Category Archives: Romanian Patent Litigation Insights

After discussing in the 1^st chapter the condition of the prima facie existence of the patent rights, in this 2^nd chapter we turn our attention to the prima facie analysis of the infringing acts and, in close connection, to the requisite of not tackling the merits of the case in interim injunction proceedings.

As a rule, the assessment of patent infringement is rather complex and it often implies addressing difficult technical matters. However, interim injunction proceedings do not allow tackling the merits of the case. For a while this (apparent) contradiction was solved by the courts either by refusing de plano to address the matter and, thus, dismissing the claim for interim injunction, or by presuming that certain claimed features were met in order to grant the request. Both approaches were highly controversial, as they tended to be de plano (and unreasonably) favorable either to the defendant or to the patent owner.

However, the approach of the Romanian courts on this topic has more recently become notably and increasingly more complex and nuanced.

As was rightfully held in a decision rendered in 2020 by the Bucharest Court of Appeal, the mere fact that patent cases imply a complex analysis should not lead to a superficial approach of such assessment, but rather to a careful comparison between the features of the patent and those of the allegedly infringing product/process.

This trend was further adhered to and developed in various subsequent decisions of the Bucharest Court of Appeal rendered during 2020-2023, where the court proceeded to a comparison between the claimed features and the relevant features of the defendant’s product/process resulting in a conclusion on the appearance of infringement.

Although Romanian courts are currently more likely to proceed to an actual assessment on infringement, there are still limitations to such an approach and various situations might still lead to a solution on prima facie infringement in the absence of an actual feature-by-feature comparison.

For example, in a decision of the Bucharest Court of Appeal rendered in 2022, the court highlighted the fact that interim injunction proceedings are not compatible with an ample examination of the product’s composition and, more precisely, with an infringement analysis under the doctrine of equivalents.

Further on, in another relevant judgment, the court held that the appearance of the alleged infringement must be sufficiently obvious and an overlap between the claimant’s patent and the defendant’s product does not result as such in the case at hand given that both parties had filed party expert reports with opposite conclusions, while an independent expert report cannot be ordered in interim injunction proceedings.

To conclude, as the assessment of prima facie infringement benefits of an increasingly more in-depth approach from the Romanian courts, it is advisable for both claimants and defendants to be prepared to put forward, directly and, possibly, through party expert reports, detailed positions on infringement.

The information provided in this article is for general informational purposes only and does not constitute legal advice. It is not intended to create an attorney-client relationship. If you require legal advice specific to your situation, please contact our head of IP department – irina.speciac@razvandinca-legal.ro.

Authors: Irina Speciac and Ionut Cofaru

Given the (unfortunate) recent restrictions concerning the publication of court decisions rendered in patent cases, we have taken the initiative of publishing brief updates on these matters.

This is the first such endeavor and concerns the prima facie existence of the patent rights as a condition in interim injunction proceedings.

For a long time, the approach of the courts on this topic could have been summarized on the lines that, once granted, a patent must be presumed valid unless and until it is cancelled by a final decision. This left very little up for debate with respect to patent validity in interim injunction proceedings.

However, in the past years, this approach has changed dramatically.

A major turning point can be located in a decision rendered in 2020 by the Bucharest Court of Appeal, where it was held that the prima facie validity of the patent does represent a condition which can and should be assessed  in interim injunction proceedings and that the existence of a serious challenge to the validity of the patent can be argued and analyzed even within the limited frame of such proceedings.

Moving forward, this was reflected in several decisions of the Bucharest Court of Appeal.  For example, in a decision rendered in 2021, it was held that such a serious challenge results from the fact that a foreign court held that the patents on which the interim injunction claim was grounded were invalid, which was further supported by a preliminary opinion of the EPO Opposition Division. In another judgement rendered in 2021, the court found that a serious challenge exists given that both the München Federal Patent Court and the UK High Court of Justice had declared the patent invalid.

Most recently, in 2023, the Bucharest Tribunal rendered a decision which seemed to indicate that the courts’ view on this issue was trending favorably for the defendants by holding that the appearance of right should be established beyond any reasonable doubt and noting that in the case at hand there was room for doubt, which led to the dismissal of the interim injunction claim. However, this trend was tempered at the beginning of 2024 by the Bucharest Court of Appeal who overturned this decision by showing that the notions of appearance and beyond any reasonable doubt are on opposite sides and by finding that in the case at hand the parties had both brought forward decisions (stemming from foreign courts) with different outcomes on validity, and that in such a situation the presumption of validity ought to prevail.

To sum up, currently courts assess whether there is a serious challenge against the validity of the patent based on any available court decisions and/or EPO decisions concerning the patent validity.

It will be interesting to see whether in the future the Romanian courts will start considering, at a prima facie level, actual invalidity arguments when assessing the existence of a serious challenge against the patent validity (as numerous other European courts already do). Thus, it could be argued that, since appearance of infringement can be assessed based on arguments which involve claim interpretation and comparison with the defendant’s product/process, the same should apply to the prima facie validity of the patent. Of course, such an approach would nonetheless need to be cautiously implemented as the merits of the case cannot be tackled in interim injunction proceedings.

The information provided in this article is for general informational purposes only and does not constitute legal advice. It is not intended to create an attorney-client relationship. If you require legal advice specific to your situation, please contact our head of IP department – irina.speciac@razvandinca-legal.ro.