At a glance: patent enforcement proceedings in Turkey

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Patent rights are enforced by an infringement action against the alleged infringers before the competent court. These rights can be enforced before the specialist IP courts. The specialist IP courts can handle IP-related lawsuits. However, IP courts exist only in larger cities (Istanbul, Ankara and Izmir). If there is no IP court in a city, the Third Chamber of the Civil Courts of First Instance (or the First Chamber where fewer than three chambers exist) can handle such lawsuits.

Infringement actions are generally started with a preliminary injunction claim and the discovery and determination of evidence, tools that are set out in the Civil Procedural Law.

To seek preliminary injunctions, the proceedings generally start by using these tools, which are effective during infringement actions, to:

• reserve the final result that the plaintiff hopes to achieve; or
• collect evidence for complex patent cases.

These tools can be used either before or during trial.

Within the scope of an infringement action, right owners can claim damages or request:

• destruction of infringing products;
• confiscation of manufacturing tools; or
• publication of the judgment.

What is the format of a patent infringement trial?

The procedure and format of the patent infringement trial are set in accordance with Civil Procedural Law No. 6100 (the CPL).

Civil proceedings are initiated by the plaintiff submitting a complaint brief to the court. If there is a preliminary injunction (PI) request, the court evaluates this request as a first step and generally schedules a hearing. After the evaluation, the court decides to schedule a hearing date in order to decide in the presence of both parties. The court may also decide to convene an expert panel to examine the details of the conflict further before granting a PI. This is to say the court does not examine the PI request as a first step and leaves it to the investigation phase. Upon the completion of the preparation and PI examination, the exchange of petitions starts. The defendant responds to the complaint brief of the plaintiff and the plaintiff files its counter arguments. The defendant’s submission to the counterstatement concludes the ‘exchange of petitions’ phase.

At the end of the exchange of petition phase, the preliminary examination phase starts. During the preliminary examination, the court examines the conditions of the conflict between the parties. This examination is considered as a preparation for the analysis of the merits of the case.

After the preliminary examination phase, the investigation phase starts. The court evaluates evidence that is submitted by the parties and investigates the accuracy of the facts alleged by the parties.

For the purpose of examining the accuracy of the submitted documents, the court confers with an expert witness.

After the expert witness report is delivered to the parties, the parties are entitled to file comments or objections against the report. Prior to the court’s decision, the court evaluates the report and the parties’ comments. If the court deems the report is sufficient, it does not ask an explanation and concludes the investigation phase. However, if the report is not sufficient, further explanation can be requested from the expert, or other experts can be appointed.

After the investigation phase concludes, the judgment phase starts. During this final phase, the judge renders a decision after the examination of the accuracy of the claims.

The parties are free to submit any evidence to the court, unless a certain proof is required by law. There is no such limitation for patent infringement lawsuits. Therefore, expert opinions, witnesses or any documentation can be relied upon. The Turkish legal system does not recognise affidavits as evidence, but these can be considered as discretionary evidence. Site visits, discovery visits and determination of evidence proceedings are effective and commonly used tools to collect and preserve evidence either before or during the trial.

While cross-examination is not available, the court can, in principle, allow the parties to address questions to the counterparty through the Court. Additionally, one judge is appointed for each IP court. Jury trials do not take place in the Turkish legal system.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

As per article 190 of the CPL, the burden of proof belongs to the party that derives a right in its favour from the legal result linked to the alleged fact In patent infringement, invalidity and unenforceability actions, this party is the plaintiff. Therefore, the burden of proof is on the plaintiff. However, this does not affect the responsibility of the defendant to rebut the arguments of the plaintiff and defend its position through filing its own evidence supporting its claims

According to article 141/2 of the Industrial Property Law No. 6769 (the IPL), if the subject of a patent is related to a process for obtaining a product or material, the court may ask the defendant (instead of the plaintiff) to prove that the process used for obtaining the same product or material was different from the patented process.

As per article 150/3 of the IPL, before instituting a legal proceeding for compensation related to infringement of an industrial property right, to determine the evidence or if a legal proceeding for compensation has been instituted, the right owner may, to determine the amount of damages, ask the court to order the person responsible for compensation to submit to the court the documentation related to the use of the industrial property right.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The owner of the patent rights can bring a lawsuit for infringement. An exclusive licensee is also entitled to file an infringement action, unless otherwise agreed in the licence agreement. A non-exclusive licensee can request the patent owner to file an action against a patent infringement, unless it is stated otherwise in the agreement. If the patent owner does not take the requested action within three months, the non-exclusive licensee can file the action him or herself.

As per article 154 of the IPL, anyone who has an interest may request the right owner to provide his or her opinion about whether or not commercial or industrial activities being carried out or to be carried out or serious and actual attempts carried out for these purposes in Turkey would cause an infringement of his or her industrial property right. If no opinion is provided within one month after notification of this demand or if the opinion given is not accepted by the interested party, the interested party may institute a legal proceeding against the right owner for a decision on non-infringement. The claimant has to prove its legal interest for filing an action for a non-infringement declaration. The submission of an opinion by the right holder is not a prerequisite for the legal proceeding to be instituted.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Indirect use is not explicitly defined as an infringing act in the IP Law. Article 141 does not list indirect use as an act of infringement. However, article 86 gives the patent owner the right to prevent such indirect use. Accordingly, the patent owner can seek protection against parties inducing or contributing to patent infringement.

Article 86 sets forth that:

The patent owner is entitled to prevent third parties from giving the elements and instruments related with a part of invention which enables the implementation of the invention which is subject to the patent and constitutes the essence of the invention, to persons who are not authorized in the use of the invention which is subject to the patent. It is necessary for the referred third persons to know that these elements or instruments are sufficient to implement the invention and that they will be used for these purposes or this condition should be sufficiently clear for this provision to be applicable.

The patent owner can seek protection against multiple parties jointly – provided that the situation meets the conditions in article 86 and the requirements of the procedural law.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

In accordance with article 57 of the Procedural Law, if the facts and the legal basis of the lawsuits are identical, multiple parties can be joined as defendants. Since the facts and the legal basis of the lawsuit must be identical, the defendants must be accused of infringing the same patent.

Therefore, separate actions will constitute separate facts for the lawsuits.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside Turkey do not directly constitute patent infringement in Turkey. The principle of territoriality applies to patents too. Having said that, the patent right owner is entitled to prevent infringing products to be imported or exported. Third parties can have a significant role in the course of import and export activities depending on the extent of their involvement.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

The doctrine of equivalents is applied in Turkey. As per article 89/5 of the IPC, when determining the scope of protection, all elements equivalent to those defined in the claim are also considered. If an element performs the same function in the same way and provides the same result as the one specified in a claim, that element is accepted as equivalent.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Article 400 of the CPL describes the procedures for determination of evidence. In accordance with this article, either party is entitled to request the court to conduct a site visit, discovery visit, expert examination or hear a witness on the condition that the requesting party has a legal benefit in filing such a request. The condition of the legal benefit is met if the evidence may be lost or is very difficult to set forth unless it is immediately secured.

The determination of evidence is requested through a petition before or during the action. The determination of evidence is a preliminary measure and therefore conducted immediately. The counterparty has the right to oppose the determination of evidence decision of the court within one week as of the notification date of the decision. If the counterparty does not oppose it, the determination of evidence is performed. Generally, the experts are given one month to prepare the report on the evidence after determination. The report should not include any conclusions as to the merits of the case, but should simply state the existing situation. During the determination of evidence procedure, no evidence including the infringing products are seized.

Under article 288 et seq of the CPL, the court may decide to conduct discovery, ex officio or upon the request of one of the parties. The court may hear witnesses or experts during the discovery.

Moreover, according to article 150/3 of the IP Law, the right owner, before initiating a patent infringement lawsuit claiming compensation, can ask the court to request the documents regarding the use of the patent to be submitted by the accused infringer, for the determination of evidence or to calculate the damages.

Because the jurisdiction of the Turkish courts is limited to the borders of the Republic of Turkey, the courts cannot directly order evidence to be seized or brought from abroad. However, Turkey is also a signatory of the Hague Evidence Convention on obtaining evidence from abroad. Therefore, certain evidence can be collected through the help of this convention and reciprocity principles.

The parties may also bring foreign official documents if the documents are legalised by the foreign government issuing the document.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

First-instance court judgments take approximately 18 months to two years in straightforward patent infringement cases. In complex patent cases, this procedure can take longer.

The decisions of the first instance courts can be challenged before the regional courts. The parties submit another set of petitions for the appeal phase. The regional court may invite the parties for a hearing if it deems it necessary. The decisions of the regional courts can be challenged before the Court of Appeals.

The appeal procedure before the regional court takes around one to one-and-a-half years.

The appeal procedure before the Court of Appeals also takes another one to one-and-a-half years. Consequently, civil actions take around 3.5 to five years until they are finalised.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Prior to initiating a lawsuit, the parties may choose to send cease and desist letters through public notaries. The official notary cost is approximately 600 Turkish lira.

In general, the plaintiff bears the litigation costs until the end, and if it is successful, the losing party then bears the official litigation fees and official attorney fees of the counterparty. In first instance, the official fees and expenses including the expert fee for patent actions without compensation damages are around €1,000 to €2,000. If there is more than one expert panel appointed in the file, the costs may increase. For appeals handled by the regional courts, the official fees and expenses are around €1,000. If an additional expert report has to be obtained before the regional courts, the costs may increase. For appeals handled by the Court of Appeal, the official fees and expenses are around €1,000. Professional attorneys’ fees may vary depending on the complexity of a case.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

First instance court decisions can be challenged before the regional courts.

The regional courts conduct a full review of the lawsuit, including legal and factual review. However, the parties cannot submit new evidence and cannot put forward new facts at this stage unless it is provided that the court has not considered the evidence or determined that it is not relevant, or the evidence has not been submitted earlier on for force majeure reasons.

The decisions of the regional court can be challenged before the Court of Appeal. The examination before the Court of Appeal is limited to the legal review of the case. Therefore, the Court of Appeal examines whether the law has been applied correctly to the case and new evidence cannot be submitted.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

In principle, enforcement of a patent does not constitute a competition violation, since using a legal right cannot be considered as unlawful according to the Constitution. However, the patent owner can be liable in the case of an abuse of a right, which results in unfair competition and business-related tort.

If infringement actions are linked to abusive behaviours of market domination, then company competition violation issues will arise. Standard essential patent-based infringement actions may lead to competition violations.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration, mediation and out-of-court settlements are possible alternative dispute resolution methods; however, they are not as effective as court proceedings. Moreover, mediation has become a prerequisite for filing lawsuits concerning commercial disputes with monetary claims. Therefore, before initiating a lawsuit including monetary claims, the parties must meet at mediation proceedings.

Law stated date

Give the date on which the information above is accurate.

17 March 2021.