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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.

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