By Anca CIUDA and Daniella NICOLAESCU

This discussion will be based on the provisions of the Patent Law o.64/1991(PL) and the provisions of the Regulations under said Law(R). Art.7 of the PL states that the invention has to be new, to involve an inventive step and to be susceptible of industrial applicability. A patentable invention may have as subject-matter a product, a process or a method, that means that the claims of a granted patent may refer to products of any kind, i.e. plants, equipment, machines, tools, chemicals, compounds, compositions, alloys and so on, to processes or to methods.

It has to be mentioned that an invention relating to new plant varieties, hybrids or new animal breeds is patentable if these are new, distinct, homogenous and stable.

The new Law No.255/1998 referring to the protection of new plant varieties comes into force on April 1,1999.

The specification has to refer to a sole invention or to a group of inventions interrelated so that it constitutes only one inventive concept.

The invention has to be described in a clear, correct, complete and precise manner from scientific and technical point of view so that it may be carried out - without developing an inventive activity - by a person skilled in the art.

When an invention refers to a micro-organism - for purposes of production - it must be kept in a public collection from the date on which the applicant's priority rights begin.

The description has to contain successively, in the order mentioned below, the followings:

  • title of the invention;
  • statement of the technical field;
  • presentation of the prior art, if it is known by the applicant;
  • exposure of the invention which has to be presented in such a manner that the technical problem to be solved and the technical solution - as it is claimed - to be well understood; the exposure has to be accompanied by the invention advantages as compared with the prior art;
  • brief presentation of each drawing, if any;
  • description of the subject-matter of the invention for which protection is sought, of its way of achievement and use, referring also to the drawings. The description has to contain concrete embodiments and/or examples;
  • explicit presentation of the way by which the industrial applicability criterion is fulfilled.

Mathematical models and formulas or algorithms may be presented in the description but the concrete example cannot be exclusively based on them.

The claims should find support in the specification characterising the details of the application and defining the subject matter, for which protection is been sought, in a precise and clear manner (R. Rule 15).

It is not acceptable that the means set forth in the description to be generalised in order to claim them in broader terms.

Before a decision is taken by Romanian Patent Office, information or additional examples may be filed by the applicant through a voluntary amendment or in response to an Official Action, if such modifications do not extend beyond the disclosure of the invention in the patent application as filed (PL. Art.28).

The patentee is not entitled to furnish new information in the final description of the granted patent (after the Notice of Allowance is published).

Art.42 of PL provides only the cancellation in whole or in part of the RO Patent Office decisions because, in the final phase of the substantive examination, the applicant is asked for redrafting the description and claims in accordance with the accepted modifications (PL Art.28). In this manner, the applicant automatically agrees with the final form of the specification.

The applicant can furnish a posteriori information, as a part of the argumentation, but that information is not accepted as a part of the claimed invention and it cannot be introduced in the specification if it try to enlarge the scope of the invention or to sustain a broader drafting of the original claims.

Third parties can intervene before the RO Patent Office:

  • by filing a petition after the publication of the patent specification but before a decision is taken;
  • by filing an appeal with the Re-Examination Board after the publication of the granting decision (Notice of Allowance) within a 6-month period.

When an appeal is introduced before the Court by third parties, the Court can revoke entirely or partially the claims, both on the ground of lack of adequate disclosure or insufficiency of description. It is to be underlined that the Court does not accept generalized claims, much more its decisions are based on the provisions of the actual Romanian legislation in the field ( PL and R).

The content of this article is intended to provide general information on the subject matter. For specific circumstances, please contact us for full advice.