion to issue a restraint order. This brief has to contain a full statement of facts and must be submitted to the Court together with all pieces of evidence.

If the case is simple and clear-cut the Court will normally issue an "order injunction" within one week.

E) DAMAGES OR ACCOUNT OF PROFITS

The patent holder may claim financial compensation from the infringer either as compensation for his loss or by the infringer accounting for his profit.

The assessment of damages or account of profits is made either by the liability trial or by means of a further full action called "inquiry into damages".

F) FINANCIAL COMPENSATION

The financial compensation may be claimed from the infringer, either as compensation for the patent owner's loss (damages) or by the infringer accounting for his profit. Usually the patent owner's loss is accepted by the Court. The claiming of damages may be made either by the action on liability or a further full action , so called "inquiry into damages". In practice, this full action is rarely undertaken as most damages are settled in the action in liability. The settlement of the amount of damages claimed in the action in liability may be submitted at least until the first term of hearings. The amount would not be increased after that term.

The damages are compensatory. The principle is to award damages in such a way to put the plaintiff into the position where he would have been had no infringement taken place.

G) THE BURDEN OF PROOF

The burden of proof lies on the plaintiff.

NOTE:. THIS ARTICLE IS WRITTEN BY MRS. MARGARETA OPROIU WITH THE PURPOSE OF INFORMATION ONLY AND CAN NOT BE CONSIDERED AS A PROFESSIONAL CONSULTATION. FOR FURTHER INFORMATION PLEASE CONTACT US.