News and updates

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.