Existing legislation

Article 84 of Decree-Law 551 on Patents and Utility Models states that where a patent concerns the manufacture of "new products" or substances, any product or substance with the same properties will be deemed to have been obtained using the patented process, unless proven to the contrary. The burden of proof lies with the parties claiming the contrary.

In contrast, Article 136 provides that where a patent is obtained for the production or preparation of "a product", all products with the same properties will be deemed to have been manufactured using the patented process. The defendant claiming that it manufactured or produced the product without infringing the patented process will have the burden of proving such a claim.

Proposed changes

Article 141(2) of the draft IP law states that where a patent is obtained for the production or preparation of a product or substance, the court may request proof from the defendant that the product with the same properties has been produced or manufactured without infringing the patented process.

Where a patent is obtained for the production or preparation of a new product or substance, all products with the same properties will be deemed to have been produced or manufactured using the patented process. The defendant claiming that it manufactured or produced the product without infringing the patented process will have the burden of proof of proving such a claim.

Comment

Articles 84(2) and 136(2) of Decree-Law 551 are contradictory, as Article 84(2) refers to a "new product", whereas Article 136(2) does not. These provisions cause confusion in practice regarding when the burden of proof should shift to the defendant.

The draft IP law includes an article which removes this contradiction and is in line with Article 34 of the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Under Article 141(2) of the draft IP law, courts will have the discretion to shift the burden of proof where the infringed patented process is unconnected to a new product; whereas if the infringed process relates to a new product, the burden of proof will rest with the defendant.

For further information on this topic please contact Muhlise Aydin or Okan Çan at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122) or email (maydin@deris.com.tr or ocan@deris.com.tr). The Deris website can be accessed at www.deris.com.tr.

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