About inventions and their patenting

I. The patent – concept

The patent is the official document issued by a State, which protects the owner of an invention, whether a product or a process.

The patent gives the holder an exclusive right to exploit the invention for the entire period of its validity.

In a practical sense, patent protection prevents third parties from making, using, or selling the patented invention without the prior consent of the owner.

The term of the patent is 20 years - starting from the date of filing.

II. Patentability conditions

According to Article 6 para. (1) of Law No 64/1991, three essential conditions must be cumulatively fulfilled for an invention to be eligible for patenting:

• The invention must be new;
• The invention must involve an inventive activity;
• The invention must be susceptible to industrial application.

2.1. The novelty of the invention

For an invention to be considered new, it must not be "prior art".

The prior art includes:

• all knowledge which has become accessible to the public by written or oral description, by use or in any other way up to the date of filing of the patent application;
• the contents of applications filed with SOIT and international applications for which the national phase has been opened in Romania or European applications designating Romania;

Therefore, before starting any formalities for the patenting of an invention, we must ensure that about the product or process subject to these formalities, one of the hypotheses listed above does not apply.

2.2. The impact of the inventive step

For an invention to involve an inventive step, it must not be obvious to a person skilled in that art, from the knowledge contained in the prior art (defined above). In other words, the invention must not be a mere combination of information already known to persons skilled in the art.

By person skilled in the art, we mean "a person who is considered to have access to the entire state of the art, having the ordinary skill and general knowledge in the field of the art in which the technical problem solved in the invention arises at the relevant time".

The invention will therefore not be eligible for patenting if a person skilled in the art, as described above, would have been able to arrive at the claimed invention using his general knowledge in the field in which he is working.

Consequently, in order to satisfy this condition, we must ensure that the invention represents an additional and proper contribution of the author.

2.3. Industrial applicability

An invention is susceptible to industrial application when:

• its subject matter can be made or used in an industrial field - including agriculture;
• it is technically useful or objectively feasible;

So, for an invention to be susceptible to industrial application it must be capable of being reproduced with the same characteristics and effects whenever necessary and it must also have a practical utility in an industrial field.

Industrial applicability does not have to be proved in the patent application, as it is presumed. However, as an exception, it will be necessary to expressly indicate industrial applicability where a technical use of the invention cannot be clearly identified.

III. The formalities for obtaining a patent

The patent application must be drafted in Romanian and must include the elements listed in Article 13 of Law 64/1991, namely:

a) The request for granting a patent

For this step, it is necessary to file a patent application with SOIT, which consists of a standard form that can be easily accessed on the osim.ro platform by clicking on the "Forms" link. It must be filed in three specimens.

b) The applicant's identification information

The application for a patent for an invention may be formulated and filed either by the inventor or by a person authorized by him.

If the applicant is not the inventor himself, the patent application must also contain indications enabling the identity of the inventor to be established.

c) Description of the invention

According to Article 17 of Law 64/1991, "The invention must be disclosed in the patent application clearly and completely enough so that a person skilled in the art can make it."

Thus, a summary description of the invention is not in principle sufficient to proceed with the registration of a patent application at SOIT, but a clear description is required so that a person skilled in the art can reproduce it.

d)   Indication of the claim(s)

The claim is defined as "the part of the patent which comprises the subject matter of the protection sought and the contents of which determine the scope of protection".

Claims consist of clear words and phrases. They define the limits of patent protection and allow third parties to know whether they infringe the inventor's rights. 

e) Attachment of drawings referred to in the description or claims

If the description/claim makes reference to drawings necessary for the understanding of the proposed technical solution, they shall be attached. 

f) Submission of an abstract

No later than 2 months before the date of publication of the application, a purely informative technical summary must be filed.

IV. The amount of the fees required for patenting an invention

The costs related to the procedure for obtaining a patent in Romania are set out in the first Annex of the Government Ordinance no. 41/1998.

Fees can vary from about 475 lei to about 3,600 lei.

In addition, in order to maintain the validity of the patent after the third year of the patent registration, it is necessary to pay annual fees, as set out in the first Annex of the Government Ordinance No 41/1998.

V. Conclusions 

In conclusion, in order to obtain a patent for an invention it is necessary:

• the fulfillment of the three conditions described in the second section: (i) novelty of the invention; (ii) incidence of an inventive step; (iii) susceptibility to the industrial application;
• the fulfillment in relation to SOIT of the formalities/procedure mentioned in the third section;
• the payment of the legal fees specified in the first Annex of the Government Ordinance no. 41/1998;

Not complying with any of the above conditions, entails the rejection of the patent application by the Specialized Examination Committee of SOIT.

We will come back with further developments on this topic of interest, in subsequent articles that will focus on how to patent inventions at the European and international levels.

MAXIM / Associates

Av. Tejan Călina

24.02.2022