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Romania

RO018

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Ordinance No. 41/1998 of January 30, 1998, on the Industrial Property Fees and the Use Thereof


ORDINANCE on the industrial property fees and the use thereof

Relying on the provisions of Article 107 paragraphs (1) and (3) in the Constitution of Romania and on the provisions of Article 1 lett. a) in the Law no. 221/1997 on the empowerment of the Government of Romania to issue ordinances, the Government of Romania issues the following ordinance:

Chapter I General provisions

Article 1 - The fees for the legal procedures of protection of the following industrial property objects: inventions, trademarks and geographical indications, industrial designs, topographies of integrated circuits, the fees for the maintenance in force of the titles of protection as well as the other fees related to the protection of industrial property shall be paid by the Romanian and foreign natural and legal persons to the bank account of the State Office for Inventions and Trademarks in the amounts and at the time limits provided in the annexes of this ordinance.

Article 2 - The applicant for and the holder of the industrial property right who was not assigned or who did not transfer his right legally, until the time limit of payment, shall pay the fees provided in the annexes, as follows:

a) 50% of each fee if it is a company having a business figure of less than 5 billion lei for the previous financial year.

b) 25% of each fee, if it is a natural person having an average monthly gross income for the last 12 months smaller than the quadrupled average gross earning in the national economy, announced by the National Statistics Commisision, for the last 12 months.

c) 10% of each fee, if it is also the author, having an average monthly gross income for the last 12 months of less than the tripled average gross earning in the national economy, announced by the National Statistics Commission, for the last 12 months.

d) 5% of each fee, if it is also the author having an average monthly gross income for the last 12 months less than the doubled average gross earning in the national economy, announced by the National Statistics Commission, for the last 12 months.

Article 3 - The fees provided for in the annexes shall not be paid by the applicants and the holders of protection who are authors or who have not transferred and have not been assigned the exploitation rights by another person and who, upon the time limit of payment, have no income or have an average monthly gross income for the last 12 months of less than 0.5 times the average gross earning in the national economy, announced by the National Statistics Commission for the last 12 months.

Article 4 - The reductions provided for in Article 2 and the exemptions provided for in Article 3 shall be applied to each procedure, separately, on the time limit of payment. The person applying for reductions or exemptions shall submit documents proving that the above-mentioned requirements on the grant of reductions or exemptions, are met upon the time limit of payment.

Where there are several applicants or right holders, they shall benefit from said reductions or exemptions if each of them meets the requirements provided for in Article 2 or Article 3 , respectively; in those cases, the due amount shall be the amount owed by the person benefiting from the smallest reduction.

Article 5 - The amount of the fees provided for in the annexes, in the national currency (lei) as well as the level of the business figure provided in Article 2 lett. a) may be updated yearly, by an order of the state minister or the minister coordinating the activity of the State Office for Inventions and Trademarks with the agreement of the Ministry of Finance, depending on the evolution of the leu/dollar ratio and the inflation rate, valid on November 1 of every year.

The order is published in “Monitorul Oficial al României”; it enters into force on the first day of the next year and is valid during the whole calendar year.

Article 6 - The amounts owed to the State Office for Inventions and Trademarks as fees paid by foreign applicants and right holders for the legal procedures of protection, for the extension of the effects of the European patent and for the maintenance in force of the titles of protection in the territory of Romania according to the international conventions shall be paid to the bank account of the State Office for Inventions and Trademarks, in accordance with the provisions of said conventions.

Article 7 - The Romanian natural and legal persons i.e applicants or right holders, shall pay the fees provided for by the ordinance in lei.

The foreign natural and legal persons, who are applicants, right holders or who have been assigned an industrial property right, shall pay said fees in hard currency.

Where there are several applicants or right holders, both Romanian and foreign, the fees owed by them jointly shall be paid in hard currency.

Article 8 - Prices and tariffs for publications and services rendered by the State Office for Inventions and Trademarks according to the legal provisions shall be set by an order of the director general of the Office.

Chapter II Fees for patent applications and patents for invention

Article 9 - The amount and time limits of payment of the fees for the protection of inventions are those provided for in Annex no. 1 .

Article 10 - The provisions of Articles 2 and 3 shall not apply to the procedures provided for by items 8 and 15 in Annex no. 1 .

Article 11 - The lack of payment of the procedural fees within the time limits of payment in the Annex no. 1 shall result in the non-operation of said procedure and in a decision to refuse the patent application or in the loss of rights of the patent holder.

Article 12 - The maintenance fees for the years of protection previous to the issuance of the patent for invention according to the Law no. 64/1991, also including the year when the patent is issued, shall be paid simultaneously with the fee for the issuance of the patent within the term provided for at item 21 in Annex no. 1 .

For each of the years following the issuance of the patent, the fee for the maintenance in force of that patent shall be paid annually before the beginning of the corresponding year of protection.

The renewal fees for an extended patent shall be paid to the State Office for Inventions and Trademarks for those years following the year when the notice mentioning the issuance of the European patent was published by the European Patent Office. The patent maintenance fees that have not been paid within the periods provided by items 1 and 2 may be paid later, within 6 months, with a 50% surcharge.

Failure to pay these fees until the expiry of the time limit provided for by paragraph 4 shall result in the loss of rights of the patent owner. Said loss shall be published in the Official Industrial Property Bulletin.

Article 13 - Simultaneously with the payment of the fee for the revalidation of the patent, the patent owner shall also be obliged to pay the maintenance fee provided for by item 21 of Annex no. 1 , owed for the period that was not paid for. Revalidation shall be published in the Official Industrial Property Bulletin.

Fees for the registration of trademarks and geographical indications

Article 14 - The amount and time limits of payment of the fees for the protection of trademarks and geographical indications are the ones provided for in Annex no. 2 .

Article 15 - The provisions of Articles 2 and 3 shall not apply to the registration of trademarks and geographical indications.

Article 16 - The fees for the renewal of the trademark or geographical indication, that are not paid within the period provided for by the law, may be paid later, within 6 months from the expiry of the protection, with a 50% surcharge.

Failure to pay said fees before the expiry of the time limit provided for in the preceding paragraph shall result in the loss of the rights of the owner of the registered trademark or geographical indication.

Fees for the registration of industrial designs

Article 17 - The amount and the time limits of payment for design fees are the ones provided for in Annex no. 3 .

Article 18 - The registration of industrial designs shall benefit only from the reductions provided in Article 2 lett. b)

The reductions provided for in the preceding paragraph shall not apply to the fees mentioned at items 3 , 4 and 8–13 in Annex no. 3 .

Failure to pay the fees within the periods provided for in Annex no. 3 shall result in the non-operation of the corresponding procedure.

Article 19 - The fees for the maintenance in force and the renewal of the certificate of registration that have not been paid within the periods provided at items 7 and 8 in Annex no. 3 may be paid later, within 6 months, with a 50% surcharge.

Failure to pay said fees until the expiry of the time limit provided for in the preceding paragraph shall result in the loss of rights of the owner of the registered design.

Fees for the registration of the topographies of integrated circuits

Article 20 - The amount and the time limits of payment of the fees for the protection of the topographies of integrated circuits are the ones provided for in Annex no. 4 .

Article 21 - The provisions of Articles 2 and 3 shall not apply to the fees provided for by items 9–10 of Annex no. 4 .

Article 22 - The payment of the fees provided for at items 1–5 of Annex no. 4 is one of the conditions of having a duly filed application for the registration of a topography; the failure to pay said fees within the established time limits of payment shall result in the refusal of the registration of said topography. The failure to pay the fees provided at items 6–10 in Annex no. 4 shall result in the non-operation of the procedure, having all the legal consequences deriving from the law.

Article 23 - The fees provided for in Annex no. 4 , paid to the State Office for Inventions and Trademarks, shall be refunded to the payer, upon his request, on condition that the procedure paid for has not been entered, except for the fees provided for at items 1 and 2 which are not refunded.

Chapter III Use of Industrial Property Fees

Article 24 - Payments in lei and hard currency, made as a result of the application of this ordinance shall be deemed as revenue of the State Office for Inventions and Trademarks administered and used in an extrabudgetary manner, as stipulated by the law. The operating and capital expenditure of OSIM shall be financed from the obtained extrabudgetary revenue.

The State Office for Inventions and Trademarks may be allocated funds from the state budget by means of the annual budget laws in order to set up the funds required by the financing of the capital expenditure necessary for the bracing and extension of the building of the State Office for Inventions and Trademarks. The amounts from the allocated budget that have not been spent until the end of the year shall be returned to the state budget.

Article 25 - The income and expediture budget of the State Office for Inventions and Trademarks shall be established annually according to the standards of the Ministry of Finance and shall be approved by the director general of the State Office for Inventions and Trademarks, under the agreement of the Ministry of Finance.

Article 26 - The sums existing at the end of the year, left after the deduction of the debts and payments in advance available, in lei or hard currency, shall be distributed as follows:

a) a quota of up to 50% for bonuses to the staff employed under individual labour contracts;

b) the difference is reported and left at the disposal of the State Office for Inventions and Trademarks and is to be spend during the next year, for those items approved by means of the income and expediture budget, according to the law.

Article 27 - The bonus fund may be set up and spent monthly, according to the law, under the condition of observing the limits of the annual fund aproved by means of the income and expenditure budget.

The criteria and conditions for the grant of the bonus provided for in Article 26 shall be established by order of the director general of the State Office for Inventions and Trademarks.

Chapter IV Contraventions and sanctions

Article 28 - Rendering the services provided for by this ordinance without payment of the legal fees shall be deemed contravention and punished by fine from 100,000 to 500,000 lei.

The contravention shall be ascertained by the persons authorized by the director general of the State Office for Inventions and Trademarks.

The provisions of paragraph 1 shall be completed by the provisions of the Law no. 28/1998 on contraventions, except Articles 25–27 .

Chapter V Transient and final provisions

Article 29 - Annexes no. 1–4 are parts of this ordinance.

Article 30 - For those procedures and for the maintenance in force of the titles of protection for which no fees have been paid until the entry into force of this ordinance, the fees provided for in the annexes to this ordinance shall apply.

Article 31 - Within 3 months of the date when this ordinance has entered into force, the Government shall adopt a new decision on the organization and functioning of the State Office for Inventions and Trademarks as a result of its functioning in extrabudgetary manner.

Article 32 - The State Office for Inventions and Trademarks, under the agreement of the Ministry of Finance, may work out standards and issue orders for the application of the provisions of this ordinance.

Article 33 - The provisions of this ordinance shall enter into force 30 days after the date of its publication in “Monitorul Oficial al României” (The Official Bulletin), Part one.

Article 34 - Upon the entry into force of this ordinance the following legal provisions shall be anulled: Law no. 120/1992 on patent fees, published in “Monitorul Oficial al României”, Part one, no. 1 of January 8, 1993; Government decision no. 274/1991 on fees for trade and service marks and appelations of origin, published in “Monitorul Oficial al României” Part one, no. 99 of May 9, 1991; Article 28 and Annexes no. 1 and 2 of the Law no. 129/1992 on the protection of industrial design, published in “Monitorul Oficial al României”, Part 1, no. 1 of January 8, 1993; Articles 44–47 of the Law no. 16/1995 on the protection of the topographies of integrated circuits, published in “Monitorul Oficial al României”, Part 1, no.45 of March 9, 1995; Rule no. 25 item (2) par.2, Rule no. 26 item (4), Rule no. 28 item (3)(c) and Rule no. 38(2) of the Rules implementing the Law no. 64/1991 on patents for invention, approved by Government decision no. 152/1992; published in “Monitorul Oficial al României”, Part one, no. 71 of April 19, 1995, as well as other contrary legal provisions.

January 30, 1998 Bucharest

no. 41

Prime - minister

Annex no. 1

Amounts and time limits of payment of patent fees

No

Object of payment

Time limits of payment

Amount (lei)

Amount ($)

0

1

2

3

4

1.

Filing a patent application with OSIM

3 months of date of filing

180,000

30

2.

Beginning of the national phase of the international patent application

upon entering the national phase

180,000

30

3.

Publication of the international patent application after 18 months of the date of filing or of the claimed and accepted date of priority, where appropiate

6 months of the date of filing or 3 months of the date when the recognized priority was claimed

300,000

50

4.

a) Publication of the patent application before the expiry of 18 months of the filing or of the date of the claimed and recognized priority

Simultaneously with the request for publication

600,000

100

b) Publication of the patent application after ending its “secret” or “not-available-for-public-inspection” status

Within 3 months of the date said status was ended

300,000

50

5.

a) Publication of the Romanian translation of the international patent application that entered the national phase in Romania, 18 months of the date of entering the national phase or 6 months of the same date

3 months of the date of entering the national phase

300,000

50

b) Publication of the Romanian translation of an international patent application that entered the national phase in Romania, before the expiry of the time limit for legal publication

Simultaneously with the request of publication

480,000

80

c) Publication in Romanian of the claims of the European patent application extended to Romania

Simultaneously with filing the patent application

360,000

60

6.

a) Publication of the amendments of the national patent application or the international patent application that entered the national phase upon the publication of the application

Simultaneously with filing the amendments

60,000

10

b) Publication in Romanian of an amended version of the claims of the European patent application extended to Romania, that was published according to item 4 lett. c)

Simultaneously with the request of publication

180,000

30

7.

Drawing up and publishing the search report

18 months of the date of filing

600,000

100

8.

Drawing up and publishing a search report for an international patent application that entered the national phase in Romania

18 months of the date on which the national phase was entered

300,000

50

9.

Examination of the patent application and decision making within 18 months of the date of filing:

3 months of the date of filing

a) when the description, claims and drawings are not in excess of 20 pages and the number of claims is not higher than 10;

3,600,000

600

b) for each page of description, claims and drawings exceeding the number provided at item a)

48,000

8

c) for each claim in excess of the number provided at item a)

90,000

15

10.

Examination of the patent application and decision making within 18 months of the date of payment:

after the 3rd month until the 30th month of the date of filing inclusively, without exceeding the period of 3 months from the written request of examination

a) when the description, claims and drawings are not in excess of 20 pages and the number of claims is not higher than 10

2,400,000

400

b) for each page of description, claims and drawings in excess of the number provided at lett. a)

30,000

5

c) for each claim in excess of the number provided at lett. a)

60,000

10

11.

Printing of the description, claims and drawings and issuance of the patent having up to 10 pages

Within 12 months of the date of the publication of the decision to grant

600,000

100

– for each additional page

12.

Publication of the Romanian translation of the extended European patent having up to 10 pages

Simultaneously with filing the translation

30,000

5

– for each additional page

600,000

100

13.

Publication of the Romanian translation of the amended claims of the extended European patent, having up to 10 pages

Simultaneously with filing the translation

30,000

5

– for each additional page

300,000

50

14.

Contestation

Simultaneously with filing the contestation

30,000

5

15.

Revocation request

Simultaneously with filing the request

900,000

150

16.

Priority claiming

1,800,000

300

a) simultaneously with filing the patent application

3 months of the date of filing the application

b) for an international application that has entered the national phase in Romania

Simultaneously with entering the national phase

300,000

50

c) within 2 months of the date of filing of the patent application

3 months of the date of filing

300,000

50

17.

Issuance of a priority certificate

1,200,000

200

18.

Transmittal of the international patent application from OSIM as a receiving office to the WIPO International Bureau

Simultaneously with filing a request for the issuance of a priority certificate

120,000

20

until the 13th month of the date of priority

300,000

50

19.

Maintaining the secrecy of a patent application for periods of one year each

Simultaneously with requesting secrecy for the first year and respectively, one month before the end of the period paid for, for each of the coming years

600,000

100

20.

Maintaining the “not-available-for- public-inspection” status

a) of a patent application for periods of one year each

Simultaneously with requesting this status for the first year and respectively, one month before the end of the period paid for, for each of the coming years

600,000

100

b) of the inventors, for an unlimited period of time

Simultaneously with registering this status according to Article 12

300,000

50

21.

Maintenance in force of the patent for every year of protection starting with the date of filing i.e. for the

– 1st year

300,000

50

– 2nd year

480,000

80

– 3rd year

660,000

110

– 4th year

840,000

140

– 5th year

1,020,000

170

– 6th year

1,200,000

200

– 7th year

1,320,000

220

– 8th year

1,440,000

240

– 9th year

1,560,000

260

– 10th year

1,680,000

280

– 11th year

1,800,000

300

– 12th year

1,920,000

320

– 13th year

2,040,000

340

– 14th year

2,220,000

370

– 15th year

2,400,000

400

– 16th year

3,000,000

500

– 17th year

3,000,000

500

– 18th year

3,000,000

500

– 19th year

3,000,000

500

– 20th year

3,000,000

500

22.

Maintenance in force of the patent for improvement

the same time limit as provided for by item 21

a) over the term of validity of the patent it is improving

– 50% of the fee provided for by item 21 of this annex

b) over the period following the expiry of the term of validity of the patent it is improving

– the same amount as provided for by item 21

23.

Revalidation of patent

upon filing the revalidation request

1,800,000

300

24.

Completion of the patent application by

a) late filing of claims and/or drawings

upon filing

60,000

10

b) filing the Romanian translation

upon filing

600,000

100

25.

Registration of changes in the legal status of the patent aplication or patent for invention

a) assignment, licence, legal or testamentary succession

600,000

100

b) cancellation of acts provided for by lett. a)

upon getting the assignment, licence, legal or testamentary succession registered with OSIM

240,000

40

c) other changes related to acts provided for by lett. a), exclusion or co-option of an inventor, full name, designation or address of applicant, entitled person or owner, change of professional representative, etc.

Simultaneously with registering the document revealing the new situation

150,000

25

26.

The certification and issuance of an official document such as a receipt or copy

upon filing the request

60,000

10

27.

The publication of an error list signalling errors made by the applicant, the person entitled to patent or the patent owner

upon filing the request

90,000

15

Annex no. 2

Amounts and time limits of payment of fees for trademark and geographical indications

No.

Object of payment

Time limits of payment

Amount (lei)

Amount ($)

0

1

2

3

4

1.

1.1

Filing and examination of an application for the registration of an individual trademark:

3 months of the date of filing the application for the registration of an individual trademark with OSIM

a) for one class of goods or services

– white-black

720,000

120

– colour

1,200,000

200

b) for each additional class of goods and/or services

300,000

50

c) for a figurative element or verbal trademark with special graphics

180,000

30

1.2

Renewal of an individual trademark

simultaneously with filing the application

a) for one class of goods or services

– white-black

720,000

120

– colour

1,200,000

200

b) for each additional class of goods and/or services

300,000

50

c) for one figurative element or a verbal trademark with special graphics

180,000

30

2.

2.1

Filing and examination of an application for the registration of a collective trademark and a certification mark

3 months of the date of filing the application for the registration of an individual trademark with OSIM

a) for one class of goods or services

– white-black

2,400,000

400

– colour

3,000,000

500

b) for each additional class of goods and/or services

420,000

70

c) for a figurative element or a verbal trademark with special graphics

360,000

60

2.2

Renewal of a collective mark or certification mark

a) for one class of goods or services

– white-black

2,400,000

400

– colour

3,000,000

500

b) for each additional class of products and/or services

420,000

60

c) for a figurative element or a verbal trademark with special graphics

360,000

60

3.

Request for the renewal of the registration of a trademark after the expiry of the ongoing term of protection

6 months of the date of the expiry of the ongoing term of protection

Fees provided at item 1.2. and 2.2. with surcharge of 50%

Fees provided at item 1.2. and 2.2. with surcharge of 50%

4.

Priority claiming

3 months of the date of filing the trademark application

300,000

50

5.

Issuance of a priority certificate

Simultaneously with requesting the issuance of the certificate

180,000

30

6.

Issuance of a trademark registration certificate

3 months of the date of trademark publication

300,000

50

7.

Issuance of a certificate of trademark registration

Simultaneously with filing a request for the renewal of the trademark registration

300,000

50

8.

Examination of an opposition to the registration of a trademark

Simultaneously with filing an opposition

180,000

30

9.

Grant of an additional 3 month-period to the applicant to express his viewpoint versus OSIM notification of non-compliance with registration requirements

Simultaneously with filing an application for the grant of an additional 3 month-period

60,000

10

10.

Division of the initial application for trademark registration

3 months from requesting division of application

300,000

50

11.

Reclassification of the list of goods, and/or services for which trademark registration is sought

3 months from filing the application

180,000

30

12.

Examination of a contestation

Simultaneously with filing the contestation

900,000

150

13.

Registration of a change in the legal status of the trademark

Simultaneously with filing the application for change

a) assignment, licenses

600,000

100

b) related to the name, designation or address of the owner

150,000

25

c) other changes

150,000

25

14.

Issuance of receipts, copies or other documents related to the legal status of a trademark

Simultaneously with filing the request

60,000

10

15.

Registration of a geographical indication

Simultaneously with filing the application for the registration of the geographical indication

2,400,000

400

16.

Issuance of the certificate for the registration of a geographical indication

2 months of the date of publishing the geographical indication in BOPI

300,000

50

17.

Renewal of the period of use of a geographical indication

Simultaneously with filing the renewal request

2,400,000

400

18.

Reclassification of the list of goods for which the registration of a geographical indication is sought

Simultaneously with filing the application

180,000

30

Annex no. 3

Amounts and time limits of payment of design fees

No.

Object of payment

Time limits of payment

Amount (lei)

Amount ($)

0

1

2

3

4

1.

Entering the design application in the National Register of Design Applications

Upon filing the design application

a) for the first design

180,000

30

b) for each additional design

30,000

10

2.

Publication of design

one month from filing the application

a) for each figure, in the standard space (6 × 6 cm), white-black

120,000

20

b) for each figure in the standard space (6 × 6 cm), coloured

600,000

100

c) for the characteristic elements (maximum 30 words)

60,000

10

3.

Postponement of publication

Upon filing the application

120,000

20

4.

Priority claim

3 months from filing the application claiming priority

120,000

20

5.

Examination of design application

one month from the publication of design application

a) for the first design

300,000

50

b) for each additional design

60,000

10

6.

Issuance of the certificate of registration

one month from the communication of the decision to grant

a) for 1–20 designs

120,000

20

b) for 21–50 designs

180,000

30

c) for 51–100 designs

300,000

50

7.

Maintenance in force of the certificate of registration for every year of protection, of the first 5 years:

one month from the communication of the decision to grant, for the first 2 years and afterwards, during the first month of every year

a) for 1–20 designs

120,000

20

b) for 21–50 designs

150,000

25

c) for 51–100 designs

180,000

30

8.

Renewal of the certificate of registration for every year of protection

the first month of each year of protection

a) for 1–20 designs

120,000

20

b) for 21–50 designs

150,000

25

c) for 51–100 designs

180,000

30

9.

Examination of a contestation

Upon filing the application

900,000

150

10.

Examination of an objection to the registration of the design

Upon filing the application

180,000

30

11.

Revalidation of the certificate of design registration

Upon filing the application

600,000

100

12.

Registration of changes in the legal status of the application or of the certificate of registration

Upon filing the application

a) assignment, license

180,000

30

b) other changes

60,000

10

13.

Issuance of acts, receipts, copies, certified copies, excepts from the register

Upon filing the request

60,000

10

Annex no. 4

Amounts and time limits of payment of fees for topographies of integrated circuits

No.

Object of payment

Time limits of payment

Amount (lei)

Amount ($)

0

1

2

3

4

1.

Filing the application for the registration of a topography

Simultaneously with filing an application or within two months of the notification of the lack of payment

180,000

30

2.

Examination of the application for the registration of a topography

Simultaneously with filing the application or within two months of the notification of the lack of payment

600,000

100

3.

Registration of a topography

Simultaneously with filing the application or within 2 months of the notification of the lack of payment

1,800,000

300

4.

Publication of the registration of a topography

Simultaneously with filing the application or within 2 months of the notification of the lack of payment

90,000

15

5.

Issuance of a certificate of registration

Simultaneously with filing an application or within 2 months of the notification of the lack of payment

90,000

15

6.

Examination of a contestation

Upon filing

600,000

100

7.

Registration of changes in the legal status of the application or of the certificate of registration

Upon filing

a) assignment, license

600,000

100

b) other changes

150,000

25

8.

Inspection of the public documents of the duly filed documentation

Simultaneously with filing the request

60,000

10

9.

Issuance of a certified copy of the public duly filed documents or of pages of the National Register of Topographies

Simultaneously with filing the request

60,000

10