New Legal Remedies for Inventors Prejudiced During the Communist Regime
Published in “Managing Intellectual Property”, 2010
In Romania, during the Communist regime, all inventions considered of interest for the economy had to be assigned by their inventors to the state, through its institutions (e.g. ministries, etc) or companies which were all entirely owned by the state. On the contrary, all inventions considered of interest were expropriated for the benefit of the state. As a consequence of the legal or voluntary assignment, an author/inventor certificate was granted to the inventors who were also entitled to a consideration computed based on the advantages brought by the effective application of the invention(s). In practice, in many cases, even if this consideration was provided by the law, it was not actually paid to the inventors.
After the fall of the communist regime, a new patents law has been adopted, namely Law no. 64/1991 on patents (“Law no. 64/1991”), which provided, among others, the right for the inventors whose inventions were used in the economy before 1989, without being fully remunerated, to negotiate the due considerations with the companies that implemented their inventions. In case the considerations were not granted to the inventors as a result of the negotiations, the inventors had the right to lodge an action in damages. Numerous inventors claimed their rights and the courts usually ruled in their favor.
Further, the Romanian legislator has introduced a new additional remedy on 28 October 2008 through Law no. 214/2008 (“Law no. 214/2008”) which amends Government’s Emergency Ordinance no. 100/2005 on ensuring the observance of industrial property rights (“GEO no. 100/2005”), by which it has been recognized the right of holders of intellectual property rights protected by patents granted by the Romanian state and held during 6 March 1945 and 22 December 1989, as well as of their legal successors, whose economic rights granted by the patents have been infringed through the abusive exploitation of their inventions, without the holders’ consent or through any other act of breach, to claim damages. (Art. 4 let. c) GEO no. 100/2005)
Apart from the significant and beneficial effects that appear to have been intended by the Romanian legislator, certain difficulties and interpretations may arise when implementing these provisions, mainly due to the unclear manner in which such have been drafted.
- According to the provisions of this new law, the person claiming damages must be holder of an industrial property right protected by a patent granted by the Romanian state or its legal successors. Therefore, apparently the inventors who have assigned their inventions to the Romanian state are not subject of the above mentioned provisions, as they were not actually holding a patent, but were only the holders of an author/inventor certificate issued as a result of their legal/voluntary assignment. It should be noted that, according to the legal provisions in force during the communist regime, the patent granted its holder the right of exclusive use of an invention within the territory of Romania, while the author/inventor certificate represented only an acknowledgement of the holder’s quality as author of the invention, together with all the rights arising thereof, without however providing the right to exclusively exploit the invention.
Should such interpretation be accepted by the courts of law, the group of persons entitled to receive damages for the abusive exploitation of their inventions would be considerably narrower, excluding thus the inventors compelled to assign their inventions to the state. As an argument in favor of granting the right to damages also to the inventors compelled to assign their inventions to the state would be the statement of reasons of Law no. 214/2008 which expressly refers to the restrictive measures imposed to inventors during the communist regime, mentioning “mandatory assignments in favor of the Romanian state”. Thus, ratio legis, the law might be interpreted as a mean of generally repairing the inequities committed during the communist regime and therefore applicable also to inventors compelled to assign their inventions to the state. Nonetheless, the confusion as to the subjects of this new law, is maintained even in the statement of reasons of Law no. 214/2008 as it mentions that the statute of limitation is suspended by law and the validity term of the patents is prolonged for the purpose that “the holders of patents are able to effectively benefit” from the reparatory measures. - Law no. 214/2008 provides that the statute of limitation on the right to file or to continue a court action or to take preservation measures shall be deemed as suspended only in respect to the persons provided by art. 4 let. c) of GEO no. 100/2005 who were not able to file or continue a court action or to fulfill the necessary formalities for the use of their rights because of the restrictive measures and legal provisions imposed by the communist regime.
Therefore, it can be viewed that, the suspension of the limitation period should operate, only in favor of those detained to act due to the above mentioned reasons, and not for those who remained passive because of their own fault or of any other reasons than the ones limitedly provided by the law.
However, as mentioned above, Law no. 64/1991 generally restored the time limit for the actions in damages with respect to the inventors who where not fully remunerated irrespective of whether they were holders of patent or author/inventor certificate. Therefore the question arises whether a new legal opportunity to claim damages is justified and if so, whether the inventors who did not filed an action for damages at the time the abusive measures of the communist authorities did no longer prevent them to act may as well benefit from the new legal provisions.
Even if the courts would decide that no right for damages is granted for the inventors in fault, those who have assigned their inventions to the Romanian state may use the provisions of this law regarding the suspension of the limitation period with respect to an action for annulment of the assignment, if case may be, as no restoration of time limit has previously operated with respect to such action. For example an action in annulment based on the grounds of force or duress from the Romanian authorities may be filed, as Law no. 214/2008 provides the suspension of the statute of limitation for all legal actions related to these rights, and not only for the action in damages. - Law no. 214/2008 stipulates that in order to determine the period provided for a patent of those specified in Art. 4 let. c) of GEO no. 100/2005 to be exploited, the period between the instauration of the communist regime and the date of entry into force of Law no. 214/2008 shall not be computed, but be considered as an automatic prolongation of the term provided for the claim of rights arising from the patent. This provision, corroborated with the provision from the statement of reason (“the normal validity period for the intellectual property right is automatically prolonged”) might be interpreted as automatically prolonging the validity term for all patents in force between 6 March 1945 and 22 December 1989, irrespective of whether such have been issued before or after 1945. Thus, in our view, this interpretation would give rise to negative effects upon the society and the development of technique.
The legislator, in its intention to reestablish equity, gives rise to a preferential situation for the persons whose rights related to patents have been infringed during the communist regime, as the period of protection of their patents is prolonged not only with the period between 6 March 1945 and 22 December 1989, when the abusive measures where taken, but also with the period between 22 December 1989 and the date of the entry into force of Law no. 214/2008 (i.e. 27 November 2008). However, this legal provision does not bring any benefit to the inventors who have validly assigned their inventions.
To the best of our knowledge, no case-law exists so far with respect to these new legal provisions. Nevertheless, it is noteworthy to mention that, an action for damages based on the provisions of GEO no. 100/2005 and of Law no. 214/2008 is pending in front of the Bucharest Municipal Court. From the information publicly available it appears that the claimant has assigned its inventions to the Romanian state, without being fully remunerated and therefore now demands the Romanian state to pay him the remaining of the legal consideration. The court has dismissed the exception invoked by the defendant regarding the prescription of the rights of the plaintiff to claim damages.
