Introduction
Turkish court system for IP litigation
Choosing between litigation and ADR
Mediation for patent disputes in Turkey
Singapore Convention
Other ADR methods
Since the Mediation Act entered into force in 2013, Turkey – which has a well-established legal system with national and international tools that enable the use of arbitration and the enforcement of arbitration awards – has been focusing on mediation to encourage parties to use out-of-court settlement. Turkey first enacted legislation regarding voluntary mediation and then gradually introduced mandatory mediation rules in some areas, including IP matters. This article focuses on the use of mediation for patent disputes.
Turkish court system for IP litigation
Turkey has specialised IP courts established in Istanbul, Ankara and Izmir, which have jurisdiction over all IP matters, including patent disputes. Other cities have specific first-instance courts that are designated as specialist IP courts. These specialised courts comprise one judge, who does not have a technical background but is experienced in IP disputes.
In practice, Istanbul is the city in which the highest number of patent litigation matters are filed, as it is the city in which the highest number of agents of foreign IP right holders are domiciled and the central city for most industrial activities. The Istanbul IP courts have been involved in the most complex patent disputes and have handed down decisions shaping the patent litigation environment.
Turkey has a three-instance court system and civil procedure, consisting of the court of first instance, the regional appellate court and the Supreme Court. Depending on the complexity of the matter and the rounds of expert examination by the panel of experts during the proceedings, a straightforward patent litigation action can take between around 24 and 36 months from the filing of the action up to the court of first instance's decision. A similar time period can be also considered for appeals before the regional appellate court and the Supreme Court.
Choosing between litigation and ADR
The aim of a patentee whose patent has been infringed is to obtain a court ruling as soon as possible in order to avoid the saturation of the market with the infringing product or technology. A quick outcome is also crucial in the context of rapid technological developments, in which patents and protected innovation can become outdated. Needless to say, patents grant a limited period of exclusivity (ie, 20 years of protection), so they must be efficiently utilised.
However, patent disputes inherently involve technical complexity. While such complexity might be relatively low for a simple mechanic dispute, it can dramatically increase with respect to an IT or biotechnology dispute. Such disputes require additional sophisticated technical expertise during the litigation proceeding. Patent disputes can also involve trade secrets – know-how that needs to be kept strictly confidential during the litigation – and they may also involve more than one jurisdiction with respect to the patented technology, which can be costly for the parties.
In light of these characteristics of a patent dispute, opting for ADR methods can enable a patentee to:
- obtain a speedy outcome;
- benefit from confidentiality;
- take advantage of a more flexible procedure; and
- have control over the selection of the technical experts.
Implementing a well-structured mediation procedure benefits not only the patentee but also the adverse party.
Mediation for patent disputes in Turkey
The Turkish Mediation Act, which entered into force on 22 June 2013 introduced the mediation procedure as an ADR method. The legislation provided that the settlement agreements received at the end of the mediation would have the effect of a court verdict upon their certification by the court. On 1 January 2019, an amendment to the Code of Commerce resulted in the implementation of the mediation procedure before instituting a court action becoming mandatory for all types of commercial disputes involving the collection of receivables or compensation claims, including:
- patent infringement actions involving compensation claims;
- disputes with regard to the payment or calculation of remuneration of employee inventions and employee designs; and
- disputes with regard to licence agreements.
Actions in which both parties are non-merchants are exempted. In other words, if both parties of a patent dispute are non-merchants – namely, if the case is between two real people, which is unlikely – the plaintiff will be able to institute the action without commencing mandatory mediation.
The following actions are not affected by the mandatory mediation requirement:
- actions for the determination of evidence;
- actions involving preliminary injunctions and/or permanent injunctions; and
- the seizure and destruction of infringing products and/or machinery where there is no separate compensation request claimed within the context of the same action.
The mandatory mediation procedure will also not apply if arbitration or other ADR methods are required under specific laws or if the parties to a dispute have already agreed to an arbitration agreement. The existence of the mandatory mediation rules does not prevent parties from using the voluntary mediation procedure for patent infringement claims, regardless of whether monetary relief is involved.
On 25 February 2021, Turkey ratified the United Nations Convention on International Settlement Agreements Resulting from Mediation (the Singapore Convention), which is expected to be in force by 22 October 2021. The Singapore Convention enables the enforceability of foreign commercial settlement agreements, including patent disputes, in Turkey. Being party to the Singapore Convention will evidently improve the value of settlements obtained through the World Intellectual Property Organization ADR procedure, which offers effective mediation carried out by specialised neutrals with deep IP expertise, by enabling such settlements to be enforced.
Article 35 of the Turkish Attorney At Law Act provides the possibility for the attorneys of the two parties to settle the matter before the litigation or at an early stage of the litigation before the first hearing is held. The settlement agreements concluded and signed by the parties and their attorneys will again have the effect of a verdict, provided that they meet the simple procedural requirements set out in article 35. This option is also another valuable remedy in patent disputes – it is fairly simple and does not require the involvement of any mediator.
For further information on this topic please contact Okan Can or Kerim Yardimci at Deriş Patents and Trademarks Agency by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deriş Patents and Trademarks Agency website can be accessed at www.deris.com.