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Applying for a patent
Patentability What are the criteria for patentability in your jurisdiction? Novelty, an inventive step and industrial applicability.
What are the limits on patentability? The following are not regarded as inventions under Article 6(1) of Decree-Law 551 Pertaining to the Protection of Patent Rights:
- scientific theories;
- mathematical methods;
- schemes, methods and rules for performing mental acts, playing games and doing business;
- literary, scientific and aesthetic creations;
- computer programs;
- methods relating to the collection and presentation of information that have no technical aspect; and
- surgical or therapeutic methods for treating humans or animals and diagnostic methods practised on humans or animals.
The following cannot be patented under Article 6(3) of the decree-law:
- inventions whose subject matter is contrary to public order or morality; and
- plant and animal varieties or essentially biological processes for the production of plants or animals.
To what extent can inventions covering software be patented? Computer programs are not regarded as inventions under Decree-Law 551 Pertaining to the Protection of Patent Rights. However, no regulation dealing specifically with the patentability of software exists and the Patent and Trademark Office’s approach is similar to that of the European Patent Office. Therefore, while a computer program is not patentable as such under Article 6(1) of the decree-law, patents can be granted for software-related inventions and computer-implemented inventions, provided that a technical problem is solved in a novel and non-obvious manner. There is no limitation on the validation of European-granted patents regarding Turkish computer-implemented inventions.
To what extent can inventions covering business methods be patented? Business methods are not regarded as inventions under Decree-Law 551 Pertaining to the Protection of Patent Rights. However, no regulation dealing specifically with the patentability of business methods exists, and the Patent and Trademark Office’s approach is similar to that of the European Patent Office. Thus, while pure business methods as such are not patentable under Article 6(1) of the decree-law, a claimed business method involving technical means may be patentable.
To what extent can inventions relating to stem cells be patented? Under Decree-Law 551 Pertaining to the Protection of Patent Rights, patents will not be granted for inventions whose subject matter is contrary to public order or morality. No regulation dealing specifically with the patentability of inventions relating to stem cells exists.
The draft IP law proposes that the “use of human embryos for industrial or commercial purposes” be made an exception to patentability. This is in line with the EU Biotech Directive (98/44/EC), implemented as Article 53 and Rule 28 of the European Patent Convention.
Are there restrictions on any other kinds of invention? No other specific restrictions exist under Decree-Law 551 Pertaining to the Protection of Patent Rights.
Grace period Does your jurisdiction have a grace period? If so, how does it work? A 12-month grace period precedes an application’s filing date or, when priority has been claimed, its priority date. Under Article 8 of Decree-Law 551 Pertaining to the Protection of Patent Rights, disclosure within this period will not affect the application’s novelty if the information is disclosed:
“a/ by the inventor, b/ by an office when the information was contained:
- in another application filed by the inventor and which application should not have been disclosed by the office, or
- 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 or,
c/ by a third party which obtained the information directly or indirectly from the inventor.”
Oppositions What types of patent opposition procedure are available in your jurisdiction? Decree-Law 551 Pertaining to the Protection of Patent Rights prohibits post-grant oppositions against patents granted in Turkey. The only type of post-grant procedure available to third parties is bringing an invalidity action before the competent courts. However, the draft IP law proposes a major change by introducing a post-grant opposition procedure. Under the draft law, a third party may file an opposition against a patent granted within six months of its publication. Once the opposition has been filed, the Patent Institute will notify and invite the patentee to submit its opinion or amend its patent application. Both the opposition and the patentee's opinion and amendment will be examined by aboard of the Patent Institute. The board’s composition and other procedures will be clarified by the law’s implementing regulations.
Apart from oppositions, are there any other ways to challenge a patent outside the courts?
Under Decree-Law 551 Pertaining to the Protection of Patent Rights, third-party observations can be filed within six months of a search report’s publication in the Official Bulletin. Taking into consideration the observations, the applicant can restrict the scope of the claims or withdraw the application (depending on the pertinence of the cited prior art).
The applicant can also ignore the observations and request an unexamined patent with a seven-year protection period. Such a request will not require substantive examination and will be published in the Official Bulletin, giving third parties a chance to request examination of the application and file their observations. A major change introduced by the draft IP law is the removal of the seven-year patent system. Third-party observations cannot be filed at any other stage of the grant procedure, including during the examination procedure.
How can patent office decisions be appealed in your jurisdiction? Patent and Trademark Office decisions can be brought to the attention of the Board of Re-examination and Evaluation, which acts as a type of appeal board. However, decisions pertaining to substantive issues such as patentability do not generally deviate from the findings of the examination reports. Therefore, the board mostly reviews procedural matters, such as whether a procedural violation occurred during the grant procedure. Board decisions can be appealed before the Ankara Civil IP Court.
Timescale and costs How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for? Filing stage The filing stage includes:
- the official filing fee of approximately €12; and
- the official search fee, which ranges from approximately €92 to €2,946, depending on the authority that conducts the search. This is usually the Patent Institute, but in the rare event that it is incapable of conducting the search for a specific invention, a foreign patent and trademark office might do so on its behalf.
No additional fees exist, including for additional claims or description pages.
Examination stage The examination stage comprises three rounds:
- An applicant must file an examination request by paying the first examination fee.
- If the first examination report is negative, the applicant will be invited to respond to the first examination report and pay the second examination fee.
- If the second examination report is negative, the applicant will be invited to respond to the second examination report and pay the third examination fee.
The total amount of examination fees for the three rounds ranges from approximately €122 to €3,304, depending on the authority that conducts the examination. This is usually the Turkish Patent Institute, but in the rare event that it is incapable of conducting the examination for a specific invention, a foreign patent and trademark office might do so on its behalf.
Grant stage The grant stage includes the official grant fee of approximately €89.
Total cost The official cost of obtaining a Turkish patent (from the filing stage through to the grant stage) ranges from approximately €226 to €6,262.
Renewal fees Turkish patent applications are subject to annual renewal fees from the second year following the date on which the application was filed. Official renewal fees from the second year to the 20th year range from €62 to €550.
It takes approximately three to four years after filing an application for a patent to be granted (with substantive examination). This maybe longer, depending on the examination rounds and the outcome of the examination reports.
Enforcement through the courts
Strategy What are the most effective ways for a patent owner to enforce its rights in your jurisdiction? Rights holders can institute the following actions before the competent courts:
- Evidential action – before a main civil action is instituted, evidential action can be instituted before the IP courts to determine the infringing act and supporting evidence. This is a non-adversarial action that can be conducted ex parte depending on the court’s discretionary competence in this regard. An affirmative decision of such action will serve as evidence in the consequential main civil action.
- Main infringement action – rights holders can request permanent or preliminary injunction compensation for damages in the main civil proceedings. They can also request the seizure and destruction of the infringing products during such action.
- Customs measures – Turkey enacted border measures in 1999 through the Customs Act (4458). On the basis of this act, Customs can suspend the formalities for the release of goods that are thought to be infringing patent rights during the routine clearance procedure (either ex officio or on request). In such event, rights holders will be entitled to record their patents before the Ministry of Customs.
- Preliminary injunction – under the Civil Procedural Law, a rights holder can request a preliminary injunction order at any time during the proceedings in the event of an imminent threat of serious or irreparable damage.
What scope is there for forum selection? The competent courts for patent litigation are the specialist civil IP courts in Ankara, Istanbul and Izmir. Where no specialist IP courts have been established, the competent courts are the civil first-instance courts.
Infringement actions Patent infringement actions can be instituted against third parties by rights holders before the competent courts where:
- the rights holder is resident;
- the infringement occurred; or
- the effect of the infringing act occurred.
If the defendant is not domiciled in Turkey, the infringement action must be filed before the court where the empowered registered patent agent’s business premises are located.
The Ankara Civil IP Court is the competent court for cases where the patent agent’s membership has been cancelled.
Invalidity actions Patent invalidity proceedings can be instituted before the competent court in the defendant’s domicile.
If the plaintiff is not domiciled in Turkey, the invalidity action must be filed before the court where the empowered registered patent agent’s business premises are located.
The Ankara Civil IP Court is the competent court for cases where the patent agent’s membership has been cancelled.
Parties may select the forum for court actions arising from an agreement between them.
Pre-trial What are the stages in the litigation process leading up to a full trial? The pre-trial stages are as follows:
- Cease-and-desist letter – the rights holder may start proceedings by serving a cease-and-desist letter to a third party requesting the cessation of an infringing action and informing the third party of its registered patent rights. If the patent application has not yet been published, the applicant must serve a cease-and-desist letter to notify infringing third parties of the application and its scope before initiating civil proceedings.
- Evidential action – an evidential action can be filed before the IP courts to determine the infringing act and the evidence that can be established. This is a non-adversarial action that can be conducted ex parte depending on the court’s discretionary competence in this regard. An affirmative decision of such action will serve as evidence in the following civil action.
- Preliminary injunction – the rights holder can request a preliminary injunction either independently or within the context of an evidential action before the main infringement action. The preliminary injunction request should be evidenced prima facie with substantial evidence.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The Code of Civil Procedure, which came into force in October 2011, shortened the period in which parties can reply to court action. On receipt of an interim court decision, petition or expert report, the receiving party has two weeks to submit its response.
Under the code, a defendant can request from the court an extension of up to one month to reply to court action. According to existing practice, judges do not grant extensions unless justified reasons can be provided. The typical length of granted extensions is two weeks.
Conversely, defendants can lengthen proceedings by:
- objecting to the panel of experts selection;
- objecting to expert reports; and
- submitting an extensive list of prior art.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it? A party anticipating that an infringement action may be issued against it may directly file an invalidity action against the rights holder before the applicable courts. The party claiming invalidity does not have to fulfil any pre-trial conditions.
Conversely, the party facing an infringement action may file a counter invalidity action against the plaintiff during the two-week response period.
Further, although unrelated to validity, an alleged infringer can file a declaratory non-infringement action against the rights holder to determine that its actions or products do not infringe the patent.
At trial What level of expertise can a patent owner expect from the courts? The competent courts for patent litigation are the specialist civil IP courts. Where no specialist civil IP court has been established, the competent courts are the civil first-instance courts.
While judges may have IP experience, they have no technical background. Thus, the claim is usually referred to a panel of experts – comprising two technical experts and one patent attorney – for technical evaluation.
Are cases decided by one judge, a panel of judges or a jury? At first instance, cases before the specialist IP courts are decided by one judge.
Cases before the mid-level appeal court are decided by one judge or a panel of judges.
Cases before the Supreme Court are decided by a panel of judges.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury? Not applicable.
What role can and do expert witnesses play in proceedings? Because judges have no technical background, courts receive technical support in the form of reports issued by court-appointed experts. These reports are not binding on the judge and can be contested by the parties. The courts can request additional reports from the same panel of experts or new reports from a new panel of experts.
Does your jurisdiction apply a doctrine of equivalents and, if so, how? Article 83 of Decree-Law 551 on the Protection of Patent Rights states that:
“The scope of protection conferred by an application for patent or a patent shall be determined according to the claim(s). Claims shall be interpreted in consideration of the description and drawings.
Claims shall be interpreted in such a manner so as to permit, on the one hand, a fair protection for the rights holder of an application for patent or of a patent, while, on the other hand, providing a reasonable degree of certainty to third parties on the scope of protection.”
Under Article 83(5), the infringement of an element of a patented product that is equal to the elements expressed in the patent claim will be considered an infringement.
The doctrine of equivalents is applied through a function-manner-result test. The element of a product may be considered to infringe if it matches the function, manner and result of the element expressed in the patent claim.
Is it possible to obtain preliminary injunctions? If so, under what circumstances? Article 151 of Decree-Law 551 on the Protection of Patent Rights states that:
“Persons who intend to or have instituted proceedings as prescribed by this present Decree-Law, in order to ensure the effectiveness of the (main) action, may appeal the court to order preliminary injunctions provided that they bring evidence as to the existence of acts of actual use in Turkey of the patent or serious and effective preparations to use the patent against which the action is instituted, which would constitute an infringement of the plaintiff’s patent right.”
A rights holder claiming that its patent is likely to be infringed can obtain a preliminary injunction at the outset of the infringement action only if it can prove that there is clear evidence of the infringement’s preparation.
However, courts can be reluctant to order preliminary injunctions at the outset of an action before they have examined the patent and determined whether the infringing activity falls within the scope of the third-party activity.
Preliminary injunction requests can be accepted against a bond, which can be deposited in cash or in the form of a bank guaranty letter.
In accordance with legislation and general practice, defendants can also request that a court issue a so-called ‘reverse injunction’ allowing the defendant to continue its disputed operation or activity without being challenged on payment of a bond against the plaintiff’s possible loss at the end of the litigation. If the plaintiff’s request is accepted, the plaintiff will be able to recover its damages from the bond. If the plaintiff’s action is rejected, the bond will be returned to the defendant. Courts will consider the use of such bond where invalidity is likely after considering the balance of the parties’ interests.
In practice, courts are generally conservative in issuing preliminary injunction orders and usually refrain from doing so until an expert report has been obtained from a court-appointed panel of experts. Therefore, it is recommended that parties obtain private expert reports at the outset to support their claims, which could also be considered by the court-appointed panel of experts. The preliminary injunction decision may order the cessation of the infringing activity and the seizure of the infringing products. In some cases, the court may order the defendant to pay a guaranty as security against the rights holder’s losses.
How are issues around infringement and validity treated in your jurisdiction? Turkey does not have a bifurcated system like Germany; patent invalidity and infringement actions can be heard by different IP courts. The decision of one action will affect the outcome of the other.
The following are examples of patent infringement and invalidity cases:
- The plaintiff files an infringement action against the defendant before the court. The defendant has two weeks to file a counter invalidity action before the court. The court will decide on both the invalidity and the infringement in the same action.
- The plaintiff files an infringement action against the defendant before the court. The defendant files an independent invalidity action before a different court. The second court can use its discretion to send the case to the first court to be handled jointly with the infringement action – either ex officio or on request of one of the parties. If the second court does not combine the invalidity action with the infringement action, the defendant can wait to see the outcome of the invalidity action.
- The plaintiff files an invalidity action against the defendant before the court. The defendant files an infringement action before a different court. The second court can use its discretion either to combine the infringement action with the invalidity action or wait until the outcome of the invalidity action is finalised.
The courts (including the Supreme Court) generally wait for an invalidity action to be finalised before issuing a final decision concerning the infringement. However, although a pending invalidity action diminishes the chances of a patent holder obtaining a preliminary injunction, it does not prevent the court from issuing a preliminary injunction during an infringement trial.
Will courts consider decisions in cases involving similar issues from other jurisdictions? Decisions in similar cases in other jurisdictions are not binding on the courts, but can be considered as discretionary evidence.
Damages and remedies Can the successful party obtain costs from the losing party? The losing party must pay the successful party’s official judicial and attorney fees. The total cost of a straightforward patent infringement and invalidity action with one round of expert examination is between $2,500 and $3,000. If the parties have requested the payment of damages, the amount of attorney fees will gradually increase according to the amount of compensation.
What are the typical remedies granted to a successful plaintiff? In civil proceedings compensation can be sought for material, moral and reputational damages.
How are damages awards calculated? Are punitive damages available? Material damages can be claimed for both lost profits and the non-realised income resulting from a patent infringement. This type of damage is regulated under Article 140 of Decree-Law 551 on the Protection of Patent Rights, which reads:
“The damage/prejudice suffered by the proprietor of the patent includes, not only the value of the effective loss, but also includes the income non-realized because of the infringement of the patent right.
The non-realized income shall be calculated in accordance with one of the following evaluation methods, on the option of the proprietor of the patent who has suffered damage/prejudice:
a) According to the income that the proprietor of the patent might have possibly generated if the competition of the infringing party did not exist;
b) According to the income generated by the infringing party from the use of the patent;
c) According to a license fee that would have been paid if the party, infringing the patent right, would have lawfully utilized the patent under a licensing contract.
In calculating the non-realized income, circumstances having effect on the case, such as, in particular the economic value of the patent, the term of protection remaining at the time of infringement, the type/nature and number of licensees granted in respect of the patent shall be taken into consideration.
Where the court is of the opinion that the rights holder of a patent has not fulfilled its obligation to use the patent, in compliance with the provisions of this present Decree-Law, the non-realized income shall be calculated according to subparagraph (c) of paragraph i.e. according to the exemplary license calculation.”
The decree-law does not enable rights holders to request punitive damages.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If a court finds that an infringement has occurred it will be expected to issue a permanent injunction with the rights holder’s other claims (ie, for compensation).
Timescale and costs How long does it take to obtain a decision at first instance and is it possible to expedite this process? The first-instance stage of a straightforward court action in which the court engages in two rounds of expert examination generally takes between 18 and 24 months. Each round of expert examination may lengthen the first-instance stage by two to three months.
While plaintiffs can expedite the trial by diminishing the request of time extensions, this cannot have a substantial effect on the total time.
How much should a litigant plan to pay to take a case through to a first-instance decision? To take a case through to a first-instance decision, plaintiffs should expect to pay between $30,000 and $70,000, depending on the litigation’s complexity.
Appeal Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? As of July 20 2016 the appellate courts have handled cases in the second instance in order to reduce the Supreme Court’s caseload and ensure consistent jurisprudence. The legal framework is summarised below.
First instance – specialised IP court:
- One judge with IP experience;
- Assessment in fact and in law;
- Court-appointed panel of experts (often more than one round);
- Several oral hearings;
- Limited recoverable costs; and
- 18 to 24-month duration.
Second instance – appellate (district) court:
- Appeal (after two weeks);
- Three judges with IP experience;
- Assessment in fact and in law;
- No panel of experts;
- New arguments or new pieces of evidence accepted only in specific situations;
- Oral hearing available in principle (except in specific conditions);
- Limited recoverable costs; and
- Duration to be determined.
Third instance – Supreme Court (Court of Cassation):
- Appeal (after one month);
- Five judges;
- Assessment of points of law only;
- One oral hearing;
- Limited recoverable costs; and
- 15 to 24-month duration.
Options away from court Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts? The following dispute resolution options are available to parties that believe their patents have been infringed.
Mediation The Mediation Law was enacted on June 23 2013. Mediation is a voluntary process to be attended by the parties. Parties may enter into a mediation process during or before a patent litigation process. The proposal for mediation can be triggered by either party or the court. A protocol will be signed as the outcome of the mediation proceedings. The signed protocol will be ratified and annotated by the national courts in order to ensure that its effect and enforceability are binding.
Arbitration Arbitration is governed by the Code of Civil Procedure and is an alternative dispute resolution mechanism. The arbitration process for IP matters is a voluntary alternative dispute resolution process. The arbitration process can be initiated directly or under the provision of an arbitration agreement. The arbitration award is enforceable with the effect of a court order without detailed execution requirements.
Out-of-court settlement Under the Attorneys Act, attorneys at law can prepare out-of-court settlement agreements on the request of the disputing parties, which will be binding as an executable verdict in the event that the parties and the attorneys jointly sign the agreement.