All questions

Procedure in patent enforcement and invalidity actions

i Tribunals

There are specialist criminal and civil courts of intellectual and industrial property rights established in Istanbul, Ankara and Izmir, which have jurisdiction in all IP matters, including patent disputes. Other cities have specific first instance courts that are designated as specialist IP courts. These specialist courts are composed of one judge, who does not have a scientific or technical background but is knowledgeable and experienced in IP disputes. The following rules for forum selection apply:

  1. all challenges to administrative decisions of TurkPatent are heard by the Civil Court of Intellectual and Industrial Rights of Ankara;
  2. infringement and unfair competition actions should be heard in the court of the locality where the plaintiff resides, or where the wrongful act was committed in, or otherwise where the effects of that act have been observed;
  3. invalidity and declaration of non-infringement actions should be heard in the court of the locality where the defendant IP holder resides;
  4. actions brought by non-resident IP holders should be heard either by the court where the agent registered for the IP right before TurkPatent is located, or the specialist court of Ankara; and
  5. forum selection by agreement between the parties is permitted, subject to a signed agreement.

In practice, Istanbul is the city in which the highest number of patent litigation matters are filed, as it is the city where the highest number of agents of foreign IP right holders are domiciled and it is the central city for most industrial activities. Istanbul IP Courts have been involved in the most complex patent disputes and have given decisions shaping the patent litigation environment.

ii Are there any criminal sanctions for acts of patent infringement?

Patent infringement is not a criminal offence, so the new IP code does not provide criminal sanctions against acts of patent infringement; only civil remedies are available.

iii Who can institute infringement and invalidity actions?

Turkish Civil Procedural Law requires the legal interest in an infringement action for the patentee to be entitled to institute patent infringement actions against third parties for determining, preventing and ceasing the infringement.

The IP Code stipulates special conditions for licensees to file infringement actions. The exclusive licensee of a patent has all legal remedies pursuant to the IP Code available against infringing third parties unless it is agreed to the contrary in the licence agreement.

The non-exclusive licensee is required to notify the right holder under special conditions. In the case of serious risk of damage, the licensee has the right to request the court to order for preliminary injunction while subjecting the licensee to notify the right holder of the infringement by asking him or her to file an action against the infringement.

iv Can the infringement claim be based on a patent that has not yet been granted?

An infringement claim needs to be based on a granted patent (either a national patent or a patent validated through the European patent or the Patent Cooperation Treaty (PCT)). However, the infringement claims can also be put forward upon the publication of the patent claims in the official bulletin of TurkPatent or even before the publication of the patent claims, provided that the infringing third party is notified with the patent application and its scope of protection. In such cases where the infringement is based on a patent application, the court stays the final ruling until the grant of the patent.

If the patentee wants to enforce a European patent that has not yet been validated in Turkey, it is possible to obtain provisional protection in accordance with Article 67 of the European Patent Convention (EPC). In such case, the translation of the claims for asserting the patent should be published in the official bulletin of TurkPatent.

v Limitation period

The limitation period for claims of infringement is stipulated according to the general provisions of the Turkish Law of Obligations, which is two years upon becoming aware of the infringement and 10 years in any event. In cases where the infringement is ongoing, the limitation period will be deemed continuously refreshed.

The invalidity of a patent can be claimed during the protection period of the patent or within five years upon the expiry of the patent term against the patent right holder recorded in the Patent Registry by a person who has a legal interest in the invalidity of the patent, by public prosecutors or by relevant public authorities.

vi Procedure in patent enforcement and invalidity actions

Alternative dispute resolution means, such as arbitration and mediation, are available to the parties in lieu of an outright infringement and invalidation action. The procedure before the civil courts has four main stages, which are valid for both patent enforcement and invalidity actions: (1) the mediation phase; (2) the initial examination phase; (3) the experts' examination; and (4) the decision phase.

Mediation phase

As of 1 January 2019, the Turkish Commercial Law stipulates that a party claiming compensation shall apply to mediation proceedings before filing a court action with compensation claims. The application for mediation has become a mandatory pre-condition for filing a court action. Therefore, should the plaintiff decide to claim compensation besides the claims of infringement or invalidity, they will need to contact the defendant for an amicable settlement under the mediation procedure first. There is no mandatory mediation requirement for patent infringement or invalidity action where there is no compensation claim.

Despite the fact of the stipulation of the Turkish Commercial Law, a recent decision of the Supreme Court overruled a decision of the Appellate Court and the Court of First Instance that rejected a trademark infringement action wherein the IP right holder claimed also for material compensation. The Supreme Court ruled that it is not mandatory for the plaintiff to apply for mediation if the compensation claim is filed together with a non-monetary claim. This ruling is open to a further discussion before the Appellate Court and therefore, the approach of the Court of First Instance may show the general tendency to the actions with compensation claims.

Initial examination phase

When a dispute is brought before a Civil Court of First Instance, the court serves the writ of summons to the defendant. After receiving the writ of summons, the defendant must submit its replies within two weeks of the notification. After the defendant's replies, both parties have one more exchange of petitions to submit to the court. The parties are entitled to ask for an extension of time for providing their responses to each other in this phase. After completion, the court proceeds with the preliminary examination stage. In this stage, the judge examines whether the procedural requirements have been fulfilled by the parties and determines the subject matter of the dispute.

The experts' examination

Examination of the merits of the dispute starts at this stage. The court appoints a panel of experts – usually consisting of one Turkish patent attorney or European patent attorney and two technical experts in accordance with the field of technology. The experts submit their reports and parties have the chance to object to the report findings. Should the court find the objections of the parties sufficient, then the court may refer the file to the same panel of experts for an additional experts' report in the light of the objections or appoint a new panel of experts for the issuance of another experts' report. Should the experts' reports submitted by the second panels contradict the first set, then the judge may decide to conduct a further round of experts' examination. Calculation of the amount of compensation (if claimed by the plaintiff) requires further experts' examination by a financial expert or experts.

Decision phase

The judge ends the experts' examination phase and schedules a day for hearing the final arguments of the parties, if it decides that the matter has been examined sufficiently and the information at hand is enough to rule on the matter. After the oral proceedings, the court renders its reasoned decision.

Detailed information on the procedures with regard to the appeal phase may be found in Section VII.

vii Process for obtaining and presenting material to the court

According to Turkish procedural law, all parties are obliged to file documents evidencing their claims or defences, or both. In cases where there is a risk of loss, parties with legal interest may ask the court for the determination of evidence. This determination may be requested either prior to filing the main civil proceedings or within the context of a pending action for securing the evidences (if it is at risk of being concealed or lost).

As determination of evidence is also regulated under the IP Code on the basis of Article 150/3, the patentee may ask the court to order to the infringer to submit documents in relation to the use of the patent for determining the damages for a possible claim of compensation.

The patentee, during the proceedings, is also entitled to ask public authorities, such as TurkPatent, Customs or any related regulatory body or bodies, to submit information in their possession for evidentiary purposes through the court.

viii Amendment of patents in the course of court proceedings

It is possible to amend the claims during the post-grant opposition proceedings before TurkPatent, which is a major structural change introduced with the new IP Code as of 2017 (Article 99(4) IPC).

During an invalidity court action, where the grounds for invalidity concern only part of a patent, a partial invalidity of this patent shall be ruled by cancellation of the claims pertaining to such part. A claim may not be partially invalidated (Article 138(4) IPC). In other words, a claim may not be amended, but may be cancelled as a whole.

On the other hand, a European patent validated in Turkey may be limited by amending the claims in proceedings before the competent court or authority relating to the validity of the European patent according to Article 138(3) EPC. The patent as thus limited shall form the basis of the proceedings.

Cancellation of an independent claim causes the cancellation of the dependent claim or claims with the proviso that each of the dependent claims, on its own, does not meet the patentability criteria. Accordingly, the dependent claims meeting the patentability criteria, independently from each other, shall survive (Article 138/4).

In this regard, the new IP Code does not provide the possibility to amend the claims by bringing them together to overcome their cancellation. This stance conforms to the practice of the courts in retaining or cancelling the claims in their entirety.

ix Invalidity as a counterclaim

Turkey has no bifurcated system in patent matters. An invalidity claim can be put forward within the context of the infringement action as a counterclaim or separately in a separate action. Here are two possible scenarios in case the defendant files an invalidity action:

  1. where party A files an infringement action, the adverse party B may file a counteraction claiming invalidity within the context of the infringement action. In this case, the court would examine these two claims at the same time; and
  2. where A files an infringement action, the adverse party B may file a separate invalidity action before a different competent court. In this case:
    • the court before which the invalidity action is filed may decide to consolidate the file with the earlier infringement action on its own discretion. In this case, the invalidity and the infringement actions will proceed simultaneously under the same action; or,
    • the court competent for the infringement action may decide to stay the proceedings until the invalidity action is concluded.

There is no provision or consistent practice concerning the acceptance of a pending opposition, especially if an opposition is filed before the EPO, which has been accepted as a dilatory issue. This defence is evaluated as per the specific circumstances of each case. In two relatively recent Supreme Court decisions, it was stated that the Court should check the status of the European patent that was opposed before rendering a decision in a pending patent litigation matter.

x Timing and cost

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 in the third instance.

Depending on the complexity of the matter and the rounds of expert examination by the panel of experts during the proceedings, a patent litigation suit takes around 18 to 30 months from the filing of the action up to the Court of First Instance's decision.

The official fees and expenses for a patent litigation suit, whether for an infringement or for an invalidity action, and where there is no compensation claim, depend on the rounds of examination by the court-appointed panel of experts. The expenses and official fees in a straightforward lawsuit with one round of examination would be around US$2,000. In either infringement or invalidity procedures, the official fees would increase depending on the amount of the compensation to be claimed.

The court does not rule on the effective attorney fees spent for the prosecution of the file through an attorney-at-law. The court will only rule to a fixed attorney fee, which is determined by the Turkish Bar Association (around US$250), and the reimbursement of the official fees paid by the winning party at the end of a patent litigation suit either for infringement or invalidity where there is no compensation award. If the court has awarded the plaintiff compensation, the reimbursed attorney fee may increase depending on the amount of awarded compensation. For instance, if the court has awarded US$1,000, the winning party will be entitled to ask for 12 per cent of such amount as an attorney fee, in addition to fixed attorney fees.

xi Preliminary relief

The patentee is entitled to obtain a preliminary relief order in the following situations: (1) within the context of the main infringement action; (2) within the context of the evidential action; or (3) independently.

In each case, preliminary relief may be requested and carried out ex parte or inter partes, subject to the discretionary competence of the court. In practice, the courts are quite conservative in granting ex parte preliminary relief.

A preliminary relief request may be refreshed at any stage of the action when there is a new development on the matter and a change in the conditions, such as the issuance of a favourable expert report, etc.

Preliminary relief requests are deemed to be urgent matters to be handled according to Turkish procedural law. The most important requirement is to submit substantial evidence attesting a prima facie infringement to convince the judge that there is risk of an infringement. Another requirement would be to deposit a guarantee payment before the court (on discretion of the judge) for the execution of the preliminary relief order once the decision is rendered by the court. The guarantee payment and the request of execution of the preliminary relief order shall be done within one week of the issuance of the preliminary relief order by the court. Failure in depositing the guarantee payment and in the execution of the order within one week results in the release of the preliminary relief order.

The amount of the guarantee payment depends on the discretion of the court in view of the value of the dispute, (i.e., the commercial value of the patent).

Finally, the Turkish IP courts can also reverse preliminary relief orders upon the deposit of the guarantee payment by the defendant. In such case, the court may order a preliminary relief that will prevent the patent holder from enforcing its patent rights against the defendant parties.

There are no practice and legal grounds for protective letter in Turkish procedural law.

xii Liability for threatening infringement

The general provisions of Turkish law seek and protect the interest of a person who puts forward claims against third parties. Should a patentee threaten third parties with a patent infringement action in bad faith knowing that a third party does not infringe the subject patent, and threatens the third party with the cease of its commercial activities in case it continues to carry them out, this patentee would face liability based on the general provisions of the Turkish Civil Law. Besides, such actions would also incur liability based on unfair competition claims.

The Turkish Commercial Law reads that the following actions constitute unfair competition:

  1. discrediting others or their goods, their activities, or the products of their work or their commercial affairs by means of wrong, deceitful or uselessly offensive statements;
  2. giving wrong or deceitful information regarding one's own situation, goods and the products of one's work, one's commercial activity or commercial affairs of acting in the same manner regarding third persons or putting them in a situation above their competitors; and
  3. acting as if one had obtained a distinction, degree or reward without having obtained the same, thus trying to create the impression that one has exceptional capacities, or using false titles or professional names that are liable to create such impression.

Accordingly, anyone threatening third parties with patent infringement based on deceitful information shall face unfair competition claims.