Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
Article 156 of the Intellectual Property Law sets out that specialised IP courts have jurisdiction over all claims that arise from said law.
The judges appointed in IP courts have a sufficient understanding of the Intellectual Property Law, even though they have no technical background. To better understand the technical merits of a complex case, judges commonly appoint an expert panel.
Are cases decided by one judge, a panel of judges or a jury?
According to the Civil Procedural Law, one judge is appointed for each IP court. Jury proceedings are not applicable under the Turkish legal system. Cases are decided by one judge.
Regional courts and the Court of Appeals have a minimum of three judges.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Jury trials do not exist under the Turkish legal system.
What role can and do expert witnesses play in proceedings?
While judges have a significant understanding of the Intellectual Property Law, they do not have a technical background and commonly appoint experts to better understand the technical merits of a case. The courts can decide to conduct an expert examination either ex officio or on request of one of the parties.
Experts are prohibited from declaring an opinion on the legal issues being decided on by the court. They are expected only to declare their technical opinion on the questions posed to them.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
The doctrine of equivalents is applied in Turkey. When determining the scope of protection, all elements equivalent to those defined in a claim are considered (Article 89 of the Intellectual Property Law). Where an element performs the same function and provides the same result as the element set out in a claim, that element is accepted as equivalent.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
As IP rights can be irreparably and irrecoverably damaged by third-party acts, injunctions play a significant role in IP litigation. Injunctions are effective tools in patent litigation to preserve the results which plaintiffs hope to achieve.
The legal framework and criteria for injunctions in Turkey are outlined by the Civil Procedural Law and the Intellectual Property Law.
Injunctions can be obtained before or during a trial. To obtain an injunction, the requesting party must prove to the court's satisfaction that:
- irreparable harm will arise if the injunction is not granted; or
- the outcome which the requesting party seeks in its main action will be unlikely unless the injunction is granted.
The IP courts are conservative in their rendering of preliminary injunction decisions. On receipt of a preliminary injunction request, a common approach for a court during patent conflicts is to use an expert witness to evaluate the technical merits of the conflict at hand. When the expert's report is prepared, the court will issue its decision about the preliminary injunction request. However, if the court decides to notify the counterparty and hear its defence, the expert report will be delivered to the parties, which have two weeks to submit their response. In this case, the court will issue its decision after receiving the parties' responses. The courts may accept preliminary injunction requests in return for payment of a guarantee, which may vary according to the value of the patent and the parties’ economic situation.
How are issues around infringement and validity treated in your jurisdiction?
In principle, infringement and invalidity actions are separate actions and are handled separately. However, since invalidation actions are commonly used as defence tools by defendants, they can be handled by the same court where invalidation actions are filed as counteractions, or the court decides for the consolidation of the case files.
If there are parallel cases between the same parties, in principle, the court which waits for the outcome of an invalidation may take an action before proceeding with an infringement action.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
The decisions rendered by other courts are not directly binding; however, they set precedent to a certain extent. Further, the courts must evaluate the sui generis nature of each case.
Damages and remedies
Can the successful party obtain costs from the losing party?
According to the Civil Procedural Law, a losing party bears the judicial costs and the fixed attorney fee. To recover other costs, the requesting party must file another lawsuit.
What are the typical remedies granted to a successful plaintiff?
Typical remedies granted to successful plaintiffs include:
- compensation for damages (moral, material and reputational);
- the destruction of infringing products;
- the confiscation of manufacturing tools; and
- the publication of the judgment.
How are damages awards calculated? Are punitive damages available?
As per the Intellectual Property Law, ‘damages’ means actual damage and lost profits. ‘Actual damage’ is the net decrease in the requesting party’s assets. The requesting party may also ask for lost profits, which are calculated based on one of the following methods set out in the Intellectual Property Law:
- the income which the patent owner would have generated if the infringing party’s competition had not existed;
- the infringer’s income; or
- the amount that the infringer would have paid as an appropriate licence fee had the parties entered into a licensing relationship.
Punitive damages are not available under Turkish law.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
A permanent injunction can be granted only at the end of a judgment. Such injunctions can be enforced only when a decision becomes final.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
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. Following up files and interventions closely when needed can be helpful to expedite proceedings.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Total judicial costs are approximately €3,000 to €4,000 in straightforward cases without compensation claims. Professional attorneys’ fees may vary depending on the complexity of a case.
Click here to view full article.