In brief: patent prosecution in Turkey

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to the Industrial Property Law (IPL), the following are not considered inventions:

• scientific discoveries and theories;
• mathematical methods;
• schemes, methods and rules for performing mental acts, playing games and doing business;
• computer programmes;
• literary, scientific and aesthetic works or creations; and
• presentations of information.

Further, under the IPL, the following inventions are considered non-patentable:

• inventions that are contrary to public order or morality;
• inventions concerning plant or animal varieties or essentially biological processes for the production of plants or animals, excluding the microbiological processes or the products thereof;
• diagnostic methods that are practised on humans or animals and all such treatment methods, including surgical methods;
• the human body at various stages of its formation and development and the discovery of one of its elements, including the sequence or partial sequence of a gene; and
• the use of human embryos for industrial or commercial purposes, including processes for:

• • cloning human beings;
  • modifying the germline or genetic identity of human beings; and

• modifying the genetic identity of animals in ways that are likely to cause them suffering without any substantial medical benefit to humans or animals.

Article 82 of the IPL establishes that business methods or computer programs are not inventions. Therefore, inventions that only comprise software or business methods cannot be patented. However, inventions including business methods or computer programs together with the other patentable elements can be patented.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

As a rule, the owner of the invention is the person who invented the invention or his/her successors. If the invention is created by multiple persons or as a joint venture, the right to request a patent for the invention belongs to all inventors jointly. The inventor must always be a natural person. The right to request a patent for an invention may be transferred to third parties. 

If the invention is made by a company employee, it should be determined first whether the invention is a ‘service invention’ or an ‘independent invention’. An invention is a service invention if it is created as a result of the duty undertaken by the employee or based on the experience and work of the employee, at the business or public agency where the employee has an employment relationship. Inventions not meeting these criteria are considered to be independent inventions.

The employee is obliged to notify the employer regarding a service invention. The employer may claim a full or partial right to the invention. All rights arising from the invention are transferred to the employer when the employer notifies the inventor-employee of the full claim on the invention. In this case, the employer is obliged to file a patent application and becomes the patent holder.

If the employer claims partial right on the invention, the invention becomes an independent invention. In such a case, the employer may use the invention based on the partial rights. The employee is entitled to file a patent application if the invention has become an independent invention.

Independent contractors are not considered to be employees. Therefore, the right to request a patent for their invention belongs to the contractors, unless otherwise agreed between the parties. As mentioned, the right to request a patent is transferrable.

The official record of the patent ownership is conducted based on the information included in the application. The transfer of the ownership of a patent is conducted through an assignment agreement that must be in writing and notarised. If the document is notarised by foreign offices, it should also be legalised by an apostille. Assignment agreements that have not been notarised will be invalid. Recordal of the assignment at the registry is not compulsory, but rights arising from assignments that are not recorded in the registry cannot be claimed against third parties acting in goodwill. Therefore, it is highly recommended and good practice to have the assignments registered.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

In a smooth-running proceeding, obtaining a patent takes approximately 30 to 36 months after filing an application.

The cost will vary between €4,000 and €6,000 (including official fees). This cost does not include the application drafting.

The total costs and timing – from the filing of the patent application to the grant of the patent – depend on:

• the complexity of the invention or application;
• the number of prior art documents cited; and
• the length of the examination proceedings.

Are there any procedures to expedite patent prosecution?

No specific procedures are available to expedite patent prosecution under the IP Law. However, currently a patent prosecution highway system is being established at the Turkish Patent and Trademark Office. Currently, the Patent Prosecution Highway is applied between the Japanese Patent Office and the Spanish Patent and Trademark Office as pilot offices.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The application is required to disclose or describe the invention sufficiently clearly and fully so that it can be applied by a person skilled in the art.

Claims are required to be built up in accordance with the description of the invention, and required to be clear and essential. Claims cannot expand the protection that is not covered by the description of the invention. Clear and reasonable information on the effects of the features of the invention is supportive for setting forth the inventive step.

Must an inventor disclose prior art to the patent office examiner?

According to article 75/1(c) of the IP Regulation, the description of the invention must contain information related to the prior art that can be known by the patent holder for the purpose of examining and searching the application.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Article 123 of the Industrial Property Law (IPL) allows an applicant to pursue additional claims while the main patent application is still being examined. These additional claims must perfect the subject matter invention or improve it, and they must also be in line with the subject of the main patent. An application for a supplementary patent can be filed until the publication of the granting certificate of the main patent application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible to object a decision of the Turkish Patent and Trademark Office (TPTO) within two months of the notification date of the disputed decision as per article 100 of the IPL. This opposition is evaluated by the Re-Examination and Evaluation Board of the TPTO.

Any final TPTO decision can only be challenged by a cancellation lawsuit before the Ankara Civil IP Courts within two months as of the notification of the decision.

Does the patent office provide any mechanism for opposing the grant of a patent?

Post-grant opposition proceedings are set out in the IPL. Accordingly, opposition proceedings start once the patent is granted. Third parties can file an opposition within six months as of the publication date of a granted patent. An opposition can be based on the following grounds:

• the subject matter lacks patentability criteria;
• the patent does not disclose sufficient details of the invention to enable a person skilled in the art to apply it in practice; and
• the patent’s subject matter extends the scope of the first version of the filing.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The right to apply for a patent belongs to the person who is the first to file the application in respect of the invention as per article 109/3 of the IPL. If two or more persons have made the invention independently of each other, the right to apply for a patent belongs to the first to file the application provided that the earlier application has been published. As a rule, the first applicant is considered to be the holder of the right to apply for a patent unless otherwise is proven.

Also, it cannot be argued before the TPTO that the applicant is not entitled to apply for a patent. However, a lawsuit can be brought against the holder of the patent by the person who claims to be the true owner of the patent, before the competent IP courts.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Patent applications can be amended during the application process or upon opposition provided that the scope of the application is not exceeded.

When a patent application is filed, the TPTO issues the patent if the patentability criteria is met. If the TPTO finds that the application does not meet the patentability criteria, the applicant is given two months to either amend its claims or object to the TPTO’s report. The TPTO will consider the applicant’s objections or amendments and if the TPTO stands by its previous decision, the applicant is allowed another two months to make a second round of objections or amendments. The TPTO’s next decision on the matter is final.

Additionally, during the post-grant opposition procedure, the patent owner can file amendments within three months as of the notification of an opposition. The TPTO after examining the opposition can invalidate the patent, reject the opposition or request further amendments to be made.

The court cannot amend the claims of a patent.

How is the duration of patent protection determined?

 The maximum term of protection is 20 years from the filing date.

Law stated date

Give the date on which the information above is accurate.

17 March 2021.