Since the first oppositions have started to be received by Turkish Patent and Trademark Office (“TURKPATENT”), it would be useful to remind the legislation underlying the Turkish post-grant opposition.
Under the Industrial Property Code no. 6769 (“IP Code”) which has come into force in 2017, it is possible for a third party to file an opposition to Turkish patent granted on 10 January 2017 or later (Article 99 of IP Code).
Who can oppose a patent?
Any third party may file an opposition to a granted Turkish patent. More than one person may file opposition against the same patent.
When can a patent be opposed?
An opposition can be filed within 6-month period after the publication of the grant decision in the Bulletin. No remedies (further processing or re-establishment of right) is possible for the missed period for filing an opposition. Oppositions which are filed later than that period will be rejected. Thus, after this period, the patent can only be challenged before the IP Court.
What needs to be filed to oppose a patent?
Within the opposition period,
- a notice of opposition including at least one valid ground of opposition must be filed,
- the opposition fee must be paid, and
- the patent opposed and the opponent must be sufficiently identified.
Otherwise, the opposition shall not be deemed to have been filed.
What are the grounds of opposition?
The grounds of opposition are that:
- the invention is not patentable i.e., lacks novelty, lacks inventive step, is not industrially applicable or relates to subject matter excluded from patentability,
- the invention is not sufficiently described to allow a skilled person to implement the invention, and
- the subject matter of the patent extends beyond the content of the application as filed.
At this point, it is necessary to open a parenthesis; requirements such as clarity and unity of invention are not grounds of opposition.
An opposition fee of 805 TL (about 80 EUR) must be paid within the opposition period. No extension or remedies (further processing or re-establishment of right) of time to pay the opposition fee is possible.
For the fees, it should be kept in mind that the most significant cost is for getting legal advice or engaging a legal representative. Thus, the likely overall cost would be much greater than official opposition fee.
When an opposition is filed, TURKPATENT informs the patent holder and invites him to respond. The patent holder may submit his counterarguments and if necessary, make amendments in the patent within 3 months following the date of TURKPATENT’s invitation. After the examination of the opposition and the patentee’s response by the Board to be established at TURKPATENT, the Board gives its decision.
Unlike EPO, oral proceedings (“hearing”) is not available before TURKPATENT.
There are three possible outcomes of an opposition: 1) the opposition is rejected, and the patent is maintained as granted, 2) the patent is maintained in amended form, or 3) the patent is revoked. After that time, if the patent is still alive, its validity can be challenged before the Court. Decisions of the Board does not have a binding effect on preventing the third party to file an invalidity court action, i.e., same party may file a court action after the finalization of the opposition filed by the same.
Advantages of an Opposition
IP Code, aiming to adopt recent developments of European intellectual property law, introduced to Turkey the post grant opposition system. The system promises to allow TURKPATENT to grant more valuable patents and thereby to reduce the number of invalid patents.
Before IP Code, the validity of Turkish patents could only be challenged before the Court. As in most countries, an invalidation proceeding before Turkish IP Court is generally more costly than an opposition proceeding before TURKPATENT and the opposition proceeding aims to provide a quicker determination of validity.
In addition, the opposition proceedings brought to the patent holder the freedom to amend their claims. Needless to say, the amendment may not extend beyond the content of the application or the patent. On the other hand, according to Article138(4) of IP Code, during an invalidity action, it is not possible to amend the claims of a granted patent. The Article only allows the cancellation of claim(s). Even partial cancellation of a claim is not possible. Accordingly, the advantage of opposition proceedings for the patent holder is beyond dispute. In that case, in order to increase their chance to revoke the patent, third parties may still prefer to challenge the patent by an invalidation action before the Court where the law ties the patentee’s hand and foot to amend his granted patent to save.
Author: Başak Yiğiter