1 Patent Enforcement
1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant’s choice?
All conflicts related to patents either for invalidity or infringement claims are heard before the specialised IP Courts. Turkey has established specialised Criminal and Civil Courts of Intellectual and Industrial Property Rights in the major cities of Istanbul, Ankara and Izmir for hearing cases in all IP matters including patents. In the cities other than Istanbul, Ankara and Izmir, there are normal civil courts which operate as specialised IP Courts for IP disputes. Each Court has one Judge. The Judges, although have experience in IP, do not have technical backgrounds for handling patent matters.
As to the jurisdiction of Courts, the Civil Court of Intellectual and Industrial Rights of Ankara is competent for the annulment action filed against the decisions of the Turkish Patent and Trademark Office.
Furthermore, for infringement and unfair competition actions filed against third parties by the owner of an industrial property right the competent Court shall be the Court of locality where the plaintiff is residing, in or where the wrongful act was committed, or otherwise where the effects of such act have been observed in. Finally, with regard to the cancellation actions and the actions for declaration of non-infringement, the Court within the jurisdiction of the defendant party is competent for such actions.
In case the plaintiff does not have a residence in Turkey, the competent Court shall be the Court in the location where the working place of the registered agent is located on the date of the filing of the action or, if the agency record is deleted, the Court in the place where the headquarters of the office is located. The competent Court in case of actions filed against the industrial property right owner by third parties shall be the Court of where the residence of the defendant is located. In case the applicant or owner of the industrial property right does not have a residence in Turkey, the competent Court shall be the Court in the location where the working place of the registered agent is located.
On the other hand, parties may select the forum for Court actions arising from an agreement between them.
Based on the information above, parties are not able to select the venue of a patent litigation unless they have signed an agreement for the venue of the Courts. The statistics show that the highest number of patent litigation is filed in Istanbul. This is caused by the fact that Istanbul is a hub for several industries and is a place where most of the patent holders or the agents of foreign patent holders are domiciled. The Central Istanbul IP Court is one of the most popular IP Courts, as they have been involved in several complex patent disputes compared to other Courts and have issued landmark decisions concerning patent disputes.
1.2 Can the parties be required to undertake mediation before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?
According to Law No. 7155, which entered into force on 1 January 2019, mediation has become mandatory for all types of IP disputes involving the collection of receivables or compensation claims. Mediation is not mandatory for IP disputes which do not involve any compensation claim.
1.3 Who is permitted to represent parties to a patent dispute in court?
Parties can only be represented by attorneys at law who are regis- tered with the Turkish Bar Association. The patent attorneys are not entitled to represent the parties before the Courts either for infringement or invalidity actions.
Patent attorneys are also not entitled to address the Court and speak during the hearings. The Court may, at its discretion, permit them as a party expert to speak during the hearing for the purpose of explaining/clarifying a technical feature/point.
1.4 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
The Court action is instituted once the plaintiff has filed the writ of summons. The Court, upon completion of the exchange of claims for two rounds, will schedule a hearing for deciding the procedural objections and for entering into the merits of the dispute. This initial phase usually takes between three and five months, depending on the extension requests filed by the parties.
1.5 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
The plaintiff is entitled to ask the Court to order the infringer to disclose the documents which can determine the damages, either before instituting the Court action or during the proceedings. According to Turkish practice, the plaintiff is entitled to request the disclosure of such documents through the action for determination of evidences before initiating the main action whether for infringement or invalidity.
1.6 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?
The Turkish Procedural Law does not provide “pre-trial” steps/phase nor a discovery procedure as such.
Even though the parties are to bring evidence of all the facts and claims they put forward, they are not required to produce any evidence, technical or not, prior to the filing of the action, nor to serve any prior notice either in respect of the action or of the evidences contemplated to be filed.
The plaintiff, however, will be required to implement the mandatory mediation procedure for any action which involves any monetary compensation claim.
1.7 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?
The Court carries out two rounds of exchange of the claims between the parties before the first preliminary hearing. The parties are entitled to change their claims during the two rounds of exchange of claims and responses.
1.8 How long does the trial generally last and how long is it before a judgment is made available?
Since 2016, Turkey has followed a three-instance Court system. Accordingly, disputes before Courts are first brought before the Courts of First Instance, then the Regional Appellate Courts and finally, as for the last appeal, before the Supreme Court. The appeal before the Supreme Court may involve two stages, as the parties may appeal to the Supreme Court to request the reconsideration of its decision before the case is finalised.
Actions before the Courts of First Instance consist of four stages;
- exchange of petitions, where the parties submit the matters to the Court;
- preliminary examination stage, where the Court examines the procedural issues and objections and try to prompt the parties to a settlement;
- examination stage, where the matter of dispute is examined by a panel of experts appointed by the Court; and
- decision stage, where the Court declares the final judgment wherein the Court requests the parties to orally make their final statements.
Depending on the complexity of the matter and the rounds of examination of the case by the panel of experts, a patent litigation suit takes around 18 to 30 months from the filing of the action to the decision of the local Court. The examination of the Regional Appellate Courts takes between 15 and 20 months. The examination of the Supreme Court takes around 15 to 18 months.
1.9 Isthereanyalternativeshorter,flexibleorstreamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?
Neither Turkish Procedural Law nor the IP Code provide for an optional “alternative, shorter, flexible or streamlined procedure” other than outlined herein.
Prior to the institution of the main civil action, an evidential action may be filed for the determination of the act of infringement and/or the evidence. Without constituting an optional alternative and a shorter procedure in itself, mention should be made of the evidential action which is used in lieu of discovery as it may be filed for deter- mining the very act of infringement or any related fact/evidence including the fact/evidence for a possible compensation claim prior to the institution of the main civil action. The plaintiff may institute such action and ask the Court to visit the premises of the adverse party to determine actions and evidences as to the infringing actions of the adverse party. The procedure for such action is a simple one which can be initiated based on strong suspicion of infringement and will be finalised upon an issuance of a report within a few weeks by the expert. The report of such action, where affirmative, will serve as evidence within the context of a request of PI and the main civil action to be consequently filed.
1.10 Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?
Both the hearings and the file will be open to the public. Any Attorney who is registered with the Turkish Bar will be entitled to examine the documents existing in the file unless there is any specific order of confidentiality ordered by the Court. The Attorney at Law, however, will not be able to take a copy of any document unless he/she submits a Power of Attorney obtained from one of the parties of the dispute.
1.11 Are courts obliged to follow precedents from previous similar cases as a matter of binding or persuasive authority? Are decisions of any other jurisdictions of persuasive authority?
The prior judgments of the Turkish Courts and other jurisdictions are not binding, but can be considered at the Court’s discretion.
1.12 Are there specialist judges or hearing officers, and if so, do they have a technical background?
The Judges at the IP Courts, although have experience in IP disputes, do not have a technical background. The Courts appoint a panel of experts which usually comprises patent attorneys and technical people from the related industry for the evaluation of the infringement and/or any validity claim. The Court refers to this expert examination report in its decision.
1.13 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?
According to the Procedural Law, any person who files an action should prove its legitimate interest in instituting the action. This is valid for the infringement, revocation and the declaratory proceed- ings. Articles 141 and 144 of the IP Code, however, entitle the Public Prosecutors and the related Public Authorities to also ask the revocation besides the persons who have legitimate interest.
Licensees. The exclusive licence owner of a patent has all legal remedies, pursuant to the IP Code, available against infringing third parties unless it is agreed on the contrary in the licence agreement.
The non-exclusive licensee is required to notify the right holder under special conditions for claiming a patent infringement. When there is a serious risk of damage and before expiration, the licensee has the right to ask the Court to order for a preliminary injunction. In such case, the conditions to notify the right holder are fulfilled during the main infringement proceedings, which is required to be filed within two weeks as of the notification.
1.14 If declarations are available, can they (i) address non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?
Declarations are available. They can address both the non- infringement and the infringement. However, a declaration for a hypothetical activity may not be heard due to lack of legitimate interest for filing such action.
1.15 Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of, but not all of, the infringing product or process?
According to Article 86 of the IP Code:
“(1) The right holder of a patent is entitled to prevent third parties from handing over to persons unauthorised to work with the patented invention elements and means related to an essential part of the invention, subject matter of the patent, and that which renders the implementation of the patented invention possible. In order that this provision may apply, the concerned third parties have to know that such elements and means are sufficient for putting the invention to use and that they know that they will be used to such effect or that the circumstances render such situation sufficiently evident.
(2) The provisions under Paragraph 1 of this present Article shall not apply when the elements or means referred to in Paragraph 1 of this present Article are products commonly found on the market, unless third parties incite the unauthorised persons concerned to commit such (prohibited) acts.”
Paragraph 1 of Article 86 states two cumulative conditions for contributory infringement:
- offered means must be essential elements of the invention; and
- third parties offering the means should be aware of these means which render possible the implementation of the invention.
Paragraph 2 of Article 86 imposes a third condition for products commonly found on the market:
- it shall be evidenced that the third parties incite the persons concerned to commit the infringement.
1.16 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?
The protection provided by a process claim extends to the products directly obtained by the said process. Therefore, selling, using or importing the goods which are directly obtained by the claimed process is considered infringement of the patent.
Burden of Proof in Process Patents. Article 141/2 of the IP Code states that where the patent is obtained for a process for the production/preparation of a product or a substance, the Court may request the defendant to prove that the product, possessing the same properties, has been produced/manufactured without infringing the patented process.
Where the patent is obtained for a process for the production/preparation of a new product or substance, all products, possessing the same properties, shall be deemed to have been produced/manufactured by the patented process. The burden of proof rests with the defendant claiming that the manufactured product does not infringe the patented process.
1.17 Does the scope of protection of a patent claim extend to non-literal equivalents (a) in the context of challenges to validity, and (b) in relation to infringement?
According to the IP Code, the scope of protection conferred by a patent application or a patent shall be determined by claims. However, the claims shall not be interpreted based on the limits of the meaning of the words used.
The IP Code also states that when determining the extent of protection, the claims shall not be extended in a way covering the ideas that had been thought of by the inventor, but had not been demanded in the claims, and also in a way to cover the features which are expected to arise by interpretation of the description and the drawings by a skilled person in the art.
The claims are interpreted in a way not only to provide the applicant or the patentee with the protection they deserve, but also to provide the third parties with a reasonable degree of legal certainty.
In an infringement court action, not only is the literal meaning of the words in a claim considered, but so are the equivalents of them. The infringement is first assessed by comparing the properties of alleged product or process with the literal words of the claims. If the court-appointed experts are of the opinion of that there is no literal infringement, then they usually proceed with the assessment of equivalents. There is infringement under the doctrine of equivalents if a feature of the alleged product/process performs substantially the same function, in the same way and leads to the same result as the feature of the claim.
The IP Code also states that when assessing the scope of protection, the applicant’s statements and declarations in the examination proceed- ings or during the validity of the patent shall be considered.
The IP Code does not have any provision concerning the implementation of the non-equivalents within the context of the challenges to validity.
1.18 Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence e.g. where there is a pending opposition? Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?
The defendant is entitled to raise defence of patent invalidity by instituting an invalidation action against the patent, enforced either as an independent action or as a counter action within the context of the main infringement action. Turkish patent law does not have a bifurcated system. Thus, the invalidity action may either proceed within the context of the infringement action or separately in an independent court action in parallel with the infringement action. In case of an independent invalidity action, the Court may decide in favour of the consolidation of the two court actions at its own discretion or upon request of the parties./p>
Article 155 of the IP Code reads that a “[t]rademark, patent or design right owner shall not put forward its industrial property right as a defense in an infringement action that has been instituted by right owners who have an earlier priority or application date than its own right”. Accordingly, patent rights cannot be the basis of a defence in an infringement action based on earlier patent rights./p>
An infringing party may file a declaratory non-infringement action against the patent right holder claiming that its use and products do not infringe the patent right in dispute. The IP Code stipulates that a declaratory non-infringement action cannot be filed by a party against whom an infringement action has been filed.
There is no provision or consistent practice concerning the acceptance of a pending opposition, especially an opposition filed before the EPO as being a dilatory issue. Such defence is evaluated as per the specific circumstances of each case.
1.19 Is it a defence to infringement by equivalence that the equivalent would have lacked novelty or inventive step over the prior art at the priority date of the patent (the “Formstein defence”)?
A defence similar to the Formstein defence does not currently exist in Turkish Law. Infringement under the doctrine of equivalents is assessed mainly by considering whether an element performs substantially the same function, in the same way and leads to the same result as the feature in the claim (Article 89(5) IPC).
To our knowledge, there have been a few infringement court actions wherein the parties submitted prior art documents disclosing the alleged equivalent element within the same/similar concept as the subject matter of the patent is suit. However, the decision of the Court did not include any comments regarding the acceptance of this specific defence.
1.20 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?
According to Article 138 of the IP Code, the grounds for invalidity other than the lack of novelty, inventive step and industrial applicability are as follows:
- Lack of sufficiency; that the invention is not disclosed in the patent application in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 92 IPC).
- Added subject matter; that the patented subject matter extends beyond the scope of the filed application, or if the patent was granted on a divisional application filed pursuant to Article 91 or on a new application filed pursuant to Article 110 (after the finalised decision of the Court regarding the allegation that the right to claim a patent does not belong to the applicant), beyond the content of the earliest application as filed.
- The subject matter of the patent does not meet the patentability requirements pursuant to Article 82 of the IP Code which defines the patentable inventions and exceptions to patentability. Accordingly, the following shall not be regarded as inventions (Article 82(2) IPC):
- Discoveries, scientific theories and mathematical methods.
- Plans, rules or methods with regard to mental activities, business activities or games.
- Computer programs. (It is important to note that computer programs ‘as such’ are not patentable. Similar to the EPC computer-implemented inventions are patent- able in Turkey.)
- Aesthetic works, literary and artistic works, as well as scientific works.
- Presentation of information.
Additionally, Article 82(3) states that a patent shall not be granted for the following inventions:
- Inventions against public order or morality.
- Plant or animal varieties or essentially biological processes for the production of plants or animals, excluding microbiological processes or the products thereof.
- All therapeutic methods including diagnostic methods and surgical methods to be applied on the human or animal body.
- The human body, including the human body at the various stages of its formation and development and the simple discovery of one of its elements, including the sequence or partial sequence of a gene.
- Processes for cloning human beings; processes for modifying the germ line genetic identity of human beings; uses of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
Prohibition of commercial use of the invention within the scope of subparagraph (a) of paragraph 3 only by means of legislation shall not mean that such use is against public order or morality (Article 82(4) IPC)/p>
Microbiological process mentioned in subparagraph (b) of para- graph 3 means any process involving or performed upon or resulting in microbiological material; essentially biological process means the production of plants or animals consisting entirely of natural phenomena such as crossing or selection (Article 82(5) IPC).
The provision in subparagraph (c) of paragraph 3 shall not be applied to products, particularly to substances and compositions used in any of the methods mentioned in the same subparagraph (Article 82 (6) IPC).
1.21 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?
The Courts may have different approaches to different scenarios.
In cases where the infringement has been put forward within the scope of the action as a counter invalidity action, the Court will first evaluate the invalidity claim and then the infringement action. If the invalidity claim and the infringement claims have been put forward through two independent Courts, the actions can be consolidated before the Court handling the earlier action at the discretion of the Courts. If the actions are handled independently, the Court which prosecutes the infringement claims will be inclined to stay the proceedings as per the outcome of the invalidity action. In 2017, Turkey introduced the post-grant opposition against the granted patents; although there has been no case law so far, the Courts are expected to stay the ruling concerning infringement proceedings until the finalisation of the opposition. In cases where the infringement claims are based on a validated European Patent which has in the same received a post-grant opposition before the EPO, the Turkish Courts will have the discretion to either stay the proceed- ings or continue to prosecute the infringement claims. The Supreme Court has in one case law required the First Instance Court to stay the proceedings in the view of the fact that there was a very short period of time left for the EPO Board Appeal to render its decision
1.22 What other grounds of defence can be raised in addition to non-infringement or invalidity?
The defendant may also put forward the acquiescence objection as per the general principles of the civil law. The defendant can claim that the filing of an action by the patentee who has remained silent against the use of the patent for a long time causes and abuse of law, especially where the defendant proves that it is acting in good faith.
1.23 (a) Are preliminary injunctions available on (i) an ex parte basis, or (ii) an inter partes basis? In each case, what is the basis on which they are granted and is there a requirement for a bond? Is it possible to file protective letters with the court to protect against ex parte injunctions? (b) Are final injunctions available?
The patent holder is entitled to obtain a PI order in following situations
- within the context of the main infringement action;
- within the context of the evidential action; or
In each of the above situations, the PI may be requested and carried out “ex parte” or “inter partes” subject to the discretionary competence of the Court. It is to be noted that in practice the courts are generally quite conservative in granting “ex parte” PIs.
Preliminary injunction requests may be refreshed at any stage of the action when there is a new development on the matter and a change in the conditions, such as the issuance of a favourable expert report, etc.
PI requests are deemed to be urgent matters to be handled according to the Turkish Procedural Law. The most important requirement would be to submit substantial evidence attesting a prima facie infringement in order to convince the Judge that there is the risk of an infringement. Another requirement would be to deposit a guaranty payment before the Court (at the discretion of the Judge) for the execution of the PI order once the decision is rendered by the Court. It is important to note that the guaranty payment and the request of execution of the PI order shall be done within one week of the issuance of the PI order by the Court. Failure to deposit the guaranty payment and request the execution within one week results in the release of the PI order.
Finally, the Turkish IP Courts can also order reverse PI orders orders upon the payment of a bond by the defendant. In such case, the Court may order a PI which will prevent the patent holder from enforcing its patent rights against the defendant parties.
1.24 Are damages or an account of profits assessed with the issues of infringement/validity or separately? On what basis are damages or an account of profits assessed? Are punitive damages available?
There are three types of damages that can be claimed in infringement actions: moral, reputational and material damages.
Moral damages/reputational damages are usually ordered at the discretion of the Court and in relatively low amounts.
The damage suffered by the right owner includes not only the value of the effective loss, but also the income non-realised because of the infringement of the right. The non-realised income is calculated in accordance with one of the following evaluation methods (as decided by the right owner):
- the income that the right owner might have generated had the infringement not occurred;
- thenetincomegeneratedbytheinfringerfromtheinfringing use of the IP right; or
- an exemplary licence fee that would have been paid had the infringer lawfully used under a licence contract.
For options (a) and (b) the Court is entitled to increase the non- realised income should the Court be convinced of the fact that the IP right is the essential element for the creation of the demand at the consumer side.
In calculating the non-realised income, the Court will consider relevant circumstances such as: the economic value of the patent; the remaining term of protection for the IP right at the time of infringement; and the type, nature and number of licences granted in respect of the patent.
Where the Court is of the opinion that the right owner has not fulfilled its obligation to use the IP right, the IP Code provides that the non-realised income shall be calculated according to the exemp- lary licence fee.
In practice, the calculation of damages entails certain difficulties in providing documentary evidence of the damages sustained by the plaintiff. The most important documents relate to the defendant’s commercial and accountancy records – which are often improper and incomplete and seldom accurately reflect its economic activity – as well as the relation of the sold/produced/imported goods to the infringed patent.
1.25 How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?
Firstly preliminary injunction orders shall be enforced within one week as from the grant of the PI decision. Upon the payment of the bond mentioned on the decision, the original PI decision is received, and it is then enforced through the execution offices.
As to the final decision of the main proceedings, the Court decision can be enforced upon its finalisation; meaning that it is not possible to enforce (execute) the Court decision unless it is finalised
Depending on the content of the Court decision, the decision can be enforced ex-officio by the First Instance Court itself, i.e. sending writs for the cease of the publication of infringing website content. The decision can be enforced through the execution office, i.e. filing an application before the execution office for the seizure and destruction of the infringing products and/or for the collection of the compensation award.
1.26 What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross- border relief?
For want of legal basis, the Turkish Courts are not able to and do not grant cross-border relief.
1.27 How common is settlement of infringement proceedings prior to trial?
Serving cease and desist letters to the adverse parties prior to instituting civil actions is often deemed as cost effective since it may trigger quick settlement between the parties.
1.28 After what period is a claim for patent infringement time-barred?
The statute of limitations in a patent infringement action is two years as from the date on which the patent holder became aware of the infringement and in any case 10 years from the date of the infringement.
1.29 Is there a right of appeal from a first instance judgment, and if so, is it a right to contest all aspects of the judgment?
Since 2016, Turkey has followed a three-degree Court system. Accordingly, disputes before Courts are firstly brought before the Courts of First Instance, then the Regional Appellate Courts and finally before the last appeal stage, the Supreme Court. The appeal before the Supreme Court may involve two stages as the parties may appeal to the Supreme Court to request the reconsideration of its decision before the case is finalised.
Decisions of the first instance phase are examined by the Regional Appellate Courts. Appeals of the Regional Court (three judges, non- technical) decisions are brought before the Supreme Court. Similar to Regional Courts, the Supreme Court (five judges, non-technical) also has a chamber specialised in IP matters. However, unlike the Appeal Courts, the Supreme Court does not examine the matter of dispute, only examines whether the local Court has implemented the law correctly. If a decision is approved by the Supreme Court, it becomes final and cannot be further appealed.
1.30 What are the typical costs of proceedings to first instance judgment on (i) infringement, and (ii) validity? How much of such costs are recoverable from the losing party?
The official fees and expenses for a patent action, whether an infringement or invalidity action, and where there is no compensation claim, depends on the rounds of examination of the case by the court appointed panel of experts. The expenses and official fees in a straightforward lawsuit with one round of examin- ation would be around USD 2,000. In the actions, whether infringements or invalidity actions, the official fees would increase depending on the amount of compensation to be claimed.
The Court does not rule the real attorney fees spent for the prosecution of the file through an attorney at law. In the actions, whether an infringement or in invalidity actions where there is no compensation award, the Court will only rule a fixed attorney fee which is determined by the Turkish Bar Association (around USD 250) and the reimbursement of the official fees paid by the winning party. If the Court has awarded compensation, the reimbursed attorney fee may increase depending on the compensation award. For instance, if the Court has awarded USD 1,000, the winning party will be entitled to ask for 12% of such amount as an attorney fee, in addition to the fixed attorney fee.
1.31 For jurisdictions within the European Union: What steps are being taken in your jurisdiction towards ratifying the Agreement on a Unified Patent Court, implementing the Unitary Patent Regulation (EU Regulation No. 1257/2012) and preparing for the unitary patent package? Will your country host a local division of the UPC, or participate in a regional division? For jurisdictions outside of the European Union: Are there any mutual recognition of judgments arrangements relating to patents, whether formal or informal, that apply in your jurisdiction?
Turkey does not take part in the legislative and regulatory process regarding the Unified Patent Court and Unitary Patent Regulation; it is not expected to be a party in the foreseeable future to the extent it continues not be a member of the European Union. Accordingly, at the moment, there is no prospect of the country to host a local or regional division of the UPC, as there are no arrangements for the mutual recognition of judgments relating to patents.
2 Patent Amendment
2.1 Can a patent be amended ex parte after grant, and if so, how?
The claims of a Turkish patent cannot be amended ex parte after the grant. However, according to Article 140 of the IP Code, the proprietor may restrict its right to the patent in whole or in part for one or more claims. The IP Code allows for the cancellation of a whole claim; however, does not provide the right to amend the claim. Where the patent is restricted in part, the patent remains in force for the claims which have not been cancelled. Cancellation of an independent claim causes the cancellation of the dependent claim(s) with the proviso that each dependent claim, on its own, does not meet the patentability criteria. In this regard, it is important to note that the new IP Code does not provide for the possibility of amending the claims by bringing them together so as to overcome their cancellation.
It is important to note that since Turkey is a party to the European Patent Convention, claims of a European Patent validated in Turkey may be amended before the EPO according to Article 105(a) EPC, and these amendments shall apply to all Contracting States in respect of which it has been granted.
2.2 Can a patent be amended in inter partes revocation/ invalidity proceedings?
During the post-grant opposition proceedings before the Turkish Patent and Trademark Office, which was introduced with the new IP Code as of 2017, it is possible to amend claims (Article 99(4) IPC).
During an invalidity court action, where the grounds for invalidity concern only part of a patent, a partial invalidity of same shall be ruled by cancellation of the claims pertaining to such part. A claim may not be partially invalidated (Article 138(4) IPC). In other words, a claim may not be amended, but may be cancelled as a whole.
On the other hand, a European patent validated in Turkey may be limited by amending the claims in proceedings before the competent Court or authority relating to the validity of the European patent according to Article 138(3) EPC. The patent as thus limited shall form the basis of the proceedings.
2.3 Are there any constraints upon the amendments that may be made?
A Turkish patent application may be amended by the applicant during the procedures carried out before the Office, provided that the amendments do not extend beyond the scope of the application as filed (Article 103(1) IPC).
The applicant has the right to amend the claims after receiving the search report and within the time limit for requesting examination. Besides that, as a response to the examination report, the applicant may submit amended claims with a letter stating the basis for the amendments and also the reply to the objections of the examiner. The IP Code limits the number of examination reports to three. In other words, the applicant cannot receive more than three examin- ation reports, thus can amend the claims during examination three times at most as reply to the examination reports.
If an opposition has been filed against a patent, the patent may be amended by the patent proprietor until the final decision is made by the Office with regard to the opposition, provided that the amendments do not extend beyond the scope of protection conferred by the patent (Article 103(2) IPC).
3.1 Are there any laws which limit the terms upon which parties may agree a patent licence?
Patent licence agreements are subject to the general provisions of the Turkish Code of Obligations no. 6098 (“TCO”). The TCO clearly states that a contract shall comply with the requirement as to the form of that specific contract and shall not be against the compulsory legal norms, public order or the general public moral norms. It also shall not be objectively impossible to perform at the time of signing. If a patent licence agreement does not meet any of these requirements, it will not be legally valid and binding.
Furthermore, patent licence agreements are also subject to the Law on the Protection of Competition no. 4054 (“Competition Law”). The Competition Law forbids the concerted contracts and/or actions between two or more undertakings which could restrict competition in a specific market.
3.2 Can a patent be the subject of a compulsory licence, and if so, how are the terms settled and how common is this type of licence?
The Turkish IP Code has introduced grounds for requesting a compulsory licence for:;
- exportation of pharmaceutical products for addressing public health needs in other countries. This requirement was intro- duced on the basis of the Protocol amending the TRIPs Agreement – Additional Article 31 bis;
- being unable to develop a new plant variety without infringing a patent;
- acts/behaviour resulting in a restriction or breach of competition rules (Article 129/1-e) (under the repealed Decree- Law No. 551 it was question of “unfair competition” (Article 93)); and
- cases where the use of the patent is not sufficient to meet the national market requirements.
The non use of the patent within the statutory time period can also result in a compulsory licence request. The statutory period has been mentioned to be three years from publication of the decision to grant, or four years from the application date, whichever is later, or “discontinuing use without a justifiable reason for an uninter- rupted period of three years”.
Unlike the repealed law, the “Competition Board” has been intro- duced as a new body alongside the Courts/judiciary when the ground for requesting a “compulsory licence” is the restriction or breach of competition rules.
4 Patent Term Extension
4.1 Can the term of a patent be extended, and if so, (i) on what grounds, and (ii) for how long?
Patent term extension is not available in Turkey.5 Patent Prosecution and Opposition
5.1 Are all types of subject matter patentable, and if not, what types are excluded?
According to Article 82 of the IP Code, there are exceptions to patentability which are explained under question 1.20 above.
5.2 Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents? If so, what are the consequences of failure to comply with the duty?
There is no duty to the Turkish Patent and Trademark Office to disclose the above-mentioned documents.
5.3 May the grant of a patent by the Patent Office be opposed by a third party, and if so, when can this be done?
Third parties may file an opposition against a patent within six months from the publication of the decision for granting a patent in the Bulletin (Article 99 (1) IPC). Post-grant opposition was intro- duced with the new IP Code and it is applicable for patents which are filed on or after 10 January 2017.
5.4 Is there a right of appeal from a decision of the Patent Office, and if so, to whom?
All decisions of the Patent Office can be appealed before the Re- examination and Re-Evaluation Council (Higher Council). The decisions of the Higher Council can be contested before the Civil Court of Intellectual and Industrial Rights of Ankara which are the competent Courts for the annulment action filed against the decisions of the Turkish Patent and Trademark Office.
5.5 How are disputes over entitlement to priority and ownership of the invention resolved?
The person who is the first to apply for a patent shall be vested with the right to the patent until proof to the contrary is established. During the proceedings of granting a patent, a person claiming to be rightfully vested with the right to request the patent may institute a court action against the applicant and shall notify the Office. The proceedings of granting a patent may be ceased by the Court until the date of finalisation of the decision with regard to the action. Where a patent has been granted to a person other than the rightful owner, the person claiming to be rightfully vested with such right may institute a court action claiming the transfer of ownership of the patent without prejudice to his other rights and claims conferred by the patent (Article 109 to 111).
5.6 Is there a “grace period” in your jurisdiction, and if so, how long is it?
There is a 12-month grace period in Turkish Law. Article 84 IPC defines the conditions of the grace period as follows:
“(1) In the circumstances hereunder cited, disclosure of informa- tion which otherwise would be prejudicial to the grant of a patent or utility model to an invention shall not affect the grant of patent or utility model to that invention where the information was disclosed during the 12 months preceding the date of filing or, where priority is claimed, the date of priority of the application:
- By the inventor.
- By an authority to which the patent application was filed and the information was contained:
- in another application filed by the inventor which application should not have been disclosed by the respective office.
- in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor.
- By a third party which obtained the information directly or indirectly from the inventor.
(2) According to paragraph one, any person who is entitled to claim a patent or utility model on the date of filing shall be deemed to be the inventor.
(3) The effects of the implementation of paragraph 1 are not limited to a time period and may be invoked at any time.
(4) The party invoking that paragraph one must be applied shall have the burden of proving that the conditions are fulfilled or expected to be fulfilled.”
In Turkey, patent protection is granted for 20 years from the filing date of the patent. The protection term for a utility model is 10 years from the filing date of the patent.
Double patenting is not allowed according to Article 145(2) IPC. More than one patent or utility model, or both, shall not be granted independently from each other to the same person or his successor in title in respect of the same invention, with the same scope of protection.
According to the Turkish Regulation concerning the implementation of the EPC, in cases where two patents are granted for the same invention, one by the Turkish Patent Office and the other validated as a European patent in Turkey, the Turkish patent will be deemed to be cancelled upon the expiration of the opposition period of the European patent or the finalisation of the opposition procedure in the existence of an opposition, provided that the two patents have the same priority/filing date and have been filed by the same applicant.
6 Border Control Measures
Yes, it is possible to file an (online) customs application before the IP Department of the Ministry of Customs for the monitoring of counterfeit products. The accepted customs application, which is a centralised application, is recorded before all Turkish Customs and remains valid for one year as of its application date. This period can be renewed upon request.
Further to acceptance of the application, the Customs start to monitor the flow of the counterfeit products and send notification to the right holder when the Inspection Officers suspect or deter- mine suspicious products are found to be exported or imported in view of the recorded IP Right.
The Customs administration sends a temporary suspension decision to the representative of the IP right holder. The IP right holder is then required to obtain a seizure decision from the Criminal Court or a preliminary injunction decision from the Civil Court within 10 working days. This period can be extended for 10 more days upon request. It should be noted that apart from trademarks, there is no criminal provision for the IP Rights in the IP Code. Accordingly, the right holder may only apply to the civil court for the injunction.;
7 Antitrust Law and Inequitable Conduct
The IP Code does not provide any restriction concerning the anti- trust law in respect of a relief for patent infringement. So far to our knowledge, there is also no judicial case law in this respect.
The IP Code does not provide any restriction concerning the anti- trust law in respect of a relief for patent infringement. So far to our knowledge, there is also no judicial case law in this respect.
The application of Competition Law to technology transfer and licensing agreements is regulated under Communiqué No. 2008/2 and the Guidelines. The transfer and licensing agreements can be subject to exemptions before the Competition Board.
Turkey has limited SEPs disputes in Turkey. We do not yet have finalised court rulings or preliminary injunction matters which separate the SEPs from other patent disputes or where the FRAND terms are considered. As the Competition Board has been put as a new body to ask for a compulsory licence, it can also be part of FRAND discussions concerning licence disputes.
8 Current Developments
Employee inventions and designs are one of the main areas of inter- vention of the IP Code. The new rules on employee inventions, although they are detailed, are open to interpretation. The new IP Code and the implementing regulations brought new debates concerning the ownership of the inventions created by employees, remuneration method(s), the ownership and the remuneration of the inventions created by the higher educational bodies/universities and the inventions created by within the context of the public bodies./p>
Considering that the post-grant opposition was introduced in Turkey with the new IP Code and that it is applicable to patents which were filed on or after 10 January 2017, practices regarding the opposition before the Turkish Patent and Trademark Office are expected to be developed starting from the end of this year or the next year with the grant of the currently pending patent applications. The impact of the post-grant opposition would also be very important in the patent litigation before the IP Courts of Turkey. Furthermore, Article 82 concerning “Patentable inventions and exceptions to patentability” cites under paragraphs the “non patentable biotech- nological inventions”. As no definition of “biotechnological invention” is provided in the Act this issue will have to be shaped by case law. Therefore, this issue is likely to be part of future discussions. Likewise, the new rules concerning the compulsory licence as mentioned at question 3.1 are likely to constitute potential topic of debate in future.
There has been an increase in the number of patent disputes and the variety of sectors in which such patent rights are enforced. The Turkish Customs have also become more active implementing the suspension of release procedure with respect to patents as well.
The authors would like to acknowledge Elif Kayral, senior associate, for her invaluable assistence in the preparation of this chapter.