Patents Throughout The World Chapter 169 Turkey

Law

At national level, the main sources of patent law are the:

1. Industrial Property Code No. 6769 (IP Code);
2. Regulation on the Implementation of the IP Code;
3. Regulation on Employees' Invention, Inventions Realised in Higher Education Institutions and Inventions Realised as a Result of Publicly Funded Projects; and
4. Regulation on the Implementation of the European Patent Convention Regarding the Grant of European Patents in Turkey.

Conventions

Turkey is a party to almost all international treaties relating to intellectual property, including:

1. Strasbourg Agreement Concerning the International Patent Classification 1971;
2. Paris Convention for the Protection of Industrial Property 1883 (Paris Convention);
3. Patent Cooperation Treaty 1970 (PCT);
4. European Patent Convention 1973 (EPC); and
5. WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS).

Types of patent

There are different types of patents according to the type of the invention which is the subject of the patent. However, there is not a single classification that is widely accepted among Turkish scholars or by the IP Code. The most common patent types can be listed as follows:

1. Product Patents (patents where the subject of protection is directly the product), for example: active ingredient patents, formulation patents;
2. Product Patent defined by procedure (product-by-process);
3. Process Patents (patents in which the path followed to reach the product is protected); and
4. Second Medical Use Patents (patents protecting a new use of a known product).

Rights of patentee

The patent owner has the following rights:

1. Prevention and removal of consequences of patent infringing acts, which are listed under Article 141 of the IP Code as follows:
2. Imitation of a patented product by manufacturing it fully or in part without the permission of the patent owner.
3. To sell, distribute or trade in any other way products manufactured in violation of ownership rights, or to import, keep for sale or use such products or to suggest a contract about such products, with knowledge that the products are complete or partial imitations or while in a position to know they are such imitations.
4. To use an invented method without the permission of the patent owner or to sell, distribute or trade-in any other way products that have been manufactured with direct use of the invented method without permission, or to import, keep for sale or use or suggest a contract about such products with knowledge that they were manufactured with the invented method without permission or while in a position to know they were manufactured in this way.
5. Registration of the patent right on behalf of an unauthorized person.
6. To extend contractual or compulsory licensing rights or to transfer such rights to third parties.
7. Preventing third parties from supplying a person who is not entitled to perform/execute the patented invention, with means or tools that make it possible to perform or execute the patented invention, if it relates to an essential element of that invention (Article 86, IP Code); and
8. Licensing its patent rights to the third parties.

Who may apply

According to Article 109 of the IP Code, the rights to a patent will belong to the inventor or his successor in title and will be transferable.

Where an invention has been made jointly by more than one person, unless foreseen otherwise by the parties, the right to request a patent will belong to them jointly. Where an invention has been made independently by several persons at the same time, the right to a patent will belong to the person who files the first application or who can claim an earlier priority right.

Articles 113 et seq. of the IP Code govern employee inventions and foresee compensation for inventors who are employees. If an employee makes an invention in the course of his duties for an enterprise or public administration, or an invention that is based to a large extent on the work and experience of the enterprise or public administration, or makes an invention in the course of an ongoing work relationship, this invention is acknowledged to be a service invention. If the employer claims full rights to the invention, all rights on the invention including the right to apply for a patent, will be automatically transferred to the employer at the time the request is notified to the employee.

Article 41 of the abolished Patent Decree-Law, was foreseeing that the inventions made by the university employees as a result of their scientific work and research, were free inventions. That is to say, the university employees were the owners of all of the material and moral rights on the invention. However, with the new IP Code, a system similar to the employee invention system is adopted. If the University claims full rights to the invention, including the right to apply for a patent, all the rights will automatically be transferred to the University.

What is patentable

As per Article 82/1 of the IP Code, the applicant must prove the following to obtain a patent:

1. Novelty;
2. Inventive step; and
3. Industrial application.

What is not patentable

As per Article 82 of the IP Code the following are not considered as inventions and therefore cannot be patented:

1. The discoveries, scientific theories, mathematical methods;
2. The plans, methods and rules in relation to mental acts, business and game activities;
3. Computer programmes;
4. The literary and artistic works, scientific works, creations having an aesthetic characteristic; and
5. The delivery of information.

The following are accepted as inventions yet cannot be protected by a patent:

1. The inventions violating public order or morality;
2. All kind of treatment methods including diagnosis and surgical methods that will be practiced on human or animal body;
3. The plant and animal varieties or species or biological processes for producing or breeding plants and animals (except microbiological processes or products of them);
4. The simple discovery of one of the elements of the human body, including a gene sequence; and
5. The human cloning processes, the use of human embryos for industrial or commercial purposes, certain processes for modifying the human genetic code.

Novelty

An invention which is not included in the state of the art is accepted to be novel.

It is regulated that the state of the art is accepted to comprise information or data pertaining to the subject matter of the invention, accessible to the public in any part of the world, before the date of filing of the application for a patent by disclosure whether in writing, or orally, by use or in any other way. Other than this, the disclosures of national patent and utility model applications published on the date of the application or thereafter but dated back to before the application date are also considered as state of the art. However, pursuant to Article 83(5) of the IP Code, the content of these applications and documents which are considered to form the state of the art is not taken into account in the evaluation of the inventive step.

Likewise, Article 84 of the IP Code regulates ''grace period'' for declarations made 12 months before application for a patent or before priority date. Accordingly, specific declarations are not deemed to destroy patentability of an invention under certain conditions, if:

1. The declaration is made by the inventor;
2. The declaration is made by an authority to which patent application is submitted and the information declared by this authority:
3. is referred in another application made by the applicant and the application is disclosed by the relevant authority although it should not; or
4. is declared in an application filed by a third party who has acquired information directly or indirectly from the inventor without the knowledge or permission of the inventor;
5. The declaration is made by a third person who has acquired information directly or indirectly from the inventor.

Documents required

Patent applications are examined and granted by the Turkish Patent and Trademark Office (""the Office""). The documents and/or information required for a patent application are as follows:

1. The application form;
2. The description explaining the subject of the invention;
3. The claim or claims covering technical features of the invention claimed to be novel;
4. The technical drawings referred to in the specification, claim or claims;
5. The abstract; and
6. The document showing that the application fee has been paid.

As of the date when all of the following minimum requirements are submitted to the Office, the patent application date becomes final, and the application is processed; all other required documents can be completed within two months from the application date without the need for any notification. The minimum requirements for according a date of filing are as follows:

1. The request for granting a patent;
2. The identity and contact information of the applicant; and
3. A description written in Turkish or in one of the foreign languages specified in the second paragraph or a reference to a previous application.

Convention requirements

The international agreements to which Turkey is a party to, are directly applicable in Turkey and therefore are sources of patent law. In accordance with the Article 90 of the Constitution, in the case of a conflict between international agreements in the area of fundamental rights and freedoms duly put into effect and the domestic laws due to the differences in provisions of the same matter, the provisions of international agreement shall prevail.

Examination

After the patent application is filed, it is examined by the Office in terms of the formal requirements. If there is no deficiency in the application after the formal examination, the process of preparing the research report is started by the Office upon request of the applicant by paying the required fee.

A detailed search is carried out by the Office for the patent application in terms of novelty, inventive step and industrial applicability criteria. This search is prepared as a report by examining all the patent/non-patent technical literature around the world, and evaluating the documents closest to the invention made available before the application date.

During the examination phase, the Office examines whether the patent application is suitable for registration according to the IP Code. If it is determined that the patent application does not comply with the provisions of the IP Code, the applicant is notified to make changes in application provided that these changes do not exceed the scope of the application, and such notifications are repeated up to three times, if necessary.

Publication

If no early publication request is made with the application, the patent application is published in the patent bulletin at the end of 18 months following the application date.

Time limits for responding to official actions

The infringement and invalidation actions which should be filed before the Courts are governed by the procedural rules set in the Turkish Code of Civil Procedure No. 6100 (""CCP""). A party who is notified with an action will be entitled to file his responses to the action or a time extension request within two weeks as of the notification. Time extension can be granted for up to one month starting as of the termination of the official two weeks response term.

Opposition

Third parties can oppose a patent within six months as of the publication of the patent grant decision in the Official Bulletin before the Patent and Trademark Office, which is also called as the ""post grant opposition procedure."" The grounds of opposition are as follows:

1. The patent subject does not fulfil the patentability conditions;
2. The invention has not been sufficiently disclosed; and
3. The patent subject exceeds the scope of the application.

Annuities

Annual fees (annuities) required for patent application or patent protection are paid to the Office during the patent protection period.

The annual fee is paid on due date for each continuing year, starting at the end of the second year from the date of application. Annual fees not paid on due date can be paid within 6 months following the due date, with an additional fee.

Working

The patent owner or the person authorized by the owner has to use the invention protected by the patent. Otherwise, the patent may be subject to compulsory license in accordance with IP Code. The use declaration should be filed within a period of three years from the publication of the decision to grant the patent in the Bulletin or four years from the date of the patent application, whichever ends later.

Compulsory license; License of right

According to Article 129 of the IP Code, a compulsory licence will be granted, where any one of the following six circumstances exists:

1. The non-use of the patent;
2. The dependency on the subject matter of patents;
3. The public interest;
4. The export of pharmaceutical products to foreign countries experiencing public health problems in line with Law No. 6471. The protocol amending TRIPS was accepted in Turkey on 22 May 2013 by the Law No. 6471 Acceptance of the Protocol Amending the TRIPS Agreement;
5. A plant breeder cannot develop a new type of plant without infringing a previous patent; or
6. The patent holder engages in activities that prevent, distort or restrict competition while using the patent.

Article 130 of the IP Code, titled ''Compulsory licensing in case of non-usage'' extends the use criteria to hold that even if a patent has been used to some degree, if the use of the patent is not at a level that satisfies ''the needs of the national market'', a compulsory licence may be granted.

The Turkish Patent and Trademark Office publishes a list of patents for which no use declaration was filed within the time period foreseen in the IP Code. The list implies that a compulsory license opportunity might exist for those patents. Even if the term foreseen in the IP Code has expired and justification for not working is not submitted, it does not lead to an automatic compulsory license as the patent holder may prove working or justify not working during court proceedings.

Article 129 of the IP Code rules that the patent holder is allowed one month from the date of application for a compulsory licence to file submissions on his own position. Following this, the court will render a decision on whether to grant the licence within one month immediately following the filing of submissions.

Please see 169:20. License below for explanation on the license of right.

Marking

Wrongfully marking a product to claim that a patent is registered or pending may constitute unfair competition and in such case civil and criminal sanctions may ensue.

Assignment

According to Article 148 of the IP Code, a patent application or a patent can be assigned to a third party. The assignment agreement should be in written form and notarized in order to be a valid agreement. Article 148 of the IP Code provides that the assignment will be recorded in the Register. The assignment is published in the Official Patent Bulletin upon request of one of the parties when the official fee is paid, and all other conditions are fulfilled. If the assignment is not registered in the Registry, then the rights arising from the non-registered transaction cannot be enforced against bona fide third parties.

License

A patent application or a granted patent can be the subject of a license agreement. The general terms regarding licenses are set forth in Article 125 of the IP Code. The Article reads as follows:

1. The patent application or the patent may become the subject of a licensing agreement.
2. Licenses may be exclusive or non-exclusive. Licenses are non-exclusive unless stated otherwise in the licensing agreement. The licensor can use the patented invention for their own purposes or can issue licenses to third parties. In the case of an exclusive license the licensor can neither grant licenses to other third parties nor use the license himself unless this right has been explicitly reserved.
3. The contractual license owners are neither allowed to transfer the license rights to third parties nor to grant secondary licences, unless agreed otherwise in the licensing agreement.
4. The contractual licensee can freely use the patented invention for the entire patent term, unless agreed otherwise in the licensing agreement. The licensee must comply with the terms of the licensing agreement. In case of contravention, patent owners can claim their patent rights against their licensees.

Accordingly, patent license agreements transfer the rights to exercise some or all of the monopolistic rights to a third party. Yet, the moral rights on the patent cannot be transferred with this agreement, and the patent owner preserves his title as a rights holder. It is at the complete discretion of the patentee to select the rights that will be subject to the license agreement and limit the agreement as he wishes.

Duration

A patent is valid and enforceable for a term of 20 years from the application date and until a final revocation decision on the patent.

Extension and restoration

The 20 years protection term of the patent is not extendable. The term of patent protection cannot be extended and supplementary protection certificates (SPCs) or equivalent protection are not available for patents protecting pharmaceutical and agricultural products.

If the annual fee and the additional fee are not paid within 6 months following the due date, the application will be deemed invalid. In accordance with the IP Code, the application may become valid again by paying the compensation fee within two months following the notification made by the Office to the applicant that the patent right has expired.

Termination of patent

According to Article 140 of the IP Code, a patent right will terminate upon expiration of the 20 years protection term, waiver of the patent right or failure to make annual fee payments. The termination will have a prospective effect, in contrast to the retroactive effect of invalidation.

Invalidity of the patent on the other hand has a retroactive effect and the patent right will deem to have never existed. As per Article 138 of the IP Code, patent invalidity actions can be filed against the person recorded as the patent owner in the Register during the term of the patent and within five years after the patent has expired before the competent Courts.

Infringement

A patent infringement action can be filed against the direct infringers of a patent (Article 141, IP Code). The direct infringer of a patent is the person who:

1. Produces the patented product wholly or partially;
2. Knows or should have known that the product is a complete or partial imitation of a patented product and sells, distributes, carries, or trades in the infringing product;
3. Uses a patented method or commercializes a product that is directly produced as a result of the patented method;
4. Without permission or assignment of rights, grants a licence to a third party, or usurps patent rights; and
5. Seizes the patent rights.

The claimant must establish that the defendant committed at least one of the acts described above.

A patent owner can also prevent third parties from providing the elements and instruments that enable the implementation of the patented invention and constitute the essence of the invention to persons who are not authorised to use the patented invention (Article 86, IP Code). The third party must have known that these elements or instruments were sufficient to implement the invention and would be used for these purposes. However, this does not apply when the means or tools are always available on the market (unless the third party induces the other party to perform or execute the patented invention).

On the other hand, there are currently no provisions on inducement of infringement.

The doctrine of equivalents is governed by Article 89/5 of the IP Code. In determining the scope of protection conferred by a patent, the elements performing substantially the same function, performing that function in a substantially similar manner, and giving the same result as the element as expressed in the claim(s), should generally be deemed to be equivalent to the elements as expressed in the claim(s). Finally, there is no criminal enforcement of patent rights under Turkish Law.

Infringement action should be filed against the party who engaged with the infringing act before the competent Courts. A claim for patent infringement may be raised as long as the infringement and the protection term of the patent continue. However, if there is a terminated infringing act at stake, according to Article 72 of the Turkish Code of Obligations, the infringement action has to be filed within two years as of the date of notice of the terminated infringing act and within ten years as of the notice of the infringing act in any case.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.